Maeder v Busch [1938] HCA 8; (1938) 59 CLR 684 (1 March 1938)

Cleland J., from whose judgment this appeal is brought, held that the plaintiff's patent was invalid by reason of prior common knowledge and prior public user of the inventions claimed. The inventions related to the permanent waving of human hair. It was admittedly common knowledge that the hair had to be moistened and warmed in order to produce the desired waves. The claims of the plaintiff were for the use in the waving process of (1) a sulphide solution, (2) more particularly, a hydrosulphide solution, (3) the use of any such solution together with the warming of the hair to a temperature of approximately 100 degrees C. Evidence was called which, if believed, showed that such solutions were known in the business or occupation of hairdressing as being useful for this purpose and that they were so used from time to time and on many occasions by hairdressers in their ordinary work. The degree of heat required was varied as appeared to be necessary, and the application of a temperature of 100 degrees C. (boiling point) was included in common practice. This evidence was believed by the learned trial judge.

There were also claims for preparations for waving hair characterized by the presence of (1) a dissolved sulphide, and (2) a hydrosulphide. Evidence accepted by the learned judge showed that sulphide solutions and, in particular, hydrosulphide solutions had been made and used for the purpose of waving hair, both cut hair and growing hair, before the grant of the plaintiff's patent.

I agree that the claims upon which the plaintiff based his action, namely, claims 1, 2, 3, 8 and 9, are invalid for the reasons stated by the learned trial judge, and I am therefore of opinion that the judgment of the Supreme Court should be affirmed.

It is accordingly unnecessary for me to deal with the interesting and important question whether a claim for a new method of conducting an operation upon a part of the human body can be protected under the law relating to patents. Such a claim is, of course, quite different from a claim relating to an appliance or a substance which may be used upon or in connection with the human body. I am very doubtful whether such a method or process can itself be regarded as a "manner of manufacture" within the meaning of sec. 4 of the Patents Act 1903-1935 (See Re C. & W.'s Application[1]; R. v. Wheeler[2]; and compare Rogers v. Commissioner of Patents[3]). The question raised is, however, so important and possibly so far-reaching, that it is wise to abstain from deciding it until the necessity for doing so arises.

In my opinion the material claims of the plaintiff's specification are invalid because they cover a use of sulphide solutions and of hydrosulphide solutions together with heat for waving hair, which was the subject of prior public user, and his appeal ought to be dismissed on this ground.

The alleged invention is for a process for forming permanent waves in hair and for a means of producing permanent waves. Presumably, the means resides in the preparations described in claims which are appended to the specifications. Of the claims for preparations, two only are alleged to be infringed. They claim respectively "a preparation for waving hair characterized by the presence of a dissolved sulphide" and "a preparation for waving hair characterized by the presence of a hydrosulphide, in particular ammonium sulphide." As a claim to a thing or substance, neither could possibly stand, and as claims for using the chemicals mentioned for the purpose of waving hair, even if they could bear that interpretation, they cannot have any greater, or, indeed, as much, validity as the claims for the process. The claims for a preparation may, therefore, be put aside. The three claims for a process upon which the plaintiff relies merit closer attention. His alleged invention, which is the subject of a convention patent dating as from 13th June 1933, professes to give at least two advantages in the practice of the art of permanent waving. It makes it possible to wave the hair without a prolonged application of heat. The second advantage flows from the first. It consists in allowing the use of less elaborate implements for heating. It does not require an apparatus containing elements at a high temperature which must be brought in hazardous proximity to the scalp. The principle upon which it was said the methods so far in use depended was that of subjecting hair wound on a curler to an alkaline solution which was heated to boiling point. The curler with the hair so wound upon it was enclosed in some form of cylinder or small chamber heated, usually electrically, for the purpose. Machines were in use furnished with numerous cylinders or similar attachments into each of which the operator would introduce a curler with an appropriate quantity of the customer's hair wound upon it, while the customer sat beneath until the required heat had been long enough applied.

Some time before making the alleged discovery upon which he now rests, the plaintiff, a German hairdresser practising his art in South Australia, had abandoned the overhead apparatus as a means of applying heat in favour of a form of metal clip. The clip was heated and then placed round the wound hair; which, of course, was first moistened with whatever solution might find favour. The temperature to which the clip was raised before it was placed round the curler appears to have been quite high. The plaintiff says that he then made some experiments with solutions containing a sulphide. He visited Germany, where he consulted chemists, and finally he obtained protection in Germany for the invention for which, when he returned, he obtained here the convention patent now in question.

The whole foundation of the invention claimed is the use of a sulphide solution to moisten hair. The specification states it in a sentence: "The basis of the invention consists in that the hair is treated with a solution of a sulphide, is then curled and is finally warmed at least until it is dry." It appears elsewhere in the specification that the sulphides intended are "soluble sulphides or sulphides containing materials which through conversion form soluble sulphides." A question has been raised whether this means soluble in water, but I should have thought that it was clearly the meaning of the expression. Ammonium hydrosulphide is such a soluble sulphide, and it has long been in use in the hairdressing trade. One purpose for which it has been used can be put on one side. It is the purpose of a depilatory. Another purpose is in wig-making. Hair which is to be given a lasting curl or wave for a false wig is treated with a solution of ammonium hydrosulphide in a manner not unlike that which the plaintiff applies to growing hair. It is wound on a stick or curler, immersed in the solution and then dried in an oven. A priori it would appear most probable that hairdressers familiar with this use of the sulphide would employ it for the purpose of permanent waving when that vogue began. Witnesses were in fact called to prove that before 13th June 1933 ammonium hydrosulphide and also sodium sulphide and barium sulphide had been used in Melbourne and in Adelaide in the course of permanent waving. They were used in solution for the purpose of wetting hair which, when wound upon curlers, was heated in one or other of the appliances or machines in use. The evidence of these witnesses was accepted by the learned judge who heard the action. A complaint is made on behalf of the appellant to the effect that his counsel lost an opportunity of discussing before his Honour the significance and credibility of this evidence in consequence of the course which was taken at the trial in deference to a conclusion against the plaintiff, which the learned judge announced, based upon the meaning ascribed to the specification. On the other hand, we had the advantage of hearing an argument in which the evidence as it is recorded was examined and criticised; and I think it would be difficult for any tribunal of fact to adopt any view of the evidence more favourable than that which for the purpose of my decision I am prepared to assume. Stated briefly and in general terms that view is as follows:—In at least two establishments in Melbourne a weak solution of ammonium hydrosulphide was regularly employed for long periods at a stretch. It was used in the main because supplies of tablets for a solution prepared by the makers of one kind of overhead apparatus were difficult to obtain. It was also sometimes used because a particular customer's hair was of a type difficult to treat and the sulphide was known to give a better result. It would have been used more but for the fact that it gave off an unpleasant smell. In one or two other establishments a more haphazard or occasional use was made of the same sulphide. In Adelaide an experimental use was made of solutions of barium sulphide and of sodium sulphide. None of those who used any of the three sulphides had any knowledge of chemistry. The solution used was weaker than that employed by the plaintiff. To a large extent in turning to it they were guided by the general use in the trade of ammonium hydrosulphide. They knew what results it produced, but had no knowledge of why it did so. In fact the alkalinity of the weak solution may have been the cause of its efficacy, and not other properties peculiar to soluble sulphides. The degree of heat applied was in all these cases high or prolonged. In some instances the heat was produced chemically and not electrically. Little importance can attach to the question whether the hair was moistened before or after winding, but the fact appears to be that sometimes it was done before and sometimes after. In contrast to this use of sulphides, the plaintiff sought to show that, in the first place, moderate temperatures sufficed for his process, in the second place, it employed a greater concentration in the solution, and, in the third place, it depended, not on alkalinity, but on the properties peculiar to sulphides. For the last he relied upon recent scientific explanations or hypotheses as to the operation of sulphides upon the keratin molecular structure. He did not pretend that, in making his alleged invention, he was indebted to these theories, but he relied upon them as suggesting that his process differed in its scientific basis from that followed in the instances of prior user set up. On behalf of the plaintiff it is contended that what took place was at most but a fortuitous and accidental user which did not really disclose the invention. In this view I cannot agree. It is, in my opinion, answered by the plaintiff's own specification and by the breadth of his claims. In the authority chiefly relied upon, namely, the decision of Astbury J. in Boyce v. Morris Motors Ltd.[4], the alleged prior user was a casual and temporary application of the idea embodied in the subsequent invention in order to fulfil a quite different purpose. In the present case the prior user was an adaptation to precisely the same purpose of the same ordinary trade knowledge or practice as the plaintiff made the source of his invention; applied, moreover, in a way which would now amount to an infringement of the plaintiff's claims. In the course of the specification the following passages occur:—"It will be understood that it is possible to treat such hair with a built-in heater, and by such use the before-described curl formation is shortened. On account of the altered temperature it is of course necessary to change the concentration of the moistening bath in accordance with the temperature. In normal cases this would be far too high so that the temperature must of necessity be lowered." "The necessary concentration of sulphides stand in inverse proportion to the applied heat, that is, if a weaker concentration is used so the heating temperature must be higher, for instance 180 degrees C. When using a lower temperature it is necessary to strengthen the concentrate. With hair which shows more hardness it is necessary to use a stronger concentrate or a higher temperature than with thicker hair. The forming action is also directly proportional to the concentration, the temperature, the time of heating and the strength of the hair." It is thus quite clear that the body of the specification includes the use of heat by any means and intends to cover wide variations of temperature and wide inverse variations of concentration in the sulphide solution.

The first claim is for a process for permanently waving hair, characterized in that the hair is moistened with a sulphide solution, the hair being thereupon waved and warmed. The words "moistened" and "warmed" are indefinite. The latter is open to an interpretation which confines it to very low temperatures. But it is also capable of a meaning that includes a wide range of temperature; and the body of the specification shows that just as the strength of the sulphide solution is variable so is the temperature. The claiming clause may be perhaps open to objection on the ground that in these respects it leaves the ambit of the monopoly uncertain. But, if on the subject of the strength of the solution and the amount of heat it is to receive a definite construction, then it must, in my opinion, be construed as covering a low concentration and a commensurate increase of temperature.

The second claim does not differ from the first, except in restricting the sulphide to a hydrosulphide. These two claims are, in my opinion, bad because they embrace a process that was within prior common knowledge and the subject of public user.

The third claim differs in fixing upon a temperature of approximately 100° C. It speaks of the hair being waved and subjected to that temperature in a warmed packing, for instance, a tubular clip. It is said that this means that the temperature of the clip shall be 100° C., so that the hair would receive a much lower heat. I do not think that this is the natural meaning of the words, which point rather to the idea that the solution shall be raised to the temperature at which water boils. However this may be, I think that the selection of the particular temperature cannot be an inventive step, nor can the choice of "a warmed packing," whatever may be the precise area covered by that expression. In view of prior knowledge and user, no subject matter can be found in the arbitrary choice of this precise combination within the variations which are practically open.

These are my reasons for saying that the material claims are bad. But, apart from any such ground of invalidity, the claims for a mere process consisting in the application of well-known chemical compounds and heat to the hair, a part of the human creature, raise a serious question in relation to subject matter. Can the discovery or improvisation of a mere process or method of treating any corporeal part of the human being afford subject matter for a patent? To be patentable an invention must relate to an art. Perhaps the widest statement is one of the earliest. In Boulton v. Bull[5] Eyre L.C.J. said:—"It was admitted in the argument at the Bar, that the word manufacture in the statute was of extensive signification, that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, to new results of principles carried into practice. Let us pursue this admission. Under things made, we may class, in the first place, new compositions of things, such as manufactures in the most ordinary sense of the word; secondly, all mechanical inventions, whether made to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making we may class all new artificial manners of operating with the hand, or with instruments in common use, new processes in any art producing effects useful to the public." But the ultimate end in view is the production or treatment of, or effect upon, some entity. "Applications of old things to a new use, accompanied by the exercise of inventive power, are often patentable though there be no production of a new thing. But in every case the invention must refer to and be applicable to a tangible thing. A disembodied idea is not patentable" (Edmunds and Bentwich, Copyright in Designs, 2nd ed. (1908), pp. 20, 21.)

In the present case there is nothing to be affected but the hair. The chemical compounds already exist. The use of them, the application of heat and the method of treatment constitute nothing but method, procedure, treatment or process. Can the hair growing upon the human head be regarded as satisfying the condition that the process shall in some way relate to the productive arts? It is part of the human body, and hitherto none of the prosthetic processes by which any of its parts have been treated has been considered subject matter for a patent. Indeed, in Re C. & W.'s Application[6] Lord Buckmaster, as a law officer, held that no patent could be obtained for extracting lead from the human body. In surgery it would not be easy to distinguish as a patentable invention an abdominal operation from face lifting. The application of a process or method of treatment to part of the human body for the purpose of improving its appearance or ameliorating its condition is distinguished from processes which may form the subject of patentable invention in aim and result. The aim is the alteration of some state or condition, feature or attribute belonging temporarily or permanently to a person. The result may be an improvement in his or her physical welfare or an increase in his or her pride of appearance. It is difficult to base any legal distinction on the motive or purpose of the operator or manipulator or on the vocation he pursues. It can hardly matter whether he acts in the exercise of a profession or art or trade or business. The purpose of the patentee and those intended to employ the process may be entirely commercial. The process may be intended for use in ordinary trade or business such as that of hairdressing, manicure, pedicure. The purpose, on the other hand, may be the relief of suffering by surgical or manipulative means. But the object is not to produce or aid the production of any article of commerce. No substance or thing forming a possible subject of commerce or a contribution to the productive arts is to be brought into existence by means of or with the aid of the process.

On the other hand, a widening conception of a manner of new manufacture has been a characteristic of the growth of patent law. In an interesting memorandum with which we were furnished by the plaintiff's counsel it is submitted that a process is patentable as an invention if it is embodied in a manual art or craft. In the application of this test to the present case a distinction is taken between the hair and the general human frame. The hair is a lifeless and insensitive growth fulfilling only a mechanical function. It is an adjunct which plays no part in the vitality of the body. This view of the matter confesses and avoids the general proposition that a mere process or method for the treatment or manipulation of the human body cannot afford patentable subject matter. For myself, as the ground I have given is enough to dispose of the case, I prefer to leave undecided the question whether a process for treating the hair may be patentable.

In this appeal it is clear that, if the findings of fact made by Cleland J. are affirmed, they establish prior public and common user which will invalidate the process claims in the specification. The trial took a course which reacted somewhat against the plaintiff. But a new hearing is not required, for, in my opinion, even if he had the benefit of the very complete arguments which have been submitted to this court the learned judge's relevant findings would have been the same. In my opinion the evidence supports and confirms Cleland J.'s findings, and he was right in his decision against the validity of the process claims. The separate claims for a preparation must encounter the same fate.

On the appeal it was suggested that, under the Patents Act, assuming that every other element necessary to establish a valid patent is present, the mere fact that the curls are to be produced on the head of a living person precludes a valid grant. The question whether this one fact—that curls are to be made on the head of a living person—prevents the issue of a grant need not here be decided; but I am inclined to the opinion that providing all the other elements of patentability are present, it cannot be laid down as an absolute rule that although the making of artificial curls for subsequent use on the human head can be protected by a patentable process, doing very much the same thing with the hair that is already on the head cannot be protected.

In this appeal the important question is raised whether a process for treating or dressing the hair of a human being is a manner of manufacture and as such patentable subject matter. This process could be held to be good subject matter of a patent only upon a wide, and perhaps novel, interpretation of the words "a manner of new manufacture." In this case it is unnecessary to resolve the doubt whether the process specified falls within this conception. I agree that the evidence amply supports the finding of Cleland J. that the essential elements of the alleged invention were the subject of prior public commercial user.

[1] (1914) 31 R.P.C. 235.

[2] (1819) 2 B. & Ald. 345; 106 E.R. 392.

[3] [1910] HCA 19; (1910) 10 C.L.R. 701.

[4] (1926) 44 R.P.C., at p. 134.

[5] (1795) 2 Bl. H., at p. 492; 126 E.R., at p. 666.

[6] (1914) 31 R.P.C. 235.

High Court of Australia

Maeder v Busch [1938] HCA 8; (1938) 59 CLR 684 (1 March 1938)

HIGH COURT OF AUSTRALIA