Palmer v Dunlop Perdriau Rubber Co Ltd [1937] HCA 43; (1937) 59 CLR 30 (20 August 1937)

Palmer Plaintiff, Appellant; and Dunlop Perdriau Rubber Company Limited Defendant, Respondent.

Menzies K.C. (Attorney-General for the Commonwealth). Bonney K.C. and Gain, for the respondent.

This is an appeal from a judgment of Nicholas J. for the defendant in an action for infringement of the plaintiff's letters patent. The learned judge held that the invention was novel, that the patent was not void for ambiguity, that on the true construction of the letters patent the defendant had infringed, but that the patent was void for want of subject matter.

The patent was granted to the plaintiff on a convention application under sec. 121 of the Patents Act 1903-1935 as from 18th June 1924, the date of the first foreign application, namely, an application in the United States of America. The inventor was one Allen and the machine made in accordance with the letters patent may be conveniently referred to as the Allen machine.

The patent relates to the moulding of hollow rubber articles such as battery boxes. A machine made in accordance with the method disclosed in the specification begins with shapeless pieces of rubber and ends by turning out a moulded seamless vulcanized battery box. Before the introduction of the plaintiff's machine, such boxes were made by manually wrapping sheets of rubber round a former and vulcanizing under the necessary pressure, the rubber being held in position by plates and wrapped in a strained cloth. Battery boxes were also made in steel moulds, without the use of a wrapping cloth, the sides of the mould being screwed up to give the necessary pressure. In both processes sheet rubber was cut approximately to the size of the sides and bottom of the box to be made.

In a machine made according to the plaintiff's specifications all these operations are done mechanically. A mould case is mounted on a ram. Inside the mould case steel plates (liners) are assembled on the sides and at the bottom. A suitable quantity of uncured rubber is placed within the receptacle formed by the assembled liners. At the top of the machine is a core or cores, according to the number of boxes to be made. When the boxes are made with compartments the cores are split so as to allow the rubber to be forced into the desired shape and position. The mould case and the core are steam heated so that the rubber is softened. When power is applied, the ram, carrying the mould case, with the liners and the rubber therein, is pressed hard up against the core—which is then inside the receptacle formed by the liners. The rubber is pressed into the vacant spaces between the core and liners so that it assumes the desired shape of a battery box, with compartments if the core is a split core. Everything remains in this position, under pressure and subject to heat, until vulcanization is complete. The power is then released and the ram, with the mould case and liners and box, descends. It is assisted in its descent by a steam piston, a rod attached to which helps to push the above-mentioned assembly downwards. The core, a non-movable object, remains where it is, and this downward movement of the ram pulls the box off the core, the box being still contained in the liners, which are still contained in the mould case. The liner at the bottom has a rod attached to it extending downwards. As the ram descends, the bottom end of this rod comes down upon a slide which is pushed in for the purpose of intercepting it. The result is that the bottom liner is held, while the ram continues to descend. The lower edges of the side liners are so placed upon the bottom liner that the whole assembly of liners, containing the vulcanized box, still soft and hot, is held, while the ram with the mould case falls away from it. The liners can then be picked off without running the risk of distorting the box. The result is a completely machine-made seamless moulded vulcanized battery box.

The operation is described in general terms at the beginning of the specification in the following words:—"This invention is particularly designed to mould hollow rubber articles, such for example as storage battery boxes. In moulding such articles the apparatus should be arranged for conveniently reloading the mould and conveniently discharging the same without distortion of the article. In the present invention this is accomplished by forming the mould with a detachable liner, placing the material to form the article in bulk in the mould and forcing it to the shape of the article by the telescoping action of the core of the mould within the mould, the mould being heated during this operation so that the rubber more readily flows. After the mould is finally closed by the press it is held in this closed position during vulcanization and then the core is forcibly stripped by the apparatus from the mould and the separable liners of the mould itself are stripped from the mould thus making the discharge of the finished box very rapid and very efficient."

The specification continues: "The invention is illustrated in the accompanying drawings as follows:—" [Then follows a detailed description of a particular machine by reference to drawings]. Claim No. 1, which is the most important, is in the following terms:

It is necessary to construe letters patent before approaching any question of infringement.

In the first place the claim is for a combination, not for separate elements. Rubber moulding was a known art. Liners were well known for moulding articles in clay and rubber where some desired pattern or indentation made it impossible simply to pull or push a moulded article out of a mould. Power-actuated mechanism, of course, is known in many forms. Cores have always been used in moulding when a hollow article is required. Vulcanizing was a well-known operation. The claim is not a claim for any of the elements mentioned in it, but for the use of all these elements in combination in a rubber-moulding operation.

It has been argued that claim 1 is ambiguous because the meaning of the phrase "means associated therewith disengaging the lining from the mould" is not clear. I agree with the learned trial judge that the phrase refers to means associated with the before-mentioned power-actuated mechanism. The "means" may be power-actuated or not, so long as it is used in conjunction with—associated with—the power-actuated mechanism—so long as it performs an operation which is not completely outside the operation of that mechanism, as would be the case if it came into play only before or after the power-actuated mechanism had done its work.

Claim 3 is as follows: "The invention according to claim 1 in which the means for disengaging the lining from the mould is power-actuated and associated with the power-actuated mechanism for forcing the mould and core together." The words of this claim show that the associated means referred to in claim 1 need not necessarily be power-actuated.

Claim 1 is general in its terms, but it is not uncertain. The meaning of the claim as a whole is clear, and the meaning of each part of it is readily ascertainable by reading the specification in the light of ordinary knowledge of the art. The claim is more precise than that held not too large upon its face in Arnold v. Bradbury[1]. In that case a patentee claimed to do by machinery what had never before been done by machinery and he described the machinery by which he did it. It was held that, apart from extrinsic evidence, it could not be said that such a claim was so vague as to be unsupportable. A very similar claim was upheld as valid in Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd. and G. E. Prentice Manufacturing Co. Ltd.[2]. The claim was: "A machine for making fasteners having means for feeding a tape step by step, means for feeding fastener members into position to be compressed on to the said tape, and means for compressing the fastener members thereon." A particular form of such a machine was described in the specification as a preferred form. The objection raised to this claim was that which is raised in the present case. It is thus put in the judgment of Lord Tomlin:—The respondents "say that claim 1 is in the widest possible terms and covers every sort of machine which could be used to make fastener stringers and which had the three integers mentioned in the claim, the novelty of each of which integers they deny. They point out that the machine is not in terms particularly described nor are the means to be employed in relation to the three integers specified. Upon this footing they say that the claim is so wide as to be ambiguous or alternatively that it can only mean a claim for doing by one machine a number of well known operations which in the past have been done separately, and that there is no inventive quality in the idea of putting into one machine a series of operations without at any rate indicating with some measure of definitiveness how it is to be done, for it is, they say, obvious that, if it can be done, it would be desirable to do it." His Lordship answers the objection by saying that "the body of the specification cannot be ignored, and the claim in question, read as it ought to be read in the light of what is present in the body of the specification, is in their Lordships' opinion a claim to a machine of the type indicated by the description in the specification for making fastener stringers with means for producing the three results mentioned in the claim, that is to say, it is a claim for a general mechanical idea a preferred form of which is described in the body of the specification"[3]. These words, in my opinion, are applicable to the present case. The only distinction that I can see is that in the present case the patentee has not in precise terms said in the specification that his invention can be carried out otherwise than as therein specifically shown. In the present case, however, the invention is said to be only "illustrated" by reference to a specific machine and the claim is (as in the Lightning Fastener Case[4]) for the application of a general method of doing mechanically by a combination of known elements what had not been done mechanically before. The claim is not, in my opinion, invalid upon its face.

I agree with the learned judge that the alleged invention was novel. The moulding and vulcanizing of rubber articles was a known art—which is substantially all that the citation from Pearson's book shows. Kelly showed a method of making solid boot heels of rubber. Nothing is said about vulcanizing them, but the witnesses thought that some holes shown in a drawing might indicate vulcanization because they indicated steam heating—which, however, would be necessary for moulding apart from vulcanization. No liners are used for any purpose. No difficulty arises, as in the case of hollow objects, from the risk of distortion. It is, in my opinion, impossible to say that Kelly comes up to the test of Viscount Dunedin in Pope Appliance Corporation v. Spanish River Pulp and Paper Mills Ltd.[5]: "Would a man who was grappling with the problem solved by the patent attacked, and having no knowledge of that patent, if he had had the alleged anticipation in his hand, have said, That gives me what I wish?"

Similar observations apply to Ten Brink, which shows a method of pressing rubber, surrounded by liners, into shape round a mandrel. The mandrel and the moulded box round it are then taken away to be vulcanized. The liners are not used to take pressure bringing about the extraction of the box. There was much dispute in evidence as to the real significance of Ten Brink's specification and drawings, particularly as to the means of detaching or undoing the mould box after the moulding had been completed. It is, I think, impossible to say that Ten Brink "gives the same knowledge as the specification of the invention itself" (British Thomson-Houston Co. Ltd. v. Metropolitan-Vickers Electrical Co. Ltd.[6]).

The most difficult question in this case is that of subject matter. There is no doubt that the alleged invention is novel and that it successfully achieves a commercially useful purpose. Machine-made battery boxes had been brought to Australia before June 1924, but nobody here knew how to make them. The witness Massey, after making inquiries in Australia without result, had to go to America to find out how they were made. There he learned of the Allen machine. The introduction of the machine undoubtedly brought about a marked advance in the art as known in Australia.

The learned judge held, however, that the patent was invalid for want of subject matter. His Honour approached this question by asking first, whether the integers in the Allen patent were part of common knowledge in the year 1924, and secondly, whether the functions which they perform were also known in that year. It is true, as already stated, that every separate integer of the Allen machine was known in the year 1924. This fact does not appear to me to be very important in the case of a mechanical patent. What is claimed is not to be found in the separate integers, but in the combination. Even the most original machines consist of wheels, levers, screws and other well-known elements arranged in a particular way. Similarly it is true that each integer performs the function for which it is adapted. The steam produces heat, the ram exerts pressure and then descends, the core "telescopes" into the mould. The claim, however, is for the combination of all the integers as set forth. There is no doubt that, prior to Allen's patent, no machine existed in Australia which could do the work which it accomplishes. But it may still be the case that no ingenuity was required to devise such a machine.

The attack is made from two points of view. In the first place reference is made to expert evidence called for the defendant to show that any engineer with experience of machine design could readily have designed an apparatus to do what the Allen machine does and that such a machine would naturally and almost as of course have been in a form very like that of the Allen machine. Other expert evidence was to the effect that there was real inventive ingenuity in the invention. It has been pointed out that ex post facto analysis of a patent is not a satisfactory method of determining whether it displays invention. The learned trial judge in this connection referred to British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik[7] and British Celanese Ltd. v. Courtaulds Ltd.[8]. In my opinion it is particularly necessary for courts to keep these warnings in mind in cases where, after the event, many intelligent persons, being informed not only of the object to be achieved, but being aware that it has been achieved both by a patentee and by an alleged infringer, are inclined to have difficulty in discovering any invention anywhere. When an objective, such as making a vulcanized battery box in one operation by machinery, is conceived, a real step may even at that stage have been taken along the road of invention. But the matter wears a different aspect when evidence is presented to a court some years after the objective has been attained by means which have then become well known. It is frequently possible to take, as it were, a patent to pieces, and then, beginning with one piece, to show how, in order to obtain one result, step A must be taken; in order to obtain another particular result, step B must be taken—and so on until one has the whole combination for which inventive quality is claimed. If the analysis is taken into sufficient detail, every single step in the development of an invention, taken separately, can be shown to be obvious. The fact that an expert engineer, speaking after the event, can show clearly "how it is done" and, indeed, given an initial definition of "it," how it must be done, does not, in my opinion, establish absence of inventive ingenuity. Indeed, the ingenuity of such witnesses themselves is often very striking. I attach much more importance to evidence showing that, until the patentee came along with his ideas, the thing which he succeeded in doing had never been done by anybody, though it was obviously a useful and profitable thing to do. Of course there is no invention if, as soon as the question of how to do a thing is asked, any intelligent practical man acquainted with the relevant art can, with little trouble, provide the solution. Again, if a man versed in the relevant theory can readily devise means of accomplishing the desired end by an application of general knowledge, there is no invention. But, in the present case, the evidence of the expert witnesses for the defendant is really a reconstruction of an inventive process step by step, each step, when it is known that it must be taken and that it must be taken in a certain direction, being obvious enough in itself. Such evidence does not, in my opinion, displace the uncontested evidence that Allen's machine for the first time efficiently produced a good article which was new in certain respects and that it did so by means of which no person had previously thought, though the advantages of the new method are plain, once the method has been discovered. I take this evidence in conjunction with the expert evidence for the plaintiff to the effect that the invention displayed real ingenuity.

In the second place, the learned judge held that Allen's patent did not answer the test propounded by Lord Tomlin in British Celanese Ltd. v. Courtaulds Ltd.[9]: "It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers." This statement was particularly applicable in the Celanese Case[10] where four quite independent operations were found to be combined in one apparatus. But the position is very different here. The Allen machine consists of interacting parts, so arranged that what is accomplished by one part is quite useless unless the other parts also contribute their share to the total. The parts are functionally interdependent. The action of each integer depends upon the action of other integers—the ram and core are essentially interacting, the heating is related, and necessarily related, to the whole operation, the upward movement of the ram is meaningless except as a preliminary to the downward movement, the downward movement is rendered possible only by the prior upward movement, the liners are operative throughout the process for the purpose of giving form to the box, of making disengagement possible and of preventing distortion after disengagement. In my opinion, the objection based upon the Celanese Case[11] is not sustained in this case. I therefore hold that claim 1 is valid. It accordingly becomes necessary to consider the question of infringement.

It was not disputed that the defendant's machine infringes claim 1 if that claim is construed generally, not being limited to the particular apparatus described in detail in the specifications. I read the claim as a claim to a general method of manufacture which is new, one method of carrying it into effect being described by the inventor (R. C. A. Photophone Ltd. v. Gaumont-British Picture Corporation Ltd. and British Acoustic Films Ltd.[12]). The defendant's machine falls within the terms of claim 1 which I have already quoted. It is true that the downward movement of the ram in the defendant's machine is brought about by gravity, an initial break between core and box being made when necessary by the manual use of a pinch bar. But the addition of the use of a pinch bar to make the defendant's machine work does not prevent that machine from containing all the elements mentioned in claim 1. The same observation applies to the use of the pinch bar to make the initial break towards releasing the lining from the mould. The patentee, in the machine which he uses for purposes of illustration, uses a steam piston for this purpose. But, as I have already pointed out, his claim does not limit him to a power-driven mechanism for this purpose. The other distinction relied upon by the defendant as an answer to the allegation of infringement depends upon the fact that, in the defendant's machine, the liners, containing the box, are pulled by the ram downwards out of the mould case. In the plaintiff's machine as illustrated, the liners, containing the box, are prevented by slides or stops from descending with the ram; the ram is pulled away from the liners, instead of the liners being pulled away from the ram as in the defendant's machine. But, as in the case of the pinch bar, this difference does not prevent the defendant's machine from answering completely the description contained in claim 1. As I am of opinion that claim 1 is infringed, it is not necessary to consider any other claim.

In my opinion the judgment for the defendant should be set aside, a judgment should be entered for the plaintiff for an injunction and for the other relief claimed. As, however, the court is equally divided in opinion the appeal will be dismissed and the judgment of the Supreme Court affirmed (Judiciary Act 1903-1937, sec. 23 (2) (a)).

The facts of this somewhat difficult patent case are already in statement and I do not propose to encumber the record with a further relation of the nature of the mechanical appliances now in question. Like so many other cases of this description the decision turns on the specification and in particular on the formulation of the claims. The respondent, who is the defendant in the suit, succeeded before Nicholas J. on the ground that no inventive step was disclosed in the combination described in the specification and upon the ground that the alleged invention failed to satisfy the test propounded by Lord Tomlin in British Celanese Ltd. v. Courtaulds Ltd.[13]. That test is stated as follows:—"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject matter in the idea of the working inter-relation brought about by the collocation of the integers." The chief claim in the specification is the first. It is expressed in very wide terms and its interpretation occupied a substantial part of the argument. It is as follows:—"In a rubber-moulding apparatus, the combination of a mould; a separable lining; a mould core; power-actuated mechanism forcing relative movement between the mould lining and the core; means associated therewith disengaging the lining from the mould; and means subjecting the mould to vulcanizing heat." In point of grammar I agree with the construction of Nicholas J. that the words "associated therewith" refer to the "power-actuated mechanism." But this does not throw much light on what is meant by the vague words "associated therewith." Each of the integers referred to in the claim is old and in one form or another is represented in the moulding arts. The claim can be sustained only as a combination producing a new result. When an invention depends upon a new principle it is enough for the patentee to describe one or more embodiments of the principle and having thus shown its practical application he may by a properly framed claim secure for himself a monopoly in all similar applications of his invention. But in combination claims it is very difficult to cover validly more than the particular aggregation of integers actually made by the inventor. It must be rare for a combination to consist in such an application of principle that the inventor can exclude from the field all combinations of mechanical equivalents of the integers producing the same result. In the present case, as I understand it, Nicholas J. was of opinion that the machine, as disclosed by the drawings and the body of the specification, exhibited no proper subject matter for a patent, his reason being that it comprised an association of well-known elements which although co-operating together acted each in its old way and combining them involved no inventive step. I am not prepared to say that if the claim had been confined to the integers seen in the machine as shown in the drawings, and had been properly drawn so as to insist in the co-action of those elements as they appear in the machine, the claim would necessarily have been invalid. But as claim 1 stands it attempts to describe in general words mechanical steps or functions with a view no doubt of covering every machine which endeavours to bring together the performance in one series of operations of all these functions by any mechanical means. The expression "power-actuated mechanism forcing relative movement between the mould lining and the core," strikes me as indefinite in the extreme. It covers all kinds of movement of the two parts mentioned so long as the movement relates one part to the other. But even more indefinite is the next phrase "means associated therewith disengaging the lining from the mould." This covers and no doubt was intended to cover any device discovered or discoverable by which the lining can be freed from its container. Both in the case of relative movement and disengagement the inventor shows only one way of doing these things. He might perhaps make that way of doing it part of a combination claim. But I cannot believe that he can validly make a combination claim consisting of any way which the mind of man discovers for performing these functions. The claim seems to me too wide and to be subject to the objection Nicholas J. made to it based upon the Celanese Case[14]. For non constat that all the ways of forcing relative movement by mechanical power and disengaging the lining from the core have "a working inter-relation" between themselves and with other integers "producing new or improved results."

So far I have dealt with the claim as if it bore the interpretation which the natural meaning of the words suggest. It was argued, however, that it should be given a construction like that adopted by the Judicial Committee in the case of Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd. and G. E. Prentice Manufacturing Co. Ltd.[15]. This case appears to have created great interest among those concerned with the administration of the patent laws. Mr. A. K. Gill in a discussion of "The effect of recent decisions in patent cases" makes the following interesting observations:—"The claim supported in the Privy Council in the case of Lightning Fastener Co. v. Colonial Fastener Co.2(1934) 51 R.P.C. 349. was of a very functional character. That was an appeal upon a Canadian patent and perhaps it does not necessarily follow that the same claim under English law would have been upheld. Every element in the claim was defined as means for feeding or means for compressing, but the tape had to be moved step by step so that the feeding and compressing had also to be in steps. The claim was held to be for a general mechanical idea but it had to be read with the body of the specification, and the idea of combining in one machine all the necessary operations for making and assembling the Zip fasteners was held to be novel and useful. Evidence showed that such a combination was not obvious but was only achieved after years of work upon the problem. In spite of this judgment, there must be very few cases in which a claim defining a combination entirely by a functional statement, in the form of means for doing this and that, can be valid. It can only be so when there is a broadly novel idea in the combination." I can find no broadly novel idea in the combination relied upon by the present patentee. Further, if claim 1 were restricted by construction to the form of machine shown in the body of the specification and the drawings, I should think that there would be no infringement. For the respondent's machine does not expel the lining from the "mould" case in the same or any similar way as the patentee's. It drags the ram head with the liners from underneath the "mould" case leaving the "mould" case suspended. The difference in the ways in which this operation is performed is very clearly shown by a comparison between the diagrams of the two machines contained in exhibits 1 and 2 respectively. For these reasons I think that claim 1 is bad and if by a restricted construction it could be made good there would be no infringement. Of the remaining claims relied upon by the patentee claims 2, 5, 6 and 7 seem to me to depend upon claim 1. Claims 8 and 9 have not, I think, been infringed. There is no knock-out device operating upon a backward movement of the ram.

The invention claimed under the patent put in suit is for a machine. It consists in a combination of features for the performance of a series of functions, all necessary to produce the article desired. The product is a seamless vulcanized rubber box or container made in one piece.

The usual questions are raised. The validity of the patent is disputed and infringement is denied.

Against the validity of the patent it is said that there is no subject matter because every integer is borrowed from one or other of the many arts in which moulding is practised, if, indeed, its source is not in rubber moulding itself. Some paper anticipations are cited. It is denied that the combination involves any inventive step. Further, it is said that to provide a mechanical means of performing successive functions in manufacturing a complete article does not satisfy the test of inventive combination. For to constitute such an invention it is not enough, it is contended, to gather together and execute in one series of mechanical movements the separate steps of a process. The old integers that are utilized must be combined so as to react or interact one with another and thus produce a new result, that is, a new way of achieving an old purpose or the fulfilment of a new purpose. Then the claims are compared with the disclosure in the specification and it is said that they attempt, not without ambiguity, to cover a field much wider than the invention specified.

In support of these contentions much reliance is placed by those who attack the patent upon British Celanese Ltd. v. Courtaulds Ltd.[17] and Mullard Radio Valve Co. Ltd. v. Philco Radio and Television Corporation of Great Britain Ltd.[18]. But, if the attack on validity fails, then it is denied that the rival machine constitutes an infringement. Substantially the denial is based upon a difference in the mechanical performance of one of the steps distinguishing, it is said, the machine from that described in the specification. Whether the alleged infringement falls outside the claims depends upon the interpretation placed upon them.

The work of the machine described in the specification is done in one operation. It heats raw rubber to make it plastic. It does so inside a mould consisting of liners in a mould case borne upon a ram. It brings the ram up to the fixed core, which, on entering the lined mould case, presses the raw material into the required shape. It holds ram and core together until the heat vulcanizes the rubber. It then withdraws the ram and, on its backward journey, knocks out the liners from the mould case by means of a pin, so that the box formed by the liners may be picked off the moulded and vulcanized article. The heat is supplied by steam circulating through ducts or channels in the mould case. The mould case forms the head of a ram upon a shaft shown as vertical which is raised by hydraulic or other pressure. The liners are five detachable plates grooved so as to assemble as the five sides of an open box fitting into the mould case. They may bear patterns on their inner sides. The mould case holding the liners and containing the raw rubber is carried by the shaft up to the fixed core. The core is held at the top of the machine over the ram and when, on the ascent of the ram head, it fits or telescopes into the box made by the lined mould case, it leaves sufficient room for the softened rubber to spread under pressure round the core and thus assume the form of a box. The pressure is maintained and the mould kept closed until enough time has elapsed for the steam heat to complete vulcanization and then the ram retreats bearing the mould case with its liners containing the moulded and vulcanized box. In the press described in the specifications, it would seem that the descent of the ram is aided, if not substantially effected, by gravity when the hydraulic or other pressure is withdrawn and no longer sustains the heavy ram head and shaft. But the machine includes a steam piston for forcing the ram down. When vulcanization is complete, it is necessary to strip from the core the lined mould case containing the moulded article and, as rubber is apt to stick, a puff of steam upon the piston may be required to break apart the fixed core and the travelling ram before the weight of the latter can cause it to descend. Under the bottom liner in the mould case is a pin projecting vertically downwards through a hole in the floor of the mould case. It is a knock-out pin for the purpose of removing the liners from the mould case. Before the ram head bearing the mould case descends again to its first position a slide at that point is moved into the path of the projecting pin so that the liners are thrust out of the mould case as it returns to rest. The liners are then removed and stripped or picked off the moulded and vulcanized article.

The great distinction between the alleged infringement and the press I have described lies in the means adopted for freeing the finished article. There is in the alleged infringement no knock-out pin. The liners are not thrust from the floor of the mould case. In fact, the fifth liner forming the bottom of the box made by the liners is attached to the ram head. The liners are taken from the mould case by withdrawal from beneath. The four sides of the mould case are not fixed to its floor upon the ram head. On the contrary, they consist merely in a cavity in a block of metal resting upon the ram head. The block is called the die case. When the ram descends, after an interval, two claws or catches at the side intercept the block of metal, the die case, and hold it. The ram head continues its descent carrying with it the box formed by the liners which thus is withdrawn from the suspended block, or die case, constituting the sides of the mould case. The four liners are then picked off the sides of the moulded and vulcanized article, which is lifted from the bottom liner forming the floor of the mould. The suspended die case is then let down, its descent being moderated by dash pots. Another difference between the presses lies in the absence of any downwardly operating piston or other automatic means of forcing apart the core and the mould case before, under gravity, the shaft and the ram head begin to fall. Instead, a lever or pinchbar is inserted by hand between the ram head and the top of the press and the two parts wrenched asunder manually.

Much turns in the present case upon the nature of the claims, not only in relation to the question of infringement, but also in relation to the validity of the patent. But, before stating their effect, it is, I think, convenient to describe briefly the sources of the knowledge upon which the combination forming the machine may be supposed to have drawn.

In many arts moulding is practised. Both to provide a pattern or impress and for the purpose of lessening wear on the mould case and facilitating work, liners have long been in use. In the making of articles which include a cavity a mould usually implies a core. The core may be suspended in the mould and the material of which the article is composed may be poured round it in a liquid condition. But with plastic material the core is often thrust into the mould. Machines are used to telescope the core into the mould and to exert pressure. All this has long been known and practised. In rubber working, the moulding of rubber under heat was well known. The vulcanizing of rubber in a steam-heated press was also well known. But in the actual manufacture of vulcanized rubber boxes a comparatively crude method was in use in Australia before the date of the patent. The purpose for which such boxes were required was to contain batteries. The rubber was simply wrapped round a core or former of the desired shape and size. It was swathed in fabric and steam heat was applied to fuse together the edges of the rubber. Plates were screwed and bolted round it before vulcanizing, which involved a long period of heating. Chemical accelerators have since made it possible to vulcanize with a relatively brief application of heat and it is said that it is only because of this improvement in chemical treatment that such a machine as those now in question could have any practical and economical use in rubber moulding. Until then an article could not be left in an expensive press for the time required for vulcanization. Before the introduction of chemical accelerators, it was necessary to take the article away and vulcanize it separately.

In manufacturing tyres, a steam-heated hydraulic press containing a number of tyres was in use. It was called an autoclave and combined moulding and vulcanization under pressure. It is scarcely necessary to say that in it there was no telescoping action and that the machine was of a construction altogether different from those now in question.

Of the alleged paper anticipations, the nearest is one of 1920, a specification of an American invention by patentees named Ten Brink and Martin for moulding or forming battery jars of hard rubber. One manifestation of their machine provided for lifting out of the mould case, by a piston from beneath, the liners containing the completed battery jar and for the detachment of the side liners. But the inventors did not provide for the insertion, by a ram, of the core into the mould whether by telescoping or otherwise. Another paper anticipation, an invention of 1884 by one Kelly, shows a press for making rubber heels in which the completed heels were thrust out of their moulds by knock-out pins on the descent of an upward moving ram head to its position of rest. There were no liners and, so far as appears, no vulcanization, and the articles, although receiving from the upper part of the press a slight depression where the human heel would go, needed no telescoping core to make them.

In support of the present invention, the patentee relies on what he says are four inventive steps. If the combination is considered as a whole, it will be seen to embody the idea of making a single machine to perform the entire operation of making from raw rubber a completely moulded and vulcanized box or other hollow article. This, he claims, is in itself a new step. The appliance includes the mechanical telescoping of a core into a mould under pressure. That, too, is said to be in itself an advance having the quality of invention. Thirdly, there is the double use of the downward movement of the ram, viz., for the purpose of discharging the core from the box containing and retaining the moulded and vulcanized article and for the purpose of discharging that box formed, as it is, of the liners from the mould case. These uses of the downward movement of the ram mean, it is said, the exercise of ingenuity, both in conception and in carrying them out. Lastly, the patentee claims invention for the use of the liners as a sheath protecting the box or hollow article from distortion as it is disengaged first from the core and then from the mould case.

Before dealing with the form of the claims and the disclosure made by the specification, the sufficiency of these steps to afford subject matter may, I think, now be considered.

Regarded alone, the idea of using liners as a sheath to prevent or avoid distortion of a moulded article when a core was withdrawn or the thing itself was extracted from the mould may at once be put on one side. These purposes formed part of the reason for the use of liners in all sorts of plastic moulding. The use of liners to answer the needs arising from the nature of the patentee's machine may make a contribution to the subject matter of the whole. But applying liners to rubber moulding by means of a telescopic core does not appear to me in itself to amount to invention. Much the same criticism may be made of the claim to invention in adopting a mechanical means of telescoping a core into the mould. But, in dealing with the question whether the whole appliance does not exhibit subject matter, one cannot but compare the picture presented by the patentee's machine with the prior state in Australia of the particular part of the art. The comparison must carry great weight. Every element in the machine is open, no doubt, to the observation that the general practice of moulding or the expedients in use in power-driven presses and other machines supply the ideas that element represents. But, by the arrangement of upward-moving ram head, of ducts or passages therein for steam heating, of mould case, liners, core, and, on the retreat of the ram head, knock-out pins and slides, the patentee has brought into being an implement moved by mechanical power which performs in an entirely new and greatly improved manner the work of moulding and vulcanizing a box or other hollow article. To my mind the difficulty in reference to subject matter in the present case does not lie in the availability of the expedients to which the patentee has resorted, nor in the obviousness of the idea that a single machine should be made for the performance of the entire work of producing a vulcanized box, if one could be devised, but in the nature of the combination. The machine combines the doing of things which formerly had been done separately and it does so by effecting a series of mechanical movements or operations the purpose of each of which may perhaps be regarded as a separate thing. "A proper combination for a patent is the union of two or more integers, every one of which elements may be perfectly old, for the production of one object which is either new, or at any rate is for effecting an old object in a more convenient, cheaper or more useful way. But the point in a combination patent must always be that the elements of which the combination is composed are combined together so as to produce one result" (In the matter of Klaber's Patent[19], per Lord Davey).

In applying the test thus stated, it is always important to determine what is the result which the combination achieves. In the present case, it may be said the result is a vulcanized box produced in a different and more efficient manner. But the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers. Separate elements may be brought together and yet each may continue to operate as it did before. In other words, all that the patentee may have done is to assemble together things or ideas which apart from sequence, order, position and proximity of association continue to perform their known functions as before. He may in such a case have produced a more convenient and a better appliance or process but he has contributed nothing in doing so which amounts to invention. In an often-cited passage from the judgment of Buckley L.J. in British United Shoe Machinery Co. Ltd. v. A. Fussell & Sons Ltd.[20] the distinction is drawn between the production of a simple and of a complex result. "For this purpose," his Lordship says, "a combination, I think, means not every collocation of parts, but a collocation of inter-communicating parts so as to arrive at a desired result, and to this, I think, must be added that the result must be what, for the moment, I will call a simple and not a complex result. I will explain presently what I mean. It is not every combination of parts which is for this purpose a combination. To take the old illustration of the watch, the watch case, the bow, the glass, the hands, the face, the internal machinery and its bearings, the escapement, and so on, may all be said, in a sense, to form a combination, but it is not a combination for the present purpose. It is not a collection of inter-communicating parts with a view to arrive at a simple result. If, for instance, a man invented an improved composition of metals for making the case, or an improved method of attaching the bow or the like, that would be no improvement of the machinery which measures the time, and the machinery which measures the time is not necessarily one combination. The driving machinery in the main spring, the control in the escapement, the collocation of the wheels so adjusted inter se as to achieve the desired result, may each be a separate combination. The gridiron pendulum and the other mechanism may not constitute a new combination in the sense of a new combination of all the machinery which serves to measure the time. Further, the result to be achieved by the main spring is the production of force; the result to be achieved by the cog-wheels is to distribute and utilize that force; the result to be achieved by the escapement is to control the rotation of the wheels under the exercise of that force; the result to be achieved by the whole mechanism is to measure the flight of time. The latter I call a complex result. Each of the former I call a simple result. Whether the particular improvement is so added to the parts, or substituted for some of the parts, of an existing machine (which may be a combination, or an aggregate of combinations) or of an existing combination, meaning a combination in its proper sense, so as to form a new combination is in each case a question of fact."

A striking application was made of the principle in question by the House of Lords in British Celanese Ltd. v. Courtaulds Ltd.[21]. There a combination claim for a process of producing threads from cellulose compounds was held bad for want of subject matter. Lord Russell of Killowen states the combination as follows:—"The process claimed is a process of manufacturing artificial silk and like threads or filaments from all solutions of cellulose derivatives which contain volatile liquids as described in the patent, the essential feature of which is that it combines four integers—(1) downward spinning or extrusion, (2) in an air-enclosing casing, (3) evaporation of the solvent in warm air, and (4) winding outside the casing. The apparatus claimed is an apparatus for the manufacture of artificial silk and like threads or filaments according to the process claim (i.e., from solutions of cellulose derivatives containing the said volatile liquids) comprising in combination the four integers above described. In each case the essence of the claim, whether process or apparatus, is the collocation of the four integers"[22]. It is manifest that these integers were associated in the inseparable manufacturing process of forcing from the cellulose liquor or dope the fine jets which solidified as filaments for winding as threads. The ground on which the claim failed is put very shortly by Lord Tomlin thus: "In truth and in fact there is no inter-related working between the integers in the sense that any one of the integers is doing something which it could not do without the presence of one or more of the others. Each integer is in fact performing its own part and is not functionally dependent upon the presence of any other integer at all. I think, therefore, that the invention lacks subject-matter"[23].

It is by the application of these principles that Nicholas J., from whom this appeal comes, reached the conclusion that the patent was void for lack of subject matter. On my part, however, I have formed the opinion that the combination contained in the patentee's machine falls outside the class where the integers continue, so to speak, their independence and within that where a new co-operation is established so that by an adaptation of each integer to the working of every other integer an entirety is provided which is new and implies invention. In saying this, I am speaking of the machine described in the specification as distinguished from the combination or combinations stated in the various claims. This actual machine does, I think, bring the integers sufficiently into relation in the production of the one article as an entirety. In the first place, at one and the same time and in one operation all the qualities required for a vulcanized box are bestowed upon it. When the ram head reaches the core, it contains raw and amorphous rubber. When it withdraws, it contains a complete vulcanized box. The features of the machine by which, up to that point, the result is produced co-operate and interact in a new way. The steam in the ram head, the liners in the mould case, the shaft supporting it and the power behind it, together with the core, interact and combine to do one entire thing. But that thing requires for its success the disengagement of the article from the machine. I do not think that the disengagement can be regarded as a separate function. Not only does the nature of the operation make it necessary but the way in which it is to be done must depend upon the devices employed to perform the operation. The ascent of the ram means that the extraction of the article must be done on its return. In the descent of the ram the inventor finds a means of extracting it by introducing the knock-out pin and the slide. That means is dependent on the liners, which, indispensable for moulding, thus perform an additional function as well. I am, therefore, of opinion that the appliance, as I have described it, has proper subject matter for a patent. Without doing violence to accepted principles, the alleged paper anticipations, in my opinion, cannot be pieced together to make a real anticipation of the combination, however much common knowledge may be called upon to fill up the spaces between the bits of mosaic.

The chief difficulty in the patentee's way is the form of his claims. The first and leading claim is expressed as follows: "In a rubber moulding apparatus, the combination of a mould; a separable lining; a mould core; power-actuated mechanism forcing relative movement between the mould lining and the core; means associated therewith disengaging the lining from the mould; and means subjecting the mould to vulcanizing heat."

In Mullard Radio Valve Co. Ltd. v. Philco Radio and Television Corporation of Great Britain Ltd.[24], a claim was held invalid because it sought a wider area of protection than was warranted by the actual invention made. Lord Macmillan said: "A patentee may make a most meritorious discovery and may give an entirely adequate description of his inventive idea and of the manner of putting it into practice, but when he comes to formulate the claim to his invention he may claim a monopoly wider in extent than is warranted by what he has invented"[25]. Lord Roche describes as follows the actual point which the case decides:—"The substance of the objection to claim 2 of the plaintiff's specification is that, whereas the plaintiff's invention related to and related solely to a screen grid tube, the claim extended to cover an area which included one known and different thing which was in use at the date of the patent in suit, namely, the space-charge-grid tube and any number of other things and combinations which might in the future come into existence and be essentially different in character to a screen-grid tube. In short the claim was more extensive than the invention and was, as it is compendiously expressed, too wide and therefore invalid. If the premises are correct, I cannot doubt that the conclusion is correct also"[26]. He refers with approval to the judgment of Lord Hanworth in the Court of Appeal and the authorities there cited. They include the well-known statement of Lord Loreburn in Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co. Ltd.[27]: "The idea of allowing a patentee to use perfectly general language in the claim, and subsequently to restrict, or expand, or qualify what is therein expressed by borrowing this or that gloss from other parts of the specification, is wholly inadmissible."

The first claim in the present patent appears to sin against both these connected principles. It describes the function performed by various integers present in the machine disclosed by the specification. But it seeks to cover every means by which these functions separately conceived may be accomplished. Instead of claiming the actual vertical movement of the head bearing the mould case so that the core held above telescoped into it, a vague claim is made for relative movement between the mould lining and the core. This would cover any kind of core that may be mechanically propelled to or towards any kind of mould or vice versa. It covers a simultaneous movement of both core and mould towards one another. Any mechanism may do it so long as it is done by power, which I take to mean mechanical power. For the actual means provided by the mechanism for lifting the liners from the mould case there is substituted "means associated therewith disengaging the lining from the mould." This attempts to take all means available in the present, past, and future for freeing liners from the mould. The word "associated" is most indefinite and allows almost any connection, however independent the functions of the mechanism may be. It is not hard to understand the desire of the specifier to cover all possible mechanical equivalents of the things contributing to the merit of the invention. But in an invention the patentable merit of which lies in the combination of particular interacting parts all old, this is almost as difficult as too close and detailed a claim is dangerous. To restrict the claim by construction is tempting. There is, too, the example afforded by the decision of the Privy Council in the Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd. and G. E. Prentice Manufacturing Co. Ltd.[28], reversing the decision of the Supreme Court of Canada,[29] and of Maclean J.[30], where additional information as to the invention may be obtained. Their Lordships read a claim expressed very widely in the setting of the specification and treated it as a claim to a machine of a particular type[31]. But to apply this principle to the present case appears to me to involve special difficulties. It is plain that the object of drawing the claim widely was to extend the monopoly beyond the actual definite features combined in the machine disclosed and to cover variations in integers. But, unfortunately, except for the operation together of those very integers, subject matter would fail. By attempting to cover every means of performing the same function, the specifier necessarily includes means which involve no adaptation, no functional interdependence, no mutual co-operation, of the elements combined in the claim. Again, if a restrictive interpretation of the claim were adopted, no certain or definite criterion of infringement could be found. The limits of the monopoly would be anything but apparent and the exact thing which Lord Loreburn condemns would have been done. If, contrary to the view I have expressed, the precise machine described in the body of the specification were taken as the thing protected, then in my opinion, there would be no infringement. For, in that event, it would be impossible to treat the mode of withdrawing the liners in the alleged infringement as the mechanical equivalent of the knock-out pin operating on the descent of the ram head. Nor could the manual use of the pinch bar be regarded as equivalent to the steam piston in breaking the die case from the core.

Of the other claims relied upon by the patentee, the second condescends to detail upon two features and to that extent lessens the objections to the first. But it does not go far enough. It leaves unqualified the vague or wide claim for "means associated therewith disengaging the lining from the mould." The fifth and sixth claims are no better. The sixth claim deals more definitely with the operations at, so to speak, the top of the press but leaves untouched the difficult words in claim 1, which it incorporates. The seventh claim also incorporates the first and adds characteristics, the important one of which is contained in the description, not altogether grammatically expressed: "power means also strip the core from the mould and the lining from the mould." But again I think this is too wide. Claims 8 and 9 are as follows:—"8. The invention according to claim 1 characterized by the fact that the means for disengaging the lining from the mould comprises a knockout device operating to discharge the mould on a backward movement of the mould. 9. In a rubber moulding apparatus, the combination of a ram; a mould case on the ram; means for subjecting the mould case to vulcanizing heat; a separable mould lining in the case; and a knock-out acting on a backward movement of the ram on the mould lining to discharge it from the case."

I should be disposed to think that claim 9 is valid. But neither of these claims appears to me to have been infringed. The reference to the "knock-out device," or "knock-out" in each of them is undoubtedly to the slide and pins and cannot, I think, on its natural meaning cover the withdrawal of the liners from beneath the die case. In such claims, so expressed, I find myself unable to regard the difference as one which does not go to the inventive combination actually claimed. It appears to me no mere mechanical equivalent (Cf. Shave v. H. V. McKay Massey Harris Pty. Ltd.[32] and Walker v. Alemite Corporation[33]).

In my opinion the appeal should be allowed. I agree with the conclusions of the Chief Justice.

[1] (1871) 6 Ch. App. 706.

[2] (1934) 51 R.P.C. 349.

[3] (1934) 51 R.P.C., at p. 367.

[4] (1934) 51 R.P.C. 349.

[5] (1929) A.C., at p. 276.

[6] (1927) 45 R.P.C. 1.

[7] (1910) 27 R.P.C. 209.

[8] (1933) 50 R.P.C., at p. 269.

[9] (1935) 52 R.P.C., at p. 193.

[10] (1935) 52 R.P.C. 171.

[11] (1935) 52 R.P.C. 171.

[12] (1935) 53 R.P.C., at p. 186.

[13] (1935) 52 R.P.C., at p. 193.

[14] (1935) 52 R.P.C. 171.

[15] (1934) 51 R.P.C., at p. 366.

[16] (1934) 51 R.P.C. 349.

[17] (1935) 52 R.P.C. 171.

[18] (1936) 53 R.P.C. 323.

[19] (1906) 23 R.P.C. 461, at p. 469.

[20] (1908) 25 R.P.C. 631, at pp. 657, 658.

[21] (1933) 50 R.P.C. 259; (1935) 52 R.P.C. 171.

[22] (1935) 52 R.P.C., at pp. 198, 199.

[23] (1935) 52 R.P.C., at p. 194.

[24] (1935) 52 R.P.C. 261; (1936) 53 R.P.C. 323.

[25] (1936) 53 R.P.C., at p. 345.

[26] (1936) 53 R.P.C., at p. 350.

[27] (1907) 25 R.P.C., at p. 83.

[28] (1934) 51 R.P.C. 349.

[29] (1933) S.C.R. (Can.) 363.

[30] (1932) Ex. C.R. (Can.) 89.

[31] (1934) 51 R.P.C. 349; see at p. 351, line 11; at p. 365, line 28; and at p. 367, line 23.

[32] [1935] HCA 39; (1935) 52 C.L.R. 701.

[33] [1933] HCA 39; (1933) 49 C.L.R. 643.

High Court of Australia

Palmer v Dunlop Perdriau Rubber Co Ltd [1937] HCA 43; (1937) 59 CLR 30 (20 August 1937)

HIGH COURT OF AUSTRALIA