IN THE HIGH COURT OF AUSTRALIA. x Paper Sacks Pty., Ltd., and anor. REASONS FOR JUDGMENT. Judgment delivered at Sydney ___.. HL. J, Gnenw, Government Printer, Motbourne, ston, { Sia pik eee COWFER Vv. PAPER SACKS PROPRIETARY LTD. RENT STARKE J.° The appellant is the proprietor of Letters Patent 21009/25 for improve- . \ ments in paper bags, and he applied under Sec. 71 of the Patents Act 1903- 1921 to amend his complete Specification by way of disclaimer correction or | explanation. The Commissioner refused the application, and an appeal is now vrought to this Court, pursuant to Sec. 75 of the Act. It is not material in this case to consider whether the amendments pro- posed by the patentee were by way of disclaimer correction or explanation (see Minerals Separation Ltd. v. Potter's Sulphide ete Ltd & C.L.R. 779), because Sec. 78 of the Act provides that no amendment shall be allowed that would make the Specification, as amended, claim an invention substantially larger than or substantially different from the invention claimed by the Specification before amendment. The Specification of the invention states that it relates to paper bags of the kind adapted for heavy service - that ts, for containing such heavy charges or for standing such rough usage as woujd necessitate a single layer of paper for forming the walls thereof be- ing of such a thickness that it would be cracked or seriously weakened by : folding. The Specification in describing the invention sets forth three main elements: / 1. Making the walls of the bag of a plurality of plies of paper. 2. Closing the bag and reinforcing the closure by means of strips of mate 3, Providing an opening, or, as it is called, a valve, in the bag, for the purpose of filling it. It seems a simple even if it be a useful invention, but the inventor in his Specification made no less than twenty eight claims to protect it. And, worse still, he endeavours, in his separate claims, to cover "every possible permutation and combination cf elements entering into the invention" by : reference to and incorporation of other claims. Thus, to take Claim 10 as an illustration: "A paper bag as claimed in any of the preceding claims "characterised in that a valve is provided in an end which is closed". Many hundreds of permutations and combinations of elemants entering into the invention are thus sought to be protected. No doubt this is the result of Sec. 61 of the Australian Patents Act , which provides: wwhere the complete Specification contains two or more claims in respedt df the invention the invalidity of any one claim shall not affect the va- | Liaity of any other claim or the validity of the patent so far as it re- | lates to any valid claim". 2 » The object of a claim is to give a clear statement of the invention claim - ed, but the method adopted in this case and rendered possible by the pro- visions of Section 61, fails to achieve that object and affords ® no pro- tection whatever to the public. It is a method that the Conmissioner of Patents might usefully check. (Patents Regulations Cl. 1}, Bancroft's Ap- plication 23 R.P.C. 89). However, the question is whether the amendments proposed claim an invention substantially larger than or different from that claimed by the Specification. The main amendment is that set forth in amended Claim 1 as follows: *A paper bag of the kind adapted for heavy service having its walls compos- ed of a plurality of closely nested tubes of paper the plies of which are relatively movable at the places subjected to bending and having both of its ends closed by means of reinforced sewn or stapled seams which are formed by collapsing the nested tubes and making a reinforced sewn or sta~ pled seam parallel and adjacent to each end thereof by sewing or stapling through the combined thickness of the walls of the bag and of reinforcing strips overlaid on either side of such closures and having the said plies of paper attached to one another only ty the said end closures and having at one corner of the closed bag a valve formed by infolding a part of the multiply wall of the bag prior to the operation of forming the adjacent closure". element or Now this claim combines every/feature in the invention: it is, in truth, a claim for a combination. But where is any claim to such an invention found in the unamended Specification? Let me take a few illustrations. Claim 1 in that Specification is for a paper bag having its walls compos- ed of a plurality of plies of paper which are relatively movable at places subjected to bending and having one or both of ita ends closed by means of sewing stapling or the like. The reinforcing strips and the valve, mention- ed in the amended Claim, are not part of this Claim. Claim 10 in that Spreification is for a paper bag as claimed in any of the preceding claims characterised in that a valve is provided in an end which is closed. But there is no claim here to any other feature: it is merely the application w of that feature (the valve) in a certain description of bag. Claim 19, on which most reliance was placed, is for a paper bag as claimed in any of the preceding claims characterised in that the bag is formed of a nested series of tubes, such tubes being attached to each other only ar the closures at the ends of the bag. Here again, all that is claimed is 4 nested series of tubes attached to each other only at the closures of the end of the bag, and the, application of that feature in a certain description of bag. Further illustrations are unnecessary: all the claims in the unamended Specificatiow are open to the same observations, and none of them foreshadow or set forth the combination in the amended Claim 1. The amended Claims other \ a than that already mentioned are for substantially subordinate parts of the combination proposed by the amendment: they do not disclaim correct or explain anything in the unamended Specification , but claim something new or different from that set forth in that Specification. The Commissioner was quite right in my opinion in holding that the amendments proposed by the patentee claim an invention substantially different from the invention claimed by the Specification, and there- fore this appeal should be dismissed. PAPER SACKS _ PROPRIETARY _ LIMITED. ZUDGMENT DIXON Je v PAPER _SACKS _ PROPRIETARY _ LTD. The question upon this appeal is whether an amendment should be allowed under Part IV Div 4 of the Patents Act 1903- 192I X of a specification for an invention for improvements in paper bags for which a patent has been granted. An amendment may not be granted unless it x€&- by way of disclaimer,correction,or explanation, and it does not make the specification,as amended, claim an invention substantially larger than,or substantially different from the invention claimed by the specification before amendment. ( sec 7I and sec 78 ), If the amendments sought were granted, the specificat- ion would describe and claim an invention consisting in the combination of a number of elements in a paper bag of a kind adapted for heavy service. The elements combined would be these~ I. The bag would be composed of a number of tubes of paper. 2. 3. The tubes would be nested closely one within another. The plies or sheets of paper would be relatively moveable inter se where the bag was subject to bending. Both ends of the bag would be closed. They would be closed by means of reinforced sewn or stapled seams formed by collapsing the nested tubes and making such seam by sewing or stapling through the combined thickness of the walls of the bag. The seam would be parallel to the end of the bag and adjacent to the end. The seam would be reinforced by strips overlaid on each side. The plies or sheets of paper would not be attached to one another | Loe. save at the ends. 9 At one corner of the closed bag a valve would be formed. IO It would be formed by folding in a part of the wall of the bag composed of the plies or sheets of papere II The valve would be folded in before that end of the bag was closed. The specification would also include additional claims adding other elements to a paper bag constructed with these characteristics. Although there can be little doubt as to the nature of the invention disclosed by the specification as it would | be amended if the application were granted, ji-is by no means easy ! to discover from the unamended specification what is the invention it ascertains and claims . The difficulty does not arise from Poe J * the body of the specification,but from the nature and number of the claims with which it ends. The advance in the art of constructing heavy bags as containers of quantities of heavy material which is descrihed and ascertained in the body of the specification is clear enough. The specification states the disadvantages of employing single sheets of thick paper,the expense of the paper,its tendency to break where folded,the necessity of closing it by pasting down the ends,the stiffness and consequent imperfection of valves made by folding in. It then proceeds as follows:- " With the object of avoiding these defects the walls "of the bag, according to the present invention,are made of " several plies of lightweight paper, the plies being moveable oT) " relatively to each other at least at the places subjected to bendin "and it has been found that the walls when so made may be folded "without causing any substantial weakening thereof, that a valve "made by folding the walls of the bag is sufficently flexible " to give a satisfactory closure, and that the strength and " qurability of the bag under rough handling are @Teatly increased "over a bag made from a single ~sheet of substantially the total " weight of the sheets used. " The specification goes on to describe changes which are vrescribed or recomended in the mode of constructing a bag because of the alteration from 4 single sheet of thick paper to a number of sheets of thinner paper. The bag is to be closed by sewing,stapling or the like, instead of by pasting. The valve is to be formed at the junction of the side wall of the bag and the end closure , and it is to be formed by folding in the wall of the beg at, that point : further | 2 number of plies of peper are to be folded in. The stapling may be reinforced by a tape which may be adhesive , and may be placed on both sides. A preferred construction is by nesting tubes one within another, and leaving them unattached save at the ends. The valve is formed before the closing of the bag. The specification mentions some minor matters and enlarges on the advantages afforded by the method of construction described. The invention so far disclased might be briefly but not inaccurately described as @ paper bag for rough usage constructed of a number of sheets of comparatively thin paper attached together at one or both ends and not otherwise, so that,in bend ng the sheets are capable of separate movement, and so that a valve may be made by folding in the walls of the bag which may include some subsidiary improvements that are necessitated by or occasion ed by the use of a number of sheets of thinner paper instead of one sheet of thick paper. But the specification ends with twenty eight claims. The first of these claims a paper bag of the kind before referred 'to in the specification ( which I take to mean "suitable for heavy " service,for containing material of great weight,and for withstanding " rough usage" ) having its walls composed of a plurality of plies of paper which are relatively moveable at the places subjected to bending, and having one or both of its ends closed by means of sewing,stapling or the like, Most of the remaining claims commence with the words — "a paper beg as claimed in claim ( giving the number of or " otherwise referring.to one or more previous claims) characterised "in that ". Then follows a statement o£ some element or attribute not before referred to in the claims. If these claims are treated as relating to one invention only they do no more than progressively restrict the area of the monopoly for that invention by progressively increasing the elements in which it consists. But although a patent may be granted for one invention only,it is not competent for any person in any proceeding to take any objection to a patent on the ground that it comprises more than one invention and if the specification contains two or more claims in respect of the invention,the invalidity of any one claim does not affect the fi" validity of any other claim or of the patent, secs 6I and 65. _ In the security afforded by these provisions the applicant has been able to urge that amongst the claims in his specification he has claimed an invention consisting in a bag constructed with the eleven character- istics or elements for which his amended spevification would ckaim a combination, The claim by which this is said to be excomplishea is the 19th which claims for " a paper bag as claimed in any of the precdéfiding " claims characterised in that the bag is formed of a nested series of " tubes such tubes being attached to each other only by the closures " at the ends of the bag." It may be conceded that by a judicious synthesis of the characteristics to be found in the prec&Ming claims, the a bag may be discovered in this claim possessing features for which a combination claim is now sought, In my opinion it does not follow ro ' 'that the specification as amended would not claim an invention substantially different from that claimed by the specification as it stands. In the first place the description " a paper bag as claimed in "any of the claims preceding the 19th " includes bags constructed according to a very large number of differing descriptions. The invention claimed by the 19th claim appears to me to reside,not in combining with the nested tubes attached only at the ends the other elements which make up the eleven features for which a combination claim is now sought,but in giving the characteristic of a nested series of tubes attached only at the ends to all or any of the bags which may result from the previous claims separately or in association. In the next place it appears to me that a claim for a combination of the eleven features enumerated seeks protection for an invention which consists in combining for the first time these eleven integers whether or no any or all of them had been previously used or known, This appears to me to be an advance in the construction of bags substantially different from that disclosed by the I9th claim,consisting as it does in adding the specific features distinctly claimed by the I9th claim to bags of very many differing modes of construction notwithstanding that one of such modes involves the use of the other elements in combination. The divergence is still greater if,instead of concentrating on the I9th fi claim and the kinds of bag which may be discovered among those within the general words of the clause, the whole specification including the claims is read T2 for the purpose of discovering what in substance is the single invention for which protection was sought by the unamended specification. That invention was not a combination of integers possibly old. On the contrary it depended primarily upon the use of many sheets of thinner paper in place of one sheet of thick paper and upon the consequences which ensued from that use, No doubt some of the devices which according to the specification were made practicable or necessary by the use of a number of sheets of paper were combined with that method of comstruction. But nowhere is it claimed in the spevification that the merit of the inventor lies in effecting the combination. In my opinion the amendments sought would,if allowed, make the specification as amended claim an invention substantially different from the invention claimed by the specification before amendment. For these reasons I think the appeal should be dismissed with costs. HORMAN LETHBRIDGE COWPER. ve PAPER SACKS PTY.LTD. SND ANOR. JUDGMENT. EVATT J. TU cueeae. EAP? 2. The appellant unsacesssfally sought leave from ths Commissioner te amend a specification dated 17th. February 1925, and now appeals to thie Court. - Qur dccision neoessarily turne upon the trae nature of the inventions deseribed and sonopolies claimed in the original epec- ifleation, It is headed "Improvements in fapsr Bags". The inventor dsclolas his invention an@ the manner in which it is to be performed "to be fully deseribed and ascertained in and by" the worde and figures used, prior to the asalaration of claim to 26 consscutively tumbered heads of monopoly. Side by side with this deseription and these olai- me, we have to est the deseription and the 12 olaims to monopoly oon- tained in the proposed amendmant. the matter is conveniently tested by amendsd olein no.l. It is a slaim of monopoly to a paper bag, which combines a large nanber of separote features. It was clearly shown by Mr. Stanley Lewle thet g. this combination as such was not deseribed or ascertained in the body of the original specification or in the érawings attachsé thereto. it ig sald, however, that if the combination now selected and given gach prowinenct was claimsé ag a monopoly in the original 26 heads of @leim,the sere failure to desoribe and sseertsin it should not be deemed a ber to the amendesxt. Was new elaim 1 included in any of the 28 ol4 claius? Five of ths old claims wereng GZ. — "i. A paper of the kind hereinbefore referred to having "ite walls of a plurality of piles of paper which are "relatively movable at tha places subjected to hending and hav- "ing one or both of ite ends closed by meane of sewing, stapling "or the like. "|, ah paper , a8 olaimed in any of the preceding clains "in which closure effected by sewing, characterieed in that "a reinforcing strip in associated with the closure. "10. A paper bag, as claimed in any of the preceding claine, "gharseterian' in that a valye ie provided in an ené which is "18. <A papexy bag, 28 claimed in @laimsl¢ or 11, characteris- "afi in that the valve ie formed by folding in the wall of ths , 3. "19, A paper eleime "ogharactericed ia ebke's the "of tubes, such tubss being attached "the closures at the ends of the bag. Hew olain no. 1 is:- ain any of the preesding clains is formed of a neuted ecries to each other only by mA x bag of fag kisd adapted for heavy servics "having ite wal. & plural ity of closely nested "tabes of paper the pilas oof ee ich ars relatively movable at "the places subjected to bending and having. doth of ite enéis ""elosed by means of reinforesé sawn stapled seans, which "are formed by oollaps: the the nested' tubes and mixing « re- "inforesa sewn or atapls liel and adjacent to each "enfi thereof by sewing or stapl through the combined thick- "nese of the walle of the bag and of reinforeing strips ovsr- "laid on either sige of such elesures and having the said "piles of paper attached to one another only by the said end 'closures and having at one corner of the closed beg a valve conTiued Mt Sreanant of the appellant is that new olsim no.) is mbbgusteiee'in.ol4 claim i9. the latter ciaim (it is said) is for a "paper beg, as claimed in any of the preseding cloius", with a new feature supsraddsd. Som It is not possible to derive new eoubinstion elain nOel from any of the old claims unless it ie present in 014 o19im . 4 z C ° ersle 19% «6Itis im 19,12719 fe treated ss s olais to a monopoly in reepect of = bag which contains the feature emphasized in 19 (which ie included in new claim 1), together with all the other elements making up nsw claim 1. The only way in which a claim te such s combination can (@mamiisieg De rend into or constructed out of the old claims is by treating the latter in consecutive order from Ho.1] to Bo. 19 as imoluding monopoly claims to all the bags whieh would embody or cou- bine any or all of the features deueribed as tne claims increase in number. By way of illustration, o14 claim 7 when it claims a"paper bag as claimed in any of the preceding claima ete." would be treated ae a claim for a monopoly to all the various bage combining any ons or more or all of the features included in olaima 1 to 6 inclusive, with the added feature mentionsé in claim 7 iteelf. Bow if such conbizstions were treated as having been @laimed, it follows at ones that, olaimf 1 fis a claim te a monopoly Be for 2 types of bage, glaim 2 is a claim te a monopoly for 2 typee of bage, claim 3 is ®& claim te a monopoly for 4 types of bags, claim 4 is a claim to a monopoly for 8 types of bags, claim 5 is a elaim t¢ @ monopoly for 16 types of bage, claim 6 is a claim to a monopoly for 32 types of bags, elain? 7. is a olaim to a monopoly for 64 type: of bags, and s0 on. Thas, the 64 bag monopolies elaimed in claim 7 would inelude every bag containing the characteristic feature of 7 in - combination with every possible combination of bag containing one, two or more of the festures in elaima 1 to 6. Proceeding along the list to claim no. 19, that claim would (upon the basis desoribed) represent s claim te 34,616 eom- binations of bags each ons of which contains the characteristics of claim 15. Claim ne. 28, ascording to the same process, would be a elaim te many hundred of thousands of combinations. It is trae that of the 44,816 combinations which, upon ths hypothesis suggested, lie hidden in the simple phrasing ot Ss 6. there woulé,ae 2 mthematical neceseity,be discoverable one bag cor- responding to the combination now described in new claim no. 1, and ths argument for the appellant involves the contention that new laim no.l should be regarded as a repetition of the claim of monopol, for the 4,616 combinations of bags msde in olf elain 19, accompanied by an implied @{ccleiner in reepect of 34,615 sombinations. The overwheleing inferenes however, is that it was never intended to claim augumh this enormous number of combinations weuniiy in old claim 19. io one can fairly impute such an intention to the claimant. For the same reasoning applies te sleim 19 as to clsim 28, where ths words used are the same and where the result of the hypothesis is quite prepos ny In new low 10,1 - ,the appelient 1s n6¢t teewebenesineecmeiiemens re811;5 Gisclaiming anything include@ in his o1¢ elaim,and the combination now stresesd was not one of the "improvements in paper bags" he originally claimed. either is he corresting or explaining his prior asseription or ascertainment of his invention. On the contrary, he % is claiming 6 fresh combination, quite different to and distinet from any claim of invention mis in the first spscifiestion. The Comsine- fionuer's 4scision was in ay opinion correct. The appeal should be disnisesd.