1822. Evans V. Eaton. shown? The answer is obvious-it is to be shown from the specification. That such was the meaning of the Court is evident from their adopting almost the very words of the act of Congress, which are employed to describe the office of the specification, "so that a person understanding," &c. That nothing else could be their meaning is evident, for such, it cannot be denied, is the clear design of the act of Congress, and such is the established law as collected from authoritative decisions. The patent must not be more extensive than the invention; therefore if the invention consists of an addition or improvement only, and the patent is for the whole machine or manufacture, it is void. In England, the specification is not annexed to the patent, but is enrolled in Chancery. Yet the specification is a part of the patent for the purpose of ascertaining the nature and extent of the alleged invention." In this country, it is filed in the Department of State. An authenticated copy of it is always annexed to the patent, and forms a part of the patent, absolutely essential, because the patent, properly so called, in fact gives no description, referring for that to the specification. The established formula used in all patents, and to be found in the present patent, is, "the said improvement, a description whereof is given in the words of the said Oliver Evans himself, in the schedule hereto annexed, and is made a part of these presents." Now, what should the pa a Bull. N. P. 76. Boulton v. Bull, H. Bl. Rep. 463. tent comprehend? Where the combination of a certain number of the parts has existed, up to a certain point, in former machines, the patentee merely adding other combinations, the patent should comprehend such improvements only." And the cases that have been already referred to clearly decide, that if the invention be of an improvement only, it is indispensable that the patent should not be broader than the invention; and the specification should be drawn up in terms that do not include any thing but the im.provement. It is essential to point out what is new, and what is old, so as to show precisely the extent of the alleged improvement. "The patentee ought, in his specification, to inform the person who consults it, what is new and what is old. He should say, my improvement consists in this, describing it by words, if he can, or, if not, by reference to figures. But here the improvement is neither described in words or figures; and it would not be in the wit of man, unless he were previously acquainted with the construction of the instrument, to say what was old and what was new. A person ought to be warned by the specification against the use of a particular invention. It need not be denied that this description might be sufficiently given by reference; as to some other patented machine, or to some well known machine in familiar use. For instance, to use the illustration employed by Lord Ellenbo a Bevill v. Moore, 2 Marsh. Rep. 211. b Per Lord Ellenborough. M'Farlane v. Price, 1 Starkie's Rep. 199. 1822. Evans V. Eaton. rough, if we should say, take a common watch, and add or alter such and such parts, describing them. All that is contended, and that is fully supported by authority, and by the reason of the case, is, that the specification must, in some way or other, distinguish the new from the old, the improvement from what was known before, so as to show what the patented invention is, or else the patent is broader than the invention, and void. The decided cases in the United States are to the same effect. If the inventor of an improvement obtain a patent for the whole machine, the patent being more extensive than the invention, is void." The cases are brought together, well digested, and the principles stated in the Appendix to 3 Wheat. Rep. 13. How else can the extent of the improvement be shown? Shall it be by evidence at the trial? Then the design of the act would be entirely defeated, and the specification useless. The argument of the Court below upon this point is perfectly conclusive. To say that the patent may be for the whole machine, and the claim for as much as the plaintiff can prove to be original, or rather the defendant cannot disprove, is to make the right depend, not upon the patent, nor even upon the fact of originality, but upon the evidence the party may have it in his power to produce, and his intelligence and skill in applying it. The right, instead of being uniform every a Woodworth v. Parker, 1 Gallis. Rep. 439. Whittemore v. Cutter, 1 Gallis. Rep. 475. Odiorne v. Winkley, 2 Gallis, Rep. 51. where, might be one thing in one State, and another in another. In different Courts of the same State, it might be different. And even in the same Court, at different times, as the particular evidence happened to vary, it would be more or less extensive. The patent would in effect be nothing but an outline, large enough of course, to be filled up as occasion might serve. This is an absurdity, and, what is worse, a great temptation to fraud. Besides, under this supposition, how is any man to inform himself what it is that is patented, so that he may avoid the danger of infringement? It is too late at the time of trial, to answer any good purpose to the defendant. And how are the public to be informed at the expiration of the time, or how is a person of skill to be able to make the improvement; in short, of what use is the specification, unless it be to define, with precision, the extent and nature of the improvement? The act of Congress emphatically refers to the specification, and to that alone, as furnishing every thing, without extrinsic aid, and so it must do. If it be broader than the invention, the patent is void. But it is objected here, that this was a question for the jury, and not for the Court. Whether the specification is broader than the invention, may perhaps in some cases be a question of fact, or, a mixed question of fact and of law, the construction of the written instrument of specification being for the Court, and the other evidence in the case for the jury. But, if it be "incumbent upon the plaintiff to show the extent and nature of his improvement," and that is to be shown from the specification, then it is plainly incumbent upon him to show from the specification, 1822. Evans V. Eaton. 1822. Evans V. Eaton. where he claims for an improvement, that he has described an improvement as distinguished from a known machine. And that, it is submitted, being exclusively a question arising upon the face of the instrument, is a question for the Court. Let us examine the specification. Is there any thing in it which even professes to describe an improvement, as distinguished from a machine known or used before? Does it not plainly, and in terms, include the whole machine? That is evidently a question of law, upon the face of the instrument, and it may be confidently pronounced, that it does include the whole, and that no man can so read the specification, as to ascertain which parts are claimed by the plaintiff, and which are not; or, that there are any parts which are not claimed by him. But, it is due to the Court, further to say, that the charge in this respect, must, as in all other cases, be understood with reference to the allegations and to the evidence. If there had been an attempt to prove, or even an assertion, the most distant intimation, that men of skill in mechanics, bringing to the study of this difficult specification, the aid of peculiar knowledge, could discern in it a line between new and old, or any defined limits of improvement, that would doubtless have been fit to be heard, and whatever matter proper for the consideration of jury might have arisen, would have been submitted to the jury. But no such evidence was offeredthe record shows it. No such suggestion even was made; it was not pretended-the charge shows it; for the part excepted to was itself a reply by the Court to an argument of the plaintiff's counsel, |