Lucas Industries Ltd v Commissioner of Patents

[1977] HCA 27

HIGH COURT OF AUSTRALIA

STEPHEN J.

LUCAS INDUSTRIES LTD. v. COMMISSIONER OF PATENTS

(1977) 138 CLR 152

25 May 1977

Patents

Patents—Application—Amendments to application—Divisional application—Whether for invention within scope of claim excluded by amendment from original application—Patents Act 1952 (Cth), ss. 45 (3A)**, 49A (1) (a)*. * Section 49A (1) of the Patents Act 1952 (Cth), so far as is material, provides: "The applicant may make a separate application for a patent for an invention falling within the scope of a claim—(a) that has been excluded by an amendment made under section forty-nine or section fifty-twoD of this Act". ** Section 45 (3A) provides: "The priority date of a claim of a complete specification accompanying an application made by virtue of sub-section (1) of section forty-nineA of this Act, being a claim fairly based on matter disclosed in the complete specification from which the invention has been excluded by an amendment made under section forty-nine or section fifty-twoD of this Act or would be excluded if an amendment included in a statement of proposed amendments lodged under either of those sections were made, is the date that would have been the priority date of that claim if that claim were a claim of that last-mentioned specification."

Decision

1977, May 25.
STEPHEN J. delivered the following written judgment:-
This appeal concerns a procedural aspect of Australian patent law. It involves the circumstances in which an applicant for letters patent, who has been obliged to exclude certain claims from his application or specification so as to overcome an adverse report by an examiner, may make a subsequent separate application for letters patent, styled a divisional application, in respect of those excluded claims and obtain for them the benefit of those priority dates which would have applied had they been retained in his original application. (at p153)

2. The appeal is from a decision of the Assistant Commissioner of Patents, brought under s. 52 (8) of the Patents Act 1952 (Cth). The invention the subject matter of the application in dispute - a divisional application made under s. 49A (1) of the Act - relates to "electric storage batteries of the kind comprising a battery box incorporating partition walls defining a plurality of cells, and assemblies of battery plates and separators within the cells", the object of the invention being "to provide a convenient method of interconnecting battery plates situated in adjacent cells". (at p154)

3. As lodged, claim 1 of the complete specification the subject of the divisional application reads as follows:

"1. A method of interconnecting battery plates situated in adjacent cells of an electric storage battery of the kind specified, comprising connecting the battery plates in the two cells which are to be interconnected to a pair of conductive bars respectively which at their ends adjacent the partition wall are formed with extensions extending substantially parallel to the partition wall, forming a hole in the partition wall, inserting an electrically conductive slug in said hole, so that it projects from opposite ends thereof, and welding the extensions to the slug."

There are five other claims: claims 2, 3 and 4 each narrows the ambit of the monopoly claimed in claim 1 by respectively more closely defining the method of welding, the shape of the surfaces of the electrically conductive slug and of the conductive bar extensions where they make contact with each other and the design of the extensions to the conductive bars. Claim 5 then claims a "method of interconnecting battery plates" substantially as described in the accompanying drawings and claim 6 claims the product, an "electric storage battery having battery plates in adjacent cells interconnected by a method in accordance with any one of Claims 1 to 5". (at p154)

4. The circumstances preceding the making of this divisional application and which have led to the present appeal require to be set out in some detail. What I shall call the parent application, no. 46118/64, was lodged on 24th June 1964. It had a convention priority date of 2nd July 1963. Its accompanying complete specification contained 13 claims, of which two groups, claims 1 to 6 and claims 7 to 13 were independent of each other. Of the first claim in each group, claims 1 and 7, the former was identical with, and indeed provided the model for, claim 1 of the divisional application. Claim 7 of the parent application was as follows:

"7. A method of interconnecting battery plates situated in adjacent cells of an electric storage battery of the kind specified, comprising connecting the battery plates in the two cells which are to be interconnected to a pair of conductive bars respectively which at their ends adjacent the partition wall are formed with extensions extending substantially parallel to the partition wall, forming a hole in the partition wall in a position in which upstanding portions formed on said extensions surround the hole, inserting in the said hole a conductive member, applying pressure to the extensions to cause the upstanding portions to bite into the cell wall, and welding the extensions together through said conductive member."

There were then, it seems, two distinct inventions comprised in the original claim as lodged, each represented by one of these two groups of claims. The Commissioner apparently regarded them as sufficiently cognate, and no objection was taken to their being comprised in the one application. I shall refer to that comprised in the first group of claims as the "welding aspect" and to the other as the "rings aspect". The present proceedings are concerned only with the "welding aspect", which alone formed the subject matter of the appellant's divisional application. (at p155)

5. During the course of examination of the parent application objection was taken that claim 1, and perhaps claim 2, was too wide in that claim 1 covered any method of welding, and claim 2 any method of electric welding. To overcome these objections by the examiner a statement of proposed amendments under s. 49 of the Act was lodged, the amendments thus proposed were allowed, and the application, as so amended was accepted in August 1969. The amendments "cancelled" the original statement of claims and substituted for it one in which claims 3 to 6 as lodged remained in their original form, although now renumbered 2 to 5, whereas the former claims 1 and 2, the latter in somewhat altered form, were combined together to form a new claim 1 as follows:

"1. A method of interconnecting battery plates situated in adjacent cells of an electric storage battery of the kind specified through the partition wall between the cells comprising connecting the battery plates in the two cells which are to be interconnected to a pair of conductive bars respectively which at their ends adjacent the partition wall are formed with extensions extending substantially parallel to the partition wall, forming a hole in the partition wall, inserting an electrically conductive slug in said hole, so that it projects from opposite ends thereof, and welding the extensions to the slug by bringing a pair of electrodes into contact with the extensions by passing an electric current through the extensions and slug." (at p155)

6. The passage italicized represents the extent to which this claim contains words not found in claim 1 of the original. The inclusion of some of the italicized words is no more than the result of combining original claims 1 and 2, coming as they do directly from the wording of original claim 2, and thereby confining the scope of the new claim 1 to that of the original claim 2. The remainder of the italicized words, "by bringing a pair of electrodes into contact with the extensions", are new. They narrow this new claim 1 still further. (at p156)

7. The subsequent history of the parent application was both lengthy and eventful but its details are, in part, irrelevant. Suffice it to say that in February 1970 it encountered opposition proceedings which, after a hearing in February 1973, ultimately necessitated further sweeping amendments to the original claims. These were proposed in mid-1974 and involved the excision of claims 1 to 5, those concerned with the "welding aspect". These amendments were accepted and the parent application, now confined to the "rings aspect", proceeded to sealing. Meanwhile the "welding aspect" was sought to be resurrected in the shape of the divisional application the subject of this appeal, which was first made in April 1974 after it had become clear that it would be necessary wholly to excise the "welding aspect" from the parent application. The appellant apparently chose to make a divisional application in respect of the "welding aspect", as an alternative to appealing against the decision of the Assistant Commissioner which required it to make the sweeping amendments that entailed abandonment of the "welding aspect" of the parent application. (at p156)

8. The appellant's divisional application fared no better than had its parent application. Adverse examiner's reports were issued and ultimately, in August 1976, a hearing took place before the Assistant Commissioner concerning the examiner's objections. Of these only two are now relevant. They were: (1) that the application was not entitled to proceed as a divisional application under the provisions of s. 49A; (2) that the invention the subject of that application was not novel because the claims were not entitled to a priority date in accordance with s. 45 (3A) and, accordingly, the invention claimed was deprived of novelty by the appellant's own patent no. 293,159, being the patent granted to it as a result of the parent application. The Assistant Commissioner, in a decision delivered on 7th September 1976, decided against the appellant on each of these grounds, although for reasons somewhat different from those forming the basis of the examiner's objections. (at p156)

9. The two sections of the Patents Act referred to in these objections, so far as relevant, are as follows:

"45. (3A) The priority date of a claim of a complete specification accompanying an application made by virtue of sub-section (1) of section forty-nine A of this Act, being a claim fairly based on matter disclosed in the complete specification from which the invention has been excluded by an amendment made under section forty-nine or section fifty-two D of this Act or would be excluded if an amendment included in a statement of proposed amendments lodged under either of those sections were made, is the date that would have been the priority date of that claim if that claim were a claim of that last-mentioned specification." "49A. (1) The applicant may make a separate application for a patent for an invention falling within the scope of a claim - (a) that has been excluded by an amendment made under section forty-nine or section fifty-two D of this Act." (at p157)

10. As to s. 49A (1) (a), the appellant argued, both before the Assistant Commissioner and on this appeal, that the effect of the amendments made in 1969 to its parent application to overcome objections raised on examination was to exclude original claim 1 of that application and that claim 1 of the divisional application, being identical with that excluded claim, was clearly within its scope. In combination these two facts, it said, sufficed to satisfy the requirements of s. 49A (1) (a) and to dispose of the examiner's first objection. (at p157)

11. This submission the Assistant Commissioner accepted. However this did not wholly overcome the appellant's difficulties under s. 49A (1) (a). The appellant had already, in March 1975, proposed amendments which it desired to make to claim 1 of the divisional application; a feature of these amendments was the omission of the words describing the slug as projecting from opposite ends of the hole in the partition wall. The Assistant Commissioner regarded the making of this amendment as taking the invention claimed in claim 1 outside the scope of the original claim 1 of the parent application. Since he also took the view that a divisional application must not only initially come within the scope of an excluded claim but must continue to do so right up until sealing as a patent he concluded that the proposed amendment would, when made, disqualify the application from divisional status under s. 49A (1). (at p157)

12. As to the examiner's second objection, founded upon s. 45 (3A), the Assistant Commissioner took the view that before an early priority date could be accorded to a divisional application under that sub-section there must exist a parent application from which the invention the subject of the divisional application had been excluded by amendment under s. 49A (1). This view he based upon the words "disclosed in the complete specification from which the invention has been excluded" appearing in s. 45 (3A). There was, he said, no such complete specification in the present case - part of the invention the subject of the divisional application was still included in the parent at the relevant time, that is, immediately after the original amendment made to the parent application and which I have already described. It followed, therefore, that no early priority could be accorded to the appellant's divisional application under s. 45 (3A). It must accordingly take its priority date from the date of lodgment of the divisional specification (s. 45 (1) ) and would therefore lack novelty for the reason stated in the examiner's report. (at p158)

13. The view which I take of s. 49A (1), of s. 45 (3A), and of their mutual interaction does not wholly accord with any of the views which have been canvassed before me. Any consideration of these two provisions must begin with s. 49A (1), which is the leading provision, responsible for conferring upon an applicant the right to make a divisional application for a patent. What s. 49A (1) does is to authorize in certain cases the making of a separate, and second, application for a patent for an invention. It describes the kind of inventions to which this is applicable by reference to what has occurred to them in the past, and this because the reason for permitting reapplication lies in their past history. An invention may, and commonly will, be variously defined in each of a number of claims (s. 40), the function of each claim being to define a particular form of the invention (s. 44 (2) ). When an amendment to a specification has the effect of excluding an invention from that specification it will usually do so by excluding the defining claim. Hence the process of exclusion will involve the exclusion of one or more claims from the specification and thus there will have been excluded one or more forms of the invention. It is this history of exclusion, by amendment under s. 49 or s. 52D, which earns for the applicant the right to reapply which s. 49A (1) affords him. (at p158)

14. When the process of exclusion is thus analyzed it can be seen to be a mistake to seek to sever and contrast the words "invention" and "claim" occurring in s. 49A (1) in an attempt to have the word "exclusion" apply to one of them rather than to the other. They should, instead, in the phrase "an invention falling within the scope of a claim that has been excluded" be treated as parts of a composite whole, as they indeed are. The function of claims is "to define the scope of the invention claimed" (Blanco-White, Patents for Inventions, 4th ed. (1974), p. 45), and each claim, in determining the scope of the particular form of the invention to which it relates, will thereby for the first time identify and embody that form. This is a concept which is no stranger to this legislation wherever an "invention" is referred to in combination with a "claim" or with the act of claiming. Although the Act contemplates that each patent shall be "for one invention only" (s. 35), it also envisages, as I have said, that an invention will be variously defined in its various forms in a number of claims, each one claiming it in a particular form, hence the repeated references in ss. 46 and 58 to an invention "so far as claimed" in a particular claim. A closely allied concept emerges from the words of s. 50 (3). When speaking of cognate inventions described in provisional specifications, it refers to them "in so far as those inventions are included in the claims of the complete specification". The phrase in s. 49A (1), "an invention falling within the scope of a claim", is therefore but a mode of referring to this concept of an invention having a number of aspects or forms, so that one may speak of an invention in so far as, or to the extent to which, it is included, in one of its forms, in a particular claim. So understood, s. 49A (1) provides that, when a particular form of an invention, given that form by being within the scope of a particular claim, is excluded by amendment, an application may then be made for a patent for that excluded form of the invention. The words "that has been excluded" do not therefore apply exclusively either to "invention" or to "claim" but rather to the composite phrase. (at p159)

15. It was the appellant's submission, one accepted by the Assistant Commissioner, that "excluded" related only to a "claim" and that s. 49A (1) was satisfied so long as a claim had been excluded by amendment, and this regardless of what might be reintroduced in its place. This view emphasizes form rather than substance and gives no effect to the element of "invention" in the composite phrase. The great width of operation which it accords to s. 49A (1) has, I think, in the case of the Assistant Commissioner, lead him to seek to offset it by finding, in s. 45 (3A), the necessary corrective, namely, an unduly narrow and restrictive interpretation of s. 45 (3A) which I consider to be erroneous. (at p159)

16. It is in s. 49A (1), and not in s. 45 (3A), that the limits of the right to make divisional applications, like the right itself, are to be found. That right does not extend to every case in which, as a matter of form, the process of amendment has had the effect of omitting the words by which some claim was originally expressed but only to those cases in which, as a matter of substance, some particular form of an invention, as claimed, can be seen to have been excluded when the total effect of the amendment is examined. Both Arrow Electric Switches Ltd.'s Application (1943) 61 RPC 1 and Societe des Usines Chimiques Rhone-Poulenc v. Commissioner of Patents (1958) 100 CLR 5, esp at p 29 , although decided on significantly different legislation, approach the question of divisional applications by reference to substance and not to mere form. I would adopt the like view in the present case where the effect of an amendment is in question. It follows that it is when, and only when, the effect of amendments made under s. 49 or s. 52D is to exclude a particular form of an invention which had previously been included in a patent application, that the applicant may proceed to make a separate, divisional application in respect of it. (at p160)

17. Such an application having been made, the question of its priority date arises and s. 45 (3A) will determine it. It is when one comes to the terms of s. 45 (3A) that the particular importance of a proper understanding of the reference in s. 49A (1) to the exclusion of "an invention falling within the scope of a claim" becomes apparent. If the process of exclusion referred to in s. 49A (1) be regarded as satisfied by the mere omission, as a matter of form, of some claim, regardless of what may be inserted in its place it may be natural enough to treat the reference, in s. 45 (3A), to the exclusion of an "invention" as referring to something more than that. This was the view taken by the Assistant Commissioner. It leads to curious consequences. If however, it is appreciated that s. 49A (1) does in fact require the actual exclusion from the parent application of the substance of some particular form of the invention which is its subject, the reference in s. 45 (3A) to the exclusion of an invention will then refer aptly enough to what has occurred under s. 49A (1). (at p160)

18. The consequences of the Assistant Commissioner's view are two fold. First it has meant that, whereas the Assistant Commissioner treats s. 49A (1) as authorizing a divisional application whenever a claim is, as a matter of form, excluded, he would not accord the possibility of early priority under s. 45 (3A) to all such applications but only to those divisional applications in which the substance of the invention to which they relate no longer appears in the amended parent application. This approach therefore involves assigning a somewhat different breadth of operation to each of the two sub-sections. Some cases will qualify as divisional applications according to what I regard as the over-broad view of the Assistant Commissioner concerning the right to make a divisional application, yet they will be denied the attribute of an early priority date, which alone gives to a divisional application its virtue, and this because of the restrictive view he takes of s. 45 (3A), which he treats as requiring the exclusion of an invention from the parent application. (at p160)

19. Secondly, it attributes to sub-s. (3A) of s. 45 an operation different from that of each of the other five sub-sections of s. 45 which deal with cases other than the simple case for which sub-s. (1) provides; and this despite the fact that the scheme of drafting of sub-s. (3A) is identical with that adopted for those other five. It attributes to sub-s. (3A) the positive function of imposing upon the entitlement to an early priority date a special prerequisite which is not found in any other sub-section, the prerequisite being that only such divisional applications as concern inventions which, after amendment, have been excluded from the parent application may qualify for an early priority date. The other sub-sections of s.45 perform no similar function. Each of sub-ss. (2) to (5) , like sub-s. (3A), takes as its first task the identification of the subject matter with which it is to deal, the priority date of a claim. Then follows a short description of the particular type of claim with which it is concerned, followed by the requirement that the claim so described should be fairly based on matter disclosed in some earlier document, which is then itself described, this requirement and description being contained in a single parenthetical sentence which begins and ends with a comma. Finally comes the description of how that particular claim's priority date is to be determined. Sub-section (3A) itself follows precisely this same pattern, but only if its reference to exclusion of an invention be understood in the manner which I propose, so that its parenthetical sentence is no more than a description of the earlier document containing the disclosure relied upon, will the sub-section have the same general operation as all those other similarly constructed sub-sections in the midst of which it is embedded. (at p161)

20. Now, if the reference in s. 45 (3A) is no more than descriptive of the earlier disclosure relied upon for fair basing and if its reference to exclusion of an invention refers to what I regard as the concept involved in s.49A (1) , exclusion in substance of a particular claimed form of an invention, these difficulties disappear and s.45 (3A) operates in harmony with s.49A (1) and in the same fashion as do the sub-sections which surround it. (at p161)

21. This, then, is the interpretation which I would adopt in respect of each of these two provisions. In doing so I have largely rejected the submissions urged on behalf of the Commissioner. However it does not follow that this will advantage the appellant since, in applying the Act, as so construed, to the facts of the appellant's purported divisional application, I have concluded that it was not one authorized by s.49A (1) and should neither have been accepted nor can it be accorded, in amended or unamended form, an early priority date. (at p161)

22. The reason for this lies in the character of the amendment made by the appellant to the parent application pursuant to s.49. I have, at the outset of this judgment, described what occurred. The appellant's broad claim, in original claim 1, to monopoly for the specified method of interconnexion, effected by welding the extensions to the slug, was narrowed by the amendment, the effect of which was to limit the claim to welding by a particular means, the passage through the extensions and slug of an electric current by means of electrodes. What was excluded by amendment was, therefore, all those methods of welding other than the particular method specified in the new claim 1. The appellant's divisional application, however, repeated verbatim claim 1 of the parent application in its original form, which, by referring to "welding" generally, extended so as to include among other methods of welding the method now claimed in amended claim 1 of the parent application. As the Assistant Commissioner has pointed out, this means that the invention the subject of the divisional application does not answer the description of an invention excluded by amendment from the parent application. There has been only a partial exclusion and the area of resultant overlap is not at all akin to that permitted in the Arrow Electric Switches Case (1943) 61 RPC 1 ; it here involves the impermissible overlapping of per se claims differing only in scope: Blanco-White, op.cit., p.231. (at p162)

23. The appellant no doubt framed its divisional application in the way it has upon the assumption that s.49A(1), when it speaks of exclusion by amendment, speaks at some purely formal level, the inquiry as to what has been excluded being restricted to observing only what has been removed, no regard being had to what is inserted in its place, in this instance new claim 1. If, as I have concluded, s.49A (1) is concerned with exclusion of a particular form, or particular forms, of an invention, viewed as a matter of substance, it is erroneous to seek to answer the question of what has been excluded at a quite formal level. Such an answer would, of course, have been suggested by the view, shared by the appellant and the Assistant Commissioner but rejected by me, that it is with excluded claims that s. 49A (1) is alone concerned. Regarding the sub-section as concerned, as I have said, with the composite phrase and hence with the exclusion of a particular form of an invention, it follows that it is from the substantial, and not from the merely formal, effect of the amendment that one learns what has been relevantly excluded. (at p162)

24. It follows that what was here excluded, ascertained by comparing the area of monopoly as claimed before and after amendment, were the forms of the invention which did not employ electric welding with the use of electrodes. Yet the divisional application was not confined to the area of that exclusion. Instead it boldly claimed monopoly in respect of the whole area originally claimed by claim 1 of the parent application, including the area of electric welding by the use of electrodes. Accordingly, that application did not conform to the requirements of s.49A (1) , it was not an authorized divisional application; a fortiori it could not obtain the benefit of early priority under s.45 (3A). (at p163)

25. I conclude that the Assistant Commissioner's decision was, in the outcome, correct although for wrong reasons. I accordingly dismiss this appeal. (at p163)

Orders

Appeal dismissed with costs. Usual order as to exhibits.