Lee v Commissioner of Patents [1912] HCA 84; (1912) 15 CLR 161 (26 November 1912)

HIGH COURT OF AUSTRALIA

William Thomas Lee Appellant; and The Commissioner of Patents Respondent.

H C of A

On appeal from the Commissioner of Patents.

26 November 1912

Isaacs J.

Flannery, for the appellant.

H. E. Manning, for the Commissioner of Patents.

Flannery in reply,

J. Isaacs read the following judgment:—

Nov. 26

Isaacs J

Appeal under sec. 47 of the Patents Act 1903-1909 from the refusal of the Commissioner to accept the applicant's complete specification.

The claim is for a new method or process of burning charcoal, and is based on the following circumstances. According to the facts as they appear at present or have been assumed, the manufacture of charcoal whether absolutely in the open air, or in a meiler or a kiln, has always, from the earliest times until the date of the present application, been conducted with the assistance of a draught of air from below. It has hitherto been considered by all who have practised the art, that the under current of air is indispensable to the success of the operation. Means have been adopted to control the draught, and the latest prior device was Commonwealth Patent No. 15,551 in 1909. That patent is for an improved kiln or retort, the improvements consisting of a plurality of top vents to regulate more efficiently and simply the upward draught, and a system of radial earth channels under the kiln and extending to the atmosphere for the purpose of controlling and regulating the admission of air from below. That kiln has a bottom vent which can be opened or closed at will, and on this fact the Commissioner has based his rejection, taking the view that application No. 2021 is nothing more than a working direction to close that vent.

The substance of the matter however is quite otherwise.

Even if that vent be closed the radial earth channels admit the currents of air from below until the whole operation of burning is over, and then they are closed together with the top vents to allow the retort and the material therein to cool off. The essence of the operation up to the present application was that, for the purpose and during the operation of burning, some admission of air from below was essential.

One defect always existed, namely, that as the combustion of the wood commenced in the lower portion of the stack, and proceeded gradually upwards, the carbon after it had reached the stage of true charcoal in its best form, was constantly while in a glowing state subjected to the action of the oxygen rising upwards to feed the flame of the newly ignited wood above, and the result of the constant contact of the oxygen with this glowing charcoal was to reduce some of the latter to ash, which meant so much loss of useful product.

This disadvantage, though of course well known, was apparently considered inseparable from the operation, because it was never imagined that the cause of the defect—namely, the upward draught—could be altogether dispensed with.

Such a course never occurred to the mind of any one, until at last Oscar Wright discovered that the upward draught was not indispensable, and that by entirely excluding it a better result could be obtained, because all the advantages of the former system remained and this defect of conversion of good commercial charcoal to ash would be obviated.

The principle—if it may be so called—at all events the idea is revolutionary. The elimination of what was before considered indispensable is found to be an advantage, by curing what was previously understood to be an incurable though serious defect.

As a matter of fact, I cannot doubt there was considerable originality or ingenuity in the conception, as applied to the manufacture of charcoal; in other words there was an undoubted exercise of the inventive faculty.

Then having conceived the idea, Wright proceeded to show how it could be carried out—simply by having no lower vent or entrance for air at all for the purpose of carbonization. In the words of the complete specification, "a charge of wood is enclosed in a chamber which is entirely closed except at the top, where it is provided with one or more apertures," &c.

There is in fact a door or vent at the bottom, but it is used only for the purpose of igniting the charge, and then it is closed and kept closed during the whole operation. But it is, as stated in the specification, only "for that purpose," that is the original ignition.

The Commissioner took the view that closing the bottom vent was a mere working direction for the manipulation of the draught. But according to the facts I have mentioned it is something quite different. It does not manipulate the draught; it abolishes it. It is not a working direction, because it is entirely contrary to the prior system of working, and no operator previously would have considered it within the limits of practical charcoal burning to cut off entirely the access of the lower air. In these circumstances, it appears to me the applicant's specification should not have been refused for the reason given by the Commissioner.

Mr. Manning sought to show, alternatively, that there was no subject matter. But in this case it all comes round to the same thing. The essential point to remember is the complete elimination of an upward draught, with the resulting remedying of a defect heretofore considered incurable. That is sufficient subjectmatter.

A process or method is patentable where, as here, it involves the practical operation of an inventive idea. In Boulton v. Bull[1] Heath J. said:—"The method is a principle reduced to practice," and then Buller J. said[2]:—"It is necessary to inquire, what is meant by a principle reduced into practice. It can only mean a practice founded on principle, and that practice is the thing done or made, or in other words the manufacture which is invented." So Eyre L.C.J. said[3]:—"The word manufacture in the statute ... applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice. ... Under the practice of making we may class all new artificial manners of operating with the hand, or with instruments in common use, new processes in any art producing effects useful to the public." The learned Lord Chief Justice added[4], speaking as early as 1795:—"Probably I do not overrate it when I state that two-thirds, I believe I might say three-fourths, of all patents granted since the statute passed, are for methods of operating and of manufacturing, producing no new substances and employing no new machinery." See also per Tindal L.C.J. in Crane v. Price[5]. Mr. Manning urged that there must be not only inventive originality in the idea, but also invention in the corporeal way it was carried out. That view was expressly rejected by the Court of Appeal in Hickton's Patent Syndicate v. Patents and Machine Improvements Co. Ltd.[6], and the proposition was definitely and clearly enunciated that, if you state an inventive idea and also show a means of carrying it into effect, that is patentable subject matter. Eyre L.C.J. in Boulton v. Bull[7] had long before said so much. His words were:—"Undoubtedly there can be no patent for a mere principle, but for a principle so far embodied and connected with corporeal substances, as to be in a condition to act, and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent." I am not aware of any authority to the contrary. It was said that Rogers's Case[8] is opposed to this view, but I do not think so. The majority of the Court came—as I think—to the conclusion of fact that there was no invention in either the idea or the mode of utilizing it. So far as at present appears, there being in this case disclosed to the world a meritorious and inventive idea coupled with a practical way of utilizing it, a process is established which is patentable, notwithstanding the corporeal means of utilization are old.

The appeal is therefore allowed, and the decision of the Court is that the application and specification shall be accepted, excising the third claim which was abandoned before the Commissioner, and so treated by him.

Appeal allowed. Application and specification to be accepted, excising the third claim.

Solicitor, for the appellant, B. A. McBride.

Solicitor, for the respondent, C. Powers, Crown Solicitor for the Commonwealth.

[1] [1795] EngR 4114; 2 Bl. H., 463, at p. 481.

[2] [1795] EngR 4114; 2 Bl. H., 463, at p. 486.

[3] [1795] EngR 4114; 2 Bl. H., 463, at p. 492.

[4] [1795] EngR 4114; 2 Bl. H., 463, at p. 494.

[5] 4 Man. & Gr., 580, at p. 603.

[6] 26 R.P.C., 339, at p. 347.

[7] [1795] EngR 4114; 2 Bl. H., 463, at p. 495.

[8] [1910] HCA 19; 10 C.L.R., 701.