Scottish Court of Session Decisions

William Bailey, of Wolverhampton, with consent of Henry Medlock, of Charles Street, St James', for his interest, and Messrs A. & W. Mactear, Glasgow, their mandatories, presented a petition to the Sheriff of Lanarkshire against J. & D. Roberton, butchers, Glasgow, applying for interdict under the following circumstances. By letters-patent, dated the 27th June 1866, a patent for an invention for “Improvements in preserving Animal Substances” had been granted to the petitioners in the usual terms. In the provisional specification which was lodged along with the petition “the nature” of the invention was declared to be as follows:—“The object of the said invention is to preserve animal substances, such as meat, poultry, game, and fish, for a long time in a fresh state, so that when eaten they cannot be distinguished from the same when recently killed; and for the preservation of hides. For this purpose we dissolve the ordinary commercial gelatine in boiling water, using about two pounds of gelatine to ten pounds of water. We then add, while hot, a volume equal to the volume of the solution of gelatine of a solution of bisulphite of lime (usually expressed by the formula CaO, 2SO₂) in water of about the specific gravity of 1070. While the solution of gelatine and bisulphite of lime is still warm and liquid we coat the substance to be preserved with it, either by dipping the substance into it or by brushing it over with two or three coats of the solution. If the substance has to be transported any distance in wooden vessels, the vessels should be saturated with some of the before-mentioned solution of bisulphate of lime in water, and when dry brushed over with the said solution of gelatine and bisulphite of lime. When the solution of gelatine and bisulphite of lime has firmly solidified on the surface of the animal substance, the latter may be packed, the vessel being closed as air-tight as possible. For the preservation of hides the interior surface only requires to be coated with the solution of gelatine and bisulphite of lime. The coating on the hides and the hides must be dried before they are packed. Before treating the animal substance other than hides as above, the viscera must be removed and the inside washed free from blood; it is then to be coated internally and externally as above described, and before it is cooked the coating of gelatine and bisulphite of lime must be removed by soaking it for a sufficient time in water.”

The specification which was filed on 26th December 1866 was, inter alia, to the following effect:—“The nature of our said invention is to preserve animal substances, such as meat, poultry, game, fish, and other animal substances for a long time, and so that the same substances when so preserved, and although the animals from which the same are derived have been killed for a considerable time, cannot be distinguished when cooked from the like substances derived from similar animals which have been recently killed, and also for the preservation of hides.

The manner in which our said invention is performed is as follows:—We employ a solution hereinafter distinguished as solution No. 1, being a solution of bisulphite of lime (usually expressed by the formula CaO, 2SO₂) in water of about the specific gravity of 1050, which specific gravity we find preferable to that of 1070. We sometimes form a solution, hereinafter distinguished as solution No. 2, by dissolving the ordinary commercial gelatine in boiling water, using from one part to two parts of gelatine in ten parts of water and adding ten parts of solution No. 1. In determining the proportion of gelatine to be used, we increase such proportion in inverse ratio to the decrease of the temperature of the place at which the solution is to be applied, using a larger proportion of gelatine when the temperature is low and a smaller proportion of gelatine when the temperature is high. Solution No. 2 is adapted for coating animal substances intended to be preserved, such as joints of meat, animals

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which have been skinned, poultry and birds which have been plucked, fish, and also the internal surfaces of hides. For this purpose the viscera of the animals, birds, and fish, and also the gills of fish, should be removed, and the inside washed, so as to be thoroughly cleansed from blood and offensive matter. We then apply solution No. 2 while still warm and liquid to coat such animal substances, either by dipping such substances into such solution, or by brushing such substances over with two or three coats of such solution. Such solution is then allowed to dry and solidify, and, if required, we pack such animal substances in casks or other suitable vessels, rendered as airtight as may be. As to hides, we first cleanse the same by washing the inside thereof; we then apply solution No. 2 while still warm and liquid to coat the interior surface of such hides, but such interior coating, and also the hides themselves, must be rendered dry before the hides can be packed; the hides can then be packed in casks or other suitable vessels, but if the hides are to be used within a short period, say two months after the application of this solution, we do not find such packing necessary.

For the preservation of animals without removing the skin or external covering thereof, and without removing hoofs or horns, we find it advantageous to employ a solution, hereinafter distinguished as solution No. 3, formed by mixing one part of salt with ten parts of solution No. 1, and from six to ten parts of water. We vary the proportion of water according to the temperature of the place at which the solution No. 3 is to be applied, using a larger proportion of water where such temperature is low, and a smaller proportion of water where such temperature is high. For this purpose, at the slaughtering of the animal, &c.…..

For the preservation of fish we find it advantageous to employ a pickle or solution, hereinafter distinguished as solution No. 4, formed by mixing ten parts of cold. water, one part of salt, and one part of solution No. 1. For this purpose we first deprive the fish of the viscera and gills, &c.…

We find that solution No. 4 is also useful for preventing and arresting decomposition in fresh butchers' meat, game, poultry, and fish. For this purpose the animal substance to be treated may be dipped into the solution or wrapped in a cloth saturated with such solution.

What we consider to be novel and improvements, and therefore we claim as the invention secured to us by the said in part recited letters-patent are—

Firstly, the use of solution No. 1 for preserving animal substances.

Secondly, the preservation of joints of meat, animals from which the skin or feathers have been removed, fish, and hides, by means of solution No. 2 in manner hereinbefore described.

Thirdly, the preservation of animals without removing the skin by means of solution No. 3 in manner hereinbefore described.

Fourthly, the preservation of fish, game, and poultry by means of solution No. 4 in manner hereinbefore described.

Fifthly, the preventing and arresting decomposition in animal substances by means of solution No. 4 in manner hereinbefore described.

But we do not claim the employment of gelatine or salt, nor of the processes of cleansing or injection, nor of air-tight vessels, except in connection with and in aid of solution No. 1, and for the purpose of preserving animal substances, nor do we claim the use of solution No. 1 except for the purpose of preserving animal substances.”

Medlock had afterwards for a consideration assigned to Bailey all right and title he had in the patent, which, as Bailey stated in his petition and condescendence, consisted “in the use of bisulphite of lime (usually expressed by the formula CaO, 2S0₂) in solution by itself for preserving animal substances, and in manner described in said specification, along with gelatine or salt for preserving animal substances, including joints of meat, butchers' meat, the bodies of animals which have been skinned, poultry and birds which have been plucked, fish, birds, unskinned animals, and others, and for the preventing and arresting of decomposition in animal substances.”

The respondents, it was averred, had in the course of their business as butchers during several years, and particularly in 1873 and 1874, been using the invention specified, and further had been in the regular practice of procuring bisulphite of lime in solution from the manufacturers, without the consent of the patentees, for the object of preservation as above narrated. Interdict against them was therefore asked.

The respondents in their statement of facts averred that they had carried on business as butchers in Glasgow for seven years, and that for three or four they had used bisulphite of lime in preserving their meat. They obtained it from Messrs A. & W. Mactear, the petitioner's agents, and others. They further alleged—“(Stat. 2) The solution of bisulphite of lime is an article which has been in common use in this country for many years past, and long prior to June 1866 (the date of the petitioner's alleged letters-patent). It is a well-known article among chemists, and has been known for thirty years at least..… In particular, bisulphite of lime, or the article now commonly known by that term, was, between the 1st January 1861 and the dates of the pursuer's alleged patent, publicly used by William Rattray, chemist, Aberdeen, for preserving animal substances, and that within his place of business, Aberdeen, and elsewhere within the United Kingdom. (Stat. 3) The respondents have all along applied, and still apply, the bisulphite of lime to their meat in the pure and simple condition in which they receive it from the sellers. They have never mixed it with water or with any materials such as gelatine or salt, but they simply apply to the meat the article known as bisulphite of lime without any admixture whatever.” They further alleged a want of novelty in the petitioner's patent, averring that the improvements supposed to be contained in it were to be found in a patent granted in 1863 to Alexander Hett and J. W. Basset for the invention of “improvements in preserving animal substances, and animal and other substances used for food.” The alleged improvements were also to be found in other prior letters-patent; and, inter alia, in that granted in 1861 to William Rattray, Aberdeen, for the invention of “improvements in preserving organic substances.”

It was further objected to the petitioner's patent that the final varied materially from the provisional specification in the following respects:—“(Stat. 11) The provisional specification applies,

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first, to a combination of gelatine with bisulphite of lime, by dipping or coating the animal substance; and second, to the saturation of wooden vessels with the bisulphite of lime solution before applying to them the combination of bisulphite and gelatine. The final specification claims five different things, viz. (first) the use of solution of bisulphite of lime for preserving animal substances; (secondly) the preservation, of joints of meat, &c., by solution of bisulphite of lime and gelatine; (thirdly) the preservation of animals by means of solution of bisulphite of lime, salt, and water; (fourthly) the preservation of fish, &c., by solution of bisulphite of lime, salt, and cold water; and (fifthly) the preventing and arresting decomposition in animal substances by the last-mentioned mixture. (Stat. 13) The provisional specification of the petitioners does not refer to the use of a solution of bisulphite of lime alone to preserve animal substances, and the final specification, in stating the manner in which the alleged invention is performed, does not mention the use of a solution of bisulphite of lime alone.”

The respondents pleaded, inter alia—“(1) The respondents having made use of bisulphite of lime alone for the preservation of meat, and that article having been well known and generally used by the public prior to June 1866 (the date of the alleged letters-patent), the respondents have not infringed the alleged letters-patent. (2) The alleged letters-patent and relative specification do not apply to the use of bisulphite of lime alone in the preservation of animal substances, and the use of that article alone is not an infringement of the alleged letters-patent. (4) Assuming that the alleged letters-patent and relative specification apply to the use of bisulphite of lime alone in the preservation of animal substances, the same, quoad that application, are null and void, in respect that the said Henry Medlock and William Bailey, the alleged patentees, were not the first and true inventors of the said application. (8) The letters-patent are null and void, in respect that the final specification claims the absolute application of bisulphite of lime for the preservation of animal substances, without limiting its application to the modes of using it described in the specification.”

Both parties were allowed a proof of their averments, the purport of which sufficiently appears from the judgments pronounced in the case.

The Sheriff-Substitute ( Guthrie) pronounced an interlocutor in which, after certain findings, he repelled the defences, and granted interdict as craved.

The defenders appealed to the Sheriff ( Dickson), who pronounced the following interlocutor:—“Having heard counsel for the defenders and the pursuer's agent on the defenders' appeal, and considered the record and proof, adheres to the findings in the judgment appealed against, that the pursuer is assignee of the letters-patent mentioned in the said judgment, and that in pursuance thereof he and the original patentee filed the specification (hereinafter called the complete specification) mentioned in the judgment: For the reasons stated in the note hereto, recals the said judgment quoad ultra: Finds that the said complete specification sets forth that the manner in which the alleged invention to which it applies is performed is by employing a solution of bisulphite of lime (mentioned in the specification as solution No. 1) alone, and also in combination with certain other solutions: Finds that the defenders used the said solution No. 1 alone for preserving animal substances, but that it is not proved that they used it in combination with any of the said other solutions: Finds that the said letters-patent were issued after the said original patentee had lodged in the Patent Office a provisional specification describing the nature of his alleged invention: Finds that the said provisional specification does not describe the use of the said solution No. 1, or any other solution of bisulphite of lime alone as a means of preserving animal substances, but merely describes it as to be used in combination with a solution of gelatine: Finds that the said complete specification does not sufficiently describe the manner in which the said solution No. 1 is to be employed for preserving animal substances: Finds that a solution of bisulphite of lime for the said purpose was not a new invention at the time the said letters-patent were obtained: Therefore, and under reference to the note hereto, finds that the said letters-patent are not effectual for preventing the defenders from using the said solution No. 1 alone for the said purpose: Sustains, accordingly, the defences to that effect, and refuses the prayer of the petition.

“ Note.—Questions of considerable difficulty and importance are involved in this case.

The pursuer avers on record that the defenders have used for the preservation of meat a solution of bisulphite of lime similar to No. 1, both alone and in combination with other substances mentioned in his letters-patent. But he admittedly failed to prove their use of it except alone.

On the other hand, the defenders' counsel admitted that they have used a solution similar to No. 1 in such a way as to infer an encroachment on the pursuer's rights if the patent validly prohibits such use. They contend that it does not, on the following grounds:-

I. It does not apply to No. 1 solution when used alone.

II. The complete is materially different from the provisional specification.

III. The former does not describe the mode of using No. 1 solution alone; and

IV. The use of such a solution for preserving meat was not a new discovery of the patentee.

I. The proper construction of the complete specification is thought to infer the use of No. 1, not only along with the other solutions which it specifies, but alone. At the same time, the absence (1st) of any explanation as to the mode of using it alone, and (2d) of any reference in the provisional specification to that use, makes it doubtful whether the patentee intended his complete specification to bear such a meaning.

II. A comparison of the complete with the provisional specifications shows that the latter states the object of the invention to be to preserve animal substances for a long time in a fresh state, ‘so that when eaten they cannot be distinguished from the same when recently killed.’ It does not mention the preservation of such substances salted. But the complete specification includes the use of solution No. 1 with one of salt, which admittedly would not preserve the meat fresh. It may be doubted whether the patent can cover the latter process.

But without dwelling on this, it will be observed that the provisional specification thus describes the process for which the patent is

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claimed:—‘We dissolve the ordinary commercial gelatine in boiling water, using about two pounds of gelatine to ten pounds of water. We then add, while hot, a volume equal to the volume of the solution of gelatine, of a solution of bisulphite of lime (usually expressed by the formula CaO, 2SO₂) in water of about the specific gravity of 1070. While the solution of gelatine and bisulphite of lime is still warm and liquid, we coat the substance to be preserved with it, either by dipping the substance into it, or by brushing it over with two or three coats of the solution.’ The directions conclude thus:—‘Before the meat is cooked, the coating of gelatine and bisulphite of lime must be removed by soaking it for a sufficient time in water.’

The process is thus the application to the meat of solutions of gelatine and (what is called) bisulphite of lime in combination, in defined proportions, warm and externally, so as to produce a coating which must be removed before the preserved meat can be cooked.

The complete specification repeats this description as to the use of ‘solution No. 2,’ with only an unimportant modification in the specific gravity of the dissolved bisulphite. So far it is unobjectionable.

But it also specifies the solution No. 1 uncombined with gelatine, without saying whether it is to be applied hot or cold, or whether it is to be used only externally and by way of coating, or otherwise. It thus includes application by injection, by saturation, and by mixing up with the meat when minced, the latter being one use by the defenders which the pursuers seek to prevent. The one specification deals with the combined solution as unfit for the human stomach, from being either unpalatable or deleterious; the other deals with one of the compounds as being wholesome, for it says nothing about its removal before the meat to which it is applied is cooked.

It is not easy to see how preserving meat by means of two solutions, the remains of which ‘ must be’ removed before consumption of the meat, can be held as identical with preserving meat by one of the two solutions, which may be left on, or mixed up and eaten with the meat. It may hardly be imagined that the patentee had the simple and wholesome agent in view when he got a patent for the compound and apparently unwholesome, one.

It was urged for the pursuer (and is clearly proved) that the only preserving element in the double solution is the bisulphite, the gelatine being only used as a ‘vehicle,’ and for fixing it on to the meat. But in the provisional specification the two substances stand together as equally important; or, if one could be said to be the more so, it would be the gelatine, which is mentioned first, and to which the bisulphite is to be ‘added.’

It will not do for a patentee to say,—as the pursuer now does,—that of the two substances apparently equally essential to his invention one is non-essential, being merely intended for conveying and fixing the other. The provisional specification contains no data for thus discriminating between the two. It claims the preserving virtue for them in combination—for neither of them alone.

The object of every provisional specification is to disclose the nature of the alleged invention. It is published in order that all persons interested may have an opportunity of opposing the application for the patent, and that the law-officer may know what is claimed as an invention (15 and 16 Vict. cap. 83, sects. 12, 14).

It may fairly be contended that while persons in the defenders' trade may have known that a solution of bisulphite of lime was a preserving agent, which could be applied in certain ways, they did not know of the special virtues claimed (rightly or not) for a combination of it with dissolved gelatine, applied hot, and by way of a coating over meat. They had therefore no reason to dispute such a claim.

If, however, the provisional specification had disclosed a claim for a patent for preserving meat in any and every way by bisulphite of lime, Mr Clark, who held at the time a patent for doing so by solutions of bisulphites generally (without specifying that of lime), and Mr Rattray, who held one for a process consisting partly of enveloping the meat in cloth steeped in a concentrated solution of sulphite ( i.e., a solution of bisulphite) of lime, would have had an opportunity of opposing the application. They were deprived of that opportunity by the provisional specification not making such a claim. The law-officer must also have been unaware, and been misled as to the true nature, of that alleged invention as stated in the complete specification.

The object of the statute in requiring a provisional specification to be lodged and published would be defeated if the patent in this case were held to cover the use of the bisulphite alone.

The importance of any material difference between the provisional and complete specification is evident from the terms of the Patent Law Amendment Act (15 and 16 Vict. cap. 83). The former is there defined (sect. 16) as the ‘provisional specification, describing the nature of the said invention.’ The form for it in the schedule is—‘I do hereby declare the nature of the said invention for … to be as follows,’ &c., and it is for the invention as there described that the letters-patent are issued. The complete specification is filed afterwards by the patentee, and is not examined or passed by any public officer.

The invention patented is that described in the provisional specification, which the complete specification may and ought to amplify and supplement in matters of detail, but from which it may not vary materially.

This is clearly laid down by Lord Chief-Baron Pollock in Newall v. Elliot (1864, Higgins' Patent Cases, 163, and in 10 Eng. Jur. N. S. 955)—‘The object of the statute, which requires a provisional specification, is nothing more than a legislative recognition of the custom which called upon every patentee when he applies for the patent to give some notion of what his invention is. That has been followed by an Act of Parliament requiring it to be done; but the object in both cases is to ascertain the identity of the invention, and to make it certain that the patentee shall ultimately obtain his patent for that invention which he presented to the Attorney-General in the first instance…. I have no doubt that the object of the Act of Parliament was not to ascertain the entirety of the invention, but the identity of the invention, so as to enable the Attorney-General, and in fact to enable a jury, ultimately to determine whether the invention fully specified was the

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same invention as that which was presented to the notice of the Attorney-General by the provisional specification.’ Baron Channell said in the same case—‘I entirely adopt the test which my Lord Chief-Baron suggested, that the question is as to the identity of the invention which is disclosed by the full specification with that of which a short note or minute was made in the provisional specification.’

The law is laid down to the same effect by Lord Chancellor Westbury in Foxwell v. Bortosh (1864, Higgins' Patent Cases, 164, 10 Law Times, N. S. 144); and by Lord Chancellor Chelmsford in Penn v. Bibby (1866, Higgins' Patent Cases, 165, Law Rep., 2 Chanc. 134).

The same rule was laid down by Lord Chief-Justice Erle in Thomas v. Welsh (1 Law Rep., C. P. 192), in which the patentee succeeded on the ground that the ‘difference between the provisional and complete specification was a slight one which injured nobody.’

The pursuer's agent contended that a Sheriff Court must disregard these authorities, on account of the observations of the Lord President in Dudgeon v. Thomson (1873, 11 Macph. 863), that ‘the plea’ (of disconformity between the provisional and final specification) ‘as stated, is altogether futile; nor do I think it a relevant plea in law; because if the letters patent and complete specification are in accordance with one another, and the two make a valid and complete patent, then an imperfection in the provisional specifiation, I apprehend, would be altogether immaterial.’ It is evident, both from this observation itself and from the rest of the opinion, that his Lordship did not mean to lay down that disconformity between the provisional and complete specifications would not in any case be fatal, and that he only criticised the plea ‘as stated,’ that mere disconformity in itself is fatal, and observed that a mere imperfection ( e.g. incompleteness) in the former is unimportant. For the learned Judge goes on to say—‘It appears to me that in these circumstances the true question under a plea of this kind is, whether the complete specification goes beyond the title and provisional specification, for these two must be taken together. … Is there something more claimed in the complete specification than was claimed and disclosed in the title and provisional specification?’

Applying the principles thus explained to the present case, the Sheriff considers that the pursuer's complete specification both materially differs from and goes beyond the provisional specification; the latter having been limited to the use of a solution of bisulphite of lime in combination with one of gelatine, applied at a particular temperature and externally, while the former extends to the use of the solution of the bisulphite in every way, at every temperature, and both alone and in that combination.

It is unnecessary to say whether the effect of this difference is to render the patent null to all intents. It is enough that it is fatal to the patent for a solution of the bisulphite as a preserving agent in the unqualified terms claimed in the complete specification. The defence to that effect, therefore, falls to be sustained.

III. The defenders contended that the complete specification does not describe the mode of applying solution No. when used alone, to which the pursuer answered that any such description is unnecessary, because the solution can easily be, and has been, successfully applied by persons skilled in such matters, which is all that the law requires.

This question involves two points—(1st) Whether, in point of law, a patent for a process is sufficient which does not define at all the way in which the materials employed in the process are to be employed? and (2d) Whether, in point of fact, the solution No. 1 can be employed properly without special instructions.

(1) It must be kept in view that the patent is not for a preserving agent the mode of using which had been previously known, but for preserving meat by means not previously known. It is for producing a certain result by (alleged) newly discovered means, viz., the use of a certain solution. In other words, it is for a process.

The law is laid down in all the authorities that the complete specification must state fully and clearly the manner in which a process patented is to be carried out. ‘The patentee must give the public every information which is necessary to enable them completely to perform every part of the patent which is new, although it may be sufficient to refer in general terms to such things as are old or well known.’—(Hindmarch on Patents, p. 170; see to the same effect R. v. Wheeler, 1819, Higgins' Patent Cases, 169; Brunton v. Hawkes, ibid. 169; Morgan v. Steward, ibid. 172). The questions which have arisen under the rule have been, Whether the description of the process in certain cases was sufficient, being only intelligible to persons of skill or persons in certain trades. No case was cited or has been found by the Sheriff indicating that a specification could be sustained which is quite silent as to the mode of performing the process patented.

The complete specification as to No. 1 when used alone is in that position, for it only says ‘we employ’ it. That is thought to be insufficient.

(2) Upon the question of fact, the pursuer contends that butchers and housekeepers are able to apply properly a chemical agent not previously used by them for that (or indeed any other) purpose, without any explanation or instructions whatever from the inventor. But neither butcher nor housekeeper would know without some instruction whether it was to be applied hot or cold, &c……

The Sheriff cannot hold that a specification which gives no light on matters of such essential importance comes within the principle that a patent is only granted on condition of the patentee giving to the public sufficiently specific information as to the process patented that persons of skill in such matters can get the full benefit of it.

The pursuer's argument, that the process is so simple that no instructions are required, is further negatived by the fact that he issued cards for instructing the butcher trade as to the way to use the solution. It has repeatedly been held that a specification is incomplete which can only be applied by skilled persons after they have I learnt how to do so by experiment (cases in Higgins, p. 181, et seq.) In this case such persons could only have learned about it in this way, or from information which the specification does not afford.

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The pursuer's law-agent tried to escape from this difficulty by contending that the patent is not for a process, but for an agent, like chloroform, chloralum, or some patent medicine. This is erroneous. The title clearly indicates a process, not an agent; for it is for ‘improvements in preserving animal substances;’ and the minute directions as to all the solutions, except No. 1, when used alone clearly show the same thing.

The Sheriff accordingly is of opinion that the pursuer's patent for the use of that solution by itself is ineffectual from want of sufficient description of the process.

IV. He concurs with the Sheriff-Substitute that prior use with regard to No. 1 is not to be inferred from the pursuer's patent of 1861 or Clark's patent of 1861….

Rattray's patent (No. 8/7 of process) is thought to be different……….

The Sheriff inclines to think that this infers a prior patent and use by Rattray. If the pursuer's claim as to No. 1 were sustained, Rattray and those holding his licence could no longer profit by his patent.”

The petitioners appealed to the First Division of the Court of Session.

Additional pleas in law were then put in for the parties. The respondents pleaded further, inter alia—(1) On a sound construction of the letters-patent founded on, the use of bisulphite of lime alone in the preservation of animal substances is not thereby claimed, and the use of that article alone is not an infringement of the said letters-patent. (2) The said letters-patent are null and void, or invalid, in respect (1st) the alleged invention described in the complete specification is materially different from the invention described in the title and provisional specification, and the complete specification claims more than was claimed and disclosed in the said title and provisional specification; (2d) The said complete specification does not particularly describe and ascertain in what manner the alleged invention is to be performed; (3d) the said Henry Medlock and William Bailey were not the true and first inventors of the alleged invention claimed in the letters-patent; and (4th) The said alleged invention was publicly known and used at and prior to the date of the said letters-patent.

The petitioners argued—Three objections were taken to the patent by the respondents—(I.) That the final specification was disconform to the provisional; (II.) That the manner in which solution No. 1 was to be used was not sufficiently described; and (III.) That the patent had been anticipated. I. In the provisional specification it was not requisite to do more than give “some notion” of the patent. The objection of disconformity between the specifications must amount to a charge of dishonesty, to be available. At least, the final specification must be different from that brought under the notice of the law officers of the Crown. The objection was one for them, as the provisional specification, like the title, was tabled to them. To spoil the invention, the difference between the specifications must be of its essence. The six months interval allowed room for variations and improvement. The fact that the different expressions were used in the two specifications did not show disconformity. In the present case the invention was bisulphite of lime. The invention of gelatine along with it in the provisional specification created no disconformity. It was the crude idea. It was, further, common knowledge that gelatine was applied for the fixing of the antiseptics. It was merely a vehicle. They were bound in any case to state in the final specification the best method known to the patentee (Act 15 and 16 Vict. cap. 83, secs. 18, 28, 29). II. This objection was not open upon the record, and even if it had been so it was ill founded in itself. Patents were not so strictly treated now as formerly. A more benignant and less critical construction was put upon them. The use of solution No. 1 was prescribed, and the manner was sufficiently set forth. The nature and the manner, if it were requisite that both should be separately treated, were described in the specification. Nobody reading the specification as a whole would doubt how the bisulphite of lime was to be applied. III. Upon the evidence in the case, there had been no anticipation in previous patents.

Authorities—Patent Law Amendment Act, 16 and 17 Vict. cap. 83; Hill v. Evans, 29 L. J., Exch. 409 (Baron Bramwell's opinion), 31 L. J. Chanc. 457; Wood v. Zimmer, Holt 58; King v. Metcalfe, 2 Stark 249; Young v. Fernie, 4 Gift. 577, L. R., 1 H. of L. 63; Muntz v. Foster, 2 Webs. Pat. Cases, 92, 93, 96; Betts v. Menzies, 10 Clark's H. of L. Cases 117; and other authorities quoted above in the Sheriff's note.

Argued for the respondents—I. The provisional and final specifications were disconform to one another, which invalidated the patent. That was clear from a comparison of the two. It might be that the statute did not require that the manner of use should be set forth in the provisional specification. But if it was set forth, the patentee was restricted to it. It could not be amplified in the final. The function of the claim in the final specification was the protection of the patentee. It was not necessary that there should be a claim at all. Here there was nothing in the specification leading to the claim. It was true that there was no case where a patent had been found to be invalid on the ground of such disconformity, but the cases on the point were few. II. The manner of performance was not sufficiently set forth in the specification. It was said in answer that this was a patent for a principle; but it would require a chemist to say what it was. It was not such that it would be available for ordinary use or for housekeepers without further guidance. There was no information that gelatine was not requisite. The claim gave the only information upon the matter, and it was unnecessary itself. The word “employed,” in the portion of the specification devoted to the description of the nature and manner of the invention, was the whole direction. III. Upon the evidence there was no novelty in the invention.

Authorities— Arnold v. Bradbury, L. R., 6 Chanc. 706; Thomas v. Welch, L. R., 1 C.P. 192, 35 L. J., C.P. 200; Newall v. Elliot, 32 L. J. Exch. 120; Penn v. Bibby, L. R., 2 Chanc. 127; Agnew on Patents, p. 147; Rex v. Wheeler, 2 B. and Ald. 345; Rex v. Mill, 10 C. B. Reps. 379; Croll v. Edge, 9 C. B. Reps. 479; Cannington v. Nutall, L. R. 5 H. of L. 205; Minter v. Mower, 1 Web. Pat. Cas. 138; Booth v. Kennard, 26 L. J.,

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Exch. 305, 1 H. and N. 527; Betts v. Neilson, L. R., 3 Chane. 429.

At advising—