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Federal Court of Australia |
COURT
IN THE FEDERAL COURT OF AUSTRALIACATCHWORDS
Patents - novelty - obviousness - observations on the distinction between novelty and obviousness - whether the patent in suit was anticipated by prior publication disclosed in the specifications for three United States patents - whether the patent was anticipated by disclosure in several machines in prior use - meaning of the terms "mechanical equivalent" and "workshop improvement" and cognate expressions.Patents - the rule against "mosaics" - whether the prohibition against the making of a "mosaic" to supply an anticipation destructive of novelty is qualified so as to permit an internal cross-reference from one document to another.
Patents Act 1952
Patents and Designs Act 1932 (U.K.)
Patents Act 1949 (U.K.)
General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457
Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. [1970] HCA 38; (1970) 44 ALJR 385
Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977) 137 CLR 228
R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679; (1989) 13 IPR 513
Von Heyden v Neustadt (1880) 50 LJ Ch (NS) 126
Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253
Martin and Biro Swan Ltd. v H. Millwood Ltd. (1956) RPC 125
Populin v H.B. Nominees Pty. Ltd. [1982] FCA 45; (1982) 59 FLR 37
Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643
Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212
Hill v Evans [1862] EngR 365; (1862) 4 De G F & J 288; (1862) 31 LJ Ch 457
Catnic Components Ltd. v Hill & Smith Ltd. (1982) RPC 183
Rehm Pty. Ltd. v Websters Security Systems (International) Pty. Ltd. (1988) 81 ALR 79
Genentech Inc.'s (Human Growth Hormone) Patent (1989) RPC 613
Savage v D.B. Harris & Sons (1896) 13 RPC 364
E.I. Du Pont De Nemours & Co. (Witsiepe's) Application (1982) FSR 303
Washex Machinery Corporation v Roy Burton & Co. Pty. Ltd. (1974) 49 ALJR 12
Acme Bedstead Co. Ltd. v Newlands Bros Ltd. [1937] HCA 63; (1937) 58 CLR 689
Pope Appliance Corporation v Spanish River Pulp & Paper Mills Ltd. (1929) AC 269
C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61
Olin Corporation v Super Cartridge Co. Pty. Ltd. [1977] HCA 23; (1977) 51 ALJR 525
Ransburg Company v Aerostyle Ltd. (1968) RPC 287
N. Guthridge Ltd. v The Wilfley Ore Concentrator Syndicate Ltd. [1906] HCA 10; (1906) 3 CLR 583
Broken Hill South Silver Mining Co. No Liabililty v N. Guthridge Ltd. [1908] HCA 78; (1908) 8 CLR 187
British Ore Concentration Syndicate Ltd. v Minerals Separation Ltd. (1909) 26 RPC 124
Sharp & Dohme Inc. v Boots Pure Drug Co. Ltd. (1927) 44 RPC 367, (1928) 45 RPC 153
Acetylene Illuminating Co. Ltd. v United Alkali Co. Ltd. (1925) 22 RPC 145
Warner Laboratories Pty. Ltd. v Chemspray Pty. Ltd. (1967) 37
Australian Official Journal of Patents 2513
Griffin v Isaacs (1942) 12 Australian Official Journal of Patents 739
Dennison Manufacturing Co. v Monarch Marking Systems Inc. [1983] FCA 159; (1983) 66 ALR 265
HEARING
SYDNEY Counsel and Solicitors for P.W.J. Gray Esq.
the Appellants: instructed by Messrs.
Dunhill Madden ButlerCounsel and Solicitors for D.K. Catterns Esq.
the Respondents: instructed by Messrs.
ORDER
The appeal be dismissed.The appellants pay the costs of the respondents of the appeal.Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.
DECISION
This is an appeal from the judgment of a single Judge of the Court (Burchett J.) dismissing the cross-claim of the appellants against the respondents. His Honour heard together two suits brought by the respondents for infringement of the same standard patent in each of which there was a cross-claim seeking revocation of the patent on the grounds of want of utility, lack of novelty and obviousness. The course was taken of hearing first the evidence and argument in relation to those matters and postponing the other questions which arose in the two proceedings. His Honour also dismissed the cross-claim in the second proceeding (No. G212 of 1988); but there is no appeal by the unsuccessful cross-claimants (who are different persons from the present appellants) from that dismissal.2. The learned primary Judge rejected the contentions of the appellants of want of utility, lack of novelty and obviousness. The appellants appealed to this Full Court solely on his Honour's finding that the invention lacked novelty.
3. The patent in suit is a convention patent no. 512902, the priority date of which is 10 January 1977. The patentee is Martin Engineering Company, the first respondent, a United States corporation, and the second respondent is the holder of an exclusive licence from the first respondent in respect of the patent. I shall refer to the patent as the Martin patent.
4. The evidence shows that conveyor belts used in the mining industry and elsewhere for the transport of materials require to be cleaned, generally by some form of scraping, at a point at or near the commencement of the return run of the belt after discharge of its load. Various problems are associated with this operation. The load may leave a residue which may build up on the scraper or scrapers and on the means by which they are applied to the belt. Maintenance may be rendered more difficult by constriction of space under and in the vicinity of the belt, and particularly at the point of discharge of its load. The minimisation of loss of the productive operation of the belt during any stoppage for maintenance of scraping equipment is a consideration of some importance.
5. It appears that various devices have been adopted in the past, from quite primitive scrapers to relatively complex equipment. Patents obtained in respect of such equipment span a period of over forty years up to 1977.
6. The Martin patent is in respect of an invention entitled "Belt Cleaner
Mounting Arrangement" which is described in the abstract
of the disclosure
as:
"a track mounted conveyor belt cleaner wherein7. There is in the specification a recital of the prior art, suggesting that many arrangements "have presented certain problems with respect to repair or replacement of individual blade elements." The recital provides as follows:
individual belt scraper blades are affixed to
sleeve members which slide linearly along a
support member positioned generally transverse to
the direction of travel of the belt to be cleaned.
The sleeves are slidably mounted on the support
member such that they may freely slide from one
end to the other but are fixed against either
rotational or vertical movement and provide for
repair or replacement of wiper blades without
requiring conveyor belt shutdown."
"Sometimes the wiper blades are carried on one8. There follows the consistory clause in the following terms:
end of a torsion spring. The other end of
the spring is affixed to a transverse
support. Such an arrangement is illustrated
in U.S. Patent 3,342,312. As the wiper
blades wear, periodic replacement is
required. Occasionally a wiper blade becomes
damaged during regular use and the individual
blade must be replaced. In either of these
situations the conveyor belt must be shutdown
and one of two alternatives is presented to
the belt operator. If access permits, the
operator may be able to disconnect the
individual wiper blades from the support
shaft and replace them as needed. In the
majority of situations however, access to the
underside of the conveyor belt is limited and
the entire support shaft must be removed from
the side of the conveyor housing. This is
often difficult to accomplish because of
limited space. The time lost for conveyor
shutdown due to wiper blade replacement is a
critical factor to be considered.
It is therefore an object of the present
invention to provide a belt cleaner mounting
arrangement which will obviate or minimise
the foregoing disadvantages in a simple yet
effective manner or which will at least
provide the public with a useful choice."
"Accordingly the invention consists in apparatus9. The body of the specification then proceeds to describe "one preferred form of the invention" in which there is a support member beneath the return run of the belt adjacent to the roller at the discharge end of the belt. The support member is transverse to the direction of travel of the belt, i.e. parallel to the roller. It is a tubular hollow shaft with a projection forming a key beneath its lower surface along substantially its length. Upon this support member are slid sleeves in the shape of tubes having a slightly larger diameter than the shaft, so as to fit over it, with a channel cut out at the bottom to enable them to slide past the key, which then prevents them revolving round the shaft. At the top of each sleeve there is provided a fixing means to enable a scraper blade to be bolted to the sleeve (or in a more complex version to enable a torsion arm bearing a scraper blade to be bolted to the sleeve).
for cleaning a conveyor belt comprising a linearly
extending support member adapted to be positioned
beneath the conveyor belt in use and generally
transverse to the direction of the conveyor belt
travel; at least one sleeve member mounted on the
support member for sliding movement therealong,
the sleeve member being arranged to cooperate with
the support member to prevent rotation of the
sleeve about the support member when mounted
thereon, mounting means on the sleeve members, one
or more belt cleaning elements mounted on the
mounting means, and an adjusting element operable
on the support shaft for bringing the belt
cleaning elements into engagement or out of
engagement with the conveyor belt."
10. The specification states: "For purposes of illustration three such sleeve members ... are shown ... but the number will vary depending upon the width of the belt to be cleaned, the width of the scraper blades and a number of other factors." In the preferred embodiment, these sleeve members are linked for simultaneous movement along the support shaft, being designed to slide freely along it. But rotation is prevented by the key, so that when the support shaft is itself either rotated or lifted to bring the scraper blades into contact with the belt a predetermined angle of contact will be maintained.
11. The preferred embodiment includes, too, a flexible cable passed through the hollow centre of the support shaft and hooked at each end to the edge nearest that end of the nearest sleeve member. If the members are then connected, this facilitates adjustment of the position of the group of members relative to the conveyor belt to be cleaned. The preferred embodiment also involves a fairly complex mechanism for raising and lowering the support shaft at each end by the use of a jacking screw.
12. A modified embodiment is described in which each wiper blade is carried on a torsion arm instead of being mounted directly to the sleeve.
13. In another modified embodiment the support member is formed of a tubular section with a piece of angle iron welded to the top of it, and the configuration of the sleeve is altered to fit over (and round the edges of) the piece of angle iron, as an alternative to having sleeves of a circular cross-section with a keyway to fit a key attached to the support member.
14. The body of the specification concludes:
"Various features of the invention have been15. I have inserted the letters "(a)" to "(f)" for convenience because they define more clearly the six integers of the first claim and enable the arguments of counsel to be more readily understood with respect to the question of alleged anticipation of certain of the integers.
particularly shown and described in connection
with the illustrated embodiments of the invention,
however, it must be understood that these
particular arrangements merely illustrate and that
the invention is to be given its fullest
interpretation within the terms of the appended
claims."
Claim 1 defines the invention as follows:
"1. Apparatus for cleaning a conveyor belt
comprising (a) a linearly extending support member
adapted to be positioned beneath the conveyor belt
in use and generally transverse to the direction
of the conveyor belt travel, (b) at least one
sleeve member mounted on the support member for
sliding movement therealong, (c) the sleeve member
being arranged to cooperate with the support
member to prevent rotation of the sleeve about the
support member when mounted thereon, (d) mounting
means on the sleeve members, (e) one or more belt
cleaning elements mounted on the mounting means,
and (f) an adjusting element operable on the
support member for bringing the belt cleaning
elements into engagement or out of engagement with
the conveyor belt."
16. Counsel for the appellants concentrated his attack on claim 1 and conceded that, if that attack failed, it must fail also with respect to claims 2 to 6, so it is unnecessary to state them.
17. As mentioned earlier, the sole ground of revocation relied on in this appeal is absence of novelty: para. 100(1)(g) of the Patents Act 1952 ("the Act").
18. The generally accepted test for anticipation is the "reverse infringement" test: General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (1972) RPC 457 at 485-6; Meyers Taylor Pty. Limited v Vicarr Industries Limited [1977] HCA 19; (1977) 137 CLR 228; Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Limited [1980] HCA 9; (1980) 144 CLR 253; R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Limited (1989) 13 IPR 513 at 517.
19. It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication. See Hill v Evans [1862] EngR 365; (1862) 31 LJ Ch 457 at 466; General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited at 486; Washex Machinery Corporation v Roy Burton & Co. Pty. Limited (1974) 49 ALJR 12 at 18; and Van der Lely N.V. v Bamfords Limited (1963) 80 RPC 61 at 72-3.
20. In revocation proceedings the prior publication must disclose all of the integers with the possible exception of the substitution of "mechanical equivalents to perform analogous purposes" Sunbeam Corporation v Morphy-Richards (Aust) Pty. Limited (1961) 35 ALJR 212 per Windeyer at 220; R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Limited; Dennison Manufacturing Co. v Monarch Marking Systems Inc. [1983] FCA 159; (1983) 66 ALR 265 at 273, 274, 276 and 286. Although nothing turns on it in this case, I accept the correctness of the submission of counsel for the respondents that the term "mechanical equivalents" is properly used in cases of want of novelty and the term "workshop improvement" is essentially a term applicable to cases of obviousness: see Blanco White, Patents for Inventions, 5th Ed para. 4.212 and Terrell, The Law of Patents, 13th Ed., para. 5.108; cf Terrell para. 6.52.
21. The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is, however, permissible, to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross referencing system solely as a shorthand means of incorporating a writing disclosing the invention: George C. Warner Laboratories Pty. Limited v Chemspray Pty. Limited (1967) 37 AOJP 2513 at 2516; Blanco White 5th Ed. at para. 4.107 and Gratwick "Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343.
22. In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent: Blanco White para. 4.107.
23. There are important distinctions between lack of novelty and obviousness and they have been extensively considered in the reported cases. The most recent discussion of the distinctions is in Werner v Bailey (supra) per Lockhart J. at 521-533 and Gummow J. at 539-550. It is important to keep these distinctions in mind when considering the contentions of the appellants in this case.
24. Reference was made in argument by counsel for the appellants to the
judgment of McTiernan J. in Chemspray where his Honour dealt
with the
objection of the defendant that the relevant invention lacked novelty and
relied on the prior publication of the specifications
for four United States
patents known as Groeniger, Langdon, Hayes and Bradshaw. In dealing with the
Hayes' patent his Honour said
at 2515-6:
"It is important to notice that the specification25. It is not clear from the report of Chemspray what the precise context was in which the Hayes' specification referred to the Groeniger specification. McTiernan J. obviously regarded himself as simply applying established principles, but his Honour's use in the passage cited of the word "mosaic" with reference to the fact that the respective specifications were a single source of information "as to the state of this art" is the use of an expression that is classically used in relation, not to novelty, but to obviousness. His Honour said at 2516 that:
for the Hayes' patent concludes with references to
each of the United States patents cited in the
file of this patent (i.e. Hayes'). These patents
include a patent for an invention of which
Groeniger was inventor. ... A composition of
extracts from Groeniger's specification relating
to the particulars of his back-flow preventor and
of extracts from Hayes' specification relating to
fitting a mechanism functioning in the same manner
in a hose nut made according to his instruction
cannot be likened to a mosaic because the
respective specifications are a single source of
information as to the state of this art. ... I
find that Groeniger's specification and Hayes'
specification taken together are an anticipation
of such combination. It is permissible to
consider them as connected documents because
Hayes' specification refers to Groeniger's. ..."
"... it is within the capacity of an expert workman26. Again his Honour is using the language of obviousness, not novelty. An enquiry into obviousness, that is into what was common general knowledge in the art, may legitimately involve reference to and reliance on patents incorporated in others by cross reference as "a single source of information as to the state of this art": c.f. the 3M Case. Similarly in Sharp and Dohme Inc. v Boots Pure Drug Company Limited (1927) 44 RPC 367 and (1928) 45 RPC 153 at 180 cross-referred journals were used in relation to obviousness for want of subject matter, the cross-references being by way of adoption: see Ricketson, The Law of Intellectual Property (1984) at para. 49.13 and Terrell at 5.92. But the position is fundamentally different when considering an argument for want of novelty where reliance is sought to be placed on cross-referred patents.
who has studied both specifications to turn to
account the knowledge, thus derived, by devising
means for prevention of back-flow substantially
similar to the combination which is the subject of
the present patent."
27. The appellants relied on the following three aspects of the prior art as
constituting anticipation:
(1) US patent 3,674,131 ("the later Matson patent");28. Each of these publications and cleaners was published or used before the priority date of the patent in suit, namely, 10 January 1977.
(2) US patent 3,342,312 ("the Reiter patent");
US patent 2,794,540 ("the later Sinden patent")
The Stephens-Adamson cleaner. This is a cleaner which
has what is called a "cross-angle" upon which the
individual cleaning elements are supported and this
would have to be removed, not the support shaft. The
principle of the Stephen-Adamson cleaner is described in
the Reiter patent and the later Sinden patent.
(3) Four T-slot or T-bar cleaners, namely,
Trelleborg
Firestone
Dunlop-Skega
Jerry-rig
29. I turn first to the later Matson patent. Counsel for the appellant argued that all integers in the claims of the Martin patent are disclosed in the later Matson patent. He conceded that the sixth integer is not expressly found in the later Matson patent; but submitted that this integer is both old and obvious and a mere "workshop improvement" and placed reliance upon Griffin v Isaacs (1942) 12 AOJP 739 and Werner v Bailey. Counsel for the appellant relied, in the alternative, on the fact that the later Matson patent referred to the earlier Matson patent and to the Reiter patent (which is in turn referred to in both the earlier Matson patent and the Martin patent). Counsel submitted that it is permissible to read together the earlier Matson patent and the Reiter patent, which he said were incorporated by reference in the later Matson patent, as examples of the various pieces of the prior art and that by reading them together the sixth integer is disclosed. Reliance was placed upon Chemspray and other cases to which reference has been made earlier.
30. As mentioned earlier claim 1 of the Martin patent has six integers,
namely:
1. a linearly extending support member adapted to be31. The learned primary Judge rejected the submission of counsel for the appellant that integers 2 and 6 were disclosed in the later Matson patent. His Honour said that the invention the subject of the later Matson patent was for a sophisticted means of elastically mounting the scraper blades and was not concerned with the problem of ready removal of the entire mount, bearing the individual blade, from the rigid support member in a simple fashion, without going under the conveyor which is an important feature of the Martin patent. His Honour said that it was apparent from the later Matson patent that the references in it to axial assembly and disassembly are not references to the attachment to the support shaft at all; but to the assembly and disassembly of the complex elastic mount itself. The mount is attached to the support shaft on what are described in the later Matson patent specification as "brackets". His Honour went on to say:
positioned beneath the conveyor belt in use and
generally transverse to the direction of the conveyor
belt travel;
2. at least one sleeve member mounted on the support member
for sliding movement therealong;
3. the sleeve member being arranged to co-operate with the
support member to prevent rotation of the sleeve about
the support member when mounted thereon;
4. mounting means on the sleeve members;
5. one or more belt cleaning elements mounted on the
mounting means; and
6. an adjusting element operable on the support member for
bringing the belt cleaning element into engagement or
out of engagement with the conveyor belt.
"In the first preferred embodiment of the later32. It was submitted by counsel for the appellant that the passage which I have underlined above was erroneous in that the later Matson patent does not show a bolt going through a sleeve and the support shaft and that his Honour was in error in concluding that what he described as a sleeve was shown as being firmly attached and unable to slide at all. This was the principal attack made by the appellant upon his Honour's findings with respect to the later Matson patent.
Matson patent, the support shaft is shown as of
square cross-section, and the bracket is fitted to
it by an attachment which encompasses it, having
the same cross-section. I do not doubt that in
some contexts that attachment could be described
as a sleeve. In the case of the specification of
the later Matson patent, however, it is shown with
a bolt going through it and the support shaft, so
that it is firmly attached and cannot slide at
all. There is no suggestion in the specification
that it is intended to be slid into position, or
out of position, at any time during the period
when the cleaner is installed. To the contrary,
the emphasis in the specification upon the axial
assembly and disassembly of the part attached to
the bracket makes it clear that the intention is
to effect those operations with the bracket
already in place. There is nothing to suggest
that it would not be fixed prior to the
installation of the support shaft, and retained at
all times until after removal of the support
shaft, should that event ever occur. That there
is no thought of a "sleeve member mounted on the
support member for sliding movement therealong" is
also confirmed by a second preferred embodiment,
in which the bracket could by no stretch of the
imagination be described as a sleeve member. In
that case, it involves a clamp gripping a tubular
support shaft, to which it is immovably fixed by
the tightening of two bolts, one on each side."
33. Reference to the later Matson patent and to the figures appearing therein, in particular figures 2 and 3, disclose a cotter pin, which is a form of split pin akin to a bobby pin, going through the sleeve and the support shaft and the cotter pin being turned up at the ends so that the sleeve is firmly attached and cannot slide. Criticism that the cotter pins are not depicted as going through the sleeve at all so that they do not block the passage of the sleeve across the support shaft is ill founded. I respectfully agree with his Honour's conclusion that the later Matson patent does disclose a sleeve that is firmly attached to the support shaft and cannot slide during operation. It is perhaps open to argument as to whether a cotter pin is accurately described by his Honour as a bolt, but in my opinion this is an accurate description. The cotter pin serves the same function as a bolt in that it passes through both the sleeve and the support member and the sleeve is firmly attached by reason of the presence of the cotter pin and prevents sliding across the support member. This attack on the primary Judge's finding therefore fails. His Honour correctly held that integers 2 and 6 are not disclosed in the later Matson patent.
34. The primary Judge dealt with the submission that the sixth integer was both old and obvious, a mere "workshop improvement" and that by cross reference to the earlier Matson patent and the Reiter patent the prior art was disclosed.
35. The later Matson patent refers as part of the "Background Of The
Invention" to the earlier Matson patent in these terms:
"A representative prior US pat. is that to C.G.A little lower down in the specification under the heading "Descriptions of Preferred Embodiments" the following appears:
Matson No. 3504786, and consider also the art
cited in that patent".
"As will be clear from the above-mentioned Matson36. The earlier Matson patent (US No. 3,504,786) describes the invention in the abstract of the disclosure as
patent, the cleaner structure is mounted
transversely of the length of an endless belt,
preferably at one end thereof and beneath the
return run."
"a conveyor, cleaner or belt, scraper especiallyAs part of the "Background of the Invention" the following appears:
adapted to scrape the upper surface of the lower
or return run of an endless belt conveyor and
constructed to provide a plurality of blades
arranged diagnally of the length of the run in
overlapping echelon fashion so as to cause the
scraped material to be directed toward and
discharged at one end of the run."
"It is well known that endless belt conveyors37. The US patent first mentioned is an earlier Sinden patent and the patent later mentioned is the Reiter patent. At the conclusion of the claims in the earlier Matson patent references are cited which include the earlier Sinden and the Reiter patents.
accumulate material thereon during operation and
that, unless this material is scraped off either
continuously or intermittently, the build-up
interferes with efficient operation. Several such
scrapers have been patented, primarily as
evidenced by such US Patents as 1,975,591 and
3,342,312, but all of these operate on the
principle of cleaning the under or bottom surface
of the return run of the belt, because, obviously
to scrape the top surface of the upper or delivery
run is merely to scrape off the material being
conveyed. So far as is known, no patentee has
recognised the need for scraping the inside of the
belt; that is, either the underside of the
delivery run or the top side of the return run."
38. Even if it is permissible for present purposes for reliance to be placed
upon the earlier Matson patent which is incorporated
by reference in the later
Matson patent and in turn to the earlier Sinden patent and the Reiter patent
incorporated by reference
in the earlier Matson patent, formidable problems
confront the appellant. Integer 2 cannot be gleaned from the earlier Matson
patent;
nor is integer 6 disclosed because there is no adjusting element as
claimed in integer 6 in the Martin patent. Also, the Martin
patent is a
combination patent. Each of the integers of a combination patent may not be
novel. They may be part of the prior art,
but it is the interaction of the
combined integers to produce a new result which constitutes the invention the
subject of a combination
patent. Even if it were right to say that there can
be gleaned from the Reiter patent, the earlier Sinden patent and the earlier
Matson patent one or more of the six integers the subject of the first claim
in the Martin patent and that the later Matson patent
discloses another
integer or integers, it is impossible to conclude that any one or any
combination of these patents said to constitute
the prior art discloses the
combination which is the essence of the Martin patent. His Honour correctly
held that the Martin patent
is a combination patent and then said:
"If some only of the integers are disclosed in one39. I respectfully agree with these statements by his Honour.
specification, a reference of the kind in question
here to another specification, which contains the
remaining integer or integers, no more discloses
the combination than does the knowledge possessed
by the expert in the area of each of the old
integers. Such a reference contains no suggestion
whatever that the different integers should be
brought together. Indeed, the reference in the
specification of the earlier Matson patent to the
still earlier patents of Reiter and Sinden is
simply dismissive. The logic which forbids the
assembly of previously known specifications into a
mosaic of the invention, in order to deny its
novelty, is not less offended when those
specifications are linked only as antitheses. At
the least, a real link is requisite: Minnesota
Mining and Manufacturing Case at 292-3, 298."
40. There is a fundamental problem in the path of the appellant in relying on these earlier patents as disclosing prior art because the cross-referencing is, in my opinion, impermissible. The reference in the later Matson patent to the earlier Matson patent does not disclose a cross-reference merely as a shorthand means of incorporating disclosure of any of the essential integers in the invention disclosed in the Martin patent. Nor by referring to the earlier Matson patent (with its cross-references to the earlier Sinden patent and the Reiter patent) is there disclosure of any essential integers of the invention of the Martin patent.
41. The Stephenson-Adamson cleaner was relied on as part of the prior art. Like the earlier Sinden and Reiter patents the Stephens-Adamson cleaner does not disclose a sleeve member mounted on the support mechanism on which is mounted the belt cleaning element which co-operates with the support member to prevent rotation or, alternatively an adjusting element operable on the support member. His Honour found that at the priority date the Stephens-Adamson cleaners were so rare that two highly qualified experts, one for the applicants and one for the respondents, as well as other witnesses of great experience in the industry had never heard of them. The Stephen-Adamson cleaner therefore did not disclose integers 2, 3 and 6. In my opinion his Honour's conclusion was correct.
42. Various cleaners or scrapers were relied upon by the appellant as constituting anticipation, in particular the Dunlop-Skega belt scraper, the Jerry-rig, the Trelleborg and the Firestone scrapers. It was argued that each of these cleaners is in anticipation of Claim 1.
43. Expert evidence was called for both parties and his Honour examined the evidence of those witnesses. He preferred the evidence of Professor Thomas and Mr. Dunn, who were experts called for the respondents, and relied upon their evidence to support his finding that the T-shaped channels cut in the bottom of the rubber bar to take the head of the T-bolt in these cleaners were not "sleeve members" or their functional equivalents "mounted on the support member for sliding movement therealong". His Honour held that integer 2 was absent from these cleaners, also that integer 3 was absent and that the differences were not mere workshop improvements. Whether it be correct to describe them as "workshop improvements" which is more the language of obviousness or as "mechanical equivalents" is not to the point because his Honour's finding would lead to the conclusion a fortiori that the alleged differences were not "mechanical equivalents to perform analogous purposes": Sunbeam Corporation per Windeyer J. at 220.
44. The respondents by notice of contention challenged his Honour's finding that the counterweights or springs in the Trelleborg, Firestone, Dunlop-Skega and Jerry-rig cleaners were "adjusting elements for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt". I do not find it necessary to decide this question in view of my other findings.
45. I have dealt with the principal arguments of counsel for the appellants. Other arguments were advanced by him in support of the contention that each of the integers in Claim 1 are disclosed in the later Matson patent. These arguments were correctly rejected by the primary Judge and in view of my earlier findings it is not necessary to refer to them.
46. I would dismiss the appeal with costs.
I agree that the appeal should be dismissed with costs, for the reasons given by Gummow J.
Introduction
This is an appeal from the decision of a Judge of this Court (Burchett J.)
given upon issues arising in two patent suits. His Honour's
judgment is
reported, (1989) AIPC 90-601. The respondents are patentee and exclusive
licensee respectively of Australian Patent No. 512902 ("the Patent" or "the
patent in
suit"). The Patent is a standard patent granted under the Patents
Act 1952 ("the Patents Act"). The priority date is 10 January
1977. The
respondents sued alleged infringers in two proceedings and in each case there
was a cross-claim alleging invalidity of
the Patent. The grounds advanced
were want of utility, lack of novelty and obviousness. The issues going to
invalidity were heard
in advance of those going to infringement and for this
purpose his Honour ordered that the evidence in one proceeding be evidence
in
the other. His Honour found for the respondents upon all issues of validity.
This appeal is by the unsuccessful parties to one
of the proceedings in
question. Only lack of novelty was relied upon in the appeal. There was no
question before us of lack of utility
or obviousness. Much of the submissions
before us concerned the construction of claim 1 in the Patent and the
interpretation of documents
each said to amount to prior publication of the
claimed invention. I should add that counsel for the appellants did not
appear in
the proceedings at first instance.
2. The task of the Court in such a situation was explained by the English
Court of Appeal in General Tire & Rubber Co. v Firestone
Tyre & Rubber Co.
Ltd. (1972) RPC 457 at 485, as follows:
"The earlier publication and the3. It is not for the Court by its own efforts to put itself in the position of a person skilled in the relevant art at the priority date of the Patent on 10 January 1977. Upon the hearing of the appeal, both counsel tended to encourage the Court to do just that. I will refer again to this aspect of the case later in these reasons.
patentee's claim must each be construed
as they would be at the respective
relevant dates by a reader skilled in the
art to which they relate having regard to
the state of knowledge in such art at the
relevant date. The construction of these
documents is a function of the court,
being a matter of law, but, since
documents of this nature are almost
certain to contain technical material,
the court must, by evidence, be put in
the position of a person of the kind to
whom the document is addressed, that is
to say, a person skilled in the relevant
art at the relevant date. . . .
When the prior inventor's publication and
the patentee's claim have respectively
been construed by the court in the light
of all properly admissible evidence as to
technical matters, the meaning of words
and expressions used in the art and so
forth, the question whether the
patentee's claim is new . . . falls to be
decided as a question of fact."
4. The Patent is in respect of an invention entitled "Belt Cleaner Mounting Arrangement". It claims a new combination of integers. Claim 1 is for a combination which comprises six integers. I set out the text of this claim later in these reasons. It was accepted by both sides that if the attack upon claim 1 failed then any attack upon the other claims also would fail. Hence, attention was directed solely to claim 1.
5. Burchett J. referred to the need for conveyor belts used in the mining
industry and elsewhere for the transport of materials to
be cleaned, generally
by some form of scraping. The evidence showed that a number of devices had
been adopted and that, at least
in the United States, patents for such
equipment had been granted over at least a forty year period before 1977. In
the Complete
Specification for the Patent, there is reference to the prior art
and it is said that difficulties have been presented with respect
to repair or
replacement of blade elements used in the scraping devices. An object of the
invention claimed in the Patent is said
to be to obviate or minimise these
disadvantages. The disadvantages are stated as follows:
"The load may leave a residue which mayLegal Issues
build up on the scraper or scrapers, and
on the means by which they are applied to
the belt. Maintenance may be rendered
more difficult by construction of space
under and in the vicinity of the belt,
and particularly at the point of
discharge of its load. The minimisation
of loss of the productive operation of
the belt during any stoppage for
maintenance of scraping equipment is a
consideration of some importance."
6. Two issues of patent law were debated upon the appeal.
7. The appellants rely as anticipations upon the disclosures in the specifications for three United States patents, each of which was "published" in the technical sense in Australia before the relevant priority date. Each disclosure is said to constitute an anticipation rendering the combination in claim 1 of the Patent bad for want of novelty. The three United States patents are No. 3674131 ("the later Matson patent"), No. 3342312 ("the Reiter patent") and No. 2794540 ("the Sinden patent").
8. In addition to these alleged documentary anticipations, the appellants also rely upon the disclosure in several machines in prior use. Those machines were identified not by the production in evidence of actual examples, but partly by the recollection of witnesses and partly by drawings in catalogues and brochures. This method of proving alleged anticipation has to be approached with some caution, as Menzies J. pointed out in Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. [1970] HCA 38; (1970) 44 ALJR 385 at 387; see also Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977) 137 CLR 228 at 235, per Aickin J. Upon the appeal, the Court's attention was directed to the Stephens-Adamson catalogue (Exhibit LP5), in association with the Reiter patent, and to the Skega Belt Scraper brochure (Exhibit WTB3) as an example of what were identified as the T-slot or T-bar cleaners.
9. The appellants, on one formulation of their arguments, conceded that the sixth integer of claim 1 of the patent in suit was not found in the later Matson patent or in the Reiter patent or the Sinden patent, and that the T-slot cleaners lacked a sleeve member as claimed in the second integer of claim 1 of the patent in suit.
10. However, in each case, the missing integer was said by the appellants to be old and obvious and that it would have needed a mere workshop improvement to supply it. At the trial, Burchett J. held that the differences between the alleged anticipations and the invention claimed in the Patent "cannot be described as unsubstantial or as workshop improvements". The appellants submitted to us that where the difference from the prior art consists in matters which make no substantial contribution to the working of the thing claimed, or involve no ingenuity or inventive step, so that the variations amount to mere "workshop improvements", the patent is invalid for want of novelty. Reliance was then placed upon what was said by Lockhart J. and myself in R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679 at 698, 700, 707.
11. Lockhart J. held (at 698) that lack of inventiveness may not be raised under a claim of want of novelty on an objection to grant of a patent "except in a clear case where the invention claimed obviously possesses no inventive merit whatever". His Honour later (at 700) held of the invention in question that it disclosed an inventive step over a prior disclosure, "something more than a mere workshop variation or mechanical equivalent." In my judgment (with which Jenkinson J. agreed), I approached the question somewhat differently, saying (at 707) to categorise an alleged invention as a mere workshop improvement over an item in the prior art does not necessarily mean that, under an objection for want of novelty, reliance is being placed upon the ground of obviousness. Judgment in this case was delivered by the Full Court after Burchett J. had reserved his decision in the proceedings giving rise to the present appeal.
12. On the other hand, on the present appeal, counsel for the respondents submitted that revocation proceedings in respect of a claimed combination cannot succeed on the ground of want of novelty unless there is an anticipation comprising all of the integers claimed, except that novelty may still possibly be lost by prior publication or user which has the substitution of "mechanical equivalents" to perform analogous purposes. The respondents submitted that in this context the term "workshop improvement" can lead to error, it being properly used only in cases of obviousness. This, as I understood it, the appellants denied, and they sought to challenge the particular findings of Burchett J.
13. This, then, presents the first of two issues of law which arise on the appeal.
14. The second issue of law concerns the question of "mosaics". The
appellants accept that generally it is not permissible to make
a "mosaic" of,
or to read together, various pieces of prior art for the purposes of assessing
novelty. This proposition is usually
said to date from the judgment of the
English Court of Appeal given by James L.J. in Von Heyden v Neustadt (1880) 50
LJ Ch (NS) 126. That was at a time when the distinction between novelty and
obviousness was not as clearly understood as it has since become. This
is
apparent from what was said by James L.J. at 128, the emphasis being supplied
by me:
"But it is contended that it is notAs the law now stands, it would not be necessary to show of an anticipation that it was part of a common stock of knowledge possessed by those in the art concerned.
novel, because it is anticipated by
information given to the world in prior
publications, being part of the common
stock of knowledge possessed by the
chemical portion of the public. The
burden of proving this anticipation is on
the defendants, and it must be made out
very clearly in order to destroy the
patent of a man who, at all events, was
the first person who de facto produced
the thing to the public practically in a
working state."
15. In Australia, where obviousness is put in issue it is not possible to "make a mosaic" out of existing publications which do not form part of common general knowledge; rather, where what is claimed is a combination, the question is whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.
16. The inhibition against the making of a mosaic applies with even greater
force in Australia where the challenge to validity is
based on lack of
novelty. In Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia)
Ltd. [1980] HCA 9; (1980) 144 CLR 253 at 292-293, Aickin J. (with whom the other members of
the High Court agreed) after dealing in the manner I have above described with
the inhibitions upon making a mosaic to support an allegation of obviousness,
went on to deal with novelty in the following terms:
"The making of a mosaic prohibited in theIn Martin and Biro Swan Ltd. v H. Millwood Ltd. (1956) RPC 125, Viscount Simonds said in the course of his speech (supra at 133):
case of an allegation of want of novelty
is the picking out of individual items of
information from prior publications or
prior objects and assembling them
together so as to give them an appearance
of unity and then alleging that such
mosaic reveals the very thing claimed.
That is an understandable, though not a
permissible, process."
"The next question then is whether the17. However, the appellants point to the statement in the 12th edition of "Terrell on the Law of Patents", para 297, where, after discussion of the English authorities supporting a proposition that it is not legitimate to piece together a number of prior documents to produce an anticipation of an alleged invention, it is said:
claim, whatever it may be, has been
anticipated. Clearly it was not by prior
user. Was it anticipated by what was
known before the priority date of the
claim in the United Kingdom? To
establish such anticipation the
Appellants must show that in some prior
publication there is to be found
information about the alleged invention
equal for the purposes of practical
utility to that given by the patent in
suit. It is not enough, to use the
familiar metaphor which has perhaps been
run to death, to make a mosaic of prior
publications and to say that thus the
whole invention has been already
disclosed. This is particularly the case
where the invention is said to consist of
a novel combination, or, as is sometimes
said, a new functional inter-relation of
integers. For that, too, if the word has
not already acquired a sinister content,
might well be described as a mosaic. In
the present case I do not think that the
combination of integers was anticipated
in any prior publication. The learned
Judge, as I have said, did not deal with
this aspect of the case, and I am far
from criticising him. He did, I think,
regard Weiller's Patent, to which I must
refer again, as an anticipation of at
least one important integer of the
combination in the patent in suit, but
that does not cover the point."
"A series of papers which form a seriesOf the prior art cited in the present case, in the later Matson patent reference is made to United States patent No. 3504786 ("the earlier Matson patent"). It is then submitted by the appellants that the earlier Matson patent discloses the sixth integer of claim 1 of the Patent, which is that which may otherwise be missing from the later Matson patent. It also is said that both the earlier Matson patent and the patent in suit refer to the Reiter patent, and that this also discloses the missing sixth integer.
of disclosures and refer to each other,
so that 'anyone reading one is referred
by cross-references to the others', do
not, however, form a mosaic."
18. There is thus presented the second legal issue raised on the appeal. Involved in it is the question of whether the prohibition against the making of a "mosaic" to supply an anticipation destructive of novelty is qualified so as to permit an internal cross-reference from one document to another, and, if so, what is the nature of that qualification to the general principle.
19. Burchett J. held, in effect, that if there was such a qualification to the prohibition against mosaics, the qualification did not apply to the facts of the present case. The appellants submit that there is such a qualification and that it does apply here.
20. I turn to consider the first of the legal issues.
Novelty and Workshop Improvements
21. A prior publication does not amount to an anticipation of an invention claimed as a combination if it discloses some but not all of the integers of that combination: Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253 at 298, per Aickin J. That proposition is of considerable importance on this appeal.
22. It is important for a patentee to claim only the essential integers in a combination and to distinguish what is essential from what is inessential. This is because to establish infringement of a combination patent the patentee must show that the defendant has taken each and every one of the essential integers of the plaintiff's claim; if on its true construction the claim is for a particular combination of integers and the alleged infringer omits one of them, the infringer escapes liability: Populin v H.B. Nominees Pty. Ltd. [1982] FCA 45; (1982) 59 FLR 37 at 41. Further, where what is in question is an inessential integer, a device which contains the essential integers will fall within the claim, whether or not an inessential integer is replaced by an obviously equivalent device or omitted altogether; hence, the expression "mechanical equivalent": Walker v Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643 at 650, 657; Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 217; Blanco White, "Patents for Inventions", 4th Ed., para. 2-208.
23. On the other hand, the expressions "workshop adjustment", "workshop improvement" and "workshop alteration" are usually employed in relation to obviousness: Blanco White, "Patents for Inventions, 4th Ed., para. 4-212. They are used in the sense of something a skilled workman would have come to, proceeding along previous lines of inquiry and having regard to what was known or used.
24. In Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977) 137 CLR 228 at
235, Aickin J. said:
"The basic test for anticipation or want25. There was some discussion before us as to the significance of the reverse infringement test as a criterion for judging anticipation. In the Meyers Taylor Case (supra) Aickin J. was dealing with alleged anticipation of a combination patent; none of the alleged anticipations incorporated all the integers of any one of the claims. Therefore, as his Honour said (137 CLR at 235) none of them "could therefore possibly constitute an infringement". In such a situation, the adequacy of the reverse infringement test will be readily apparent, given the fatal effect upon an infringement suit of omission from the alleged infringement of an essential integer. But Aickin J. described this test only as "generally" applicable. Where the alleged anticipation is a paper publication, particularly a prior patent specification, there may be ground for debate in a comparison with the specification in suit as to the presence of inessential integers and mechanical equivalents. King J. pointed this out in his judgment at first instance in Werner's Case (supra at 702). There may also be dispute whether what has been disclosed sufficiently reveals an essential integer, in the light of the principles in Hill v Evans (1862) De G F & J 288 (see Werner's Case at 683 per Lockhart J.).
of novelty is the same as that for
infringement and generally one can
properly ask oneself whether the alleged
anticipation would, if the patent were
valid, constitute an infringement (see,
e.g., Harwood v Great Northern Railway
Co. [1865] EngR 708; (1865) 11 HLC 654 at 681). Here
no prior object and no object according
to a prior document involved or
incorporated all the integers of any one
of the claims and could therefore
possibly constitute an infringement.
Accordingly I am satisfied that the
objection of want of novelty has not been
made out."
26. The appellants sought, somewhat tentatively, to pray in aid the principles of "purposive" construction of patent specifications, described by Lord Diplock in Catnic Components Ltd. v Hill & Smith Ltd. (1982) RPC 183 and discussed in several decisions of this Court. The particular point at issue in that case concerned whether the defendant escaped infringement because, whereas one of the integers of the claimed invention spoke of a rear support member "extending vertically", the alleged infringement included a member inclined at 6 degrees or 8 degrees from the vertical. A reduction of this order had a negligible effect upon function. The House of Lords found infringement. One may observe that such a result in an Australian court would have caused no great surprise to the reader of Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. [1970] HCA 38; (1970) 44 ALJR 385 at 388. I would not treat the House of Lords as having propounded any novel principle or new category of "non-textual infringement", and this Court has treated the decision in that light: Populin v HB Nominees Pty. Ltd. [1982] FCA 45; (1982) 59 FLR 37 at 42-43; Rehm Pty. Ltd. v Websters Security Systems (International) Pty. Ltd. (1988) 81 ALR 79 at 91-92. Certainly there is, in my view, no significant assistance to be gained in dealing with the issues that arise in this case from the Catnic Case, concerned as those issues are with lack of novelty.
27. At the heart of the first of the legal issues on the present appeal is the correct description of that area of activity which is not specifically dealt with in the alleged anticipation but nevertheless sufficiently made apparent to the skilled addressee to enable one to say there has been an anticipation within the principles stemming from Hill v Evans (supra).
28. There has been some drift in the authorities as to the degree of rigour with which the alleged anticipation is to be tested. (As is illustrated by the discussion of the English authorities by Falconer J. in Genentech Inc.'s (Human Growth Hormone) Patent (1989) RPC 613 at 629-633, selection patents may require special attention, but that is a matter for another day.) It was settled in Savage v D.B. Harris & Sons (1896) 13 RPC 364 at 368-369, per Lindley L.J., that the degree of disclosure in an alleged paper anticipation does not have to be so great as to amount to a full description of the invention allegedly anticipated, including the best method of performing it in the sense now required by s. 40 of the Patents Act. Something less will do for sufficient disclosure to constitute an anticipation.
29. The position in England under the Patents Act 1949 (U.K.) appears from
General Tire & Rubber Co. v Firestone Tyre & Rubber Co.
Ltd. (1972) RPC 457 at
485-486, a passage described as "much quoted and useful" by Lord Wilberforce
in E.I. Du Pont De Nemours & Co. (Witsiepe's) Application
(1982) FSR 303 at
310-311. In this passage, the English Court of Appeal, in dealing with
anticipation by prior publication, had said (emphasis
supplied):
If the prior inventor's publicationThis passage also was approved and applied by Stephen J. in Washex Machinery Corporation v Roy Burton & Co. Pty. Ltd. (1974) 49 ALJR 12 at 18. But it is apparent from other Australian authority that what was said by the English Court of Appeal has to be read with some qualifications.
contains a clear description of, or clear
instructions to do or make, something
that would infringe the patentee's claim
if carried out after the grant of the
patentee's patent, the patentee's claim
have been shown to lack the necessary
novelty, that is to say, it will have
been anticipated. The prior inventor,
however, and the patentee may have
approached the same device from different
starting points and may for this reason,
or it may be for other reasons, have so
described their devices that it cannot be
immediately discerned from a reading of
the language which they have respectively
used that they have discovered in truth
the same device; but if carrying out the
directions contained in the prior
inventor's publication will inevitably
result in something being made or done
which, if the patentee's patent were
valid, would constitute an infringement
of the patentee's claim, this
circumstance demonstrates that the
patentee's claim has in fact been
anticipated.
If, on the other hand, the prior
publication contains a direction which is
capable of being carried out in a manner
which would infringe the patentee's
claim, but would be at least as likely to
be carried out in a way which would not
do so, the patentee's claim will not have
been anticipated, although it may fail on
the ground of obviousness. To anticipate
the patentee's claim the prior
publication must contain clear and
unmistakeable (sic) directions to do what
the patentee claims to have invented:
Flour Oxidizing Co. Ltd. v Carr & Co.
Ltd. (1908) 25 RPC 428 at 457, line
34, approved in B.T.H. Co. Ltd. v
Metropolitan Vickers Electrical Co. Ltd.
(1928) 45 RPC 1 at 24, line 1). A
signpost, however clear, upon the road to
the patentee's invention will not
suffice. The prior inventor must be
clearly shown to have planted his flag at
the precise destination before the patentee."
30. One begins with the judgment of Latham C.J. in Acme Bedstead Co. Ltd. v
Newlands Bros. Ltd. [1937] HCA 63; (1937) 58 CLR 689. The Chief Justice cited what was said
by the Privy Council in Pope Appliance Corporation v Spanish River Pulp &
Paper Mills Ltd.
(1929) AC 269 at 276. This was a passage in which their
Lordships in turn had adopted what had been said in the 1908 and 1928
decisions referred
to in the above extract from the judgment of the English
Court of Appeal in the General Tire Case. Latham C.J. (58 CLR at 700-701)
said:
"It is contended, however, that there isIn the same decision, at 707, Dixon J. referred to the:
no justification for, to put it shortly,
adding common knowledge to an alleged
paper anticipation and thus depriving a
patent of subject matter. It is urged
that the authorities show that a paper
anticipation must show, and precisely
show, the whole of the claimed invention
in order to be an anticipation at all,
and that, if an alleged anticipation does
not satisfy this requirement, it should
be ignored (See Pope Appliance
Corporation v Spanish River Pulp and
Paper Mills Ltd. (1929) AC 269 at 276).
But a given specification is not to be
read as in a vacuum. The reader must be
regarded as having at least the common
knowledge of the art. If a competent
workman, seeing either a given
specification or an article in actual
use, could, upon a defect being pointed
out, devise, without the exercise of any
inventive ingenuity, a means of
overcoming the defect, there would not be
invention in the result which he so
achieved."
". . . well-settled rule that a prior31. Twenty-five years later, in C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61 at 71, Lord Reid said:
paper publication, giving information
that does not become part of common
knowledge, does not invalidate a
subsequent patent unless it supplies
enough information to enable a person of
proper skill in the art to produce the
mechanical device or appliance or carry
out the process claimed in the later
specification."
"The law regarding anticipation derivesIn the High Court of Australia, in Olin Corporation v Super Cartridge Co. Pty. Ltd. [1977] HCA 23; (1977) 51 ALJR 525 at 536, Stephen and Mason JJ. referred with apparent approval to the passage I have quoted from the speech of Lord Reid.
from Lord Westbury's statement of it in
Hills v Evans [1862] EngR 365; (1862) 4 De G F & J 288.
There are two branches of this statement.
The first is that 'a person of ordinary
knowledge of the subject would at once
perceive and understand and be able
practically to apply the discovery
without the necessity of making further
experiments.' The appellants maintain
that even if the skilled man could
perceive in the photograph all the
integers in claim 1 he would not apply
the discovery without making further
experiments. But Lord Westbury must have
meant experiments with a view to
discovering something not disclosed. He
cannot have meant to refer to the
ordinary methods of trial and error which
involve no inventive step and are
generally necessary in applying any
discovery to produce a practical result.
. . . The other requirement is that 'the
information given by the prior
publication must for the purposes of
practical utility be equal to that given
by the subsequent patent.' There may be
cases where the skilled man has to have
the language of the prior publication
translated for him or where he must get
from a scientist the meaning of technical
terms or ideas with which he is not
familiar, but once he has got this he
must be able to make the machine from
what is disclosed by the prior
publication. This part of Lord
Westbury's statement appears to have been
universally accepted, and I need only
refer to the latest authority in this
House, Martin v Millwood (1956) RPC
125." (Emphasis supplied).
32. In Ransburg Company v Aerostyle Ltd. (1968) RPC 287 at 299, Lord Upjohn,
in delivery a speech with which the members of the House of Lords agreed,
said:
"In King, Brown & Co. v Anglo-American33. In Australia, Lord Watson's observations in the Anglo-American Case (supra) were adopted in N. Guthridge Ltd. v The Wilfley Ore Concentrator Syndicate Ltd. [1906] HCA 10; (1906) 3 CLR 583 at 591 (per Griffith C.J.), 601 (per Barton J.) and 606 (per O'Connor J.). Isaacs J. did likewise in Broken Hill South Silver Mining Co. No Liability v N. Guthridge Ltd. [1908] HCA 78; (1908) 8 CLR 187 at 202. Lord Watson's remarks are also consistent with what Latham C.J. and Dixon J. said in the passages I have set out from the Acme Bedstead Case (supra), where some reservations were placed upon other English authority.
Brush Corporation (1892) 9 RPC 313
Lord Watson at page 320 pointed out that
a patentee must describe his invention in
such detail as to enable a workman of
ordinary skill to practise it and the
penalty of non-compliance with that
condition is forfeiture of the privilege;
but with regard to prior publication he
said that it is 'sufficient to convey to
men of science and employers of labour
information which will enable them
without any exercise of inventive
ingenuity to understand his invention and
to give a workman the specific directions
which he (the patentee) failed to
communicate'.
That was a rather broader proposition
than the celebrated statement of Lord
Westbury in Hills v Evans (1862) 4 De
G F & J 288, but was accepted as
correct in Savage v Harris (1896) 13
RPC 364.
In the recent case of Van der Lely N.V. v
Bamfords Ltd. (1963) RPC 61 my noble
and learned friend Lord Reid at page 71
put the test of prior publication more
favourably to the grantee of the patent
and solely for that reason I am prepared
to adopt in this case Lord Watson's test
when studying the alleged prior
publications."
34. It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans does not require a literal disclosure and something less may suffice, and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which the combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity and the taking of any inventive step.
35. Any references in this context to workshop improvements or variations should not be understood as importing into this field of novelty concepts of obviousness. There may be room for disagreement upon the English authorities as to what degree of activity by the skilled addressee may be called for in respect of an alleged anticipation for it still to suffice to destroy novelty. In my view, the way in which the English authorities have been treated by the High Court supports the position as stated by Lord Reid in Van der Lely's Case (supra). It is also to be borne in mind that the notional addressee of the alleged anticipation is a skilled addressee with common general knowledge of the art. But his Lordship was not saying that an alleged anticipation of a combination claim, which did not include an integer thereof, nevertheless would constitute an effective disclosure if what was required of a skilled addressee to produce that claimed combination was the taking of an obvious and non-inventive step by way of workshop improvement.
36. In R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679, King J., at first instance, used the terms "workshop variation" and "mechanical equivalent" in the course of dealing with an objection to grant for want of novelty (see 85 ALR at 703). I accepted the proposition, drawn from his Honour's reasoning, that where the alleged anticipation disclosed all the esssential integers of the claimed combination, the conclusion as to lack of novelty which would follow therefrom was not avoided and the invention claimed would not be saved "merely because there were differences which might be described as mere mechanical equivalents or workshop variations" (see 85 ALR 679 at 708, 716). The use of the expression "workshop variation" was not designed to introduce any concept of the presence or absence of a further step which was an inventive step or any notions drawn from the law as to obviousness. (It may be noted that in Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 220, Windeyer J., when dealing with want of novelty, spoke simply of the doctrine of mechanical equivalents.) In any given case, there may well be an overlap between novelty and obviousness on the evidence before the Court, and to use a mechanical equivalent may be to effect a workshop variation; but that should not encourage any blurring between the legal norms of novelty and obviousness.
37. Where, in a case such as the present, the question is whether one or more integers of a claimed combination is not disclosed in an alleged anticipation, and it is said that what is disclosed does sufficiently reveal that integer within the principles of Hill v Evans, it will not be helpful to ask whether variations between the anticipation and the claimed combination answer the description "workshop improvement". Perhaps recognising this, in reply counsel for the appellants put his case simply on the alternative basis that the differences represented no more than the substitutions of mechanical equivalents, thereby bringing his case back to the legal mainstream. But, as will later appear, to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a "mechanical equivalent". The reasoning in the infringement cases, to which I have referred, suggests the contrary.
38. I return to consider whether the appellants' submissions succeed on the
merits of this case, after dealing with the second legal
issue.
Mosaics and Cross-References
39. What is the rationale underlying the prohibition against the making of mosaics? If this is perceived, then one will be better equipped to consider whether the appellants are correct in their suggested qualification.
40. In Acme Bedstead Co. Ltd. v Newlands Bros. Ltd. (supra at 703-704),
Starke J. quoted what was said by Fletcher-Moulton L.J. in
British Ore
Concentration Syndicate Ltd. v Minerals Separation Ltd. (1909) 26 RPC 124 at
147. His Lordship said (emphasis supplied):
"It cannot be too carefully kept in mind41. In his article "Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343, Mr. Gratwick QC, after referring to the case law as it had developed up to the end of the last century, said:
in patent law that, in order to render a
document a prior publication of an
invention, it must be shown that it
publishes to the world the whole
invention - i.e., all that is material to
instruct the public how to put the
invention in practice. It is not enough
that there should be suggestions which,
taken with suggestions derived from other
and independent documents, may be shown
to foreshadow the invention or important
steps in it. Since the date of the
vigorous protest of Lord Justice James in
Von Heyden v Neustadt (50 LJNS Ch
128) against such a 'mosaic' of prior
publications this has been a universally
accepted and most salutary principle. It
applies with exceptional force in cases
where the alleged prior publications are
the Specifications of unsuccessful
inventions which have accordingly never
passed into public general knowledge but
have rightly been forgotten.
All my past experience emphasizes in my
mind the justice of this rule. The
industrial and scientific problems, which
face mankind, are being attacked all over
the world by busy inventive minds from
the most varied points of view. When
some lucky inventor has been successful
in solving the problem and - whether for
the purposes of an action or otherwise -
the records of past failure or incomplete
success are searched, it is common to
find that suggestions or adumbrations of
each of the various steps, by which he
has achieved his result, are to be found
in some one or other of the works of
those who have gone before him, though in
different connection and forming part of
a different and probably unsuccessful
process. When such records are selected
from a mass of antecedent publications
and put in an isolated form before a
Court, there is a danger of their giving
rise to a suspicion of a general lack of
novelty in the successful invention. But
it must be remembered that these alleged
prior publications are the product of a
selection made with a knowledge of the
successful invention, and that probably
hundreds of proposals equally promising,
but which point in wholly different
directions, have been rejected in the
search by reason that they do so. It is
somewhat as though one were to decry the
merit of a prospector who had discovered
that sands were auriferous by showing
that after due rejection of most of the
non-metallic particles from a handful of
sand the gold may be made to appear
visible to the naked eye."
"It is clear that, by this time, the42. I have set out earlier in these reasons the passage from Terrell upon which the appellants rely. In the 4th edition of his work "The Canadian Law and Practice relating to Letters Patent for Inventions", Mr. Fox QC said (at 139):
importance of dealing separately with the
issues of lack of novelty and obviousness
had become well appreciated, even though
the language used in the judgments was
not always chosen as carefully as it
might have been.
While the division between these two
heads of objection was becoming
appreciated, the law relating to lack of
novelty was developing certain quite
clear and strict rules. Thus, ever since
Von Heyden v Neustadt (1880) 50 LJCh
126 it has been accepted without
hesitation that, if a given prior
document does not disclose the whole of
the invention, the deficiency cannot be
made good from another document unless
there is a cross-reference between them.
. . ."
"The rule against making a mosaic of43. The authorities supporting these passages in Terrell and the Canadian work, are stated to be observations of Astbury J. and Sargant L.J. in Sharp & Dohme Inc. v Boots Pure Drug Co. Ltd. (1927) 44 RPC 367 at 402, (1928) 45 RPC 153 at 180, respectively. It is necessary to look rather closely at that case. The patent whose validity was successfully challenged had been granted in 1923 and related to certain chemical substances, the "higher alkyl resorcinols", said to be very valuable as germicides. The judgment of Astbury J. was delivered ex tempore at the end of a seventeen day trial. The remarks in question appear in a passage at p 402 of the report. Before us, the respondents submitted that these remarks were directed to obviousness only and not to cases where lack of novelty was alleged. I do not believe this to have been the case.
documents does not apply when the
documents are connected together and form
a consistent whole as, for example, when
they are chapters in a series of
disclosures where anybody reading one is
referred by cross-reference to the
others."
44. His Lordship said (with emphasis supplied):
"Then the Plaintiffs' Counsel very45. Then after considering certain decisions including Acetylene Illuminating Co. Ltd. v United Alkali Co. Ltd. (1925) 22 RPC 145 at 153, his Lordship continued (with emphasis supplied):
properly discussed separately the
question of novelty and subject-matter.
Their argument on novelty depends really
upon what I have said, that these bodies
are new and valuable. For that purpose
they cite the case of Hills v Evans.
Nobody is likely at this stage to
question anything in the classic judgment
of Lord Westbury in that case; but Hills
v Evans is a case which deals only with
anticipation; it has no bearing at all
upon subject-matter. A patent may be
hopelessly invalid for want of subject-matter,
although there is no disclosure
of its process or of its contents in any
prior document at all. If it be that,
having regard to what the world knows in
the art, the making of the body, if it be
a body in a patent, is a matter of
routine, is a matter which the ordinary
tools of the chemist will enable him to
obtain, or is a matter which will be
obtained in fact, if you follow the
anticipatory directions contained in an
earlier document, then there may be no
subject-matter in the patent, although
the contents of it do not appear in the
way of anticipation.
Then reliance is placed on Von Heyden v
Neustadt and it is attempted to be said
on the Plaintiffs' behalf in this case
that the Defendants rely upon a mosaic
within the meaning of that authority.
All I can say is that it does not seem to
me to be anywhere near what was laid down
in the decision in that case. Here these
papers, especially the more relevant
ones, are one consistent whole; they are
chapters in a series of disclosures on
the particular topics which they deal
with, which include those which are
relevant in this case. Anybody reading
one is referred by cross-references to
the others, and, so far as I can see, the
mosaic theory has no application at all.
It is not suggested on behalf of the
Plaintiffs that the law which applies to
anticipation has any relation to the law
applicable to subject-matter.
As to subject-matter, Sir Arthur Colefax
and Mr. Cripps have naturally had a good
deal to say. They submit very
confidently that in the case of a
chemical patent, if the invention is
novel and useful, subject-matter has
nothing to do with it. That, again, in
one sense is a truism. If there is
invention and if it is novel and if it is
useful, then it is not much use troubling
about subject-matter. But the question
here is whether there is any inventive
step at all. To be novel in this sense
the thing claimed must be new in the
sense that invention was required to
produce it, and in my opinion in this
case there is no inventive step in the
Plaintiff's Patent at all, having regard
to what had been published to the world
in the documents that I have read."
"If the plaintiffs here had produced aAt the end of the judgment after some reported exchange with counsel his Lordship said: "I find that there is no subject-matter in the Patent at all".
new body or set of bodies within the
meaning of that decision, and within the
meaning of what I have attempted to
explain, of course subject-matter would
have been out of the case altogether. I
have tried to explain why, in my
judgment, they have done nothing of the
kind, and that subject matter is the real
question that has to be discussed here."
46. His Lordship's remarks are to be understood in the light of the submissions that were made by counsel. Those submissions are very fully reported. By their particulars of objections, the defendants alleged that the alleged invention was not novel by reason of "prior publication" and "prior common general knowledge". Extensive particulars were given of the alleged prior publications; these included a number of learned papers published between 1881 and 1921 in journals in Germany, Switzerland, the United States and the United Kingdom. It also was objected that the alleged invention was "not proper subject matter for letters patent". The reference to "prior common general knowledge" under the heading of lack of novelty indicates even as late as 1927 objections on the grounds of lack of novelty and of obviousness were not pleaded as distinctly as they would be pleaded after they were introduced as separate specific heads of objection by the Patents and Designs Act 1932 (U.K.), s. 3; see Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253 at 289.
47. The primary submission of counsel for the defendants was (see 44 RPC at
375) that:
"(T)he alleged invention has beenCounsel for the plaintiffs submitted (see 44 RPC at 378):
anticipated, or that, if there was not
the full disclosure required for
anticipation, so little remained to be
done, in the state of public knowledge at
the date of the Patent that there was not
any patentable subject-matter in the
alleged invention. The Defendants say
that the Plaintiffs' process is effective
for producing alkyl resorcinols, but that
that is an obvious thing to chemists. It
is necessary for a plaintiff to prove
that there has been an inventive step
taken, over and above the prior art.
That is sometimes called the scintilla,
an expression that is frequently used by
Counsel . . ."
"There is a great difference in the value48. There was a considerable degree of cross-referencing between various of the paper publications relied upon, in the sense that the reader of one paper would in terms be referred to what had gone before as supplying the starting point for further steps then taken by the particular author, and disclosed in his paper; see, for example, 44 RPC at 395 lines 34-45 (where Johnson and Hodge refer to Clemmensen's first paper) and 397 lines 30-40, (where Johnson and Lane refer to Clemmensen and Nencki). Given this degree of connection, one would not readily describe these as "independent" documents of the kind referred to by Fletcher Moulton L.J. in the British Ore Concentration Case (supra).
of documents as to anticipation and
subject-matter. When one is dealing with
anticipation, a single document that
tells one what is in the patent
specification is sufficient to defeat the
patent, even if the other documents say
that it is nonsense. When one comes to
subject-matter, one has to take a survey
of all the documents that exist in
chemistry - one has to have the chemist's
mind . . ."
49. Against that background, in my view, Astbury J. in the passages in question is to be understood as saying (i) the "mosaic theory" had no application to the series of papers in the evidence before him, (ii) in any event, the challenge was made not only on the ground of anticipation but also on the ground of want of subject matter and (as the law was then understood in England) the limitations imposed by the "mosaic theory" had no application where subject matter was in issue, (iii) there was no inventive step having regard to what had been published in the documents in question and had become common general knowledge in accordance with the defendant's submission.
50. When the matter reached the Court of Appeal, Sir Arthur Colefax K.C., who appeared for the appellants, seeking to uphold the patent, is reported as having said (45 RPC 153 at 158): "The only question is as to want of subject-matter". However, counsel for the respondents submitted (45 RPC at 164) that whilst it had been held that there was no subject matter in any of the claims, it was plain that there was an anticipation as to some of the claims. He said that he had not been called upon at the close of his evidence, and that there were reasons for the judgment being supported that did not appear in it.
51. Lord Hanworth M.R. said that whilst Astbury J. had decided there was no
subject matter in the patent, he read his Lordship's
judgment as meaning that
the patent was invalid also by reason of anticipation "because he held that,
such was the knowledge and
information published at the date of the
Plaintiff's Patent in 1923, that all that was left to be done was the
verification of the
anticipation of earlier chemists, and that that alone
would not form valid subject-matter for a patent" (45 RPC at 170). The Master
of the Rolls then said (45 RPC at 172):
"It appears to me, therefore, upon the52. Sargant L.J. posed the issue as one of "how far the invention . . . claimed has either been actually anticipated by the documents relied on by the Defendants, or has been so nearly pointed out as to be deprived of any inventive merit or subject-matter sufficient to support a claim for a patent". At 179-180 of the report, his Lordship said:
evidence as a whole (for I have referred
to only a few relevant passages) that
there was no novelty in the Patent
because of the anticipatory information
disclosed in the papers available to the
Plaintiffs, to which they could resort,
and of which from internal evidence in
the Specification, they made important
use. The vital Claims in the
Specification, in my judgment, are
therefore invalid for want of novelty."
"It is also significant to note, asSargant L.J.'s conclusion appears at p 182:
showing how completely saturated the
Patentees of the Plaintiffs' Patent were
with the investigations of Johnson and
Lane, that the proportions given in their
Specification of the quantities to be
used for the production of their
substances precisely correspond in many
respects with those stated in Johnson and
Lane's paper as giving the highest yield
of their crude products. And, indeed,
there is a similar coincidence in the
proportions, or indeed the identical
figures given in Clemmensen's second
paper for the production of ethyl
resorcinol and those given in the
Plaintiffs' Specification. . . . These
coincidences are incidentally important
for the purpose of rebutting the
suggestion that the Defendants have been
building up 'a mosaic', as in Von Heyden
v Neustadt ((1880) L.J. Ch 126). For it
is clear that, in the present case, the
Patentees were carefully studying and
making use of the very papers now quoted
against them."
"Although, therefore, there is not such a53. The third member of the Court of Appeal, Lawrence L.J., held that all claims in the specification either had been anticipated or were not proper subject matter for letters patent (45 RPC at 190). In particular, his Lordship referred to the prior publication of Johnson and Lane as pointing out the advantages of the Nencki and Clemmensen reactions:
clear case for actual anticipation with
regard to Claim 9 of the Specification as
with regard to Claims 1 to 5 inclusive
. . . there is, in my view, as complete
a failure of subject-matter in respect of
Claim 9 as in respect of Claims 1 to 5;
and, this being so as to all the Claims
in question, it is unnecessary to discuss
with any greater minuteness than has
already been done the question of actual
anticipation."
"(T)here is the important evidence of Dr.It would follow from this that for the purpose of assessing lack of novelty, Lawrence L.J. was treating as permissible the cross-references contained in the papers referred to. The degree of connection between the Johnson and Lane paper and the earlier papers of Clemmensen and Nencki appears in a passage of Astbury J.'s judgment to which I have earlier referred, namely 44 RPC at 397 lines 30-41.
Marshall who, having read Johnson and
Lane's paper and without having seen or
heard of the Plaintiffs' Specification,
had no hesitation in selecting and
employing the Nencki-Clemmensen method as
the one best suited for the purpose of
making n-hexyl resorcinol, and
experienced no difficulty in producing
that substance by that method. This
fact, in my opinion, affords cogent
evidence that the prior publications
relied upon by the Defendants disclose
the Plaintiffs' alleged invention and
satisfy the test laid down by the
authorities as to what is necessary to
constitute an anticipation (see, for
example, Savage v Harris ((1896) 13
RPC 364, where Lord Justice Lindley
reviews the decisions on this point).
. . ."
54. In the 4th edition of his work "Patents for Inventions", para. 4-107, Mr.
Blanco White QC, after stating the proposition that
a claim for a combination
does not lack novelty merely because each constituent integer of the
combination is old, continues:
"The proposition stated above is sometimes55. In Mr. Ricketson's book "The Law of Intellectual Property" at 936-937, it is stated that the general prohibition against making a mosaic out of prior publications has been relaxed "so as to omit the use of documents where these are cross-referenced or otherwise referred to in the earlier patent specification". In addition to the judgment of Sargant L.J., to which I have referred, the learned author relies upon the decision of McTiernan J. in Warner Laboratories Pty. Ltd. v Chemspray Pty. Ltd., reported only in (1967) 37 Australian Official Journal of Patents 2513.
stated in the form, that it is not
permissible to combine two prior
publications for the purposes of an
attack upon novelty; and is then
sometimes called the rule against
'mosaics'. This form of the rule is not
entirely satisfactory; if taking two
prior documents together they disclose
the whole combination (and not merely
separate parts of it) it is by no means
clear that the combination has novelty.
This situation may in particular arise
where (expressly or by implication) one
document refers back to the other. The
rule against mosaics is not a rule; the
term 'mosaic' derives from the
observations in Von Heyden v Neustadt
. . ."
56. In that case, one of the grounds upon which invalidity was alleged was
lack of novelty. In order to substantiate that allegation,
the cross-claimant
relied upon the publication in Australia of four United States patents, (Nos.
2,322,631, 2,629,393, 2,646,063
and 2,674,262), the inventors being identified
respectively as Groeniger, Langdon, Hayes and Bradshaw. McTiernan J. said:
"It is important to notice that theWe have been supplied with a copy of the Hayes' patent. The reference to Groeniger's patent is at the end of the body of the specification under the heading "References cited in the File of this Patent". Nine patents are then listed. There is no reference in the body of the Hayes' specification to the Groeniger patent.
specification for the Hayes' patent
concludes with references to each of the
United States patents cited in the file
of this patent (i.e. Hayes'). These
patents include a patent for an invention
of which Groeniger was inventor. . . .
A composition of extracts from
Groeniger's specification relating to the
particulars of his back-flow preventer
and of extracts from Hayes' specification
relating to fitting a mechanism
functioning in the same manner in a hose
nut made according to his instruction
cannot be likened to a mosaic because the
respective specifications are a single
source of information as to the state of
this art. I find that it is within the
capacity of an expert workman who has
studied both specifications to turn to
account the knowledge, thus derived, by
devising means for prevention of back
flow substantially similar to the
combination which is the subject of the
present patent. I find that Groeniger's
specification and Hayes' specification
taken together are an anticipation of
such combination. It is permissible to
consider them as connected documents
because Hayes' specification refers to
Groeniger's. I find that none of the
claims in respect of which the present
patent was granted is novel."
57. One may, with respect, doubt whether the very limited form of cross-reference between these specifications met McTiernan J.'s criterion of "a single source of information as to the source of this art". On the other hand, as I have indicated, the degree and nature of the connection between the prior publications cited in the Sharp & Dohme Case (supra) might well have merited this description; certainly they were not "independent" documents in the sense earlier used by Fletcher-Moulton L.J..
58. In my view, it will not necessarily be making a forbidden mosaic merely to rely upon two or more documents, none of which by itself discloses material sufficient for an anticipation of the invention in suit. What degree of lack of connection between two or more documents will make them "independent" and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharp & Dohme Case. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharp & Dohme Case indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J. called "one consistent whole".
59. Returning now to the cross-references involved in the present case, I go
first to the later Matson patent. The inventor identified
in both Matson
patents is Carl G. Matson. Under the heading of "Background of the Invention"
appearing in the later Matson patent,
there is the following:
"A typical conveyor cleaner for handlingI would not regard that reference to the earlier Matson patent (still less the reference to the citations therein) as sufficiently connecting all the contents thereof to the later Matson patent, so as to enable it to be relied upon to meet an argument that the later Matson patent does not disclose one of the integers of claim 1 of the patent in suit.
particulate material is an endless belt
trained about a pair of rollers. Because
of the tendency of the belt to accumulate
adhering material, it is commonplace to
provide spring-pressed scraper blades to
remove this material. The conventional
way of mounting the blades is to support
them on arms, one for each blade, and to
bias the arms into engagement with the
belt by metallic coil springs. A
representative prior U.S. Pat. is that to
C.G. Matson, No. 3504786, and consider
also the art cited in that patent. All
of these use coil springs in one form or
another and means are provided for
adjusting the spring load. These prior
structures are generally satisfactory,
but it has been found that they leave
room for improvement in the areas of
manufacture, economy, ease of assembly
and disassembly, etc."
(Emphasis supplied.)
60. The material under the heading "Descriptions of Preferred Embodiments" is
introduced by the words:
"As will be clear from the abovementionedThe reference to "10" is a reference to the accompanying drawings.
Matson patent, the cleaner structure
is mounted transversely of the length
of an endless belt, preferably at one end
thereof and beneath the return run.
Basically, the cleaner is mounted on support
means including a transverse support 10
rigid with the main conveyor structure."
61. The appellants rely upon the earlier Matson patent on the footing that whilst in the later Matson patent there may be no disclosure of "an adjusting element operable on the support member for bringing the belt cleaning element into engagement or out of engagement with the conveyor belt" (this being the sixth integer in claim 1 of the patent in suit), that deficiency is supplied by the earlier patent. However, the reference in the quoted passage from the later Matson patent to the earlier Matson patent does not direct the reader to get out of it any material bearing upon the means whereby the belt cleaning element is brought into or out of engagement with the conveyor belt. It does no more than, as a means of assisting comprehension in a general sense of the preferred embodiments, to refer the reader to the earlier Matson patent as indicating that the cleaner structure is mounted transversely of the length of the belt preferably at one end of it and beneath the return run. This is an integer common to both Matson patents, and to the patent in suit. The first integer of claim 1 of the patent in suit is to a support member positioned beneath the conveyor belt in use and generally transverse to the direction the belt travels. The reader of the later Matson patent is directed to the earlier Matson patent for a limited purpose only, one falling short of that for which the appellants seek to use it. I would not read them together in the way urged by the appellants.
62. I turn now to the references to the Reiter patent upon which the appellants rely.
63. In the earlier Matson patent a reference to the Reiter patent appears under the heading "References Cited" and above the name of the United States Primary Examiner. Five United States patents are listed, one of them Reiter. This of itself would leave Reiter as an independent document as regards the earlier Matson patent, and a fortiori as regards the later Matson patent and the patent in suit.
64. Also, in the earlier Matson patent under the heading "Background of the
Invention", it is said:
"It is well known that endless belt65. This teaches away not towards the Reiter patent, as disclosing something which does not recognise a need to be met by the earlier Matson patent. As Burchett J. put it, the reference is simply dismissive. To read it with the patent in suit would indeed be to offend the precepts which forbid the assembly of mosaics.
conveyers accumulate material thereon
during operation and that, unless this
material is scraped off either
continuously or intermittently, the
build-up interferes with efficient
operation. Several such scrapers have
been patented, primarily as evidenced by
such U.S. Patents as . . . 3,342,312,
(the Reiter patent) but all of these
operate on the principle of cleaning the
under or bottom surface of the return run
of the belt, because, obviously, to
scrape the top surface of the upper or
delivery run is merely to scrape off the
material being conveyed. So far as is
known, no patentee has recognized the
need for scraping the inside of the belt;
that is, either the underside of the
delivery run or the top side of the
return run." (Emphasis supplied.)
66. There is a reference to the Reiter patent also in the Complete
Specification of the patent in suit. The reference is in the
opening passages
of the Specification:
"This invention relates to a belt cleanerThere follows an identification of what are indicated to be two disadvantages of this prior art. The Specification continues by stating:
mounting arrangement.
Many varied arrangements have been
provided in the prior art for mounting
conveyer belt cleaners on a support
member mounted transverse to the
direction of conveyer belt travel. All
of these arrangements have presented
certain problems with respect to repair
or replacement of individual blade elements.
Sometimes wiper blades are carried on one
end of a torsion spring. The other end
of the spring is affixed to a transverse
support. Such an arrangement is
illustrated in U.S. patent 3,342,312. As
the wiper blades wear, periodic
replacement is required. Occasionally a
wiper blade becomes damaged during
regular use and the individual blade must
be replaced. In either of these
situations, the conveyer belt must be
shut down and one of two alternatives is
presented to the belt operator."
(Emphasis supplied.)
"It is therefore an object of the present67. The appellants rely upon the Reiter patent as disclosing the sixth integer in claim 1 of the patent in suit. (In fact, Burchett J. found to the contrary, and I deal with this holding later in these reasons.) But plainly the Reiter patent is referred to in the course of pointing out the alleged shortcomings in the prior art and the teaching is away from the Reiter patent. This is very far from placing reliance upon that patent and from disclosure of "one consistent whole", as in the Sharp & Dohme Case. Accordingly, I would treat the prior specifications relied upon as independent documents.
invention to provide a belt cleaner
mounting arrangement which will obviate
or minimise the foregoing disadvantages
in a simple yet effective manner or which
will at least provide the public with a
useful choice."
68. On that basis, I turn to consider whether the appellants have made out
their case challenging his Honour's findings against them
on novelty.
Claim 1 of the Patent
69. As I have indicated, on the appeal it was accepted by both sides that if
the attack upon claim 1 of the Patent, for lack of novelty,
was not successful
then any attack upon the other claims also would fail. Claim 1 comprises six
integers, all of which were treated
by both sides as essential. I set out
below the text of claim 1 with interpolations to indicate each integer:
"Apparatus for cleaning a conveyor belt comprising:70. The invention claimed in claim 1 is thus for a new combination, the integers being so arranged and related that they work together to produce a single and new result. If that result was new and was not obvious, then the claim would be valid notwithstanding that each of the integers was known before the priority date; see Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 213, per Windeyer J. In the present case, Burchett J. found that the combination was not obvious. That finding was not challenged on appeal. That being so, and given the state of the authorities on novelty, it was somewhat beside the point for the appellants to submit that each of the various alleged anticipations destroyed novelty, even though it disclosed less than all of the integers of claim 1, and to submit this was so because to supply the missing integer would have been obvious. Nor, looking at the other way the case was put, would one ordinarily describe the addition of a missing integer of a claimed combination, not being an inessential integer, as the substitution of a mechanical equivalent; for there would be lacking that for which the "substitution" was made.
(i) a linearly extending support member adapted
to be positioned beneath the conveyor belt
in use and generally transverse to the
direction of the conveyor belt travel;
(ii) at least one sleeve member mounted on the
support member for sliding movement therealong,
(iii) the sleeve member being arranged to
cooperate with the support member to prevent
rotation of the sleeve about the support
member when mounted thereon,
(iv) mounting means on the sleeve members,
(v) one or more belt cleaning elements mounted
on the mounting means, and
(vi) an adjusting element operable on the
support-member for bringing the belt
cleaning elements into engagement or out of
engagement with the conveyor belt."
71. The first anticipation relied upon is the disclosure in the later Matson patent. Burchett J. held that in this patent there was no disclosure of either the second or sixth integer. These holdings were challenged by the appellants, to some extent upon fresh points as to construction of this patent.
72. The question, in accordance with the authorities which I have discussed, is whether the disclosure in an alleged paper anticipation such as the later Matson patent shows to a reader with ordinary knowledge of the subject the whole of the claimed combination. In the passage from C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61 at 71 set out earlier in these reasons, Lord Reid was dealing with a photograph which clearly showed all but one of the integers of a claimed combination. The combination was a hay rake. His Lordship held that "the typical skilled man" would infer from the photograph that the wheels were rotated by contact of their teeth with the ground, this being the crucial integer in the combination. Lord Reid rejected the submission that there could not be an anticipation unless the photograph "clearly and unmistakably" (a phrase drawn from earlier authorities I have already discussed) showed that the wheels were ground driven; rather, "the anticipating material must be as good for practical purposes as the material in the appellant's specification".
73. Lord Reid was at pains to point out the importance of evidence in
resolving such an issue. The question was what the eye of
the man with
appropriate engineering skill and experience would see in the photograph. His
Lordship said, (1963) RPC at 71:
"(T)he judge ought not, in my opinion, toThese words are to be borne in mind where, as in the present case, the appellant's submissions invited a close analysis of the drawings and descriptions constituting the alleged anticipations. I have already referred to what was later said on the subject by the English Court of Appeal in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 485.
attempt to read or construe the
photograph himself; he looks at the
photograph in determining which of the
explanations given by the witnesses
appears to be most worthy of acceptance.
The photographs must be looked at through
the eyes of the typical addressee of the
appellants' specification - the kind of
person who would be expected to make a
machine of this kind."
74. The evidence in this respect was strikingly deficient. In substance, what the appellants were seeking to have this Court do on appeal was substitute its view, unaided by evidence of the category I have described, for the construction placed upon the later Matson patent by the learned trial judge.
75. Does the later Matson patent disclose a combination including at least one sleeve member mounted on the support member "for sliding movement therealong" (the second integer)? The respondents submit that his Honour correctly read the later Matson patent as teaching away rather than towards inclusion of such an integer.
76. His Honour referred to the abstract of the later Matson patent which is
in the following terms:
"An improved mount for a conveyor cleaner"Torus", used as an architectural term, is a large convex moulding, as at the base of a column; in geometry it describes a surface or solid generated by the revolution of a circle about any axis (The Shorter Oxford English Dictionary, Vol. II, p 2331). His Honour's reading of the specification of the later Matson patent satisfied him that it referred to a sophisticated means of elastically mounting the scraper blades and that the invention was not concerned with the problem of the ready removal of the entire mount, bearing the individual blades, from the rigid support member in a simple fashion without going under the conveyor; it is this which was the important aspect of the patent in suit. Burchett J. concluded that when the specification of the later Matson patent was studied, it became apparent that the references in it to axial assembly and disassembly were not references to the attachment to the support shaft at all, but to the assembly and disassembly of the complex elastic mount itself. The mount was attached to the support shaft on what the specification described as "brackets". His Honour concluded:
arm featuring a split tube about a
torsionally elastic torus and wherein the
arm is rigidly secured to the tube, as by
welding, across the split or gap so as to
fix the gap dimensionally whereby the gap
provides a keyway to receive a key on the
exterior of the torus."
"In the first preferred embodiment of the77. On the appeal, the appellants directed criticism to the sentences to which I have given emphasis in the above passage from his Honour's judgment. In the first of the emphasised passages, his Honour was referring to a passage in the complete specification which is to be understood with reference to figures 2 and 3 of the accompanying drawings, or preferred embodiments. The interior of the torus is described as being affixed to a rod like member and it is said that this member "may be confined at opposite ends by cotters . . . and the brackets may be likewise confined by cotters . . .". His Honour's reference to a bolt is, in my view, to be understood as a reference to these cotters. A cotter is a pin or wedge slitted or driven into an opening in order to secure something or hold the parts together; a cotter pin is a cotter with a split end which is spread after being pushed through the hole to prevent the cotter from working loose: "The Macquarie Dictionary", p 426. The question, as counsel for the respondents put it, really is whether in figures 2 and 3 the cotter is shown as going through the bracket or sleeve as well as through the support shaft. In figure 2, the cotter is shown as going only through the support shaft. Counsel for the respondents urged that if one read figure 3 with the text of the specification, it was plain that the cotter went through both the bracket sleeve and the support shaft. Counsel for the appellants disputed this.
later Matson patent, the support shaft is
shown as of square cross-section, and the
bracket is fitted to it by an attachment
which encompasses it, having the same
cross-section. I do not doubt that in
some contexts that attachment could be
described as a sleeve. In the case of
the specification of the later Matson
patent, however, it is shown with a bolt
going through it and the support shaft,
so that it is firmly attached and cannot
slide at all. There is no suggestion in
the specification that it is intended to
be slid into position, or out of
position, at any time during the period
when the cleaner is installed. To the
contrary, the emphasis in the
specification upon the axial assembly and
disassembly of the part attached to the
bracket makes it clear that the intention
is to effect those operations with the
bracket already in place. There is
nothing to suggest that it would not be
fixed prior to the installation of the
support shaft, and retained at all times
until after removal of the support shaft,
should that event ever occur. That there
is no thought of a 'sleeve member mounted
on the support member for sliding
movement therealong' is also confirmed by
a second preferred embodiment, in which
the bracket could by no stretch of the
imagination be described as a sleeve
member. In that case, it involves a
clamp gripping a tubular support shaft,
to which it is immovably fixed by the
tightening of two bolts, one on each side."
(Emphasis supplied.)
78. In the absence of any evidence as to how a skilled reader would look at the drawings figures 2 and 3 in conjunction with the text of the specification, I am not prepared to find against the patentee and to find that the cotters do not go through both the bracket or sleeve and the support shaft. This would mean that in order to give the necessary movement required for integer 6, it will be necessary to bend the cotter pins straight so that they might be removed.
79. I turn to the second passage to which the appellants directed criticism. The appellants submit that all that would have to be done would be to stop the operation of the apparatus and loosen the bolts; the clamp then would not grip the tubular support shaft so strongly as to impede a sliding movement. The second integer, as Jenkinson J. pointed out in argument, uses the word "for" in a purposive sense so as to indicate adaption or suitability for attaining a certain result; see Blanco White, "Patents for Inventions", 4th Ed., para 2-213. In my view, one could not fairly describe the disclosure as one of a sleeve member mounted on a support member "for sliding therealong".
80. There is no disclosure of the second integer in the later Matson patent.
81. The appellants conceded that in the later Matson patent, the sixth
integer of claim 1 of the patent in suit was not "expressly"
to be found.
That is to say, there was no "express" identification of "an adjusting element
operable on the support-member for bringing
the belt-cleaning elements into
engagement or out of engagement within the conveyor belt". (Hence the
importance attached by the
appellants to relaxing the prohibition upon
"mosaics".) However, the appellants submitted that it was obvious that there
would need
to be some means whereby the scraper blades might be brought into
and out of engagement with the conveyor belt, and that there were
numerous
examples of such means having been known and used in Australia prior to 1977.
For example, in his affidavit sworn 15 August
1988, Mr. Bowden, speaking of
the sixth integer in claim 1, had said:
"In my experience all conveyor scraper82. So much may be agreed, but the ingenuity of the combination claimed in claim 1 being conceded by acceptance of Burchett J.'s finding on the issue of obviousness, it is not to the point to augment the disclosure in a piece of prior art such as the later Matson patent, by saying that the missing integer was something that was known. Nor would it be the case that to add it would be to supply a "mechanical equivalent".
systems, even the most primitive type of
conveyor belt system, have some means,
normally operable on the support member,
for bringing the belt cleaning elements
into engagement or out of engagement with
the conveyor belt. This was commonly
achieved in and prior to 1977 in
Australia by counter-weighted arms,
sprung loaded arms, or adjustable
brackets attached to the support member."
83. The appellants then submitted that the torus itself constituted the
adjusting element, (the sixth integer of claim 1), even though
not claimed to
be such in the later Matson specification. Counsel for the respondents
submitted that whilst the torus might adjust
the tension as it flexed, it did
nothing to bring the cleaning element into or out of engagement with the
conveyor belt; it was
not an adjusting element operable on the support
member, for bringing the cleaning element into and out of engagement with the
conveyor
belt. There appears to be some substance in this response to the
appellants' submission. But that submission was not put below.
In the
absence of evidence that a skilled addressee would so read the patent in suit
and the later Matson patent, the argument should
not be entertained on this
appeal.
The Reiter and Sinden patents and the Stephens-Adamson Cleaner
84. His Honour introduced his discussion of these alleged anticipations as
follows:
"The Reiter patent relates to a cleaner85. Integers 2 and 3 of claim 1 of the patent in suit require at least one "sleeve member" mounted on the support member "for sliding movement therealong" and the sleeve member to be arranged "to cooperate with the support member to prevent rotation of the sleeve member about the support member when mounted thereon".
the manufactured version of which was the
Stephens-Adamson cleaner, . . . and there
was evidence that a number (though
perhaps not many) of these had been sold
in Australia prior to the priority date.
Another U.S. patent, for the earliest
version of the Stephens-Adamson cleaner,
was referred to as the later Sinden
patent. The specification of that patent
became open to public inspection in the
Australian Patent Office, Canberra, on 27
February 1958. It was not suggested by
counsel for any party that, for present
purposes, a significant distinction
should be drawn between the two patents
relating to cleaners of the Stephens-Adamson
type. Each involves a supporting
pipe transverse to the conveyor belt,
held at either end by attachment to a
vertical support with a series of holes
drilled in it, so as to make provision
for raising and lowering the pipe.
Another support, of a length at least
equal to the width of the belt, rests on
the supporting pipe. That other support
is called, in various parts of the
specification of the Reiter patent, 'the
supporting frame', 'a support adapted to
be mounted transversely of the belt to be
cleaned', 'the support', 'an elongated
support member, holder or cross angle'.
It is of L-shaped cross-section, and has
fixed to it a number of C-clips
(catalogues with illustrations of the
Stephens-Adamson cleaner show two
C-clips), so that when it sits on the
pipe support the two surfaces presented
by its L-shaped cross-section encompass
about half of the circumference of the
pipe support, which the C-clips enable it
to grip by partially completing that
encompassment. As the specification says:
'The holder . . . is mounted to
rotate and to slide on the
supporting pipe . . . by a plurality
of C-clips . . . fixed to the holder
. . .'
At one end of the holder there is a
mechanism comprising a lever, arcuate
slot, and wing nut, by means of which the
scraper blade pressure may be regulated
by rotating the holder on the pipe
support. In the Reiter patent, the arms
bearing the scraper blades are 'fixedly
connected to the supporting frame', that
is to the holder. The specification
refers to a method for 'fixedly
connecting one end portion to the
support' by the use of mounting eyelets
by which it is bolted to the support.
The method of getting access to work on
the scraper blades of the Stephens-Adamson
cleaner for maintenance is
simple, but it obviously requires space
beside the conveyor belt comparable to
the width of the belt itself, for the
holder (with its attachments) has to be
slid off the pipe support, after removal
of the wing nut on the bolt in the
arcuate slot which fixes the whole
apparatus in position."
86. Burchett J. held that the holder with the C-clips did not disclose the second integer of claim 1 of the patent in suit; in his Honour's judgment, a piece of angle iron with an L-shaped cross section was not a "sleeve" within the meaning of the patent in suit. On the appeal, the appellants challenged this view. But, in any event, in order for the appellants to succeed it would be necessary for them to show that there was an anticipation as regards the third integer and that the sleeve member was arranged to cooperate with the support member to prevent rotation of the sleeve about the support member when mounted upon it. The appellants did not seriously challenge his Honour's finding that the Reiter patent required rotation of the holder about the pipe support as its means of achieving adjustment of the pressure exerted by the wiper blades on the conveyor belt. The apparatus was fastened in position and rotation was prevented, not by any co-operation between the sleeve and the support member (as required by the third integer of claim 1 of the patent in suit) but by the frictional force applied by the wing nut to the sides of the arcuate slot formed in the lever. The appellants did assert before us that the Sinden patent did disclose the third integer of claim 1. This apparently was not put to his Honour and was not assisted by any evidence.
87. Further, his Honour held that in any event, even if the holder (with or
without the C-clips) is a sleeve, then the prior disclosures
lack the sixth
integer of claim 1 of the patent in suit. This was because the adjusting
element is not operable on the support member
but on the sleeve. His Honour
reached this conclusion in the following passage:
"The Stephens-Adamson cleaner also (i.e.88. On the appeal, the appellants challenged the reasoning in this passage, particularly in the portions I have emphasised. There was, it was said, another method for removal for maintenance and this did not involve removal of the entire support member. Counsel for the appellants sought to persuade the Court of this by reference to what was said to be a grub screw disclosed in figure 6 to the specification for the Sinden patent. His submission was as follows (Transcript p 43):
like that of the invention claimed in the
patent in suit) has a support member
which may be adjusted by rotating it to
achieve contact with the belt, but in
that case the method of removal for
maintenance is by removal of the entire
support member with its attachments
bearing the scraper blades. In the case
of the Stephens-Adamson cleaner, the pipe
support is really the means by which the
support member is held in position
beneath the conveyor belt.
If, indeed, the pipe support is regarded
. . . as the support member, on which the
holder is to be regarded as a sleeve,
then the Stephens-Adamson cleaner does
not have the (sixth) integer of claim 1
(of the patent in suit). For that
integer is 'an adjusting element operable
on the support member for bringing the
belt cleaning elements into engagement or
out of engagement with the conveyor
belt.'(His Honour's emphasis).
Although it is true that the Stephens-Adamson
cleaner involves a crude means of
adjustment of the position of the support
pipe by raising or lowering its
attachment to its vertical supports, this
is certainly not provided 'for bringing
the belt cleaning elements into
engagement or out of engagement with the
conveyor belt'. Given that the Stephens-Adamson
equipment is held in a suitable
position beneath the conveyor belt in the
way mentioned, the method by which the
belt cleaning elements are brought into
or out of engagement with the belt is the
rotation of the holder by means of the
lever arm, and the fixing of the rotated
position with the wing nut. (Emphasis
supplied.) If the holder is not the
support member, it is clear this is not
accomplished by an adjusting element
operable on the support member, but by an
adjusting element operable on the holder,
that is, on the (appellants' arguments),
on the sleeve member. As it is expressed
in the specification of the Reiter
patent, 'the pressure handle (i.e. the
lever) positions the wiper blade and
springarm assemblies for proper blade
pressure and other vertical adjustments'."
"Your Honours will see at the bottom of89. Of this submission, several things may be said. It appears not to have been put below, and it invites us to discern something to which the patentee of the Sinden patent did not attach sufficient significance to identify by number so as to pick up the body of the specification. Further, we are invited to construe the drawing being figure 6 without any assistance by evidence from a skilled addressee. This is a further example of the deficiencies in the appellants' case to which I have earlier referred, with particular reference to what was said by Lord Reid in Van der Lely's Case (supra). The Court should not enter upon the path put before us by the appellants. I should add that from my unskilled appreciation of figure 6, there appears some force in the respondents' submission that the angle may be welded to, not grub screwed in, the arm or support member.
figure 2 the adjusting lever 20, and
where the adjusting lever 20 joins the
support member there is a join which is
not given any numerical notation but, I
am instructed, consists of a grub screw
which can be removed at that point and
then the angle - not the support member -
but the angle, can be slid out the other way."
90. The appellants asserted that if, as in my opinion is the case, the appellants have not shown any anticipation including the sixth integer of claim 1, it would have been a mere workshop improvement to add that integer. As I have already indicated in another context in these reasons, that is an impermissible approach to the issue of alleged anticipation in this case.
91. It follows that, without finally deciding whether his Honour was correct
as to the meaning of the term "sleeve", and even if
the appellants were
correct that the Sinden (although not the Reiter) patent disclosed the third
integer of claim 1, nevertheless
there is no disclosure of the sixth integer
(in the sense required by the authorities) by the Reiter and Sinden patents
and the Stephen-Adamson
cleaner.
The Trelleborg, Firestone, Skega and Jerry Rig Cleaners
92. Burchett J. described these as the T-slot cleaners and said that they shared one basic principle. All use a counterweight or spring to exert the appropriate degree of force for the application of a hardened rubber scraper bar or bars to the underside of the conveyor-belt. On the appeal, the Court was invited to have particular regard, as an appropriate example, to the drawings and description of the Skega belt-scraper in the brochure Exhibit WTB-3.
93. His Honour gave the following description of the T-slot cleaners, in a
passage not challenged on appeal:
"Each of these consists of a support94. The parties (unusually for this litigation) led expert evidence on the question whether the T-slot cleaners failed to disclose the second integer of claim 1, viz. "at least one sleeve member mounted on the support member for sliding movement therealong". His Honour preferred the evidence of the respondents' experts, Professor Thomas and Mr. Dunn insofar as it conflicted with that of the appellants' expert, Mr. Frost, in reaching his conclusion that the T-shaped channels or slots were not "sleeve members" or the functional equivalents thereof, mounted for sliding movement along the support member. His Honour decided that the function of the T-slot is to provide a convenient means for attachment of the bolts and it is not relevantly adapted for sliding movement. The appellants pointed to other evidence that in practice the scraper bars would be slid onto the heads of the T-bolts before the bolts were tightened by a nut underneath. But Mr. Dunn, who had over twenty-five years practical experience, said (and this was accepted by his Honour) that this movement would be achieved only with a great deal of difficulty particularly where the scraper bars were to be slid off rather than on to the heads of the T-bolts; his reasons were given in paragraph 4 of his affidavit.
shaft transverse to the belt, on top of
which is fixed firmly a thick bar of
hardened rubber, or in the case of the
Trelleborg cleaner a series of shorter
lengths of such bars arranged in a manner
thought to provide maximum cleaning
effect. In each of these cleaners, the
method of fixing the rubber bar or bars
to the support is by bolting. The bolts
of course do not pass through the entire
thickness of the rubber bar, which would
result in the bolt head scoring the
underside of the conveyor belt. Even if
the bolt head were countersunk, the same
result might ensue after a period of
wear. The method adopted, in each case,
is to have a T-shaped channel cut in the
bottom of the rubber bar to take the head
of a T-bolt, by which the bar is then
bolted to its support. The bolt passes
through the support, to be tightened by a
nut underneath. In the case of the
Trelleborg cleaner, the T-shaped channel,
which is described in the specification
of the Trelleborg patent as 'an outwardly
open undercut groove for a bolt', is
bonded to the rubber bar by vulcanization."
95. I see no reason for departing from Burchett J.'s conclusion on this point. But it had been submitted to his Honour that if there was no sleeve member in these alleged anticipations, it would have been obvious and a mere workshop improvement to supply one. His Honour held that even if Griffin v Isaacs (1942) 12 Australian Official Journal of Patents 739, applied in its full vigour (as on the then state of authority it appeared to do) there would be no anticipation of claim 1 of the patent in suit. Nothing has been put on the appeal to throw that finding into doubt.
96. Accordingly, the T-slot cleaners do not amount to anticipations. In these circumstances, it is unnecessary to consider whether his Honour erred (as by their Notice of Contention the respondents contend) in not also finding that there was a lack of anticipation for want of disclosure of the sixth integer of claim 1 of the patent in suit.
97. In my opinion, the appeal should be dismissed with costs.
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