ho BE Gf (G20 J | C Mire . AeomercerE Bel wareh 2(13.(¢29 a LUMINO THERMIC -AND METAL SPRAYERS "LIMITED v : THE ENGINEERING SPECIALTIES PROPRIETARY LIMITED. JUDGMENT. KNOX C.J, CAVAN. DUFFY J Having regard to the statements contained in the Introduc- tion and in pages 1 - 14 of Turner & Budgents work on Metal Spray- ing and to the admission made at the trial that thal book contains an. acourate general description of, the development of the art before the patemt on which the appellant relies was taken out, and the evi-" 'dence of ir. E.P,Lewig, @@ think the learned Chief Justice of Victoria as right in construing the claima contained in the specification as imited to the bringing forward of wire cable, bar, tube, sheet, ait e sthip or other solid material to a point at which it has to be fused from the solid to the liquid state and thence to be sprayed and as not including the bringing forward of atomized or pulverulent metals to that point. In this view it is clear that the respondent has not infringed the appellantts patent. In ag opinion the appe&& showld be dismissed, UIC AND METAL SeRayuns Ll Pep. Vv. Tid MUCTNSERING SPNCIALTIES 1: JUDG. ; MR-JUSTICN RICH. - RING SPECT AT. ORM LIL RtCH J. I egres that the appeal should be digwissed. The cleim which the appelisnt relics is expressed in curiougly vague snd indefinite langusge. After a full examination of the waterlals by which the state ¢ the art sua comtron knowledge is brough! before the Court I find myself unable to discover in the claim as drawn the expression of an inventive idea which is new and wide enough to include the respondent's implement constituting the elleged infringenent. JUDGMENT. HIGH COURT OF AUSTRALIA COURT COPY (pages 1-14.) ALUMINO THERMIC' COY. v ENGINEERING SPECIALTIES COMPANY. MR. JUSTICE ISAACS. | ALUMINO THURMIC coy. v ENGINESRING SPSCIALTIES Coy. JUDGMENT ISAACS J. The conflicting contentions in this case give rise to some extremely important general considerations touching the construction and validity of patents. Furthermore, according to tha view earnastly pressed upon us by learnad Counsel for the appellant, the determination of this appeal, notwithstanding the date of the patent, will not improbably anot only — directly affect, the appellant's privilege, but also and conseqient- ~ially Australian public rights in the important industry of metal- spraying for @ considerable future, and if it be not followed else- where, may have indirect consequences difficult to guage. It is therefore, as I think, vary desirable that I should state axplicitly the reasons that lead ma to the conclusion that the decision of the learned Chief Justice of Victoria is right. Indeed, once it appears to ma that tha salient points as to tha state of the art are mastered, then apart altogetht4 from the scope of tha appellant's invention, the facts are of such a nature as to entitle the raspondant to succeed, on the principle enunciated by Lord Moulton in Gilkette Safety Razor Co. v Anglo-American Trading Co. (30 R.P.C., at 480), quoted in Terrell on Patents, 7th Ban., at 141. \ Daaling with the matter in the accustomed manner, the fate of this. appeal depends on the answer to ona or both g of the following questions, namely:- . - (1) Does tha first claim of Morf's patent extend so far as to cover thea process followed by the respondent? And if it doas, then, (2) Is the claim valid? Before aither question can be answered, the Court must, so to speak, qualify itself by possassing its mind of the state of the art of what is called "metal-spraying" immediately prior to the patent sued upon. The Court mst,.so far as possible, stand in the position of a person who, the day after the granting og the patent, reads it by the light of a full acquaintance with the practice of the art and all that is then incidental to it. The work of Taylor & Budgen published in 1926, has been regarded by both sides 4s reliable on the subject of the origin and process of tha art up to the requisite moment, and indeed, much of the oral avidence is manifastly based upon what is found in that work. Obviously, the state of tha art as disclosed in that work was treated by both sides, and by tha learned Chief Justice if Victoria, as relevant to the understanding and construction of tha specification. That, I think, necessarily includes the implication that the state of the art there narrated applied to Australia. But even if not, sinca the same invention was patented in other parts of the world, and the same construction, whatever that may be, must inhere in the claims, it is not vary material from the point of construction whether the des- -ceription of the art in the book referred to applied to Australia also. On a given broad construction, the question of validity might, however, be differently decided. Following the various steps indicated in tha work in question, it is clear to me that the first claim should, at tha peril of invalidity, ba read in a sansa so narrow as to exclude any infringement by the rasp Tha first step in the working progress of matal-spraying consisted of processes with molten metal, which had advantages (3) and disadvantages. Ona of its advantages was that the flow of metal could be regulated so as to accord with the quantity sprayed, and this could be done without a valve or mechanical regulator, and by means of a presura or vacuum in the metal container. That is to say, the flow of metal could be synchron- ized with the spraying, effected by maans of an annular blast nogzla. That is shewn and illustrated at page 7 of Taylor & Budgen. 'The principle of synchronization és thera exemplified. I neod hardly say that principle, i®xuxpadtientyxmexitexthexeex aignikgeaixthaxtemm if the expedient merits the dignity of the term "principle", is one which for economic and workmanship reasons must suggest itself to any mind as a desirable object. But thera was ona insuperable and commercial defect in the use of molten metal. It was necessarily @ stathonary operation, a difficulty that 1f not avoided would have doomed the industry. The second step to be noted is the use of powdered metal, which conferred portability. "Without portability and the "capability of being directed where desired, metal-spraying could "only have been of small importance" (p. 10). Cold metallic powders proved failures. Heating the powders was resorted to, and in figure 17 at p. 9 wa sea an important illustration. Powder flows from a container into a transporting apparatus, operating on tha sandblast principle and heated by (4) flame and sprayed by a blast issuing from a4 nozzle. Again we have synchronization of supply and demand, and this tima with portability. The work referred to says at page 10:- "With this device, the regular and uninterrupted introduction of "the metallic powder into the transporting blast is of the greatest "importance for economic and continuous operation". This proved ganerally effective, particularly when simplified into a form shewn as figure 20 on page ll. "This", saya say Taylor & Budgan at p. 12, "is a workmanlike, portable device, in which the metal "powder falls from the bottom of the container into the transport— "-ing blast, and is heated on emission from the nozzle by an "annular gas flame". As a process in a general sense, and remembering the synchron- ization alraady mentioned, the appellant's argument would in 211 probability regard this as an infringement. But notwithstanding the comparative effectiveness of tha device, there were still serious defects. It was "suitable for comparatively coarse "powders; the minute particles of the finer grades of powders "tend to stick wm together and clog up the valve aperture". "Cyclone" apparatus had to be used for very fine powders. In addition, thare appears to have been one very serious fault in the use of all powder sprayers, a fault which up to that time had not baen remedied. "They dda not produca good rasults t (5) ! "with metals of high melting points. This was so because the "higher the melting point of the metal to be sprayed, the greater "was the proportion of the powder, which failed to be treated up "to the particular temperatura requisite for the production of "solid adherent coatings. Colder particles simply rebounded from "the surface, their projection having bean a waste of energy" Say ler + Badgew (Mutom., p. 13). It might be added, "and of material". Thus there existed a m major problem, for which mera synchron- ization of k= outflow to the flame and discharge to the object treated, had been proved to be insufficient. The problem as Jay ley « Budgew stated by Mie. (p. 13) was: "How to produce such regular oper- "sation that only just so much as could be makinfamtexikgeomatmt RSK "satisfactorily heated and sprayed was admitted to the nozzle", They add (1) "Experience with the powder process pointed to the "advisability of returning to the use of molten metal" -- in other words, "powder" was to be discarded. Then (2) "Yet portability Grom A ACS OAV Of "was assential", That is to say that molten metal as a fead was . useless. It was "Herkenrath who conceived the possible mode of operation", That was to use wire, and of course, that which it typifies. That was the master conception for the prasent purpose. Molten metal and powderad metal ware eliminated as feed, and after experiments with blow-pipe flame and electricity according to malting points, (6) wit) @ gas blast from the side, the main difficulties were overcome. "It waa thus shown to be possible to prepare a coating by blowing "compressed air into a falling stream of metal melted in such a "manner", As Taylor & Budgen point out at p. 14, the principle of that apparatus is still in force. That was the third step for our present putpose. But synchronization of all operations had yet to be achieved where the new "wire" process was employed. "For continuous working "and uniform action such co-ordination of the three functions" (i.e. the advance of the wire, its melting and spraying) "was essential". The main idea of wire feed was in operation; the idea of synchron~ Gescrvois) ization was known; but although long operable with molten metal and powdered metal, it was not yet perceived how it could be practised with wire faed. Wa have now reached the point immediately prior to the invention relied on, and so it is = wise to take stock, so to speak. (1) The process of melting fusible material at the nozzle of the tube convaying the transporting and heating and spraying blast was familiar. (2) Synchronization of supply and demand as a principle was known and sought after. (3) The use of a prassure or vacuum instead of a mechanical regulation to propel metal for spraying was well known. (7) (4) Preparing a coating by blowing compressed air into a falling stream of matal melted at ths nozzle was known. (5) Tha use of a "wire" -- that ism is, an unbroken, continuous and therefore both unmelted and unpowdered substance -- for malting at the nozzle, was known, and to a great extent successful. The ta fourth stap is that taken by Brika Morf, The authors of the book referred to say at p. 14, in evident reference to the patent now under consideration:- "It was found possible to unite "two of the threa factors by using the spraying blast to operate the "wire feed machanism." And than refarence is mada to the air turbine, whereby "the blast was made to opsrate rollers which "gripped tha wire". And so on. Figure 26 (at p. 15) gives a sectional view of the first metal spraying pistol, the appellant's pistol. To ms, it is clear that a person conversant with the industry iamediately before the grant of the patant -- say a local Werkenrath - would, the moment after its issue, read it as limited to the invent- ion of an apparatus completing the solution which Herkenrath had bagun, an apparatus which at tha tima adopted the wire form of feed as displacing the power faed, and synchronised tha already existing wire fading operation with tha two other alraady existing operations of malting the wire and spraying the molten matal thus-------------- (8) produced. And further, such a parson, if he had understood it ad covering such a method as that amployed by the respondent, would have ragarded it as covering operations already lmown and practised by thosa engaged in the business. It is true that at some later period, as a further step, the Amsrican "Gravitas" metal powder sprayer was devised by what is described by Taylor & Budgan (p. 39) as "an ingenious construction", namely, passing the metal dust between two concentric flame zones at the mazzle, where it is instantly haated to a plastic state, and impacted on the surface to be coated. But for the time being, that was not forseen, and Morf's patent discarded all but the wire type. If it ware necessary, I should entertain serious doubts, having regard to the prior use of the "wire" type as shown on page 13 of Taylor & Budgen, whether even in respect of that type the prasent patent covered anything more than the particular apparatus described, including in that, however, any mechanical equivalent for the turbine. But that is not necessary to determine; all that is necessary to say is that in my opinion, according in that respect with the opinion of Irvine G.J., the claim on proper construction is at all events limited to a process in which wire or its type is used as the feed. (2) For all that was uew was the device of gripping the wire or its substitute (rod, cable, stick ete.) by means of rollers, and noving it along in unison with the owtflow, by means of an actuating mechanism moved by a portion of the same blast as spraysa the molten metal. Possibly soma other device which performed the same function of moving tha wire, atc., if suggested by Morf's device, might be regarded as a mechanical equivalent. But @f once the fundamental source of the subsidiary problem she met, tha wire etc., be eliminated, it stands to reason mechanical equivalence of her solution is beside the question. To support the appellant's case, it is necassary to go behind the particular problem Worf grappled with, and to claim monopoly for tha very principle of synchronisation. That claim cannot be supported for at loast three reasons. The first appears from what has been already said, namely, that the principle itself was no discovery of the inventor, nor was its practical application to powdered metal. The sacond, if necessary, is that evan if specifically claimed, it would be a confusion of problem ahd solution." This aspect is wall illustrated in the judgment of Lord Sumner (then Hamilton L.J.) in Knight v Argylls Ltd (30 R.P.C., at pp. 344 and 345), ina passage beginning with the words: "I do not profess to ba able to "mand the inventors' language", and ending with tha words: "I think "therafore that 'means of imparting movenent' must of necessity bs (10) "an essential part of this Claim". Tha third reason rests on well known rules of construction. The contrary view pressed is that the "essential feature" of the invention is indicated in a passage stating that it consists in this:~- "that the material to be melted, the gases for effecting the melting, "the means for dusting, atomising or spraying in suitable quantities "and under suitable conditions should coincide at the tip of the "nozzle, or at some point in front of it, and co-operate in such a "manner that a regular melting-off and flying-off will take place". In parenthesis I wmmt would observe that in relying on that passage, it is tacitly conceded that the claim may sometimes receive a large or @ small connotation from the other parts of the specific- ation. Indeed, the authorities shew that, in order to understand and interpret a claim, the elementary rule of reading the specific- -ation as a whola must be observed. Yor myself, 1 can see nothing in the passage referred to, except a statement that variation of arrangement of the different component parts of the apparatus is immaterial so long as the one desideratum is praserved, namely, coincidenca at the outlet, or just in front of it, so as to maintain tha synchronisation of "malting-off" and the "flying-on". The wire typa of feed is Wd 2) assumed to be an indispensdble part of the invention. The word "malting-off" seems to me conclusive. It is the word used by the patentee in her first description of "the procass". And indeed, the passage referred to, as Mr. Menzias vary properly urged, is only @ ganeral summing-up of what was particularly stated in the immediately "Wie" praceding few linss, in which the word "dg has a natural promin- ances, and indicatas the force and application of the word "melting-off" in the quoted passage. One prior passage was relied on by both sides, and therefore I shall refer to it specially. It is this:- "It will be obvious "that the material to be melted can ba introduced into the apparatus "or the nozzle in any suitable form other than a wire, as for "example, in the form of a cable, bar, tubs, sheet, strip or the "Lika, ete." I agree with the respondent's argument that, reading that passage, whether alone or in conjunction with tha rest of the spec- ification, the mind is led irresistibly to a type of feed which is undivided and continuous. It is remarkable if powder, commonly used, were within the patentee's contemplation that she did not mention it, "that she did not say "any form", imixanyxtextkakkexftorm but any "suitable" form -~ by which I understand suitable to ba carried along by the Rumitgxxakkax feed roller mechanism, however spaxakat actuated, and that the exprass words of description are (12) adverse to the inclusion of a powdared substance. At this point I would refer to the analogous queriss put by Lord Salvsson in Wallace's case (39 R.P.C., at pp. K 16 and 7). In view of what I have said as to the state of the art immed- jiately before the patent, the presumption the Court would make, in accordanca with acknowledged precedent, if the patentee's words ara fairly consistent with it, is that old matters are not claimed. The enlarged ambit contended for and necessary in this appeal, for the appellant's success, is that any process producing synchronisation of melting and spraying is included in the claim. In other words, apparatus is immaterial; result, namely, synchronisation, is the pith of the invention, as being an idea or principla originating in the mind of the patentee, and to which all mechanical methods of producing it are merely acesssory and incidental and within the protection of the patent. The resume I have made in the various steps in the art shew antinalle such a claim to ba *éetesady. Putting the passage quoted into shorter form, it amounts to the statement on page 13 of Taylor & Budgen, rapresanting what, prior to Morf's patent, was presant to the minds' of thosa engaged in the industry. The statement is:- "The "solution arrived at was to melt only so much as could be projected "immadiately". That is the principle. | Herkenrath shawed that tha wire type was the substance for experiment. liorf produced a specific apparatus daaling with the wire type, but there is (13) nothing in the patentee's language which expressly or distinctly lays claim to the principle, or goes indesd beyond tha wire typs. But if, as is urged for the appellant, such a contention as is advanced is within tha first claim, then Lord Loraburn's judgment in the Ingersoll case (25 R.P.C., at p. 83) shews that nothihg, not aven a more limited description in the rest of the specification, can in the circumstances sava the patent. If it is the "idea or "principle" of synchronisation that is protected, then anyona who adopts the idea with any means whatever of carrying it out in practica, would be liable as an infringer. Thera is no difference in that respect between a mechanical equivalent for the described method of carrying out the idea, and a new invention for the purpose of carrying it out. ach would be @ tubsitiangxe subsidiary method, and its use would constitute an infringement. is are But no idea ge patentable if tha public ix thereby prevented from accomplishing an old object to which it relates, and which they alraady knew how to attain by a different path. If tha idea claimed in argument is the essence of the invention, then from what has been narrated, the public would be so prevented. et An idea or principle must be very distinctly claimed. It must ba unambiguously set out in the claim itself, and not left to @ gancral inferenca from the language contained throughout the (14) specification (ses Ridd y Milking Machine Coy (1916 A.c., 550)). It is a recognised doctrine of patent law that a claim avoidably ambiguous cannot be upheld, whatever, in spite of that ambiguity, allinn até the sigaveawine construction might be, and that is especially important when an mxmex idea or principle is sought to be monopolised, tharaby shutting out the public from means of attaining the same result that would otherwise be open to them. I am of opinion that the first claim, read and understood and scrutinised as the law requires, does not state expressly or by plain reference & claim to a principle or idea, nor to a process of synchronising operations where powdered metal is introduced as the feed; that if such ware the patentes's intention, her language is avoidably obscure ana ambiguous in that respact; that the body of the specification does not carry the matter further, and even if it did, the claig would not be thereby assisted. But in justice to the appellant, I add that I think the claims read with the rest of the specification unambiguously refer only to the wire process, and to apparatus for operating the wire process synchronously, including, of course, in the apparatus any mechanical equivalent for conveying the wire type of feed. In the result, the appeal should be dismissed. i | Be acta tmisct ARO + Ism content with the judgrent of the 1 a Ihief Justice of the Supreme Court of Victoria, and with the reasons he hss civen for it. I add nothing of any value to that nd the anpeal in my opinion ought to be Cicmissed.