First, the fact that the Adams battery is water-activated sets his device apart from the prior art. It is true that Claims 1 and 10, supra, do not mention a water electrolyte, but, as we have noted, a stated object of the invention was to provide a battery rendered serviceable by the mere addition of water. While the claims of a patent limit the invention, and specification cannot be utilized to expand the patent monopoly, Burns v. Meyer, 100 U.S. 671, 672 (1880); McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116 (1895), it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention, Seymour v. Osborne, 11 Wall. 516, 547 (1871); Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211 (1940); Schering Corp. v. Gilbert, 153 F.2d 428 (1946). Taken together with the stated object of disclosing a water-activated cell, the lack of reference to any electrolyte in Claims 1 and 10 indicates that water alone could be used.
" It would also seem to be evident that, as the purpose of the invention was the same, and as the principal parts of the respective machines described were substantially similar, it was also the judgment of the office that the distinguishing features were to be found in some of the smaller and, perhaps, less important devices described and claimed. Burns v. Meyer, 100 U.S. 671. We find it useful to adopt the following description of the Boyd invention, given in appellant's brief:
" So in Burns v. Meyer, 100 U.S. 671, 672, it was said: "The courts should be careful not to enlarge by construction the claims which the Patent Office has admitted, and which the patentee has acquiesced in, beyond the fair interpretation of its terms." And in McClain v. Ortmayer, 141 U.S. 419, 425, the principle we are considering was thus expressed: "It is true that, in a case of doubt, when the claim is fairly susceptible of two constructions, that one will be adopted which will preserve to the patentee his actual invention; but if the language of the specification and claim shows clearly what he desired to secure as a monopoly, nothing can be held to be an infringement which does not fall within the terms the patentee has himself chosen to express his invention.
In Masury v. Anderson, 11 Blatchford, 162, 165, it was said by Mr. Justice Blatchford: "The rights of the plaintiff depend upon the claim in his patent, according to its proper construction, and not upon what he may erroneously suppose it covers. If at one time he insists on too much, and at another on too little, he does not thereby work any prejudice to the rights actually secured to him." Other cases to the same effect are Merrill v. Yeomans, 94 U.S. 568; Burns v. Meyer, 100 U.S. 671; and Sutter v. Robinson, 119 U.S. 530. It is true that, in a case of doubt, where the claim is fairly susceptible of two constructions, that one will be adopted which will preserve to the patentee his actual invention; but if the language of the specification and claim shows clearly what he desired to secure as a monopoly, nothing can be held to be an infringement which does not fall within the terms the patentee has himself chosen to express his invention.
It defines what the office, after a full examination of previous intentions and the state of the art, determines the applicant is entitled to." Burns v. Meyer, 100 U.S. 671. See also Keystone Bridge Co. v. Phœnix Iron Co., 95 id. 274, 278. In view, therefore, of the statute, the practice of the Patent Office, and the decisions of this court, we think that the scope of letters-patent should be limited to the invention covered by the claim, and that though the claim may be illustrated, it cannot be enlarged by the language used in other parts of the specification.
"); McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891) ("`The rights of the plaintiff depend upon the claim in his patent, according to its proper construction.'" (quoting Masury v.Anderson, 16 F. Cas. 1087, 1088 (C.C.S.D.N.Y. 1873))); White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303 (1886) ("The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."); Burns v. Meyer, 100 U.S. 671, 672, 25 L.Ed. 733 (1879) ("[T]he terms of the claim in letters-patent . . . define what the office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to."); Merrill v. Yeomans, 94 U.S. 568, 570, 24 L.Ed. 235 (1876) ("This distinct and formal claim is, therefore, of primary importance, in the effort to ascertain precisely what it is that is patented."); Johnson Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) ("Consistent with its scope definition and notice functions, the claim requirement presupposes that a patent applicant defines his invention in the claims, not in the specification. After all, the claims, not the specification, provide the measure of the patentee's right to exclude.
The relationship between a patent's claim and its written description has also long been understood: While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly, Burns v. Meyer, 100 U.S. 671, 672, 25 L.Ed. 733 (1879); McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895), it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention, Seymour v. Osborne, 11 Wall. 516, 547, 20 L.Ed. 33 (1871); Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 61 S.Ct. 235, 85 L.Ed. 132 (1940); Schering Corp. v. Gilbert, 153 F.2d 428 (1946).United States v. Adams, 383 U.S. 39, 48-49, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).
The record also shows clearly that plaintiff's assignor was required to, and did in fact, at the behest of the Patent Office, change his first claim by substituting "beyond" for "over" in that claim, and that he voluntarily carried the same change into claims 2, 3, and 4. Claims containing self-imposed limitations are not infringed by structures which omit the self-imposed restrictions. Keystone Bridge Co. v. Phœnix Iron Co., 95 U.S. 274, 24 L. Ed. 344; Burns v. Meyer, 100 U.S. 671, 25 L. Ed. 738; White v. Dunbar, 119 U.S. 47, 7 S. Ct. 72, 30 L. Ed. 303; Morse Chain Co. v. Link Belt Co. (C.C.A.) 189 F. 584; Thacher v. Transit Construction Co. (D.C.) 228 F. 905. Affirmed Id. (C.C.A.)
The controversy in the Patent Office, Lyon's withdrawal in interference, and the adjudication of its officers upon the question of priority between Hoover and Lyon, submitted in the applications for these two patents, have reduced the present controversy to very narrow limits. "It is well known," said the Supreme Court in Burns v. Meyer, 100 U.S. 671, 672 (25 L. Ed. 738), "that the terms of the claim in letters patent are carefully scrutinized in the Patent Office. Over this part of the specification the chief contest generally arises. It defines what the office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to.
Kodak's anticipation and obviousness arguments are based on a reading of the claims of '211 without any reference whatever to the specifications. Kodak is, of course, correct in its statement that an invention is limited to that which is claimed and that the specifications cannot be used to expand the patent monopoly, United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966) but "it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention"; Burns v. Meyer, 10 Otto 671, 672, 100 U.S. 671, 672, 25 L.Ed. 733 (1880); Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 868 (5th Cir. 1973), cert. denied, 414 U.S. 1079, 94 S.Ct. 597, 38 L.Ed.2d 485 (1973). The claims asserted here describe a structure of defined dimensions and characteristics, as well as the change worked by that structure on the normal path traveled by the film unit out of the rollers and camera.