The defendant's produced the combined glazing and embossing in the same way as the plaintiff's.

On cross-examination, Mr. May stated as follows:-There would be a great difference between the result produced by a single and by a double spiral [groove] upon the roller. The mechanical arrangement of the defendant's machine is the old calendering machine; but the roller in that was not grooved. I judge from reason, that, if these spirals were formed in one thread they would produce a different result than if they were formed in several threads. You may make it in spirals of 20 or 30. I think it is probable that each would produce a different result. If a spiral as fine as that in the defendant's roller is used, the difference between that and the plaintiff's would hardly be perceptible; but it would be against the spiral. The spiral and the circular must produce a different result: but I think that between a single spiral and the circular groove the difference would be *almost imperceptible. No doubt, there would be a difference between the [*135 result produced by the spiral and that produced by a circle; but the difference would, I believe, be almost imperceptible.

On the part of the defendant, it was objected,-first, that the plaintiff's invention was a mere application of old processes, and not the subject of a patent, secondly, that the plaintiff's original specification did not describe any invention; and that the process which it describes was impracticable also,-thirdly, that the plaintiff had not at the date of his first specification invented what he now claims as his invention,fourthly, that the disclaimer was void, on the ground that it departs from the specification, and also on the ground that it states that the rollers may be made of metal or any other suitable material, without giving any criterion of suitability,-fifthly, that the claim contained in the specification as altered by the disclaimer, is as extensive as the claim contained in the specification originally, and that the claim is too large, and bad,-sixthly, that the specification as altered does not state whether the production of watering patterns is claimed,-seventhly, that the disclaimer has confined the claim to the use of rollers with rings; and, as the defendant has used spirals only, he has not infringed.

The Lord Chief Justice reserved leave to the defendant to move to enter a verdict for him upon each of the objections above stated: and the jury found a verdict for the plaintiff, subject to the leave so reserved.

Grove, Q. C., on a former day in this term, obtained a rule nisi accordingly, on the grounds,-"that the alleged invention is not the subject of a patent, that it is a mere application, that the plaintiff claims for a principle alone,-that he had not invented what he [*136 *represented himself to have invented,―that the specification with or without the disclaimer gives no sufficient means of performing the invention, and misleads the public, in not stating what the plaintiff really had invented, that the disclaimer discloses a different invention from the original specification,-that the disclaimer extends the exclusive right granted by the letters patent,-that the claim in the disclaimer is too large, ambiguous, and vague, that the defendant has not infringed as alleged in the declaration." The cases of Brook v. Aston, 8 Ellis & B. 479 (E. C. L. R. vol. 92), Seed v. Higgins, 8 Ellis & B. 755, and Higgins v. Seed, 8 Ellis & B. 771, were cited.

C. B. N. S., VOL. IX.-7

Knowles, Q. C., and Hindmarch, on a subsequent day showed cause.The object of the plaintiff's patent was to effect the performance of the two operations of calendering and embossing by one process,-by means of an engraved roller to which a more rapid motion was given than to the bowl. Ever since the case of Crane v. Price, 5 Scott N. R. 338, 4 M. & G. 580 (E. C. L. R. vol. 43), 1 Webster's P. C. 409, it is conceded that any process by which a new result is arrived at by an expenditure of less time and money than it had before been arrived at by two separate processes, may be the subject of a patent. In Booth v. Kennard, 1 Hurlst. & N. 527,† vegetable gas had been obtained from oils which were separated from seeds and other oleaginous substances by pressure: it was discovered that gas might be distilled at once from the seeds, &c., without first separating the oil: and it was held, that, assuming the invention to be new, it was such as might be the subject of a patent. Cockburn, C. J., in giving the judgment of the Exchequer Chamber, says: "The patent claims the making gas directly from seeds and other oleaginous substances instead of making it from oils. By this means the patentee gets rid of one of two processes. Previously to the date of the patent, gas had been obtained by a par*137] ticular apparatus from oils which were first separated from the substances containing them, by pressure. The patentee has discovered that the first process may be dispensed with. That is a useful invention, and the patent is sustainable if the invention is new." In Newall and Elliott v. Glass, 4 C. B. N. S. 269 (E. C. L. R. vol. 93), A. was the inventor of "improvements in apparatus employed in laying down submarine electric telegraph wires." In the provisional specification filed pursuant to the 6th section of the 15 & 16 Vict. c. 83, the invention was thus described, "The cable or rope containing the insulated wire or wires is passed round a cone, so that a cable in being drawn off the coil is prevented from kinking by means of the cone, and there is a cylinder on the outside which prevents the coil from shifting in its place." In the complete specification, after describing the invention in the same terms, the inventor proceeded to say,-"When the wire or cable is to be laid down, I place over the cone an apex or top which is conoidal or conical, and around this I suspend several rings of iron or other metal by means of cords, so as to admit of adjustment at various heights over the cone. The use of these rings is, to prevent the bight of the rope from flying out when going at a rapid speed, and the combination of these parts of the apparatus prevents the wire or cable from running into kinks:" and the claim at the end was thus,-"What I claim as my invention is,— first, coiling the wire or cable round a cone,-second, the supports placed cylindrically outside the coil round the cone,-third, the use of rings in combination with the cone as described:" and it was held that the substitution by B. of a cylinder having a domed or hemispherical top, for the cone or the cone with the conoidal apex in A.'s apparatus,-A.'s apparatus and B.'s being used for the same purpose, and in nearly the *same manner, was evidence, and strong evidence, of infringe

*138] ment. So, here, there was no real difference between the plain

tiff's machine and the defendant's. A new combination resulting in an improved or a cheaper article, has always been held to be the subject of a patent. So, the omission of a portion of an old process, as leaving out the mandril, in Whitehouse's Patent, Russell v. Cowley, 1 Webster's

P. C. 459,-has been held to be the subject of a patent. Before the date of a patent, part of the garancine had been obtained from madder by boiling, and the refuse or spent madder had been thrown away as useless. It was known that the spent madder contained garancine, but no one had extracted it from the spent madder. The whole of the garancine had, however, been obtained from fresh madder by a certain process. A patent having been granted for extracting the garancine from spent madder by this process, it was held by Pollock, C. B., at nisi prius, not to be a new manufacture: Steiner v. Heald, 2 Car. & K. 1022 (E. C. L. R. vol. 61): but the Court of Exchequer Chamber held, on exceptions to that ruling, that it was a question for the jury: 6 Exch. 607. Patteson, J., delivering the judgment of the court, there says,"It appeared in evidence, that the common mode of using madder for dyeing was by grinding it to powder and putting it into the dye-bath. with cloth and other things, to make the cloth take up the colouring matter. When the cloth was taken out of the bath, there remained a substance which was called 'spent madder.' It was known to dyers that this spent madder still contained colouring matter; but no mode of making use of it for dyeing purposes was known before the plaintiff's patent. Attempts were made to use it for manure, but they appear to have failed; and 'spent madder' was always thrown away as useless. Subsequently, it was *discovered, that, by the application of [*139 heat and acid to 'fresh madder,' the whole colouring matter might be extracted; and when so extracted, it formed a substance called garancine; and this process was known and commonly used. Afterwards, the plaintiff discovered, that, by the same process of heat and acid, garancine could be extracted from 'spent madder,' as well as from 'fresh madder.' Here is no new contrivance; for, the process used under the plaintiff's patent with 'spent madder' is the same as that previously used with fresh madder:' neither is the product new; for, garancine produced from the one and the other appears to have precisely the same qualities. If, therefore, the patent be good, it must be on account of the old contrivance being applied to a new object, under such circumstances as to support the patent. Now, 'spent madder' might be a very different thing from 'fresh madder' in its properties, chemical and otherwise. Or it might be in effect the same thing as 'fresh madder' in its properties, chemical and otherwise, with the difference only that part of its colouring matter had been already extracted. Again, the properties, chemical and otherwise, of both might or might not have been known to chemists and other scientific persons, so that they could tell whether 'fresh madder' and 'spent madder' were different things, or substantially the same. These points appear to us to be questions of fact, and materially to affect the validity or invalidity of the patent, and to be questions of fact to be found by the jury by way of inference or conclusion of fact from the evidence adduced on the trial." The same principle was acted upon in Higgs v. Goodwin, 1 Ellis, B. & E. 529 (E. C. L. R. vol. 96). Brook v. Aston, 8 Ellis & B. 478 (E. C. L. R. vol. 92), is the only authority of any weight cited. on the motion upon this point: but there the claim showed no novelty or invention in the mode of applying the old machinery to the new

purpose.

*Then as to the effect of the disclaimer. The 1st section of *140] the 5 & 6 W. 4, c. 83, enacts "that any person who, as grantee, assignee, or otherwise, hath obtained, or who shall hereafter obtain letters patent for the sole making, exercising, vending, or using of any invention, may, if he think fit, enter with the clerk of the patents in England, &c., having first obtained the leave of His Majesty's attorneygeneral or solicitor-general, &c., certified by his fiat and signature, a disclaimer of any part of either the title of the invention or the specification, stating the reason for such disclaimer, or may, with such leave as aforesaid, enter a memorandum of any alteration in the said title or specification, not being such disclaimer or such alteration as shall extend the exclusive right granted by the said letters patent; and such disclaimer or memorandum of alteration, being filed by the said clerk of the patents, and enrolled with the specification, shall be deemed and taken to be part of such letters patent or such specification in all courts whatever." Then follow provisions that a caveat may be entered, that the disclaimer or alteration shall not affect actions pending, and that the party may be required to advertise the disclaimer. This statute, therefore, authorizes the entry of a disclaimer or a memorandum of alteration of any description which does not extend the patent right. The object of the disclaimer is to excise from the title or the specification a portion of the original claim which has been erroneously described. In Stocker v. Warner, 1 C. B. 148, 165 (E. C. L. R. vol. 50), Tindal, C. J., says: "I never can consider that the entering of a disclaimer as to part of a specification necessarily imports that the patent is bad. The object of that proceeding is, not merely to set right the description of the alleged invention where it is known to be wrong, but to obviate any doubt that may arise on the specification as enrolled." So, in The *Queen

*141] v. Mill, 10 C. B. 379, 392 (E. C. L. R. vol. 70), where the subject was fully discussed, Maule, J., says: "The act does not give the patentee an absolute and uncontrolled power to disclaim, but only subject to the discretion of the attorney or solicitor-general, who, acting as a judicial officer, is to determine whether that which is sought to be done is fit to be allowed, regard being had to the rights and interests of the public. The power to disclaim being thus given, the legislature go on to provide that such disclaimer or memorandum of alteration,'—that is, subject to the allowance of the attorney or solicitor-general,- being filed by the said clerk of the patents, and enrolled with the specification, shall be deemed and taken to be part of such letters patent or such specification in all courts whatever.' It then imposes a further restriction upon the rights of the grantee,- Provided always that any person may enter a caveat, in like manner as caveats are now used to be entered, against such disclaimer or alteration: which caveat, being so entered, shall give the party entering the same a right to have notice of the application being heard by the attorney or solicitor-general, or lord advocate, respectively.' I consider, therefore, we are bound by the words of the act to deal with the disclaimer as part of the specification as from the date of the specification, though enrolled subsequently.' Taking the original specification here, together with the disclaimer and memorandum of alteration, the patentee has well described that which is properly the subject of a patent: and the evidence is abundantly sufficient to show that the defendant's machine with the spiral curves or

grooves upon the roller is an infringement of the plaintiff's invention of the roller with circular grooves, the effect of the two being to all intents and purposes the same.

*Grove, Q. C., Mellish, and Aston, in support of the rule.The thing claimed here is not properly the subject of a patent. [*142 It is admitted that the differential motion of the roller and the bowl is not new; and it is also admitted that the use of a patterned roller for embossing was well known at the date of the patent: but the patentee seeks to have a monopoly for the combination of the differential motion and the patterned roller. There is a material distinction between the application of a new contrivance to an old object, and of an old contrivance to a new object: per Lord Abinger in Losh v. Hague, 1 Webster's P. C. 202. To sustain a patent, there must be invention of some sort. The cases relied upon on the other side are all distinguishable: in each of them a new or improved result was produced by means before unknown. It was upon that principle that the court proceeded in Brook v. Aston, 8 E. & B. 478 (E. C. L. R. vol. 92). A patent was taken out in 1853, for, amongst other things, improving the texture of the threads of cotton and linen yarns by exposing the threads, in a distended state, to the action of beaters, the effect of which was to polish the sides of the threads and produce smoothness and a glacé effect. In 1856, the plaintiffs took out a patent for, amongst other things, an improvement in the finishing yarns of wool or hair, by exposing their threads in a distended state to the action of machinery which, it was admitted, was substantially the same as the machinery described in the patent of 1853. The claim in the plaintiffs' specification was, amongst other things, to the invention of "causing yarns of wool or hair whilst distended and kept separate to be subjected to the action of rotatory beaters or burnishers, whereby the fibre is closed and strengthened, and the surface effectually polished." On the trial of an action for the infringement of the plaintiffs' patent, it was proved that the process of the *patentees of 1853 had not previously been applied to wool or [*143 hair; and evidence was given that the effect upon wool was not the same as upon linen and it was held that the plaintiffs' specification claimed what was merely the application of the old machinery in the old manner to an analogous subject, and was not the subject-matter for which a patent could be claimed, and consequently that the plaintiffs' patent was wholly void. Lord Campbell said: "It seems to me that this specification claims what is not an invention for which a monopoly can be claimed. It may well be that a patent may be valid for the application of an old invention to a new purpose; but, to make it valid, there must be some novelty in the application. Here there is none at all." The case of Seed v. Higgins, 8 Ellis & B. 755 (E. C. L. R. vol. 92), proceeds upon the same principle. Here, the defendant's machine is no infringement of the plaintiff's alleged invention: it differs essentially in all that can be said to be new from that described in the specification as coupled with the disclaimer.

A patentee is bound to describe his invention properly, or, as is said by Alderson, B., in Morgan v. Seaward, 1 Webster, P. C. 170, 173,— "It is the duty of a party who takes out a patent to specify what his invention really is; and, although it is the bounden duty of a jury to protect him in the fair exercise of his patent right, it is of great import