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Commissioner of Patents v Ethyl Corporation [1969] HCA 1; (1969) 120 CLR 594 (5 September 1969)

CATCHWORDS

HEARING

DECISION

"1. An improved leaded gasoline composition containing from about
three to sixty-five per cent of methyl benzene having from 1 to 4
methyl groups and from 0.5 to 6.0 grams. of lead per U.S. gallon as
antiknock agent in the form of at least two different tetraalkyllead
compounds which are either redistribution products or physical
mixtures of tetraethyllead and tetramethyllead with about
twenty-five to seventy-five mole per cent of the alkyl groups being
methyl groups and the the balance ethyl groups. . . ."

2. The appellant admits that the last of these components is common to the present specification and to specification No. 240392, an earlier specification of the appellant's, and is described in claim 1 of the present one as follows:

". . . 0.5 to 6.0 grams. of lead per U.S. gallon as antiknock
agent in the form of at least two different tetraalkyllead compounds
which are either redistribution products of physical mixtures of
tetraethyllead and tetramethyllead with about twenty-five to
seventy-five mole per cent of the alkyl groups being methyl groups
and the balance ethyl groups. . . ."

3. The Deputy Commissioner of Patents refused to accept the application and specification on the grounds of prior publication (Patents Act 1952 (as amended), s. 48 (b)) and want of novelty (Patents Act, s. 48 (e)). Both these grounds were based upon the appellant's previous Commonwealth patent specification No. 240392, claim 1 of which adequately defines the invention therein claimed as being a motor fuel composition similar to the one in the present application, containing, as one alternative antiknock agent, the same antiknock agent as in the present application and used in the same amounts, and a fuel containing

". . . from thirteen to fifty-five volume per cent aromatic
gasoline components, from one to forty-two volume per cent olefinic
gasoline components, and from twenty-seven to eighty-three volume
per cent saturated gasoline components, and having a research octane
number clear - i.e., in the absence of any antiknock additive - of
at least eighty-one and a nominal octance value as hereinbefore
defined of at least ninety-five".

4. The earlier specification does not disclose the nature of the "aromatic gasoline components" called for, but it is stated that suitable gasoline blending stocks for preparing the fuels of this invention comprise "aromatics such as by catalytic reforming". In order to place a meaning on this phrase the Deputy Commissioner of Patents referred to The Chemistry of Petroleum Hydrocarbons, mentioned above, and by a process of calculation from figures supplied as to the composition of a catalytically reformed naphtha produced from a Gulf Coast straight-run gasoline he concluded that it disclosed a composition having a range of from about five to twenty-three volume per cent of methyl substituted benzenes and containing toluene and xylenes which are two members of the methyl group. The reading together of specification No. 240392 and the publication referred to, even if a permissible course to adopt, does not, in my opinion, teach the composition claimed in the present application, which includes three to sixty-five per cent of methyl benzenes, allowing a wider quantitative proportion, but significantly limited to a range of aromatic substituted benzenes with one to four methyl groups. In no prior publication is this limitation suggested. (at p597)

5. Further, the uncontradicted evidence allowed for the appellant establishes that the particular composition described in the present application is generally more useful than those known previously in relation to the control of high speed knock by the achievement of a superior gain in octane number. In my judgment, therefore, the fuel composition described in any of the claims of the present application or specification No. 4214 of 1961 was not clearly disclosed by any prior publication, which unmistakably directed the nature and utility of the invention described in this application, so as to deprive it of novelty. (Canadian General Electric Co. Ltd. v. Fada Radio Ltd. (1930) AC 97, at p 103; (1930) 47 RPC 69, at p 90 .) (at p597)

6. For these reasons I am of opinion that the appeal should be allowed. (at p597)

7. Appeal allowed. Decision of the Deputy Commissioner of Patents reversed. Order that the application and complete specification No. 4214 of 1961 be accepted. No order as to costs. Usual order with respect to exhibits. (at p597)

8. The Commissioner of Patents appealed to the Full Court of the High Court pursuant to leave granted by the Full Court on 21st April 1969 under s. 151 of the Patents Act 1952-1966 (Cth). (at p597)

9. R. J. Ellicott Q.C., Solicitor-General for the Commonwealth, and K. R. Handley, for the appellant. (at p598)

10. C. J. Bannon, for the respondent.
Cur. adv. vult. (at
p598)

THE COURT delivered the following written judgment:-
This appeal is brought by leave under s. 151 of the Patents Act 1952-1966

2. The application in the present case was for a patent for an alleged invention of an improved motor fuel, namely an improved leaded gasoline composition. It seems that the Examiner reported adversely upon the application and the complete specification lodged in connexion therewith. He raised a number of objections, and the respondent lodged a statement or statements of proposed amendments which, as we are informed, the Commissioner was satisfied were allowable, and, if made, would remove all but two of the Examiner's grounds of objection. Had the Commissioner at once allowed these amendments in accordance with sub-s. (6) they would be deemed to have been made; but we are told that he did not allow them, evidently considering that there was no point in allowing them since the two remaining grounds of objection, if valid, would be fatal to the application. Thus the specification had not been amended as provided by sub-s. (6) but the Deputy Commissioner, who had by virtue of s. 10 (2) the relevant powers and functions of the Commissioner, proceeded to consider, on the footing that the amendments had been made, the question under s. 49 (7), namely whether the specification had been amended as provided by sub-s. (6) "so as to remove all lawful grounds of objection". He reached the conclusion that the grounds of objection which the amendments would not remove should be upheld, and although he was unable to see any way in which the respondent could readily amend the specification to overcome these grounds he considered that he should not deny an opportunity of further amendment, and for that reason he directed the respondent under sub-s. (7) to lodge a statement of proposed amendments to his satisfaction. (at p599)

3. From this direction the respondent appealed to the Appeal Tribunal. The two grounds of objection which fell to be considered were those provided for by pars. (b) and (e) of s. 48 (1), namely, (b) that the invention claimed had been published before the relevant priority date in a specification lodged in respect of an application for a patent in Australia within fifty years before that date, and (e) that the invention claimed was not novel on the claimed priority date. The validity of each objection depended upon the one question, namely whether, for the purposes of practical utility, an equality existed between the information as to the alleged invention given by the respondent in the subject specification and the information given, likewise by the respondent, in a specification lodged in Australia on 17th May 1960, in respect of an application for a patent for "leaded gasoline compositions" and numbered 240392: cf. Canadian General Electric Co. Ltd. v. Fada Radio Ltd. (1930) AC 97, at p 103 . The question for decision required a comparison of a statement in claim 1 of the subject specification that the leaded gasoline composition which was claimed as the patentable invention contained "from about three to sixty-five per cent of methyl benzene having from one to four methyl groups" with a statement in claim 1 of the earlier specification No. 240392 that the motor fuel composition there claimed as an invention was one containing "from thirteen to fifty-five volume per cent aromatic gasoline components". The Deputy Commissioner had found in a text-book on the chemistry of petroleum hydrocarbons a reference to a particular aromatic gasoline component which contained inter alia methyl benzenes having one to four methyl groups, and he worked out that thirteen to fifty-five volume per cent of that component in a motor fuel composition would give five to twenty-three per cent of methyl benzene in the composition. This had led him to conclude that specification 240392 had disclosed information which, when considered with the aid of the text-book, was for practical purposes equal to that disclosed in the subject specification, and it was for that reason that he had upheld the two objections. (at p600)

4. Before the Appeal Tribunal the respondent seems to have contended that the course taken by the Deputy Commissioner, of finding practical equality between the two pieces of information by the aid of what he had found in the text-book, amounted to forming a mosaic of the information in the prior specification and the information in the text-book and was not legitimate. The Tribunal (McTiernan J.) thought that a reading together of the specification and the text-book, "even if a permissible course to adopt", did not disclose the composition claimed in the subject application, and he made an order in terms of the notice of motion which had initiated the appeal, namely that the appeal be allowed, that the decision of the Deputy Commissioner be reversed, and that the application and complete specification be accepted. (at p600)

5. The Commissioner then applied under s. 151 for leave to appeal to a Full Court, and leave was granted upon its appearing to the Court that even assuming the decision of the Tribunal to be correct as regards the substance of the matter the order was not in appropriate terms. When the appeal came on for hearing, however, counsel for the Commissioner proposed to invite the Court to review the whole case. This we considered a course to which it was not desirable that the leave that had been granted should be taken as extending. While we recognized that the Deputy Commissioner had been bound to consider and decide whether the two objections were lawful objections, it appeared to us that the Commissioner had no duty, and indeed no interest, to pursue the matter further by means of a Full Court appeal once the Tribunal had held, upon its understanding of the documents and without deciding whether or not it was permissible to take account of what appeared in the text-book, that the prior specification afforded no ground for refusing the desired patent. This is not to deny that the Commissioner might have an interest to appeal in different circumstances: we speak only of the present case. Apparently he had appealed here not only because the actual decision of the Tribunal, if left standing, might be used with a view to influencing future cases, but also, and perhaps mainly, because of an apprehension that the reasons for judgment might come to be relied upon as suggesting or supporting a doubt as to the propriety in general of reading a technical text-book together with a prior specification in order to find what information should be treated as furnished by that specification when comparing it with the specification upon which a patent was being sought. But in truth the reasons of the Tribunal indicated no view on that point. They expressed an opinion as to the result of comparing the two specifications with one another in the light of what appeared in the text-book, but they cannot be read as laying down or supporting any proposition of law, or as giving any ruling or offering any guidance as to the manner in which the Commissioner or Deputy Commissioner ought to proceed under s. 48. (at p601)

6. Moreover, although the Tribunal's decision opened the way to the grant of a patent, it left all questions as to the validity of the patent, when granted, freely challengeable in contested proceedings between interested parties. No doubt a court entertaining such proceedings would pay due attention to the reasoning of the Tribunal; but it would not be bound by the decision, and indeed it would be bound to give effect to its own opinion. On the other hand, a decision of the Full Court upon the two grounds of objection, if favourable to the respondent, might well provide it with a powerful advantage against an alleged infringer in any contest as to the validity of the resulting patent. (at p601)

7. Finally, it was said on behalf of the Commissioner that if the specification were limited by amendment to a motor fuel composition containing between three and five per cent or between twenty-three and sixty-five per cent of methyl benzene having one to four methyl groups it would not be open to any objection, and that a patent could be granted upon it. If this be so, it would seem that the only practical question ultimately involved in the appeal from the respondent's point of view would be whether the respondent should be able to rely upon a single patent for the whole range from three to sixty-five per cent of such methyl benzene or should have to rely upon two patents, each for part of the range. (at p602)

8. In the circumstances of the case it seemed to us that the interests of justice would best be served by our refraining from deciding in these proceedings whether the Tribunal was right or wrong in overruling the Deputy Commissioner. Accordingly we announced that we would rescind the unconditional leave to appeal formerly granted, but would enable the appeal to proceed as regards the form of the order by granting the Commissioner fresh leave limited by a condition that the form of the order would be treated as the only subject of the appeal. This condition was accepted, and having heard the parties we shall vary the order of the Appeal Tribunal in point of form and otherwise dismiss the appeal. There will be no order as to costs. (at p602)

ORDER

Grant leave to the Commissioner of Patents to maintain his appeal against the order of the Appeal Tribunal of 21st February 1969, conditionally upon the appeal being limited to the question whether the said order is in due form.

The appellant having by his counsel accepted the condition, Vary the Order of the Appeal Tribunal by omitting therefrom the order that the decision of the Deputy Commissioner of Patents be reversed and that the application and complete specification No. 4214 of 1961 be accepted by the Deputy Commissioner of Patents, and by substituting therefor a declaration that the objections based upon pars. (b) and (e) of s. 48 (1) of the Patents Act 1952-1966 are not lawful objections to the granting of the application No. 4214 of 1961, and an order that the direction of the Deputy Commissioner of Patents pronounced on 7th June 1965 be vacated.

Otherwise dismiss the appeal, without costs and without prejudice to any question to which the leave hereby granted does not extend.