Lasercare (Australia) Pty Limited v John Christiansen

[1985] APO 26

In the Matter of the Patents Act 1952 - and - In the Matter of an Application under Sub- Section 68B(l) for an Extension of the Term of Petty Patent 538406 in the Name of LASERCARE (AUSTRALIA) PTY. LIMITED and - In the Matter of a Notice under Sub-Section 68B(3) in the Name of JOHN CHRISTIANSEN.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Petty patent application 28508/84 in tie name of Lasercare (Australia) Pty. Limited was lodged on 22 May, 1984 as a divisional application of application PG4482/84. The latter application had been lodged on 9 April, 1984. The petty patent application was accepted on 19 July, 1984. A petty patent, number 538406 was sealed on 30 August, 1984 and notification of the sealing of the petty patent was published on the same date. On 25 July, 1985 the petty patentee applied under sub-section 68B(l) for an extension of the initial 12 month term of the petty patent. On 30 July a notice under sub-section 68B(3) was lodged by Mr. John Christiansen, Patent Attorney, of Melbourne. The matter was heard at Melbourne on 13 August, 1985 when the patentee was represented by Mr. Alfred Tatlock, Patent Attorney', of A. Tatlock & Associates and Mr. Christiansen appeared on his own behalf. I was informed, at the hearing, that the patent is the subject of an infringement action pending in the Supreme Court of Victoria.

Paragraph (a) of section 68A of the Patents Act provides that the initial term of a petty patent shall be a period of 12 months commencing on the date of the sealing of the patent. Section 68B provides for extensions of the term of petty patents. If an extension of term is granted under section 68B, the term of the petty patent consists of the initial period of 12 months provided by paragraph 68A(a) and "an additional period commencing on the day immediately following the expiration of the period mentioned in paragraph (a) and ending at the expiration of 6 years after the date of the patent". If the Commissioner is satisfied of the existence, in relation to a petty patent, of any of the grounds set out in paragraphs 100(l)(b) to (g), he may refuse to grant an extension of the term of the petty patent.

In the present case, the sub-section 68B(3) notice lodged by Mr. Christiansen informed the Commissioner of facts which Mr. Christiansen asserts establish the grounds set out in paragraphs 100(l)(c), (d), (e) and (9) of the Patents Act. Those grounds are:

(c) that the ... petty patent specification ... does not comply with the requirements of section 40;

(d) that the invention, so far as claimed ... in the claim of the petty patent specification ... is not an invention within the meaning of this Act;

(e) that the invention, so far as claimed ... in the claim of the petty patent specification ... was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim; and

(g) that the invention, so far as claimed ... in the claim of the petty patent specification ... was not novel in Australia on the priority date of that claim.

Section 40

The petty patent specification is entitled "hair treatment" and is directed to a method of treating the scalp to promote hair growth. Mr. Christiansen submitted that the specification does not comply with the requirements of section 40 in that:

·      it does not "end with a single claim defining the invention",

·      the claim is not "clear and succinct", and

·      the claim is not "fairly based on the matter described in the specification".

The parts of the specification material to a consideration of section 40 are as follows:

"This invention relates to a hair treatment and, more particularly, to a method of treatment whereby the growth of hair can be stimulated even, in many cases, where a person is effectively bald.

The mechanism of hair loss and hair regrowth is not fully understood, but it is believed that normally the hair follicles are located some distance below the surface of the scalp but when a person is losing hair the follicles tend to move to the surface of the scalp and, in so moving, tend to move from the normal source of blood supply. Consequently a hair root located in the follicle is also starved of blood supply and, if it should grow, tends to be weak. In a person suffering hair loss, if the follicles could be caused to move to the normal position, it is believed that it is possible that the blood supply would be re-established. Further, in most persons there are a large number of quiescent hair roots in follicles and if growth of these could be activated, there would be a normal regrowth of hair.

The object of the invention is to provide a treatment for the scalp which causes growth of hair.

The invention, in its broadest sense, comprises a method of treating the scalp to promote hair growth comprising bathing the scalp, preferably at the acupuncture points thereon, with the output from a cosmetic/medical laser for periods in the range of ten minutes and one hour at time period periods (sic) spaced from a few days to several weeks to thereby stimulate the growth of hair on the scalp.

More specifically, the method may include both the stimulation of acupuncture points which have to do with hair growth whilst, at the same time, previously or subsequently, bathing the scalp in a laser light.

It is also preferred that the treatment be combined with other beneficial processes, such as regular scalp massage, vitamin supplementation and proper diet.

In order that the invention may be more readily understood, we shall describe an embodiment of the operation of the process of the invention and summarise results so far achieved.

..........

In the treatment we use a 1mW helium neon laser, which is a known machine for treating the complexion (sic) and which has approval by the interested Government Departments and Authorities. A normal treatment takes approximately 30 minutes.

During the first fifteen minutes of this period, we use the laser to stimulate acupuncture points which are recognised as being associated with tie scalp and we may stimulate more than 30 of these, each for a very short period. Whilst many of these points are on die scalp itself, some of the points are spaced therefrom. Laser machines are known which, when moved over the boo give a reading, or a changed reading when located on an acupuncture point and this, provided the operator knows where the points should be located, they can be very accurately located. O' The specific location of these acupuncture points will not be described further herein as they are known in the art.

Subsequently to stimulating these points, we then provide a general bathing of the head dome for a period of some fifteen minutes.

Subsequent to this we provide a scalp massage and suggest that the client massages the scalp regularly between treatments as such massage helps to tone the skin.

A course of treatment can comprise some fifteen such treatments at fortnightly intervals and it is presently proposed to provide a booster treatment each six months.

At the present time, the program has only been operating for approximately six months and, as such, it is difficult to accurately nominate the best follow-up treatment.

..........

The claim defining the invention is as follows:

A method of treating the scalp to promote hair growth comprising bathing the scalp, preferably at the acupuncture points thereon, with the output from a cosmetic/medical laser for periods in the range of ten minutes and one hour at time periods spaced from a few days to several weeks to thereby stimulate the growth of hair on the scalp."

Single claim defining the invention

Mr. Christiansen submitted that because of the use of the word "preferably" in "the claim", what appears on its face to be only one claim is in fact two claims; one claim being to the invention without the preferable feature and the other claim being to the invention with the preferable feature.

(If the petty patent specification is to be treated as including two claims then it offends against paragraph 40(1A)(b) of the Patents Act and an extension of term could not be granted). Mr. Christiansen's submission is supported by Office practice as set out in paragraph 2.4 of the Petty Patent Manual, which is as follows:

"2.4 Single claim

Section 44(2) allows priority dates for alternative forms of an invention within a single claim of a complete specification and has not been extended to a claim of a petty patent specification. The clear intention is that the claim of a petty patent should not be directed to alternative forms of the invention.

Alternatives, as such, would not be objectionable where they relate to alternative features which could have been claimed as a single broad feature, that is, where the claim may be regarded as being more precisely (or wore narrowly) directed than if it had claimed a single broader feature encompassing the alternatives.

Alternatives which define features of different scope are objectionable in that the claim is then directed to alternative forms of the invention."

I do not think that the claim is objectionable on an application of the test described in the quotation. "Bathing the scalp" at "the acupuncture points thereon" is nevertheless "bathing the scalp"; as would be "bathing the scalp only at points other than the acupuncture points" or "bathing the scalp at a number of points chosen at random". In other words the expression "preferably at the acupuncture points thereon" in no way contributes to the meaning or the scope of the claim; the meaning and scope of the claim would be the same if those words were deleted. These words merely make it clear that "the scalp" includes the acupuncture points to be found on the scalp. The claim accordingly does not define features of different scope and is not objectionable according to this test.

The claim is not clear and succinct

The criticism of the claim under this heading is directed to the use of the expressions "in the range of ten minutes and one hour" and "at time periods spaced from a few days to several weeks" in specifying time ranges. I think that the language used is sufficiently explicit to allow a decision to be made as to whether some activity which has taken place is an infringement. The claim accordingly does not suffer the irresolveable ambiguity which must be established to make good an objection under section 40.

Not fairly based on the matter described in the specification

The claim defines "... bathing the scalp, preferably at the acupuncture points thereon, with the output from a cosmetic/medical laser On page 4 of the specification, in the description of "an embodiment of the operation of the process of the invention", it is stated that "Subsequent to ... (stimulating the acupuncture points) ... we then provide a general bathing of the head dome for a period of some fifteen minutes". (Taken in context it is clear that the "bathing of the head dome" is with laser light). The submission was to the effect that this latter passage clearly indicates that stimulating the acupuncture points and bathing the head dome or scalp are different types of operations, that the specification describes these operations as taking place one after the other, and that the bathing of the head dome takes place only if the acupuncture points are also stimulated as a separate operation. In contrast, according to the submission, the claim defines "stimulation" of the acupuncture points as an alternative to the "bathing of the scalp" and so defines the possibility of performing a "bathing of the scalp" without also performing a "stimulation of the acupuncture points". If these interpretations of the description and claims are correct then the claim is not fairly based on the matter described in the specification. It would not be fairly based in that it contemplated the possibility of bathing the scalp otherwise than in conjunction with stimulation of the acupuncture points, whereas the description contemplates that bathing of the head dome takes place only in conjunction with stimulation of the acupuncture points.

I do not think that the passage quoted from the description of the preferred embodiment can be relied on in this way in order to construe the description of the invention in its entirety. The description of the preferred embodiment cannot be read in isolation from the consistory clauses in the description. Those consistory clauses are as follows:

"The invention, in its broadest sense, comprises a method of treating the scalp to promote hair growth comprising bathing the scalp preferably at the acupuncture points thereon with the output from a cosmetic/medical laser (continuing in the same terms as the claim) More specifically, the method may include both the stimulation of acupuncture points which have to do with hair growth, whilst, at the same time previously or subsequently, bathing the scalp in a laser light."

I have already concluded, in considering whether the claim defines only one invention, that stimulating the acupuncture points on the scalp can also be described as bathing the scalp. The first consistory clause describes "bathing the scalp", and it is preferred that this be done at the acupuncture points. This clause accordingly implies that "bathing" may or way not also take place at other points. The second consistory clause specifically spells out that in addition to an operation which stimulates only the acupuncture points, then "at the same time previously or subsequently bathing the scalp (i.e. the entire scalp, including the acupuncture points) in a laser light" may also take place. Neither the embodiment described on page 4 of the specific- action nor the claim is inconsistent with these consistory clauses and the claim is fairly based.

Not an invention within the meaning of the Act

An invention within the meaning of the Act is "any manner of new manufacture". The claim is directed to a method of treatment of the human body for cosmetic purposes, and it is the practice of this Office to accept that such a method is a "manner of manufacture". Whether the claim defines a "new" manufacture is a matter I will consider together with the other heads of anticipation.

Anticipation

The notice lodged under sub-section 68B(3) raises the issues of whether the invention claimed is a manner of "new" manufacture, whether it is obvious and did not involve an inventive step, and whether it lacks novelty. Before considering these questions, I will summarise the evidence and my findings of fact on that evidence.

The evidence lodged by Mr. Christiansen is a declaration by himself, (with 9 exhibits) and a declaration by Kevin John Holmes. The evidence lodged by the patentee is a declaration by Irene Carolin Chapman (the inventor) and a declaration by Roger John Medus (a director of the patentee). The following is a chronological summary of the matters put in evidence.

Exhibit JC7 to Mr. Christiansen's declaration is a photocopy of an affidavit by a Michael Archangelo Beatrice, sworn on 18 December, 1984 in a Supreme Court action between the patentee and Bordan Balaban and Terence Pampakas trading as "Astounding Results Laser Hair Growth". Mr. Beatrice deposes that he is, and for the last 8 years has been, a practising acupuncturist, that "it is generally well known amongst practising acupuncturists that scalp hair growth can be promoted by stimulating the scalp and body acupuncture points. This is done by traditional needling, massage, heating, laser and electrical stimulation. A number of articles have been published on the subject, which are freely available in the State and University libraries. These include the American Journal of Acupuncture Volume 1, January to March 1973, pages 23 to 26, "Treatment of Baldness with Acupuncture" by Ryszard Kobos M.D. and the American Journal of Acupuncture Volume 8 No. 2, June 1980 pages 147 to 155 "The Bald Head and Chronic Low Back Pain" by C.C. Gunn, M.D. Both are and since publication have been freely available in Australia".

The first article (the "Kobos article") referred to in this extract from the Beatrice affidavit is also referred to in the Christiansen declaration, and a copy is exhibit JC9 to that declaration. The article discloses acupuncture needling treatment of baldness. The only disclosure of the treatment process is as follows:

"Treatment of baldness by acupuncture is most effectively accomplished by a two-pronged procedure, namely:

·      treatment of the whole organism with attention to the general condition of the patient.

·      local/directional treatment, a directionally concentrated effect of acupuncture on the baldness process.

When applying general treatment I use the following points most frequently:

(a) The triple warmer meridian, T5, T10 and T15.

(b) The bladder meridian, B13, B37 and B38.

(c) The lung meridian, L1 and L7.

For local treatment I make use of the points in which the therapeutical effect is selectively directed against baldness. These are the points situated in the closest vicinity of the thinning hair, or encompassing the baldness field, i.e. almost at the border of that area and encircling it by about 2 cm similarly as in the treatment of psiorias.

Besides the above mentioned punctures, I use the following points in the course of a single period or multiperiod treatment:

Heart   : H3, 5
Bladder   : B10, 11, 13, 15, 22, 38, 54, 58
Kidney   : K3, 7, 12, 13, 14
Gall Bladder   : G1, 3, 4, 11, 20, 36, 37, 38, 41, 43
Liver   : L8, 13
Large intestine                    : Li4, 9, 11
Stomach   : S3, 8, 30, 38
Spleen   : Sp5, 8
Conception vessel                  : Jenn44o2, 4, 7, 12, 15
Governing vessel                   : Tou44o6, 11, 14.

Comment

Acupuncture treatments are performed in two or three series of 14 to 21 sessions each. The needle insertions are administered every day or every second day.

On the average, the process of hair thinning is stopped within six months. The growth of new hair occurs in about eight to nine months from the beginning of treatment."

The contents of exhibit JC7 (the copy of the Beatrice affidavit) are hearsay evidence in these proceedings, as they are not statements of facts of which Mr. Christiansen is personally aware, and would not be admissable in evidence in a court or tribunal which was bound by the rules of evidence. The rules of evidence do not apply to proceedings before the Commissioner of Patents, who can accept any evidence which is "logically probative" of the issues before him; and who must decide what weight should be given to that evidence.

Applying these principles I do not think I should accept it as proven by this evidence that "it is generally well known amongst practising acupuncturists that scalp hair growth can be promoted by stimulating the scalp and body acupuncture points", or that "this is done by traditional needling, massage, heating, laser and electrical stimulation", as is stated in the Beatrice affidavit. I cannot accept these assertions as proven because they are third hand evidence of disputed matters and should be accorded little weight. Although Mr. Beatrice describes himself as a practising acupuncturist he does not establish that a practising acupuncturist should be aware of the state of knowledge of other practising acupuncturists on the treatment of baldness, nor does he explain how he came to be aware of other acupuncturists' knowledge of this matter. I do however think I should accept it as proven that the Kobos article was published in Australia before the priority date of the claim. The Beatrice affidavit states that:

"   A number of articles have been published on the subject which are freely available in the State and University libraries. These include (the Kobos article and another article) ... Both are and since publication have been freely available in Australia."

Printed at the bottom of the pages of the Kobos article is the footing "Am. J. Acupuncture, Vol 1, Jan.-March 1973". I think it the proper interpretation of the above quote from the Beatrice affidavit that Mr. Beatrice checked the availability of this Journal in the State and University libraries and discovered from material in those libraries that the Journal has been continuously available since some time soon after publication in 1973. Such a chain of events, even though introduced into evidence second-hand as a copy of an affidavit exhibited to a declaration, is sufficiently probative of the fact of publication in Australia before the priority date of the claim.

The evidence which should be considered next is exhibit JC3 to the Christiansen declaration. This exhibit is also a copy of an affidavit filed in an action in the Victorian Supreme Court. It is sworn by Ernest S. Hibbert, an acupuncturist, who states "In or about September 1978 I visited the Republic of China and there saw demonstrated the technique of scalp acupuncture. I had also read in the American Journal of Acupuncture Volume 1, January to March 1973, pages 23 to 25 for the stimulation of acupuncture points and of the same technique in New Discovery Cerebral Acupuncture, American Medical Journal, Volume 2, January to March 1974, pages 30 to 46. ... On my return to Australia from the Republic of China in 1978 I applied a Ploggs laser machine to the stimulation of acupuncture points for the promotion of scalp hair growth. I had little success with the technique and have not used the technique again since 1978". Although this evidence is again hearsay, these statements go to matters of fact within the personal knowledge of Mr. Hibbert, and I accept them as proving that Mr. Hibbert at least experimented with the use of a laser to stimulate acupuncture points for the promotion of scalp hair growth. I must however observe that there is no evidence of which acupuncture points were treated, nor is there any evidence as to the frequency of treatment or as to the duration of treatment.

The next events in the chronology are described in a declaration by Irene Carolin Chapman, the inventor, who is a qualified nursing sister. The material part of her declaration is as follows:

"2. ... in October 1982, ... (I) ... commenced working as a skin therapist in Fairy Meadow using laser machines which were obtained by my then employer and now partner, John De Jonge of 3 Bushlands Avenue, Mount Pleasant in the State of New South Wales, from Lasercare (Australia) Pty. Limited.

3. In January 1983 I discussed with a balding client, to whom I was providing cosmetic treatment with a neon/helium laser, the possibility of obtaining hair growth by the use of the laser and applied the output from the laser to the scalp of the client, both at what I believed were acupuncture points thereon and generally.

4. As my interest in the possibility of hair growth developed, I read certain material about acupuncture and formed the belief that if hair growth was to occur it would be because of a stimulation of the circulation of blood in the scalp and, as acupuncture points are associated with such circulation, it appeared that stimulation of acupuncture points as well as general stimulation of the scalp could be desirable.

5. By May 1983, the client who I had initially treated showed signs of positive hair regeneration and, at that time, I discussed with Douglas Grahame, who was known to me as one of the Directors of Lasercare (Australia) Pty. Limited, my initial results.

6. Because of these positive results, I commenced, during the middle portion of 1983, to carry out experimentation regarding hair growth on other clients and friends, the clients being clients who were having cosmetic treatment from me.

7. During this period, whilst I informed the subjects that I was attempting to stimulate hair growth, I did not explain completely and fully to them my methodology but they did appreciate that I was using the same laser machine as I was using for the cosmetic treatment.

8. Also during this period I read more about acupuncture and had discussions with an acquaintance who is an acupuncturist and he advised me as to the best method of location of acupuncture points to do with the scalp.

9. In August 1983 I had discussions with Roger Medus, who I know as another Director of Lasercare (Australia) Pty. Limited, and he showed great interest in the process and asked me to keep him informed of further developments as, at that stage, whilst I had tried the process on a number of people, the number was too small to be statistically reliable.

10. I had come to the conclusion during my experimentation that it appeared that the MDST satisfactory results were obtained by fortnightly treatments and that optimum results were usually achieved after about fifteen treatments. Thus, to obtain a satisfactory result from any particular client took of the order of thirty weeks.

11. Because of this time and the fact that I did not have a large number of the most satisfactory type of client, generally middle aged men, for the tests and in order to increase my base of subjects, I did, on September 1st, 1983, include a line in an advertisement for my cosmetic treatment, an indication that hair regrowth may be possible and, from this advertisement, which appeared monthly for some three months, I obtained twenty-five subjects who were the basis for my further essential experimentation.

It was these subjects which convinced me and the Directors of Lasercare (Australia) Pty. Limited that the process appeared to give statistically significant results and that it appeared that it would be commercial.

During this period, the only persons who were fully appraised of the process were Douglas Grahame and Roger Medus of Lasercare (Australia) Pty. Limited and John DeJonge.

12. By February 1984 I and Roger Medus came to the conclusion that the process was sufficiently developed to appear to have the possibility of great commercial viability and I have been informed and verily believe that at or about that time Roger Medus had discussions with his patent attorney, Alfred Tatlock of A. Tatlock & Associates of 19 Drummond Street, Carlton in the State of Victoria, as to the possibility of protection of the process and, as a result of these discussions, I verbally assigned the invention and the right to lodge a patent application in respect of the invention to Lasercare (Australia) Pty. Limited.

13. At about the same time Mr. Medus suggested that it may be possible to obtain a grant for further experimentation from a Government Department interested in new technology and, in order to prepare submissions for such grant, it would be desirable to obtain testimonials from some of the clients who had been treated. I subsequently approached a number of clients and testimonials were obtained for submission with a proposal to the Department.

14. I was subsequently informed that a patent application was lodged under No. PG 4482/84 on April 9th, 1984 and I have subsequently, again, been informed that a petty patent application which went to grant as Petty Patent No. 538,406 was lodged as a divisional application of the patent application.

15. Since the lodgement of the patent application, I have carried out commercial treatments of the scalp for a large number of clients and found a very high success rate and I believe, statistically, that the success rate is of the order of 92%.

16. By success rate I mean that there has been certain regrowth and rejuvination of hair. I have found that the degree of regrowth depends on a number of factors which appear to be age, the amount of hair lost before treatment has started and the amount of time it has been since tie hair was lost."

According to this evidence, before the middle of May 1983 Ms. Chapman used laser treatment as an attempt to restore hair growth on only one patient. The evidence does not disclose all the details of the treatment which was given. The only details proved are that Ms. Chapman applied the laser to the scalp of the patient, both at what she believed were acupuncture points and generally. No details are given as to the duration of treatment, whether there was more than one session of treatment, or the periods between sessions, if more than one. Ms. Chapman gives evidence of use of a laser on a number of patients between the middle of May 1983 and 9 April, 1984, but again there is no evidence on the precise details of any of that treatment, other than the statement in paragraph 10 of the declaration that "it appeared that the most satisfactory results were obtained by fortnightly treatments and that optimum results were usually achieved after about 15 treatments". There is no evidence as to when Ms. Chapman came to this conclusion.

Next in the chronology comes the evidence of NV. Kevin John Holmes, a director of Australian Pacific Marketing Pty. Ltd. The material part of Mr. Holmes' declaration is as follows:

"2. In May 1984 Australian Pacific Marketing Pty. Ltd. investigated the possibility of becoming involved with Lasercare (Australia) Pty. Ltd. in the establishment of Laser treatment clinics.

3. During several meetings between myself, Len Kelsey (another Director of Australian Pacific Marketing Pty. Ltd.) and persons involved with Lasercare (Australia) Pty. Ltd., including Irene Carolyn Chapman (the named inventor in relation to Petty Patent No. 538406) I was provided with a complete disclosure of the invention, the subject of petty patent No. 538406. Such disclosure included the showing of a video of the technique of the invention. I was also handed copies of testimonial letters, including that marked Exhibit JC6, annexed to the statutory declaration, dated 29th July 1985, by John Christiansen.

4. It was made quite clear by Lasercare (Australia) Pty. Ltd. that several centres had been trading as commercial centres since late 1983. The testimonials were offered as supportive evidence of that fact.

5. It was also wade quite clear that "franchises" had been offered for sale during late 1983 and early 1984. I imagine that potential franchisees were given the same presentation as ourselves.

6. I understand that a Mr. Graham Close and a Mr. John Bingley were acting as agents of Lasercare (Australia) Pty. Ltd. during the period mentioned in paragraph 5 and that they were also openly offering the process for sale on a franchise basis and were using the same information presented to is in Sydney to do so.

7. At no stage was I, or the company I represent placed under any obligation whatsoever by Lasercare (Australia) Pty. Ltd. to regard the information disclosed to me as confidential."

Paragraph 4 quoted above sets out a statement that several centres had been trading as commercial centres since late 1983, but Mr. Holmes does not give any evidence proving that the treatment applied in those centres anticipates the claim of the petty patent. Similarly I cannot accept the material in paragraph 5 as proof of publication of the invention. Mr. Holmes in effect speculates that the invention may have been published before the priority date by way of the presentations to potential franchisees; but he has not produced any evidence that the presentations to those potential franchises were identical to the presentation he saw. In paragraph 6 Mr. Holmes does not state the material on which he bases his understanding that the information presented to potential franchisees in Sydney before the priority date was the same as the information presented to himself after the priority date; so again evidence of a fact which is essential to prove anticipation is missing. The evidence set out in paragraph 7 of this declaration is not material to the question of whether the invention claimed is anticipated as it relates to disclosures which took place after the priority date of the claim. Accordingly there is no evidence in this declaration on which I could rely to find that the invention was published before the priority date of the claim. In addition, all the statements in paragraphs 4 to 7 of this declaration are contradicted by the declaration by Roger John Medus. There is no material available which would allow we to decide Whether Mr. Holmes is a more accurate witness than Mr. Medus, or vice versa. Accordingly it is impossible to conclude which statement of events is more accurate and I should not rely on either declaration to decide that tie invention is anticipated. Paragraph 2 of the declaration by Mr. Medus is as follows:

"2. I have read the Declaration by Kevin John Holmes dated July 30th, 1985 lodged herein and categorically state that that Declaration in paragraphs 4 to 7 is completely incorrect."

Paragraphs 3 to 9 of the Medus declaration go on to refute in detail each of the statements in paragraphs 4 to 7 of the Holmes' declaration.

Exhibit JC4 to the Christiansen declaration is a copy of an article published in "The Sun" on 19 February, 1985 and which reports an interview with Mr. Medus. The only part of the article material to the matters in issue reads as follows:

"A few years ago (Roger Medus) and partner Douglas Grahame set up a company to distribute lasers to be used for cosmetic treatments such as smoothing wrinkles and treating acne.

Mr. Medus said one of the machines was sold to a Wollongong pharmacist who used it in a skin clinic staffed by nursing sister Carolin Chapman.

In early 1983 her clients included a miner who cane for treatment for scarring on his face. He had repeatedly asked that the laser be tried on his balding head.

The nurse had told him that it would do no good but had eventually given in to appease him.

Says Mr. Medus "On the 4th visit both she and the miner were quite amazed to find there was stubble on this guy's head. He was previously shiny on top."

The miner's condition continued to improve with further treatment, Mr. Medus said."

If I were to accept this newspaper report as being reliable evidence of events of nearly 2 years before and of which Mr. Medus had no first-hand knowledge the case for anticipation of the claim would be no further advanced. Ms. Chapman's own declaration proves that she first used a laser to treat a balding client in January 1983. The only information that the newspaper article could add to this is that the miner visited Ms. Chapman's clinic at least 4 times. It may be that on the second, third and fourth of these visits Ms. Chapman applied laser treatment only to his scarred face. Even if the treatment on later visits was for the purpose of promoting hair growth, there is no evidence that any such treatment was of such a nature as to anticipate the claim.

To summarize the above findings, acupuncture treatment for baldness has been known in Australia since about 1973 because of the publication of the Kobos article. In 1978 Mr. Hibbert experimented in Australia with the use of a laser to stimulate acupuncture points for the promotion of scalp hair growth. In January 1983 Ms. Chapman first used a laser for the purpose of promoting hair growth. Ms. Chapman applied the laser to the scalp of the client, both at what she believed were acupuncture points and generally. There is no evidence as to what treatment, if any, Ms. Chapman gave this client between January 1983 and the middle of 1983. Between the middle of 1983 and 9 April, 1984 Ms. Chapman treated a number of patients, but no evidence has been produced as to the specific details of this treatment.

The claim of the petty patent is not prior published by the Kobos article. That article can be compared with the claim as follows:

1. The Kobos article discloses the use of traditional needling; the claim is directed to the use of a laser.

2. The Kobos article discloses a process combining stimulation of acupuncture points relating to "the general condition of the patient" and those "situated in the closest vicinity of the thinnin2 hair"; the claim is directed to the stimulation of the scalp, preferably at the acupuncture points thereon".

3. The Kobos article discloses treatment performed in 2 or 3 series of 14 to 21 sessions each, the needle insertions are administered every day or every second day; the claim is directed to use of a laser for periods in the range of 10 minutes and one hour spaced from a few days to several weeks.

I do not think that the evidence establishes that the use of lasers as a substitute for needling is part of common general knowledge of acupuncturists in Australia. (Item 1 above). With respect to item 3 above, the needling sessions of the Kobos article may be spaced by 2 days; in the claim the periods of laser treatment may be spaced by "a few" days, including, for example, 2 days. It may be that the needling sessions described in the Kobos article would have a duration in the range from 10 minutes to 1 hour. Additionally the Kobos article differs from the claim in that it teaches the stimulation of different acupuncture points. Because of these differences the claim is not prior published. Nor does the claim lack novelty, nor is it obvious, in the light of the Kobos article. There is no evidence on which I can conclude that the use of different acupuncture points makes no substantial contribution to the working of the invention nor on which I can conclude that the use of different acupuncture points clearly involves no ingenuity or inventive step. Nor is there any evidence on which I can conclude that the use of different acupuncture points would be obvious to an acupuncturist, so it has not been proved that the invention as claimed is obvious.

Similarly it has not been proved that the claim is anticipated by Mr. Hibbert's experimentation. There is for example no evidence as to which acupuncture points Mr. Hibbert stimulated in the course of his experimentation.

I must finally consider whether Ms. Chapman's treatment of various patients before the priority date of the claim amounts to publication by prior use. Mr. Tatlock submitted that when Ms. Chapman was treating these patients she never described to then the details of the treatment she was applying and so the treatment was never published to them. I am of the opinion that in order to prove anticipation by prior use it is not necessary to show that the use put any member of the public in the possession of a knowledge of the details of the invention, it is only necessary to show that the use took place in public. In arriving at this opinion I rely on the speech of Lord Diplock in the House of Lords in Bristol-myers Company (Johnson's) Application 1975 RPC 127 at 157:

"If the inventor, after discovering how to make (a substance), had himself dealt with the substance commercial before applying for a patent for it, he would be disqualified from obtaining a grant; but this was not because of any prior use of it by others, but for the different reason that the invention having been put by him to "public use" was no longer a manner of new manufacture within the meaning of the Statute of Monopolies. For the other mischief against which the Statute was directed was that even monopolies of new manufactures should not extend beyond fourteen years. If the inventor had already reaped commercial benefit from a de facto monopoly in his discovery owing to his concealment from all other traders of the way in which tie new substance could be made, he was not to be permitted to prolong his monopoly for an additional fourteen years. So "public use" in the sense of commercial dealing in a product claimed as an invention, by any trader even though it were by the inventor himself, rendered invalid any patent for the product claimed ... In the case of use by traders, at any rate, the expression "public use" was not employed to mark the contrast between the public and secret use but to distinguish commercial from experimental use in the course of discovering, perfecting and trying out the invention so as to test its suitability for commercial use ... To sell the product by way of trade, is to "use" it, notwithstanding the seller's ignorance of its identity or his lack of knowledge of its composition or his uncertainty as to how and where further supplies of it could be obtained."

I am of the opinion that the ratio of this decision is equally applicable where the invention in issue is a process rather than a product, so that the application of a process by way of trade is public use of the process. Accordingly, if Ms. Chapman treated clients according to the process defined in the claim before its priority date then the claim is anticipated, even if the clients were not aware of the details of the treatment.

However, as pointed out in the summary of my findings of fact on the evidence, there is no evidence that Ms. Chapman treated a client in accordance with the process defined in the claim before the priority date of the claim, and I cannot find the claim anticipated by prior use.

At the hearing, Mr. Tatlock referred to paragraph 158(i)(h) of the Patents Act. That provision is as follows:

158(1) Objection shall not be taken to an application for a patent, so far as the invention is claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, and a patent, so far as the invention is so claimed, is not invalid, by reason only of -

.....

(h) the invention, so far as so claimed, having been publicly worked in Australia, within one year before the priority date of that claim

(i) by the patentee or applicant or by a person from whom he derives his title; or

(ii) by some other person with the consent of a person referred to in sub-paragraph (i),

if the working was for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should have been in public.

I am of the opinion, on the evidence, that if the invention as claimed was publicly worked in Australia by Ms. Chapman in the year preceding the priority date of the claim then this provision would be applicable.

On the evidence I am not satisfied that any of the grounds set out in paragraphs 100(l)(c), (d), (e) and (g) exist. I grant an extension of the term of the petty patent. I award costs in favour of Lasercare (Australia) Pty. Limited.

(A.J. EVANS)
Supervising Examiner of Patents
2 0CT 1985