caunss, H, J. Green, Gort, Print., Melb. IN THE HIGH COURT OF AUSTRALIA. Hume Pipe Company (Australia) Limited Ménier Industries Limited (re application No. 104715) Judgment delivered at Melbouene...... on......8th November 1940 | re Application No. 104715 by Monier Industries Ltd. HUME | PIPE' | COMPANY (AUSTRALIA) LTD. ve MONIER INDUSTRIES LIMITED Order : Appeal allowed. Decision appealed from discharged. Dechare that the grant ought not to be made in respect of Claims i, 2, 4, & 5 and ought not to be made in respect of Claims 3, 6, 7, & 8. unless the Respondent Company within two months applies for,and on such application obtains, leave to amend the specification with regard to them. Declare that, in respect of Claims 9 & 10, the opposition ought not to be sustained. Remit the opposition to the Deputy Commissioner to be dealt with consistently with this Order and according to law. The time for sealing the patent to be extended until one week after the ime expiration of the time for appealing from the final decision of the Commissioner in respect of the application to amend, or on the final application for 2 patent, or after the determination of any such appeal as the case may be. The Respondent company to pay the costs of the appeal. HUME PIPE COMPANY(AUSTRALIA) LIMITED, ~ AND MONIER INDUSTRIES LIMITED. ve. MONIER INDUSTRIES IMITED. Judgment. Ri C.J. In thematter of application No 104,715 for Letters Patent I agree in the view of the Deputy Commissioner of Patents that the form of invention disclosed by the specification differs from the prior publications relied upon both No 8561 and No 161,202 and the manifes- tation of No 8561 described in the diagram marked exhibit CCH6. The difference lies in the fact that the whole chassis is jolted and not merely.one drum and that the jolting is done by the movement of the chassis upon a transw-rse pivot or axis, This conclusion the Deputy Commissioner expresses as follows:- "The feature of a rocking chassis "runs through all the Applicant's claims, and while it may produce an "ultimate result which is the same as that produced by all the machines "of the prior art,it does so by a means which in my opinion has not "previously been disclosed,and furthermore this different means of "ettaining that end,to my way of thinking,involves some exercise of the "inventive faculty", As the question whether some exercise of the 2. inventive faculty is involved it is legitimate to be sceptic but it is enough to say that neither by evidence nor by argument was the question investigated and the ground of opposition being want of novelty such a fundamental difference in the construction of the machine cannot be _ treated as an obviously material variation. The trouble about the case arises from the claims which do anything but bring out with due promignce the pivot upon which not only the chassis but the fate of this appeal turns, I should be disposed to disallow claims 1,2,8,4, and 5 altogether and to allow claims 6 - 8 only if they are recondition -ed by appropriate amendment, Claims 9 and 10 are in a form not to be ebcouraged but as they claim forms of a machine as described with refer- ence to the drawing they do not seem to be open to the objection upon which the opposition depends, I would make an order giving the applicant an opportunity of applying for an amendment. . LTD. HUME PIPE COMPANY (AUSTRALIA) /V MONIER INDUS? iS LID. JUDGMENT, STARKE J. The respondent in July 1957 made application No. 104,715 for the grant of Letters Patent for an improved machine for the manufacture of concrete pipes and the like. The application was opposed by the appellant on the ground that the invention was not nevel. The Deputy Commissioner determined that Letters Patent should issue, whereupon the appei.ant appealed to tuis Court agaiast his determination, Tne invention is for an improved wiachine for the uanufacture of concrete pipes and the lixe, According to the invention, a frame or chassis is mounted on a machine base in such manner that it may be rocked longitudinally. Means are provided to concussionally oscillate the chassis by rocking it from each end alternately, such oscillation affecting a vibrat- ory mavement to a rotating mould containing the pipe material. The rocking motion is achieved by an arrangement of cams and springs but electric magnets and the like may be substituted therefor, A modified construction has the rocking means arranged neag one end of the chassis, the other end of the chassis being held against a buffer. Aéam operating on a shaft rocks the chassis by lifting the end of the chassis against the tension of a spring. The objection that the respondent's machine was not nove] was founded wpon proof filed in the Office of the Commissioner that machines had been previously descrioed or used in which the chassis supporting the mould containing the pipe material had been. jolted or projected upwards as it was rotated and aliowed to fall backpagain, (Specification 1932/8561 and exhibit C.C.H.6) or had been jolted or projected longitudinally as the mould was rotated (Complete Specification 1935/101,202 and machines constructed in accordance with that specification and Complete Specification 1936/102,892). ~2- The first claim is for "Machines for the manufacture of concrete pipes constituted of a chassis mounted on a base in such manner that it may be rocked; mould supporting and rotating roliers on said chassis, means to rotate a pair of said rollers and means to concussionally rock said chassis", The chassis may be rocked, according to the specificatim longitudinally, from each end alternately, ot by lifting the end of the chassis against the tension of a spring. The claim is too wide, for it covers the upward jolting or projeMtion of the chassis disclosed in the specification 1932/8561 and by the modified form of that construction disclosed in Exhibit C.C.H.6. Claim 2 is for:- "Machine for manufacture of concrete pipes constituted of a chassis mounted on a base in such manner that it may be rocked longitudinally, mould supporting and rotating rollers on said chassis, the mould being positioned transversely thereof, means to rotate a pair of said tollers and means to concussionally rock said chassis", 'ne words "in such manner that it (the chassis) may be rocked longitudinally" follow the specification but lack precision. It is not confined to rocking about a pivotal axis but is so frame_d that it includes jolting or projecting the chassis longitudinally. But the latter movement and the method of obtaining it is disclosed in the Specification 1935/101,202 and machines constructed accordingly and the specification 1936/102,892. Consequently the claim cannot be supported, Claim 3 is:- "In a machine for the manufacture of concrete pipes as claimed in Claims 1 & 2, means to concussion- ally rock the chassis' from each end akternately", If "to concussionally rock the chassis" here means to rock about a pivotal axis, the prior publications and machines relied upon do not disclose that form of construction. But if it covers jolting or projecting from each end of the chassis alternately then Specification 1936/108,892 discloses that method of rocking. The construction 66 the claim is doubtful enough to warrant the issue of Letters Patent. iicGlashan v Rabett 9 C.L.R. at p.228. But ££ would require amendment, for claims 1 & 2 should be rejected. Claims 4 & 5 are tied to Claims 1 & 2 and camnot therefore be sppported. Claim 6 is possibly open to the same objection as Glaim 1 but is doubtful and so are Claims 7 & 8, which are tied to @laims 6 & 7 respectively. Claims 9 & 10 are limited to machines constructed, arranged and adapted to operate according to the drawings. 4s so limited, the anticipation and prior user relied upon do not disclose these claims. The result is that the appeal should be allowed as to Claims 1,2,4 & 5, disallowed as to Claims 9 & 10, andes to Claims 3,6,7 & 8 subject to amendment approved by the ~ Commissioner, re Application No. 104715 by Monier Industries Ltd.' HUME PIPE COMPANY {AUSTRALIA) LTD. ve MONIER INDUSTRIES LIMITED FUDGMENT DIXON J. re Application No. 104,715 by Monier Industries Ltd. HUME PIPE COMPANY (AUSTRALIA) LTD. ve MONIER INDUSTRIES LIMITED This is an appeal from a decision of the Deputy Commissioner of Patents dismissing an opposition to the grant of letters patent in respect of an alleged invention for an improved machine for the manufacture of 6oncrete pipes and the Like. If has been found that by vibrating, or trans- mitting some concussion to, the moulds containing the damp concrete as they rébate and so throw the concrete intd the form of a pipe, a denser, stronger and better pipe is produced. The purpose of the invention claimed is to provide a machine which will at once spin the mould and vibrate or jolt the mould whilst in rotation. Other machines for this purpose have been made and the applicant's device must depend for its tithe to a patent not upon the its aim but upon the novelty and inventiveness of the particular means forming the combination. The grounds of the opposition are want of novelty and prior publication. Substantially the question depends upon a comparison of the applicant's machine with one or both of @me two types already made public. One of these types operates by raising, by means of an eccentric or cam wheel, one of the wheels or rollers on which the mould spins or 'rotates and then letting the roller descend. The other type of machine impatts not a vettical but a horizontal movement to the whole frame or 'chassis' as it is called, which carries vthe two rollers th&t spin the mould and so shakes or vibrates the rotating mould on a horizontal plane. The applicant's machine deals with the whole "chassis" and not one roller and in this resembles the latter type, but it gives a vertical and not a horizontal concussion to the frame and its rotating burden. It differs from both types in relying on4 pivot upon which the "chassis" rests * and about which it moves or turns through a small are. Dn one form the pivot is in the centre of the chassis, so that the whole apparatus, rollers and mould in rotation, see-sma up and down about this axis. In another form the pivot is rather towards one end, so that the frame or "chassis" rises and falls from the other end about the pivot as the axis. In both forms the rocking is done by an eggentric which revolves at one =nd while a spring at the other ensures that contact with the cam is maintained. It is evident, I think, that the applicant's combination zaams discloses a clear mechanical aifference of operation and construction. It may be doubted whether the variation exhibits the quality of inventiveness, but this question is not one that is directly raised by a plea of want of novelty. It is true that it sometimes indirectly arises because where the invention claimed cannot be distinguish- ed from what was already in the possession of the public except by differentiae which contribute nothing to the result or to the means for producing it or clearly involve no ingenuity or inventive step, the plea of want of novelty must be considered as established in substance. See McGlashan v. Ravbett 1909 9 C.L.R. 223: Linotype Co. v. Mounsey 1909 9 C.L.B. 194: May v. Higgins 1916 21 C.L.R. 119: Gum Ve Stevens 1923 33 C.L.R. 267 : William Arnott Ltd. v. Peak Frean 169. & Co. Ltd. 1935 9 A.L.J. 73: Griffin v. Isaaca 1938 12 A.L.J. But in the present case, vhough the elements in the applicant's combination may all be en@ineering commonplaces and the purpose is admittedly old, tne variations from what- preceded it do contrinute a different means of prodiicing the resklt and affect the working of the entirety and, without a direct challenge and proper investigation on evidence, cannot be said plainiy to be destitute of invention or to be mere mechanical equivalents. The real difficulty lies in the vaguemess and possible width of the claims put forward by the applicant. It is unnecessary to discuss them in detail. It is enough to say that, unless by a process of construction or interpretation the language of the first and second claims, which are incorporated in the third, fourth and tifth, was restricted to, or by reference to, the drawings, they would cover horizontal vibration or concussion of the "chassis." For I do not think that the word "rock" is confined to oscillation upon an axis or pivot. Moreover these claims do not,and in fact none of the claims does, make a clear point of the rocking upon a pivot being the essential or material feature of the invention. the sixth glaim goes nearest to dbing so. It appears to me to be unsafe to disallow the opposition unless 'the claims are amended so as to make clear, if not prominent, that feature which has provea the salvation of the application. If the claims are rewritten in such a way that the rocking of the entire chassis on a pivot or axis is made the basal feature, it may remove the objection that, except by an artificially restrictive interpretation, the claims cover combinations or devices already in the possession of the public. But the invention alleged is not capable of of supporting any very wide clain. In Griffith v. Neilson 1911 13 C.L.R. at p. 151 an order was made setting aside a dismissal of an opposition and declaring that certain claims ought not to be made the subject of a grant at all and that others ought not to be included in the specification uniess leave to amend was applied for and obtained. The order extended the time for sealing. I think that such an order would meet the present case.