Advanced Building Systems and Anor v Ramset Fasteners

[1997] HCATrans 43

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S96 of 1996

B e t w e e n -

ADVANCED BUILDING SYSTEMS PTY LIMITED and THE BURKE COMPANY

Applicants

and

RAMSET FASTENERS (AUST) PTY LIMITED

Respondent

Application for special leave to appeal

TOOHEY J
GAUDRON J
McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 14 FEBRUARY 1997, AT 11.37 AM

Copyright in the High Court of Australia

MR A.J.L. BANNON, SC:   If the Court pleases, I appear for the applicants in the matter.  (instructed by Astridge & Murray)

MR R.C. MACAW, QC:   May it please the Court, I appear with my learned friend, MR D.M. YATES, for the respondent.  (instructed by Davis Ryan De Boos)

TOOHEY J:   Yes, Mr Bannon.

MR BANNON:   Your Honours, might I very briefly demonstrate by reference to this article the subject matter of the suit. 

TOOHEY J:   It might be an ambitious attempt by the look of it.

MR BANNON:   If your Honours could imagine that this perspex block is part of a very large concrete slab which is laid horizontally on the ground, in anticipation of being lifted out of its, if one can call it, non-stick frypan-type mould into a vertical position where it will form a concrete wall.  The integers of the apparatus include this device which is described as a clutch.  It has an opening and closing mechanism as such, similar to a necklace clasp.  It fits into this anchor which is set in the wall.  The crane hooks on to this bale and lifts the wall - it is very heavy and it is a dangerous operation unless you have got safe equipment - into this position.  To release the clutch this bale is relaxed by the crane cable and this rope is pulled from the ground, opens the clutch and can be pulled out.

During the lifting process the length of this lever arm, which is described in the patent material, cannot open, as otherwise would be the tendency because of gravity when it is in that position, because it is blocked by the bale.  You would not have that problem of  - the risk of opening is because the lever arm is pointed towards what will be the top of the wall and gravity has the tendency to pull it down.  You would not have that problem if you turned the whole thing upside down and lifted that way, because the normal position of the lever arm is in the downward position, which keeps the clutch closed.  So the safety device of an extended lever arm, ensuring against accidental opening, only arises in the case where you have it in the up position.  The advantage of having it in the upward position, however, is that you can then take advantage of the simple rope release.  Once you appreciate that possibility you can simply pull it from the ground and open it in a simple movement.

TOOHEY J:   So is it the extended lever arm and the rope with which we are concerned?

MR BANNON:   Yes.  The rope in particular, and the combination of the extended lever arm, the clutch device, the rope and, importantly, the way in which the lever arm is positioned.  As I sought to indicate, if the lever arm is positioned up towards the top of the wall, that enables you to provide a simple rope release.  As soon as you enable that facility to happen, you create yourself a safety risk, but that is overcome provided you have an extended lever arm which is locked by the bale. 

The point of that demonstration is simply to emphasise it is not simply the addition of the rope over prior art, that is the lever arm; it is the appreciation that this device can be used in this way, taking advantage of the remote release and the safety device.

The trial judge in the present case found the essential integers of the patent included each of those matters to which I have referred.  He also found that none of the prior publications relied upon contained all of the essential integers.  Accordingly, there was no anticipation, in the sense the patent was not invalid on a ground of want of novelty.  His Honour referred to, and I do not think there is any debate ‑ ‑ ‑

TOOHEY J:   You mean only by reason of the non-circulation of prior publications?

MR BANNON:   The ground of want of novelty is only made out if one can find in a paper publication which is not publicly known, in other words a publication which is published but not shown to be part of the common general knowledge, you only have the patent revoked for want of novelty, in those circumstances, if one can find in that single publication all of the essential integers of the patent.  In the present case, what his Honour found, in effect, was there were four pieces of paper.  If you looked at each individual piece of paper you had - for example, in one you might have A plus B integers; another one you might have B plus C; in the other one you might have had C plus D; but the patent consisted of A plus B plus C plus D and in no single one of those could you find all of the integers.  Hence the claim for replication failed on the ground of want of novelty.

If it had been established that any one of those pieces of paper formed part of the common general knowledge in the industry, then it would have been permissible for the court to ask, well, did what is claimed in the patent amount to something which involved no inventive step over one of those publications?  In other words, even though the publication did not contain all of the integers, if you can show the publication was part of a common general knowledge, part of the ordinary working knowledge, you can in effect add an integer or two if the addition of those integers does not involve an inventive step.

But it is critical to appreciate, we submit in this case, that, firstly, the anticipation attack failed because the individual publications did not disclose the invention.  Secondly, no attack was made on the patent on the ground of obviousness.  In other words, it was not sought to be said that any of those publications were well known or, indeed, were known at all.  There is no attempt to prove that anyone had ever read them.

The Full Court did not disturb the findings about no anticipation.  It was argued; they simply did not comment upon it.  They did not disturb the finding by his Honour about what were the essential integers of the patent.  What the Full Court did find, however, was that this was not an invention and applied, in effect, Philips v Mirabella in this Court.  What they said was that this was not a new manner of manufacture because it did not involve any inventive merit when one considered the three publications put together.  What we submit they did is to do exactly the thing which is prohibited under a novelty inquiry.

TOOHEY J:   Can you point us to where the court said it in that precise way.

McHUGH J:   Page 182, is it?

MR BANNON:   The particular passage at which this whole discussion commences is, as Justice McHugh says, critically starts at page 182, but it actually begins - and there are a couple of mentions - at page 179 line 50, the statement there:

The crucial question is whether the trial Judge correctly concluded that there was an element of inventive merit ‑ ‑ ‑

McHUGH J:   Where does that phrase come from?  I cannot ever remember reading that anywhere. 

MR BANNON:   It comes from “obviousness”.  That is where it comes from.  This is the problem with this judgment, with respect to their Honours, that we submit that they have confused tests which are applicable to obviousness and pushed them into a test of new manner of manufacture.  What their Honours are guilty of, we submit, is the very concern which the minority judgment in Philips v Mirabella was concerned about, what would happen, namely that your Honours Justice McHugh and Justice Dawson were concerned that if you had, in effect, a two-step process in working out what is an invention under the new Act, you look whether it is new under the opening words, and then you look at new again under novelty.  Your Honours were concerned, “Well, what do you compare it with in the first exercise”.  It can only be new by reference to something else, and that is really the preserve of novelty.

What the majority found was that in effect that problem - they did not quite say this - but in effect that difficulty is overcome because where it says “new manner of manufacture”, that is not meant to be interpreted strictly, and this is a similar sentiment expressed in the NRDC Case.  What you do when you are looking at invention and that threshold test you ask, “Is it an invention in accordance with traditional principles of patent law?”  In other words, the threshold inquiry is not some general inquiry as to newness or inventive merit; the threshold inquiry is, on the basis of precedent and principle, what are the things which have been considered in the past to have a quality which permits them to fall within the conceivable class of patentable inventions.  By that way, quite permissibly - that is the binding authority in this Court - that overcome the concern of the majority because one looks, for example, in that case - in Philips v Mirabella - you say, “Well, is this one of the old traditional principles, is this a new use of an old substance?”  It was, therefore it did not pass the threshold test.

Another one, “Is it a mere idea or a mere discovery?”  That has never been held to be a patentable invention.  You fail the threshold test.  You then go on and work out whether it is novel or obvious.  But what we submit the fundamental problem with this judgment is that their Honours have said Philips v Mirabella has authorised an inquiry at the threshold test as to whether it is invention to simply ask, “Does it have inventive s tep?”  That is an expression which you will only find, we submit, in the contest of an obviousness debate. 

McHUGH J:   Of course the argument in Mirabella was that it was a claim for the use of a known material in the manufacture of known articles for the purpose of a known property, so that was the argument.

MR BANNON:   That is right, and the argument in Mirabella was not to say, look, you have a general inquiry as to whether something has inventive merit.

McHUGH J:   In fact the point that the Court ultimately decided on was not really argued by counsel for the respondent.  I asked the question in the case and counsel accepted that that was a way of putting it, but there was no further argument.  That was the way the case was decided.

MR BANNON:   The submission we make in this case is one can live with Philips v Mirabella, if I can say that, provided it is interpreted properly and confined to what it very clearly says, and it says about three or four times in the majority judgment:  it is an invention if it falls within the class of inventions which has, according to traditional principles, been regarded as one which is capable of being regarded as an invention.  If you confine, as the majority, we say, properly did, it to that principle, you do not have a problem.  If you read the majority judgment as authorising some general inquiry of asking a subjective question, really, “Is there a sufficient degree of ingenuity here?”, in this case we say, by reference to independent pieces of paper which did not form part of the common general knowledge, you run into all sorts of problems and render otiose, potentially, any need to inquiry into obviousness or, indeed, novelty, for that matter.

McHUGH J:   Correct me if I am wrong, but under the old law I thought the situation was that when want of inventiveness was relied upon, the question was whether the new thing or process was obvious or whether it required an exercise of the inventive faculties to produce it.  And as to that latter question, you determined it by relating it to a person skilled in the art in relation to that invention in the light of the common general knowledge in that art.

MR BANNON:   That is precisely so, your Honour. 

McHUGH J:   That was the only way inventiveness came in.

MR BANNON:   That is so, your Honour.

McHUGH J:   Those questions are now dealt with - under the old Act, under 100(1)(e).

MR BANNON:   Yes.  And what Philips v Mirabella said is the new Act is the same as the old Act.  So that my point of that comment is that this case has real significance, we submit, for the future interpretation of the new Act.

McHUGH J:   Because what the court seems to have done in this case is to accept that these publications were not part of common general knowledge among those skilled in the art but said, nevertheless, these documents did exist and by reference to those documents this had no inventive merit.

MR BANNON:   Precisely.

TOOHEY J:   Is it as clear as that?  And this is what troubles me about this whole question is how far the existence of the publication was critical to the decision of the Full Court of the Federal Court.

MR BANNON:   I think it was absolutely critical, your Honour, because ‑ ‑ ‑

TOOHEY J:   You may well be right, but can you take us to the passage, Mr Bannon.  There is reference to it on page 187, for instance, at line 40 but there may be other references as well.

MR BANNON:   If one looks at 182, the bottom of that page, they refer to the fact that:

the trial Judge did not have the benefit of.....Mirabella.  He confined his inquiry into the known art to what appeared on the face of the Australian patent, including the US patent incorporated by references.  His Honour, however, did examine the prior publications ‑

they were the other ones.  He said:

if he had been entitled to take them into account on this question, he would have concluded that no inventive step -

McHUGH J:   But when he is talking about inventive step, he was talking about (e), was he not?

MR BANNON:   I think his Honour may have been making the same error.  It did not count, as it turned out, because he confined himself to the patent.  But what their Honours here said - his Honour had the right approach, in effect.  We did not have to argue about that because we won on other grounds, but the difference here is they say that we are entitled to take into account these publications, and that appears on 183.  One sees at 183, line 45:

Once these publications are taken into account, we agree.....involved no inventive step.

That critical conclusion, and then they follow that up by the passage at 184, line 30 and following.  Without reading it, they pick out from each of the publications the sum total of the integers they need which results in the conclusion at the top of page 185.  At line 10 on 185, this is really the critical two sentences:

All the integers of the Australian invention had previously been revealed in the US patent and in publications in Australia.

But we add and emphasise, but separately.

This leads to the conclusion that there is no new combination in the Australian patent.

That simply just does not and cannot follow.  Or if it does, we submit it is an issue which the High Court should express an opinion on.  The next statement:

It is not a true combination patent; but a mere collocation of well-known integers -

throws up a red herring, really, because there is a ground of excluding a patent book invention by saying it is not a true combination because the integers do not interact, but that is simply saying they do not interact in the sense of do not have an interdependent function.  Here, the rope obviously has a function on the lever.  You can look at that lever all day while it is up on that wall which you cannot reach and it will not open by itself unless you attach a rope to it.  You can pull the rope all day, but if it is not attached to anything it is not going to pull that level down.  There is obviously an interdependent function.  But fundamentally, at the end of the day - they do not actually use the word “mosaic” obviously, but this is what they have done and we submit that this is a fundamental issue.

Now, Philips v Mirabella is a very important case.  It gives guidance as to the future application of the Patents Act.  This patent, of itself, is not terribly important.  It is important to my client, obviously, but patents generally have a very important role to play in the commercial life of this country and it has an international significance as well.

McHUGH J:   Yes, we have international obligations, have we not?

MR BANNON:   That is right.

TOOHEY J:   Thank you, Mr Bannon.  Mr Macaw.

MR MACAW:   Our submissions, in summary, are that the decision was plainly correct, that there was not special about this and that, in any event, it is not an appropriate vehicle.  So far as the facts are concerned, the Frimeda clutch is shown, for example, at page 32 of the application book.  It is shown, as the court said, with a lever arm of sufficient length so that it would be blocked in a face-lift tilt-up operation.  As the court said, the clutch was available to the alleged inventor but the specification did not disclose the Frimeda clutch; instead it referred to the clutch shown in the US patent, which is depicted at page 162 of the application book.  Your Honours will see at page 162 that there is, instead, a short lever arm which is attached to the cable.  So that the specification did not disclose the clutch in their possession which was the one with the long lever arm but did disclose that one might attach some kind of remote release cable to it.

We say that adding a piece of rope or a piece of string to the Frimeda clutch produced no new combination.  It adds nothing.  It adds no feature which produces a different mutual relation of parts.  The clutch is operated by operation of the lever arm.  It does not make any difference to the operation of the clutch and the other bits of the apparatus whether one does that by hand touching the lever arm, or whether one does it by some remote means by pulling on a bit of string.  It is exactly like, as we have put in the submission, suggesting that the mutual relation between the elements of a flushing apparatus are altered by adding a chain to the lever arm, which otherwise is operated to produce that relationship.

McHUGH J:   What does this argument go to?  A lot of the matters in your respondent’s summary of argument seem to me to be based on a misconception as to what the function of this Court is.  If the court erred in a passage from 182 through to 180 whatever it is, a proper course would be to remit the matter back to the Federal Court.  The fact that Justice Beazley is no longer a member of it is beside the point.

MR MACAW:   This is to explain, your Honour, that the court did approach it on this basis, and correctly so.  If your Honour looks at page 184, there is a reference to Fallshaw Holdings v Flexello Castors which makes the traditional point that a mere collocation is different from a true combination.  If one has a mere collocation, one has an addition, for example, of an element which does not truly create a different mutual relation of parts.

McHUGH J:   Yes, I know, but the critical thing is that the court took account of the fact that all the integers of the Australian invention had previously been revealed in the United States patent and in the publications in Australia.  And that is the critical thing.

MR MACAW:   Yes.

McHUGH J:   Is what Justice Windeyer said in Sunbeam Corporation v Morphy-Richards about inventiveness still the law, because I have just sent out for it and got it.  It seems to me that what Justice Windeyer said is contrary to the way the Full Court approached this.

MR MACAW:   In relation to obviousness?

McHUGH J:   No, in relation to inventiveness.

MR MACAW:   We would say, your Honour, that it has always been the case that there are discrete inquiries under section 6 whether there is an invention, under the requirement of novelty and under the requirement of obviousness.  There will, of course, be overlap between the inquiries.  They will not be coextensive.  But under section 6 the inquiry is one which will exclude things which, for a number of reasons, lack a quality of invention.  They will be excluded, for example, if there is a mere collocation.  It simply is not a manner of new manufacture to have a mere collocation of parts.

McHUGH J:   But the point was that under the statute ‑ and of course the law was really only developed in the last century - the whole question of inventiveness was looked at by reference to the common general knowledge which was proved by competent witnesses and these publications were not part of the common general knowledge.  Yet somehow the Federal Court seems to have said, “Well, we can nevertheless take them into account.  When you take them into account, this has no inventive merit.”

MR MACAW:   Can I take it in two steps?  The underlying rationale for the various categories of case which were held not to satisfy the section 6 requirement of an invention is the lack of a quality of invention.  One has a mere collocation, for example, it is not a manner of new manufacture because simply to put another part on which does not produce a different mutual relationship of elements is not to provide a new manner of manufacture.

Secondly, the mere use of an old substance, the attributes of which would make it appropriate for the new use, is not something that satisfies section 6 and, again, because there is no quality of invention about it.  A mere discovery which was adverted to as an example in the majority judgment and in Philips v Mirabella stands in the same category.  As in Grace’s Case, which is referred to in our outline of submissions, one had what was described as merely the routine testing of commercially available resins.  Again, the rationale is that there is no quality of invention.  In NRDC ‑ ‑ ‑

McHUGH J:   I know, but in the four categories you took, in relation to the first one, which is the relevant one for present purposes, it is a question of what is known by competent people in the art.

MR MACAW:   Indeed, your Honour.  Can I come to the second proposition.  If one is dealing with a mere collocation case, which this is because that is the way the court approached it correctly, there is no reason in principle why, in order to determine whether the elements that go to make up the alleged new combination are old, there is no reason why one should be confined to the common general knowledge.  The question of whether those elements ‑ ‑ ‑

McHUGH J:   But that really raises the question.  That seems to me to raise a fundamental question of principle because that is not the way matters have proceeded hitherto.  It certainly was not the way Justice Windeyer in Sunbeam v Morphy‑Richards looked at it.  He thought the whole question of inventiveness depended upon the common general knowledge and section 7 of the present Act has defined the prior art base in a specific way.

MR MACAW:   But when one is dealing with the question of obviousness the result of the decision in 3M is that that is exactly so, your Honour.  But the courts have always recognised, and the majority in Philips recognised, that these categories, although they overlap and it is perhaps sometimes difficult to decipher exactly what the distinction is between them, are nevertheless independent grounds.

McHUGH J:   I know, but there is a very special issue in Mirabella because it was the question of the known use and what the Court said in a passage that has been relied on by the Court of Appeal is directed to that sort of situation.  It seems to me to be, anyway. 

MR MACAW:   Your Honour, we would say that in principle there is no reason why, in approaching the question whether one has a mere collocation or a true combination, one is confined, in ascertaining whether the elements are in fact known or not, to common general knowledge.  There is no reason in principle for that. 

McHUGH J:   Am I right in thinking, under the 100(1)(d) or (e) defence, Justice Aitkin in the 3M Case rejected that, did he not?

MR MACAW:   No, your Honour.  There was no question in 3M about it being a true combination.  What we are saying is if one is approaching the question, “Is this a mere collocation or a true combination?”, that is to say do the elements that are claimed truly constitute something which involves a new mutual relation of elements or instead something which merely adds what is known to what is known, without creating such a new mutual relationship, then there is no reason why one should be confined to common general knowledge.

TOOHEY J:   In putting it that way, are you accepting the way in which Mr Bannon puts it that these publications were critical to the finding of the Federal Court?

MR MACAW:   They were, they were the basis, because what the court said was, look at the Frimeda clutch which has everything except the string; add the string and you have got nothing new. 

GAUDRON J:   It has not got the hole to put the string in.

MR MACAW:   Your Honour, one of them actually has, in one of the advertisements, if it matters, but the point is not merely - although they did find that there was no inventive merit in adding the string - it is not merely that, it is that it does not create a new combination.  It is merely a collocation to add a bit of string which performs an independent function to an existing piece of apparatus which, in truth, was a combination.

McHUGH J:   I thought it was public knowledge that was relevant to novelty and common knowledge that was relevant to inventiveness.

MR MACAW:   Common knowledge which is relevant to obviousness, yes, your Honour, and what we say is that there is no reason in principle or in authority for confining the question of whether there is, for example, a mere collocation under the section 6 ground to common general knowledge.

May we test it this way, your Honour?  It is accepted, of course, that if one saw on the face of the specification, as in Philips v Mirabella, that there was nothing there - it was apparent on the face of the specification there that there was a mere new use of a known substance whose properties made it suitable.  Now, assume here that on the face of the specification it were apparent that there were a mere collocation or that for some other reason it was merely trivial, it would of course fail at the threshold under section 6.  What has happened, your Honour, is that there would indeed have been such a disclosure on the face of the specification if the Frimeda clutch, from which the alleged inventor began, had been described instead of the clutch which had the shorter lever arm described in the US patent.  It would be a very extraordinary result if the man would suffer by his candour by failing the threshold, but would succeed at that threshold by non-disclosure, and accordingly ‑ ‑ ‑

McHUGH J:   I am not sure that he would fail on inventiveness if he disclosed.....invention, would he, because the question would still arise as to what was common knowledge in the art.

MR MACAW:   With respect, that cannot be so.  If the man says on his specification, “Here’s what was known.  It had a lever arm which was long and which would have a blocking relationship” ‑ ‑ ‑

McHUGH J:   If he said that.  If you are putting it on that basis, then it may be taken there is an admission by him as to what was known.   But here we are not in that area.

MR MACAW:   What we are putting, your Honour, is that on the face of the specification in those circumstances there would be disclosed the lack of the quality of invention that is necessary to get over the threshold and it is a good illustration, on the facts of this case, why the majority was correct in observing that it would be almost irrational to be confined to the face of the specification on the inquiry whether section 6 is satisfied.  Here, as I say, it would be extraordinary if the man who disclosed that he began with the Frimeda clutch would fail at the threshold, whereas a man who disclosed only the US specification and not the Frimeda clutch would not.

There cannot be any reason in principle why one is confined.  The reason why the cases have referred to it being apparent on the face of the specification that the Comptroller of the Commissioner would knock a patent out is that the occasion for his intervention in the cases referred to are prior to opposition.  The Commissioner of his own motion could say, “Look, on the face of this, there is nothing there.”  There is no reason in the formulation or in principle why that is a limiting factor on the availability of the attack under section 6.

McHUGH J:   To a non-expert in this field the cases just seem to me to be a bewildering of grave inconsistent decisions and have been for two centuries.  One thing seems to be relevantly settled, or at least at all events I thought it was, that the whole question of inventiveness depended upon common general knowledge in the art and, in this particular case, that common general knowledge did not exist and the question of inventiveness is then decided by looking at some publications which were not part of the art.

MR MACAW:   What they have effectively done, your Honour, is to say, in accordance with what we would submit is a perfectly correct statement in Philips v Mirabella, yes you can conclude that something is merely trivial or yes you can conclude that something is a mere collocation without having to resort to common general knowledge.   And that, with great respect, plainly must be right.  It is in accordance with the approach that has been taken, that was referred to in paragraph 15 of the outline - and I shall not take the Court to the cases - but NRDC is a case replete with references in the context of section 6 to quality of inventiveness, inventive merit, ingenuity and the like.  It is not a notion which is confined to the ground of obviousness.

TOOHEY J:   Then for what purpose do you go to the publications in question here?

MR MACAW:   You go to the publications in question in order to demonstrate that the elements of the apparatus claimed were, in truth, known, in the sense of having been published.  One finds that all the elements are known, apart from the bit of rope.  One then asks whether the bit of rope in truth creates a new combination and one properly concludes that it does not.  If it matters, that conclusion is the easier because the specification on its own face discloses a patent which suggests a bit of rope.

TOOHEY J:   Could the same conclusion have been reached without going to the publications?

MR MACAW:   We argued that it could.  One could go either way.  One could say that what is disclosed on the face of the specification allows nothing more of any inventive quality or, if one went to the publications and worked the other way, the same conclusion would be reached.  The court has chosen the route of relying upon the publications.

TOOHEY J:   You accept that in doing so that is critical to the judgment or the conclusion they reached, but you also appear to be saying that it was not an essential step for them to take.

MR MACAW:   We do say that.  And likewise, as we have said in the outline, the same process of reasoning would surely mean that one could not have novelty.  In order to have novelty one has to have some matter of substance over and above what went before.  What his Honour the trial judge said was, “A rope is constituted an essential element”, and it follows, of course, if one constructs the specification in a way which makes it essential, that if somebody comes along without a rope, then he would not infringe.  But that is not to say that one can, by the same means, confer an element of substance onto something which is in fact trivial. 

So we would say that it does not answer the point to say that this was an essential element to have a rope.  It does not answer the point that it involves no element of substantial novelty over what went before.  Likewise, the reasoning of the Full Court would surely lead to the conclusion that the inventor, the alleged inventor, was not entitled to apply because all he has done, in effect, is appropriate to himself the Frimeda clutch.  There are a number of different ways in which, essentially, the same conclusion could be reached. 

We would say, in answer really to the burden of what your Honour Justice McHugh it putting, that there has always been this overlap.  It is not a matter that has arisen since Sunbeam or since 3M.  There has always been the requirement to deal separately with section 6, with novelty and with obviousness.  In Philips ‑ ‑ ‑

McHUGH J:   Yes, but under the old law, manner of manufacture was really concerned with that something was useful and it just was not confined to the fine arts, was it not?

MR MACAW:   Yes, that is one of the categories.

McHUGH J:   One of the categories, and then newness, the term “new manner of manufacture” took in the things such as inventiveness, novelty, obviousness and so on.  And there was this area of subject matter which I suppose tended to overlap to some extent with other categories, but ‑ ‑ ‑

MR MACAW:   That is exactly the area we are in, your Honour, subject matter.  Is this proper subject matter?  Is it a manner of new manufacture, ie, does it involve an invention?  That, in all the categories of cases involved, apart from those that do not involve a manner of manufacture at all because it is just a matter of fine arts, for example, all the categories involve as their rationale a requirement for a quality of invention.  There is no reason in principle why that question cannot be answered - must be answered only by reference to common general knowledge.

May we just make two brief points in conclusion.  One is that in order to try to identify the special leave questions that arise, for the reasons we gave in our outline, the way in which the High Court approached the matter has, in fact, been mischaracterised and glossed.  There is no question of making mosaics, despite the way in which it is put in the outline and in the submissions today.

And secondly, the special leave questions that are identified in paragraphs 24 and following really want to have it both ways on Philips v Mirabella.  The application ‑ ‑ ‑

TOOHEY J:   Your time has expired, Mr Macaw.  Thank you.  We have read the submissions.

MR MACAW:   If your Honours please.

TOOHEY J:   We need not hear from you further, Mr Bannon.  There will be a grant of special leave to appeal in this matter.

AT 12.18 PM THE MATTER WAS CONCLUDED