High Court of Australia Fullagar J. Hopman v Commissioner of Patents [1960] HCA 48 ORDER Appeal allowed. Set aside Commissioner's direction to amend specification. Remit application to Commissioner in order that it may proceed accordingly. Extend time for acceptance for six months after expiration of period fixed by s. 53 (2) of Patents Act 1952-1955. No order as to costs. Cur. adv. vult. Fullagar J delivered the following written judgment:— Aug. 4 Fullagar J This is an appeal under s. 49 (4) of the Patents Act 1952-1955 from a direction given by the Commissioner under s. 49 (2). Sub-section (1) of s. 49 provides, so far as material, that if the examiner reports adversely to a specification, the applicant may amend the specification so as to remove the grounds of objection. Sub-section (2) provides: "If the applicant does not amend the application or specification to the satisfaction of the Commissioner, the Commissioner may direct that the application or specification be amended to his satisfaction within such time as the Commissioner allows." Sub-section (3) is not material to the present case. Sub-section (4) provides: "An appeal lies to the Appeal Tribunal from a direction of the Commissioner under this section." On 2nd July 1956 the appellant, Jan Hopman, lodged an application for letters patent for an invention in relation to "Improvements in construction of doorways for buildings". The application was accompanied by a provisional specification. On 2nd July 1957 a complete specification with drawings was lodged. The examiner reported that the invention was not novel, having been anticipated in a specification lodged by Edward George Brown on 4th May 1954 and accepted on 15th February 1956. The appellant then lodged an amended complete specification, in which the field of monopoly claimed was considerably narrower than that which had been claimed in his original complete specification. The Commissioner was not satisfied with these amendments, and by telegram of 2nd June 1959, the Commissioner gave, under s. 49 (2), a direction to amend which would have the effect of confining the scope of the monopoly to a very narrow field indeed. It is from this direction that the appellant now appeals. (The matter has in fact been handled by the Assistant Commissioner, but for the sake of brevity I will refer to the Commissioner). In the case of an appeal against a refusal by the Commissioner under s. 52 to accept a specification, it is well-settled that the Court will allow the appeal unless it seems to it clear that a patent granted on the specification could not be upheld. As was pointed out in the Microcell Case [1] a refusal to accept is final, whereas an acceptance is not. Since a direction to amend under s. 49 is tantamount to a refusal to accept unless the amendment is made, one would think that the same principle should be applied on an appeal from a direction as on an appeal from a refusal. And that this is so is, I think, apparent from the judgment of a Full Court in National Research Development Corporation v. Commissioner of Patents [2] . It is in the light of this principle that I approach the present case, and I have formed the opinion that the appeal should be allowed. I have, of course, studied the relevant specifications in detail and with care, but I think I can state my reasons without going into any great detail. 1. (1959) 102 C.L.R. 232, at p. 245. 2. (1959) 102 C.L.R. 252. Before Brown and Hopman appeared on the scene it seems that the usual method of constructing a door frame for location in an opening in the wall of a building was to fabricate and successively mount in situ the jambs or side pieces, the headpiece, the architraves and the door stops. The door frame was thus formed in one unit by a series of successive steps in the wall opening and on both sides of the wall. The fundamental idea with which we are now concerned was, broadly speaking, the idea of prefabricating the door frame in two units or halves, each comprising jambs, headpiece and architrave. One unit could then be inserted in the opening on each side of the wall, so that the two would meet in the middle and form one complete door frame. It would be necessary, of course, to make some provision for a door stop. Of the utility of the general idea there seems to be no doubt. It is claimed that it is equally applicable to window frames as to door frames. The appellant's original complete specification, after reciting the "prior art", proceeds to describe the substance of the invention in terms which are substantially reproduced in claim 1. Claim 1 reads: "Improvements in and relating to frames for doors and windows of buildings, comprising two prefabricated and complementary frame units adapted for insertion into a door or window opening in a wall from opposite sides thereof so as to fit closely within said opening with the outer or remote faces of the units flush or substantially flush with the opposite faces of the wall, said frame units having architraves or cover strips at said outer or remote faces for concealing the edges of the opening, and one of the units having stop elements in the form of strips whereby the frame units may be secured together within said opening and provide a stop for a door or a window." Claim 5 reads: "Improvements in and relating to frames for doors and windows of buildings as claimed in claims 1, 2 or 4, wherein said stop elements are formed separately and secured to the other members constituting the frame units". Claim 7 reads: "Improvements in and relating to frames for doors and windows of buildings as claimed in claims 1, 2 or 4, wherein said stop elements are formed integral with the other members constituting the respective frame unit". It may be noted that the provisional specification does, whereas the original complete specification does not, mention specifically that the stop element, which consists of a "strip", may be made as a separate element and not affixed to the jamb until after the door frame has been placed in the wall opening. But it is clear that the complete specification claims both a construction in which the stop element is formed separately and secured to the jamb (e.g. by nails), and a construction in which the stop element is formed integrally with the jamb. Brown's complete specification seems to me to be a most confusing and difficult document, the confusion being increased by the fact that he uses the word "jamb" where he is probably intending to refer to the stop element. But two things seem to me to be fairly clear. The first (and this is not disputed) is that Brown has anticipated the construction of a door frame in two units adapted to be inserted into the wall opening from opposite sides of the wall and to meet so as to form the complete door frame. The second is that the scope of his claims is very strictly limited. He discloses only a construction in which the jamb (properly so-called) and the stop element are formed integrally. Whereas the appellant's two "units" are identical except that one is, and the other is not, equipped with a stop element, Brown's two units are different one from the other. The first has a pair of diagonally disposed rebates cut longitudinally in it. The door is intended to fit into one of these rebates. The second unit, which is a plain frame, fits into the other rebate in the first unit. Brown apparently attaches importance to his "integral" construction, for he states as a virtue of his invention that it "provides stability in securing said units together without the use of fastening means for such purpose", and his claim 1 is for "Door frame for building construction formed into two units one of said units overlying the other unit to such an extent to meet the varying thicknesses of wall, as well also to provide stability in securing said units together without the use of fastening means for such purpose, the first one of such units having a pair of diagonally disposed rebates and also usual jamb, the door taking into one of said rebates, the second one of said units taking into the other rebate of the first unit, the said second unit being a plain frame and whose thickness is equivalent to the depth of the rebate of the first unit in which it takes". The amendments which the appellant, after the examiner's adverse report, submitted to the Commissioner, and which were rejected by the Commissioner, were designed to exclude any claim for Brown's particular construction, and to confine the appellant's claim to a construction in which the stop element consisted of a separate strip attached (e.g. by nails) to the jambs and the headpiece. It would be one of the advantages of this construction that, in actually fitting the units into the wall opening, the nails could be removed and, after making any slight lateral adjustment that might be necessary, replaced. This was asserted in the body of the appellant's amended specification, and a reference to it was embodied (perhaps unnecessarily) in a new claim 1. I do not think I need refer more particularly to the amendments made by the appellant, because I do not think it is disputed that the invention described in his amended specification is not disclosed in terms by Brown's specification. The reasons why the Commissioner has not been "satisfied" with the amended specification are two. The Commissioner says, in the first place, that the specification in its amended form adds nothing but matter of common general knowledge to what has been invented by Brown. He says: "It has long been common practice not only in the carpentry and joinery arts but in the handicrafts of the home, to adjust the parts of a nailed structure relative to each other, when desired, by removing the nails, shifting the parts to a different relative disposition and re-nailing them together in their adjusted position. Once the idea of constructing a frame in two complementary parts is made known, as has been done in specification No. 200,786, it appears to me that the addition of the idea of the relative displaceability of the members of a nailed structure as distinct from an integral structure is only adding common general knowledge to the basic disclosure made in the prior specification, and does not of itself serve to confer novelty". The appellant's specification, as amended by him, ought not, in my opinion, to be rejected on this ground. I am anxious not to misinterpret what the Commissioner has said, but I am very much inclined to think that he has attached far too much importance to the reference to the lateral "displaceability" of the stop element in the body of the amended specification and in the new claim 1. I would regard that "displaceability" as being stated rather as an inevitable consequential virtue of the invention described than as of the essence of the invention. The essence of the invention described in the amended specification seems to me to lie in the fact that it avoids the cutting of rebates and provides for a stop element consisting of a separately formed "strip" attached removably to jamb and headpiece. Even on this view of it, of course, it may be said that the appellant has taken no step that would not be obvious to any competent tradesman who had Brown's specification before him—that he has provided nothing but an obvious equivalent of what Brown described. But I am very far indeed from being satisfied that this view is correct. So far as his amended specification is concerned, I do not think it is by any means clear that the appellant should be held to have been anticipated by Brown. The Commissioner's second objection to the appellant's amended complete specification is, as I understand it, that, assuming the invention disclosed by that specification to possess novelty, it was disclosed for the first time when that specification was lodged. It was not, in the Commissioner's view, disclosed in the original complete, and the result is that it is not admissible as an amendment under s. 49. It should, on the assumption made, be treated as the subject of a separate application, and it could not receive the priority date appropriate to the original specification. This second objection of the Commissioner again appears to be based on the view that the element of "displaceability" of the strip forming the stop element is the essential novel feature claimed by the amended specification. I have already said that I do not think that this is so. It is true that the original complete did not (though I think the provisional did) refer specifically to the attachment, or re-attachment after detachment, of the stop elements after the rest of the two units have been placed in position in the wall opening. But it did clearly refer to the separate making, and attachment to the jamb, of a strip which was to act as a stop element, and claim 5, which I have cited above, clearly claimed such a construction. Therein lies, to my mind, the essence of the matter, and I am of opinion that the invention described in the appellant's amended complete specification was disclosed in his original complete specification, so that, if a patent is granted, it is entitled to the priority date claimed, viz. 2nd July 1956. The appeal should, in my opinion, be allowed.