Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65; (1968) 119 CLR 156 (21 October 1968)

HIGH COURT OF AUSTRALIA

SAMI S. SVENDSEN INC. v. INDEPENDENT PRODUCTS CANADA LTD. [1968] HCA 65; (1968) 119 CLR 156

Patents

High Court of Australia
Kitto J.(1)

CATCHWORDS

Patents - Application - Priority date - Convention patent - Amendment of specification - New matter disclosed as result of amendment - Whether amended specification fairly based on matter disclosed in basic application - Specification - Description of invention - Whether inventive step sufficiently identified - Patents Act 1952-1960 (Cth), ss. 40 (1), 45, 159A (1).

HEARING

Adelaide, 1968, September 16, 17;
Melbourne, 1968, October 21. 21:10:1968
APPEAL under the Patents Act 1952-1960 (Cth).

DECISION

October 21.
KITTO J. delivered the following written judgment: -
This is an appeal to the Appeal Tribunal under s. 60 (5) of the Patents Act section dismissing the appellant's opposition to the grant to the respondent of a patent for an alleged invention entitled "Sausage casing holder". The appellant is, in my opinion, entitled to be heard in opposition to the grant. (at p157)

2. The application was for a Convention patent based upon a patent granted in Canada on application made on 22nd April 1961. Accordingly the complete specification which accompanied it indicated that date as the priority date for each of the claims it contained. The application and specification were amended under s. 49 after objections had been made by an Examiner, and as amended it was accepted on 29th May 1964; but in respect of each of the fifteen claims that remained after the amendment 22nd April 1961 was still indicated as the priority date. (at p158)

3. The appellant lodged a notice of objection upon the grounds allowed by pars. (e) to (i) inclusive of s. 59, and the Deputy Commissioner who heard the case upheld the opposition to two only of the claims, namely claims 13 and 14. In respect of those two claims he sustained the opposition upon the ground specified in par. (i), holding that they failed to comply with the requirement of s. 40 (2) that the claims of a specification shall be fairly based on the matter described in the specification. He allowed the respondent an opportunity of seeking leave to amend those claims in order to overcome this objection, and at a later date, amendments having been applied for and allowed, he dismissed the opposition and directed that a patent be sealed. (at p158)

4. The matter described in the specification was an invention of a unit for so holding a sausage casing, or sausage skin, made of gut, as to facilitate the introduction of sausage meat into it by means of a nozzle, or stuffing horn as it is called. An essential feature of the invention as the Deputy Commissioner interpreted the specification was the provision of at least one tab, or ear, by which the unit might be drawn on to the nozzle. It was because claims 13 and 14 as originally framed omitted all reference to a tab or ear that the Deputy Commissioner upheld the objection to them; and it was only because the amendment limited each in the way in which the other claims were already limited, namely by prescribing "a tab projecting beyond the gut for gripping to draw the sleeve over the stuffing horn" that he dismissed the opposition to the grant. (at p158)

5. The Deputy Commissioner's interpretation of the specification was plainly right. The fourth paragraph of the body of the specification is a consistory clause.

"The present invention", it says, "consists of a holder
for casing gut, comprising a pliable waterproof sleeve for
receiving a shirred length of casing gut, said sleeve being
provided at one end with at least one tab for gripping to
draw the sleeve over a stuffing horn."

The description by reference to drawings, after describing the holder as an elongated, pliable, but semi-rigid, flat tube, having upper and lower walls as shown, says in relation to "a preferred form of holder":

". . . at least one of these walls, preferably both, is provided
at one end with an ear or tab which can be provided in the
manufacturing of the form by cut-outs in the margins of the
tube."

And it goes on to say that preferably the ear or tab is provided with an eye which is adapted to engage a hook on the stuffing horn. The first claim defines the invention in the terms of the consistory clause, and the next eleven claims, while introducing variations, follow its example in treating the ear or tab as an essential feature of the invention. Claims 13 and 14 are for "a sausage casing unit", and each, though describing the unit in its own way, insists in its amended form, as I have mentioned, upon the tab as a feature of the invention. (at p159)

6. A reader of the specification who knew nothing of the prior art would gain a clear impression that the quality of invention was being claimed for the whole idea of a holder for casing gut, having an ear or tab and various other features including a stiffening insert. He would not learn that the idea of a holder was old and that the provision of the tab to facilitate drawing the holder on to the stuffing horn was the only advance the inventors had made. That the holder itself, including a stiffening insert, was not new appears clearly from the evidence, and particularly from the evidence concerning the United States patent No. 1,538,460 dated 19th May 1925 in the name of Frank V. Brecht. Some passages from Brecht's specification may be quoted as showing rather more clearly than does the specification now before the Court what were the difficulties which the use of a holder would overcome and the general manner of its employment.

"My invention relates to improved means and method for
handling, shipping and applying to stuffing machines, casings
made from animal intestines, which are used as containers for
foods, including sausages and other packinghouse products.
In accordance with present practice, casings, after being
cleaned and prepared for use, are usually gathered together
in bundles and salted for storage and shipping. Being very
small in their collapsed state, and very light and flexible
they become twisted and tangled and much time is consumed
in separating them and applying them, without tearing, to the
spouts of the stuffing machines in the sausage rooms. It is the
object of my invention to entirely avoid these difficulties, to
reduce the cost of shipping and handling, and also to provide
means whereby the casings can be applied quickly to the stuffer
spout without any possibility of tearing them. In carrying
out my invention an animal intestine, when cleaned and
prepared for use as a casing, is applied either by hand or by
a machine, to a collapsible, water-proofed tube . . . of suitable
material, such as paper, the tube being of sufficiently smaller
diameter than the casing . . . to permit the formation of
circumferential folds in the casing whereby a casing may be
mounted on a tube whose length is much less than the length
of the casing and less than the length of the spout of the stuffing
machine. After being mounted on the tube, the casing is dried
and the assembled casing and mounting tube is flattened. . . .
In this form casings may be closely and economically packed
for shipment and yet each will remain entirely free from
others and there will be no difficulty in separating them.
Prior to the application to the stuffing machine, the mounted
casings are immersed in warm water to again render them
soft and pliable, and then by pressure on the edges or otherwise,
the end of the mounting tube is opened to receive the end of
the stuffer spout . . . of the filling machine and is pushed
over the spout. The tube may be quickly and readily
withdrawn
from the casing which is then properly mounted on the
spout for filling in the usual manner. Of course the removal
of the mounting tube before the filling of the casing, is not
essential if the tube is prevented, by suitable means, from
slipping off the spout." (at p160)

7. One of the three persons named as the actual inventors in the respondent's Australian specification, a Mr. Flomen, has made a statutory declaration which is in evidence in this appeal. He describes the known method of feeding sausage casings on a holder on to a stuffing horn, and after saying that with polyethylene tubes used as casing holders a skilled operator can normally fill casings at the rate of 500 lbs. an hour he goes on to describe the invention which he and his collaborators made as being a new type of casing holder shaped at one end to provide a tab-like portion which could be readily gripped by an operator to assist the process of feeding the casing on to the stuffing horn. He says that the operator's speed "can be increased on average to double, that is, about 1,000 lbs. per hour, when such tabs are provided". He says categorically that "This improvement is the subject of the claims of the specification under opposition". He quotes claim 1 of the specification as setting out the invention and adds: "The tab is intended to be gripped by the operator and has to be of a shape for such convenience." After dealing with the "tab" aspect of some of the other claims he says:

"I believe it should now be apparent from the above survey
of the operation that the open end of a tube is not of a suitable
shape for gripping to draw the tube over a stuffing horn. . . .
When an open-ended tube is drawn over and against a stuffing
horn, the edges of the tube are tight round the horn once the
tube has been moved a certain distance in the direction of
enlargement. The inventive concept of using a tab or gripping
portion is to avoid this difficulty."

Brecht's invention he distinguishes simply on the ground that in it "there is simply no disclosure . . . of the provision of tabs or gripping portions at the end of the paper tube"; and on the same ground he denies that either an invention of his own for which a Canadian patent No. 537,706 was granted in 1957 or an invention of one Vogt for which United States patent No. 2,423,861 was granted in 1947 anticipated the invention now in question. "My invention", he says, "essentially resides in forming gripping tabs on to the end of a sleeve or tube." And again: "Mr Svendsen (the appellant's president) is perfectly free to make use of a simple sleeve without any tabs or gripping portions at the end." Later in his declaration Mr. Flomen, after saying that up to that point he has limited his discussion to the common subject of the claims of the respondent's specification, "namely the provision of a pliable waterproof sleeve having a tab or gripping portion at one end for gripping to draw the sleeve over the stuffing horn", proceeds to deal with "the subsidiary features", and describes the "eye" which may be provided in the tab or tabs as used for lacing several holders together and, "if desired", for clipping the holder on to the stuffing horn. (at p161)

8. It could hardly be made clearer than Mr. Flomen has made it that the invention which he and his colleagues assert consists solely in the provision of a tab or tabs for pulling a sausage-casing holder of a known kind on to a stuffing horn, and that the provision of an eye on each tab forms no part of the invention though it is seen to be useful either for engagement with a hook on the stuffing horn (if there happens to be such a hook) or for tying a number of holders together in a bundle. I shall have to consider whether a patent ought to be granted upon claims which extend to a holder with a tab, or a sausage casing unit with a tab, when the tab alone is the invention; but for the moment it is convenient to observe upon another important feature of the case, namely that the specification of the basic Canadian patent does not so much as mention the provision of a tab or ear for the purpose of being gripped in drawing the holder on to the stuffing horn. There is provision for an ear at one end of one or both of the walls of the holder, "having a connecting eye adapting it for temporary attachment to the stuffing horn" - "adapted to engage a hook on the stuffing horn". Of the twenty-one claims, some mention as a feature of the invention "an ear having a connecting eye", some "a connecting eye for connection to a sausage-stuffing tube", and others "connecting eyes" for other purposes. But none mentions a tab or ear without an eye in it, or mentions a purpose of the tab or ear save as the thing forming an eye. Nothing more is taught than that it is an advantage to have a connecting eye in an ear, that is to say a hole in a projecting piece of material. No one would gather from this document the idea of having an ear suitable as regards size and strength for being used as means of pulling the holder on to the stuffing horn. In my opinion, the Australian specification, so far as it claims a holder or unit with a tab adapted to be so used, as distinguished from one serving merely as the surround of an eye, is not "fairly based on matter disclosed in the basic application", and therefore the priority date of the claims is not, by virtue of s. 141, the date of the making of the basic application, namely 22nd April 1961, but is the date of lodgment of the Australian specification, namely 11th May 1961: s. 45. (at p162)

9. But that is not the only consequence of the fact that in the Australian specification the claims other than 3 and 6 are not limited to a holder in which each tab is provided with an eye. (I do not exclude claim 15, because the holder which is "hereinbefore described with reference to the drawings" has the eye "preferably" only; so that a holder need not have an eye to be substantially as described.) The complete specification originally lodged in Australia, on 11th May 1961, which was substantially in the same terms as the Canadian specification, did not disclose a tab except as a thing to form an eye by being pierced. It was only as a result of the making of the amendment which (save as to claims 13 and 14) brought the specification into its present form and was applied for on 25th May 1964 that the specification disclosed the new matter consisting of the provision of one or more tabs or ears of a kind suitable for gripping in order to draw the holder on to the stuffing horn. The same is true in regard to the amendment of claims 13 and 14 which was made at some date in 1967 between 13th February and 23rd August. Because in each instance the new matter was in substance disclosed in the specification as a result of amendment of the specification, s. 159A (1) in my opinion operates to make the priority date of each claim (other than 3 and 6) 25th May 1964 or later, and not either of the dates in 1961. (at p162)

10. This is not a permitted ground of opposition to the grant of the patent, for it is not one of the grounds mentioned in s. 59 (1); but if the Deputy Commissioner had found that the priority date for any of the claims was a date other than 22nd April 1961 he would have been obliged by s. 61 (2), in deciding the case, to treat the date he found as the priority date for that claim, and consequently to decide the issues of prior publication, obviousness and want of novelty in relation to that date. (at p163)

11. The materiality of this is that before 25th May 1964 there had occurred in Australia certain events upon which the appellant relies for a decision favourable to him on the three issues referred to. One was that on 17th October 1962 an application was made by the appellant for an Australian patent based on a United States grant in respect of an invention for a "means and method of packing sausage casings". The accompanying specification, which was published on 23rd April 1964, provided for shirring a casing over a thin flexible tubular member, preferably of a synthetic film material such as polyethylene, having a slit cut in the material of the tube, adjacent to each of its ends, "to form a gripping portion". The slit, the specification said, has loose corners adjacent to it, providing "convenient gripping areas which facilitate the pulling of the tubing over the end of the stuffing horn". One of the claims (No. 4) was for a means for preparing casings for shipment comprising inter alia a tubular member, "said tubular member being formed with a longitudinal slit extending from adjacent one of its ends towards its other end". Thus not only were there provided two tabs or ears, but the use of them for gripping in order to draw the tube over the stuffing horn was specifically mentioned and their size and strength were impliedly indicated as appropriate for that purpose. Even assuming in the respondent's favour that each of the respondent's claims in the specification in question in this appeal should be read as limited to the only invention that even Mr. Flomen suggests that he and his collaborators made, namely the provision of a gripping tab or gripping tabs, it seems to me to be established that the invention was published in Australia on 23rd April, 1964, before the true priority date of any of the respondent's claims. (at p163)

12. Moreover it appears from an affidavit of Thomas Lyall, which has put the Court in possession of some important information that was not before the Deputy Commissioner, that more happened in Australia before 25th May 1964 than the mere publication of the appellant's specification. A company of which Mr. Lyall has been a senior executive for many years is a Sydney manufacturer of sausage casings and a supplier of them to sausage manufacturers. It seems that until early in 1963 nothing in the foreign specifications of Brecht, Flomen or Vogt had led to any departure from the traditional course of supplying sausage casings in hanks. The sausage manufacturer soaked the hanks in water for some hours and then, after dealing with any tangles that occurred and at some risk of breakage, sleeved a hank on to the stuffing horn by pulling opposite sides of the hank apart at one end and working it up the horn by alternate hand-pulls of four to six inches per movement. The publication of the respondent's specification in 1961 had apparently caused no change in the practice (a licence of course would have been required for an adoption of the invention there disclosed), but early in 1963 Mr. Lyall's company heard of the appellant's invention for which the 1962 patent application had been made in the United States, and on 16th April 1963 it obtained from the appellant a licence to put up sausage casings by the appellant's method and to sell such casings in Australia. It proceeded to act on the licence, the method it used involving, as is said in Mr. Lyall's declaration, "a polyethylene sleeve or tube approximately thirteen inches in length and one and five eighths inches in flat width, having at one end a fold-sealed nose with a diagonal cut or opening on each side and the other end of the tube being cut back one to one and a half inches on each side to form two pull-tabs". In July 1963 the company commenced putting up, packaging and selling sausage casings according to this method ; and it still does so. The sausage manufacturers to whom the company has supplied such casings have always used them as above described. On these facts the objection of want of novelty must be sustained as regards each claim of the specification, even if it be read as claiming only the invention which Mr. Flomen says is disclosed. (at p164)

13. I return now to the requirements of s. 40 (1), namely that a complete specification (a) shall fully describe the invention and (b) shall end with a claim or claims defining the invention. If, as I find from Mr. Flomen's declaration, there was no inventive step taken unless it was in the provision of a tab or ear, one must consider whether an application for a patent should be granted, if there is no other valid objection to it, where the complete specification (a) in the body of it describes the invention as being of the entirety of a holder for casing gut, comprising a pliable water-proof sleeve for receiving a shirred length of casing gut, the sleeve being provided at one end with at least one tab, and (b) in each of its claims defines the invention in similarly wide terms. The provision of the tab or ear was at best an improvement on a known device, not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specification as being for a new combination of old integers ; they are for the known device of a sausage casing holder (or unit) with an improvement in a particular part of it, consisting of an extension of the walls with a cut-out or cut-outs made in it so that what remains of the extension, namely the tab or ear, may be used for gripping to pull the holder (or unit) on to the stuffing horn more easily and therefore more quickly than before. Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s. 40 (1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes ; and, secondly, that the claims themselves offend against s. 40 (1) by defining as the invention something that was much more extensive than the invention : see Fletcher Moulton on Patents (1913), pp. 85 et seq., Frost, Patent Law and Practice, 4th ed. (1912), pp. 236 et seq., May v. Higgins [1916] HCA 8; (1916) 21 CLR 119 . This is a ground upon which, in the public interest even if not for any other reason, the Deputy Commissioner could, and in my opinion should, have upheld the objections and refused to grant a patent upon the specification in its present form, even if no ground of opposition were established except that provided for by s. 59 (1) (i) : cf. Wadham's Application (1910) 27 RPC 172, at p 173 , and see other cases cited in Terrell on Patents, 11th ed. (1965), par. 439. I do not mean that in every case of opposition it is a function of the Commissioner to investigate for himself the question how the actual invention compares with the invention as claimed. What I have said is based upon the circumstance that the evidence of Mr. Flomen, one of the actual inventors, contains clear admissions, indeed positive assertions, of facts which leave no room for doubt that the specification both in its description and in its claims disobeys s. 40 (1). The nature of the disobedience is such that the specification is likely to mislead, and for that reason the application ought to be refused in the exercise of those general and inherent powers of the Commissioner and the Court which Lord Morton explained in Alderton and Barry's Application (1941) 59 RPC 56, at pp 61-63 , even if s. 51 (1) did not contain ground (i). (at p165)

14. In the result I hold that the appellant's opposition on the grounds in pars. (e), (h) and (i) of s. 59 (1) should be sustained. I propose to allow the appeal, set aside the decision of the Deputy Commissioner and order that the application for a patent be refused. (at p165)

ORDER

Appeal allowed with costs. Decision of the Deputy Commissioner of Patents set aside. Order that the objection be sustained and the application for a patent refused.

Order that the respondent pay to the appellant such amount as the Commissioner or the Deputy Commissioner shall determine in respect of the appellant's costs of the opposition in the Commissioner's office. Usual order as to exhibits.