CATCHWORDS \ Patent - opposition to grant - refusal to grant - appeal - combination patent - novelty - paper antici- \ pation - obviousness - expert evidence. Patents Act (1952) s.59(1)(g), (h) (i) DENNISON MANUFACTURING COMPANY v. MONARCH MARKING SYSTEMS INC. VG No. 130 of 1981 Smithers, Fox and Franki JJ. 28 July 1983 Melbourne. ha THE FEDCRAL COURT OF AUSTRALIA ) VICTORIAN DISTRICT AEGISTRY } VG No. 130 of 1981 Ae annem . GONERAL DIVISTON ) On apoeal from a Judge of the I Ae cl Supreme Court cof Victoria BETWEEN: DENNISON MANUFACTURIN COMPANY Appellant AND: MONARCH MARKING SYSTEMS Respondent ORDER JUDGES MAKING ORDER: Srithers, Fox and Frank WHERE MADS: Melbourne DATE: 28 July 1983 THE COURT ORDERS THAT: 1. The appeal is dismissed. 2. The appellant is to pay the respondent's costs of the appeal and the costs of the application for leave to appeal. 3. The tame within which the appellant 1s at laberty to submit to the Commissioner proposals for amendments to the specification is extended until]. three {3) months from today or for such further period as the Commissioner may allow. oe IN THE FEDERAL COURT OF AUSTRALIA ) ) . VICTORIAN DISTRICT REGISTRY ) VG No. 130 of 1981 ) ) GENERAL DIVISION On appeal from a Judge of the Supreme Court of Victoria Between: DENNISON MANUFACTURING COMPANY ° (Appellant) And: MONARCH MARKING SYSTEMS INC. (Respondent) CORAM: Smithers, Fox and Franki JJ. 28 duly 1983 REASONS FOR JUDGMENT SMITHERS J.: This is an appeal, with leave, from the Supreme Court of Victoria (Fullagar J.) in which a decision of the Acting Deputy Commissioner of Patents refusing the grant of letters patent to the appellant was upheld. I have had the advantage of reading the reasons for judgment herein of Fox and Franki Ju. On a question of construction of the specification and claims in suit and the earlier Bayetto specification I have been brought to a conclusion at variance with that of my brethren. However the framework of the appeal and the iaw relating to the matter are discussed in the reasons of Franki J. and the relevant facts are stated therein. As a result I take the liberty of refraining from re-stating those facts and of regarding that statement thereof as available for reference in these reasons. It was common ground before this Court that a grant should not be refused in respect of any claim upon the grounds of novelty or obviousness unless it be clearly shown to the Court that the ground has been made out. It is to be observed also that the Bayetto specification has to be examined in the light of what it discloses-and not of what it claims. The general question arising in the appeal is the extent to which the invention the subject of the claims in suit was anticipated by the Bayetto specification. To my mind the critical threshold questions are: (a) whether the Bayetto specification discloses an invention of which the provision of functional flanges in a plane perpendicular to the diametral slit is an essential integer; and (b) iff that question is resolved in the affirmative, whether the specification in suit excludes such flanges from the integers of the invention claimed therein. a ee rs a eee me an carne The answers to these questions depend on the proper construction of the relevant specifications and claims read as a whole. In general terms the article constructed in accordance with either the Bayetto specification or the specification in suit comprises a device for holding articles of various kinds together by enclosing them in a loop which when pulled tight will not become loose. This result is obtained by using a filament with one end attached to the surround of a socket and passing the other end through the socket. There are protuberances at positions along the filament which expand the socket as they pass through it and are restrained from backward movement by tthe closing of the lower part of the socket behind a protuberance after it has passed through. It is made very clear in the Bayetto specification that the object of the invention claimed therein was to remedy the disadvantage inherent in articles constructed in accordance with the prior art that great force was required to be exterted in pulling the thread through the socket. Each protuberance had to deform elastically to pass through the narrower opening, in the socket, in the solid head. The expression "head" is used as referring to the solid surround of the cavity in the socket. It was pointed out that ee 4. repetition of the operation of using a device constructed according to the prior art was calculated to cause injury or hurt to the hand of the operator. It was stated that the invention had the object of remedying this disadvantage by easing the passage of the heads through the socket. The specification continues: "It consists of slitting the head diametrally over a certain length from its outlet opening, in order to give it elasticity, this measure preferably being combined with a conical shape of the protuberances, bevelled in their front part (in the direction of the tightening movement) and, on the contrary, terminated behind by stepped surfaces at an abrupt angle. In addition the elastic opening of the slit of the head by the passage of each protuberance can be aided by the provision on the rear part of the head, of flanges resting against the fingers of the hand holding this head while the other hand pulls the thread to tighten the loop. It is seen at the forefront of this specification that two measures are envisaged as useful in achieving the object of easing the passage of the protuberances through the socket, namely the introduction of the slit and the flanges. It was contended that provision of the flanges is not to be understood as an essential integer in the Bayetto invention. This was said to follow from the words: ",+«. the passage of each protuberance "can" be aided by the provision on the rear part of the head, of flanges ...". These words are said to indicate that the inventor is saying "the object of my invention can be achieved without flanges, 5. although perhaps better achieved with them, and accordingly flanges are not an essential integer of my invention.". The specification must be construed as a whole and there are various indications that the inventor is saying that flanges are essential. As to the words last quoted it is a question whether there should be understood after the word "provision", the words "if you care to make such a provision", or the words "which are part of my invention with their function as stated by me.". I think the latter. This view is supported if the specification is read as a whole. When the- part to be played by the flanges is described, there is no hint that they might possibly not be there. After speaking of the protuberances sliding easily over the two halves of the channel in the head of the socket and of its outlet opening, "spreading them apart, the said halves being separated by the slit 2 and consequently being able to bend elastically on the head, the specification continues "the pressure exerted by the fingers according to 7-7 on the flanges 3 contributes to this inflection and facilitates further the passage of the protuberance". The numerals in this passage refer to a drawing provided "by way of example". The inflection refered to is the outward bending of the halves elastically on the socket. The flanges can only contribute to this by lifting the sides of the socket opposite the slit to offset the distortion and puckering which otherwise must impede the inflection because of the shape and vee - wwe rg - ee eo - wes oe eee ee ee 6. stiffness of the barrel vault construction of the lower part of the socket. When one reaches what is called the summary, there is again support for the view that the flanges are claimed to be an essential integer of the innovation. A summary may be expected to include only what is essential. The summary states that "the inventor ... bears in particular on the following points: (1) ee (2) eee (3) The slit head contains, at the back, two flanges which by their pressure ..." It may be mentioned that there is no hint to the contrary if reference is made to the actual French text. The words are "le passage de chaque protubérance peut Stre aidée foe gs : par la prevision sur..la tete ... The expression "peut - A etre" means "perhaps", but the words do not appear to be used in that sense. The literal reading is that the passage of the protuberances is able to be helped by the provision of flanges. There is nothing optional or provisional about this. ' The words speak of something provided which, according to the invention, is able to help, not of something which may help if you choose to provide it. Thus, I am in agreement with the learned trial judge Te who concluded that a skilled Australian reader of the Bayetto specification would treat each of the three paragraphs of the summary as stating an essential integer of. Bayetto's invention, that is to say, "he would understand that the diametral slit in the channel head was essential and that the shaping of the protuberances so as to be bevelled at the front an@ rounded and abruptly shaped at the back, and also the integer of the flanges having the function set out, were all essential parts of the invention of Bayetto". As to the second question I am persuaded that on the proper construction of the specification and claims in suit the invention claimed is one comprising the integers specified and that the claims impliedly exclude other integers such as functional flanges. It may be observed that it is highly Likely that if one came to the current problem otherwise than via the Bayetto specification, resting quietly in the French language in Canberra, as the claimant in suit did, it would not readily have occurred to him that the claimant had in mind to claim a connector of which flanges were a component. Nevertheless a claim which did so expressly, or, by failure to limit the shape of the head by excluding functional flanges, impliedly, would be anticipated by Bayetto. It is necessary to enquire, therefore, whether, on their proper construction, the claims in suit are limited to articles incorporating only the integers specified in the claim. The express words of definition or delimitation of the invention and the claims 8. state that the invention, the object of which is to provide a device for joining articles together, "comprises" the specific integers referred to in the consistory clause and claim one. It goes on to describe the functions of the integers in a way which demonstrates that these integers, functioning in the manner indicated, perform all that is required to achieve the object of the invention. No flange is mentioned. The claim to any other integer such as a functional flange is impliedly disclaimed. The limitation by function is to be seen in the words of the consistory clause and claim one, in which, after designating the integers other than the protuberances, called "heads" in the claims in suit, on the filament, the claim continues: " ,.s«. and a series of heads distributed along the filament to snap through the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket so that insertion of a head produces expansion of said prongs and, after a head has been inserted therethrough, said prongs. snap in behind the head to restrain withdrawal of the head from the socket." Accordingly, it is to be seen that the claim is not limited merely "by specifying integers, but is limited -by reference to the method by which they operate and the resuit they are to achieve. It appears to me that there is an implied disclaimer of other integers and thus of flanges as disclosed in the Bayetto specification. The specified integers involve a mode of opecation of the invention wee eee 9. critically different from that of the claims in suit. In relation to an article operating according to the methods disclosed in the claims in suit such flanges would be irrelevant. The whole thrust of the claims is that they specify a result to be achieved by the integers it specifies operating in combination in the manner specified and by no other method. Functional flanges are therefore outside the scope of the claims. Had the author of the claims in suit been aware of the Bayetto specification no doubt he would have expressly disclaimed any interest in flanges. The fact that there is an implied limitation of the integers claimed arises from his concentration on the method of the functioning of his set of integers and the result achieved. It would seem to me that if it be not correct so to discern the implied disclaimer it would be appropriate to give leave to amend. The construction of claims by reference to the specified result of their operation would seem to be valid. As was, said by Barwick C.J. and Mason J. in Interlegqo A.G. wv. Toltoys Pty. Ltd. (1973) 130 C.L.R. 461 at p.480:- "The second objection is that the claim is wide enough to embrace a coupling method not disclosed in the specification (e.g. a clip) which would keep a primary projection in its appointed place. Again, we do not agree with this unterpretation of the claim. It speaks of "hollow blocks ... adapted to be connected together by means of projections", indicating that it is confined to LO. methods of clamping effected by means of the characteristics to which it refers, including among them the walls of the hollow blocks. The claim asserts a monopoly limited by reference to the result of incorporating in the construction of the hollow blocks the suggested relationship betweeh primary and secondary projection, the result being that at least one primary projection is 'clamped against" at least one secondary projection. Tt is permissible to limit a claim by reference to result {see No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 452 RPC 23L), so long as, in the case of an article, the limitation is "sufficient to characterize the construction of the article claimed" (Mullard Radio Valve Co. Ltd. v. British Belmont Radio Ltd. (1938) 56 RPC I, at p.16. As we have ovserved, the claim is in our opinion sutficiently limited." It would seem to be a consequence of the specification in a claim of particular integers described as integers producing a particular and the only desired result that all other integers that might possibly have been claimed in combination therewith are impliedly if not expressly excluded. They are irrelevant to the inventions claimed. It is apparent that the outer perimeter of the surround of the cavity in the head of a connector according to the claims in suit might be of any shape and that the claim extends to the specified integers operating as stipulated in relation to a head whatever its shape, and even including non-functional flanges, and whatever its size. But in this respect assistance is to be found in the decision in No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231. 'That was a case concerning a patent for "an ash receptacle which without the aid of movable parts retains the smoke rising from a? "bem yee il. objects thrown into it." It was said that the size of the receptacle was not specified. As to this Lord Hanworth M.R. said at pp.237-8, "It is important, I think, to bear in mind that the Patentee is talking of an ash receptacle. That means, that within the limits of the ordinary receptacle, it would be marked by what I may call an ordinary size. It would neither be Brobdingnagian nor would it be Lilliputian. Tt is to be what one might call a conventional ash ' receptacle. ... It is quite true that the dimensions are not stated either relatively to the shaft, or by any other measurement. ..-_ ; It is claimed that that is so vague that there is not sufficient indication by the Patentee of what \ is his patent, no sufficient indication of what ' the size is to be; and it is only to be discovered by the result which is aimed at. ... | It appears to me that, if a just and fair ' interpretation is given to the description, and ' ene bears in mind throughout that you are ' constructing an ash receptacle for smokers' use, there is a sufficient explanation of what the dimensions are to be. It is not an objection that the dimensions should be selected by reference to the results as one sees when one turns to the cases. It seems to me that the proportions can be ascertained without the exercise of any new inventive faculty, if the directions laid down are followed; because the purpose of the invention is to construct a space for cooling smoke, and yet that is to be done within the limits of what might be called the conventional ash receptacle. It appears to me that the proportions need not be exactly laid down by the description, according to the inches of a foot rule, if there is a field in which the proportions may vary, and yet in which success may be achieved and ensured." It is a feature of both the claims in suit and of the Bayetto patent that the invention extends to connectors which 12. may be of any size for holding together articles of any size and the exterior of the head of which may be of any shape. But there is no doubt a practical limit in respect of both these aspects. These matters are within the judgment of the user of the invention. A sense of proportion will prevail. But apart from functional flanges or some other functional feature of size or shape that might be introduced, there is no significance in any particular size or shape of the cavity surround that may be used. If the integers of the claims in suit are used to produce the result indicated therein in relation to any particular cavity surround then the article produced is within the claims. But this to my mind is not a fatal ambiguity or uncertainty because the specified integers will operate as specified whatever the size of the connector and whatever the size or outer shape of the surround of the cavity. They are items which may be chosen by the person producing the connector for his particular purpose. The essence of the invention claimed by the applicant appears to me to be that it escapes from the limitations imposed by the inherent stiffness of the solid barrell vault shaped. socket or head of the Bayetto connector. To cope with that stiffness Bayetto introduced the flanges. The diametral slit by itself was not enough to enable the halves of the socket to bend elastically on the socket sufficiently widely to permit the easy passage of the protuberances. This aifficuity was mec by the appellant by introducing prongs. ee re eee ee ete en eee wen ee eee - me eee oe -- ee ee me ee ee ey 13. The general notion of prongs is that they are slender projections and in the setting described in the appellant's claim form part of the "resilient slotted portion" of the socket. They are flexible to the extent that the pressure of the protuberances exerted by the user pulling on the filament while holding the head is adequate to expand them to let the protuberances through. Having regard to the convenience of the user, elimination of the flanges and the adoption of flexible resilient prongs was significant. It is convenient simply to pick up the article, thread the filament through the socket and merely pull the filament until the prongs snap in behind a chosen protuberance. It is much less convenient 'to pick up the article, then locate the flanges and fingers under the flanges, thread the filament into the socket, and then maintain the position of the fingers until the operation is complete. And the smaller the connector in use the greater the comparative consequence of a connector according to the claims in suit. Having regard, in particular, to the circumstance that in the use of the article it is contemplated that the user will, at one session, be involved in muJtiple repetitions of the task of closing the filament around groups of articles, presumably at the highest speed reasonably attainable the introduction of the flexible and resilient prongs and the elimination of the operation of finding the transverse flanges and fitting fingers below them appear to 14. me, to constitute a ""substantia] contribution to the working of the thing" per Dixon J. as he then was, at p.-740 in Griffin v. Isaacs Official Journal of Patents, Trade Marks & Designs 7th Nay 1942. It was said that the exclusion from the claims in suit of flanges and the introduction of flexible prongs involved no inventive step. This is certainly arguable. However, neither of these features did in fact owe anything to the Bayetto specification. And that specification has nothing to say about a connector without flanges, or with prongs so flexible as to perform adequately their appointed function without the assistance of prongs. It is easy with the benefit of hindsight to doubt the quality of inventions in the steps which distinguish the claims in suit from the Bayetto connector. But as was said by Fletcher Moulton L.J. in British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik (1910) RPC 209 at 230 of a new combination of integers:- "I confess that I view with suspicion arguments -to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, pecause, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by Fnglish Patent Lav." erate 15. I am not satisfied that it would not have required an inventive step to eliminate the flanges and introduce the prongs. It was a step which appears to have had important commercial consequences if regard is had to commercial success of articles having these features and the non-success of the Bayetto connector. So far as the appellant's prongs .themselves are concerned it was contended that they are anticipated by Bayetto. It was said, farst, that the halves of the socket produced by the diametral slit in the lower portion of the socket are prongs within the meaning of that word in the claim in suit, and secondly that the intimation in Bayetto that the invention claimed included as an option more than one diametcal slit disclosed such prongs. I cannot think that what are referred to in this Bayetto specification as the "halves" created by the diametral slit would ordinarily be regarded as prongs. The author of the Bayercto specification does not use that word and I do not think it would have occurred to him to use the French equivalent. The halves are intended to be forced apart like jaws pivoting on an axis at about the same level as the top of the slit, their "lips" extend right across the socket. Their elastic movement of bending on the socket must inevitably cause puckering and distortion because of the barrel vault construction of the socket. The function of the flanges is to contribute to the required opening of the slit by lifting ee ae et et eee ee a ee wee 16. the sides of the halves, thereby preventing or reducing the puckering and the distortion of the halves and so assist them to bend adequately. They do not look nor function like prongs. On the other hand the concept of a prong is, in the context, of a slender projection inherently somewhat flexible and described as resilient. Because of the slots the prongs are free or substantially free from stiffness inherent in the barrell vault setting. The slots have removed portions of the basic construction. Thus the prongs are able to respond to the pressure of the heads being pulled through without assistance from flanges, and being resilient, to "snap" back. It was natural for the author of the Bayetto specification to use the word "halves" and for the author of the claim in suit to use the word "prongs". The words were apt to express the diverse concepts in the minds of the authors as to the items which they were describing. The further enquiry then, is whether the prongs of the design in suit are otherwise disclosed in the Bayetto specification. The disclosure is said to follow from the statement in the Bayetto specification that the invention "could cover variant forms without departing from the framework of the invention. In particular several diametral slits radiating around the axis of the channel of the [headJ} could be provided." This statement appears after the invention with a single slit has been fully described. That description indicates that the flanges are located 17. perpendiculacly to the plane of the single diametral slit there in contemplation and that they contribute to the inflection of the halves in bending elastically on the socket. That inflection inevitably is in line with the line of the flanges. The summary of the specification refers to the socket having "at least one diametral slit through the axis of the channel and states that the flanges contribute to the opening of the slit." No doubt one additionai slit would reduce the halves to quarters, and another to eighths of the socket, and so on. At some stage, in the dissected socket, slices thereof would be created which might be described as prongs. The picture which emerges is however, rather different from that of prongs produced by cutting away portions of the socket. The question is whether what is said discloses such prongs as a method of facilitating the expansion of the socket so to accommodate the passage of the heads without flanges. The learned trial Judge considered that the references to additional slits which appear in the Bayetto specification should be regarded as merely "bravado characteristic of patentees seeking to grasp a monopoly of things which they have not invented or even tried". Whether or not this be accepted in full it does reflect the difficulty of finding anything disclosed about the problems 18. resulting from multiple slits of the socket or their operation. Thus it is not explained what sirection the additiona] slits have to take relative to the flanges. [ft is not indicated whether additional flanges are required. There is no indication of the operation inter se of the "prongs" as members of the barrel vault construction. Thus as an antecedent statement put forward by way of anticipation it fails to pass the test laid down in the judgment of Lord Westbury in Hill v. Evans 45 E.R. at pp-.199~200 that, from it, "a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery, without the necessity of making further experiments and gaining further information before the invention can be made useful." I am not satisfied that the Bayetto specification anticipates the prongs of the claims in suit. Thus I consider that the claims in such are not anticipated by the Bayetto specification. On the question of anticipation it was said by Aicken J. in Minnesota Mining and Manufacturing Co. v. Berersdorf (Australia) Ltd. (1980) 144 C.L.R. 253 at 298, - "I am satisfied that the Saldert patent did not deprive the invention of novelty, because, although it discloses some of the integers of the combination it does not disclose all of them." I think the same might be said of the Bayetto patent and the claims in suit. It is to be noted also that in this case the claims in suit dispense with one of the integers incorporated 19. in the Bayetto patent, namely the flanges. I do not have difficuity in understanding what is conveyed by the words of claim No. 2. The distance between the top of the socket and the place where the prongs snap in behind a protuberance which has passed through is known. There is therefore no difficulty in spacing the protuberances along the filament so that immediately the prongs snap in behind a protuberance another protuberance seats in the mouth of the socket. The protuberance will seat when it is partly in and partly not in the cavity in the head. The word "for aligning said heads" convey to my mind that the protuberance which is so seated will be aligned with the protuberance behind which the prongs have snapped in. The benefit cf this is that the filament will not wobble about in the socket and apart from anything else it will present a neater and more secure appearance. I am not satisfied that it has been shown that the claim is bad for ambiguity. Comments of like nature are applicable to claim No. 3. Claim No. 5 appears to me to be but a workshop addition involving no inventive step. - Accordingly, I would ailow the appeal in respect of' claims No. 1 to 4. os ee - _ - - —-3 re Swett s _+ 25 Tite, G83 NCBI ct IN THE FEDERAL COURT OF AUSTRALIA } VICTORIAN DISTRICT REGISTRY ) GENERAL DIVISTON ) Smithers, Fox and Franki Jd. VG NO. 130 OF 1981 On_ appeal from a Judge of the Supreme Court of Victoria BETWEEN : DENNTSON MANUFACTURING COMPANY Appellant AND: MONARCH MARKING SYSTEMS INC. Respondent REASONS FOR JUDGMENT FOX J. This is an appeal, with leave, from the Supreme Court of Victoria (Fullagar J.) in which a decision of the Acting Deputy Commissioner of Patents refusing the grant of letters patent to the appellant was upheld. Because the facts and Jaw are so fully discussed in the judgments "af Franki J.. and of Fullagar J.. Ll shall content myself with a brief explanation of why 1 am of the view that this appeal fails. The paper anticipation relied upon is what has heen called the "Hayetto" document. 'The comparison to be made is between what was disclosed in that document and what is claimed in each of the claims in the subject application tor grant of a patent. The prior publication 1n a case such as the present is to he read as a whole, and not construed as if it were the specification of letters patent, or of a claim therefor. The fundamental matter is the public knowledge it conveys, in a meaninaful and instructive way. When it is said that there is no anticipation unless all integers of the later claim appear in the publication, it is necessary to see what are the integers in the subject claim, and see what, with reasonable precision, was disclosed in the publication. {it is apparent from Griffin v. Isaacs (1942) (12. A.Lid. 169; 12 Official Journal of Patents Trade Marks and Desions 739) that complete accord between the terms of the disclosure and the claim is not necessary~ "Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think. ampossibie to treat the differences as atvina novelty. Lt mav be true that in neatness. ease ot adjustment and commercial attractiveness the particular pubiication, relied upon in the oresent case. is inferior to the applicant's arrangement, but, notwithstanding some misgivings caused by this fact, 1 think, that when the principle of the two things is considered closely the differences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty." (per Dixon J., Official Journal p.740) This statement encompasses what are commonly called "workshop improvements". In my view. all the integers of claim 1 are to be found in the Bayetto document. Reliance was placed on the absence of a reference in claim lL to "flanges". in this connection it was submitted that the flanges in Uayetta performed a function, necessary to what was there disclosed. of assisting in the opening of the diametral siot. The tunction of the SBayetto specification, it was submitted, was to ease the elastic strain in the socket, this having been, as was said, a problem in the prior art. 'The flanges were integral with the rear of the socket (or "head"), the lower end being in fact the end of the filament. There is reference in Bayetto to pressure against the flanges, but when the specification is read as a whole. inctuding the diagram therewith, it seems to me that the pressure referred to is one in opposition to the sliaht force necessary to pull the filament (or "thread") through the socket. The document says that the flanges were something against which to "rest" the fingers of one hand. Ihe reference to tjJanges was not inconsequential. &£ think 1t probable that the invention finally claimed included the tlanges, but it was at the same time made ctear, inmy view, that the tlanges could be dispensed with. This would seem to follow, as a matter of ordinary understanding, from the function given to them. Even if the fianges were a necessary part of Hayetto, the absence of any reference to them in claim lt does not in this case establish novelty. The first reason, in my opinion, was that the change would only constitute an insubstantial change, a workshop improvement. This accords both with the view of the facts taken by the learned dudge and with an ordinary understanding of the nature and-tGnetion of the flanges. 'the second aspect is. that the absence of a reference in claim 1 to flanges is of uncertain import... This flows in part from the absence of reference to the prior art, and in part to the width of the integers referred to in claim 1. 'here fs nothing from which it. can be concluded that the absence of flanges was a part of the invention claimed. Associated with what was submitted in relation to the flanges it was put that the claim reterred to something not mentioned in terms in Hayetto,. namely "a slotted portion torming a plurality of prongs". lt was argued that the invention claimed was one based on "inherent resiliency", through which the heads on the filament passed with comparative ease (when the filament was pulled), as distinct from the more rigid structure of Bayetto. Reliance was placed on the use of the word "snap" to indicate the way in which the prongs went readily back into place after the passage through them of a head, thus blocking return movement. Bayetto provided for a diametral slit. Towards the end of the description of the invention it says: "Of course, the constructive measures stated above could cover variant forms without departing from the framework of the invention. In. particular, several diametral slits radiating around the axis of the channel of the head could be provided." Later, in the more succinct "Summary", reference is made to "at least one diametral slit". In the context, it seems to me that more than one diametral slit would in substance be "a plurality of prongs", although the term "prong" is itself a vague and imprecise one. A further point of distinction, associated with the action of the "prongs", which counsel seeks, to make, is that claim 1 provides for the prevention of withdrawal of the filament, backwards through the socket. What the claim says is "to restrain withdrawal". This was also claimed in Bayetto, as an essential part of what was there disclosed as having been invented. The effect of the prongs and heads, acting together, and with due regard to the location of the heads, may provide a greater restraint than that found in the Bayetto invention, but this is not clear and is not a matter explained in claim 1. In my view, a product constructed in accordance with claim 1 would not be more than a "workshop improvement" on Bayetto. In saying this, I reject the submission that the combination in claim 1 has a different purpose, or function, from that in Bayetto. In my view, the combination seeks to achieve the same results by substantially the same means. Claims 2, 3 and 4 are additive to claim 1 and in my opinion are without novelty. Claim 5 is as follows: "Ss. A connector according to claim 1 wherein the end of the filament opposite the socket has an elongate enlargement to facilitate insertion through the socket." I have had some difficulty in understanding what is Meant by "elongate enlargement". We were handed, for our assistance, "connectors", or "unbreakable ties" on which the leading ends of the filaments are shaped, with a leading point at the apex of a cone, forming a head. om the end of the filament. They were described as "commercial versions" of the "Dennison device", but no particular significance was given to this description. It would seem that "elongate" in claim 5 should not be understood to refer to or encompass a device thus shaped. In ordinary English, it} means an added length. The word "enlargement" in this context is ambiguous, but I think the phrase should be taken to mean that the end of the filament is lengthened, and increased in diameter. as compared with the rest of it. The purpose is. one imagines, to qive strength, or rigidity. or both, at that point. Aithough this feature is not mentioned in Bayetto, there is nothing to show that any inventive step was involved, and as a matter of ordinary understanding the addition of the integer to what is claimed in claim 1 would be well within the general knowledge of any appropriately skilled person. It is doubtless an improvement, but not one of sutficient substance to give novelty. This claim should also fail. I find it unnecessary to deal with the ground of opposition based on s.40 of the Patents Act 1952. I agree with the orders proposed by Franki J. ® H certify that this and tae six ( ° Hr. Justice FOR Associate | Dated: wh Tubs i983 IN THE FPEDERAL COURT OF AUSTRALIA) VICTORIAN DISTRICT REGISTRY ) VG No. 130 of 1981 GENDCRAL DiviSton } On arpeal from a Judge of the Supreme Couct of Victoria BETWEEN: DENNISON MANUFACTURING COMPANY Appellant AND: MONAKCH MARKING SYSTEMS INC. Respondent CORAM: Smithers, Fox and Franki JJ. 28 July 1983 REASONS FOR JUDGMENT FRANKI J. The appellant Dennison Manufacturing Company, appealed to a Judge of the Supreme Court of Victoria under s.60(5) of the Patents Act 1952 ("the Act") against a decision of the Acting Deputy Commissioner of Patents dated 22 February 1977 whereby he determined an opposition by the respondent Monarch Marketing Systems Inc. in favour of the respondent and refused to grant a patent. The application had been made by the appellant under the provisions of the Act relating to Convention applications and the application in the United States cf america had a oriority aate of 15 April 1963. The respondent as the only opponenr. The notice of opposition relied upon many grounds auncluding prior publication, want of novelty, opviousness, and non-compliance with s.40 of the Act. The initiral decision to refuse the grant was made before the judgment of the High Court in Minnesota Mining and Manufacturing Co. ve Belersdorgt (Australia) Ltd. (1980) 144 C.L.R. 253. The initzral rejection was based upon a finding that none of the claims was valid and that a French specification, No. 1,332,239, (""Bayetto") constituted a complete disclosure of the alleged invention claimed in the claims 1, 2, 3 and presumably 4 and that claim 5 did no more than add a commonplace factor. Each claim was rejected for lack of novelty and the application was wholly refused. The appeal to the Supreme Court of Victoria, although called an appeal, was in the original jurisdiction of that Court. In those proceedings the appellant was successful to the extent that the Court ordered that claim 6 should in effect proceed to grant and the appellant was given certain liberty to submit to the Commissioner proposals for amendment to the specification. A Judge of this Court granted an application for leave to appeal to this Court under the provisions of s.148(2) of the Act. The appeal was brought pursuant to this leave under s.148(1) by the appellant but no cross-appeal was instituted. The appeal therefore raised the question whether any of claims 1 to 5 should proceed to grant. The specification in suit 1s entitled "Connector For Holding Articles Together". The specification commences: "Objects of the invention are to provide é& device for joining articles together, which is neat and attractive in appearance, and which can connect articles or groups of articles of different sizes." It 1s next appropriate to set out the whole of the claims which, after some amendment made by the appellants whilst the application was under consideration in the Patent Office, are as follows: "The claims defining the invention are as follows: 1. A connector comprising a filament, a socket on the filament, sa1d socket comprising a first non-slotted portion and a second resilient slotted portion, forming a plurality of prongs, and a series of heads distributed along the filament to snap through the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket so that insertion of a head produces expansion of said prongs and, after a head has been inserted therethrough, said prongs snap in behind the head to restrain withdrawal of the head from the socket. 2. A connector according to claim 1 wherein the spacing between the heads 1s arranged so that, when the prongs snap in behind a head, a succeeding head effectively seats in the mouth of the socket for aligning said heads. 3. A connector according to claim 1 wherein the spacing between the heads 18S substantially equal to the depth of the socket so that, when the prongs snap in behind a head, the next succeeding head effectively seats in the nouth of the socket for a@irzgning seid heads. 4. A connector according to claim 1 wherein the non-slotted portion of the socket is circular and each head is conical. 5. A connector according to claim 1 wherein the end of the filament opposite the socket has an elongate enlargement to facilitate insertion through the socket. 6. A connector substantially as hereinbefore described with reference to and as illustrated by the accompanying drawings." The respondent argued before this Court that each of claims 1 to 5 was anticipated by the Bayetto specification No. 1,332,239 entitled "Improvements in unbreakable ties, made in particular of plastic material". This specification has been available for public inspection in the Patent Office Library in Canberra in the French language since 14 July 1964, a date before the priority date of the appellant's application. An agreed translation in English of the Bayetto specification was before the Court and the matter was argued upon the basis of that translation and not otherwise. In the Victorian Supreme Court expert evidence was admitted subject to objection but no cross-examination took place upon it. The trial Judge said that a very great deal of the expert evidence on each side was clearly inadmissible but, apart from certain specific references, he did not identify the evidence which was admissible. The trial Judge referred to British Celanese Lid. v. Courtaulds Ltd. (1935) 52 R.P.C. 171, at p.196, where Lord Tomlin in the House of Lords dealt with the position of an expert witness and séid. "He is not entitled to say nor is Counsel entitled to ask him what the Specification means, ner does the question pecome any more admissible if 1t takes the form of asking him what it means to him es an engineer or chemist. Nor 1s he entitled to say whether any given step or alteration 1s obvious, that being a question for the court." This passage would of course apply equally to a question of whether a given step or alteration was novel. His Lordship also pointed out that an expert witness: ",.. 1s entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which 1s described in the specification on a given hypothesis as to its meaning 1s capable of being carried into effect by a skilled worker. He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connection with the art could be carried out and generally to give any explanation required as to facts of a scientific kind." I will return later to the question of expert evidence in this case. Iwill first consider claim 1 of the = subject specification in relation to what was disclosed in the Bayetto specification. The Bayetto svecification has to be eramined in the light of what 1t discloses and not what it claims. indeed being a French specification 1t does not contain any statement of claims. The Bayetto specification in referring to the prior art described the invention as relating to "a device known under the generic name of 'unbreakable tie'. An illustration of the prior art 1s shown in a drawing in the Bayetto specification. It us described in the specification as follows: A device consisting of a thick thread of plastic material provided on its length with a series of projections or protuberances close to one another and which at one of its ends is integral with a solid head pierced by a channel which is slightly conical or narrow at its outlet opening, into which channel the other end of the thread free from projections could be inserted in order to form a loop. In the prior art the thread could be pulled in one direction through the Narrow opening but "its movement in the opposite direction 1s made impossible by the abutment of the protuberance against the rim of the said opening." The prior art therefore disciosed an unbreakable tie which, when once tightened, could not be moved in the direction necessary to loosen 1t. This restriction resulted because a projection or protuberance could not be forced in the reverse direction since that movement was prevented by the head. It was next pointed out in the Bayetto specification that this type of device had the disadvantage "that, in order to tighten the loop on the cbject to be tied, 1t was necessary to pull on the free end of the thread with a very great force because each protuberance must dGerorm elastically in order to pass through the narrower opening of the solid head" and that the repetition of this gesture many times caused the hand of the erson using the device to be hurt or injured. The specification Pp g J Pp hh then pointed out that the object of the invention was "... 0 remedying this disadvantage, by easing the passage through the head in the direction of tightening of the loop, while ensuring even more certainly the impossibility of reverse movement." The Bayetto specification continued: "It consists of slitting the head diametrally over a certain length from its outlet opening, in order to give it elasticity, this measure preferably being combined with a special shape of the protuberances, bevelied in their front (an the direction of the tightening movement) and, on the contrary, terminated behind by "stepped surfaces at an abrupt angle". In my opinion the basis of the invention claimed in the Bayetto specification is the avoidance of the previous disadvantge of having to pull the thread "with very great force". This was achieved by "slitting the head" diametrally over a certain length from l1ts outlet opening. This also had the advantage of making it more difficuit for the protuberance to be pulled in the reverse direction because the slit in the head closed behind the protuberance once the protuberance had been forced through the nead. It vas also said that it was preferable to combine this with protuberances which were bevelled in the front and terminated behind by stepped surfaces at an abrupt angle. The essential feature of what was disclosed in the Bayetto specification is therefore the easing of the passage of the protuberance through the head in one direction and the prevention of movement in the other direction by incorporating in the head the two diametrally opposed slits. The specification went on to explain: "In addition the elastic opening of the slit of the head by the passage of each protuberance can be aided by the prevision on the rear part of the head, of flanges resting against the fingers of the hand holding this head while the other hand pulls the thread to tighten the loop." The Bayetto specification then set out a preferred embodiment of the invention described as "an embodiment of an unbreakable tie according to the invention" and which includes a head pierced by a conical or narrow channel at its outlet opening with a diametral siit passing through the axis of the channel and protuberances of a "conical or bevelled shape". This clearly disclosed a conical channel with e Giametral slit 1n the head and protuberances of conical shape. It also disclosed that the back of the protuberance which would be important in preventing a reverse movement of the protuberance had a "slightly rounded surface forming an acute ancle with the thread". It 1s therefore clear that the protuberance would seat against the end of the nead and make it substantially impossible to reverse the movement of the thread unless the diametrally opposed parts of the head were separated. The specification then describes the method of operation of the invention and it 1s pointed out that the fingers of the operator would rest against the flanges and that the pressure exerted by the fingers on the flanges would contribute "to this inflection and facilitates further the passage of the protuberance". The specification continues that: "Of course, the constructive measures stated above could cover variant forms without departing from the framework of the invention. In particular, several diametral slits radiating around the axis of the channel of the head could be provided. The ties in accordance with the invention could be made of plastic material or any other suitable material." The specification continues with a summary which, inter alia, referred to flanges. Before us the question of the flanges was put in the forefront by the appellant and it was argued that the specification in suit did not refer to flanges and therefore Bayetto's disclosure did not affect the validity of the claims of the specification in suit. It 1s clear that claim 1 of the specification in suit did not specifically refer to flanges nor indeed did any other 10. claim. The patert in suit is, of course, what 1s known as a combination patent and lts validity must be tested against the requirements for validity of such a patent. It was common ground before us that a grant should not be refused in respect of any claim upon the grounds of want of novelty or obviousness unless 1t appeared to the Court clear that the ground had been made out. (Monticatini Edison S.p.A. v. Eastman Kodak Company (1971) 45 A.L.J.R. 593 at pp.595-596). The learned trial Judge was satisfied that claim 6 should proceed to grant since he was "not satisfied however, that a patent confined to what is within the scope of claim 6 would be clearly bad". The trial Judge approached the question of invalidity farst by construing claim 1 in a way which he described as "a benevolent construction" but even then he held that claims 1 to 4 were anticipated by Bayetto, that clairm 5 was a mere "workshop improvement and no patent can be had for what it claims". This conclusion was based upon the view that, although he considered that flanges were an essential part of the Bayetto specification, claim 1 of the specification in suit included -.. flanged as well as non-flanged non-slotted portions of the socket, end indeed would require flanges or their equivalent wherever these might be necessary ... His Honour next examined the claims to ascertain whether they complied with s.10 of the Act and said that claim 1 " stands revealed in my opinion as a combination including some integers defined by virtually meaningless phrases" and that claims 1 to 5 inclusive must fa1l on the ground of the uncertainty of claim l. His Honour also came to the conclusion that the specification did not fully describe the invention and that claim 1 was not fairly based on the matter described in the specification. It must be remembered that a claim 1s not valid 1f 1t claims more than the invention. Although I have reached the same practical result as his Honour reached and would dismiss the appeal, I have reached that conclusion, at least in part, by a somewhat different path. In my opinion when one examines the Bayetto specification in order to see what it discloses as a matter of construction one reaches the conclusion that the flanges are an alternative and not a necessary feature of what is disclosed. The view that flanges were an essential part of the Bayetto disclosure was in accord with the view expressed by Associate Professor Cherry, who swore an affidavit on behalf of the appellant, but a contrary vilew was expressed in an affidavit of Professor Hunt who referred to the flanges in the Bayetto specification as "optional additions". Associate Professor Cherry thought that the Bayetto specification disclosed a "barrel vault" shape. if flanges are necessary with such a construction it 1s pertinent to observe that claim 1 does not exclude a "barrel vault" shape for the socket. Neither expert witness was cross-examined and in view of the conflict of evidence I consider that the appropriate course 1s to examine the Bayetto specification itself. A major ground for the granting of leave to appeal related to the finding that claim 1 of the specification in suit included cases where the non-slotted portion of the socket was flanged. I am of the opinion the flanges were an "addition" which "aided" the passage of each protuberance through the head and not an essential part of the disclosure. They were an optional extra. If this conclusion 1s not correct and flanges were required for the operation of the device I respectfully agree with the learned trial Judge that claim 1 would also require flanges, or their equivalent. The integers of the connector claimed in claim 1 are: (1) A filament. (2) A socket on the filament comprising (a) a non-slotted portion and (b) a second resilient slotted portion forming a plurality of prongs. (The slots may be diametral or otherwise). (3) A series of heads distributed along the filament (a) to snap through the resilient portion of the socket to form loops of different sizes and (b) each head being slightly larger than the resilient portion of the socket, so that the insertion of a head produces an expansion of the prongs which, after the head has been inserted therethrough, snap in behind the head to restrain the withdrawal of the nead from the socket. In my opinion the Bayetto specification clearly disclosed: (1) A thread (called a "filament" in the specification in sult). (2) A head {called a "socket" in the specification in suit) comprising (a) a non-slotted portion and (b) a second resilient slotted portion forming a plurality of prongs (2 prongs are a plurality and the diametral slit creates the 2 prongs). (3) A series of protuberances (called "heads" in the specification in suit) distributed along the thread (a) to snap through the resilient portion of the head to form loops of different sizes (b) each protuberance being slightly larger than the resilient portion of the head. Senior counsel for the appellant argued that claim 1 be given a purposive construction and cited Catnic Components Limited v. Hill and Smith Limited (1982) RPC 183 at pvp.242-243. He directed attention to tne use of the words "so that" and "snap in". He also argued that the wore "resilient" referred 14. to the material of which the socket was constructed. In my opinion if a protuberance passed through the diametrally slitted head in the Bayetto construction that head would close behind the protuberance in the same way as 1t 1S claimed the protuperances (called "heads") in the subject specification which had passed through the slotted portion of the socket in the subject specification "snapped in" behind that slotted portion. The word "yresilient" qualifies the slotted portion and 1s not specifically limited to the material of whach that portion is constructed. The words "snap in" are extremely loose and I do not consider that they are to be given the rather special meaning which the appellant seeks to place upon them. The learned trial Judge drew attention to the failure of 'the appellant's specification to identify the prior art or the problem which the alleged invention was designed to overcome or indeed to set out what the appellant claims to have invented. Whiist it 1s not necessary for the validity of a claim that the specification should deal with those questions, a failure to so do raises considerable difficulties. The appellant submitted that the trial Judge was in error in identifying the art to which the specification related and that 1t was particularly directed to a method for providing a suitable tie for fixing tickets to articles in, for example, supermarkets so that the tickets could not be removed by customers. It 1S quite impossible to draw any such conclusion from the specification. I have already quoted 15. what were alleged in the specification to be the objects of the alleged invention. The specification refers to the following matters in relation to the preferred embodiment: "Preferably the socket 1s circular and each head is conical and the socket is slotted to facilitate expansion. In the preferred mbodiment the end of the filament for insertion through the socket has an elongate enlargement to facilitate inserticr." Clearly claim 1 includes sockets which are other than circular. Later the specification continues: "The connector is molded in a single integral piece of nylon or other thermoplastic material which 1s resilient and the socket 1s slotted to form prongs 6 to snap in behind the heads 4 as shown in FIG.5. Preferably the socket 1s circular as shown in FIGS.1 and 3, and the heads are conical as shown in FiGS.2, 4 and 5. The heads are slightly larger than the socket so that they seat on the mouth of the socket as shown in FIG.5 and must be forced through the socket, the heads contracting slightly and the socket expanding slightly due to their resiliency." This passage points out that it is at least preferable for the heads to "seat" on the mouth of the socket as shown on Fig.5. Fig.5 shows the head partly out of the supporting socket, although claims 2 - 3 refer to 12 being seated "in the mouth of the socket". The passage I have just cited refers to "the socket" and "their resiliency" - a confusing combination of singular and plural. Following the passages I have set out, the following appears: "A salient feature of the invention consists in that the spacing between the heads is substantially equal to the depth of the socket so that, when the socket snaps behind a head, the next succeeding head seats in the mouth of the socket as shown in Fig.5 to hold the filament against back-and-forth movement." It 1s strange that this salient feature only appears in claims 2 and 3 where it is said that a head "seats in the mouth of a socket for aligning said head". Senior counsel for the appellant could only suggest that the words "for aligning said heads" were mere surplusage. The use of the word "in" in claims 2 and 3 gives rise to some difficulty since in part of the body of the specification a the word "on" is used. The specification proceeds: "It should be understood that the present disclosure is for the purpose of illustration only and that this anvention includes all modifications andG equivalents which fall within the scope of the appended clains."" This statement clearly indicates that the claims are 17. broad claims and that everything that falls 'within the scope of the claims 1s sought to be protected. I agree with the learned trial Judge that a connector with flanges on the non-slotted portion of the socket, whether for ornamental or other purposes, would not necessarily be outside claim 1. Aickin J. in Meyers Taylor Pty. Ltd. v. Vicarr industries Ltd. (1977) 137 C.L.R. 228 at p.235 pointed out that: "The basic test for anticipation or want of novelty 1s the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement." When reading the technical evidence it 1s necessary to bear in mind that most of it is not directed to any particular claim but directed to a rather ethereal device called the "Dennison device". During the conduct of the appeal we were handed, for the purpose of illustration, a small plastic tie which we were told was a Dennison device. A superficial examination of this device showed that it was close to what was claimed in claim 6 but it differed 1n certain ways, for example, the heads were placed further apart than those shown in Fig. 5 and the upper head shown in that figure certainly rested neither 1n nor on the mouth of the socket. In addition the rear part of the elongate enlargement referred to in claim 5 was of a greater diameter then the forward part. Any procf of commerczal success with respect to a "Dennison device" 1s therefore of little or no e value except perhaps in relation to claim 6. 18. The appellant alsc referred to the prevention of tampering which was said to be a feature of the appellant's device. However, there 1s nothing in the specification to indicate that this 1s a problem which either was considered, or solved, apart from the statement that the construction was such that when the head had been passed through the prongs, the prongs operated "to restrain withdrawal of the head from the socket". Even assuming that the word "restrain" means prevent, it does not take the position any further than the Bayetto specification where a similar movement was said to be "absolutely impossible". It is next necessary to pass to the relevant law. The relevant grounds of opposition are those set out in s.59(1)(g)(h) and (i) of the Act which permit opposition upon the following grounds: (g) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim; (h) that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia; and (1) that the complete specification does not comply with the requirements of section 40. It was made clear in Minnesota Mining supra, py Aickin J. at p.295, with whom Barwick C.J. , Stephen, Mason and Wilson JJ. agreed, that a prior specification was not capable of sustaining an argument that because of 1t the invention claimed was obvious without evidence that it was part of common general knowledge at the relevant time. Since it 1s clear that the Bayetto specification was not part of common general knowledge at the relevant time it cannot be used to support opposition based on obviousness. In Minnesota Maning the question was one of validity of the patent after grant but the relevant words in s.100(1)(e) are the same as those in s.59(i)(g). Section 40(1) and (2) of the Act reads: "40. (1) A complete specification- (a) shall fully describe the invention, including the best method of performing the invention which 1s 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." The judgment in Minnesota Mining clarified the law in relation to "obviousness", the meaning of which had previously given rise to a great deal of debate out, in addition, Aickin J. made some mention of the question of anticipetion and, in regard 20. to what he sald, there is no difference between the question of whether an invention was novel within s.59(1) or "had been anticipated". His Honour said at p.298: "It appears that before the trial judge there was no argument presented on the objection that the patent had been anticipated by some prior publication and no such argument was presented before this Court at the hearing. However in written argument submitted by the respondent in reply a submission was made which was expressed in "terms both of anticipation and obviousness. It is not altogether clear whether 1% was intended to raise the question of anticipation but it is desirable to deal with it as if 1% did raise that point. I am satisfied that the Salditt patent did not deprive the invention of novelty because, although 1t discloses some of the integers of the combination it does not disclose all of them. Because the information contained in the Salditt specification was not common general knowledge in Australia at the relevant time I do not need to examine 1t in relation to obviousness." It seems clear that Aickin J. was saying that in a case of paper anticipation of a combination patent based on a prior patent specification that specification must disclose all the integers of the combination. Before us the respondent relied upon the judgment of the Haigh Court in Griffin v. Isaacs, reported in part in (1938) 12 A.L.J. 169, put more fully reported in Vol. 12 of the Official Journal of Patents, Trade Marks & Designs, p.739. Dixon J., as he then was, pointed out that it was a case of opposition confined to a consideration of novelty. ¥ At that date the Patents Act 1903 was in force and s.56 provided for opposition, inter alia, on the cround: a? "(e) That the invention 1s not novel or has been already in possession of the public with the consent or allowance of the unventor; That the invention has been described in a book or other printed publication published in the Commonwealth before the date of the application or 1s otherwise in the possession of the public." ~~ rh ~~ This was a case concerning the construction of the tops of trousers and his Honour said at p.740: "But as this is an opposition we are confined to a consideration of novelty. The decisions of this Court in McGlashan v. Rabbett 9 C.L.R. 223; Gum v. Stevens 33 C.L-R. 267 and Arnott v. Peak Frean 9 A.L.T. 73 have 1liustrated the difficulty of maintaining a definte distinction between novelty and subject matter. Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or unvolve no ingenuity or inventive step and the merit of any of the two things, considered as inventions, 1s the same, 1t 1s, I think, impossible to treat the differences as giving novelty. It my be true that in neatness, ease of adjustment and commercial attractiveness the particular publication, relied upon the the present case, 1s inferior to the applicant's arrangement, but, notwithstanding some misgivings caused by this fact, I think, that when the principle of the two things 1s considered closely the aGifferences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty." McTiernan J. took a similar view, anc he said at 0.740, It is not, however, voublication of the very unvention alleged out of a construction consisting of the upper portion of a pair of trousers containing an adjustable self-supporting band." Starke J. said at p.74l: "But the question is what advance did the appellant make upon the opponent's trouser top? What addition did he make to the stock of public knowledge? He divided the tension belt or band at the back of the trousers and anchored the ends there or thereabouts. And he described a method of fastening his belt or band near the hips of the wearer. A development which any competent workman in the trade maght have made had he needed it is not an invention and 1s wanting in novelty as well as in subject matter. Dividing a belt or band and anchoring the parts severed is but a development in manufacture and well within the range of skill possessed by a competent workman. The fastening of the belt and bands 1s equally within the range of skill of the competent workman. And there 1s no advance in knowledge in the method described by the appellant; it is simply a development in manufacture. The appellant is entitled, however, to have his arrangement of '''supporting means for trousers' considered as a whole or in combination and not in its several parts. In my judgment, however, the invention claimed by the appellant whether taken as a whole and un combination or in 1ts several parts 1s wanting in novelty. Nothing 1s disclosed that is not already known to or well within the range of knowledge of competent workmen in the trade of manufacturing trousers." Latham C.J. at p.742 said: "It is contended by the applicant that there are essential differences petween the Opponent's alleced anticipation and the applicant's invention. Some of the distinctions alleged are, I think, plainly immaterial." 23. He later said at p.743: "The comparison, upon cprposition proceedings where the objection or apsence of novelty is taken, must be between the claim as actually made and the alleged anticipation. aoe In my opinion the division of a composite band into two straps one on each side of the trousers does not constitute any real distinction between the two divisions. What might be called the working of the applicant's invention is completely disclosed by the waist band made by the opponent." Although this judgment must be considered in the laght of the provisions of the then existing Patents Act, 1t seems that 1t 1s equally applicable today notwithstanding the statements with regard to novelty in Minnesota Mining. It was common ground that what was said by Lord Westbury in Hill v. Evans (1862) 4 DE.G.F.and J. 1195 at p.1199-1200 and at p.1200 in particular was applicable and that "The unformation as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent". Hill v. Evans was cited with approval in a great many cases including for example, Flour Oxidizina Co. Ltd. v. Carr (1908) 25 R.P.C. 428; Pope Appliance Corperation v. Spanish River Pulp and Paper Mills Ltd. [192972 A.C. 269 at pp.275-276 and British Thomson-Houston Vv. "Vetropolitan-Vickers Dlectrical Co. 24. Lad. (1928) 45 R.P.C. 1 at p.22. I am satisfied that claim 1 was anticipated by the Bayetto specification and therefore it lacks novelty. Claim 2 does no more than introduce an ambiguity to "ch I have previously referred concerning the position of "a _ succeeding head" and claim 3 raises the same difficulty with "the next succeeding head". Claim 4 makes it essential that the solid portion of the socket and each head be conical but this is clearly anticipated by the Bayetto specification. Claam 5 gave me some concern. I am satisfied that the "elongate enlargement to facilitate insertion through the socket" is not disclosed in the Bayetto specification. It therefore represents an integer which is not disclosed in the Bayetto specification and consideration must be given to the words of Aickin J. in Minnesota Mining at p.298, which I have cited, and cases such as Hill v. Evans. Had 1t not been for Griffin v. Isaacs I might have had some doubt whether I should reach this conclusion. There was no evidence from anybody skilled in the art to indicate that the elongate enlargement 1s a feature which would not have been a development which any competent workman in the trade might have been expected to make. I agree with the views expressed by the 25. Acting Deputy Commissioner of Patents when he said that 1t was "commonplace to ovprovide an enlargment or strengthenina of a thread which in use passes through a socket. The most commonplace example of that is, probably, the tang of 4a bootlace". I also agree with tne learned trial judge when he said about this integer that: "At best it claims a mere workshop improvement". I take the view that this integer does not save the claim from being invalid. It is not necessary to reach a conclusion on the questions which arise under s.40Q. In this regard I note that Aickin J. said in Minnesota Mining, supra, at p.274 that: "Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use". However, no more than the invention can be claimed. y As I have said, in my opinion the appeal should be dismissed. I would order that the appellant pay the respondent's costs of the appeal and the costs of the application for leave to appeal. I would extend the time within which the appellant be at liberty to submit to the Commissioner proposals for amendments to the specification until three months from today or for such further period as the Commissioner may allow. ral (24) I certify that this and the Caen hy far preceding pages are a true copy of the Reasons for Judgment herein of his Honour Mr Justice Franki. Associate Dated: SFE 3B B87 £3 +f Pa a IN THE FEDERAL COURT Fo team) 3 IW 23 VICTORIAN DISTRICT REGISTRY GENERAL DIVISTON JUDGES MAKING ORDER: WHERE MADE THE COURT ORDERS THAT: i. 2. The appeai is dismissed. Melbourne ce VG No. 130 of 1961 AW On appeal from a Judge of the Supreme Court of Victoria BETWEEN: DENNISON MANUFACTURING Appellant AND: MONARCH MARKING SYSTEMS THC. Respondent ORDER Smithers, Fox and Frankia JJ. 28 July 1983 The appellant is to pay the respondent's costs of the appeal and the costs of the application for leave to appeal. The time within which the appellant is at liberty to submit t to the Commissioner proposals for amendments to the specification, 1s extended until three (3) months from today or for such further period as the Commissioner may allow. a IN THE FEDERAL COURT OF AUSTRALIA VICTORIAN DISTRICT REGISTRY VG No. 130 of 1981 eer ew GENERAL DIVISION On appeal from a Judge of the Supreme Court of Vactoria | Between: DENNISON MANUFACTURING COMPANY . (Appellant) And: MONARCH MARKING SYSTEMS INC. (Respondent) CORAM: Smithers, Fox and Franki JJ. 28 July 1983 REASONS FOR JUDGMENT SMITHERS J.: This is an appeal, with leave, from the Supreme Court of Victoria (Fullagar J.) in which a decision of the Acting Deputy Commissioner of Patents refusing the grant of letters patent to the appellant was upheld. I have had the advantage of reading the reasons for judgment: herein of Fox and Franki JJ. On a question of construction of the specification and cJaims in suit and the earlier Bayetto specification I have been brought to a 2. conclusion at vaciance with that of my brethren. However the framework cf the appeal and the law relating to the matter are discussed in the reasons of Franki J. and the relevant facts are stated therein. As a result I take the liberty of refraining from re-stating those facts and of regarding that statement thereof as available for reference in these reasons. It was common ground before this Court that a grant should not be refused in respect of any claim upon the grounds of novelty or obviousness unless it be clearly shown to the Court that the ground has been made out. It is to be observed also that the Bayetto specification has to be examined in the light of what it discloses-and not of what it claims. The general question arising in the appeal] is the extent to which the invention the subject of the claims in suit was anticipated by the Bayetto specification. To my mind the critical threshold questions are: (a) whether the Bayetto specification discloses an invention of which the provision of functional flanges in a plane perpendicular to the diametral slit is an essential integer; and - (b) if that question is resolved in the affirmative, whether the specification in suit excludes such flanges from the integers of the invention claimed therein. ee ee ee ee ee The answers to these questions depend on the proper construction of the relevant specifications and claims read as a whole. In general terms the article constructed in accordance with either the Bayetto specification or the specification in suit comprises a device for holding articles of various kinds together by enclosing them in a loop which when pulled tight will not become loose. This result is obtained by using a filament with one end attached to the surround of a socket and passing the other end through the socket. There are protuberances at positions along the filament which expand the socket as they pass through it and are restrained from backward movement by the closing of the lower part of the socket behind a protuberance after it has passed through. It is made very clear in the Bayetto specification that the object of the invention claimed therein was to remedy the disadvantage inherent in articles constructed in accordance with the prior art that great force was required to be exterted in pulling the thread through the socket. Each protuberance had to deform elastically to pass through the narrower opening, in the socket, in the solid head. The expression "head" is used as referring to the solid surround of the cavity in the socket. It was pointed out that ee a emt ee et Ree ee ee ee ee ee ee - - -- - es oe - of 4. repetition of the operation of using a device construcled according to the prior art was calculated to cause injury or hurt to the hand of the operator. It was stated that the invention had the object of remedying this disadvantage by easing the passage of the heads through the socket. The specification continues: "It consists of slitting the head diametrally over a certain length from its outlet opening, in order to give it elasticity, this measure preferably being combined with a conical shape of the protuberances, bevelled in their front part (in the direction of the tightening movement) and, on the contrary, terminated behind by stepped surfaces at an abrupt angle. In addition the elastic opening of the slit of the head by the passage of each protuberance can be aided by the provision on the rear part of the head, of flanges resting against the fingers of the hand holding this head while the other hand pulls the thread to tighten the loop. It is seen at the forefront of this specification that two measures are envisaged as useful in achieving the object of easing the passage of the protuberances through the socket, namely the introduction of the slit and the flanges. Tt was contended that provision of the flanges is not to be understood as an essential integer in the Bayetto invention. This was said to follow from the words: ",.. the passage of each protuberance "can" be aided by the provision on the rear part of the u head, of flanges ...". These words are said to indicate that the inventor is saying "the object of my invention can be achieved without flanges, 5. although perhaps better achieved with them, and accordingly flanges are not an essential integer of my invention.". The specification must be construed as a whole and there are various indications that the inventor is saying that flanges are essential. As to the words last quoted it is a question whether there shovid be understood after the word "provision", the words "af you care to make such a provision", or the words "which are part of my invention with their function as stated by me.". I think the latter. ' This view is supported if the specification is read as a 'hole. When the-part to be played by the flanges is described, there is no hint that they might possibly not be there. After speaking of the protuberances 'sliding easily over the two halves of the channel in the head of the sock: and of its outlet opening, "spreading them apart, the .? halves being separated by the slit 2 and consequently bhi able. to bend elastically on the head, the specifi-y ~1., continues "the pressure exerted by the fingers ac mont 7-7 on the flanges 3 contributes to this infiueriio, wa facilitates further the passage of the protuhecanice". The numerals, in this passage refer to a drawing ora ive 'rr, vay of example". The inflection refered to isifne ouw:rs te. fin of the halves elastically on the socket. The -° s-30- can on* contribute to this by lifting the sides of the cornet onc dite the slit to offset the @istortiod and ore verte fae otherwise must impede the inflectic.. 2x cane oY S2F spar. an TT Seem em nee ge era mre penne apy may em mam erm cma em tem gm year l- , _- J —_—_— ee eee ee 6. stiffness of the barrel vault construction of the lower part of the socket. When one reaches what is cailed the summary, there is again support for the view that the flanges are ciaimed to be an essential integer of the innovation. A summary may be expected to include only what is essential. The summary states that "the inventor ... bears in particular on the following points: (1) eae (2) ess (3) The slit héad contains, at the back, two flanges which by their pressure ..." It may be mentioned that there is no hint to the contrary if reference is made to the actual French text. The words are "le passage de chaque protubérance peut Stre aidée par la prévision sur..la tete ..." The expression "peut ~ Stre" means "perhaps", but the words do not appear to be used in that sense. The literal reading is that the passage of the protuberances is able to be helped by the provision of flanges. There is nothing optional or provisional about this. The words speak of something provided which, according to the invention, is able to help, not of something which may help if you choose to provide it. Thus, I am in agreement with the Jearned trial judge Tt re em ae ee ee ee ee - -- —< -.-. « . ame we eee ee - 7. who concluded that a skilled Australian reader of the Bayetto specification would treat each of the three paragraphs of the summary as stating an essential integer of. Bayetto's invention, that is to say, "he would understand that the diametral slit in the channel head was essential and that the shaping of the protuberances so as to be hevelled at the front and rounded and abruptly shaped at the back, and also the integer of the flanges having the function set out, were all essential parts of the invention of Bayetto". As to the second question IT am persuaded that on the proper construction of the specification and claims in suit the invention claimed is one comprising the integers specified and that the claims impliedly exclude other integers such as functional flanges. It may be observed that it is highly likely that if one came to the current problem otherwise than via the Bayetto specification, resting quietly in the French language in Canberra, as the claimant in suit did, it would not readily have occurred to him that the claimant had in mind to claim a connector of which flanges were a component. Nevertheless a claim which did so expressly, or, by failure to limit the shape of the head by excluding functional flanges, impliedly, would be anticipated by Bayetto. It is necessary to enquire, therefore, whether, on their proper construction, the claims in suit are limited to articles incorporating only the integers specified in the claim. The express words of definition or delimitation of the invention and the claims 8. state that the invention, the object of which is to provide a device for joining articles together, "comprises" the specific integers referred to in the consistory clause and claim one. It goes on to describe the functions of the integers in a way which demonstrates that these integers, functioning in the manner indicated, perform all that is required to achieve the object of the invention. No flange is mentioned. The claim to any other integer such as a functional flange is impliedly disclaimed. The limitation by function is to be seen in the words of the consistory clause and claim one, in which, after designating the integers other than the protuberances, called "heads" in the claims in suit, on the filament, the claim continues: " ... and a series of heads distributed along the filament to snap through the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket so that insertion of a head produces expansion of said prongs and, after a head has been inserted therethrough, said prongs, snap in behind the head to restrain withdrawal of the head from the socket." Accordingly, it is to be seen that the claim is not limited merely "by specifying integers, but is limited -by reference to the method by which they operate and the result they are to achieve. It appears to me that there is an implied disclaimer of other integers and thus of flanges as disclosed in the Bayetto specification. The specified integers involve a mode of operation of the invention ee ee ee ee me ne een 9. eritically different from that of the claims in suit. In relation to an article operating according to the methods disclosed in the claims in suit such flanges would be irrelevant. The whole thrust of the claims is that they specify a result to be achieved by the integers it specifies operating in combination in the manner specified and by no other method. Yunctional flanges are therefore outside the scope of the claims. Had the author of the claims in suit been aware of the Bayetto specification no doubt he would have expressly disclaimed any interest in flanges. The fact that there is an implied limitation of the integers claimed arises from his concentration on the method of the functioning of his set of integers and the result achieved. It would seem to me that if it be not correct so to discern the implied disclaimer it would be appropriate to give leave to amend. The construction of claims by reference to the specified result of their operation would seem to be valid. As was said by Barwick C.J. and Mason J. in Interleqgo A.G. ww. Toltoys Pty. Ltd. (1973) 130 C.L.R. 461 at p.480:- "The second objection is that the claim is wide enough to embrace a coupling method not disclosed in the specification (e.g. a clip) which would keep a primary projection in its appointed place. Again, we do not agree with this interpretation of the claim. It speaks of "hollow blocks ... adapted to be connected together by means of projections", indicating that it is confined to 10. methods of clamping effected by means of the characteristics to which it refers, including among them the walls of the hollow blocks. The claim asserts a monopoly limited by reference to the result of incorporating ain the construction of the hollow blocks the suggested relationship between primary and secondary projection, the result being that at least one primary projection is "clamped against" at least one secondary projection. It is permissible to Limit a claim by reference to result (see No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231), so long as, in the case of an article, the limitation is "sufficient to characterize the construction of the article claimed" (Mullard Radio Valve Co. Ltd. v. British Belmont Radio Ltd. (1938) 56 RPC I, at p.1é. As we have observed, the claim is in our opinion sufficiently limited." It would seem "to be a consequence of the specification in a claim of particular integers described as integers producing a particular and the only desired result that all other integers that might possibly have been claimed in combination therewith are impliedly if not expressly excluded. They are irrelevant to the inventions claimed. It is apparent that the outer perimeter of the surround of the cavity in the head of a connector according to the claims in suit might be of any shape and that the claim extends to the specified integers operating as stipulated in relation to a head whatever its shape, and even including non-functional flanges, and whatever its size. But in this respect assistance is to be found in the decision in No~Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231. That was a case concerning a patent for "an ash receptacle which without the aid of movable parts retains the smoke rising from went meee te as wea cal woe Ll. objects thrown into it." It was said that the size of receptacle was not specified. said at pp.237-8, "It is important, I think, to bear in mind that the Patentee is talking of an ash receptacle. That means, that within the limits of the ordinary receptacle, it would be marked by what I may call an ordinary size. u& would neither be Brobdingnagian nor would it be Lilliputian. It is to be what one might call a conventional ash receptacle. ... It is quite true that the dimensions are not stated either relatively to the shaft, or by any other measurement. ..._ . It is claimed that that is so vague that there is not sufficient indication by the Patentee of what is his patent, no sufficient indication of what the size is to be; and it is only to be discovered by the result which is aimed at. ... It appears to me that, if a just and fair interpretation is given to the description, and one bears in mind throughout that you are constructing an ash receptacle for smokers' use, there is a sufficient explanation of what the dimensions are to be. It is not an objection that the dimensions snould be selected by reference to the results as one sees when one turns to the cases. It seems to me that the proportions can be ascertained without the exercise of any new inventive faculty, if the directions laid down are followed; because the purpose of the invention is to construct a space for cooling smoke, and yet that is to be done within the limits of what might be called the conventional ash receptacle. It appears to me that the proportions need not be exactly laid down by the description, according to the inches of a foot rule, if there is a field in which the proportions may vary, and yet in which success may be achieved and ensured." It is a feature of both the claims in suit and of the As to this Lord Hanworth M.R. the Bayetto patent that the invention extends to connectors which eer - ween ene woe ae on : - nm ne - 12. may be of any size for holding together articles of any size and the exterior of the head of which may be of any shape. But there is no doubt a practical limit in respect of both these aspects. These matters are within the judgment of the user of the invention. A sense of proportion will prevail. But apart from functional flanges or some other functional feature of size or shape that might be introduced, there is no significance in any particular size or shape of the cavity surround that may be used. If the integers of the claims in suit are used to produce the result indicated therein in relation to any particular cavity surround then the article produced is within the claims. But this to my mind is not a fatal ambiguity or uncertainty because the specified integers will] operate as specified whatever the size of the connector and whatever the size or outer shape of the surround of the cavity. They are items which may be chosen by the person producing the connector for his particular purpose. The essence of the invention claimed by the applicant appears to me to be that it escapes from the limitations imposed by the inherent stiffness of the solid barrell vault shaped. socket or head of the Bayetto connector. To cope witn that stiffness Bayetto introduced the flanges. The diametral slit by itself was not enough to enable the halves of the socket to bend elastically on the socket sufficiently widely to permit the easy passage of the protuberances. This difficulty was met by the appellant by introducing prongs. uae e > we ee we 13. The general notion of prongs is that they are slender projections and in the setting described in the appellant's claim form part of the "resilient slotted portion" of the socket. They are flexible to the extent that the pressure of the protuberances exerted by the user pulling on the filament while holding the head is adequate to expand them to let the protuberances through. Having regard to the convenience of the user, elimination of the flanges and the adoption of flexible resilient prongs was significant. It is convenient simply to pick up the article, thread the filament through the socket and merely pull the filament until the prongs snap in behind a chosen protuberance. It is much less convenient to pick up the article, -then locate the flanges and fingers under the flanges, thread the filament into the socket, and then maintain the position of the fingers until the operation is complete. And the smaller the connector in use the greater the comparative consequence of a connector according to the claims in suit. Having regard, in particular, to the circumstance that in the use of the article it is contemplated that the user will, at one session, be involved in multiple repetitions of the task of closing the filament around groups of articles, presumably at the highest speed reasonably attainable the introduction of the flexible and resilient prongs and the elimination of the operation of finding the transverse flanges and fitting fingers below them appear to 14. me, to constitute a "substantial contribution to the working of the thing" per Dixon J. as he then was, at p.740 in Griffin v. Isaacs Official Journal of Patents, Trade Marks & Designs 7th May 1942. It was said that the exclusion from the claims in suit of flanges and the introduction of flexible prongs involved no inventive step. This is certainly arguable. However, neither of these features did in fact owe anything to the Bayetto specification. And that specification has nothing to say about a connector without flanges, or with prongs so flexible as to perform adequately their appointed function -without the assistance of prongs. It is easy with the benefit of hindsight to doubt the quality of inventions in the steps which distinguish the claims in suit from the Bayetto connector. But as was said by Fletcher Moulton L.d. in British Westinghouse Electric and Manufacturing Co. Ltd. v. Braulik (1910) RPC 209 at 230 of a new combination of integers:~ "I confess that I view with suspicion arguments -to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by English Patent Law." Pe te er ee ee re $e aw on ce ee ee ee ee ee - re ee ee er ee en 15. I am not satisfied that it would not have required an inventive step to eliminate the flanges and introduce the prongs. It was a step which appears to have had important commercial consequences if regard is had to commercial success of articles having these features and the non-success of the Bayetto connector. So far as the appellant's prongs .themselves are concerned it was contended that they are anticipated by Bayetto. It was said, first, that the halves of the socket produced by the diametral slit in the lower portion of the socket are prongs within the meaning of that word in the claim in suit, and secondly that the intimation in Bayetto that the invention claimed included as an option more than one diametral slit disclosed such prongs. I cannot think that what are referred to in this Bayetto specification as the "halves" created by the diametral slit would ordinarily be regarded as prongs. The author of the Bayetto specification does not use that word and I do not think it would have occurred to him to use the Prench equivalent. The halves are intended to be forced apart like jaws pivoting on an axis at about the same level as the top of the slit, their- "lips" extend right across the socket. Their elastic movement of bending on the socket must inevitably cause puckering and distortion because of the barrel vault construction of the socket. The function of the flanges is to contribute to the required opening of the slit by lifting meen Le cement ee ee me ee ore ce eee Meee ee - + - wee Rm ee ae eee eee 0 ee wee ek ne ene op Beerese oreo wey ree ee art Remy wo ogee pee tues Lommel reat sek re nme tem ee 16. the sides of the halves, thereby preventing or reducing the puckering and the distortion of the halves and so assist them to bend adequately. They do not look nor function like prongs. On the other hand the concept of a prong is, in the context, of a slender projection inherently somewhat flexible and described as resilient. Because of the slots the prongs are free or substantially free from stiffness inherent in the barrell vault setting. The slots have removed portions of the basic construction. Thus the prongs are able to respond to the pressure of the heads being pulled through without assistance from flanges, and being resilient, to "snap" back. It was natural for the author of the Bayetto specification to use the word "halves" and for the author of the claim in suit to use the word "prongs". The words were apt to express the diverse concepts in the minds of the authors as to the items which they were describing. The further enquiry then, is whether the prongs of the design in suit are otherwise disclosed in the Bayetto specification. The disclosure is said to follow from the statement in the Bayetto specification that the invention "could cover variant forms without departing from the framework of the invention. In particular several diametral slits radiating around the axis of the channel of the [head] could be provided." This statement appears after the invention with a single slit has been fully described. That description indicates that the flanges are located on 17. perpendicularly to the plane of the single dGiametral slit there in contemplation and that they contribute to the inflection of the halves in bending elastically on the socket. That inflection inevitably is in line with the line of the flanges. The summary of the specification refers to the socket having "at least one diametral slit through the axis of the channel and states that the flanges contribute to the opening of the slit." No doubt one additional slit would reduce the halves to quarters, and another to eighths of the socket, and sO on. At some stage, in the dissected socket, slices thereof would be created which might be described as prongs. The picture which emerges is however, rather different from that of prongs produced by cutting away portions of the socket. The question is whether what is said discloses such prongs as a method of facilitating the expansion of the socket so to accommodate the passage of the heads without flanges. The learned trial Judge considered that the references to additional slits which appear in the Bayetto specification "should be regarded as merely "bravado characteristic of patentees seeking to grasp a monopoly of things which they have not invented or even tried". Whether or not this be accepted in full it does reflect the difficulty of finding anything disclosed about the problems t 18. resulting from multiple slits of the socket or their operation. Thus it is not explained what direction the additional slits have to take relative to the flanges. It is not indicated whether additional flanges are required. There is no indication of the operation inter se of the "prongs" as members of the barrel vault e¢onstruction. Thus as an antecedent statement put forward by way of anticipation it fails to pass the test laid down in the judgment of Lord Westbury in Hill v- Evans 45 E.R. at pp-199-200 that, from it, "a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery, without the necessity of making further experiments and gaining further information hefore the invention can be made useful." I am not satisfied that the Bayetto specification anticipates the prongs of the claims in suit. Thus I consider that the claims in such are not anticipated by the Bayetto specification. On the question of anticipation it was said by Aicken J. in Minnesota Mining and Manufacturing Co. v. Berersdorf (Australia) Ltd. (1980) 144 C.L.R. 253 at 298, "I am satisfied that the Saldert patent did not Geprive the invention of novelty, because, although it discloses some of the integers of the combination it does not disclose all of them." I think the same might be said of the Bayetto patent and the claims in suit. It is to be noted also that in this case the claims in suit dispense with one of the integers incorporated Foe nme a ee ge ge ett tet eee a co 19. in the Bayetto patent, namely the flanges. I do not have difficulty in understanding what is conveyed by the words of claim No. 2. The distance between the top of the socket and the place where the prongs snap in behind a protuberance which has passed through is known. There is therefore no difficulty in spacing the protuberances along the filament so that immediately the prongs snap in behind a protuberance another protuberance seats in the mouth of the socket. The protuberance will seat when it is partly in and partly not in the cavity in the head. The word "for aligning said heads" convey to my mind that the protuberance which is so seated will be aligned with the protuberance behind which the prongs have snapped in. The benefit of this is that the filament will not wobble about in the socket and apart from anything else it will present a neater and more secure appearance. I am not satisfied that it has been shown that the claim is bad for ambiguity. Comments of like nature are applicable to claim No. 3. Claim No. 5 appears to me to be but a workshop addition involving no inventive step. - Accordingly, I would allow the appeal in respect of claims No. 1 to 4. - - wren ee te <~ aHe8 ° 2 BGIMCEN Cs) we ae, - Snwilhers 0 - oe Tatts, 9 93NCBI7 cL —— " em = teen = PR nee ee ree cee ee en me ee er geen ee eee vw IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIAN DISTRICT REGISTRY ) VG NO. 130 OF 1981 GENERAL DIVISION ) On _ appeal from a Judae of the Supreme Court of Victoria . BETWEEN : DENNISON MANUFACTURING COMPANY Appellant AND: MONARCH MARKING SYSTEMS INC. Respondent CORAM: Smithers, Fox and Franki JJ. REASONS FOR JUDGMENT FOX J. This is an appeal, with leave, from the Supreme Court of Victoria (Fullagar J.) in which a decision of the Acting Deputy Commissioner of Patents refusing the grant of letters patent to the appellant was upheld. wee oe ww een S --- —— a Because the facts and Jaw are so rully discussed in the judaments of Franki J.. and of Fullagar J.. tl shal! content myself with a brief explanation of why 1 am of the view that this appeal fails. The paper anticipation relied upon is what has been called the "Hayetto" document. 'The comparison to be made is between what was disclosed in that document and what is claimed in each of the claims in the subject application tor grant of a patent. The prior publication in a case such as the present is to be read as a whole, and not. construed as if it were the specification of letters patent, or of a claim therefor. The fundamental matter is the public knowledge it conveys, in a meaningful and instructive way. When it is said that there js no anticipation unless all integers of the later claim appear in the publication, it is necessary to see what are the integers in the subject claim, and see what, with reasonable precision, was disclosed in the pubJication. ft is apparent from Griffin v. Isaacs (1942) (12, A.Lid. 169; 12 Official Journal of Patents Trade Marks and Designs 739) that complete accord between the terms of the disclosure and the claim is not necessary. "Where variations trom a device previously published comsist in matters which make na substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is. I think. ampossibie to treat the differences as alvina novelty. Lt mav be true that in neatness. ease of adjustment and commercial attractiveness the particular publication, relied upon in the oresent case, is inferior to the applicant's arrangement. but, notwithstanding some misgivings caused by this fact, 1 think, that when the principle of the two things is considered closely the differences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty." (per Dixon J., Official Journal p.740) This statement encompasses what are commonly called "workshop improvements". In my view, all the integers of claim } are to be found in the Bayetto document. Reliance was placed on the absence of a reference in ciaim L to "flanges". in this comection it was submitted that the tlanges in Bayetto performed a function, necessary to what was there disclosed, of assisting in the opening of the diametral slot. The function of the Rayetto specification, it was submitted, was to ease the elastic strain in the socket, this having been, as was said, a problem in the prior art. 'The: flanges were integral with the rear of the socket (or "head"), the lower end being in fact the end ot the filament. There is reference in Bayetto to pressure against the flanges, but when the specification is read as a whote. including the diagram therewith, it seems to me that the pressure referred to is one in opposition to the sliqht force necessary to pull the filament (or "thread") through the socket. 'he document says Oo that the flanges were something against which to "rest" the fingers ot one hand. The reference ta flanges was not jnconseguential. i think it probable that the invention finally claimed included the tlanges, mit it was at the same time made clear, inmy view, that the tlanges could be dispensed with. This would seem to follow, as a matter of ordinary understanding: from the function given to them. Even 1f the flanges were a necessary part of Hayetto. the absence of any reference to them in claim | does not in this case establish novelty. The first reason, in my opinion, was that the change would only constitute an insubstantial change, a workshop improvement. this accords both with the view of the facts taken by the learned dudge and with an ordinary understanding of the nature and function of the flanges. the second aspect is that the absence of a reference in claim 1 to flanges is of uncertain import. Ihis flows in part from the absence of reference to the prior art, and in part to the width of the integers referred to in claim 1. 'there is nothing trom which it can be concluded that the absence of flanges was a part of the invention claimed. Associated with what was. submitted in relation to the flanges it was put that the claim reterred to something not mentioned in terms in Hayetto. namely "a slotted portion torming a plurality of prongs". It was arqued that the invention claimed was one based on "inherent resiliency", through which the heads on the filament passed with comparative ease (when the filament was pulled), as distinct from the more rigid structure of Bayetto. Reliance was placed on the use of the word "snap" to indicate the way in which the prongs went readily back into place after the passage through them of a head, thus blocking return movement. Bayetto provided for a diametral slit. Towards the end of the description of the invention it says: "Of course, the constructive measures stated above could cover variant forms without departing from the framework of the invention. In particular, several diametral = slits radiating around the axis of the channel of the head could he provided." Later, in the more succinct "Summary", reference is made to "at least one diametral slit". In the context, it seems to me that more than one diametral slit would in substance be "a plurality of prongs", although the term "prong" is itself a vague and imprecise one. A further point of distinction, associated with the action of the "prongs", which counsel seeks: to make, is that claim 1 provides for the prevention of withdrawal of the filament, backwards through the socket. What the claim says is "to restrain withdrawal". This was also claimed in Bayetto, as an essential part of what was there disclosed as having been invented. The effect of the prongs and heads, acting together, and with due regard to the location of the heads, may provide a greater restraint than that found in the Bayetto invention, but this is not clear and is not a matter explained in claim 1. In my view, a product constructed in accordance with claim 1 would not be more than a "workshop improvement" on Bayetto. In saying this, I reject the submission that the combination in claim 1 has a different purpose, or function, from that in Bayetto. In my view, the combination seeks to achieve the same results by substantially the same means. Claims 2, 3 and 4 are additive to claim 1 and in my opinion are without novelty. Claim 5 is as follows: "5. A connector according to claim 1 wherein the end of the filament opposite the socket has an elongate enlargement to facilitate insertion through the socket." I have had some difficulty in understanding what is meant by "elongate enlargement". We were handed, for our assistance, "connectors", or "unbreakable ties" on which the leading ends of the filaments are shaped, with a leading point at the apex of a cone, forming a head om the: end of the filament. They were described as "commercial versions" of the "Dennison device", but no particular significance was given to this description. It would seem that "elongate" in claim 5 should not be understood to refer to or encompass a device thus shaped. In ordinary English, it means an added length. The word "enlargement" in this context is ambiguous, but I think the phrase should be taken to mean that the end of the filament is lengthened. and increased in diameter, as compared with the rest of it. The purpose is, one imagines. to qive strength, or rigidity, or both, at that point. Aithough this feature is not mentioned in Rayetto, there is nothing to show that any inventive step was involved, and as a matter of ordinary understanding the addition of the integer to what is claimed in claim 1 would be well within the general knowledge of any appropriately skilled person. It is doubtless an improvement, but not one of sufficient substance to give novelty. This claim should also fail. I find it umnecessary to deal with the ground of opposition based on s.40 of the Patents Act 1952. I agree with the orders proposed by Franki J. I certify that this and the so ( 6) receding pages are & % 7 t2asons for Judgusnt her r. . Justice FOR ) i qj e ' J td rt E+ Associate Dated: 26 Tuby I9€3 a he ee rere, IN THE FLODERAL COURT OF AUSTRALZA) VICTORIAN DISTRICT REGISTRY } VG No. 130 of 1981 GENERAL DIVISTON ) On appeal from a Judge of the Supreme Court of Victoria BETWEEN: DENNISON MANUFACTURING COMPANY Appellant AND: MONARCH MARKING SYSTEMS INC. Respondent CORAM: Smithers, Fox and Franki JJ. 28 July 1983 REASONS FOR JUDGMENT FRANKI J. The appellant Dennison Manufacturing Company, appealed to a Judge of the Supreme Court of Victcoria under s.60(5) of the Patents Act 1952 ("the Act") against a decision of the Acting Deputy Commissioner of Patents dated 22 Pebruary 1977 whereby he determined an opposition by the respondent Monarch Marketing Systems Inc. in favour of the respondent and refused to grant a patent. The application had been made by the appellant under the provisions of the Act relating to Convention applications and the application in the United States cf aAnerice had a vriorizty date of 15 April 1963. The respordent was the only opponent i ee --- -- - - o - ~~ es . tw The notice of opposition relied upon many grounds including prior publication, want of novelty, obviousness, and non-compliance with s.40 of the Act. The initial decision to refuse the grant was made before the judgment of the High Court in Minnesota Mining and Manufacturing Co. Vv. Be1rersdorf (Australia) Ltd. (1980) 144 C.L.R. 253. The initial rejection was based upon a finding that none of the claims was valid and that a French specification, No. 1,332,239, ("Bayetto") constituted a complete disclosure of the alleged invention claimed in the claims 1, 2, 3 and presumably 4 and that claim 5 did no more than add a commonplace factor. Each claim was rejected for lack of novelty and the application was wholly refused. The appeal to the Supreme Court of Victoria, although called an appeal, was in the original jurisdiction of that Court. In those proceedings the appellant was successful to the extent that the Court ordered that claim 6 should in effect proceed to grant and the appellant was given certain liberty to submit to the Commissioner proposals for amendment to the specification. A Judge of this Court granted an application for leave to appeal to this Court under the provisions of s.148(2) of the Act. The appeal was brought pursuant to this leave under s.148(1) by the appellant but no cross-appeal was instituted. The appeal therefore raised the question whether any of claims 1 to 5 should proceed to grant. The specification in suit is entitled "Connector For Holding Articles Together". The specification commences: "Objects of the invention are to provide 4 device for joining articles together, wnich is neat and attractive in appearance, and which can connect articles or groups of articles of different sizes." It 1s next appropriate to set out the whole of the claims which, after some amendment made by the appellants whilst the application was under consideration in the Patent Office, are as follows: "The claims defining the invention are as follows: 1. A connector comprising a filament, a socket on the filament, said socket comprising a first non-slotted portion and a second resilient slotted portion, forming a plurality of prongs, and a series of heads distributed along the filament to snap through the resilient portion of the socket to form loops of different sizes, each head being slightly larger than the resilient portion of the socket so that insertion of a head produces expansion of said prongs and, after a head has been inserted therethrough, said prongs snap in behind the head to restrain withdrawal of the head from the socket. 2. A connector according to claim 1 wherein the spacing between the heads 1s arranged so that, when the prongs snap in pehind a head, a succeeding head effectively seats in the mouth of the socket for aligning said heads. 3. A connector according to claim 1 wherein the spacing between the heads is substantially equal to the depth of the socket so that, when the prongs snap in behine a head, the next succeeding head effectively seats in the nouth of the socket for al:qning said heads. rs 4. A connector according to claim 1 'vherein the non-slotted portion of the socket 15 circular and each head is conicai. 5. A connector according to claim 1 wherein the end of the filament opposite the socket has an elongate enlargement to facilitate insertion through the socket. 6. A connector substantially as hereinbefore described with reference to and as illustrated by the accompanying drawings." The respondent argued before this Court that each of claims 1 to 5 was anticipated by the Bayetto specification No. 1,332,239 entitled "Improvements in unbreakable ties, made in particular of plastic material". This specification has been available for public inspection in the Patent Office Library in Canberra in the French language since 14 July 1964, a date before the priority date of the appellant's application. An agreed translation in English of the Bayetto specification was before the Court and the matter was argued upon the basis of that translation and not otherwise. In the Victorian Supreme Court expert evidence was admitted subject to objection but no cross-examination took place upon it. The trial Judge said that a very great deal of the expert evidence on each side was clearly inadmissible but, apart from certain specific references, he did not identify the evidence which was admissible. The trial Judge referred to British Celanese Ltd. v. Courtaulds Ltd. (1935) 52 R.p.c. 171, at p.196, where Lord Tomlin in the House of Lords dealt with the position of an expert witness and said: uw He 1s not entitled to say nor 1s Counsel entitled to ask him what the Specification means, ner does the question become any more admissible if 1t takes the form of asking him what it means to him as an engineer or chemist. Nor is he entitled to say whether any given step or alteration is obvious, that being a question for the court." This passage would of course apply equally to a question of whether a given step or alteration was novel. His Lordship also pointed out that an expert witness: "... is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to 1ts meaning 1s capable of being carried into effect by a skilled worker. He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He 1s entitled to say whether in his opinion a particular operation in connection with the art could be carried out and generally to give any explanation required as to facts of a scientific kind." I will return later to the question of expert evidence in this case. Iwill first consider claim 1 cf the subject specification in relation to what was disclosed in the Bayetto specification. The Bayetto specification has to be eramined in the light of what it discloses and not what it claims. Indeed being @ French specification it does not contain any statement of claims. The Bayetto specirxication in referring to the prior art described the invention as relating to "a device known under the generic name of 'unbreakable tie'. An illustration of the prior art 1s shown in a drawing in the Bayetto specification. It 1s described in the specification as follows: A device consisting of a thick thread of plastic mater1al provided on its length with a series of projections or protuberances close to one another and which at one of its ends is integral with a solid head pierced by a channel which 1s slightly conical or narrow at its outlet opening, 1nto which channel the other end of the thread free from projections could be inserted in order to form a loop. In the prior art the thread could be pulled in one direction through the narrow opening but "its movement in the opposite direction 15s made impossible by the abutment of the protuberance against the rim of the said opening." The prior art therefore disclosed an unbreakable tie which, when once tightened, could not be moved in the direction necessary to loosen it. This restriction resulted because a projection or protuberance could not be forced in the reverse direction since that movement was prevented by the head. It was next pointed out in the Bavetto speciri1rceation that this type of device had the disadvantage "that, in order to tighten the loop on the object to be tiec, it was necessary to pull on the ree end of the thread with a very great force because each protuberance must Geform elastically in order to pass through the narrower opening of the solid head" and that the repetition of this gesture many times caused the hand of the person using the device to be hurt or injured. The specification then pointed out that the object of the invention was "... of remedying this disadvantage, by easing the passage through the head in the direction of tightening of the loop, while ensuring even more certainly the impossibility of reverse movement." The Bayetto specification continued: "It consists of slitting the head diametrally over a certain length from its outlet opening, in order to give it elasticity, this measure preferably being combined with a special shape of the protuberances, bevelled in their front (in the direction of the tightening movement) and, on the contrary, terminated behind by stepped surfaces at an abrupt angle". In my opinion the basis of the invention claimed in the Bayetto specification 1s the avoidance of the previous disadvantge of having to pull the thread "with very great force". This was achieved by "slitting the head" diametrally over a certain length from 1ts outlet opening. This aiso had the advantage of making it more difficuit for the protuberance to be pulled in the reverse direction because the sliz in the head closed benind the protuberance once the protuberance had been forced through the head. It was also said that it was preferable to combine this with protuperances which were bevelled in the front and terminated behind by stepped surfaces at an abrupt angle. The essential feature of what was disclosed in the Bayetto specification is therefore the easing of the passage of the protuberance through the head in one direction and the prevention of movement in the other direction by incorporating in the head the two diametrally opposed slits. The specification went on to explain: "In addition the elastic opening of the slit of the head by the passage of each protuberance can be aided by the prevision on the rear part of the head, of flanges resting against the fingers of the hand holding this head while the other hand pulls the thread to tighten the loop." The Bayetto specification then set out a preferred embodiment of the invention described as "an embodiment of an unbreakable tie according to the invention" and which includes a head pierced by a conical or narrow channel at its outlet opening with a diametral siit passing through the axis of the channel and protuberances of a "conical or bevelled shape". This clearly disclosed a conical channel with a diametral slit in the head and protuberances of conical shape. ct also disclosed that the back of the protuberance which would be important in preventing a reverse movement of the ovrotuperance had a "slightly rounded surface forming an acute ancle with the thread". It ais therefore clear that the protuberance would seat against the end of the head and make it substantielly impossible to reverse the movement of the thread unless the diametrally opposed parts of the head were separated. The specification then describes the method of operation of the invention and 1t 1s pointed out that the fingers of the operator would rest against the flanges and chat the pressure exerted by the fingers on the flanges would contribute "to this inflection and facilitates further the passage of the protuberance", The specification continues that: "Of course, the constructive measures stated above could cover variant forms without departing from the framework of the invention. In particular, several diametral slits radiating around the axis of the channel of the head could be provided. The tiles in accordance with the invention could be made of plastic material or any other suitable material." The specification continues with a summary which, inter alia, referred to flanges. Before us the question of the flanges was put in the forefront by the appellant and 1t was argued that the specification in suit did not refer to flanges and therefore Bayetto's disclosure did not affect the validity of the claims of the specification in suit. It 1s clear that claim 1 of the specification in suit did not specifically refer to flanges nor indeed did any other 10. claim. The patent in suit is, of course, what is known as a combination patent and its validity must be tested against the requirements for validity of such a patent. It was common ground before us that a grant should not be refused in respect of any claim upon the grounds of want of novelty or obviousness unless 1t appeared to the Court clear that the ground had been made out. (Monticatini Edison S.p-.A. v. Eastman Kodak Company (1971) 45 A.L.J.R. 593 at pp.595-596). The learned trial Judge was satisfied that claim 6 should proceed to grant since he was "not satisfied however, that a patent confined to what 1s within the scope of claim 6 would be clearly bad". The trial Judge approached the question of invalidity farst by construing claim 1 in a way which he described as "a benevolent construction" but even then he held that claims 1 to 4 were anticipated by Bayetto, that claim 5 was a mere "workshop improvement and no patent can be had for what 1t claims". This conclusion was based upon the view that, although he considered that flanges were an essential part of the Bayetto specification, claim 1 of the specification in suit included -.. flanged as - well as non-flanged non-slotted portions of the socket, and indeed would require flanges or their equivalent wherever these might be necessary ... His Honour next examined the claims to ascertain whether they complied with s.40 of the Act and said that clair l "ae stands revealed in my opinion as a combination including some integers defined by virtually meaningless phrases" and that claims 1 to 5 inclusive must fail on the ground of the uncertainty of claim 1. His Honour also came to the conclusion that the specification @id not fully describe the invention and that claim 1 was not fairly based on the matter described in the specification. It must be remembered that a claim is not valid 1f 1t claims more than the invention. Although I have reached the same practical result as his Honour reached and would dismiss the appeal, I have reached that conclusion, at least in part, by a somewhat different path. In my Opinion when one examines the Bayetto specification in order to see what it discloses as a matter; of construction one reaches the conclusion that the flanges are an alternative and not a necessary feature of what is disclosed. The view that flanges were an essential part of the Bayetto disclosure was in accord with the view expressed by Associate Professor Cherry, who swore an affidavit on behalf of the appellant, but a contrary view was expressed in an affidavit of Professor Hunt who referred to the flanges in the Bayetto specification as "optional additions". Associate Professor Cherry thougrt that the Bayetto specification disclosed a "barrel vault" shape. If flanges are necessary with such a construction 1t 1s pertinent to observe that claim 1 does not exclude a "barrel vault snape for the socket. Neither 12. expert witness was cross-examined and in view of the conflict of evidence I consider that the appropriate course is to examine the Bayetto specification itself. A major ground for the granting of leave to appeal related to the finding that claim 1 of the specification in suit included cases where the non-siotted portion of the socket was flanged. I am of the opinion the flanges were an "addition" which "aided" the passage of each protuberance through the head and not an essential part of the disclosure. They were an Optional extra. If this conclusion 1s not correct and flanges were required for the operation of the device I respectfully agree with the learned trial Judge that claim 1 would also require flanges, or their equivalent. The integers of the connector claimed in claim 1] are: (1) A filament. (2) A socket on the filament comprising (a) a non-slotted portion and (b) a second resilient slotted portion forming a plurality of prongs. (The slots may be diametral or otherwise). (3) A series of heads distributed along the filament (a) to snap through the resilient portion of the socket to form loops of different sizes and (b) each head being slightly larger than the resilient portion of the socket, so that the insertion of a head produces an expansion of the prongs which, after the head has been inserted therethrough, snap in behind the head to restrain the withdrawal of the head from the socket. In my opinion the Bayetto specification clearly disclosed: (1) A thread (called a "filament" in the specification in suit). (2) A head (called a "socket" in the specification in suit) comprising (a) a non-slotted portion and (b) a second resilient slotted portion forming a plurality of prongs (2 prongs are a plurality and the diametral slit creates the 2 prongs). (3) A series of protuberances (called "heads" in the specification in-suit) distributed along the thread (a) to snap through the resilient portion of the head to form loops of different sizes (b) each protuberance being slightly larger than the resilient portion of the head. Senior counsel for the appellant argued that claim 1 be given a purposive construction and cited Catnic Components Limited v. Hill and Smith Limited (1982) RPC 183 at op.242-243. He directed attention to the use of the words "so that" and "snap in". He also argued that the word "resilient" referred 14. to the material of which the socket was constructed. In my opinion 1 a protuperance passed through the diametrally slitted head in the Bayetto construction that head would close behind the protuberance in the same way as 1t 1s claimed the protuberances (called "heads") in the subject specification which had passed through the slotted portion of the socket in the subject specification "snapped 1n" behind that slotted portion. The word "resilient" qualifies the slotted portion and is not specifically limited to the material of which that portion is constructed. The words "snap in" are extremely loose and I do not consider that they are to be given the rather special meaning which the appellant seeks to place upon them. The learned trial Judge drew attention to the failure of the appellant's specification to identify the prior art or the problem which the alleged invention was designed to overcome or indeed to set out what the appellant claims to have invented. Whilst it 1s not necessary for the validity of a claim that the specification should deal with those questions, a farlure to so do raises considerable difficulties. The appellant submitted that the trial Judge was in error in identifying the art to which the specification related and that it was particularly directed to a method for providing a suitable tie for fixing tickets to articles in, for example, supermarkets so that the tickets could not be removed by customers. it 15 quite impossible to draw any such conclusion from the specification. I Have already quoted 15. what were alleged in the specification to be the objects of the alleged invention. ; The specification refers to the following matters in relation to the preferred embodiment: "Preferably the socket is circular and each head is conical and the socket 1s slotted to facilitate expansion. In the preferred -Iabodiment the end of the filament for insertion through the socket has en elongate enlargement to facilitate insertion." Clearly claim 1 includes sockets which are other than . circular. Later the specification continues: "The connector is molded in a single integral piece of nylon or other thermoplastic material which is resilient and the socket 1s slotted to form prongs 6 to snap in behind the heads 4 as shown in Fic.5. Preferably-the socket 1s circular as shown in FIGS.1 and 3, and the heads are conical as shown in FIGS.2, 4 and 5. The heads are slightly larger than the socket so that they seat on the mouth of the socket as shown in FIG.5 and must be forced through the socket, the heads contracting sliaghtly and the socket expanding slightly due to their resiliency." This passage points out that 1% 1s at least preferable for the heads to "seat" on the mouth of the socket as shown on Fig.5. Fig.5 shows the head partly out of the supporting socket, although claims 2 - 3 refer to 1t being seated "in the mouth of the socket". 16. The passage I have just cited refers to "the socket" and "their resiliency" - a confusing combination of singular and plural. Following the vassages I nave set out, the 'following appears: "RK salient feature of the invention consists in that the spacing between the heads 1s substantially equal to the depth of the socket so that, when the socket snaps behind a head, the next succeeding head seats in the mouth of the socket as shown in Fig.5 to hold the filament against back-and-forth movement." It 1s strange that this salient feature only appears in Claims 2 and 3 where it is said that a head "seats in the mouth ef a socket for aligning said head". Senior counsel for the appellant could only suggest that the words "for aligning said heads" were mere surplusage. The use of the word "in" in claims 2 and 3 gives rise to some difficulty since in part of the body of the specification the word "on" is used. The specification proceeds: "Tt should be understood that the present disclosure is for the purpose of illustration only and that this anvention includes all modifications and equivalents which fall Within the scope of the appended claims." This statement clearly indicates that the claims are 17. proad claims and chat everything that falls within the scope of the claims 1S sought to be protected. I agree with the learned trial Judge that a connector with flanges on the non-slctted portion of the socket, whether for ornamental or other purposes, would not necessarily be outside claim 1. Aickin J. in Meyers Taylor Pty. Ltd. v. Vicarr Industries Ltd. (1977) 137 C.L.R. 228 at p.235 pointed out that: "The basic test for anticipation or want of novelty 1s the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement." When reading the technical evidence 1t is necessary to bear in mind that most of it is not directed to any particular claim but directed to a rather ethereal device called the "Dennison device". During the conduct of the appeal we were handed, for the purpose of illustration, a small plastic tie which we were told was a Dennison device. A superficial examination of this device showed that it was close to what was claimed in claim 6 but it differed in certain ways, for example, the heads were placed further apart than those shown in Fig. 5 and the upper head shown in that figure certainly rested neither un nor on the mouth of the socket. In addition the rear part of the elongate enlargement referred to in clair 5 was of a greater diameter then the forward part. Any vroct of commercial success with respect to a "Dennison device" is therefore of little or no value except perhaps in relaticn to claim 6. 18. The apoellant alsc referred to the prevention of tampering which was said to be a feature of the appellant's device. However, there 1S nothing in the specification to indicate that this 1s a problem which either was considered, or solved, apart from the statement that the construction was such that when the head had been passed through the prongs, the prongs operated "to restrain withdrawal of the head from the socket". Even assuming that the word "restrain" means prevent, 1t does not take the position any further than the Bayetto specification where a similar movement was said to be "absolutely impossible". It 1S next necessary to pass to the relevant law. The relevant grounds of opposition are those set out in s.59(1)(g)(h) and (i) of the Act which permit opposition upon the following grounds: (g) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim; {h) that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia; and (i) that the complete specification does not comply with the requirements of section 40. It was made clear in Minnescta Mining supra, by Aickin J. at p.295, with whom Barwick C.J. , Stephen, Mason and Wilson JJ. agreed, that a prior specification was not capable of sustaining an argument that because of it the invention claimed was obvious without evidence that 1t was part of common general knowledge at the relevant time. Since 1t 1s clear that the Bayetto specification was not part of common general knowledge at the relevant time it cannot be used to support opposition based on obviousness. In Minnesota ™ Mining the question was one of validity of the patent after grant but the relevant words in s.100(1)(e) are the samé as those in s.59(1)(g). Section 40(1) and (2) of the Act reads: "40. (1) A complete specification- (a) shall fully describe the invention, uncluding 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." The judgment in Minnesota Mining clarified the law in relation to "obviousness", the meaning of which had previously given rise to a great deal of debate but, in addition, Aickin J. made some mention of the question of anticipation and, in regard n 20. to what he said, there 1s no difference between the question of whether an unvention was novel within s.59(1) or "had been anticipated". His Honour said at p.298: "It appears that before the trial judge there was no argument presented on the objection that the patent had been anticipated by some prior publication and no such argument was presented before this Court at the hearing. However in written argument submitted by the respondent in reply a submission was made which was expressed in terms both of anticipation and obviousness. It is not altogether clear whether 1t was intended to raise the question of anticipation but it 1s desirable to deal with 1t as if it did raise that point. I am satisfied that the Salditt patent did not deprive the invention of novelty because, although it discloses some of the integers of the combination 1% does not disclose all of them. Because the information contained in the Salditt specification was not common general knowledge in Australia at the relevant time I do not need to examine it in relation to obviousness." It seems clear that Aickin J. was saying that in a case of paper anticipation of a combination patent based on a prior patent specification that specification must disclose all the integers of the combination. Before us the respondent relied upon the judgment of the High Court in Griffin v. Isaacs, reported in part in (1938) 12 A.L.J. 169, but more fully reported in Vol. 12 of the Official Journal of Patents, Trade Marks & Designs, p.739. Dixon J., as he then was, pointed out that it was a case of opposition confined to a consideration of novelty. At that date the Patents Act 1903 was in force and s.56 provided for opposition, inter alia, on the ground: 21. "(e) That the invention 1s not novel or has been already in possession of the public with the consent or allowance of the inventor; (#) That the invention has been described in a book or other printed publication published in the Commonwealth before the date of the application or is otherwise in the possession of the public." This was a case concerning the construction of the tops of trousers and his Honour said at p.740: "But as this is an opposition we are confined to a consideration of novelty. The decisions of this Court in McGlashan v. Rabbett 9 C.L.R. 223; Gum v. Stevens 33 C.L.R. 267 and Arnott v. Peak Prean 9 A.L.T. 73 have illustrated the difficulty of Maintaining a definte distinction between novelty and subject matter. Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thang or involve no ingenuity or inventive step and the merit of any of the two things, considered as inventions, 1s the same, it 1s, I think, impossible to treat the differences as giving novelty. It my be true that in neatness, ease of adjustment and commercial attractiveness the particular publication, relied upon the the present case, is inferior to the applicant's arrangement, but, notwithstanding some misgivings caused by this fact, I think, that when the principle of the two things 1s considered closely the differences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty." McTrernan J. took @ similar view, anc he said at p.740: It 1s not, however, ouplication of the very 22. anvention alleged but of a construction consisting of the upper portion of a pair of trousers containing an adjustable self-supporting band." Starke J. said at p.74l: "But the question 1s what advance did the appellant make upon the opponent's trouser top? What addition did he make to the stock of public knowledge? He divided the tension belt or band at the back of the trousers and anchored the ends there or thereabouts. And he described a method of fastening his belt or band near the hips of the wearer. A development which any competent workman in the trade might have made had he needed it is not an invention and is wanting in novelty as well as in subject matter. Dividing a belt or band and anchoring the parts severed is but a development in manufacture and well within the range of skill possessed by a competent workman. The fastening of the belt and bands is equally within the range of skill of the competent workman. And there is no advance in knowledge in the method described by the appellant; it is simply a development in manufacture. The appellant is entitled, however, to have his arrangement of 'supporting means for trousers' considered as a whole or in combination and not in its several parts. In my judgment, however, the invention claimed by the appellant whether taken as a whole and in combination or in its several parts 1s wanting in novelty. Nothing is disclosed that is not already known to or well within the range of knowledge of competent workmen in the trade of manufacturing trousers." Latham C.J. at p.742 said: "It 1s contended by the applicant that there are essential agifferences petween the Opponent's alleged anticipation and the applicant's invention. Some of the distinctions alleged are, I think, plainly immaterial." 23. He later said at p.743: "The comparison, upon opposition proceedings where the objection or absence of novelty is taken, must be between the claim as actually made and the alleged anticipation. eee In my Opinion the division of a composite band into two straps one on each side of the trousers does not constitute any real distinction between the two divisions. What might be called the working of the applicant's invention 1s completely disclosed by the waist band made by the opponent." Although this judgment must be considered in the light of the provisions of the then existing Patents Act, it seems that it 1s equally applicable today notwithstanding the statements with regard to novelty in Minnesota Mining. It was common ground that what was said by Lord Westbury in Hill v. Evans (1862) 4 DE.G.F.and J. 1195 at p-1199-1200 and at p.1200 in particular was applicable and that "The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent". Hill v. Evans was cited with approval in a great many cases including for example, Flour Oxidizing Co. Ltd. v. Carr (1908) 25 R.P.C. 428; Pope Appliance Corperation v. Spanish River Pulp and Paper Mills Ltd. [19297 A.C. 269 at pp.275-276 and British Thomson-Houston ve Metropolitan-Vickers Electrical Co. =e tere ne rs piecerica' <0. 24. La. (1928) 45 R.P.C. 1 at p.22. I am satisfied that claim 1 was anticipated by the Bayetto specification and therefore it lacks novelty. Claim 2 does no more than introduce an ambiguity to s:"ch I have previously referred concerning the position of a succeeding head" and claim 3 raises the same Gifficulty with "the next succeeding head". Claim 4 makes 1t essential that the solid portion of the socket and each head be conical but this is clearly anticipated by the Bayetto specification. Claim 5 gave me some concern. I am satisfied that the "elongate enlargement to facilitate unsertion through the socket" is not disclosed in the Bayetto specification. it therefore represents an integer which 1s not disclosed in the Bayetto specification and consideration must be given to the words of Aickin J. in Minnesota Mining at p.298, which I have cited, and cases such as Hill v. Evans. Had it not been for Griffin v. Isaacs ™ might have had some doubt whether I should reach this conclusion. There was no evidence from anybody skilled in the art to indicate that the elongate enlargement 1s a feature which would not have been a development which any competent workmen in the trade might have been expected to make. I agree with the views expressed by the 25. Acting Deputy Commissioner of Patents when he said that 1t was "commonplace to provide an enlargment or strengthening of a thread which i1n use passes through a socket. The most commonplace example of that 1s, probably, the tang of a bootlace". I also agree with the learned trial judge when he said about this integer that: "At best it claims a mere workshop improvement". I take the view that this integer does not save the claam from being invalid. It 1s not necessary to reach a conclusion on the questions which arise under s.40. In this regard I note that Aickin J. said in Minnesota Mining, supra, at p.274 that: "Lack of precise definition in claims 1s not fatal to their validity so long as they provide a workable standard suitable to the intended use". However, no more than the invention can be claimed. As I have said, in my opinion the appeal should be dismissed. I would order that the appellant pay the respondent's costs of the appeal and the costs of the application for leave to appeal. I would extend the time within which the appellant be at liberty to submit to the Commissioner proposals for amena@ments to the specification until three months from today or for such further period as the Commissioner may allow. ra (2%) I certify that tnis and the erty et preceding pages are a true copy of the Reasons for Judgment herein of his Honour Mr Justice Franki. ucts a a ' G 7" Associate Dated: / g 63 28.7.83 a ae —~ —