May v Higgins [1916] HCA 8; (1916) 21 CLR 119 (6 March 1916)

HIGH COURT OF AUSTRALIA

May Appellant; and Higgins Respondent.

H C of A

6 March 1916

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

Mann, for the appellant.

Schutt, for the respondent.

Griffith C.J.

The subject matter of the patent applied for in this case may conveniently be described in the words of the fifth claim of the specification:—"Improved starting device for distance handicap races comprising a series of portable tensional barriers each formed on its inner or release end with a hook adapted to enter a recessed socket and engage a pin passing therethrough, the retaining pins being connected with short cords or the like with a tensional wire running alongside the track through guides and connected at one end with a spring and at the other end with a release lever." The object of the spring, of course, is that on its being released the tensional wire may fly back and set free the retaining pins, and so allow the barriers to fly across the course.

It appears that a device had been in use for some time which was precisely similar, except that instead of a tensional wire being used for releasing the pins that result was procured by pulling a wire which released them.

The claim, however, is for the whole device—the cross barriers, the securing by pins and the means of withdrawing the pins. The only novelty, if there is any at all, is the use of a tensional wire instead of a wire pulled by hand. The substitution of the tensional wire for the wire pulled by hand may or may not be an improvement. It was sought to support the claim as being one for a combination, and it can only be supported as a combination. A combination is not an invention unless the combination is substantially a new thing. In this case the only new thing is the substitution in one integer of an old machine of a slightly different mode of applying power. That is substantially different from what is claimed. The machine for which the patent is claimed is not new; it is old, but it is alleged that one of the parts has been improved. It is possible that that alteration is both valuable and novel, and so may be patentable. It is fair, therefore, that, although the applicant is not entitled to the patent which he claims, he should be allowed to put forward a claim for what may be patentable. A similar case came before this Court in Moore and Hesketh v. Phillips[1], and I think a similar order may be made in this case, that is, that the grant ought not to be made unless the applicant within a fixed time asks for leave to amend his specification. Otherwise he would, by prior publication, lose the benefit of the asserted invention of the substitution of the tension wire for the wire pulled by hand.

Barton J.

I agree.

Isaacs J.

The respondent here was the applicant for a patent, and has claimed a composite machine. The only new operation about it, if there is anything new, is the mode of releasing the barrier. The objection is that the machine as claimed is not novel. It is, and must be, conceded that that objection is good as to all but the mode of releasing the barrier unless the machine as claimed is a different machine from the one existing previously by reason of its being a combination.

A true combination of parts, whether the parts be old or not, is a new unit, and is patentable, other requisites being present. It is the combination itself that is the novelty. For that there is a very recent authority which may be cited, namely, Mercedes Daimler Motor Co. Ltd. v. F.I.A.T. Motor Cab Co. Ltd.[2], where Lord Parker said:—"For a combination to be patentable it is not necessary that any single subordinate integer should be new. It is sufficient that the combination as a whole should be new and useful, provided it required inventive ingenuity to combine the various elements for the purpose in view." I am assuming that there was invention here. Then comes the question whether the presence of this feature makes the whole thing a combination. It appears to me that it is a mere improvement of one previously existing integer. It is not a new integer giving a better result, nor the substitution of a totally different integer, the presence of which is such as to make the whole machine an essentially different machine, a new unit. It is, I think, at best an improvement upon a prior integer not altering the essential character of the machine. Then, if that is the case, the whole machine as claimed is not a true combination, and, if the inventor has a meritorious invention, it is in respect of the improvement only, and that should be separately claimed.

Rich J.

I agree.

Appeal allowed. Decision appealed from reversed. Declare that the grant ought not to be made unless the respondent within four months asks for leave to amend his specification. The time for sealing the patent to be extended until one day after the time for appealing from the decision on that application. Respondent to pay £9 9s. for appellant's costs of opposition, and the costs of this appeal.

Solicitor for the appellant, Angus A. Sinclair.

Solicitor for the respondent, F. B. Waters.

[1] [1907] HCA 22; 4 C.L.R. 1411.

[2] 32 R.P.C., 393, at p. 413.