1160 EXPLORATION GEOPHYSICS 



"Before any inventor or discoverer shall receive a patent for his invention or dis- 

 covery he shall make application therefor, in writing, to the Commissioner of Patents, 

 and shall file in the Patent Office a written description of the same, and of the manner 

 and process of making, constructing, compounding, and using it, in such full, clear, 

 concise, and exact terms as to enable any person skilled in the art or science to which it 

 appertains, or with which it is most nearly connected, to make, construct, compound, 

 and use the same; and in case of a machine, he shall explain the principle thereof, and 

 the best mode in which he has contemplated applying that principle, so as to distinguish 

 it from other inventions ; and he shall particularly point out and distinctly claim the 

 part, improvement, or combination which he claims as his invention or discovery." 



Halliburton's counsel argued that the Walker claims were indefinite and did not 

 comply with the statute, more specifically that the claims did not describe the invention 

 but used "conveniently functional language at the exact point of novelty". The quoted 

 phrase was taken from the Supreme Court opinion in General Electric Co. v. Wabash 

 Electric Co., 304 U.S. 364, 371 (37 U.S.P.Q. 469). 



Patent claims which are purely functional in scope are invalid. The doctrine has 

 generally been recognized, however, that functional phrases are not objectionable if 

 supported by adequate structural definition ; thus, in claims for a combination of old 

 elements it has become a practice to define various elements in the broad term "means", 

 followed by a functional statement of what service is performed. Apparently such a 

 type of claim is still recognized as lawful if the combination is broadly new. The 

 Supreme Court frowned upon this practice in the Halliburton case, at least upon the 

 facts in that case, wherein Walker's invention was held to be in a "field crowded 

 almost, if not completely, to the point of exhaustion". 



The Supreme Court, for the purpose of its opinion, accepted without ratifying the 

 proposition that Walker's addition of a tuned acoustical means brought about a new 

 patentable combination even though it advanced only a narrow step beyond Lehr and 

 Wyatt's old combination. In construing a patent, however, it is the claims which con- 

 trol, each claim being for most practical purposes a separate patent grant. As a typical 

 example for purposes of argument and analysis, claim 1 of the Walker patent was set 

 forth. It reads as follows : 



"In an apparatus for determining the location of an obstruction in a well having 

 therein a string of assembled tubing sections interconnected with each other by coupling 

 collars, means communicating with said well for creating a pressure impulse in said 

 well, echo-receiving means including a pressure responsive device exposed to said 

 well for receiving pressure impulses from the well and for measuring the lapse of time 

 between the creation of the impulse and the arrival at said receiving means of the echo 

 from said obstruction, and means associated with said pressure-responsive device for 

 tuning said receiving means to the frequency of echoes from the tubing collars of said 

 tubing sections to clearly distinguish the echoes from said couplings from each other." 



The Court pointed out that some of the claims which were not in the litigation did 

 describe the tuned acoustical pipe as an integral part of the Walker invention, showing 

 its structure, its working arrangement, and its alleged new combination and the manner 

 of its connection with the other parts ; but that no one of the claims involved in the 

 litigation even suggested the physical structure of the acoustical resonator. The opinion 

 pointed out further that no one of these claims described the physical relation of the 

 Walker addition to the old Lehr and Wyatt apparatus, and that no one of these claims 

 described the manner in which the Walker addition would operate together with the 

 old Lehr and Wyatt apparatus. The Court concluded : "Thus the claims failed ade- 

 quately to depict the structure, mode and operation of the parts in combination." 



The Court pointed out that a claim typically described the resonator and its relation 

 with the rest of the apparatus as "means associated with said pressure-responsive device 

 for tuning said receiving means to the frequency of echoes from the tubing collars of 

 said tubing section to clearly distinguish the echoes of said couplings from each 

 other." The Court criticized the language of the claim as describing the most crucial 

 element in the "new" combination in terms of what it will do. rather than in terms of 



