Hargans v Commissioner of Patents [1932] HCA 60; (1932) 48 CLR 609 (5 December 1932)

HIGH COURT OF AUSTRALIA

Hargans Appellant; and The Commissioner of Patents Respondent.

H C of A

5 December 1932

Rich, Starke, Dixon, Evatt and McTiernan JJ.

May, for the appellant.

Roper, for the respondent.

May, in reply.

The following written judgments were delivered:—

Dec. 5

Rich, Dixon and McTiernan JJ.

This proceeding purports to be an appeal from a decision of the Commissioner of Patents, pronounced by the Deputy Commissioner, whereby he refused to accept the application of the appellant for a grant of letters patent for an invention entitled: "Improved method of preparing rabbits for the marketing of the carcase and the skin thereof."

The complete specification contained three claims. Two of these related to a method of partially skinning a rabbit, removing some of its organs, and stretching the skin again to enclose the entire carcase as in a bag. The third related to a clip to hold together the ends of the skin so stretched. The Deputy Commissioner, in his decision which he communicated to the appellant, expressed the opinion that the first and second claims were bad for want of subject matter. His decision proceeded:—"Although I have arrived at the conclusion that the two forms of the invention as claimed in claims 1 and 2 do not constitute an invention within the meaning of section 4 of the Act, I consider the subject matter of claim 3 allowable, and I think this is a matter in which I should give a direction under the provisions of section 42 of the Patents Act allowing the application to proceed to acceptance if the applicant is disposed to amend in the direction which I have indicated on the basis of the subject matter of the third claiming clause only. In the exercise of my powers under the provisions of section 42 of the Patents Act I therefore direct that the application and complete specification be amended to limit the title in such a manner that it indicates the subject matter of the invention as claimed in claim 3, that the descriptive portion of the specification be amended in such a manner that it is limited to a full description and ascertainment of the invention as claimed in claim 3, and that the statement of the invention claimed be amended by the deletion of the first and second claims and the amendment of the third claim in such a manner that it is limited to the form of the invention as represented by claim 3."

An objection is taken on behalf of the Commissioner that this does not amount to a decision under sec. 46 of the Patents Act 1903-1930 refusing to accept the application and specification, from which an appeal lies under sec. 47 to the Court, but is a decision under sec. 42 from which under sec. 43 an appeal lies to the Law Officer. We think that this objection is well founded. No doubt, from the opinion expressed by the Deputy Commissioner upon which he based his direction the consequence would follow that, if the applicant declined to comply with the direction, acceptance of his application and specification would be refused. But, by giving such a direction, the Deputy Commissioner enabled the applicant to consider whether he would comply with it or would appeal to the Law Officer from it or would decline to comply with it. If the applicant did adopt the last course his application would not ipso facto stand refused, but a further decision of the Commissioner would be necessary, although, no doubt, if the Commissioner adhered to his opinion that decision would be formal only. We are therefore of opinion that the appeal is incompetent.

But as the correctness of the decision given by the Deputy Commissioner was fully argued before us, it is, we think, desirable to add that we see no reason to disagree with his opinion that the claims in question disclose no subject matter.

The appeal should be dismissed and the costs of the Commissioner's appearance should be borne by the appellant.

Starke and Evatt JJ.

This is an appeal from a direction of the Commissioner of Patents that an application and complete specification be amended. The direction purports to have been given under sec. 42 of the Patents Act 1903-1930, and if it is, in point of law, such a direction, then no appeal lies to this Court. That section only authorizes the Commissioner to give directions upon matters referred to in secs. 39 and 40, which deal with the form of the application and specification, and not with want of subject matter or novelty. The Commissioner in fact rejected the two principal claiming clauses in the specification for want of subject matter, and required the third claim—admittedly unimportant—to be amended. Such a direction cannot be supported under sec. 42, but an appeal only lies to this Court, so far as the present case is concerned, from a decision of the Commissioner refusing to accept the application and specification (see sec. 46). The Commissioner has not yet wholly refused to accept the application and specification, but only a part of it. In our opinion, the provisions of sec. 47 do not permit an appeal to this Court unless the decision of the Commissioner finally refuses or rejects the application and specification as a whole. The result is that this appeal is incompetent, and the appellant should have gone to the Law Officer under sec. 43.

But the substance of the matter was fully argued, and perhaps it may assist the appellant if we shortly state our reasons for thinking that his application for letters patent in respect of the rejected claims is hopeless.

A great amount of invention is not necessary to support the grant of letters patent. But, though the alleged invention may be the result of a guess or an accident, still, there must be "newness in the sense of doing a thing which has not been done before" (Tatham v. Dania[1]). There is nothing new in doing what is obvious to everyone of ordinary intelligence, or in applying well known methods to merely analogous purposes. The applicant in this case suggests an improved method of preparing rabbits for marketing of the carcases and the skins. Skinning rabbits, removing their intestines, &c., and marketing carcases and skins is an everyday practice in Australia. All the applicant suggests is to commence skinning the rabbit at the tail, to proceed with the operation sufficiently only for the purpose of removing the intestines of the rabbit, and then to draw or stretch the skin back again so as to form a bag which may be tied or closed. Such a method is obvious to any person of ordinary intelligence, and indeed the examiner has reported—pursuant, no doubt, to the provisions of sec. 41 (b)—that on many occasions he has seen it used and has used it himself.

Appeal dismissed with costs.

Solicitors for the appellant, Weaver & Allworth.

Solicitor for the respondent, W. H. Sharwood, Crown Solicitor for the Commonwealth.

[1] (1869) Griff. P.C. 213, at p. 214.