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High Court of Australia |
WELCH PERRIN & CO. PTY. LTD. v. WORREL [1961] HCA 91; (1961) 106 CLR 588
Patents
High Court of Australia
Menzies J.(1)
Dixon C.J.(2), Kitto(2) and Windeyer(2) JJ.
CATCHWORDS
Patents - Validity - Combination claim - Words used in specification and claims - Ambiguity - Consistory clause - Generality - Sufficiency - Infringement - Patents Act 1952-1955 (Cth) ss. 40*, 100 (1) (c), (e), (g) and (h).
HEARING
Melbourne, 1960, October 27, 28, 31; November 2.DECISION
1960, December 9.2. The title chosen to indicate the subject matter of the invention was "side delivery hay rake" but an examination of the complete specification shows that it would have been more accurately described as "improvements in side delivery rakes" because the existence of side delivery rakes ("conventional" as they are called) is assumed and the first ten claims are expressly confined to certain features in a side delivery rake or hay rake having a "draft frame", i.e., a frame to be drawn, and certain other specified features. Claims 11 to 23, however, each refer to a side delivery rake comprising certain features, some of which are admittedly old (e.g., the draft frame) but some of which are not, so for the plaintiffs it is contended that these claims should be read as not claiming what is admittedly old but as confined to what is new either by itself or in combination with what is old. Because the specification as a whole does, I think, make it clear that there were previously conventional side delivery rakes having frames on wheels, direction control means, means for attachment to a prime-mover, support frames for raking means and so on, I do consider that this is a case in which the claims relied upon should, where possible, be construed as not covering what is old except in association with what appears from the specification as the invention. Authorities such as Haworth v. Hardcastle [1834] EngR 862; (1834) 1 Bing (NC) 182 (131 ER 1087) , Lyon v. Goddard (1893) 10 RPC 121 , and Tubes Ltd. v. Perfecta Seamless Steel Tube Co. Ltd. (1902) 20 RPC 77 warrant such a construction. Although in this case there may be some difficulty in ascertaining just what is the invention, there is not, I think, much difficulty in seeing that much that appears in claims 11-23 is not claimed as the invention. (at p593)
3. Before examining the specification in an endeavour to ascertain the invention described and claimed, it is desirable to refer to what the specification describes as conventional side delivery hay rakes. I merely mention dump rakes such as illustrated in exhibit G which, by means of strong curved tines, would pick up a crop through which it is drawn and then by the operation of a trip device dump it in rows or heaps, and concentrate upon bar rakes such as those illustrated in exhibit H in which the raking is done by spring tines attached to revolving bars connected with drums set to rotate at an angle to the line of movement of the machine and rotated either from the axle of the fixed ground wheels as they turn when the machine is in motion or by means of a power takeoff. In these rakes there is a draft frame, mounted upon wheels (one of which swivels) which carries the raking device, means for raising and lowering the raking device as a whole by the operation of a lever, and means for attachment to a prime-mover. In the specification the following comment is made upon such rakes: "Conventional side delivery hay rakes are not able to adapt themselves to uneven terrain. As a result, hay is lost because it is not gathered efficiently and damage to the hay rake occurs when its rigid construction is subjected to the various stresses imposed thereon by movement over uneven ground. Conventional rakes tangle and shatter the hay as it is rolled to the side. Said rakes are slow in operation, are capable of being turned only one direction while operating, and are only slowly and tediously transported from place to place. Further, their many gears, sprockets, driving chains, and other moving and intermeshing parts have provided many points of wear and sources of maladjustment". (at p594)
4. The specification states a multiplicity of objects of which the following are the most important for present purposes: "Objects of my present invention are, therefore, to provide an improved side delivery hay rake adapted to adjust itself to uneven terrain over which it is operated. . . . Another object is to provide a side delivery hay rake that may be turned either way during operation. Another object is to provide a conveniently transportable rake. Another object is to reduce wear and maladjustment incident to the many moving and intermeshing parts in conventional side delivery hay rakes. Another object is to provide ground driving means for side delivery hay rakes". These suggest that a side delivery rake achieving these objects, the means for side raking will turn by contact with the surface of the ground and will respond by rising or falling to the ups and downs of the surface. (at p594)
5. After the statement of objects, there follows some description of the frame; its mounting upon three wheels - two in front which swivel and one behind which is fixed so that its plane of rotation is in line with the direction of the rake in operation and adjustable means of attachment to a prime-mover with the observation: "The draft means described is only one of several that may be advantageously employed to permit the application of a traction force at adjusted angles or freely pivoting, as desired". (at p594)
6. Then follows a statement which is the nearest that the draftsman gets to a consistory clause. It is: "It has been discovered to be advantageous to provide in hay rakes a plurality of floating raking means individually elevated or depressed in response to an uneven terrain over which it may be drawn". This statement, which is in very general terms, cannot, however, be regarded as a complete statement of the invention. (at p595)
7. The statement just quoted is followed by an elaborate description of what
is described as the "preferred" and "modified" embodiments
for "floatably
mounting the raking wheels". The preferred embodiment is illustrated in
figures 1, 2 and 3 in which the wheels are
suspended upon springs, and the
"modified" embodiment in figures 5 and 6 where a hinged arm to which the wheel
is fixed is supported
by a spring. Next there is a statement of the advantages
of using raking teeth "resilient to drag imposed thereon by forward operation
of the rake". The operation of the rake is then described which is, in short,
that after the raking wheels have been adjusted so
that the teeth will "merely
skim the top of the ground", the rake is pulled by a tractor and the raking
wheels "are caused to rotate
by the drag imposed upon the teeth" by encounter
with the hay or the ground and "rise and fall individually in response to
terrain
encountered" with springs carrying the bulk of the weight; the
rotation of the raking wheels set at an angle to the line of movement
of the
rake carries the raked material to the side. It is in this description of the
operation of the rake that I find the clearest
indication of the invention.
After reference to the advantages of the capacity of the rake to turn in
either direction and to be
transported with the raking wheels elevated, the
following statement appears: "The present invention provides a tractable,
rugged,
efficient, mobile, ground driven combined hay rake and cultivator with
a material reduction in moving parts subject to wear and maladjustment,
a rake
providing a minimum of resistance to forward movement during operation and
conducive to the speedy raking of hay. Although
I have herein shown and
described my invention in what I have conceived to be the most practical and
preferred embodiments, it is
recognized that departures may be made therefrom
within the scope of my invention, which is not to be limited to the details
disclosed
herein, but is to be accorded the full scope of the claims so as to
embrace any and all equivalent devices and systems". The specification
ends
with twenty-three claims which do not seem to me to follow one another in any
orderly sequence and involve so much repetition
and overlapping that I think
it would be unwise to treat the language of any one claim as a reliable guide
to the meaning of another
claim. The claims relied upon and the validity of
which is in question are as follows: "1. In a side delivery rake having a
forwardly
movable draft frame having a direction control means operably
associated therewith, a plurality of rotary raking means arranged in
echelon
in substantially parallel, erect planes angularly displaced from the normal
direction of movement of the frame, and mounting
means borne by the frame and
individually mounting the raking means for floating movement in their
respective planes in response
to depressions and elevations in terrain
traversed.
2. In a side delivery hay rake having a forwardly movable draft frame having
a direction control means operably associated therewith,
a plurality of rotary
raking wheels arranged in echelon in substantially erect, parallel planes
angularly related to the normal direction
of movement of the frame, the
rearward portion of each rotary raking wheel except the rearwardmost of said
wheels overlapping the
forward portion of its rearwardly adjacent raking
wheel, means borne by the frame mounting the raking wheels for rotation in
their
respective planes and for individual elevational movement, and resilient
means individually connected to the mounting means and resistive
to weight
imposed thereon whereby the raking wheels lightly engage terrain over which
the rake is drawn and independently rise and
fall in response to depressions
and elevations in the terrain traversed. 3. In a side delivery hay rake having
a forwardly movable
draft frame and a direction control means operably
associated therewith, a plurality of substantially uniform rotary raking
wheels
arranged in echelon in substantially parallel planes angularly related
to the normal direction of movement of the frame, each of
said wheels
including a substantially cylindrical rim concentrically disposed the wheel
adapted to ride over encountered hay and
the like and slightly to compress the
same downwardly against the earth and outwardly extended raking teeth borne by
the rim for
hay engagement, the rearward portion of each rotary raking wheel
except the rearwardmost of said wheels overlapping the forward portion
of its
rearwardly adjacent raking wheel a distance approximately the radius of said
wheels, means borne by the frame mounting said
raking wheels for rotation and
independent elevational movement in their respective planes, and resilient
means interconnecting the
frame and the individual mounting means and urging
the individual raking wheels upwardly with a force less than the weight of
said
wheel. 22. A side delivery rake comprising a mobile frame, means for
connecting said frame to a prime-mover, means attached to said
frame
supporting said frame for ground traversing movement, direction control means
on said frame for resisting forces tending to
shift said frame angularly from
the line of travel of said prime-mover, rotary raking means mounted on said
frame in echelon arrangement,
said raking means comprising wheels each
including a flat treaded rim and teeth extending a fixed distance radially
from said rim,
and a hub and axle vertically shiftable relative to said frame,
the axis of said hub and axle being disposed at an angle to the said
line of
travel, and a counter balance element operatively associated with the hub and
axle partially reducing the effective weight
of said wheel on ground
encountered by said wheel. 23. A side delivery rake comprising a mobile frame,
means attached to said frame
supporting the frame for ground traversing
operation and maintaining the frame in a substantially constant attitude
relative to the
ground traversed, said means including directional control
means, and a plurality of peripherally overlapping freely rotatable raking
wheels mounted on said frame in echelon arrangement with their peripheries
normally in tangential proximity to but free of the ground
traversed, and each
raking wheel being rotatable in a plane at an angle to the normal direction of
travel of said frame, said raking
wheels being adapted to engage with a
rakable substance on the ground." (at p597)
8. What then is the invention described and claimed in this specification? In approaching this question, I construe all that goes before the words "a plurality of" in claims 1, 2 and 3 as not part of what is claimed as the invention but as describing the kind of side delivery rake of which the raking means for which invention is claimed will form part. Similarly, upon the footing already stated I regard the new elements in claim 22 as beginning with the words "rotary raking means" and in claim 23 as beginning with the words "a plurality of". Upon this basis I consider that the invention is in essence that a number of raking wheels are individually and erectly mounted one behind the other with the one in front overlapping the one behind to turn in vertical planes parallel with one another but at an angle to the line of movement of the machine so as to rotate by contact with the ground surface as the machine moves and with means to assist the rise and moderate the fall of each raking wheel to keep it in light contact with an uneven surface. (at p597)
9. It was argued for the defendant that the introduction, by the statement already quoted from the specification, of claims going beyond what is described in the body of the specification as part of the description of the invention was an insuperable obstacle to ascertaining the invention where there is not substantial uniformity in what is claimed by the various claims, and Re United Shoe Machinery Corporation's Application for Letters Patent No. 454, 431 (1939) 57 RPC 71 was cited as authority for this. I consider, however, that in this case it is possible upon consideration of the specification as a whole including the claims, to find a description of the invention and that in so far as any claim does not claim that invention, it is itself invalid, but its inconsistency with the general description of the invention does not totally destroy the specification. I am satisfied that there are such claims in the plaintiffs' specification and I regard claim 23 as one of them. At this point I can say, therefore, that although I have no doubt that some claims are invalid because they do not, as required by s. 40 (1) (b), define the invention or are not, as required by s. 40 (2), fairly based upon the matter described in the specification or claim something which is not the invention, I nevertheless regard the complete specification as fully describing the invention in the manner already stated. Accordingly, the attack upon the specification as a whole under s. 100 (1) (c) fails. As already indicated, however, I do regard claim 23 as invalid because, apart from anything else, what is claimed does not cover any means for assisting the raking wheels to rise or fall with the ups and downs of the surface traversed. I leave this claim out of account in what follows. (at p598)
10. Before dealing with the other grounds of invalidity taken, I find it convenient to examine the defendant's machine that is alleged to be an infringement. It is the Bisley Finger Rake. It consists of a frame with adjustable means for attachment to a tractor to hold the frame at the required angle to the line of the tractor's movement. There is three-point linkage with the tractor, but in operation the three arms are slack so that so much of the weight of the rake that is borne by the tractor is carried in a chain connecting the two, although the traction is through the three-point linkage. The rake has a forward and a backward wheel each free to swivel, so that the rake as it travels is held in position by means of the attachment to the tractor and not by any ground resistance exerted by its own wheels. Upon the frame there are mounted raking wheels with hubs and axles set at an angle; a spring is attached at one end to a hook upon the frame and at the other to an arm upon the connexion between the hub and axle of each wheel; this spring carries part of the weight of the wheel, assisting it to lift easily and moderating its fall. The wheels are mounted one behind the other, each wheel overlapping the one behind it; they are mounted erectly and with their turning planes in parallel. Looked at from a direction in line with the hub and axle, the overlap is a little less than the radius of the wheel. It is obvious that in operation the wheels will be set so as just to make contact with ground surface so that they will rotate as the rake moves. To the smooth rim of the wheel, spring tines are bolted for the purpose of raking. The machine is well illustrated by the seven photographs constituting Exhibit F. (at p599)
11. What I now propose is to compare the defendant's rake with what appears in the claims relied upon, and to do this taking the claims in the order 22, 3, 2, 1. (at p599)
12. I am in the first place satisfied that there is no infringement of claim 22. The raking wheels of the defendant's rake have not "a flat treaded rim and teeth extending a fixed distance radially from said rim" nor are the "hub and axle vertically shiftable relative to said frame". They go up and down in an arc; nor is the spring which I have described "a counter balance element operatively associated with the hub and axle". (at p599)
13. I am also satisfied that the defendant's rake is not an infringement of claim 3. It is part of this claim that "each of said wheels including a substantially cylindrical rim concentrically disposed the wheel adapted to ride over encountered hay and the like and slightly to compress the same downwardly against the earth", but this is clearly enough no part of the operation of the raking wheels of the defendant's rake. (at p599)
14. Coming now to claims 1 and 2, I propose to consider first whether these claims can have any application to the defendant's rake in view of the limitation that what is claimed are raking wheels mounted as described in a side delivery rake, with a movable draft frame having a direction control means operably associated therewith. The defendant's rake has such a frame, but has it such direction control means operably associated with it? It was argued with some force that having regard to the description in the complete specification of the fixed rear wheel and the use in other claims of phrases such as "a ground engaging directional control means" (claim 15) and "a rudder wheel fixedly mounted" (claim 18), as a matter of construction, the direction control means referred to in claims 1 and 2 must be, or at least must include, a fixed rear wheel and because the defendant's rake has no such wheel there can be no infringement. I am not prepared to accept this argument. As I said earlier, this is not a specification where one claim affords much assistance in the construction of another and I have not found sufficient elsewhere in the specification to require such a narrow construction to be put upon the general language with which claims 1 and 2 begin. In the opening words of these claims the draftsman is not describing the invention; he is doing no more than referringin a general way to the frame upon which the raking wheels are to be mounted and all he stipulates is that it should be a forwardly movable draft frame and that it should have direction control means that will work in association with it. The defendant's rake has a forwardly movable draft frame and there is upon that frame adjustable means for attaching the frame to a tractor so that the attitude of the rake to the tractor will be determined and that the rake will follow the tractor held in that attitude. This means for attachment falls within the description of control means operably associated with the frame. The frame of the defendant's rake is therefore as described in the opening words of claims 1 and 2. (at p600)
15. Coming now to the body of claim 2. I find infringement. The defendant's rake has (1) "a plurality of rotary raking wheels", (2) mounted upon the frame "in echelon in substantially erect, parallel planes angularly related to the normal direction of movement of the frame, the rearward portion of each rotary raking wheel . . . overlapping the forward portion of its rearwardly adjacent raking wheel" with (3) "means borne by the frame mounting the raking wheels for rotation in their respective planes and for individual elevational movement, and resilient means individually connected to the mounting means and resistive to weight imposed thereon whereby the raking wheels lightly engage terrain over which the rake is drawn and independently rise and fall in response to depressions and elevations in the terrain traversed". What appears in claim 2 is not only an accurate but a complete description of the raking wheels of the defendant's machine and the manner of their mounting and operation. (at p600)
16. I find greater difficulty in deciding whether claim 1 has been infringed because of two matters which, as will be seen, relate also to the validity of the claim. The first is concerned with the use of the words "in echelon" to indicate, so it is argued for the plaintiffs, not only that the raking wheels must be one behind the other, but that they must overlap. The second is whether the description "mounting means borne by the frame and individually mounting the raking means for floating movement in their respective planes in response to depressions and elevations in terrain traversed" does describe the means whereby the raking wheels are mounted upon the frame in the defendant's rake. (at p600)
17. Upon the first of these matters I was referred to the definitions of "echelon" in Webster and in the Oxford Dictionary, but I have not found them very helpful. However, in this specification - which is written upon the assumption that the operation of a side delivery rake is understood and which states that "each raking means rakes the encountered hay to the side, where it, in turn, is encountered and continued to the side by each successive rearward raking means" - I think it would be wrong to construe the words "in echelon" as meaning no more than one behind the other so that the wheels would be "in echelon" if the wheels did not overlap either because they covered the same strip or the one behind covered an entirely different strip from the one in front. In this specification I read the words "in echelon" as meaning one behind the other but overlapping and the more detailed description of the degree of overlapping that is to be found in claims 2 and 3 where it is also stated that the wheels are "in echelon" does not, I think, require a different conclusion. (at p601)
18. With regard to the second matter I have reached the conclusion that what is set out in general language does describe the mounting of the raking wheels in the defendant's rake. The wheels do in a sense float; they are helped to rise and they are supported in falling. (at p601)
19. For these reasons I have reached the conclusion that if they are valid, claims 1 and 2 have been infringed by the sales of the Bisley Finger Rake. (at p601)
20. Of the three objections to their validity that remain to be considered, I will deal first with the ground that the invention is not useful (s. 100 (1) (h). The lack of utility alleged did not go beyond the suggestion that the claims were so general that an unworkable machine could be made in conformity therewith. It was not suggested that a most useful rake could not be made within the limits of what was claimed. The principle that all within the scope of the claim must be useful if the claim is not to fail for inutility was invoked and reference was made to Norton and Gregory Ltd. v. Jacobs (1937) 54 RPC 271 and other cases which show that a claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid. In the case cited, which concerned a chemical patent relating to reducing agents, Lord Greene M.R. (for the Court) said: "The fact that a skilled chemist desiring to use the invention would reject certain reducing agents as being unsuitable is one thing; it is quite a different thing to say that a claim must in point of construction be cut down so as to exclude those reducing agents because a skilled chemist would not use them. To adopt the latter proposition would not be to construe the specification but to amend it" (1937) 54 RPC, at p 276 . Here the principal argument was that although it is stipulated that the raking wheels should be "angularly displaced from the normal direction of movement of the frame" (claim 1) or "angularly related to the normal direction of movement of the frame" (claim 2), this would in either case permit the wheel to be mounted at an angle so near to a right angle that the forward movement of the rake would not turn the raking wheels. I consider, however, that no one reading the specification would so understand it and that a very ordinary person would know what was a workable angle. What I have quoted from the Master of the Rolls does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning. The same sort of argument was based upon the words "in echelon" on the footing that the only requirement was that there should be wheels each further back than the one next in front, but this is disposed of by the way in which I have already construed the phrase. (at p602)
21. The objections of obviousness and lack of novelty were argued together, principally by reference to earlier specifications. There was, however, some oral evidence. It was sought by the evidence of an expert witness, a Mr. Reid, to prove that what is claimed as the invention was obvious in 1947. Mr. Reid's evidence was, in short, that having been made aware of the problem facing the inventor and having been provided with an illustration of a machine known as the Bamford SC4 Combined Side-Delivery Rake, Swath Turner and Windrower (exhibit 3, to which reference will be made later), and Great Britain complete specification No. 16,403 of an invention by Collyer (one of the specifications constituting exhibit 1, to which reference will be made later), he in the course of an hour or two had no difficulty in solving the inventor's problem by designing a machine similar, as it turns out, to the defendant's own side delivery rake. Mr. Reid having sworn that he used nothing more on 27th October 1960 - when he was confronted with the problem and solved it - than he knew in 1947, the conclusion that I was invited to draw was that the invention claimed by the plaintiff was obvious. The difficulty inherent in such a line of reasoning as this becomes insuperable once there is doubt about the witness's professed ignorance of implements such as the defendant's side delivery rake. I have such a doubt, and as I indicated at the trial I am not prepared to place any reliance upon Mr. Reid's evidence. A farmer, Mr. Michael Joseph Ryan, who for many years had been a hay-making contractor, gave evidence about his unfortunate experiences with a Bamford SC4 Combined Side-Delivery Rake, Swath Turner and Windrower which he purchased from Gippsland & Northern Co-operative Co. Ltd. in August 1944, which he attempted to use and soon returned to the supplier as useless. He identified exhibit 3 as an illustration of the machine he had bought, used and returned. Had this machine revealed the plaintiffs' invention, there is no doubt that the patent would be invalid for, in addition to those in the Penshurst district who saw Mr. Ryan trying to get the machine to work, it was proved that between 17th March 1939 and 7th August 1944 fifteen SC4 machines were sold in Australia (see exhibit 4). The SC4 machine is, however, quite different from the invention claimed. Although it had two rotary raking devices, they were mounted side by side, they were not substantially erect, they were rotated from the axle of the machine, they did not move up and down automatically to respond to the rise and fall of the ground surface and when their elevation was adjusted by means of a manually operated lever, they moved up and down together. Moreover, it did not work. There were other differences, but these suffice to show that the SC4 machine was nothing like the invention in the plaintiffs' specification. Mr. Ryan's evidence emphasizes the extent to which the plaintiffs' invention is an advance upon the hay rakes available in 1944. (at p603)
22. I come now to the earlier specifications relied upon by the defendant, whose contention was not so much that there can be gathered from the earlier specifications the various elements of the plaintiffs' invention which could then be brought together without inventive skill, but that the claims relied upon by the plaintiffs are so widely stated that they cover what was old, including what is described in the earlier specifications, with consequent invalidity. H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [1957] HCA 47; (1957) 98 CLR 424 ; Woodrow v. Long Humphreys & Co. Ltd. (1933) 51 RPC 25 and Non-Drip Measure Co. Ltd. v. Strangers Ltd. (1941) 59 RPC 1 were cited to show that if, in one embodiment, the claim covered something that was made in accordance with public general knowledge, the whole claim would be bad. To put it in another way, it was argued that if the machines or any of them described in the earlier specifications would, if made now, infringe the invention claimed in the claims now relied upon, the claims would be invalid either for want of subject matter or want of novelty. With this contention in mind, I now turn to the earlier specifications which together make up exhibit 1. The first is Ransome's Great Britain Specification No. 17,636 of 1900. This is a grass turner in which two serrated discs, one in advance of the other at the rear of the wheeled machine, are each mounted upon an arm carried by a wheel and are rotated from the axle of the machine in a plane at right angles to the line of advance of the machine. This has little in common with the invention, and without going into detail, I am satisfied that a machine such as this would not be an infringement of the plaintiffs' invention. Next there were two Bamford machines, one described in Great Britain Specification 16,135 of 1901 and the other in Great Britain Specification 26,246 of 1902. Here again, two raking devices rotated by means of the axle of the machine at right angles to its line of progress are each mounted upon an arm to the rear of the machine carried by a wheel. The illustrations reveal that the arms can be set so that the raking means are set diagonally to the line of movement of the machine but overlap is in no way a feature. Again, as in the Ransome machine, the raking means do not independently move up and down in response to their contact with unevennesses in the ground, and apart from anything else this difference shows that machines made in accordance with these specifications would not infringe the plaintiffs' invention. The next specification is No. 740,911 of the United States of an invention by Samuel Arthur Peto patented on 6th October 1903. The drawings illustrate a swath turning implement with turning drums carried upon rearward arms supported by wheels and rotated from the axle of the machine across the line of draft, one drum being located in advance of the other, the arms being adjustable along the axle of the machine so that the drums could be arranged to overlap. Again, I regard this invention as being something quite different from the invention under consideration. The elevation of the drums is not automatically adjusted by virtue of contact with the ground surface; such rise and fall as there is results from the ups and downs of the supporting wheels; the drums normally rotate at right angles by reason of drive from the axle and do not rotate by reason of contact with the surface. The next specification is Great Britain No. 16,403 of 1911 by Collyer, which relates to improvements in swath turning machines and illustrates a machine where hooked raking tines are mounted upon a rotary disc set at an angle so that the raking tines touch the ground on one side; by virtue of ground contact the tines rotate and gather the crop as the machine travels forward, then carry the crop around and drop it, as they clear the ground on the other side. Here the raking means are turned by ground contact, but they are not mounted erectly; they are not mounted one behind the other so that the one on the rear rakes the crop raked by the one in front to form one windrow; and their elevation is not adjusted automatically in response to surface pressure. The next specification, Blackstone and Watts' Great Britain Specification 153,125 of 1920, shows a machine very much like the SC4 machine already described, and what I have said about it in relation to Mr. Ryan's evidence is sufficient to show that this specification does not anticipate the invention claimed. The last specification relied upon relates to a two-row potato digger. It is United States Specification 2,371,076 of 1945. According to this invention, there are two lines of three wheels set diagonally to the direction of travel, the two leading wheels in each line being of heavy construction to push away the mounds covering the rows of potatoes and the third or spider wheel cutting into the soft ground underneath to force the potatoes out. The six wheels all turn because of ground contact as the machine is drawn along. This description indicates sufficiently how far this potato digger is from the invention with which I am concerned, and I say no more about it. (at p605)
23. My reading of the foregoing specifications leaves me with the impression not that they in any way anticipate the invention under consideration but, if they represent the closest that prior art got to the plaintiffs' invention, what a considerable inventive step was taken in the specification with which I am concerned. Taking, therefore, both the oral evidence and the earlier specifications, I have reached the conclusion that the evidence affords no basis for concluding that the invention claimed in claims 1 and 2 lacked either subject matter or novelty. It points the other way. (at p605)
24. There is one further matter. It is to be observed that in describing the invention and in considering the problems associated with its validity, I have construed the specification as requiring the raking wheels to be ground driven. This I regard as a fair inference from the specification as a whole and it would be inconsistent with what does appear in claims 1 and 2 to regard either of them as not confined to freely rotating raking wheels. If, however, the feature I have just referred to is not part of the invention, I would still be disposed to regard claims 1 and 2 as valid. The invention would have subject matter even without this feature and although I have relied upon the fact that the raking means are axle or power driven in many of the inventions relied upon as anticipations, this is but one point of distinction and there are other points of distinction which show that what is described in no case amounts to an anticipation of this invention. (at p605)
25. For the foregoing reasons I have come to the conclusion that this action should succeed in so far as infringement of the invention claimed in claims 1 and 2 is concerned. The plaintiffs are entitled to a certificate of validity in respect of claims 1 and 2. This is not a case where I think I should order delivery up or destruction of infringing articles. (at p605)
26. Subject to such representations as the parties may wish to make as to the form of order, there will be judgment for the plaintiffs with costs; an injunction restraining the defendant from infringing Letters Patent 139,923; an enquiry as to damages suffered by the plaintiffs by reason of the sales by the defendant of machines infringing Letters Patent 139,923, the costs of which will be reserved; and there will also be a certificate of validity for claims 1 and 2 of Letters Patent 139,923. (at p606)
27. From this judgment the defendant appealed to the Full Court of the High Court. The plaintiffs cross-appealed against those parts of the judgment whereby it was held that the defendant had not infringed claims 3 and 22 of the letters patent and whereby it was held that claim 23 of the letters patent was invalid. (at p606)
28. G.H.Lush Q.C. (with him A.C.King), for the appellant, referred to Martin v. Scribal Pty. Ltd. [1954] HCA 48; (1954) 92 CLR 17, at p 59 ; Electrical and Musical Industries Ltd. v. Lissen Ltd. (1938) 56 RPC 23, at p 39 ; The United Shoe Machinery Corporation's Application (1939) 57 RPC 71, at pp 71, 72 ; British Hartford Fairmont-Syndicate Ltd. v. Jackson Bros. (1932) 49 RPC 495, at pp 544, 552 ; Bancroft's Application (1905) 23 RPC 89, at p 94 ; Mullard Radio Valve Co. Ltd. v. Philco Radio and Television Corporation of Great Britain (1936) 53 RPC 323, at p 345 ; Palmer v. Dunlop Perdriau Rubber Co. Ltd. [1937] HCA 43; (1937) 59 CLR 30, at p 76 ; Gill's Application (1937) 54 RPC 119, at p 120 ; Esau's Application (1931) 49 RPC 85 ; H.P.M. Industries ; H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [1957] HCA 47; (1957) 98 CLR 424, at p 436 ; Norton and Gregory Ltd. v. Jacobs (1937) 54 RPC 271 ; Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd. (1948) 65 RPC 141, at pp 157, 164 . (at p606)
29. R. K. Fullagar (with him R. H. Searby), for the respondents, referred to British United Shoe Machinery Co. Ltd. v. A. Fussell & Sons Ltd. (1908) 25 RPC 631, at pp 649, 652 ; British Thompson-Houston Co. Ltd. v. Corona Lamp Works Co. Ltd. (1922) 39 RPC 49, at pp 85, 86, 89, 90 ; Oxford English Dictionary (1897) vol. 2, p. 130, vol. 3, p. 30 ; Stocqueler's Military Encyclopaedia (1853); Chambers' Encyclopaedia (1955), vol. 7, p. 634; Encyclopaedia Britannica (1958) vol. 21, p. 105; Webster's Dictionary (1947): "echelon"; Watts and Sharp on Australian Methods of Building Construction (1948), p. 160. (at p607)
30. A. C. King, in reply, referred to The United Shoe Machinery Corporation's
Application (1939) 57 RPC 71 ; Haworth v. Hardcastle
[1834] EngR 862; (1834) 1 Bing (NC) 182
(131 ER 1087) ; Tubes Ltd. v. Perfecta Seamless Steel Tube Co. Ltd. (1902) 20
RPC 77, at p 88 ; Lyon v. Goddard
(1893) 10 RPC 121 ; Palmer v. Dunlop
Perdriau Rubber Co. Ltd. [1937] HCA 43; (1937) 59 CLR 30, at pp 65, 66, 76-78 ; Terrell and
Shelley on Patents
(1951), p. 68.
Cur. adv. vult.
1961, October 27.
The COURT delivered the following written judgment :-patent action in which the respondents, Richard Milton Worrel and Bamfords Limited, were plaintiffs and the appellant, Welch Perrin and Company Proprietary Limited, was defendant. The respondents are the grantee and licesee of Australian Letters Patent 139,923 bearing date 29th September 1947. By their statement of claim the plaintiffs sought an injunction to restrain the defendant from infringing claims 1, 2, 3, 11, 22 and 23 of the specification and the usual consequential relief. At the trial they abandoned their contention in respect of claim 11 and proceeded only in respect of the other fiveclaims. The appellant, the defendant, admitted selling machines as alleged by the plaintiffs; but denied that these were infringements and asserted that the claims relied upon were invalid. The grounds of this objection were: first, the specification did not comply with s. 40 of the Patents Act 1952 (Cth): s. 100 (1) (c); secondly, that the invention as claimed in the said claims was (a) obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before 29th September 1947: s. 100 (1) (e); (b) not novel on the priority date: s. 100 (1) (g); and (c) not useful: s. 100 (1) (h). (at p607)
These are an appeal and a cross-appeal from a judgment of Menzies J. in a
2. His Honour held that claims 1 and 2 were valid and had been infringed; that claims 3 and 22 were not infringed; that claim 23 was invalid. He granted an injunction restraining the defendant appellant from infringing claims 1 and 2 with an inquiry as to damages and other relief. He did not revoke the patent so far as it relates to claim 23. Revocation was not asked for. He certified that the validity of claims 1 and 2 had come into question. The appellant appeals against the whole of this order on the grounds that his Honour was in error in finding that claims 1 and 2 were infringed and in finding that they are valid. The respondents by notice of cross-appeal disputed his Honour's finding that claims 3 and 22 were not infringed and also his finding that claim 23 was invalid. But on the hearing of the appeal they did not pursue the matter in respect of claim 23. In the result, although his Honour in his judgment said that that claim was invalid, no formal order has been made in respect of it, and its validity is not in issue on this appeal. The appeal thus turns on the validity of claims 1, 2, 3 and 22 and on whether any of them is infringed by the appellant's machine, which is known commercially as a Bisley Finger Rake. (at p608)
3. The patentee, who is a citizen of the United States of America, is the assignee of the actual inventor. The invention seems to have an American origin; but the patent is not a convention patent. (at p608)
4. The letters patent and the specification describe the invention as a "side delivery hay rake". The specification states: "This invention relates to agricultural implements and more particularly to side delivery rakes". It goes on to say that it "is further adapted for use as a cultivator and is advantageously employed as such for the combing of weeds and roots from the soil, as in the preparation of plowed (sic) sod for planting". The primary use of the invention is, however, as a hay rake. Before considering in any detail the questions that arise in this case, it is convenient to state, in general terms, what the evidence shows was the state of the prior art. (at p608)
5. Mechanical hay rakes are now commonly drawn by tractors. They were formerly usually drawn by horses. A well known early type of mechanical rake is the dump rake. This is a machine that can be set to gather up mown hay from the ground, and when a quantity is gathered to release it as required. Release is effected by the operation of a lever, so that, by thus successively gathering and dumping, windrows can be formed. These dump rakes simply gather hay that lies in their path and dump it where the operator chooses. They do not deliver it to the side, and they require continuous manual operation. Side rakes were a big improvement. They seem to have first come into use in or about 1935. The first side rakes were bar rakes. That is to say the tines of the rake were mounted on bars. These were operated mechanically by a geared mechanism, which was either actuated by the rotation of the wheels of the machine as it was drawn forward over the ground, or driven by power transmitted from a power driven tractor or prime-mover. There were several types of bar rakes. In all of them the hay was carried to one side by the movement of the raking bars as the machine was drawn forward. It appears from the evidence that in such a machine the bars are not at a right angle to the axis of advance but, it was said, at about thirty degrees thereto. The next development of importance after bar rakes was the introduction of finger wheel rakes. These seem to have first come on the market in Australia in about 1954 or 1955 - certainly after the date of the patent. What is, in effect, claimed by the respondents is that their patent is for a finger wheel rake; that it is their invention. At this point it is enough to say that, according to both a witness called for the plaintiffs and a witness called for the defendant, the characteristics of a finger wheel rake as distinct from a bar rake are that: in a finger wheel rake the tines are mounted on wheels, from the rims of which they project; and these wheels are not driven by power, but revolve merely as a result of the machine being pulled forward while the tined on the wheels are in contact with the ground, or with hay lying on the ground. The result of having a series of wheels following one another - the diameter of each wheel being at an angle other than a right angle to the axis of advance, and all the wheels revolving as the machine goes forward - is that the hay is affected simultaneously by two directions of motion and thus moved out to the side of the rake as the rake progresses. (at p609)
6. Most of the argument before us centred upon the construction of the specification and, as in every patent case, it is necessary to determine from it what exactly is the invention it describes and for which a monopoly is claimed, before proceeding to consider objections to the validity of particular claims: Electrical and Musical Industries Ltd. v. Lissen Ltd. (1938) 56 RPC 23, at p 39 . The appellant's counsel in a forceful argument insisted that when the matter is thus approached the specification emerges as muddled and ambiguous and as failing altogether to make clear what it is that the inventor says he has invented. The Act provides in s. 40 that: " (1) A complete specification - (a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and (b) shall end with a claim or claims defining the invention. (2) The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification". These requirements of the present Act, that is the Act of 1952, differ in terms from the corresponding provisions in the present English Act, the Patents Act 1949, s. 4, and from the corresponding provisions of the former Australian Act, the Patents Act 1903-1950, s. 36. This patent was granted in 1947 under the Act now repealed. But the present Act is by s. 5 (2) made to apply to and in relation to patents granted under the repealed Acts. What differences there may be between s. 40 of the present Act and s. 36 of the repealed Act are probably of no importance. At all events so far as the present case is concerned, the differences in language may be disregarded. The main requirements are that the specification shall fully describe the invention and the manner in which it is to be performed and shall end with a claim or claims. The function of the claims of a specification has long been well established in patent law; and the appellant's objection based on non-compliance with s. 40 may be considered as if the relevant parts of s. 40 have the same effect as the corresponding requirements of the former law. (at p610)
7. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end of the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common knowledge in the art before the priority date. The general principles governing the construction of specifications are well known, and no lengthy reference to them is necessary. It is, however, fitting that we remind ourselves of the criterion to be applied when it is said that a specification is ambiguous. For, as the Chief Justice pointed out in Martin v. Scribal [1954] HCA 48; (1954) 92 CLR 17, at p 59 , referring to Lord Parker's remarks in National Colour Kinematograph Co. Ltd. v. Bioschemes Ltd. (1915) 32 RPC 256 , we are not construing a written instrument operating inter partes, but a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood. Nevertheless, it is to be remembered that any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed (see Kauzal v. Lee [1936] HCA 39; (1936) 58 CLR 670, at p 685 ). The specification must be read as a whole. But it is a whole made up of several parts, and those parts have different functions. Courts have often insisted that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document. (at p610)
8. This specification is at first sight a formidable and difficult document, but on analysis it becomes apparent that it is not so obscure or uncertain as the appellant's argument suggested. Its basic structure does not depart far from the form now usual in English specifications, as described in Halsbury's Laws of England 3rd ed., vol. 29, p. 6. Its seeming complexities are mainly the result of the detail in which the patentee has described particular embodiments of his device. It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing. As is now customary, the specification begins, after the title, with a preamble stating the subject to which the invention relates. This paragraph is as follows: "This invention relates to agricultural implements and more particularly to side delivery rakes. The present invention is further adapted for use as a cultivator and is advantageously employed as such for the combing of weeds and roots from the soil, as in the preparation of plowed sod for planting. It will be obvious as the description progresses that certain features of the invention have their greatest utility in raking operations, but it will also be observed that the same machine or parts thereof may be employed for cultivation and combing operations. For convenience in description, I will first describe the machine in connexion with the raking of hay." (at p611)
9. It goes on - this again accords with common forms - to set out the disadvantages of what it calls "conventional side delivery hay rakes", and, by stating the objects of the invention, to show in what ways it is claimed to be in advance of what was previously known. The passage may be quoted in full: (at p611)
10. "Conventional side delivery hay rakes are not able to adapt themselves to uneven terrain. As a result, hay is lost because it is not gathered efficiently and damage to the hay rake occurs when its rigid construction is subjected to the various stresses imposed thereon by movement over uneven ground. Conventional rakes tangle and shatter the hay as it is rolled to the side. Said rakes are slow in operation, are capable of being turned only one direction while operating, and are only slowly and tediously transported from place to place. Further, their many gears, sprockets, driving chains, and other and intermeshing parts have provided many points of wear and sources of maladjustment. (at p611)
11. Objects of my present invention are, therefore, to provide an improved side delivery hay rake adapted to adjust itself to uneven terrain over which it is operated. (at p611)
12. Another object is to provide an apparatus for raking hay into rows with a minimum of tangling and shattering of the hay. (at p611)
13. Another object is to provide an apparatus conducive to the speedy and efficient raking of hay. (at p611)
14. Another object is to provide a side delivery hay rake that may be turned either way during operation. (at p611)
15. Another object is to provide a conveniently transportable rake. (at p612)
16. Another object is to reduce wear and maladjustment incident to the many moving and intermeshing parts in conventional side delivery hay rakes. (at p612)
17. Another object is to provide ground driving means for side delivery hay rakes. (at p612)
18. Another object is to eliminate the necessity frequently encountered in conventional hay rakes for turning inside irrigation basins to avoid checks, ridges and the like. (at p612)
19. Another object is to reduce friction and other impeding influenes encountered in the operation of conventional hay rakes. (at p612)
20. A further object is to provide a combination hay rake and cultivator adapted to comb roots, trash and the like from soil. (at p612)
21. Further objects are to provide a rugged, efficient, and economical combined hay rake and cultivator and to provide improved elements and arrangements thereof in a device of the character and for the purposes set forth." (at p612)
22. At this point in a modern specification one might expect to find a general description of what the inventor asserts his invention consists of, commonly called a "consistory clause". This, however, is not an essential part of the body of a specification. It is not required by the Act. Its purpose may be quite well met by the claims themselves: United Shoe Machinery Corporation's Application (1939) 57 RPC 71 . Indeed, the usual practice in England is now to use in the consistory clause the wording of the broadest of the claims: see Mr. Blanco White's book, Patents for Inventions 2nd ed. (1955) p. 34n. The present Australian Act expressly requires the claim or claims to define the invention: s. 40. In a patent for a combination, such as this is, the most important function of the body of the specification is to show what are the mechanical means which, operating together, produce the result claimed; and how they so operate. This specification does this by referring at once to the drawings, and by describing in elaborate detail the machine depicted in them and the way in which its various parts work to attain this result. But it also emphasizes that this reference to a particular embodiment is by way of illustration and explanation of the invention and is not a definition of it. It refers, among other matters, to what is called "a plurality of floating raking means individually elevated or depressed in response to uneven terrain over which it (scil. the rake) may be drawn". This element - and it is an important element in the machine - is designed to achieve the first of the stated objects of the invention, namely "to provide an improved side delivery rake adapted to adjust itself to uneven terrain". The specification describes and illustrates a method of mounting the raking wheels to that end. It also depicts, and under the heading "Raking Wheel Mounting Modification" describes, an alternative method. And similarly, under the heading "Raking Teeth Modification" there is a description, again by reference to the diagrams, of an alternative form of tines (called "raking teeth" or "spikes"), with a suggestion that, for some purposes, such as cultivating, the teeth should be more robust, and for other purposes, such as raking, more resilient. (at p613)
23. So far, the body of the specification describes the components of the combination and shows in close detail what the inventor calls "the most practical and preferred embodiments" - that is to say what the 1952 Act calls the best method of performing the invention that is known to him, with certain alternative constructions to meet particular requirements. Then follow, under the heading "Operation", paragraphs introduced by the statement: "The operation of a combined hay rake and cultivator constructed as described is as follows". It is not necessary to set out these paragraphs in full. They complete the description of the invention and the manner in which it is to be performed, for they show the interaction of its several components. They also state, by reference to the diagrams, how a machine in the form there illustrated may, it is said, be set and adjusted for either hay raking or cultivation. They point out, too, certain incidental advantages that it is said a machine constructed according to the details of the diagrams has: e.g. ease of turning, and how its raking wheels can be fixed above ground level when it is being moved from place to place on its running wheels. This part of the specification does more than point out particular advantages. It explains accurately the principle on which a finger wheel rake works, using the term "raking means" for the wheels, with their projecting tines or spikes, actuated by ground contact. What it says is: "As the teeth . . . encounter hay and/or the ground, the raking means . . . are caused to rotate by the drag imposed on the teeth. Because of the angular relationship existing between the planes of rotation of the raking means and the direction of movement of the rake, each tooth has a component of movement toward the side of the rake during hay engagement. . . . Thus, each raking means rakes the encountered hay to the side, where it, in turn, is encountered and continued to the side by each successive rearward raking means." (at p613)
24. The appellant put much emphasis on one sentence that precedes the claims. It is as follows: "Although I have herein shown and described my invention in what I have conceived to be the most practical and preferred embodiments, it is recognized that departures may be made therefrom with the scope of my invention, which is not to be limited to the details disclosed herein, but is to be accorded the full scope of the claims so as to embrace any and all equivalent devices and systems". This seems to mean no more than that the invention is not to be regarded as restricted to machines made exactly as described, but that any machine covered by the words of the claims is to be considered as within the scope of the invention. This is little more than a cautiously introduced assertion of the doctrine that a mere substitution of known mechanical equivalents will not suffice to avoid infringement. But the appellant put forward a different view of this sentence and based on it an argument that, briefly stated, ran as follows: it is not possible to spell out from the body of the specification what is the invention as distinct from the particular embodiment of it described: an incomplete description of an invention may sometimes be completed by filling in gaps in the body of the specification by reference to the claims: but that can only be done if the gap which has to be filled is filled by some feature appearing in all the claims. For this proposition the decision of Morton J., as he then was, in United Shoe Machinery Corporation's Application (1939) 57 RPC 71 , was relied upon. It was said that here the claims are so diverse that they could not be treated as by reference completing an incomplete description. This argument was not accepted by Menzies J. He said that in this case "it is possible upon a consideration of the specification as a whole, including the claims, to find a description of the invention; and that, in so far as any claim does not claim that invention, it is itself invalid, but its inconsistency with the general description of the invention does not totally destroy the specification" (1960) CLR, at p 598 . His Honour was, we think, perfectly right in this. The words on which the appellant relies do not really operate to incorporate into the description of the invention in the body of the specification matter which appears for the first time in the claims, and Lord Morton's propositions referred to above are therefore not applicable. (at p614)
25. Turning now to the claims. There are twenty-three in all. The scheme of them is complicated, but on analysis they become clear. Numbers 1 to 10 each commence with the words "In a side delivery hay rake having a forwardly movable draft frame" (or "having a draft frame" or "employing a forwardly movable draft frame"). Then follow words descriptive, with varying degree of particularity and detail, of various mechanical integers. Numbers 11 to 23, on the other hand, each commence with the words "A side delivery rake comprising a mobile frame" (or in some cases "comprising an elongated mobile frame") followed by words describing various mechanical integers. (at p615)
26. The principal distinction between the two groups of claims may therefore be stated as follows. In the first group what is claimed is a mechanism (described by reference to its several integers with differing degrees of particularity), such mechanism being a component of a side delivery hay rake having a forwardly movable draft frame as described. In the second group what is claimed is not a mechanism forming part of a hay rake. It is a side delivery rake itself (not necessarily in these cases a hay rake) comprising a mobile frame (not necessarily a draft frame) having certain characteristics, they being the presence of the same integers as, generally speaking, go to make up the mechanism referred to in the former group of claims. These differences in verbal definition between the two groups of claims have this result: in the first group the invention claimed is a component of a hay rake to be drawn: in the other case it is a rake made up of described components, and this rake could be either drawn or driven, that is to say propelled. (at p615)
27. When the claims are further examined it becomes apparent that, although
they are not arranged in any obvious sequence, there
is a plan in them. They
employ both broad terms of small connotation, and thus extensive denotation,
and descriptions having a large
connotation and, thus, lesser denotation. This
is the result of an attempt to state the nature of the integers of the
combination
in both wide terms and also to describe several particular forms
of some of the integers (being those shown in the embodiment and
the several
modifications of it illustrated and described). And the claims reflect an
attempt to make various combinations of integers
thus broadly and narrowly
stated. The result is a great deal of repetition of language. This makes the
claims, as a whole, seem turgid;
but it does not necessarily create an
ambiguity in individual claims. It is unnecessary to set out all the claims in
dispute. They
may be found in the judgment appealed from. It suffices at this
point to set out the first and second claims. They are as follows:
"(1) In a side delivery rake having a forwardly movable draft frame having a
direction control means operably associated therewith,
a plurality of rotary
raking means arranged in echelon in substantially parallel, erect planes
angularly displaced from the normal
direction of movement of the frame, and
mounting means borne by the frame and individually mounting the raking means
for floating
movement in their respective planes in response to depressions
and elevations in terrain traversed.
(2) In a side delivery hay rake having a forwardly movable draft frame
having a direction control means operably associated therewith,
a plurality of
rotary raking wheels arranged in echelon in substantially erect, parallel
planes angularly related to the normal direction
of movement of the frame, the
rearward portion of each rotary raking wheel except the rearwardmost of said
wheels overlapping the
forward portion of its rearwardly adjacent raking
wheel, means borne by the frame mounting the raking wheels for rotation in
their
respective planes and for individual elevational movement, and resilient
means individually connected to the mounting means and resistive
to weight
imposed thereon whereby the raking wheels lightly engage terrain over which
the rake is drawn and independently rise and
fall in response to depressions
and elevations in the terrain traversed." (at p616)
28. This language, if read apart from the rest of the specification, seems to have no positive meaning; but when read using the body of the specification and the illustrations as a dictionary of the jargon, the meaning of these claims becomes clear and the invention sufficienty defined. (at p616)
29. As it emerges from a fair reading of the specification, the essence of the invention is the mounting in the frame of a hay rake of an arrangement of raking wheels (or a "plurality of raking means"), these being substantially parallel - one behind the other in echelon - standing upright - each set at an angle (other than a right angle) to the line of forward movement of the machine - and each mounted in such a way that it is kept in contact with the ground, but is free to rise and fall referably to the frame - so that notwithstanding any unevennesses in the ground each wheel maintains contact with it with the degree of pressure upon it necessary to ensure that all the wheels revolve and move hay lying on the ground to one side as the machine moves forward. The obvious intention is that the raking wheels should revolve because of their contact with the ground without needing any mechanical aid. That they are to do so determines, without the need for any precise statement, the angle at which - or range of angles within which - they must be set so as to revolve and move the hay sideways. (at p617)
30. Some of the phrases used in these claims were subjected to much careful criticism. But once the nature of the invention has been appreciated it is not to be demolished by finding that particular phrases used could, out of any context, or in other contexts, be ambiguous. It is not necessary to go through all of these criticisms in order to reject them. But some must be mentioned. The reference to wheels "arranged in echelon" and to the overlapping of the wheels described in claim 2 was objected to, mainly because in military parlance an echelon is a formation in which several bodies of troops are drawn up in parallel lines, the front of each being to the rear and to a flank of (that is, clear of) the one ahead. But the word originates simply in the likeness of such a formation, shown diagrammatically, to a step ladder. It cannot be said that a formation of separate bodies in that way would cease to be an echelon simply because some part of a rearward body was covered by the body in front. Moreover, the specification is addressed to hay rakers, not to drill masters; and the illustrations, figures 1 and 2, make plain what is meant by wheels arranged in echelon and overlapping as stated in claim 2. The term "floating movement" was said to produce ambiguity. If there were no context for it, there might be some force in this criticism. But, clearly the term is used, not as a scientific statement of a physical phenomenon, but as a picturesque description of such a mounting of the wheels that they severally maintain contact to the right degree of pressure upon the ground, rising and falling as they encounter depressions and folds in the hay field. (at p617)
31. A more substantial criticism was that directed to the phrase "a forwardly moveable draft frame having a direction control means operably associated therewith". In claims 1 to 10 this is not said to be an element comprosed in the invention but the thing in connexion with which the invention is to be used. But a meaning must be given to it in these as well as in other claims, for it is a factor in determining the scope of the monopoly claimed. It was suggested that the expression "a direction control means operably associated therewith" was limited to something in the nature of the fixed rear wheel that is shown in the diagram of the frame in the illustration of the preferred embodiment. Such a wheel in a frame constructed in accordance with the drawings would maintain the direction of the frame when attached to a tractor. And in some of the claims such a wheel in such a frame is stated as an element of the invention claimed. But, as we have said, the scheme of the claims is that in some of the claims a particular integer is described in general terms, in other what is stipulated is that it should be the particular form of that integer adopted in the preferred embodiment. There is, therefore, no reason at all for construing the generality in one claim as if it were limited by the particularity in another. All that seems to be necessary is that the frame of the rake should, when it is moved forward, maintain its direction, and not swing or yaw. That is because the raking wheels must, as the rake moves, remain at a proper and fixed angle to the line of forward movement. Anything that, when the rake is in operation, is associated with it so as to achieve this result would answer the description. It could, it seems, be either some element on the frame, such as the fixed rudder wheel, or the manner of attaching the frame to whatever source of motive power is associated with it to draw or impel it forward. (at p618)
32. Turning now to claim 3. It is cast in a more particular and more narrow form than the two preceding claims. This merely reflects the common practice of those who draft specifications of descending to more and more particularity in later claims in the hope that, if the earlier be said to be too wide, the later will be valid and effective to catch some infringers. Two statements in claim 3 were made the subject of special attack. (at p618)
33. The first is the description of the raking wheels (here called "a plurality of substantially uniform rotary raking wheels") as "each . . . including a substantially cylindrical rim concentrically disposed the wheel adapted to ride over encountered hay and the like and slightly to compress the same downwardly against the earth and outwardly extended raking teeth borne by the rim for hay engagement". This is, we consider, meant to describe, and is a reasonably apt description of, the essentials of the particular method of fixing flexible tines to raking wheels that is described in detail in the specification under the heading "Raking Teeth Modification" and illustrated in the diagrams by figures 7, 8 and 9. In this method, resilient tines made of spring steel are wound on to and project from a member forming an outer circumference of the wheel. This member is called "a hollow cylindrical support element" in the body of the specification, and it is hollow in the illustration. This claim, in attempting to define the inventor's device for a particular method of fixing raking teeth, does so by stating that the member to which they are attached is to be substantially cylindrical which, we take it, means, in common language, roller shaped, whether the roller be solid or hollow. And, as in this respect the claim is a narrow one and relates to a particular form or embodiment of the combination, we think the monopoly claimed by it should be confined to what is thus particularly described: Walker v. Alemite Corporation [1933] HCA 39; (1933) 49 CLR 643 ; Shave v. H. V. McKay Massey Harris Pty. Ltd. [1935] HCA 39; (1935) 52 CLR 701 ; Radiation Limited v. Galliers & Klaerr Pty. Ltd. [1938] HCA 17; (1938) 60 CLR 36, at p 52 . It was further suggested that the whole phrase quoted above, when grammatically read, means that the rim is "to slightly compress the hay" and the teeth to engage it. But the words following "adapted to" refer, we thing, to the raking wheel as a whole, that is, with all its components. (at p619)
34. The other part of claim 3 that was much debated was the requirement that there be "means borne by the frame mounting the said raking wheels for rotation and independent elevational movement in their respective planes, and resilient means interconnecting the frame and the individual mounting means and urging the individual raking wheels upwardly with a force less than the weight of said wheel". This phraseology seems almost to labour to produce obscurity. Yet, despite the efforts of the draftsman, what is meant emerges. It is that each wheel must be mounted on the frame by a mounting so constructed that the wheel will go round, and that the wheel must be so sprung or counter-balanced that it will ride over the ground in the way required. The distinction in this respect between claims 2 and 3 is that different forms of springs are envisaged (although no particular form is insisted on). Claim 2 is drawn having in mind a mounting for the wheels, such as illustrated in figure 2 of the diagrams, in which the wheels are suspended from helical springs. In claim 3 the modified form of raking wheel in mind is illustrated in figures 5 and 6; and in this a compression spring is employed to keep the wheel in the required adjustment to the ground. (at p619)
35. Turning now to the last of the claims in question on this appeal - claim 22. It is of a different order from the others and must be set out in full: "A side delivery rake comprising a mobile frame, means for connecting said frame to a prime-mover, means attached to said frame supporting said frame for ground traversing movement, direction control, means on said frame for resisting forces tending to shift said frame angularly from the line of travel of said prime-mover, rotary raking means mounted on said frame in echelon arrangement, said raking means comprising wheels each including a flat treaded rim and teeth extending a fixed distance radially from said rim, and a hub and axle vertically shiftable relative to said frame, the axis of said hub and axle being disposed at an angle to the said line of travel, and a counter balance element operatively associated with the hub and axle partially reducing the effective weight of said wheel on ground encountered by said wheel". (at p620)
36. Much was said about the meaning of the words "direction control, means" - it is agreed that the comma after the word "control" is a mistake - "on said frame for resisting forces tending to shift said frame angularly from the line of travel of said prime-mover". But here again all that is demanded is some means on the frame to correct the natural tendency of the machine, when it is moved forward, to swing into line with the raking wheels revolving on the axis of its forward movement instead of at an angle thereto. (at p620)
37. The words in claim 22 "raking means comprising wheels each including a flat treaded rim" also came in for much discussion. This expression is certainly clumsy. It seems to mean no more than that the rim of the raking wheels from which the teeth project is to be flat on its outer surface - that is to say, the part that in an ordinary wheel would be called the tread is to be flat, not curved. There is no justification for reading the word "treaded" as meaning having indentations such as are in the rubber tyres of a motor vehicle. Why the claim should require a flat treaded rim is not apparent. Probably this is the result of an attempt to describe the precise form of the wheel depicted in figure 2 or figure 4 without distinguishing accidentals from essentials. The statement that the wheel must have "a hub and axle vertically shiftable relative to said frame" seems to be merely alternative jargon to that previously used to mean that the wheels can go up and down. Notwithstanding the quite unnecessary use of much pseudoscientific phraseology, none of the claims in dispute is so obscure that it cannot be said to define an alleged invention and to do so consistently with the body of the specification. Before going to the objections to the validity of the claims, it is convenient, now that their proper construction has been considered, to go to the question of their infringement, taking the claims in the order 1, 2, 3, 22. (at p620)
38. The defendant's machine, the Bisley Finger Rake, has raking wheels. They are arranged in echelon, substantially parallel, erect and angularly displaced from the normal direction of movement of the rake when in operation. They are individually mounted on members borne by the frame, enabling them individually to rise and fall in response to depressions and elevations in the ground. They revolve as a result of contact with the ground. The angle at which they are set relatively to the direction of movement results in the hay being delivered to the side of the rake. The only question is whether these integers, so arranged and combined, are "in a movable draft frame having direction control means operably associated therewith". They are in a movable draft frame. That frame has, as Menzies J. pointed out, means for attaching it to a tractor so that the attitude of the rake to the tractor will be determined and that, when in operation, the rake will follow the tractor held in that attitude. His Honour's conclusion that this was sufficient was, we consider, correct. We would add only that the suggestion that the means of attachment for coupling the rake to the tractor might be described as part of the tractor instead of as part of the rake, could make not the slightest difference. (at p621)
39. Claim 2 is also infringed. Claim 3 is not infringed. The raking wheels of the defendant's machine have outer rims from which raking teeth or tines extend, but the rims are not "cylindrical" in the sense in which the claim uses that term: and, as we have said, the inventor has, perhaps needlessly but quite explicitly, made this a requirement. Furthermore, the wheels of the defendant's rake move the hay by the action of long resilient tines. They can hardly be said to be "adapted to ride over encountered hay and the like and slightly to compress the same downwardly against the earth". (at p621)
40. His Honour held that claim 22 was not infringed. He considered that the raking wheels of the defendant's rake have not "a flat treaded rim and teeth extending a fixed distance radially from said rim". He also thought the hub and axle of the raking wheels in the defendant's rake are not "vertically shiftable relative to said frame", because they go up and down in an arc. And the spring, he thought, was not a "counter balance element operatively associated with the hub and axle". The tines are bent backwards and therefore do not, throughout their lengths, extend radially in a strict geometrical sense, but we think that only by an immaterial variation do they depart from that description. The rim, that is the outer rim, is flat on the side of it which would be the tread of the wheel if the tines were not attached. As to the phrase "vertically shiftable", we think it means no more than that the hub and axle go up and down relatively to the said frame and that they could be brought to a position vertically above their lowest position. That in going up and down they describe an arc does not, we think, matter. The spring in the defendant's machine does have the effect of a counter-balance of the wheel, and it does so by its operation upon a projection from a member, part of which forms the axle. On the whole we think, therefore, that claim 22 is also infringed. (at p621)
41. The next questions that arise are whether or not any of these claims 1, 2 and 22 which we have held to be infringed, is invalid because it was obvious or not novel. It is enough to say that in considering these issues together we are not to be taken as expressing any opinion concerning the view that has been put forward that since the Patents Act 1952 all former distinctions between novelty and subject matter are obliterated or that alleged paper anticipations stand in the same position as matters of common knowledge. We think that it is clear from the whole of the evidence that in 1947 the basic idea of the plaintiffs' invention was far from obvious. And as to the several matters put forward as anticipations, his Honour carefully examined these. We agree in substance with what he has said about them and do not think it necessary to add anything. We agree that a fair reading of them leaves the impression not of anticipation but rather that, if they represent the closest that the prior art got to the plaintiffs' invention, that invention was a considerable step forward. There is no doubt that the invention is useful in the sense that word has in patent law. (at p622)
42. For these reasons the appeal should be dismissed and the cross-appeal allowed so far as to declare claim 22 to be valid and infringed. (at p622)
ORDER
Appeal dismissed with costs.Injunction varied by substituting for the words and figures "claims 1 and 2" the words and figures "claims 1, 2, or 22".
Order varied so far as it certifies that upon the trial the validity of claims 1 and 2 came in question by adding after the words and figures "claims 1 and 2" the word and figures "and 22".
Cross-appeal otherwise dismissed with no order as to costs.
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