Broadbent v Davies [1916] HCA 22; (1916) 21 CLR 253 (5 April 1916)

HIGH COURT OF AUSTRALIA

Broadbent and Another Applicants, Appellants; and Davies Opponent, Respondent.

H C of A

5 April 1916

Griffith C.J., Barton, Isaacs, Gavan Duffy and Rich JJ.

Leverrier K.C. (with him Jordan), for the appellants.

J. A. Browne, for the respondent.

Griffith C.J.

This is an appeal from the refusal of the Commissioner of Patents to grant a patent to the appellants. The subject matter of the patent is described as "improvements in inferential water meters." These meters are an ingenious device by which the quantity of water flowing through a pipe is measured by the number of revolutions of a turbine through which the water passes. I suppose it is called "inferential" because the determination of the quantity of water in such a way is to a certain extent a matter of inference and not of exactitude. The turbine revolves in a closed chamber into which the water is admitted at one side and after passing through the turbine is ejected at the other. The parts of the appliance to which the patent applied for relates are the attachment of the turbine to the spindle on which it runs, which is vertical and runs in bearings at each end. It is evident that in such an appliance used for such a purpose it is very material that the turbine should be well balanced and that the different parts of it should be firmly attached to one another, so as to secure that it shall run truly. The turbine consists of two small copper discs which have been pressed into the shape of cymbals, and are fastened together at their outer rims, having orifices in the sides so constructed that a circular motion is produced when water is forced through the turbine. What I am speaking of is the usual form of construction of such appliances, which is common knowledge. The spindle is attached only to the lower disc, and passes through a hole in the upper disc. The spindle is enlarged or "flared" at its lower end, either by affixing a solid circular disc or by a conical enlargement which forms a cup that may be used for holding oil for lubricating purposes. Various means have been adopted for attaching the lower disc to the spindle. The disc is made of soft malleable metal, such as copper, the spindle being made of a harder metal, such as gun-metal or brass. The opponent some time ago obtained a patent for a method of attaching the spindle to the disc which may best be described in the words of his specification as follows:—"I form on the inner face of the lower portion of the drum,"—that is, the lower disc, as I have called it—"an upwardly"—that is outwardly—"projecting annular bead, within the inner circle of which the flared end or flange of the spindle is deposited. The bead is then closed on the edge of the flange by means of suitable dies and the joint is made." What he describes as an "annular bead" would be more correctly described as an annular corrugation which is to be fitted upon the flared edge of the spindle. That is to say, the two pieces of metal, the gun-metal or brass of the spindle and the copper of the disc, are so closely pressed together that the copper forms a closely fitting cap upon the spindle. It is to be observed that there is no break in the continuity of the surface of the disc. The disc itself is fitted to the flange of the spindle and is kept in position by means of the corrugation.

The applicants say that in practice that method of construction is open to objection. They say that, since it is necessary that the turbine should be perfectly balanced, the metal of which it is made should not be unduly strained, and they say that the pressure to which the disc is subjected in making the joint by the opponent's method must tend to distort the shape of the disc that is being operated upon. It is also pointed out that the pressure used in fitting the softer copper on to the harder metal of the spindle is exerted in several directions. It is mainly exerted in lines of pressure at right angles to the spindle, and only to a small extent in a line of pressure parallel to it.

The applicants' invention seems at first sight to be rather a small thing. It is objected to it that it is not novel. The invention is this:—Instead of leaving the lower disc as a continuous piece of metal a corrugation of which is folded and pressed on to the flange of the spindle, they make a small round hole in the centre of the disc itself and the spindle is constructed with a flat flange upon which is fitted a ring of the same metal of such a size that it will just go through the hole in the disc. The ring is then passed through the hole and expanded by pressure which causes it to spread over the edges of the hole in the disc and firmly grip them. It is pointed out that in this case the line of pressure is wholly parallel to and not to right angles to the spindle so that there is no danger of distorting the metal in the operation. That is the applicants' invention.

The objection made to it is that everybody knew how to press two pieces of metal with grooves or angles in them together so as to form a practically water-tight joint. The question is whether the opponent's invention and that of the applicants are substantially the same thing. I have pointed out the difference. One is fitting a cap of soft metal on to a hard metal, the other is gripping a piece of soft metal between two pieces of hard metal. The appliances are different in form. The applicants' method, though not new, has never been used for the purpose to which they seek to apply it. Unless, therefore, it can be shown that the applicants' invention is an obvious futility or that the two appliances are substantially the same the objections fail. There seem to me to be both novelty and invention. I come to the conclusion on looking at the models that the fitting of a soft metal cap on to a hard metal spindle by means of a corrugation in the soft metal cap is not the same thing as gripping a thin sheet of soft metal in a groove round a hard metal spindle passing through it. The application of the proposed method is also an application to a new purpose.

I think therefore that the Commissioner was wrong in refusing the applicants' invention.

The fifth claim is somewhat ambiguous in its phraseology, but there is no doubt as to what the applicants intended. The claim is as follows:—"In inferential water meters a turbine constructed of two plates or discs riveted together with deflecting tongues and having the external edge of one plate folded and cramped over the other and the internal edge of the lower plate cramped on to the spindle carrier as and for the purposes set forth substantially as herein described and explained and as illustrated in the drawings." That is capable, possibly, of being construed as a claim for all turbines constructed of two plates riveted together and having the external edge of one plate folded and cramped over the other. But all turbines used for such meters are constructed in that way. The real meaning is to claim the combination of the new method of fixing the disc to the spindle with the old and well known method of constructing the turbine. All ambiguity will be removed by inserting the word "having" before the words "the internal edge."

Under sec. 47 of the Patents Act this Court on an appeal from the Commissioner has power to decide "whether and subject to what conditions, if any, the application and specification shall be accepted." I think that under that section this Court can make a verbal alteration of the specification which is necessary to give effect to its real meaning a condition of the grant of a patent, and that in this case a patent should be granted conditionally upon the verbal alteration I have mentioned being made.

Barton J.

I am of the same opinion.

J Isaacs read the following judgment:—

Isaacs J

I agree. The objections made resolve themselves really into one, namely, that the applicants' invention is wanting in novelty because it is anticipated by the machine used by the objector, and published by him both by his own specification of 1910 and by his numerous instances of manufacture. The contest comes to be this: The opponent says the invention is a mere mechanical equivalent, a method which an ordinary skilled workman would adopt to avoid the suggested imperfections of the precise method hitherto followed by the opponent. The applicants, on the other hand, say it is the outcome of the creative effort of an inventive mind. The case is one which does not rest upon mere common knowledge. It depends greatly upon special trade experience and scientific knowledge.

The burden rests upon the opponent, and in my opinion he has failed to sustain it. He holds a patent dated 1910, which he says really embodies the applicants' invention when the knowledge of the workshop is applied to it. He has made 15,000 machines under that patent, and has never in a single instance resorted to the applicants' method. It is said that was because no imperfections such as have been suggested have been observed. But there is uncontradicted evidence of skilled men who say that distortions would naturally in the course of things appear, and would need correction. This is in addition to the denial of substantial identity by the applicants themselves. Therefore we have two methods, not identical, not manifestly the same in substance, so as to make the one a mere obvious working equivalent of the other, and the evidence, which is documentary, is such that the opponent fails to clearly establish the objection he raises. The case of McGlashan v. Rabett[1] therefore applies, and the appeal should be allowed.

Gavan Duffy J.

I agree that the appeal should be allowed.

Rich J.

I agree.

Appeal allowed. Patent to be granted conditionally upon the amendment of claim 5 by inserting the word "having" before the words "the internal edge." Respondent to pay costs of appeal and £10 10s. for costs before Commissioner.

Solicitor for the appellants, Arthur Muddle.

Solicitor for the respondent, Henry Davis.

[1] [1977] FCA 14; 9 C.L.R., 223.