Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1994) 180 CLR 98 (3 July 1961)

HIGH COURT OF AUSTRALIA

SUNBEAM CORPORATION AND ANOTHER v MORPHY-RICHARDS (AUST.) PTY. LTD. [1961] HCA 39; (1994) 180 CLR 98
Patents

HIGH COURT OF AUSTRALIA
WINDEYER J

Patents - Revocation - Validity - Inventiveness - Novelty - Subject matter - Obviousness - Common general knowledge - Mosaic of prior publications - Patents Act 1952 (Cth), s. 100(1)(e), (g).

HEARING

1961, SYDNEY, May 8-12, 15-19; July 3
3:7:1961

DECISION

WINDEYER J. This is an action for the infringement of a patent for an electric frying pan. The patent is Australian patent No. 202,159. The first plaintiff, Sunbeam Corporation, a company incorporated in the State of Illinois in the United States of America, is the patentee within the meaning of the Patents Act 1952 (Cth). The second plaintiff, Sunbeam Corporation Ltd., a company incorporated in New South Wales, is an exclusive licensee. The patent is a convention patent, the basic application having been made in the United States by the inventor, Ivar Jepson, an officer of Sunbeam Corporation on 2 December 1953, and having issued in United Rates patent No. 2,744,995 of 8 May 1956. The Australian specification was published on 26 May 1955; but it was later amended and in these proceedings only the amended specification need be considered: the drawings attached to the original specification were unaltered; and the amended specification, including the claims, must be read by reference to them. The priority date is 2 December 1953. The defendant, Morphy-Richards (Aust.) Pty. Ltd., is a company incorporated in New South Wales. The infringements alleged are sales by it of frying pans of its manufacture, alleged to be made in accordance with the plaintiffs' patent. The defendant did not dispute these sales, but it denied that its frying pan is an infringement; and it claimed that the plaintiffs' patent is invalid, and by a counterclaim applied for its revocation.

2. The evidence established that, as indeed is well known, electricity was commonly used to provide heat for cooking long before 1953. Electric stoves, and various electric appliances, such as hot-plates, toasters, kettles, urns and waffle-irons were known and were in common domestic use, both in the United States and in Australia. The heat was engendered by a resistance element. But electric frying pans were not known in Australia before 1953; neither, it seems, had they then come into use in America. They were first put on the market by the Sunbeam Corporation. Its article, known by the trade name of a Sunbeam "frypan", has become well known in America and in Australia. It has been a great commercial success and there has been an increasing demand for it in Australia. It is correctly described as a frying pan. But, partly because of its depth, which relatively to its area is somewhat greater than many frying pans of the ordinary kind, and partly because it is supplied with a lid or cover for use when needed, it can be employed not only for frying but for various other cooking operations that xould not ordinarily be called frying, for example, stewing or even roasting. Among its features are the following: its heating element is built in, so that standing as it does on legs it can be used wherever it can be plugged into a domestic electric power point: a thermostatic control enables it to be kept at an even temperature: and this can be selected from a range of temperatures as that one suitable for the operation of cooking some particular foodstuff: the pan can be cleaned as a frying pan is ordinarily cleaned by washing; for the pan can be immersed in water, and with it portion of the handle adjacent to the pan. The pans sold by the defendant resemble the Sunbeam frypan in outward appearance and in essence their mechanism is the same. The comparison that has to be made is between the claims of the plaintiffs' specification and the defendant's article. And to fix attention on the particular article - alleged to be an embodiment of the invention - that the plaintiffs are making and selling is merely misleading.

3. Turning, therefore, to the plaintiffs' specification. Its heading is "Electric frying Pan". Then after some statements, that seem pompous and commonplace rather than significant, it refers to drawings "for a better understanding of the present invention". It is not suggested that the invention depends upon or embodies any new principle. Each claim is simply for an electric appliance having certain specified integers and characteristics. The appliance is at first sight a fairly complex piece of electrical apparatus, but it contains no integer that was not itself a well-known device used in electrical apparatus of all sorts before 1953. The plaintiffs, however, contend that the patent is for a combination; that the parts are so arranged and related that they work together to produce a single result, a new thing, an electric frying pan. The legal principles involved in claims for combination patents are well established and have been often stated: I need do no more than refer to Palmer v. Dunlop Perdriau Rubber Co. Ltd. (1); Kauzal v. Lee (2), and to Halsbury's Laws of England (3), where the English authorities are collected. Whether or not there is a combination in the sense required to sustain an invention is ultimately a question of fact (4). In my view the specification does describe an article that may properly be called a combination. If, therefore, what is claimed in the claims was a new thing in 1953 and if it was not an obvious thing having regard to what was then known, it is a patentable invention, notwithstanding that all its integers had been in use in other electrical apparatus. The first matter, therefore, is to consider the claims that are in question. Unless they an free from ambiguity and sufficiently define the monopoly claimed, the plaintiffs cannot succeed. Only when their proper interpretation has been established is it possible to see whether there has been an infringement and to inquire whether the patent is valid.

4. There are nineteen claims in all. The plaintiffs rely upon six only,

(1) [1937] HCA 43; (1937) 59 CLR 30.

(3) 3rd ed., vol. 29, pp. 51, 52

(4) See British United Shoe Machinery Co. Ltd. v. A. Fussell and Sons Ltd. (1908), 25 RPC 631, at p 658.

Nos 1, 8, 10, 11, 12 and 17. Of these the most important proved to be Nos 1 and 17.

5. Claim 1 is as follows:

"An electric cooking vessel, frying pan or the like, including an electric heating element in intimate heat exchange relationship with the bottom of said vessel, a handle for said vessel, thermoresponsive means disposed in a completely sealed chamber, whereby said vessel may be completely immersed in liquid without adversely affecting anything disposed in said chamber, said chamber being formed as a part of said handle or said vessel or both, said thermoresponsive means being responsive to the temperature of the bottom of said vessel, control means disposed in said chamber and operative by said thermoresponsive means to control the energization of said electric heating element, and means for selectively controlling the operation of said thermoresponsive means."

6. Read literally this claim is, I consider, restricted to articles that can properly be called "frying pans or the like". That construction is confirmed when it is read in conjunction with the body of the specification. The two expressions "an electric cooking vessel", "frying pan or the like" are in apposition. The monopoly claimed is thus only for an article that answers the description of an electric cooking vessel, being a frying pan or the like, and which includes - that is to say has as elements or components of it - things as described. The specification is to be read as addressed to persons having a knowledge of the art, which, I take it, in this case means persons having a sufficient understanding of the mechanism of electrical appliances generally, and in particular of those in which electricity is used for the generation of heat. It will be convenient, therefore, to consider what meanings the various phrases in the claim would at the relevant date have had for such persons in the light of the then common general knowledge. On this aspect my conclusions, except on matters of purely literary construction, are based upon the evidence given, and in particular on that of Mr. Julius and Mr. Davy, well-known consulting engineers. Their evidence did not differ on technical matters. With their explanations, and those of the other expert witnesses called, I was able to understand - I think correctly - some parts of the specification and drawings and also of other documents tendered, which could cause some difficulty to anyone not skilled in the art. An apparatus that to the uninstructed seems a complex mechanism may to a highly qualified engineer appear at once as, in essence, a simple application of well-known devices. But this does not determine the question whether it is a patentable invention.

7. To return to the meaning of claim 1. It is, I have said, restricted to articles that are frying pans or the like. It covers frying pans or the like having certain characteristics. What those characteristics are can best be considered by dissecting the claim and considering separately the meanings of its parts as follows.

(a) "an electric heating element in intimate heat exchange relationship with the bottom of said vessel."
8. The use of electric heating elements was, of course, well known before 1953. They had been used in some forms of electric kettles and similar articles. Although in some of these the heating element was immersed in the water inside the vessel, in others it was concealed in the base. In a pan to be used primarily for frying, heat should be applied to the bottom rather than to the sides. The phrase "intimate heat exchange relationship" may seem pretentious; but the witnesses seemed to understand it easily enough as meaning that the heated element should transmit heat directly to the bottom of the pan.

(b) "a handle for said vessel."
9. Whether or not a handle be an essential of a frying pan, no aide that lacked a handle would be an infringement of this patent.

(c) "thermoresponsive means."
10. The word "means" is much used by draftsmen of patent specifications, to avoid limiting claims and thus offering a way to avoid infringement. But that precautionary use has led to the word "means" being often used not as denoting any means of attaining a specified end, but as a concrete noun, meaning a thing or device, adjectivally qualified. This usage is now well understood; and none of the witnesses seemed to have any difficulty with the phrase "thermoresponsive means". I take it to refer here to the regulator of a thermostat apparatus - that is to say a device used as a means to an end and operating in response to temperature changes. In the body of the specification it is described in one place as "a suitable temperature responsive device". In the particular embodiment illustrated by the drawing, and in the Sunbeam frying pan, as manufactured, the thermoresponsive means is a device that operates by the response to heat of a bimetallic strip - that is a strip composed of two metals, having different coefficients of thermal expansion, welded together. When the strip is deflected by heat it actuates a switch. The exact form of the mechanism is not material. Various forms of the device were very well known before 1953.

(d) "disposed in a completely sealed chamber."
11. It was common ground that sealing against moisture is what is meant. Enclosing a piece of electrical apparatus in a chamber sealed against the entry of moisture presents no difficulty in the abstract. Before 1953, electrical equipment that had to operate under water, or when exposed to wet weather, was so enclosed. The standard specification in a British Standards Institution booklet of standard specifications dated August 1940, referring to the enclosure of starters, controllers, resistors and auto-transformers, defines a watertight model as "one in which the live parts are enclosed by a cover or covers so constituted to exclude water when the whole is immersed under a three foot head of water for fifteen minutes". The expression "completely sealed chamber" is of critical importance in this case. For, if the claim is to be read as meaning that the chamber housing the thermoresponsive means must be watertight, in the sense that water could not in any way penetrate it from anywhere, then the claim is not infringed by the defendant's frying pan. But the words "a completely sealed chamber" do not stand in isolation. They must be read in conjunction with the next phrase which is,

(e) "whereby said vessel may be completely immersed in liquid without adversely affecting anything disposed in said chamber."
12. The specification asserts that one of the features of the patented article is that it can be immersed in water for cleaning. In two places in the body of the specification there are statements that indicate that the inventor apparently contemplated that an appliance could be made in accordance with the invention which could be wholly immersed, pan and handle. This, however, is not what is claimed. Claim 1 distinguishes between the "vessel" and the "handle". And it is the vessel that it requires to be immersible. On their proper construction, the claims themselves are more modest than some parts of the body of the specification might seem to foreshadow. An applicant for a patent who, with a view to giving his article an appearance of novelty and inventiveness, extols it for advantages that A does no possess may render his patent invalid. For he may make his specification misleading. But, just as it is not open to a patentee to restrict or expand or qualify the language of his claim "by borrowing this or that gloss from other parts of the specification" (see Ingersoll Sergeant Drill Co. v. Consolidated Pneumatic Tool Co. Ltd. (5), quoted by Dixon J. in Palmer v.

(5) (1936) 53 RPC 323, at p. 350.

Dunlop Perdriau Rubber Co. Ltd. (6)) - so neither is it open to an infringer to force such a gloss upon the patentee's claim, if on its proper construction it does not bear it. No doubt it would not be possible, in the ordinary use of the article, to immerse the pan for normal cleaning without also immersing part of the handle adjacent to the pan. And this, as I read it, the claim recognizes and provides for.

13. The words "whereby the vessel may be completely immersed" relate primarily and directly to the immediately antecedent phrase. That is to say, the claim requires that the thermoresponsive means be in a completely sealed chamber thereby enabling complete immersion of the vessel. The heating element, the handle and the thermoresponsive means in a completely sealed chamber must, of course, be all of them so arranged that immersibility to the extent required is practicable. But it is the sealing of the chamber that is put forward as the condition enabling immersion; and this I think is the key to the meaning of the phrase "completely sealed".

14. The defendant's contention is that the words "completely sealed" state an absolute requirement, that the meaning is: "a completely sealed chamber, thereby enabling the vessel to be completely immersed." The plaintiffs, on the other hand, would read the words as if they were "a chamber so completely sealed that the vessel may be completely immersed". The question is one of construction. And, as is pointed out in the judgment of Dixon J. and McTiernan J. in Kauzal v. Lee (7), a difficulty of verbal construction is not a matter which, once it has been resolved, makes the ambit of the monopoly uncertain. In my opinion the question of construction here is to be resolved by adopting the construction for which the plaintiffs contended. What is demanded is, I think, that the chamber containing the thermoresponsive means should be so completely sealed against the entry of moisture that the vessel, that is the pan, as distinct from the handle, can be completely immersed. This construction, I think, is supported by reading the claim in the light of the specification as a whole, so far as it is legitimate to do so. Neglecting particular sentences and considering only the general description of the invention in the body of the specification when read in connexion with the diagrams, what is described emerges as a sealing so complete as is necessary for the stipulated purpose. It was

(6) [1937] HCA 43; (1937) 59 CLR 30, at p. 77.

(7) [1936] HCA 39; (1936) 58 CLR 670, at p. 685.

suggested that the diagrams showed a complete sealing of the chamber, because they indicated that, what I may call the passageway to the chamber from the end of the handle was sealed by the elements indicated in the diagram by the figs 52 and 53. These, however, are described as "insulating pressure plates" "formed of fibre glass or the like". The specification does not, I think, indicate that they are intended as seals against the entry of water: and I accept the evidence that, in fact, they would not effectually prevent water entering, for reasons given by Mr. Davy, I therefore do not read the claim as stipulating that the entrance to every passage-way leading to the chamber from We end of the handle should be completely sealed.

(f) "said chamber being formed as part of said handle or said vessel or both."
15. This part of the claim seems to be wider than the description of the invention on p. 5 of the specification, where it is said that a pocket or control chamber is defined within the casting of the vessel, that is the pan; and that is what is shown in the drawings. But to place the chamber housing the thermoresponsive means in, or partly in, the handle, instead of casting it wholly with the cast metal pan is a variation that could scarcely be regarded as departing from an essential of the combination. That the claim covers such a variant does not I think matter. It does not involve a material difference between the body of the specification and the claim.

(g) "said thermoresponsive means being responsive to the temperature of the bottom of said vessel "
16. In the body of the specification (p. 10) it is said that the "temperature responsive means must be responsive directly to the temperature of the bottom of the pan or vessel". And it is also said (p. 11) that, in the embodiment shown in the drawings, the bimetallic strip is so arranged that it "will respond very accurately to the temperature of the vessel and particularly the cooking surface thereof". If heat be applied at one point (here the bottom) of any article made of a metal that readily conducts heat, then no doubt, anything that is responsive to variations in the temperature of any part of We article can be said to be responsive to the temperature of the bottom. But because of the influence of radiation, and other factors that may be present there may be a time lag. Therefore, the further the thermoresponsive device is situated from the place where the heat is applied the less direct, in one sense, is its response to the temperature at that place. And the efficacy of any heat control mechanism necessarily depends to some extent on how rapidly it responds to temperature variations. The degree of delicacy required depends upon the purpose for which heat control is required in the particular apparatus. Here the apparatus is a cooking vessel. The aim is to maintain the bottom of the pan at a uniform temperature for cooking. To attain this the thermoresponsive device must switch the electric current off and on promptly as the actual temperature rises or falls below that for which the control is set. This, it seems to me, is a not insignificant element in the combination claimed. It is a question of fact and degree whether a particular appliance has thermoresponsive means that are responsive to the temperature of the bottom of the vessel.

(h) "control means disposed in said chamber and operative by said thermoresponsive means to control the energization of said electric heating element. "
17. This seems to mean no more than that the thermoresponsive means should form part of a complete thermostat that is housed in the chamber and which switches the electric current off from and on to the resistance that heats the pan. The word "operative" is perhaps misused. It seems to be intended to carry at once two notions: that the "control means" are operated by the "thermoresponsive means"; and that the "control means" then operate to control the supply of electric current. The meaning is clear enough although the language is elliptical.

(i) "means for selectively controlling the operation of said thermoresponsive means."
18. The meaning of this is, I think, clear. It is couched in familiar, if ugly, terminology used in specifications. If there were any doubt as to its meaning it would be at once apparent from the body of the specification that the frying pan is to have a means enabling the cook to set the thermostat to work at a selected temperature.

19. So much for the meaning of the elements in the claim. The language of the claim as a whole may be criticized. This claim and other claims and some parts of the body of the specification are by no means models of English composition. But that does not mean that the claim is ambiguous. It may, and I think it does, satisfy the requirements of the patent law and does sufficiently define the monopoly claimed, although its language is inelegant.

20. The question then is does the defendant's frying pan infringe this claim? In my opinion it does. It has, I think, all the integers that in the claim are said to make up the invention and they fulfil the required functions. It is true that it differs in several ways from the form of the appliance shown in the diagrams in the specification. But this is not, in itself, vital if the claim be infringed. Moreover, the differences are the result of the substitution of known electrical and mechanical equivalents for those shown in the diagrams; and the substituted things are all comprehended by the descriptions in the claims. Only in one respect is there any significant discrepancy between the defendant's article and that shown in the drawings. In the defendant's article the chamber that contains the thermostat apparatus is less distinct from the other recesses inside the handle than it is in the drawings in the specification. In the defendant's article the compartment housing the thermostat device is largely in the handle rather than in the casting of the pan. Moreover, in general appearance it is not so much a chamber to which conduit ways for the wiring lead from the end of the handle; in appearance there is rather one hollow in the handle enlarged at the end near the pan to house the thermostat device. This, however, is a matter of appearance not of substance. If the whole of the handle of one of the defendant's frying pans were immersed, water, entering from the end of the handle, would run down into the thermostat chamber. This would also happen to the plaintiffs' Sunbeam pan. It might not happen so quickly or so easily, for the plaintiffs' frying pan, both as illustrated in the diagram and as made is not quite so open to the entry of water as is the defendant's. But the evidence satisfies me that if the handle of the plaintiffs' article as illustrated in the drawings were wholly immersed water would, generally speaking, enter; for the conduit way through the handle is, as I have said above, not completely sealed at its outer end. In both the plaintiffs' and the defendant's frying pans as sold this risk is recognized, for both have a mark on the handle and a warning against immersion of the handle beyond that mark. If this instruction be obeyed the vessel itself can be fully immersed for cleaning yet no water can enter the chamber containing the thermoresponsive device. On the construction of the words "completely sealed" that I have adopted the defendant does not escape infringement by having the chamber more obviously open to the entry of water than is that shown in the diagram to the specification.

21. Furthermore, if to achieve complete sealing within the meaning of the claim some greater precautions against the entry of water were needed than the defendant's article has, it would be questionable whether the defendant would escape infringement simply by omitting such precautions. This, however, I need not decide in the view I take and I need say no more than to refer to the passage quoted below from Radiation Ltd. v. Galliers and Klaerr Pty. Ltd. (8) 1 base my conclusion that claim 1 is infringed on the fact that the ambit of the claim, construed as I construe it, is not doubtful; and the defendant's article is directly within it.

22. Claims 8, 10, 11, 12 which each incorporates claim 1 are also infringed. I do not think it is necessary to consider them in detail. But claim 17 raises separate problems. I need not set it out. It describes, in some detail, the features of a particular form of an electric cooking vessel as set forth in claim 1. This description covers substantially the particular embodiment illustrated by the diagrams in the specification, although the drawings are not expressly referred to and the claim is not limited by them. The plaintiffs' Sunbeam frying pan, in fact, answers to the description in claim 17. Does the defendant's article do so? The defendant relied upon that part of the total description in claim 17 in which the walls of the vessel are said to be "cast integrally with the bottom of said vessel defining a recess which makes up a part of said sealed chamber, at least part of said recess extending below the bottom of said vessel". It was said that in the defendant's frying pan the recess in the cast metallic vessel that forms put of We sealed chamber (We other part being a recess in the handand) is not "extending below the bottom of the vessel". It is, in fact, below the level of the bottom of the pan. It is, however, a projection from below the side wall, rather than directly underneath the pan. I do not read "below the bottom" as equivalent to "directly underneath the bottom". I think, therefore, that the defendant does not escape infringing by this slight difference in the form of its casting from that which is illustrated in the specification. Furthermore, even if "extending below" does mean being wholly underneath, nevertheless substantially the plaintiffs' invention as claimed in claim 17 has, I think, been taken. I may quote here a passage from the judgment of Dixon J. in Radiation Ltd. v. Galliers and Klaerr Pty. Ltd (8) as follows:
"on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing. It is, no doubt, sometimes the case that an inventor explains in his specification steps or methods involving an idea, conception or principle of wider application or of deeper significance than that for which he claims. Sometimes a claim, particularly a claim for a combination, is expressly

(8) (1938)60 CLR 36, at pp.51,52.

confined to a particular form of construction or the like, and in such a case it is useless for the patentee to complain that his idea of what he calls his principle has been applied in a different construction or has been expressed by means of a mechanical equivalent of some element which his claims make of We essence of his monopoly. Such cases are well illustrated by the decisions of this court in Walker v. Alemite Corporation (9) and Shave v. H. V. McKay Massey Harris Pty. Ltd (10). But the words of James LJ in Clark v. Adie (11), must not be forgotten: 'The patent is in the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination.'"

23. As I consider that claim 1, and certain ancillary claims, and also claim 17 have been infringed, I turn now to the question of their validity. I have already said that, although the meaning of some expressions in them was debated, they are not in my opinion ambiguous in the sense that their proper construction cannot be readily determined by the ordinary rules for the construction of written instruments. I do not overlook that I am not concerned with an instrument operating inter partes (12). But I do not think the claims are misleading. The ambits of the monopolies they severally claim is, I think, sufficiently defined. And in my view these claims are all fairly based on matter described in the specification. The objection (based on s. 100(1)(c) of the Act) that S. 40 has not been complied with thus fails.

24. The other objections raise issues of want of inventiveness, that is lack of subject matter, and want of novelty and inutility. Based on the specific terms of S. 100 of the Act they are: (a) That the invention as claimed is not an invention within the meaning of the Act (s. 100(1)(d)). (b) That the invention as claimed was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date (s. 100(1)(e)). (c) That the invention as claimed was not novel in Australia on the priority date (s. 100(1)(g)). (d) That the invention as claimed is not useful (s. 100(1)(h)).

25. Of these objections the last can, I think, be disposed of at once.

(9) [1933] HCA 39; (1933) 49 CLR 643.

(10) [1935] HCA 39; (1935) 52 CLR 701.

(11) (1875) 10 Ch App 667, at p. 675.

(12) See Natural Colour Kinematograph Co. Ltd. v. Bioschemes Ltd. (1915), 32 RPC 256, at p 269.

26. Appliances answering the description in the claims do work effectually as electrically heated thermostatically controlled frying pans. They give, speaking generally, the results referred to in the specification. They are useful in the patent law sense. And, as the large volume of sales of the plaintiffs' articles and the defendant's imitation of the appliance indicate, they are useful in the ordinary sense of the word. That objection therefore fails.

27. As to the first of the abovementioned objections, namely that there is no invention within the meaning of the Act, this objection throws one back to the definition of "invention" in the Act, which in turn takes one back to all the learning that has gathered around the words "manner of new manufacture" in the Statute of Monopolies. But the particulars of objections allege as the reason why there is no invention here, that the alleged invention "did not involve any inventive ingenuity in the light of the prior art as disclosed by prior publications hereinafter referred to". It thus appears from the particulars, and it was made clear by the argument, that the matters that are relied upon to support this head of objection are those that are raised by the other two heads, namely obviousness (s. 100(1)(e)) and want of novelty (s. 100(1)(g)). It is therefore unnecessary to consider this head of objection separately in this case.

28. There are, I think, some still unresolved difficulties concerning s. 100(1)(e). It has been said that it obliterates the distinction, formally well established in patent law, between want of novelty and want of subject matter or lack of inventiveness. These were separate grounds of attack on the validity of a patent. And the distinction was logically precise. When want of novelty was asserted, the thing or process claimed as an invention was assumed to be an invention that is the product of the inventive faculties; but it was said that it was not now at the date of the patent, having been earlier invented and disclosed to the public. When want of subject matter, or lack of inventiveness, was asserted the thing or process claimed as an invention was assumed to be a new thing or process not previously disclosed to the public; but it was said that it was not really an invention and thus not a proper subject matter for the grant of a patent. One important result of the distinction was that, when want of novelty was relied upon, particulars had to be given of the earlier disclosure alleged to destroy the novelty of the patent, whether that earlier disclosure was by prior user of the thing or process or by a documentary publication. Since the question was, "is it new or has it been earlier disclosed?", it was immaterial whether or not it had become known to many people or to few people. A description in an obscure publication would suffice to destroy novelty, provided that it was a publication, that is to say that the document whether or not it was read generally by the public, had been available to the public: and similar considerations applied to publication by user. On the other hand, when want of inventiveness was relied upon, the question was whether the new thing or process was obvious, or whether it had required an exercise of the inventive faculties to produce it. And, as that question was to be taken as relating to a person skilled in the art to which the invention related, it had to be determined in the light of the common general knowledge in that art. What matters were common general knowledge could be proved by competent witnesses: and particulars did not have to be furnished of publications whether documentary or by user the contents or results of which had at the relevant date become part of the stock of common general knowledge of the art.

29. The distinctions between public, that is published, knowledge, which is relevant to novelty, and common knowledge, which is relevant to inventiveness, were always easier to preserve in logic than in practice. This is especially so in scientific inventions, intricate mechanical arrangements, chemical processes, electrical and electronic devices and so forth. In these fields the persons skilled in the art are not just skilled artisans. They are often trained engineers and scientists, who are well versed in the periodical literature of their subjects. Moreover, a description of a particular thing or process is a disclosure not only of the process or thing in the exact form described, but of the same thing or process in other forms the result of the substitution of obvious chemical or mechanical equivalents. So that the issues of want of novelty and want of inventiveness often overlapped in cases concerning mechanical and chemical patents (13). As Williams J. put it in H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. (14): "the two objections tended for practical purposes to dovetail somewhat into one another." In that case his Honour considered pars. (e) and (g) of s. 100(1). He said:
"Paragraph (g) appears to accept the law relating to want of novelty as it existed at the date of the Patents Act. But par. (e) appears to have widened the law relating to want of subject matter. It requires the court to have regard to what is known or used in Australia before the priority date of the claim, and the words known or used appear to embrace more than what had become commonly known or used or in other words more than the common general knowledge of a skilled craftsman in the particular art on that date."

30. His Honour then referred to the discussion of this matter by the

(13) See Gum v. Stevens [1923] HCA 48; (1923), 33 CLR 267, at p 272, per Starke J.

(14) [1957] HCA 47; (1957) 98 CLR 424, at p 437.

31. Court of Appeal in the Allmannasvenska Elektriska A/B V. Burntisland Shipbuilding Co. ("the Allmanna Case") (15), and to the approval by the House of Lords of the judgment of Jenkins LJ (16). In Rose Holdings Pty. Ltd. v. Carlton Shuttlecocks Ltd. (17), Williams J. referred to his judgment in the other case and said:
"I will not repeat what I said there. I expressed the opinion that in Australia the law as it existed prior to the Patents Act 1952 relating to the failure of an invention for want of novelty has not been altered by anything in par. (g). In other words when it is alleged that a patent is not novel because the invention has already been disclosed in a prior paper publication, it is still not permissible to make a mosaic of such documents. Each publication must be considered separately."

32. His Honour went on to quote what Jenkins LJ said in the Allmanna Case (18).
I entirely agree in his Honour's view of par. (g). I find some difficulty, however, in the proposition that par. (e) has made all information which was available in Australia, however recondite and esoteric, of the same importance as matters of common general knowledge when judging of the obviousness of an alleged invention. I am aware that the court in John McIlwraith Industries Ltd. v. Phillips (19) proceeded "upon the assumption that the view adopted by his Honour that the scope of the objection (of want of subject matter) has been enlarged is correct". I proceed in this case on the same assumption. I would, however, merely observe that there is one notable distinction between pars. (e) and (g) of s. 100(1) of the Australian Act and pars. (f) and (e), the corresponding sections, in the English Act. Mr. Franki pointed out to me that in par. (e) of the English Patents Act 1949 (U.K.), s. 32(1), which deals with want of novelty, the words are "not new having regard to what was known or used". In the Australian Act the words of the corresponding objection are simply "not novel". In England, par. (f) corresponds with our par. (e). The fact that in England the words "having regard to what was known or used before the priority date of the claim" appear in both paragraphs suggests that there has been more of a merger there than here of the two objections of want of subject matter and want of novelty, because the words "known or used" must, one assumes, have the same meaning in each paragraph

(15) (1951) 69 RPC 63, at pp. 68, 70.

(16) Martin and Biro Swan Ltd. v. Millwood Ltd. (1956), 73 RPC 125, at p 133.

(17) [1957] HCA 48; (1957) 98 CLR 444, at p. 450.

(18) (1951) 69 RPC, at p. 68.

(19) [1958] HCA 43; (1958) 98 CLR 529.

where they appear. But in Australia they appear only in par. (e). And, as that paragraph is directed to whether or not an inventive step was involved, the old objection of want of subject matter, it may be that the intention of the Australian Act was to preserve the distinction between novelty and subject matter; and that therefore the words "known or used in Australia" were intended to refer to common knowledge, the correlative of inventiveness or subject matter, as distinct from available knowledge, the correlative of novelty. I propose, however, in considering the issue under par. (e), to assume that the hypothetical person skilled in the art was possessed of the stock of common knowledge in the art and also acquainted with the particular prior specifications and articles mentioned.

33. I should add, however, three observations. First, mere paper anticipations relied upon, although they arc to be treated as "known in Australia" for the purpose of par. (e), do not, I think, have quite the same effect in determining obviousness as does something that was in truth a matter of common knowledge.

34. Secondly, an objection to validity based on par. (e) does not, except in relation to what is truly common knowledge, obviate the need for particulars of prior publication and user pursuant to S. 166 of the Act. That question became of some importance in this case because the defendant sought to introduce evidence of prior user of a particular article known by the trade name of a "menu-master". This had not been referred to in any way in the particulars of objections delivered with the statement of defence. I rejected the evidence. An application was then made under s. 117 for leave to amend the particulars and to deliver amended particulars. I was not persuaded that the new matter proposed to be introduced could not with reasonable diligence have been discovered before the trial and therefore, if I had strictly followed the rule in Moss v. Malings (20), the amendment would have been disallowed. Nevertheless it seemed undesirable that the action should proceed and the validity of the patent be decided without regard to a matter that it was urged was directly relevant to that issue. I therefore made an order allowing fresh particulars of objections to be delivered on certain terms, one of which was that the costs occasioned by the introduction of evidence concerning the menu-master should be paid by the defendant in any event.

35. Thirdly, it seems to me that assuming that the effect of par. (e) is to add all alleged paper anticipations to the stock of knowledge

(20) (1886) 33 Ch D 603.

against which inventiveness must be judged, nevertheless the best approach to this question is still that indicated by Dixon J. in Acme Bedstead Co. Ltd. v. Newlands Bros. Ltd. (21), that is to say before coming to particular documents or things put forward as anticipations the state of the general knowledge at the relevant date should be considered.

36. Approaching the question in this way then, there were, as I have said, before 1953 many forms of electrically heated appliances some of them, such as kettles, used in cooking; and the use of thermostats to control heat generated by electricity was well known. In one sense, all that was done by Mr. Jepson, the inventor of the patented article, was to heat a frying pan standing on legs by electricity and provide it with a thermostat, and to do so he had only to arrange a number of well-known things - that, it may be said, was a matter of deign not of invention. That there was a stage at which the final form of the appliance was evolved by work on the drawing board in the design office of the Sunbeam Corporation was proved. This did not, of itself, impress me as evidence of inventiveness. What was being done at that stage was not so much experimenting to solve a problem as designing to get a commercial product. But in cases of this kind inventiveness consists in conceiving an idea and giving it a practical embodiment. It is not a question simply of the degree of mechanical ingenuity needed to produce an article, but rather of the exercise together of imagination and ingenuity. This is not a case of solving an old problem or satisfying a long felt want. It is rather a case of conceiving that an electric frying pan would be a useful article, envisaging the features that it must have to make it practically useful, and by ingenuity in the combination of known devices producing a new and useful thing, a frying pan having the desired features. In my view the invention does not lack subject matter, having regard to the electric cooking appliances that were in actual use in Australia before the priority date. But it is necessary to add now the particular publications referred to in the objections and to consider in relation to subject matter what they collectively reveal. Do they, added to the common knowledge, show that the patented invention was obvious? Much evidence was given about each of them. Some of it was directed to whether or not they answered to the descriptions in claims 1 and 17 of the specification. That question is, of course, directly relevant in relation to novelty. Other evidence was directed to showing how they worked or were intended to work, whether they would work,

(21) [1937] HCA 63; (1937) 58 CLR 689, at pp. 707-708.

and what defects and disadvantages they had. Some of this evidence seemed to me only remotely relevant. It is not said that the inventive step here consisted in overcoming defects or disadvantages of earlier appliances. I need not go in detail through all these alleged anticipations. Taken collectively they show that the idea of making a cooking vessel having a thermostat in various forms had occurred to various inventors. They show too that various well-known devices had been used in varying arrangements to achieve that end. Two only are frying pans - the Abtmeyer patent and the Dennis patent. They show that the idea of making an electric frying pan had occurred to these inventors. But their devices had no thermostats; and not much, I think, would be suggested by them to anyone who was seeking to make a practicable, thermostatically controlled, immersible frying pan. There are, however, two of the particularized articles that I must deal with separately. They are the menu-master, an article that was actually used, and the Swenson patent, a paper anticipation.

37. The menu-master came into commercial production in Australia after the priority date; and Mr. Bowen, having got leave to amend the particulars of objections to include it, was at first in some difficulty to prove that it was made public before that date. He did, however, prove that very shortly before that date what appears to have been a pilot model was sent by the manufacturer for testing and approval by the New South Wales Electricity Authority as required by law; and that, also before the priority date, two or three articles of the same kind were sent to certain officers of the manufacturing company for trial by use in their own households. I need not determine how far the sending of an appliance for testing by a statutory authority as required by law makes it "known or used in Australia" for the purposes of par. (e) or affects its novelty for the purposes of par. (g); for I think it is proper to infer from this evidence as a whole that there was some knowledge and use of menu-masters very shortly before the priority date. The menumaster is, however, not a frying-pan. It is a griller or a hot plate, No doubt it could be used for frying, for it has a very low rim that would probably contain enough fat to fry some foods. But it cannot among culinary articles be called a "cooking vessel, frying pan or the like". It is thermostatically controlled. But the thermostatic device is not in a chamber sealed against water. It could not be immersed for washing without affecting it. It is clearly not an anticipation of any of the claims; and, in my view, a knowledge of it would not contribute much to the general stock of knowledge that would aid anyone in conceiving or devising an electric frying pan. It would teach no more to anyone who had already conceived the idea of an electric frying pan than any electric stove would teach. It does not seem to me that it would either suggest an immersible electric frying pan or, in itself or with other knowledge, make obvious a satisfactory manner of constructing one.

38. I come now to the Swenson specification. It is a United States patent dated 16 October 1951; the inventor is A. G. Swenson; the owner of the patent is the General Electric Co. of New York. A copy of the specification was in the Commonwealth Patent Office and available for public inspection before the priority date. Mr. Jepson, the inventor of the Sunbeam frying pan, gave evidence. It was suggested to him in cross-examination that he or others in his organization knew of the Swenson patent before his own application was made. He said, however, that he had first heard of it when it was cited by the United States Patent Office when his own application was going through that office. He gave evidence of having himself made a preliminary model of an electric frying pan before the United States entered the war but having then abandoned any further development of it. Work on the project began again, he said, in 1952. It was, as I understood what was put to me, suggested by the defendant that this resumption of activity which led in December 1953 to Jepson's application in the United States for a patent for the subject invention was the result of a knowledge by him or his company that the General Electric Co. were at work on a similar idea - the result of its work being the Swenson specification. There is nothing but some coincidence in dates to support this suggestion. And, supposing it to be so, what of it? Trade competition can, I imagine, stimulate the exertion of the inventive faculty. It would not follow that Jepson did not invent something because he had a spur to do so. I do not think that Swenson's patent, either in itself or added to all other knowledge existing in Australia before 1953, makes the subject invention obvious. The actual embodiment as illustrated does show features that are the same as, or equivalent of, those of the subject invention. But it is really of a different order. Swenson's article is a pressurecooker. And a pressure-cooker is a different kind of cooking vessel from a frying pan. It is intended for a different form of cooking altogether. Swenson's appliance, as illustrated, has a bimetallic spiral housed in a recess along the side of the vessel. The pot and its contents are by means of it kept at a more or less uniform temperature as set on the indicator. But, since cooking in a pressure pot is different from cooking in a frying pan, the temperature control need not respond so immediately to the temperature of the bottom of the vessel. It would, I think, take more than a scintilla of inventive ingenuity for a skilled person to adapt the elements in the apparatus shown in the illustration to the Swenson - whether or not it be a good or safe pressure-cooker I do not have to determine - so as to produce a frying pan like the Sunbeam. This, of course, is not the whole test to be applied. But on the question of obviousness it is a useful inquiry when the Swenson is put forward as of prime importance on that question.

39. My conclusion on the whole of the evidence is that the objection based on s. 100(1)(e) fails.

40. I turn now to the objection based on s. 100(1)(g), that is want of novelty. Making full allowance for well settled doctrines concerning the substitution of mechanical equivalents to perform analogous purposes, I still do not think that anything put forward in the particulars of objection was an anticipation of the Sunbeam frying pan as it is illustrated in the plaintiffs' specification and as infringed by the defendant. But that is not the critical question. The inventor may have invented a new thing, yet his claim may be so framed that it claims a monopoly wider than his invention (22). And, as Lord Evershed MR expressed it in the Court of Appeal in Birmingham Sound Reproducers Ltd. v. Collaro Ltd. (23), "it is a well-settled principle that the scope of the invention as claimed cannot be limited or expounded by language in the body of the specification appropriate to a subject matter narrower or broader than that comprehended by the claim" (24). What the defendant says is that claim 1 is formulated in such wide terms that it has been anticipated. In support of this, reliance was placed mainly on the Swenson specification and on a British specification, the Rodriguez-Leal patent published in the United Kingdom in 1952 and available in the Commonwealth Patents Office before December 1953. It was argued that each of the appliances described and illustrated in the Swenson and Rodriguez-Leal specifications fell exactly within the terms of claim 1 of the subject specification. If that were so, they would be anticipations. But I do not think it is so. Taking first Rodriguez-Leal: The apparatus there described is an electrically heated container, intended primarily to be used as a cooking pot. It has a thermostatic arrangement in which the bimetallic strip does not directly switch the main circuit off and on, but operates by an auxiliary relay. This, of itself, would not put it outside claim 1. It is a "thermoresponsive means". But what does, I think, make claim 1

(22) See Mullard Radio Valve Co. v. Philco Radio and Television Corporation of Great Britain (1936), 53 RPC 323, referred to in Palmer v. Dunlop Perdriau Rubber Co. Ltd. [1937] HCA 43; (1937), 59 CLR 30, at pp 76, 77.

(23) (1956) RPC 232, at p 238.

(24) ibid., at p. 244.

inapplicable to the Rodriguez-Leal article is that it is not a frying pan, nor I think anything that within the ordinary nomenclature of pots and pans would be said to be like a frying pan. It is a kind of saucepan, having associated with it a separate base that houses the electrical control mechanism. This base is not sealed against the entry of water, and could not be immersed without affecting its contents. The appliance as illustrated has some elements which, if one were making a mosaic of bits from prior specifications, might well find a place in such a mosaic. But it is not an anticipation of any claims in the plaintiffs' patent. As to the Swenson. It does not seem to me to be within claim 1. This is principally because it is not a frying pan, nor I think would anyone classifying cooking vessels put it with frying pans or describe it as the like of a frying pan. Furthermore, it is at least doubtful whether it can be said that in the sense of the plaintiffs' specification, it has "thermoresponsive means responsive to the temperature of the bottom of the vessel". The existence of the Swenson specification, therefore, does not, I think, destroy the novelty of the plaintiffs' invention as claimed in claim 1. And certainly claim 17 is not anticipated.

41. I need not say more of claims 8, 9, 10 and 11 than that they are dependent on claim 1, and are valid. Claim 12 seems to do no more than claim a frying pan such as is mentioned in any of the preceding claims having legs. It is obviously desirable, if not essential, that an electric frying pan should have legs, so that it may when in use stand on a sideboard or table without burning it. This is what claim 12 requires. The body of the specification says, with ungrammatical inelegance, "there are provided a plurality of feet", and claim 13 refers to the legs as "supporting means" that "comprise a plurality of foot members". Using the body of the specification as a dictionary of jargon, it cannot be said that claim 12, or any of the claims in issue, is ambiguous. But perhaps in time heed will be given to Viscount Simonds' statement in Martin and Biro Swan Ltd. v. Millwood Ltd. (25), that: "the public are not supposed to be familiar with patent jargon, and the sooner it is disused the better."

42. I find that the plaintiffs are entitled to the relief that they seek and I dismiss the counterclaim. The defendant must pay the costs.
Solicitors for the plaintiffs, Fisher and Macansh with J. T. Ralston and Son.

Solicitors for the defendant, Manning, Riddle and Co.
(25) (1956) RPC at p. 133.