Day v Perrott [1924] HCA 14; (1924) 34 CLR 225 (26 May 1924)

HIGH COURT OF AUSTRALIA

Day Applicant, Appellant; and Perrott Opponent, Respondent.

H C of A

26 May 1924

Knox C.J. Isaacs, Gavan Duffy, Rich and Starke JJ.

Latham K.C. (with him Sproule), for the appellant.

Robert Menzies (with him Fullagar), for the respondent.

Latham K.C., in reply,

The following written judgments were delivered:—

May 26

Knox C.J. and

Gavan Duffy J.

The appellant applied for the grant of a patent for an invention for "improvements in toys and elements for construction thereof." The application was opposed by respondent and refused by the Commissioner on the ground of disconformity between the provisional and the complete specifications. This is an appeal from that decision.

The Commissioner, in giving his decision, said:—"Now, on analysis, what is the nature of the invention described by the words to be found in the applicant's specification. The object of the invention is to provide improved means for obtaining a known result—that is, a rigid structure of the nature of a toy; and the nature of the invention is to be found in the means which are provided for producing the result. The means consist of elements of particular design which, according to their relativity, are so disposed to represent particular structures and to be fixed in position by keys patterned in a manner to co-operate with a particular characteristic in the ends of the elements. The ends of the elements are specifically designed for adaptation in the making of rigid structures. The mere positioning of the elements according to their adaptability to each other does not produce the result—a rigid structure. It is essential, and it is of the essence of the invention, in producing the result to combine with the means for adapting one element to one or more other elements the locking means which reside in the co-operation of a key with the niches which are fixed features of the design which characterizes the ends of the elements. It is this combination, having integers of particular shape and functioning in a manner according to their shape, in which the nature of the invention resides. In introducing additional locking means into his complete specification which are at variance with the locking means distinguished by the intercommunication of a key with the niches in the end of an element as described in his provisional specification, the applicant is asking for protection for more than he is entitled to. To the extent of the locking means which are described or claimed in the applicant's complete specification and which are additional to the locking means described in his provisional specification, disconformity exists between the complete and provisional specifications. And, it being admitted that these additional locking means form the subject of an application for a patent by the opponent during the interval between the leaving of a provisional specification and the leaving of a complete specification by the applicant, it follows that the second ground of opposition succeeds."

In our opinion the decision of the Commissioner was right for the reasons given by him, and the appeal should be dismissed.

Isaacs and Rich JJ.

In our opinion this appeal should be dismissed.

The appellant's provisional specification disclosed not a master invention but an improvement invention. Meccano, or the elements of constructional toys, was well known. The improvement, the nature of which was described in the provisional specification, was in its essence the elimination of bolts and nuts as separate elements connecting the structural elements. Structural elements were so fashioned that the end could enter into other structural elements so as to act also as a bolt, rigidity being given by means of a key. The key really acted as the nut would act in the case of a bolt. It may be that other forms of keys might without disconformity be substituted for the key mentioned in the provisional specification. But to add, as has been done in the complete specification, a separate connecting element acting only as such, is in substance reversion to the system of bolts which the provisional specification set out to discard. This, we think, is disconformity, and is another invention, and, by admission, another invention applied for in the statutory period by the respondent.

The Commissioner's decision should be upheld.

Starke J.

Day applied for a patent for improvements in toys and elements for the construction thereof. Perrott opposed this application on the ground that the completed specification described and claimed an invention other than that described in the provisional specification and that such other invention formed the subject of an application made by Perrott in the interval between the leaving by Day of his provisional specification and his complete specification (Patents Act, sec. 56). It is not in contest that the latter part of this allegation is established if Day's complete specification is not in conformity with his provisional specification. This question of conformity is therefore all that the Court is called upon to determine on this appeal. Lack of such conformity is an objection open on an application for a patent, but the Act (sec. 65) precludes the objection once letters patent are granted.

Now, the provisional specification must fairly describe the nature of the invention (Patents Act, sec. 35). It may do so roughly, and without entering into all the minute details of the manner in which the invention is to be carried out (In re Newall and Elliot[1]; Pneumatic Tyre Co. v. East London Rubber Co.[2]). On the other hand, the inventor may give such minute details of his invention as to tie his hands afterwards, and "exclude an area which might otherwise be within more general phraseology" (Pneumatic Tyre Co. v. Ixion Patent Pneumatic Tyre Co.[3]).

What, then, is the nature of Day's invention as described in his provisional specification? The title describes it as improvements in toys and elements for construction thereof. And one of its objects was to provide a variety of simple elements which enabled the making and the construction of a great multiplicity of structures, reasonably rigid and durable, of an interesting nature, and which might have working parts. Rails, strips, planes, wheels, pulleys, cranks, levers, keys, springs, and other mechanical devices are mentioned as instances of these elements.

Now, to combine or connect such elements together, it was necessary to make holes or slots in the pieces, in order to facilitate their interlocking. And this, substantially, could be accomplished by the use of nuts and bolts. There would be nothing novel in all this, for the well-known "Meccano" toy sets are constructed on the same principle. But the applicant specifically stated that he desired to avoid the use of nuts and bolts, wholly or largely, thereby saving expense and also time in connecting together the elements. He therefore suggested that elements be adopted having, in addition to holes or slots, narrowed or shouldered extensions or ends, with niches in them adapted to receive members to be connected therewith, and that these elements be locked by means of a key or wedge fitting into the niches. A form of key suggested had prongs which could "enter and tightly fill the niches in the elements."

The novelty of the invention is not in question in this application. The real substance of the so-called invention, as set forth by the applicant, consisted in locking elements together by means of a key or wedge instead of by means of nuts and bolts. The passages to which I have referred describe how the elements can be locked by means of keys and wedges, but they do not, to my mind, limit or confine the applicant's discovery to this method or make it the substance and essence of the invention. Now, in his complete specification the applicant adheres to the substantive basis of his invention, namely, locking elements by means of keys and wedges instead of by means of nuts and bolts. He retains the strips with shouldered ends and niches but he also further describes and claims a method of locking whereby he dispenses with shouldered ends and niches in his strips, and substitutes strips with holes or slots, but without niches in them, which he can lock with a tapered, instead of a pronged, key or wedge fitting into the niches. But it is well settled that an inventor is permitted, until the time of filing his complete specification, "to perfect any details, to modify, supplement, and develop his invention," so long as he keeps within the ambit of the invention disclosed in his provisional specification (Woodward v. Sansum & Co.[4]). And to my mind the applicant has done no more in the present case: indeed the modification strikes me as nothing more than the substitution of obvious and equivalent means for accomplishing the same object, namely, locking together the elements.

In my opinion, therefore, the appeal ought to be allowed.

Appeal dismissed with costs.

Solicitors for the appellant, A. Robinson & Co.

Solicitor for the respondent, M. F. Bourke.

[1] [1858] EngR 633; (1858) 4 C.B. (N.S.) 269.

[2] (1896-97) 14 R.P.C. 77, 573.

[3] (1897) 14 R.P.C., at p. 869.

[4] (1887) 4 R.P.C., at pp. 176-178.