THE AMERICAN SPECIFICATION

L3

THE

AMERICAN

SPECIFICATION

IN

EUROPE

A

DISCUSSION

OF

FOREIGN

PATENT

OFFICE

AND

COURT

PRACTICE

WITH

PARTICULAR

REFERENCE

TO

THE

INTERPRE-TATION

OF

SPECIFICATIONS

AND

CLAIMS

IN

GREAT

BRITAIN

AND

GERMANY

By

LAWRENCE

LANGNER

7~^

_/

_s'

INTRODUCTORY

REMARKS.

Attorneys in

tMs

country are not generally

aware

ofthe legal complications arising

from

the

use of the

American

type of specification in the

foreign practice. In the paper

which

follows, I

have set forth a

few

suggestions with a

view

to

modifying the present style of writing

specifica-tions for the

United

States Patent Office,

which

suggestions,ifadopted

by United

StatesAttorneys,

willbethe

means

ofsimplifying theprosecutionof

foreign patent applications to a considerable

ex-tent,

and

this without prejudice to the practice in the United States. In other words, I have

en-deavored to define a middle course

between

the United States practice

and

the

European

practice

which

will operate to the advantage of both

and

without sacrifice to either.

The

industrialtrend ofthe

United

States atthe

present time is towards international business, as

evidenced

by

the constantly increasing

number

of

American

corporations established in Europe,

and

attorneys in thiscountry findit continually

neces-sarytogive to theprosecutionofforeignpatent

ap-plications the

same

careful attention accorded to

UnitedStates applications. I believe that the gen-eraladoptionof

my

suggestions

may

beofmaterial

assistance inthis direction.

Ihave pleasureinthanking

my

associates,Mr. A.

E. White, A.I.

M.

E., of

London,

and

Patentanwalt

Georg

Benjamin,ofBerlin, for theirvaluable

assis-tance

and

suggestions.

Lawrence

Langner.

149

Broadway,

New

York

City.

September

1st,1913.

THE AMEKICAN

SPECIFICATIOl^

IN

EUEOPE.

Tlie resultsofattempts

on

tliepartof

American

inventorstosecureadequateprotectionabroad,

and

particularly in

Germany,

has often given rise to

speculation intlie pastas to

whether

ornot there

isa prejudicein

Europe

against inventions emanat-ing

from

the

United

States. Ifprejudiceexists at

all, it is certainly not directed against

American

inventions, butit

may

besaidwith a greatdeal of

truth that there is a strong prejudice in

Europe

againstthe

American form

ofspecification,

and

this

fact isnot as generally

known

and

thoroughly

ap-preciatedasit

ought

tobeinthe interests of

Amer-ican inventors.

The

responsibility for the prejudice against the

American

specification in

Europe

rests directly

with the

American

attorney.

He may

employ

the

best foreignpatent agents

—

he

may

givethefullest

scopeforindividual attention to his cases

—

and

yet

he

may

be unsuccessfulinsecuringforeign patents, or patents of the desired ambit.

To

enter the

foreignfield

upon

a properbasis,the

American

at-torney

must

consider the foreign situation at the time offiling each U. S. application,

and

he

must

atthattimegive the

same

careful consideration to

theforeign practice ashe doesto the domestic.

Un-tilthisfactisrealized

—

untilthereis

an end

tothe

practice of blindly prosecuting the U. S.

applica-tion toallowance,

and

then rushingatarightangle

con-tinue to expect troublewith their foreign

applica-tions.

Itis generally recognized that

when

the foreign

claims are in so-called

American

form,

a

foreign

patent,ifone be obtainedatall,isin

more

orlessof

ahopeless condition

—

almostas hopeless as a U. S.

patent with the English or

German

form

of

claims,

were

itpossible toobtainone. Thishasled

to the practice of turning overthe preparation of

the foreignclaimsto the foreignpatent agent,

and

inthis

way

all difficulties are apparently removed.

Only

apparently,however,forexperiencehas

shown

that the real difficulties are not removed, but

cloaked.

And

theinherent differencebetween the

foreign practice

and

theIT.S.practiceisresponsible

for the fact that foreign claims tacked

on

to

an

American

specificationvery often

mean

something

quite different

from

what

theysay.

The

lineofdemarcation

between

the specification

and

the claims

which

exists in the

United

States

practice, is very faint in Europe. In

some

coun-tries, suchasFrance,theclaimsarefrankly

regard-ed as unnecessary. In other countries, such as

England and Germany,

they are merely a matter

of form.

A

British patent with a claim for

"The

inventionsubstantially as described in the

specifica-tion"

may

be aperfectly

good

patent,

and moreover

a very broad patent, if the invention is broadly

described.

One

ofthefunctions of the foreign

spec-ificationis to claim,

and

not only to claim, but to

modify

the claims. In other words, the foreign

specification

and

claimsare

an

integralwhole;they

must

be readtogether

and

construed together.

A

only

narrow

protection.

A

broad

specification

and

a

narrow

claim

may

sometimes give

broad

protec-tion.

The

claimsof

an American

specificationplay

the leading part,

and

even the

most

conscientious of

American

attorneys,misled

by

theimportanceof

U. S. claims, are inclined to think that solong as

the foreign claimsarebroad, the specification is

a

matter of secondary consideration.

THE

TYPICAL

AMERICAN

SPECIFICATION.

In order to arrive at

an

understanding as to

what must

be done

by

the

American

attorney to

co-operate with the foreign patent agent in

secur-ing foreign claims, which,

when

construed as a

whole

with thespecification, Avill be of the desired

scope,it isnecessaryfirsttoenquireinto the trouble

arising

from

an

American

specification having

foreign

appendages

inthe

way

ofclaims.

The

ma-jorityofU. S. attorneys regardthe specification as

avehicleofdisclosure,

and moreover

adisclosureof

no

more and no

less than will support theclaims.

The

best

form

of

United

Statesspecification,

follow-ingthis rule,isthat

which

closelydescribesthe

em-bodiment

of theinvention illustrated in the

draw-ing,

and upon which

allthe claims,

broad

and

nar-row,can be read;

most

American

specifications

com-mence

with a brief statement of the artto

which

theinventionrelates,followed

by

a statementofthe

objects of the invention, a

broad

description of a

preferred

embodiment,

and

a specific description of this

embodiment,

which

is illustrated in the

drawings. Usually

no

attemptis

made

to dissociate

the invention

from

its

embodiment,

and

by

of iuvention

—

the conception that

an

invention is

sometMng

quite distinct

from

its visible embodi-ment. It isimportant to realize very clearly just

wliatthisconceptionis,for reasons

which

will

ap-pear hereafter.

A

British case, the British

Muto-scope Co. V.

Homer

(1901), 18 K. P.

C,

177, is a

good

illustration of this conception. In this case

certainpatentedmutoscopes

were

seized

under

dis-tress

from

a personal licensee

and

sold, but the

persons

who

acquiredthearticles

by

thissale

were

unable to use them, for although they

were

the

owners

of the material of

which

the mutoscopes

were

made, yet the inventive idea

embodied

in the

operative apparatus

was

the property of the

pat-entee.

The

entire

European

practiceis based

upon

this conception ofinvention

—

that

an

invention is

an

idea,

and

can be

embodied

in

any

number

of

formsirrespectiveofthe

number

ofelementsor con-structional features.

To

returntotheU. S. specification

under

discus-sion:Itis veryrarely the case that

any

statement

based

upon

such a conceptionofinventionappears

inthespecification. In fact, as a general rule, the

specification is a faithful description of the

illus-tration,

and

it is only

when

the claims are

con-sidered that the real invention

becomes

apparent,

or rathershould

become

apparent.

Such

a

specifi-cation, limited toa description of a single species to avoidacall fordivision,

may

beregardedas

be-ingsubstantially typicalofacarefully

drawn

U. S.

specification,the attorneyhaving given all his

at-tention to the requirements of the U. S. practice

alone, although in eight cases outof ten,

when

an

well that foreign patents will also be required at

some

subsequent time.

Let us

assume

tbat specifications, such, as that

outlined above, are mailed with the

drawings

to

patent agents in England,

France and Germany,

withinstructions to prepare the claims in

accord-ance

with

the preferred foreign practice.

The

foreign patentagent, if he be at all conscientious,

willnotattemptto

frame

the foreignclaimsfor

an

important invention merely

by

construing a

number

ofU. S.claims, foreven the U. S.attorney himself

knows

little of the mysteries he has hidden in the

carefully formulated sequenceof

words which

de-finethe scope oftheinvention according to

Amer-ican practice. Usually the U. S. attorney is

re-quested towrite

a

statementsetting forth the gist

of the invention,

and

this statement accompanies

the applicationdocuments.

With

an

understanding

of the invention based

upon

this information, the

foreignpatent agent preparesthe foreign claims.

THE

GERMAN

PATENT

OFFICE

PRACTICE.

Followingthe specificationaddressedto the

Ger-man

attorney,

we

generally findthat

some

time is

occupiedin limiting the claims to a single

inven-tion; this

happens

in a great proportion of cases,

owing

to the fact thatwhile

any

number

ofspecies

may

be claimedinasingle

German

application,

pro-vided that they are all connected

by and

embody

the

same

novel

and

patentable inventive idea, yet

features

which form

part of the

same machine

or

process but are functionally inter-related with,

and

developments of, the

main

inventive idea,

can-not be included in a single application. This is almostthe opposite of the

American

practice.

Af-ter tlie objectionsofthe

German

patent officehave

been

met

in this respect,

we

may

expect to receive

an

action

from

the

German

Examiner

citing a

few

whollyirrelevant references,

and

stating thata pat-ent cannot be granted for

want

of patentability, as it cannot be seen that

any

new

technical effect is

produced

by

the alleged invention.

And

notwith-standing the fact that a

new

technical effect is

actually produced, it is not a matter for

wonder

that the

German

Examiner

does not see it.

The

typical

American

specification

may

be

an

excellent

description of a machine, for instance, butit

cer-tainlyis not a description of

an

inventive

concep-tion

invohdng

anovel technicaleffect:It

was

never

intended as such. In haste, the U. S. attorney

writes a vivid statement of the advantages of the

invention over the prior art.

The

German

agent filesthisinthe

form

of

an

argument

inthe

German

Patent Office.

The examiner

may

then recognize

that patentabilityexists.

He may

also

—

in a spirit

of

unwelcome

generosity

—

propose a claim

includ-ing

most

oftheelements ofthe

embodiment

shown

inthedrawing.

The

U. S. attorney vigorously

pro-testsagainstthis claim, often thinking it

more

re-stricted than it really is.

The

examiner, in reply

to a request

from

the agentforthe allowanceof a

broader claim, will reply that the broader claim merelyrepresentsa

problem which

is solved

by

the

construction shown,

and

that as the invention

con-sistsin theconstruction

which

solves the problem, only a claim on the construction can be allowed.

Almost

in despair, the U. S. attorney

shows

that

other constructions or modifications, not included

ex-aminer, could alsoproducethe

same

new

teclinical effect,

and

that for this reason a broader claim should be allowed.

The examiner

replies that

no

such other constructionsormodifications

were

de-scribed in the specification

and

that he can

only-takeintoconsideration

what

was

contained in the

specificationatthetimeoffiling.

He

willprobably

also

remark

that the applicant is trying to cover every

way

of solving the problem,

whether

known

or

unknown.

In

many

cases

where

the

examiner

does not himselfpropose a claim, hewill object to

a

broad

claim submitted

by

the applicant for the

reasons set forth above. In fact, it

may

be stated as a general rule that

where

only one

embodiment

of the invention is described, the

examiner

will

object to allowing a claim

on

the broad principle

and

a claimonthespecific

form

(1004,p.329

Bl

Ig-nition pellet case).

An

appeal is filed,

which

may

or

may

not be successful

—

successdepending

upon

whether

the

Appeal

Board

decidesthat the inventor

really has invented

more

than is described in the

American

specification.

As

such adecision

must

be based

upon

a benevolent,

and

even strained,

con-struction ofthespecification,ratherthan

upon

the

facts,it ishardlyto beexpectedthat ineverycase

the

Appeal

Board

will grant claims ofthe desired

breadth ofwording. Moreover, it is

becoming

in-creasinglydifficulttosecure theallowanceof

broad

claimsin

Germany,

not only because the

responsi-bility for granting such claims rests very heavily

upon

the

German

Patent Office,

and

may

be the

cause ofrecrimination at a later date but also

be-causetheCourts have

made

itclearthat thePatent Oflftcehas

performed

its dutyifthe claims allowed

clearly characterize the subject-matterofthe

inven-tion, thescopeofthe claims beinga matterfor the

Courtstodecide (Sup. Court,Bl. 1910,

p

157

Coke

chutecase). Inotherwords,tobe onthe safeside,

the

German

examiner

adopts the attitude that the

claimshall coveronly theinvention described,

and

hejealously resents

any

attempttoclaimthe

inven-tion insuch

manner

as toinclude everypossible

in-fringement

by

the

wording

ofthe claim. This atti-tudeofthe

German

PatentOfficeis

due

to the

pres-ent peculiar practice of the

German

Courts in

re-gard to the interpretation of claims,

and

it is not

a digression

from

the present subject to describe

this practiceofthe

German

Courts, as the relation

ofthe typical

American

specification to this

prac-tice will then bebetter understood.

THE

GERMAN

COURT

PRACTICE.

The

claims of a United States patent

may

be

likened theoreticallytothewalls

which

enclosethe

monopoly

area: these walls are rigid

—

on one side

of

them any

member

ofthe publicisfree todoashe

pleases,

and

ontheother sidehe stands within the

monopoly

area.

The

claims ofa

German

patent

—

and

to a lesser extent the claims of a British pat-ent

—

areelastic.

They

stretch

and

contract

accord-ingtoavarietyofcircumstances, suchas the state

of the art

and

the merits of the invention.

They

may

mean

ever so

much

more

than theysay,or ever

so

much

less, depending

upon

the particular cir-cumstances involved.

The

German

Courts have adopted the attitude,

which

is undoubtedly a

rea-sonable one, that the inventor cannot at the time

be expected to

know

every possible

way

whereby

bispatentcan beinfringed,

and

thatit is

an

impos-sible task to attempt to

frame

a claim

worded

in

such a

way

as to cover all possible infringements,

known

or

unknown.

United

States attorneys are

supposed to be able to draft such claims, but the

cumbersome methods

necessary to achieve success

do

not

recommend

themselvesto the foreign

prac-tice.

So

the

German

Courts, recognizing that

claims arebut poor

weak

instruments, step in

and

give

them

a helping

hand by

way

ofbenevolent

con-struction

whenever

itis possible to do so.

And

to

assist ingi^dngthisconstruction, the Courts

must

beable to find alogical basis for

an

otherwise

sen-timental decision in favor of the patentee. This

basis can generallybe

found

in a foreign

specifica-tion scientifically draftedAviththe foreign practice

in view, butis

more

often missingthan not in the

typical

American

specification.

The

basis for a

broad

interpretationofa

narrow

claim, apart

from

the state of the art,is thetoneofthe specification

as

much

as its wording.

A

dominating

note of

breadth should be present, evidenced

by

a broad statementofthe inventiveidea

from

variedaspects,

and

the inclusion of a description of a

number

of

embodiments

or species.

Assuming

a meritorious

invention,

and an

infringer

who

skilfullyavoids the

wording

ofthe claims, theCourtswill

pounce

upon

such

broad

statementsin the specification

and

will

interpret the claims in view of them.

One

is

al-most tempted

to saygenerally of the

German

prac-tice,thatiftheattorneytakescare of the specifica-tion,the claimswill takecare of themselves.

But

thisisperhaps goingtoofar. If

an

inventionis dis-10

closed, but notclaimed, it will be verydifficult to

bring it within the

monopoly

area

by

"construc-tion."

All this presupposes that the

Judge

deciding a patent suit shall have a broad understanding, not

onlyofthe technical mattersinvolved, but also of

the legal principles laid

down

by

the

German

de-cisions as to construction or interpretation.

But

German

judges are only a little

more

nearly in-fallible than the judges of other countries

—

it is

neither safe nor wise to leave too

much

to their

imagination. It

may

be stated, asthe safestrule, that,as inAmerica,thebroadertheclaimthe better

the patent,providedthat theclaimisnottoobroad.

But

the

German

examiners, wishing to avoid the

responsibility of granting

broad

claims, are

gener-ally onlywilling toallow claims aslimited as

pos-siblehaving regardto the disclosure, leavingit to theCourts to give the limited claims a

broad

con-structionif theyare entitled to such construction.

Without

question,it isinthe best interests of the

patenteetosecure thebroadestpossibleclaims

from

the

German

Patent Office,

and

the

American

spec-ification is a decidedly unsatisfactory

medium

for

accomplishing successful results in this direction.

To

secure

broad

claims,

we

must

be able to

show

theexaminer,

from

the specificationitself, that the

inventionis capable of

embodiment

in a variety of

forms,

and

that

any

claim

which

does not read

on

each or all of these

embodiments

is too narrow,

ha\4ng regardtothe disclosure. Inthisway,

argu-ments

can be based

upon

the fact that a

narrow

claim does not cover all the aspects of the inven-tiondisclosed,

and

such

arguments

areusually suc-cessful.

Having summarized

tlie troubles caused

by

the

American

specification in

Germany,

we

may

deal

with the situation in

Great

Britain

wbere

condi-tions are not quite so difficult.

THE

PRACTICE

IN

GREAT

BRITAIN.

The

British patent system, so far as the

inter-pretationof specifications

and

claimsis concerned,

may

be regarded as a

compromise

between

the

United States

and

German

practice, withleanings

towardsthelatter.

The

equity rather thanthe

let-teroftheclaimsisobserved

by

the Courts,

and

the

construction of the claims is dependent

upon

the

specification to a

marked

extent in case of doubt.

It

may

besaid thatevery partoftheEnglish

specifi-cation

and

claimshas arelativemeaning,depending

upon

the

meaning

of every other part of the spec-ification

and

claims.

The

Britishpatentoffice does

notobject to

an

attempt to define thescope of

pro-tection

by

the claims, solongasthe formalrules as

tomultiplicityofclaimsare observed,

and

itisnot

at all safe to expect the British courts to give a

claim a

broad

construction

when

itis

worded

nar-rowly. In this respect the practice

more

closely

approximates that of the United States than the

German

practice.

Thus

in the caseofNobel's

Ex-plosives Co., Ltd., V.

Anderson

(1894, 11 R. P.

C,

128) thejudgestatedthat''in orderto

make

out

an

infringementit

must

beestablished that the alleged

infringeristakingtheinvention claimed

by

the

pat-entee, not the invention

which

he

might

have claimedifhe

had

beenwelladvisedor bolder."

The

British courts, in interpreting the claims, can only

stretch

them

in case of doubt as to their meaning.

Ifit is clear that theclaims are limited,then they will not beinterpreted broadly simply because the

patentee haselected to

make

a presentofthe

broad

aspect of his invention to the public.

To

avoid

dangerofadverse constructionof hisclaims

by

the

Courts, theskilfulBritishpatent attorney attempts

to

pad

outthe specification with statements

which

canbereadin

two

ways, both broadly

and

narrow-ly,

and

these statements are used to confuse the

judge shouldthe patent be litigated.

Immediately

thequestion ofdoubtarises,the rule ofbenevolent constructionisappliedtothe claims,thisrulebeing

that

where

two

or

more

constructions are equally

tenable,thecourtwilladopttheone

which

willgive

validity to the patent

(Automatic Weighing

Ma-chineCo. V.Knight, 1889, 6R. P.

C,

307).

While

the typical

American

specification,

when

appearing

before the British Courts, has been

known

to

con-fuse

by

its terminological complexities, the

con-fusionisnotinthe right direction

when

itdoesnot

liein the statementofthenatureofthe invention.

(At

this point, anticipating criticism of

my

views

as to causing 'confusion," I

know

that it is

fash-ionable for writers on British Patent

Law

to

ad-visethat the specification

and

claims should be as

clear "as possible." It is just the difference

be-tween

what

ispossible

and

what

is not.

The

Ger-man

Courtsrecognize thatitisnotpossible for the

claims toinclude in terms everyinfringing device,

and

they go outside theclaims

and

look at the

in-vention itself. Until the British Courts frankly adoptthis attitude,towards

which

they have

lean-ings only,itwillalways be necessarytotake

advan-tage of the rule of benevolent construction.)

cordingto Sec.2 ofthe BritishPatents

Act

of1907,

there

must

be included in every specification a

statement of the nature of the invention,

and by

"natureof the invention," accordingtothe British

useof thisterm, is

meant

the inventive idea apart

from

its visible embodiment. Unfortunately, the

laxityoftheBritishPatent Officeis suchthat

pat-entsareoften issuedwith

narrow

statementsofthe

nature ofthe invention,

and broad

claims.

Where

the specificationisnarrow,

and

thejudge hasto

in-terpret the

broad

claims

by

the

narrow

specifica-tion, thereis a dangerthat the claimswill be

con-strued

more narrowly

than

was

intended,

and

this is a danger to

which

American

specifications are particularly susceptible.

GREAT

BRITAIN

AND

THE

INTERNA-TIONAL CONVENTION.

The

difficultiescaused

by

the

American

specifica-tion in

Great

Britainareaggravatedifthe

applica-tion is filed

under

the provisions of the

Interna-tionalConvention,

and

inviewofthe practice

dat-ing

from

medieval times

and

existing in

England

at the present

day

—

the practice of granting the

patenttothe firstrogue

who

may

bring the

inven-tion into the country, irrespective of

how

he

ac-quiredit

—

most United

Statesattorneys

now

make

it a rule to file

under

the Convention, so that the

conditions hereinafter

mentioned

are read

and

re-current ones.

The

interpretationplaced

by Great

Britain

upon

the International Convention, involving as it does the antedatingofthe Britishpatent to the date of thefirstforeign application

upon which

itisbased,

has led to the requirement on the part of the

British Patent Office that the invention protected

by

the Britishpatentshallbethe

"same"

asthatof

the foreign specification. In actual reality, the

invention need not bethe ''same," so long as it is

narrower

than the inventionclaimed in the

Amer-ican specification.

But

suppose the inventortries

tosecure claims

which

arebroaderthan theclaims

originallyfiledintheU. S. Patent Office. It often

happens

that the originalU. S. claimsare too

nar-row, or are directedto

an

aspectof the invention

which

is not of such value as another aspect

dis-closedsubsequenttothe filingoftheU. S.

applica-tion. It is permissible, according to the

United

States practice, tobroaden the claims afterthe

ap-plication has been filed

(Walker on

Patents,

page

122),

and

the

United

States attorney

amends

the

claims in this respect in

due

course if necessary.

However, on

filingthe application in Great Britain

under

theConventionwith claims correspondingto

thebroaderor different aspect ofthe invention, the

British

examiner

objects to

them

on the

ground

that they claim

an

invention different

from

that

claimed in the U. S. application as originally

filed. Thisobjection isgenerally supported

by

the

Appeal

OfficersofthePatentOffice,ifthe

specifica-tion does not contain

any

statement of the

inven-tive idea in such

wide

terms as to support a

con-tention thatwhiletheclaimsofthe British

applica-tion

were

not originally contained in the

United

States application, yet the subject matter of the

British claims

was

clearly foreshadowed in the

original U. S. specification. Experience

shows

that the British

examiner

will seldom accept the

responsibility ofallowing claims differing in scope

or subject

from

the claims originally filed in the

United States Patent Office.

As

a safeguard against difficultiesofthis kind,it

might

bewell to

file with the

United

States application a claim of thetype

known

as the British

omnibus

claim,

which

may

subsequently be relied

upon

to prove to the

British

examiner

that matterdescribedin, but not

claimedby, theordinary

American

claims,

was

cov-ered

by

the

omnibus

claim.

Having

servedits

pur-pose, theinformal

omnibus

claim

may

then be

can-celled out of the

American

application.

THE

PRACTICE

IN

FRANCE.

The

difficulties encountered

by

the

American

specificationin

France

are

more

problematical

and

rarer thanin

Great

Britain

and Germany.

So

far

as thePatentOffice isconcerned,

no

objectionsare

made

as tothe

form

orsubject-matterofthe

appli-cation.

However,

the

American

specification often

causes trouble even in the placid interior of the

French

Patent Office,

owing

to the

French

rule

curtailingthelengthofthespecification,

and

ofthe

offendersagainstthis rule,fully nine outoften are

Americans. Itiswell

known

that the

French

spec-ification contains

no

claims,

and

that the patent

isheldvalid for so

much

oftheinventionasisnovel

and

patentable. In other

words

,the Patent Office

proceedings aretransferred tothe Courts,

and

the

Courts decide not only the scope of the invention but also the question as to

whether

the alleged

infringer is within its scope. It is not necessary

todwell

on

the rules of interpretationofthe

French

Courts, but let us

assume

that a typical United

statesspecification,withoutclaims,isplacedbefore

an American

attorney,

wbo

willbe requestedtostate

what

isthepartfor

which

protectionisdesired.

He

would, inthe generality of cases, say, ^'Ihave read

this through, but

what

is the invention?"

The

French

Courts

have

to

make

the

same

enquiry.

The

typical U. S. specification usually states that the

invention consists in the novel construction

and

combinations of elements described in the

specifi-cation

and more

particularly pointed out in the

claims.

But

the

American

specification generally

doesnot pointoutthe "invention,"

and

withoutthe

claims itis,

more

often than not, impossible to

as-certain justwherein theinventionlies. Therefore

itwillberealizedthat

French

specifications

which

are

mere

translations of

American

specifications

are likely to be misunderstood or construed

nar-rowly, if the judge cannot tell

what

is

construc-tionalonly

and

what

isthe real invention.

COMPLEX

SPECIFICATIONS.

It

may

also be said, speaking generally, that

foreign examiners are

much

antagonized

owing

to

the extremely lengthy specifications filed abroad

in respect of

American

inventions, as it takes

up

agreat deal of theirtime in readingmatter

which

seemsto

them

tobe unnecessary.

The

conceptionthat the specificationisaddressed

totheskilled

workmen

exists in

Europe

as well as in America, but

we

in

America

who

write

specifi-cations have

no

very great opinion of the

intelli-genceoftheskilled

workman.

It is for

more

true tosayoftheaverage

American

specificationthatit is writtenforthe

layman

who

is unable to read a

drawing

without having every partdescribed.

Such

detailed descriptions arenotreallynecessaryinthe

U. S. practice,

and

could easily be avoided; in

fact,

some

of the leading

American

attorneys are

now

modelling their specifications

on

the lines of

Englishspecificationswith a greatdeal of satisfac-tion.

When

complex

descriptions

form

part of a

British

and

German

application, they

annoy

the

examiner

by imposing an

additional

burden

of

work

upon

him

when

he is already overworked,

and

his

whole

attitudeislikely to

become

prejudiced

when

hecontractsthe

voluminous

specification prepared

by

the

American

attorney with the short

and

suc-cinct specification of the foreign attorney.

The

golden rule for the foreign specification is

—

the

shorter the better.

SUMMARY.

Summarizing,

it has been

shown

that the

Amer-ican specification is a source of trouble in

Europe

becausethe functionofa specificationin

Europe

is

to point out the invention itself, in addition to

describing a practical

working

embodiment.

Itissubmittedthat theU. S. attorneycan avoid

themajorityofthese objections

by

adopting, at the

time ofpreparing specifications for filingin the U. S. Patent Offtce, thefollowing simplerules, which, it isthought,

make

not onlyfor

an

improvement

in

the conditions

under

which

patent applications for

American

inventorsareprosecuted abroad, butwill

alsobeof

some

assistance in the practice before the

U. S. Patent Office.

SUGGESTED

MODIFICATIONS OF

THE

V. S.

PRACTICE.

(1)

The

United States specification should con-tain a full statement of the inventive idea or

in-vention, viewed as distinct

and

apart

from

its

em-bodiment.

For

instance, inthe caseofthefirst

ap-plication for

an

automatic breech loading gun, the

specification

might

contain a statement to the

effect that, according tothe invention, the force of recoil is utilized to load the gun. This statement should be broad

and

quite functional, if possible,

omitting a reference to

any

ofthe elements

which

are

employed

to carry theinvention into practice.

It is preferable to precede this statement

by

an-other statementas to the

problem

to

which

the

in-ventionis directed.

Both

these statements should be containedinthe original

United

States

applica-tion,

and

subsequently

removed

if desired.

The

inclusion of a functional statement such as

thatoutlined above

may

be ofassistance to

Amer-ican attorneys in theUnited States practice, as the

preparationofthis statement gives an opportunity

ofdefining thescopeoftheinvention

from

the

func-tionalstandpoint,

and

viewed

from

this standpoint

theinventionoftenpresents aspects

which

can

form

the basis of important United States claims,

and

which

would

not beapparenttotheattorneyinthe

ordinary way.

(2)

The

specificationshould contain as

many

de-scriptions of modifications as possible, subject to

what

follows.

Those

modifications need not

ne-cessarily be illustrated. It

must

be

remembered,

however, sofar as the inclusion of descriptions of

modificationsisconcerned,thatit is

bad

practice in

the

United

States to disclose a valuable

modifica-tionor species inincompleteterms, butthe

modifi-cations referred to need not be the valuable ones.

For

everypreferable

way

ofcarryingout

an

inven-tion, there are generally

two

less practical ways. After having given the preferable way,

why

not

givetheothers?

Of

course, the U. S. Patent Office

willcall forthe cancellation ofthese modifications

if they are not illustrated,

and

having served

theirpurpose,they

may

be cancelled. Thereare of

course

some

cases

where

it

would

be

most

inad-visable to disclose species as suggested above,

and

inapplyingthissuggestion, thenatureofthe inven-tionitself

must

becarefully considered. Generally

speaking, thebroader the invention, the safer itis

to disclose a

number

of species.

(3)

When

the inventor has actually invented a

number

of

workable

speciesofa valuablenature,do not file separate

United

States applications for

them, but include

them

allinone

United

States

ap-plication

and

divide this application subsequently.

Under

the practice prevailing in allcountries with

the exception of the

United

States

and

Canada, a

number

of speciescan be includedina single

appli-cation,

and

in filing

under

the Convention it

sim-plifiesmatters considerablyto basethe Convention

applications

upon

a single

United

States

applica-tion. Moreover, in

Great

Britain, Italy, British

colonies

and some

other countries,it isnotpossible

to

combine

a

number

of

United

Statesapplications

ina singleapplication

under

the Convention.

For

instance, in the case

where

five speciesare claimed

in five U. S. applications, five applications are

re-quiredintheabovecountries,

where

one only

might

have been sufficient

were

this ruleobserved.

There

isafurtherimportant reasonforobservingthis rule.

In the case

where

four or five applications

upon

species are filedsimultaneouslyin

Germany,

oneof

the applications having claims

broad enough

to

cover all the species of the other applications, the

examiner

isaptto

misunderstand

the

broad

nature

of this application, seeing that it describes

one

species only,

whereas were

thefivespeciescontained

in a single application, he could not fail to

appre-ciate the underlying feature

common

to

them

all,

and would

probably grant a

broad

claim.

Machine,

method and

product

may

also be

ad-vantageouslyclaimedalltogetherinasingle

United

States application for the

same

reasons as those

given above.

(4) File

an

omnibus

claimwiththeUnitedStates

application.

The

following isaspecial

form which

will be

found

tobeparticularly suitable

:

"The

features of novelty substantially as

de-scribed

and

illustrated."

(5)

Make

the specification as short as possible.

European

attorneys, for the

most

part, have

dis-cardedthe practice of describing a

machine

in de-tail first,

and

thenitsoperation.

A

good

specifica-tion writer can generally describe not only the

parts, but also the operation of the parts, at the

same

time, so that

no

independent description of

theoperationis necessary,

and

the specification is

greatlyreducedin length.

The

United Statespatent attorney,

by

observing

these rules, will to

some

extent ensure that his

specification will receive better treatment

when

it

comes

before the foreign patentoffices

and

courts,

and

thiswithout prejudice to the

home

situation.

It is therefore

hoped

that these

remarks

will not

only leadtoabetterunderstanding

and

realization

of conditions

which

are prejudicial to the foreign

interests of

American

inventors, but will also

re-sultintheremovalof

some

ofthem.

In theappendix,the specification given on pages

70-72 of the U. S. Rules of Practice has been

re-written alongthelines indicated above, the

amend-ments

being

shown

in italics.

A

criticism of the

specification,

from

the

European

standpoint,is also

offered. i'^'"

APPENDIX

A.

The

American

'^'^type'" specification given in

THE

U. S.

Patent

Office

Rules

of Practice^

amended

in

accordance

with

foregoing rules.

My

invention relates to

improvements

in meat-chopping

machines

in

which

vertically

reciprocat-ing knives operate in conjunction with a rotating

chopping block;

and

the objects of

my

improvement

are,first,toprovideacontinuouslylubricated

bear-ingfortheblock;second, to affordfacilitiesforthe

proper adjustment of the knives independently of

each other in respect to the face ofthe block;

and

third, to reduce the friction of the reciprocating

rod

which

carries the knives.

In

accordance with one feature of

my

invention, Iutilize therotating

movement

of the block, or of

parts associated theretoith, to carry luhricating

medium

into thehearing

and

todistributeitin said

hearing.

Another

feature of m,yinvention consists

in providing adjusting devices

whereby

each knife

may

be adjusted vertically.

A

further feature of

my

invention consists in the provision of

an

anti-friction device so associatedwiththe reciprocating

rod carrying the knives that said rod can

recipro-cate freely

and

withoutfriction.

I attain these objects

by

tlie

mechanism

illus-trated in the

accompanying

drawing,in

which

Figure 1 is a vertical section of the entire

ma-chine; Fig. 2 a top view of the

machine

as it

ap-pears afterthe removalof the chopping block

and

knives; Fig. 3, a vertical section of a part of the

machine

on

the line 12, Fig. 2,

and

Fig. 4, a

de-tailedviewin perspectiveofthe reciprocating

cross-head

ofitsknives.

Similarlettersreferto similarparts throughout

the several views.

(The

tableorplateA,itslegsorstandards

BB,)

(

and

the

hanger

a,securedto theundersideofthe

)

(table,constitutethe

framework

ofthemachine.) In

thehanger a turnsthe shaftD, carrying afly-wheel

E, tothe

hub

of

which

is attached a crank o,

and

thecrank-pinp_,connected

by

linkh,toa pin

pass-ingthrough a cross-headG,

and

to the latteris se-cured a rod

H,

having at its

upper

and

cross-head

G,

and

to the latter is secureda rod

H,

havingat

its

upper end

across-headI,carrying theadjustable

chopping knives d d, referred to hereinafter.

The

cross-headG,reciprocated

by

the shaftD,is

provided with anti-friction rollers e e, adapted to

guides /f, securedto theundersideof the tableA,

sothat the reciprocation of this crosshead

may

be

accompanied

with as little friction as possible.

To

theundersideofa

wooden

chopping block

J

is secured

an

annular rib h, adapted to

and

bearing

in

an

annular groove iin the table

A(

see Figs. 1

and

2).

TMs

annular groove or channel is not of

the

same

depth, throughout, but

communicates

at

one or

more

points (two in the present instance)

with pocketsor recepticlesj jwiderthanthegroove

and

containing supplies of oil, in contact with

which

therib h rotates, so that the continuous

lu-brication ofthegroove

and

ribisassured.

The

rod

H

passes through

and

isguided

by

a central stand

K,

secured to the tableA,

and

projectingthrough

a central opening in the chopping block without

being in contact therewith, the

upper

portion of

the said stand being contained within a cover k,

which

is securedto the block,

and which

prevents

particles of

meat from

escapingthroughthe central

openingofthesame.

The

cross-head I, previously referred ,to,

and

shown

inperspective in Fig. 4,is vertically

adjus-table

on

the rod

H,

and

can be retained after

ad-justment

by

aset-screwx,the

upper

end

oftherod beingthreaded forthereception of nuts,

which

re-sisttheshocks

imparted

tothecross-head

when

the

knives are brought into violent contact with the

meat

or the chopping-block.

The

knives d d are adjustable independently of

each other,

and

of the said cross-head, so that the

coincidence of the cutting-edge of each knifewith

the face of the chopping-block

may

always be

as-sured.

I prefer to carry out this feature of

my

inven-tion in the

manner

shown

in Fig.4,

where

itwillbe

seen that

two

screw-rods

m m

risevertically

from

thebackofeachknife

and

passthroughlugs

n

n on

the cross-head, each rod being furnished with

two

nuts,one above

and

theother

below

thelugthrough

which

it passes.

The most

accurate adjustment of

the knives can be effected by the manipulation of

these nuts.

(A

circularcasing pissecuredtothe chopping-)

(block, so as to

form

onthe

same

a trough

P

for)

{keepingthe

meat

within proper

bounds

;

and

on

)

(theedgeofthe annularrib h, securedto the

bot-)

(tom

ofthe block, are teethr,forreceivingthose of)

(a pinion q,

which

may

be driven

by

the shaft

D)

(through the

medium

of

any

suitable system of)

(gearing, that

shown

in the

drawing

forming no)

(part of

my

presentinvention.)

(This shaft

D

may

be driven

by

a beltpassing)

(roundthepulley s,orit

may

be driven

by hand)

(from a shaft

W,

furnished at one

end

with a)

(handle t,

and

at the other witli a cog^^heel R,)

(gearingintoa pinion

on

the said shaftD.

)

(A

platform

T

may

be hinged, as at w, to one)

(edgeofthetableA,to support avessel inwhich)

(the

chopped

meat

can be deposited.

The means)

(by

which

it

may

be supported are

shown

in full) (lines,

and

the

most

convenient

method

of dis-)

(posing ofit

when

not in use is

shown

in dotted)

(lines, in Fig. 1.)

It will heobviousto those skilledin the art that

other constructions

might

he devised without

de-parting

from

my

invention.

For

example, the

pock-etscontaining theoil

might

he located at the sides

ofthehearinggroovei,although Iprefertouse the

arrangement

hereinhefore descrihed. Again, the

aforesaid adjustment of the knives

might

he

pro-duced hy

means

of

wedging

devices in place of the

nuts c.

The

anti-friction rollers

might

he also re-placed hy luhricated cylindrical hearing surfaces.

Iprefer,however,touse theconstruction described

and

illustrated.

I

am

aware

thatprior to

my

invention,

meat

chop-ping

machines

have been

made

with

vertically-re-ciprocating knives, operating in conjunction

with

rotating chopping-blocks. Ithereforedo not claim

such a combination broadly; but I claim: 1.

The

combinationina meat-chopping machine,

ofa rotary chopping-block having

an

annular rib,

with atablehaving

an

annularrecess

and

apocket

communicating

with the said recess, all

substan-tially as setforth.

2. In a meat-chopping machine,thecombination

of a rotary chopping-block with a reciprocating

cross-headcarrying knives, each of

which

is

verti-callyadjustable

on

the said cross-head

independent-lyofthe other, substantially as described.

3.

The

knife d,having

two

screw-rods

m

m,

at-tachedto its back, substantially as shown, forthe

purpose specified.

4.

The

combination,inameat-chopping machine,

of the reciprocating rod, carrying the knives, the

cross-headsecuredtothe said rod,

and

having

anti-friction rollers, with guides, adapted to the said

rollers, all substantiallysetforth.

5.

The

features of novelty suhstantially as

de-scribed

and

illustrated.

THESIZEOFTHESHEET MUSTBE EXACTLY

10 X15 INCHES. SEE RULE5e.r2>.

I^ia.4^

JC

£r, JV7.

-THISSPAceMU5TBEEIGHT INCHES'

APPENDIX

B.

Criticism of

the

U. S.

Patent

Office "'^type^^ specification

from

the european

standpoint.

(1)

The

Specification.

The

bracketed portions

are superfluous, describing parts whicb.

form no

part of tbe invention,

and

the operation of

which

can beclearly understood

from

thedrawing.

The

reference letter

p

is used to indicate

two

different

parts.

(2)

The Drawing.

The

parts are shaded too

heavily. Fig.4isunnecessary.

(3) Multiplicity of Invention.

According

to

British

and

German

practice, threeinventions are

involved.

There

is

no

relation

between

the

lubrica-tion of the blocks, the adjustment of the knives,

and

the anti-friction bearing for the reciprocating

rod.

Three

applications

would

be requiredtocover

these featuresindependentlyin

Germany

and Great

Britain.

(4) Suhject-matter. It is highly improbable

thatclaims2, 3

and

4coverpatenable

subject-mat-ter, as the knife adjustment

and

the anti-friction

guidesare

common

constructional features in gen-eralusein

machinery

;it ispossible,

though

doubt-ful,thatinvention

might

existinthe lubricating

de-vice forthe block,butifarotating device

was

used

prior to the invention for picking

up

oil in the

same

manner

inadifferenttypeofmachine, then

no

inventionwill be present.

Should

thisfeature be

novel, however, then it is

wrongly

claimed; it

should properly be claimed broadly as a

self-lubri-catingbearing applicable forusewithallclassesof

machinery.

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