Gum v Stevens [1923] HCA 48

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3 Aluminiw) Fppbigtion'ty 2S ECR'SSS

33 C.L.R. | OF AUSTRALIA.

(HIGH COURT OF AUSTRALIA]

GUM AND ANOTHER Ses % : . APPELLANT ; APPLICANTS, AND STEVENS : 6 2 3 e 5 Y . Responpent. OPPONENT,

ON APPEAL FROM THE SUPREME COURT OF VICTORIA.

Patent—Application—Opposition—Want of novelly—Want of invention—Patents Act 1903-1921 (Wo. 21 of 1903—No. 24 of 1921), sec. 56.

An application for a patent for an improved lubricating device for vebicles was opposed on the ground of want of novelty. 'The Commissioner of Patents having granted the application, the Supreme Court of Vietoria on appeal held that there was no novelty either of idea or of means in the alleged invention, and, being satisfied that the patent if granted would obviously be bad, held that a patent should not be granted. On appeal to the High Court,

Held, that a patent was properly refused.

Per Isaacs J.: There is nothing in the decision in McGlashan v. Rabett, (1909) 9 C.L.R., 223, which excludes the consideration of invention in the relevant sense when the novelty of a new application of an old device is chal- lenged by way of objection to the grant of a patent.

Per Starke J. : An objection to the grant of a patent on the ground of want of novelty in the invention is not precluded merely because the same facts may also establish want of subject matter.

Linotype Co. v. Mounsey, (1909) 9 C.L.R., 194, and McGlashan v. Rabett, (1909) 9 C-L.R., 223, explained.

Decision of the Supreme Court of Victoria (Mann J.) aftirmed.

H.C. or A. 1923. ~

MELBOURNE,

Oct. 10, 31,

Knox C.J.,

Isaacs and Starke JJ.

H.C. or A. 1923. ~~ Gum

v Srevens.

HIGH COURT in

Appx from the Supreme Court of Victoria.

Thomas Samuel Gum and Bertram Gordon Gum applied for a patent for an "improved lubricating device for vehicles." The claim in the complete specification was substantially as follows: (1) in an improved lubricating device for vehicles a valve or nipple which is adapted to pass grease or lubricating material from a grease- gun, syringe or pump into a lubricating duct and is inserted in the arm of the axle, and a duct communicating therefrom to the lubricat- ing recess or area of the turned portion of the axle ; (2) in an im- proved lubricating device for vehicles a lubricating duct consisting of a hole drilled into the arm of the axle towards the centre and a hole drilled diagonally from the lubricating area of the turned axle to meet the hole in the arm ; (3) in an improved lubricating device for vehicles a valve or nipple inserted in the end of the axle, and an oil duct. extending from the valve to the lubrication area of the axle substantially as described and illustrated in certain drawings. The application was opposed by William Vincent Stevens on the grounds, substantially, (1) that the invention had been patented in the Commonwealth on an application of prior date and (2) that the invention was not novel. The Commissioner of Patents decided that a patent should be granted, and in the course of his reasons he said :— "The invention of the applicants consists in a combination, and it differs from the inventions cited by the opponent in that the duct is formed in a particular way with a valve or nipple which is adapted to pass grease or lubricating material from a grease-gun, syringe, or pump. It is a combination which, according to the evidence, is new, and was unknown to the opponent at the date of the application for the patent. For these reasons, and acting upon the principle that the grant of a patent should not be refused unless it is quite clear that the patent, if granted, would be obviously bad (McGlashan v. Rabett (1) ), Tam of opinion that the patent should be granted."