It is required to distinguish between what is new and what is old, and not mix them together without disclosing distinctly that for which the patent is granted ; Wyeth v. Stone, 1 Sto. 273, Fed. Cas. No. 18,107. If the invention consists of an improvement, the patent should be confined thereto, and should clearly distinguish the improvement from the prior device, so as to show that the former only is claimed; Barrett v. Hall, 1 Mas. 447, Fed. Cas. No. '1,047; Brooks v. Bicknell, 3 McLean, 250, Fed. Cas. No. 1,944. Ambiguous terms should be avoided; noth ,ing material to the use of the invention should be omitted; and the necessity of trials and experiments should not be thrown upon the public.
Of the claim. The claim is the statutory requirement prescribed for the purpose of making a patentee define what the inven tion is. It is to be read in the light of the description contained in the specification, and its literal terms may be enlarged or narrowed accordingly, but not to an extent inconsistent with their meaning; Thomson Houston Electric Co., v. R. Co., 71 Fed. 396, 18 C. C. A. 145, 38 U. S. App. 55. If an in vention is not covered by the claim, it will not be protected by the patent ; Grant v. Walter, 148 U. S. 547, 13 Sup. Ct. 699, 37 L. Ed. 552. A mere reference in a claim to a letter on the drawing does not in itself limit the claim to the precise geometrical shape shown in the thawing ; Delemater v. Heath, 58 Fed. 414, 7 C. C. A. 279, 20 U. S. App. 14.
The claim is the measure of a patentee's right to relief ; and while the specification may be referred to, to limit the claim, it can never be made available to expand it ; Mc Clain v. Ortmayer. 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800.
Separate claims in the same patent are in dependent inventions, and the infringement of one is not the infringement of the others; Leeds & Catlin Co. v. Talking Mach. Co., 213 U. S. 301, 29 Sup. Ct. 495, 53 L. Ed. 805.
A patent may embrace more than one in vention ; U. S. v. Allen, 192 U. S. 543, 24 Sup. Ct. 416, 48 L. Ed. 555 ; and it may em brace a process and the apparatus by which it is performed; Leeds & Catlin Co. v. Talk ing Mach. Co., 213 U. S. 301, 29 Sup. Ct. 495, 53 L. Ed. 805.
The inventor need not describe all the functions to be performed by his machine if they are evident in its practical operation; McCormick Harvesting Mach. Co. v. Aultman & Co., 69 Fed. 371, 16 C. C. A. 259, 37 U. S.
App. 299.
The terms of the claims are carefully scru tinized in the patent office. It defines and determines what the applicant is entitled to. The scope of the patent should be limited to the invention covered by the claim ; al though the claim may be illustrated, it can not be enlarged by the language used in oth er parts of the specification ; Lehigh Valley R. Co. v. Mellon, 104 U. S. 112, 26 L. Ed. 639. The whole patent, including specificatiOns and drawings, is to be taken into considera tion, though the court looks to them only for the purpose of •placing a proper construc tion upon the claims ; Rich v. Lippincott, 2 Fish. 10, Fed. Cas. No. 11,758. The scope of the patent is given by the claims; Yale Lock Mfg. Co. v. Greenleaf, 117 U. S. 555, 6 'Sup. Ct. 846, 29 L. Ed. 952; though it be less than the real invention; Waterbury Brass Co. v. Miller, 9 Match. 77, Fed. Cas. No. 17,254; parts which may be indispensa ble to the invention are not covered by the patent unless mentioned in the claims; Mc Millan v. Rees, 1 Fed. 722 ; and where a fea ture is inserted in the claims which is not essential, its materiality cannot be after-' wards denied; Le Fever v. Remington, 13 Fed. 86. The patentee, in a suit brought on his patent, is bound by his claims ; Keystone Bridge Co. v. Iron Co., 95 U. S. 274, 24 L. Ed. 344 ; the 'court will not enlarge the claims by the specification; Yale Lock Mfg. Co. v. Greenleaf, 117 U. S. 554, 6 Sup. Ct. 846, 29 L.
Ed. 952. Words in a claim such as "sub stantially as described" refer back to the descriptive parts of the specification and are implied in a claim whether inserted or not; Mitchell v. Tilghman, 19 Wall. (U. S.) 287, 22 L. Ed. 125; they relate only to the material features of the invention; Waterbury Brass Co. v. Miller, 9 Blotch. 77, Fed. Cas. No. 17,254. "Substantially as set forth" are tech nical words and are equivalent to saying "by the means described in the text of the in ventor's application for letters patent as il lustrated by the drawings, diagrams, and model which accompany the application ;" Boyden A. B. Co. v. Brake Co., 70 Fed. 816, 17 C. C. A. 430, 25 U. S. App. 475.
A patentee cannot hold under his. patent anything excluded therefrom by him or with his acquiescence during the stages of his ap plication therefor ; Hillborn v. Mfg. Co., 69 Fed. 958, 16 C. C. A. 569, 28 U. S. App. 525.