Martin v Scribal Pty Ltd
[1954] HCA 48
•14 September 1954
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[HIGH COURT OF AUSTRALIA.]
MARTIN .
A ppe l l a n t
;
P l a in t if f ,
AND
SCRIBAL PROPRIETARY LIMITED
R e s p o n d e n t .
D e f e n d a n t ,
SCRIBAL PROPRIETARY LIMITED
A pp e l l a n t
;
D e f e n d a n t ,
AND
MARTIN .
R e s p o n d e n t .
P l a in t if f ,
ON APPEAL FROM THE SUPREME COURT OF
VICTORIA.
Patents— Specification— Ambiguity— Construction—Amendment in Patents Office—• H. C. of A.
Effect to claim different invention—Acceptance by commissioner— Conclusive-
1954.
ness—Evidence that patentee not in possession of invention patented at date of
application—Patents Act 1903-1950 (No. 21 of 1903—No. 80 of 1950), ss. 45, 46. Melbourne
March 3 4,
Section 46 of the Patents Act 1903-1950 provided that “ If the commissioner
5, 9, 10 11,
is satisfied that no objection exists to the specification on the ground that the
1 2 ;
invention is already patented in the Commonwealth or in any State or is
Se.pl.
14 .
already the subject of any prior application for a patent in the Commonwealth Di.xoii C..J.
Fullagai anil
or in any State he shall in the absence of any other lawful ground of objection
Taylor .U
accept the apiplication and specification without any condition, but if he is
not so satisfied he may either . . . ”.
A specification filed in December 1943 with an application for a patent for a ball-pointed pen was amended from time to time under s. 45 of the Patents Act 1903-1950 until finally accepted under s. 46 in June 1949. In its final form it claimed an invention different from that claimed in its original form. As accepted, the specification, after referring to a capillary tube proceeded “ in which when charged with viscous ink, a continuous liquid vein is main tained extending from the ball and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir ”. In an VOL. xcii.—2
HIGH COURT
[1954.
| H. | C. OF A. action for infringement it appeared that neither the jien the subject of the | |
|
Martin
V. Held that while the acceptance of a specification by the commissioner
Scribal under s. 46 was discretionary and beyond challenge as such, it did not preclude
Pty .
Ltd .
an attack on the patent on any ground on which a patent might be held invalid. Looking at the specification as it had existed from time to time, an inference arose, in the absence of countervailing evidence, that the invention as patented was not in the possession of the patentee at the time of the appilication.
Held, further, that the patent was not invalidated on the ground of ambiguity in the words in the specification “ particularly that portion adjacent the ball ”. Held further, that the specification must be read as meaning that a con tinuous liquid vein of viscous ink was maintained under normal conditions of user of a pen. The conditions under which the pen alleged to infringe the patent did not maintain such a vein were not normal.
A specification described an invention for a ball-pointed pen “ in which the ink reservoir is formed by one or more conduits starting at an air intake, and after following an ‘ extended path ’, communicating with the recess for said ball . . . ”.
Held, that a patent granted on the specification was not infringed by a ball- pointed pen having a straight conduit. Martin v. Selsdon Fountain Pen Co. Ltd. (1949) 66 E.P.C. 193 referred to.
Decision of the Supreme Court of Victoria (Sholl J.) affirmed, in part on
different grounds.
A p p e a l from the Supreme Court of Victoria.
On 8th December 1943 Henry George Martin applied to the Commissioner of Patents for a patent, which, when issued, was numbered 122073. The application and complete specification were accepted on 21st August 1946 and the acceptance advertised on 5th September 1946.
The complete specification was as follows ;—
“ Improvements in writing instruments.”
I,
Henry George Martin, British Subject, Public Accountant,
resident of Avenida Roque Saenz Pena No. 547, Buenos Aires, Argentina, whose post office address is Avenida Roque Saenz Pena No. 547, Buenos Aires, Argentina, hereby declare this invention and the manner in which it is to be performed, to be fully described and ascertained in and by the following statem ent:—
This invention relates to improvements in fountain pens of the ball-tip type, and particularly to means for providing a regular ink
92 C.L.K.]
OF AUSTEALIA.
feed to the ball constituting the active or writing element of said
OF A.
instrument.
1954.
The most suitable ink for ball-tip fountain pens is so-called “ dense ” ink, which is very adhesive, and the ball, in rotating, will
Maetin
V.
Scribal
transfer to the exterior a regular and sufficient quantity to make
Pty. Ltd.
neat and normal strokes.
Although dense, such ink is sufficiently fluid to pass through small orifices, and it is therefore difficult to prevent leakage while still providing a permanently open air intake and one object of this invention is to prevent leakage even when the pen is held with the air intake downwardly.
In the case of a barrel-shaped reservoir, the mass of ink will change its position as the instrument is moved about, so that when the tip of the pen is raised contact between the ink and the ball is lost, with the result that normal working of the instrument may be interrupted or impaired ; another object of the invention is to overcome this difficulty.
Another object of this invention is to provide an ink reservoir wherein gravity does not alter the position of the ink and wherein the charge is kept in a satisfactory condition and forms a continuous vein of liquid to provide a continuous feed as and when required without delay or interruption.
A still further object is to provide an ink reservoir of simple structure which will at the same time be strong.
A still further object is to provide means for replacing the charge of ink by having detachable reservoirs.
A still further object is to provide a simple writing instrument of the fountain pen type which will not require auxiliary means for causing the ink to reach the writing ball.
According to the present invention an instrument of the ball-tip type is provided in which the ink reservoir is formed by one or more conduits starting at an air intake, and after following an extended' path, communicating with the recess for said ball, the said conduit or conduits being of so small a cross-section that a suitable ink cannot escape from the air intakes under the effect of gravity.
According to one method of carrying the invention into effect the ink reservoir is constituted by one or more conduits arranged in the form of a helical coil.
The above and other objects and advantages of the present invention will become apparent from the following description, when read in conjunction with the accompanying drawings illustrating, by way of example some of the preferred embodiments of the
20 HIGH COURT
[1954.
H.C. or A.invention, and wherein :—Figure 1 is a view of one form of the
| 1954. | writing instrument, partially in section so as to disclose the interior |
Maetinthereof; Figure 2 is a cross-sectional view taken along the line
V.N-N of fig. 1 ; Figure 3 is a schematic view of the helical conduit
Scribal constituting the ink reservoir of another form of writing instrum ent;
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Figure 4 and Figure 5 show further embodiments ; Figure 6 is a schematic view of another form of conduit; Figure 7 shows a further embodiment, wherein the reservoir is constituted by a detachable member within the fountain pen casing ; and Figure 8 is a view showing the separation of the reservoir.
The same reference characters are used to indicate like or corres ponding parts or elements throughout the drawings.
As may be seen from the drawings a is the casing of the writing instrument terminating in a tip h carrying the writing ball 1. This ball is suitably mounted so as to project sufficiently to engage the writing surface. The ball is held by its housing 2 sufficiently tightly to form a closure but the ball is free to rotate and hold a coating of ink which will pass out of the instrument when the ball is rotated in writing.
In order to constitute the housing for said ball 1, said tip h is provided with a recess 3 with which the ink feeding channel 4 receiving the liquid from the reservoir c communicates.
Said reservoir c is constituted by at least one conduit 5, which is preferably helical and, as shown in the drawings, starts a t the air intake 6, extending to the feeder 4.
In the embodiment of fig. 1, the reservoir c is formed by combining a body 7 and a cylinder 8 constituted by the casing a. For this purpose, said body 7 is threaded so as to provide a helical channel 5'. The throat of said channel 5' is relatively small, for example of a section of less than 5 mm. 2. The body 7 will co-operate with the cylinder 8 so that when the body 7 is housed within said cylinder, the channels 5' will be closed by the said cylinder 8. Under these conditions, said channels 5' will form a coil-like conduit capable of containing a continuous vein of liquid ink.
In the schematic embodiment in fig. 3, the conduit is constituted by a tube having a small section made in the form of a helical coil. The embodiment shown in fig. 4 comprises a helical conduit similar to that of fig. 1, but with the difference that channel 5' is formed by a screw-thread provided on the inner wall of cylinder 8. In this case, the body 7 is smooth and upon being inserted into the threaded wall forming the channel 5', said body 7 will close the channel and form a helical conduit 5, capable of containing a vein of liquid ink, extending from the air intake 6 to the feeding channel
92 C.L.R.] OF AUSTRALIA.
21
4. In this embodiment the air intake 6 is protected by a cap 9
H. C. OF A.
having an orifice 6'.
1954.
Figm’e 5 shows a further embodiment of the invention, similar to that of fig. 1 in that the reservoir consists of a conduit formed by a
Maetin
Scribal V.
cylinder 8 and body 7, except that in this instance, the threaded
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body 7 has two adjacent channels following the same helical course, after the fashion of a screw with two threads. The starting point of each channel will constitute an air intake 6, and both the screw threads terminate at the feeding channel 4, as shown.
Figure 6 illustrates a further embodiment of the invention, wherein the conduit 5, instead of being helical, is formed by annular convolu tions which are not circumferentially closed, but communicate in series so as to form a coil which, when charged with ink, will contain a vein of liquid extending from the air intake 6 to the feeding channel for said ball 1.
In the embodiment of figs. 7 and 8, the reservoir c is formed in a member which is independent of the casing a and detachably housed within the said casing. In this instance, the reservoir c is formed by a member c having a cylinder 10 terminating in a nozzle lOh through which the tube 4' of feeder 4 is screwed. Within said cylinder 10 is a body 7 which being threaded as in the embodiment of fig. 1 co-operates with the walls of said cylinder 10 so as to form a helical conduit 5 terminating at the tube 4' so that when charged with ink, it will contain a vein of liquid which will reach the ball 1 in the same manner as in the previous embodiments.
Inasmuch as the casing a will serve as a casing for the member c constituting the reservoir c, it will be sufficient to detach said casing as shown in fig. 8, in order to remove the member c'. In order to remove said member c' it should be unscrewed from tube 4' when it will be free for removal and replacement. Thus, when the ink in the fountain pen has been exhausted, the charge may be replaced through the simple replacement of said member c' and body 7 together constituting the reservoir.
From the foregoing it may be seen that in any of the embodiments illustrated in the different figures, the reservoir c' is constituted by a conduit starting at the air intake 6 and ending at the feed channel 4.
In charging the writing instrument with dense ink, all the cavities of the system constituted by the channels should be filled, or, in other words, there should be a full charge, from the air intake 6 to the ball 1.
Inasmuch as the conduit 5 of said reservoir c is of small section, when charged with ink it will contain an uninterrupted vein of
22 HIGH COURT
[1954.
H. C. OF A.
liquid, as if it constituted an extension of channel 4. Due to this
1954.and other relatively adjusted arrangement of said ball 1 in the
Maetinsetting 2, whereby the tip of the instrument remains closed, the
V.ink cannot discharge by gravity.
Scribal
Notwithstanding the adjustment of the setting 2, the ball 1 will act as an intermediary means between the ink charge and the writing surface, since due to the adhesive properties of the ink, upon rotating said ball it will be coated therewith, said coating passing out of the instrument so as to define perfectly regular strokes.
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As the ink is used through use of the instrument, the charge in the form of a vein of liquid will be displaced so as to occupy the space of the portion carried out by the ball.
Said vein of liquid remains uninterrupted and is displaced as a whole the rear terminal thereof being in contact with the atmosphere by means of said air intake 6, and therefore the continuity thereof will subsist as the ink is used, and there will be no risk of interrup tions.
The vein of ink reaches the ball through the feeding channel 4, and is always in contact therewith so that the feed will be permanent and the instrument will at all times be ready for use.
Inasmuch as the reservoir c is formed by a coil of small section the instrument may be placed in any position and used in any manner without the vein of liquid being affected by gravity.
I t is obvious that in carrying the invention into practice, several changes in construction and detail will occur, to those skilled in the art, without departing from the scope of the invention as clearly set forth in the appended claims.
Having now fully described and ascertained my said invention and the manner in which it is to be performed, I declare that what I claim is :—
1. Improvements in writing instruments of the ball-tip type, wherein the ink reservoir of said instrument is formed by one or more conduits starting at an air intake and, after following an extended path, communicating with the recess for said ball, the said conduit or conduits being of so small a cross-section that a suitable ink cannot escape from the air intake under the effect of gravity.
2. Improvements in writing instruments as claimed in claim 1 wherein the conduit or conduits constituting the reservoir is or are in the shape of a helical coil.
3. Improvements in writing instruments as claimed in claim 1 or claim 2, wherein the conduit forming the ink reservoir is formed
92 C.L.R.] OF AUSTRALIA.
23
by the combination of a threaded body snugly fitted within a cylinder
H. C. OF A.
formed by the casing of the instrument.
1954.
4. Improvements in writing instruments as claimed in claim 1 or 2 wherein the conduit forming the ink reservoir is formed by the
Martin
V.
combination of a body snugly fitted within an inwardly threaded
Scribal
| Pty. Ltd . |
cylinder constituting the casing of the instrument.
5. Improvements in writing instruments as claimed in claim 1 wherein said reservoir is constituted by a plurality of helical conduits terminating at the feed channels for said ball.
6. Improvements in writing instruments as claimed in claim 1, wherein said ink reservoir is formed within a member detachably fitted within the casing of said instrument.
7. Improvements in writing instruments as claimed in claim 1 and 6 wherein said member fitted within said casing is screwed to a tube constituting an extension of the ball feeding channel.
8. Improvements in writing instruments as claimed in claim 1, wherein the conduit of said reservoir is formed by unclosed annular convolutions successively communicating with each other.
9. Improvements in writing instruments as claimed in claim 1, wherein said conduit is smaller than 5 mm.2 in section.
On 31st December 1943 the above-named Henry George Martin applied to the Commissioner of Patents for a patent which when issued was numbered 133163.
The complete specification was as follows ;—
“ Improvements in writing instruments.”
I, Henry George Martin, British Subject, Public Accountant, resident of Avenida Roque Sanez Pena No. 547, Buenos Aires, Argentina, whose post office address is Avenida Roque Sanez Pena No. 547, Buenos Aires, Argentina, hereby declare this invention, and the manner in which it is to be performed to be fully described and ascertained in and by the following statement :—
This invention relates to fountain pens and refers more particularly to fountain pens of the kind which comprise an ink reservoir formed by an extension of the channel for supplying the writing point with ink, a system which by itself has yielded convenient results, although under certain conditions of arrangement only, which should duly be taken into account when considering the further development of the industry.
In fact, the extension of the feed channel for constituting the reservoir by means of a duct of small section allows of establishing a fluid vein of constant position, after the manner of an automatically replaceable lead rod in a pencil, but, in the provision of a duct of a
24HIGH COURT
[1954.
| H. | C. OF A. |
1954.
| M. | iETIN |
V.
fSCHIBAL
Tty .
Ltd .
92 C.L.R.]
OF AUSTRALIA.
H.
C. OF A.
1954.
Martin
V.
Scribal
Pty. Ltd.
HIGH COURT
[1954.
H.C. OF A.certain length adapted to be fed, with a relatively ample amount,
| 1954. | several difficulties are encountered, owing to the necessity of arrang |
Martining the duct in a winding or meandering form, or of otherwise
V.arranging the same in such a way that it will occupy to the largest
Scribal
possible extent the capacity of the holder of the instrument.
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Ltd .
In accordance with this invention, these difficulties are overcome in a rather simple way, thereby allowing of the manufacture of fountain pens a t a low cost and adapted to receive a charge of considerable yield and duration.
For this purpose, a feed channel consisting of several sections is provided, so arranged that the whole of the sections will form a series or group of duct sections, conveniently fitted in the body of the holder, thereby using the space to the best advantage.
To this end, the duct sections, which form the ink reservoir, are connected together and communicate in series by means of passages leading from one section into the other, and as said sections are longitudinal and preferably parallel to the axis of the pen, the whole of the sections will be of a length several times that of the holder. The duct consisting of a plurality of sections for forming the reservoir may be constructed in several manners, as use may be made indifferently of a capillary tube folded into several lengths until forming a series or whole, or a group of channels or ducts may be bored in a block which may then be connected to, or form an integral part of the fountain pen, provided the several sections of the duct be connected in series, so that one will be a continuation of another. Besides the objects above stated, this invention also has other aims in view, among which is to be noted a reservoir in the shape of a vein of great length, with a minimum number of bends and occupying most of the body part of the holder of the fountain pen. A further object consists in simplifying the construction of the instrument by arranging the ink reservoir as a channel which by forming an extension of the feed duct for the stylographic ball or point, will constitute the longitudinal sections by simply bending or folding the same into a block.
Another object tends to secure a simple arrangement of the reservoir, by the provision of simple boring designed to form the ducts which communicate in series, one a continuation of the other. A further object of the invention consists in using the very material of the holder of the pen as a basis in which to provide the channels or longitudinal sections which form the ink reservoir.
A still further object consists in preventing gravitation from in fluencing the reserved position of the instrument, for which purpose
92 C.L.R.]
OF AUSTRALIA.
the end of the air intake of the duct is positioned to project toward R- C!- or A.
the writing point of the pen.
1954.
Other objects of the invention will appear when considering the detailed description of the same, which for purposes of clearness
Maetin
V.
S C E IB A L
and ready understanding has been illustrated in several figures
Pty. Ltd.
showing, by way of example, some preferred embodiments of the improved fountain pen. In said drawings: Figure 1 illustrates a general view of the arrangement of the fountain pen, showing in particular the series or group of tubular sections which, by com municating in series, form the ink reservoir which occupies the greater part of the body of the holder : in this case, the ink reservoir consists of a tube bent into sections grouped to form a series. Figure 2 is a diagrammatic representation of the embodiment shown in fig. 1, illustrating the manner of establishing a communi cation in series between the several sections of the duct, one a continuation of the other. Figure 3 shows a longitudinal section of another design of fountain pen, wherein the group of duct sections is constituted by longitudinal borings provided in the very body of the holder, said duct sections being connected one to another in continuous communication, in order to obtain the series for forming the fluid vein when filling the same with ink. Figure 4 illustrates a cross-section on the line N-N of fig. 3, showing the manner of communicating the several sections by means of passages, for obtaining the series and forming the duct which is to constitute the ink reservoir. Figure 5 shows a cross-section on the line S-S fig. 3, illustrating the opposite part of the communications between the sections which forms the series or whole of the duct. Figure 6 is a diagrammatic representation of the embodiment of figs. 3, 4 and 5, giving a clear idea of the group of duct sections which by continuous communication of one with another form the series which constitute the duct serving as an ink reservoir. Figure 7 shows a perspective of another embodiment of the invention con sisting of a group or series of duct sections formed by a striated body placed within a jacket or envelope which forms the body of the pen holder, said sections inter-communicating by means of passages by which to secure the arrangement in series for obtaining an ink reservoir in shape of the whole of the ducts : and finally, Figure 8 is a cross-section of the body of the pen, according to the construction shown in the foregoing fig. 7.
The same numbers and letters of reference have been used to indicate like or corresponding parts in all the several views.
As will be seen by referring to the drawings, a is the body part of the pen or holder, properly ending with a point 1, at which, by
28 HIGH COURT
[1954.
| H. | C. 01? A.means of a suitable mounting 2, the small sphere or ball 3 is adapted, | |
|
Martinthe ink supplied by the feed channel 4 which, in turn, receives its
V.supply from the reservoir b.
Scribal
As already stated before, the reservoir b is formed by a duct
forming an extension of the feed channel 4, but comprising several
particular features which constitute the basis of this invention.
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In fact, said reservoir b is formed by a linear duct, constituted by a plurality of lengths or duct sections 5, preferably arranged as a whole and parallel to the body of the holder a, thus forming a series or group of duct sections which together occupy the greater part of the body a ; said sections 5 are connected together and communicate in series, one in continuation of the other, so as to form, as a whole, one single channel commencing at the inlet or air intake 6 and ending at the feed duct 4 of the sphere 3.
This invention is adapted for construction in many ways, among which are to be particularly noted the embodiments shown in the several figures of the accompanying drawings.
In the embodiment according to fig. 1, the reservoir b is formed by a duct or tube of the capillary type, which, being connected to the feed channel 4, extends parallel to the holder a, and as the tube is folded several times by a bend through 180°, the same will form a group of reduced length formed by several sections 5, with the bends 5' establishing communication between the several sections, so that all of the same will be connected in series. The whole of sections 5 forms a series housed within the holder a, which in this case is hollow.
The duct which forms the reservoir b is filled with a dense or semi-fluid ink, thus establishing a fluid vein extending from a point near the inlet or air intake 6 to the sphere 3, which is thus maintained in contact with the ink, in order that when causing the same to roll over a suitable surface, the sphere held by its mounting 2, will mark the strokes with the ink supplied from the channel containing said liquid vein.
In the embodiment of figs. 3, 4 and 5 the reservoir h is also formed by lengths or sections 5, but in this case, said sections are established by borings provided in the body of the holder a.
Said borings extend longitudinally in a parallel arrangement, so that the whole of sections or ducts 5 will form a group. The borings or sections 5 are closed at both ends, viz : by means of the head piece c, corresponding with the point 1, and the head piece d which forms a sort of butt. The body part c is threaded at 7 into the
92 C.L.K.] OF AUSTRALIA.
29
body a, while the body d is threaded at 8 into said body a, as may
H. C. OF A.
be seen when referring to fig. 3.
1954.
In spite of the closure established by the body parts c and d, the channel sections 5 are enabled to communicate with each other,
M a RTIIv
'
V.
SCEIB.41,
although in a particular manner, that is to say, each section 5
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communicates with another section by means of a passage 5', so that all the sections will form a continuation in series, wherein the duct sections 5 will be connected, as shown in fig. 6, in continuation one with another by means of said passages 5' and thus form one single linear duct.
One of the duct sections, indicated at 5", ends with an inlet 6 which forms an air intake, directed towards the end of the point 1, but at a certain distance short of the same : this arrangement has for its object the prevention of the ink, when the pen is in a reversed position from being discharged by gravitation, whilst the section situated along the axial line of the instrument is that which is in direct communication with the feed duct 4.
In the embodiment in accordance with figs. 3, 4, 5 and 6, when filling the reservoir with ink, a liquid vein is established also in the corresponding duct, which must be maintained without interruption up to the sphere 3, in order to serve as a fountain for feeding the ink.
With reference, finally, to the embodiment shown in figs. 7 and 8, it will be seen that the reservoir b consists of a striated body e, arranged to fit snugly within the walls surrounding the cavity a' of the body a, which in this case is of tubular shape.
Said striated body e is formed with longitudinal grooves which together with the walls of the cavity a' constitute the duct sections 5, thus arranged to form a group or series.
In the case shown in figs. 7 and 8, the whole of the striated body e fitted in the envelope a is complemented by the body parts c and d, connected thereto by screwing at 7 and 8, in a manner similar to that shown in fig. 3 : and the same as in the former case, the duct sections 5 communicate one with another in series, so as to obtain a linear duct for forming the reservoir b. The body a is axially provided with a bore which, by communicating in series with the other sections, forms the last section 5, for connection to the feed duct 4 which ends at the sphere 3.
As in the foregoing cases, this embodiment is charged with a dense ink, so as to establish a continual liquid vein, ending at the mounting piece of the sphere 3, for feeding the latter as a fountain pen.
HIGH COURT
[1954.
| H. | C. OF A.From the foregoing description, it will be seen that the invention | |
|
Martinas a whole to form a series or group, by means of bends or passages
V.5', said duct sections communicating in series, one in continuation
Scribal
of another, so that the whole of duct sections will form one single
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Ltd .
duct, commencing at an inlet hole 6 and ending at a feed duct 4, connected to the mounting of the sphere, said duct constituting the reservoir b, to be filled with a dense or semi-fluid ink and to form therewith an uninterrupted liquid vein, extending to the mounting 2 of the sphere 3. Said duct sections may be formed by lengths of tubes, borings or by a combination of such elements, as illustrated by the embodiments shown in the several figures of the accompany ing drawings.
I t should be understood that instead of a sphere, the stylographic point may comprise a pen or other common or known writing means. I t will also be evident that in carrying the invention into practice, modifications may be introduced with regard to certain details of construction and shape of the fountain pen, without departing from the basic principles of the invention, to be clearly set forth in the claims hereto annexed.
Having now fully described and ascertained my said invention and the manner in which it is to be performed, I declare that what I claim is :—
1. Fountain pen, of the type in which the ink reservoir is an extension duct of the feed channel for the stylographic point, characterized by the fact that the duct which forms the ink reservoir consists of a series or group of duct sections, provided with means for communicating in series one section with another, so as to form one single linear duct or channel, extending from an inlet open to the air, to the feed channel of said stylographic point.
2. Fountain pen, in which the duct, which constitutes the ink reservoir, is formed by a series or group of duct sections connected together and communicating in series by means of communication passages from one section to another, so as to form one single channel, from the inlet, open to the air, to the feed channel of the stylographic point, characterized by the duct sections being arranged parallel one to another and longitudinally within the body of the pen holder, said sections being, in turn, parallel to the axis of said body of the holder.
3. Fountain pen, in which the duct which constitutes the ink reservoir consists of a series or group of duct sections, connected together and communicating in series by communication passages extending from one section to another so as to form one single
92 C.L.R.]
OF AUSTRALIA.
channel from an inlet open to the air to feed channel of the stylo
H. C. or A.
graphic point, characterized by the fact that the inlet or air intake
1954.
of the duct which forms the reservoir, is directed towards the
Martin
Scribal V.
stylographic point at a certain distance from the same.
4. Fountain pen in which the duct which constitutes the ink reservoir consists of a group or series of duct sections connected together and communicating in series by communication passages from one section to another, so as to form one single channel from an inlet open to the air to the feed channel of the stylographic point, characterized by the fact that the series or group forming the whole of the duct sections of the ink reservoir occupies the greater part of the body of the holder proper of the fountain pen.
Pty. Ltd.
5. Fountain pen, in which the duct which constitutes the ink reservoir consists of a group or series of duct sections, connected together and communicating in series by means of communication passages from one section to another, so as to form one single channel extending from an inlet open to the air, to the feed channel of the stylographic point, characterized by the fact that the duct sections which form the general duct or reservoir proper consist of a tube folded several times with bends of 180° into sections of a length somewhat smaller than that of the holder of the pen said sections being arranged as a whole so as to form the series or group housed within the cavity of the holder of the fountain pen.
6. Fountain pen, in which the duct which constitutes the ink reservoir consists of a series or group of duct sections, connected together and communicating in series by means of communication passages, from one section to another, so as to form one single channel, extending from an inlet open to the air, to the feed channel of the stylographic point, characterized by the fact that the duct sections which form the general duct or reservoir proper consist of bores formed in the body of the pen holder, which, being arranged jointly, communicate with each other by their ends, so as to con
stitute a linear channel.
•
7. Fountain pen, in which the duct which constitutes the .ink reservoir consists of a series or group of duct sections, connected together and communicating in series one with another by means of communication passages extending from one section to the other so as to form one single channel extending from an inlet open to the air, to the feed channel of the stylographic point, characterized by the fact that the communication passages of the duct sections are formed by recesses complemented by head pieces at both ends of the main body part of the holder of the fountain pen.
32 HIGH COURT
[1954.
ir. c. OF A.8. Fountain pen, in wliicli the duct wliich constitutes the ink
1954.re.servoir consists of a series or group of duct sections, connected
Martintogether and connnunicating in series by means of communication
V.passages extending from one section to another, so as to form one
SCRI UAL
single cliannel, extending from an inlet open to the air, to the feed
Pty .
Ltd .
channel of the stylographic point, characterized by the fact that the duct sections which form the general channel or reservoir proper, are constituted by longitudinal grooves formed in a body enclosed within the cavity of the holder, said grooves being provided at their ends with recesses which form the communication passages from one section to another.
'
9. Fountain pen, in which the duct which constitutes the ink reservoir consists of a series or group of duct sections, connected together and communicating in series by means of communication passages extending from one section to another, so as to form one single channel, extending from an inlet open to the air, to the feed channel of the stylographic point, characterized by comprising a striated body housed within the holder, said strias or grooves forming the duct sections provided with communication passages extending from one to another, so as to constitute a general duct or channel, the whole of the grooves being headed by body parts adapted to both ends of the main body part of the holder of the fountain pen.
10. Fountain pen, in which the duct which constitutes the ink reservoir consists of a series or group of duct sections, connected together and communicating in series by means of communication passages extending from one section to another so as to form one single channel extending from an inlet open to the air to the feed channel of the stylographic point characterized by the fact that the channel or duct which forms the reservoir ends with a mounting provided with a small loose sphere which constitutes the writing point.
11. Fountain pen, in which the duct which constitutes the ink reservoir consists of a series or group of duct sections, connected together and communicating in series by means of communication passages extending from one section to another, so as to form one single duct or channel, extending from an inlet open to the air, to the feed channel of the stylographic point, with a charge of dense ink filling the entire extension of said general duct formed by said sections, said charge constituting an uninterrupted liquid vein extending to the stylographic point, all as above described, for the purpose set forth and with reference to the accompanying drawings.
92 C.L.R.]
OF AUSTRALIA.
H.
C. OF A.
1954.
Martin
V.
SCEIB.AL
Pty .
Ltd .
VOL. X C II.— 3
HIGH COURT
[1954.
| H. | C. OF A 1954. |
Martin
V.
Scribal
Pty .
Ltd .
92 C.L.R.]
OF AUSTRALIA.
| H. | C. OF A. 1954. |
Martin
V.
Scribal
Pty. Ltd.
HIGH COURT
[1954.
H.C. OF A.On lOtli October 1944 the applicant lodged amended drawings
| 1954. | of his invention with the Commissioner of Patents. On 2nd |
M.\rtinDecember 194G, the commissioner informed the applicant that the
| V. | examiner had reported that the invention the subject of the appli |
Scribal
cation of 31st December 1943 was already the subject of a prior
P ty.
Ltd .
application for a patent, viz., his own application for No. 122073, and that the basis of the report was that the earlier application “ claimed ”—having regard to fig. 6 in the complete specification thereof—the subject of claim 1 of the later application. On 18th December 1946, the applicant substituted a completely rewritten specification. Inter alia, it claimed a bail-point pen in which the ink reservoir was constituted by a capillary tube (claim 1); and separately, a similar instrument in which the tube communicated with the ball by a duct “ of the same or smaller cross-sectional area or diameter than the tube ” . On 26th August 1947, the commis sioner stated the objection {inter alia), that the meaning of “ capil lary tube ” was not defined, and that the invention was already patented under No. 122073, since claims 1-3 thereof claimed an instrument of the same type, in which the reservoir was a capillary tube. On 28th January 1948, the applicant submitted amend ments which included a new consistory clause and a new claim 1, which however still claimed any instrument in which (irrespective of shape) the reservoir functionally operated by capillarity to main tain supply, and by capillarity and the viscosity of the ink to prevent leakage at the open end. On 19th February 1948, under s. 38a , the original complete specification lodged in 1943 was advertised. On 11th March 1948, the commissioner repeated his objection based on No. 122073 as a prior patent. On 16th Novem ber 1948, the applicant submitted further amendments, particularly a new consistory clause and a new claim 1, which now each expressly put forward for the first time the combination of a vented tube of capillary size (defined in the text), “ in which when charged with viscous ink a continuous liquid vein is rnaintained extending from the ball ” , with a feed duct from the reservoir to the ball, of a cross sectional area less than that of the reservoir. The former claim 3", to a duct of equal or smaller cross-section, was omitted. On 24th December 1948, the commissioner stated (in effect) that his objections based on No. 122073 were removed by the proposed amendments, but that the restricted feed duct was not sufficiently described, nor had it been originally claimed, ascertained, or des cribed as a feature of the invention. On 10th and 11th March 1949, the applicant submitted amendments, which {inter alia) introduced into the reference to the cross-section of the feed duct
92 C.L.R.]
OF AUSTRALIA.
the words, “ particularly that portion adjacent the ball ” , described
H. C. OF A.
the feed duct in the body of the specification, and amended the
1954.
definition of “ capillary tube On 27th April 1949, the commis
Maetin
sioner approved these amendments, but required a clearer indication,
V.
Scribal
in the drawings and in the references to the drawings, of the
Pty. Ltd.
restricted feed duct. On 16th May 1949 the applicant submitted amendments which satisfied this requirement. The matter then proceeded on 14th June 1949, to acceptance, and on the 30th June 1949, to advertisement of acceptance.
The complete specification as finally accepted was as follows :—
“ Improvements in writing instruments.”
I,
Henry George Martin, British Subject, Public Accountant,
resident of Avenida Roque Saenz Pena, No. 547, Buenos Aires, Argentina, whose post office address is Avenida Roque Saenz Pena No. 547, Buenos Aires, Argentina, hereby declare this invention and the manner in which it is to be performed to be fully described and ascertained in and by the following statem ent;
This invention relates to writing instruments of the type in which a ball is mounted for rotation in a housing with part of the ball exposed and is supplied with ink from a suitable reservoir, the arrangement being such that as the ball is rotated such as by being moved relatively to and in contact with a writing surface the ball carries a quantity of ink through the housing, which ink is de posited on said surface and a trace is made.
An object of the present invention is to improve the construction of instruments of the aforesaid type. According to this invention, I provide an instrument of the type specified, having the ink reservoir constituted by a vented tube of capillary size in which when charged with viscous ink a continuous lifjuid vein is main tained extending from the ball, and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir. The expression “ a vented tube of capillary size” is employed herein in relation to the reservoir of a writing instrument of the type specified to mean a tube having an internal bore of between 1 and 4 mm. (subject to a manufacturing tolerance of the order of -f, —, 5%) so that when charged with a viscous ink the meniscus formed at the end of the ink column remote from the ball (at the interface between the ink, the air and the interior surface of the tube) is stable and will not break under shocks to which the instrument is subjected in normal use.
38 HIGH COURT
[1954.
| H. | C. OF A.Tlie tube is preferably in the form of a series of limbs, each sub | |
|
Martinthat a comparatively long length of continuous tube can be accom
V.modated in a comparatively small compass such as the usual type
Scribal
of fountain pen casing.
The term “ tube ” as used herein where
P ty .
Ltd .
the context so permits includes a tube-like duct formed in a body. In order that the nature of the invention may be more readily understood reference will now be made to the accompanying drawings in which :—Figure 1 is a cross-sectional view illustrating by way of example one embodiment of the present invention. Figure 2 is a diagrammatic representation of the embodiment illustrated in fig. 1. Figure 3 is a cross-sectional view illustrating another embodiment. Figure 4 is a cross-section on line N-N fig. 3. Figure 5 is a cross-section on line S-S fig. 3. Figure 6 is a diagram matic representation of the embodiment illustrated in figs. 3, 4 and 5.
The same numbers and letters of reference have been used to indicate like or corresponding parts in all the several views.
As will be seen by referring to the drawing a is the body part of the pen or holder, terminating in a point 1, whereat by means of a suitable housing 2, the small sphere or ball 3 which forms the writing element is rotatably mounted with part of the ball exposed ; said ball is in contact with the ink supplied by the feed duet 4 which, in turn receives its supply from the reservoir h. The feed duct 4, or a t least that portion adjacent the ball, is of lesser sectional area than that of the reservoir, as indicated in figs. 2, 3 and 6, where reference 4a denotes the relatively smaller cross-sectional portion of the feed duct. Similarly that portion of the feed duct of fig. 1 extending from a position such, for example, as indicated by line A to the ball recess will be of smaller cross-section than that of the reservoir.
While the ball may be of any appropriate size, it is preferably of a diameter in the order of Im.m.
The reservoir a is formed by a duct, forming an extension of the feed duct 4, constituted by a plurality of lengths or duct sections 5, preferably arranged in parallel relationship to the longitudinal axis of the body of the holder a ; the reservoir thus forms a series or group of duct sections occupying the greater part of the body a ; said sections 5 are connected together and communicate in series, one in continuation of the other, so as to form, as a whole, one single channel, commencing at the inlet or air intake 6 and ending at the feed duct 4 of the ball 3.
92 C.L.R.]
OF AUSTRALIA.
H. C. OF A.
This invention is adapted for construction in many ways, among which are to be particularly noted the embodiments shown in the
1954.
several figures of the accompanying drawings.
Maetis'
V.
In the embodiment according to fig. I, the reservoir b is formed by a tube of capillary size which, being connected to the feed
S C E IB A L
Pty.
Ltd .
channel 4, extends parallel to the holder a, and as the tube is folded several times by a bend through 180°, the same will form a group of several sections 5 of reduced length with the bends 5' establishing communication between the several sections, so that all of the sections are connected in series. The ink reservoir b is removably housed within the holder a, which in this case is hollow.
The duct which forms the reservoir b is filled with a viscous or semi-fluid ink, thus establishing a fluid vein extending when the reservoir is full from a point near the inlet or air intake 6 to the ball 3, which is in contact with the ink ; consequently when the ball is rotated such as by being rolled over a suitable surface, the ball will make a trace with the ink supplied from the said liquid vein. In the embodiment of figs. 3, 4, 5 and 6 the reservoir b is also formed by lengths or sections 5, but in this case, said sections are constituted by ducts formed in the body of the holder a.
Said ducts extend longitudinally in a parallel arrangement, and are closed at both ends, such as by means of the head piece c, con stituting the point 1, and the head piece d. The head piece c is threaded at 7 into the body a, while the part d is threaded at 8 into said body a, as may be seen by referring to fig. 3.
As shown, the channel sections 5 are enabled to communicate with each other, by means of passages 5', so that all the sections together form a continuous single linear duct.
One of the duct sections, indicated at 5", ends with an air intake 6 preferably directed towards the point 1, but at a certain distance short of the same.
In the embodiment illustrated in figs. 3, 4, 5 and 6, when the instrument is filled with ink, a liquid vein is established which extends without interruption up to the ball 3.
In all the embodiments the duct is charged with a viscous ink so that a continuous liquid vein is formed communicating with the ball 3.
I t will be evident that in carrying the invention into practice, modifications may be introduced with regard to certain details of construction and shape of the instrument, without departing from the basic principles of the invention as set forth in the claims hereto annexed.
40 HIGH COURT
[1954.
H.C. or A.Having now fully described and ascertained my said invention
| 1954. | and the manner in which it is to be performed, I declare that what |
Martin
I claim is :
V.1. An instrument of the type specified, having the ink reservoir constituted by a vented tube of capillary size in which when charged
Scribal
]’ty .
Ltd.
with viscous ink a continuous liquid vein is maintained extending from the ball, and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir.
2. An instrument according to claim 1 in which the tube is open to atmosphere at one end and the other end communicates with the ball.
3. An instrument according to any of the foregoing claims in which the tube is formed into limbs, substantially parallel to the longitudinal axis of the instrument.
4. An instrument according to claim 3 in which the open end of the tube is directed towards but does not extend to the ball.
5. An instrument according to any of the foregoing claims in which the ink reservoir is adapted to be removably received within a casing.
6. An instrument according to any of the claims 1-5 in which the tube is constituted by a duct formed in a body.
7. An instrument according to claim 6 in which a series of parallel ducts is formed in a body positioned within an outer casing, said ducts being each connected by a passage, an end closure being provided (removably or otherwise) at each end of said body, one end of one duct being open to atmosphere and the arrangement and disposition of the parts being such that there is formed a single linear duct extending from the opening to atmosphere to the ball. 8. An instrument according to any of the foregoing claims when
charged with a viscous or semi-fluid ink.
9. An instrument constructed and arranged substantially as described herein with reference to the accompanying drawings.
On 9th May 1947 the above-named Henry George Martin brought an action (No. 314 of 1947) in the Supreme Court of Victoria against Scribal Pty. Ltd., a company incorporated in the State of Victoria, claiming that the defendant had infringed the first claiming clause of letters patent No. 122073 by the manufacture etc. of writing instruments known as the Scribal Combination Writer. The defen dant, by its particulars of objection to the validity of the said patent, delivered with the defence on 10th June 1947, claimed inter alia, that the said first claiming clause by reason of the words
92 C.L.R.] OF AUSTRALIA.
41
| H. | C. OF A. 1954. |
Martin'
V.
Scribal
Pty. Ltd-
lO
s
■■Sf 'i I c ,
s ^
S i
^ 1 s p
4 f
A 6^
^ “h r
P
~ V //////////( ///////X '/////////////////^ /////////? V » , ^/7//////////////?///7////J/////////////////77/77//7?/77/
f Y / / / / / / / / / / / / / y
/ / / / / / / / / / / / / / / / / / / / / / / / / / / y / / / / / / / / / A
i *J-5
Q
ffi
J ^ . 3 .
^ ^ r . 4 .
oo
6
S
cl H
Ot
92 C.L.R.] OF AUSTRALIA.
43
therein “ an extended path ” was vague, uncertain and ambiguous
C. OF A.
and did not sufficiently define the monopoly intended to be claimed
1954.
thereby.
Martin
V.
On 24th January 1951 the above-named plaintiff brought a further action (No. 58 of 1951) in the Supreme Court of Victoria against
Scribal
Pty. Ltd.
the above-named defendant claiming that it had infringed the first, second, fifth and eighth claiming clauses of letters patent No. 133163 by the manufacture etc. of writing instruments known as the Scribal Secretary Pen. By its defence delivered 19th July 1951 the defendant claimed that the said letters patent were, and had always been, invalid for the reasons set forth in the particulars of objections delivered with the defence.
The particulars of objection referred to in the defence were as follows :—1. The alleged invention was not proper subject matter for letters patent having regard to the common knowledge at the date thereof. 2. The alleged invention was obvious and did not involve any inventive step having regard to what was known or used prior to the date of the said letters patent with respect to fountain pens of the ball-tip type. 3. The claiming clauses relied on, namely the first, second, fifth and eighth claiming clauses of the plaintiff’s letters patent, are each and every one of them, insufficient and vague uncertain and ambiguous and do not suffi ciently or clearly define the monopoly intended to be thereby claimed. 4. (i) On 8th December 1943 the plaintiff made an applica tion for a patent accompanied by a complete specification for an invention relating to improvements in fountain pens of the ball-tip type, and pursuant to the said application a grant of Australian letters patent numbered 122073 was made, (ii) On 31st December 1943 the plaintiff made an application for a patent accompanied by a complete specification for an invention relating to fountain pens and referring more particularly to fountain pens of the kind which comprise an ink reservoir formed by an extension of the channel for supplying the writing point with ink as further specified in the said complete specification, and after the happening of the events hereinafter set forth Australian letters patent numbered 133163 were purported to be granted on the said application, (iii) The complete specification of Australian letters patent numbered 122073 was published on 5th September 1946. (iiiA) The unamended com plete specification of United Kingdom letters patent numbered 573747 dated 21st February 1944 became available for public inspection at the Patents Office Library, Canberra on 29th May 1946. (iv) On or about 18th December 1946 the plaintiff lodged in the Patents Office what purported to be but was not an amended
HIGH COURT
[1954.
H.C. OF A.complete specification as the complete specification accompanying
| 1954. | the said application of 31st December 1943, but the said specification |
Martinso lodged on or about 18th December 1946 described and claimed
V.then as the invention something which was not the invention
SCRIBARdescribed and claimed in the complete specification previously
Pty .
Ltd .
lodged on 31st December 1943 as aforesaid but something substan tially different therefrom which was the same as the invention described and claimed in the document referred to in sub-pars, (i) and (iii) hereof or was not new by reason of the matters alleged in sub-par. (iii) hereof. (ivA) The amended complete specification referred to in sub-par. (iv) hereof described and claimed the inven tion described and claimed in the document referred to in sub-par. (iiiA) hereof, (v) On 19th February 1948 the complete specification lodged on 31st December 1943 as aforesaid was notified as open for public inspection under and pursuant to s. 38a of the Patents Act 1903-1950. (vi) On some date a t present unknown to the defendant the plaintiff lodged in the Patents Office what purported to be but were not further amendments to the said complete specification lodged on 31st December 1943 and such purported amendments described and claimed as the invention something which was not the invention described and claimed in the said complete specifica tion so lodged on 31st December 1943 as aforesaid but something substantially different therefrom which was the same as the inven tion described and claimed in the document referred to in sub-pars, (i) and (iii) hereof or was not new by reason of the matters alleged in sub-par. (iii) hereof, (vii) On 14th June 1949 the Commissioner of Patents purported to allow the aforesaid amendments to the said complete specification lodged on 31st December 1943, and on 14th June 1949 the Deputy Commissioner of Patents purported to accept the complete specification in respect of the said Australian letters patent numbered 133163, which purported acceptance was advertised in the Australian Official Journal of Patents Trade Marks and Designs on 30th June 1949. (viiA) The complete specification referred to in sub-par. (vii) hereof described and claimed the inven tion described and claimed in the document referred to in sub-par. (iiia) hereof, (viii) None of the matters set forth in sub-pars, (iv) to (vii) hereof inclusive was made known to the defendant or any other member of the public, (ix) The said amendments allowance and acceptance and each of them purported to be made as aforesaid are and were at all times ultra vires contrary to law invalid and of no effect, and no grant of Australian letters patent numbered 133163 should have been made and the said letters patent are of no legal effect, (x) The said purp'orted amendments were made
92 C.L.R.] OF AUSTRALIA.
45
by or at the instance of the plaintiff who is not entitled to rely
H. C. OF A.
thereon or on anything done pursuant thereto including the grant
1954.
of the said letters patent. 5. The plaintiff as applicant for the
Maetin
grant of the said letters patent was not on 31st December 1943 in
V.
Scribal
possession of the invention the subject matter of the letters patent
Pty. Ltd..
ultimately granted as at that date and by reason thereof the grant thereof was made upon a false and improper and/or fraudulent suggestion and is and at all material times has been invalid void and of no effect. 6. On 31st December 1943 the invention (if any) the subject matter of the letters patent ultimately granted had not been made and by reason thereof neither the plaintiff nor any person by from or through whom or whose authority the plaintiff derived the right then to make application for letters patent was the actual inventor of the invention (if any) the subject matter of the latters patent ultimately granted.
Pursuant to a request by the plaintiff the defendant delivered the following further and better particulars of the allegations con tained in par. 4 (ix) of the particulars of objection.
1. The facts matters and circumstances set out in the said par. 4 of the said particulars of objections herein. 2. Further the following facts matters and circumstances—(a) the said application and complete specification referred to in sub-par. (ii) of par. 4 of the said particulars of objections were pursuant to the provisions of the Patents Act 1903-1950 referred to an examiner in the Patents Office for report, (b) The examiner reported upon the said complete specification pursuant to the provisions of the said Patents Act. (c) The examiner reported adversely to the said complete specification upon the matters referred to in s. 41 of the said Patents Act and the plaintiff was informed thereof pursuant to s. 45 of the said Patents Act. (d) The plaintiff thereupon pur ported to amend the said complete specification pursuant to s. 45 of the said Patents Act and in so doing did what is alleged in sub-par. (iv) of par. 4 of the particulars of objection, (e) The amendments which the plaintiff purported as aforesaid to make to the said com plete specification were not authorized by s. 45 of the said Patents Act in that there was substituted for the description of the alleged invention described in the said complete specification the description of a different invention as alleged in sub-par. (iv) of par. 4 of the particulars of objection and further the purported amendments went beyond the scope and ambit of the examiner’s report and/or were not confined to the objections raised by the examiner and/or to complying with requisitions arising from the examiner’s report but on the contrary had the effect alleged in the said sub-par. (iv)
46 HIGH COURT
[1954.
H. C. OF A.
of par. 4 of the said particulars of objection, (f) The said specifica
1954.tion was reported on again by the examiner pursuant to s. 45 of the
Maktin
said Patents Act. (g) The plaintiff thereupon purported to amend
V.the said complete specification pursuant to s. 45 of the said Patents
Scribal Act and in so doing did what is alleged in sub-par. (vi) of par. 4 of
Pty .
Ltd .
the particulars of objection, (h) The amendments which the plain tiff purported as aforesaid to make to the said complete specification were not authorized by s. 45 of the said Patents Act in that there was substituted for the description of the alleged invention described in the said complete specification the description of a different invention as alleged in sub-par. (vi) of par. 4 of the particulars of objection and further the purported amendments went beyond the scope and ambit of the examiner’s report and/or were not confined to the objections raised by the examiner and/or to complying with requisitions arising from the examiner’s report but on the contrary had the effect alleged in the said sub-par. (vi) of par. 4 of the said particulars of objection, (j) The said complete specification pur porting to have been amended as aforesaid could not have been lawfully accepted nor could letters patent have been lawfully granted in respect of the alleged invention described therein.
The actions were heard together before Shall J. On 15th June 1953 the trial judge made the following order :—“ The allegations set out in par. 4 of the defendant’s particulars of objections and in pars. 1 and 2 of the defendant’s further particulars of objections so far as the same are allegations of fact, and par. 6 of the said particulars of objections so far as it depends exclusively upon the aforesaid allegations of fact, constitute a good defence in law to the plaintiff’s claim herein to the following extent only and not other wise, viz., so far as they allege that the effect of the amendments therein referred to or either of them was that the complete specifica tion of the Letters Patent No. 133163 in its final form claimed an invention (a) substantially different from the invention described and disclosed by the complete specification originally lodged with the application dated 31st December 1943 or (b) identical with the invention described and claimed respectively in the complete specification of Letters Patent No. 122073. And that par. 5 of the said particulars of objections, so far as it depends exclusively upon the said allegations of fact, does not constitute such a good defence.” On 22nd June 1953 the trial judge ordered:—“ That the allega tions of the defendant the subject of judgment dated 15th June 1953 so far only as they are the subject of such judgment and allege a good defence in law to the plaintiff’s claim herein are not established
92 C.L.R.]
OF AUSTRALIA.
and that accordingly par. 5 of the defendant’s defence herein to
H. C. or A.
that extent fails.”
1954.
On 28th September 1953 the High Court granted to the defendant special leave to appeal from the orders dated 15th, 22nd June 1953.
Maetin
V.
Scribal
On 28th July 1953, in a written judgment Sholl J. held (a) that the defendant had not infringed patent No. 122073 because the reservoir of the allegedly infringing pen, being in the form of a straight capillary tube, was not within any of the claims ; (b) that patent No. 133161 was invalid by reason of ambiguity in the words “ the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir ” ; (c) that, in any event patent No. 133161 was not infringed by the defendant’s pen which was not one in which “ when charged with viscous ink a continuous liquid vein is maintained extending from the bah. ” in all conditions of normal user.
Ptt .
L t d .
On 28th September 1953 the High Court granted to the plaintiff special leave to appeal from the judgments delivered on 28th July 1953.
The plaintiff’s and defendant’s respective appeals were heard together by the High Court.
Sir Garfield Barwick Q.C. (with him P. D. Phillips Q.C., and
G.
the preferred methods that leads to the conclusion that the un straight nature of the tube is of the essence of the invention. In Martin v. Selsdon Fountain Pen Co. Ltd. (1), Harman J. followed an inadmissible course in construing the specification, firstly by resort ing to unpubhshed amendments and secondly by inquiring what the inventor thought he meant rather than ascertaining the meaning of what he had said. The meaning of extend is to lay out at full
A. Pape), for Martin on the plaintiff’s appeal.
length.
The natural meaning of “ following an extended path ”
does not involve turning or bending. As to patent No. 133161. In relation to the expression “ having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particu larly that portion adjacent the ball, being less than that of the reservoir ” it is clear that the reservoir was regarded as continuous from the ball outwards to the air and that the feed duct is part of the duct which is regarded as having the function of feeding the ink, as distinct from storing it. I t would be a mistake to approach the language as if the reservoir was devoted wholly to storage and
(1) (1949) 66 R.P.C. 193.
48
H i a n
COURT
[1954.
H.0. 01.'the feed duct devoted wholly to feeding the ink ; the correct
| 1954. | iipprouch is to regard the whole as a sort of pipe line which is |
Martinperforming botli functions. The precise point a t which the one
V.function predominates over the other is indefinite and immaterial.
iSoKIUAL
The direction is to reduce the size of the one tube or duct a t the
Pty .
Ltd .
point near the ball.
The length of the reduced section is indicated
to be itself immaterial. The trial judge found no infringement because there was a circumstance or situation in which the liquid vein would not be maintained continuously from the ball to the air inlet in the normal use of the instrument as a writing instrument. But it is not normal use of a pen to write with it held a t a high angle or vertically upwards.
Z). 1. Menzies Q.C. (with him R. L. Gilbert), for Scribal Pty. Ltd. on the plaintiff’s appeal. In relation to patent No. 122073 the question is whether the claim as it stands covers a straight tube. A straight line joining two points is not following an extended path between those points. All the descriptions and the drawings lead to the conclusion that the tube has to be coiled in some way. The plaintiff never appreciated at any material time that a straight capillary tube would be a satisfactory reservoir. [He referred to Martin v. Selsdon Fountain Pen Co. Ltd. (1).] I t is permissible in construing a specification to have regard to amendments made in the Patents Office. [He referred to Moser v. Marsden (2).] As to patent No. 133161. This patent is invalid because the claim made is ambiguous. [He referred to Terrell and Shelley on Patents, 9th •ed. (1951), p. 96 ; Natural Colour Kinematograph Co. Ltd. {In Liquidation) v. Bioschemes Ltd. (3).] The ambiguity is in the words the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir.” I t is impossible to know what is meant by “ particularly that portion adjacent to the ball ” or to know what constitutes the feed duct as distinct from the reservoir. The specification further claims that a continuous liquid vein of ink is maintained extending from the ball. The defendant’s pen does not possess this feature. [He referred to Kraft v. McAnulty (4); Z Electric Lamp Co. Ltd. v. Marples Lead Co. Ltd. (5).] I t was open to the trial judge to find that writing 'with a pen above the horizontal constituted normal use.
(1) (1949) 60 R.P.C. 193.(4) (1932) Q.S.R. 139.
(2) (1896) 13 R.P.C. 24, at p. 31.(5) (1910) 27 R.P.C. 737.
13) (1915) 32 R.P.C. 256, at pp. 266,
■
269.
92 C.L.R.] OF AUSTRALIA.
49
H. C. OF A.
Sir Garfield Barwick Q.C., in reply on the plaintiff’s appeal. As to patent No. 122073, Moser v. Marsden (1) was a case of a
1954.
Div. 4 amendment. In the case of such an amendment there
M a e t i n
are two published documents, the initial publication and the amend
V.
SCEIBAL
ment. Notwithstanding Lord Watson’s obiter dictum (2) it was
P t y . L t d .
decided in George Hattersley <h Sons Ltd. v. George Hodgson Ltd. (3) that regard might not be had to deleted matter for the purpose of construction. The method of publication of a specification amended under Div. 4 is dealt with in Terrell and Shelley on Patents, 9th ed. (1951), pp. 208-209. There have been statutory changes in England, but so far as Australia is concerned the matter stands on the decision in George Hattersley cfe Sons Ltd. v. George Hodgson Ltd. (4). The case of an amendment to a specification in the Patents Office is different from a Div. 4 amendment in that the latter is circumscribed by what is explained, disclaimed or corrected. The former is not so limited : see In re Serex’s Patent (5); In re Coutant (6). As to patent No. 133161. There is no warrant for the use of the amend ments as an aid in construing the specification. [He referred to Bowden Brake Co. Ltd. v. Bowden Wire Ltd. (7).] The specification as it was finally accepted and published is alone to be considered. The words “ having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir ” means '■ having a feed duct from the reservoir, the cross-section of which is reduced as it approaches the ball ” .
D. I. Menzies Q.C. (with him R. Lj. Gilbert), for Scribal Pty. Ltd. on the defendant’s appeal.
In the case of patent No. 133161
the specification in its final form does not claim protection for the same invention as that for which protection was sought by the specification as originally lodged. In these circumstances a valid patent cannot be granted. The patentee’s idea of his invention originally was to have a reservoir which twisted back upon itself in one way or another. The Patents Act is always concerned with a patent for one invention, and nowhere does it contemplate the substitution of a different invention for that for which protection was originally claimed: see ss. 33, 35, 36, 39, 40, 41, 45, 54 and Div. 4. I t follows from ss. 30a, 54 and 69 that the Act gives protection from the date of the original specification. I t is therefore not to be supposed that protection is given to an invention other
(]) (1896) 13 R.P.C. 24.(5) (1912) 29 R.P.C. 284, at p. 287.
(2) (1896) 13 R.P.C., at p. 31.(6) (1931) 48 R.P.C. 1.
(3) (1904) 21 R.P.C. 517, at p. 524.(7) (1913) 30 R.P.C. 561, at p. 571.
(4) (1904) 21 R.P.C. 517.
VOL. XCII.---4
50 HIGH COURT
[]954.
| H. | C. OR A. than that for wliich protection has been sought by the specification | |
|
M a r t i nto acceptance may be relevant, and this could only be on the basis
V.of determining whether or not an amendment made in response
S c r i b a l
P t y . L t d .to such reports is permissible. Division 4 contains an elaborate
scheme for obtaining leave to amend and it is not surprising that by s. 79 the amendment, when made, should be conclusive. Under Div. 1 a right to amend is given to an applicant in certain circumstances, and there is no question of leave involved. In order to determine whether a specification in its final form seeks protection for the same invention as the specification lodged, the proper course is to construe each specification as a whole to find out what is the invention for which protection is sought and then compare the two inventions. By analogy this is borne out by (a) cases of disconfirmity. [He referred to Dunlop v. Cooper (1).] (b) Cases where the question for determination is whether a Div. 4 amendment is such that it makes the specification substantially larger or different from its form unamended. [He referred to May & Baker Ltd. v. Boots Pure Drug Co. Ltd. (2).] (c) Cases where the question, on convention applications, is whether the English speci fication is in confirmity with the foreign application. [He referred to In re British Celanese Ltd. (3).] The invention for which pro tection was sought in the specification as lodged was not the invention for which protection was sought in its final form. More over, at the time when the specification was amended, what was then described as the invention was not inventive nor was it novel by reason of the publication of the specification of United Kingdom letters patent No. 573747 on 29th May 1946 and the specifica tion of patent No. 122073 on 5th September 1946. I t is submitted that the Court will review what has happened in the Patents Office to determine whether or not what was done was validly done under the Act. The authorities estabhsh that it was a defence in infringe ment proceedings to show that there had been an amendment not authorized by law. [He referred to Ralston v. Smith (4).] In 1865 there was no provision corresponding with s. 79 in the English Act. Further, the scheme of the Patents Act requires an applicant to be in possession of his invention at the date of application. The only way in which this can be ascertained is by looking at what he has said in his specification.
(1) (1908) 7 C.L.R. 146, at pp. 158,
(3) (1940) 58 R.P.C. 81, at pp. 84,
172. 85, 88, 89.
(2) (1948) 65 R.P.C. 255, at pp. 294,
(4) (1865) 11 H.L.C. 223, at pp. 238,
296, 297, 299 ; (1948) 66 R.P.C. 239, 243, 252, 253, 254, 255 [11
8, at pp. 13, 14, 21 ; (1950) 67 E.R. 1318, at pp. 1324-1326,
R.P.C. 23, at pp. 28, 31, 32, 35, 1329, 1330].
38, 39.
92 C.L.R.]
OF AUSTRALIA.
Sir Garfield Barwick Q.C. (with him P. D. Phillips Q.C. and
H. C. OF A.
1954.
G. A. Pape), for Martin, on the defendant’s appeal.
The amend
ments were made with the concurrence of the Commissioner of M a e t i k
S C E IB A LV.
Patents. As such, they are not, under s. 79 of the Act, open to
attack. The grant of letters patent may nevertheless be attacked
P t y . L t d .
on the ground that the applicant was not in possession of the invention at the time of the original application. If the amend ments were made under s. 45 of the Act, the position is the same, since in making the acceptance the commissioner was bound to be satisfied subjectively of the non-existence of any lawful ground of objection to the specification accepted. [He referred to In re Serex’s Patent (1) ; In re Coutant (2) ; In re Thomson’s Patent (3).] I t is clear that the inventor need not know the explanation of what he has invented or why the invention is a new process of manufac ture. The claim did not emphasize the bent nature of the coil in the specification as being related to the maintenance of the fluid vein but merely as affording ample volume for storage of ink. Assuming everything against the inventor if, in his specification, he has disclosed a new process of manufacture, he is entitled to his patent. An analysis of the specification as originally lodged shows that there was disclosure of an invention which comprised the use of a capillary tube in association with a bail-point so as to maintain a constant liquid vein without regard to the shape of the tube.
D. I. Menzies Q.C., in reply on the defendant’s appeal. In Goldman v. Bramley (4) the court examined the facts to ascer tain whether or not s. 42 of the Act had been complied with. This is inconsistent with the view that the Court cannot, after acceptance, decide whether or not the power has been properly exercised. There are many cases in which, without successful opposition, the Commis sioner of Patents has, after acceptance, refused a grant because of something which has come to his notice. [He referred to In re H. A. Metz Laboratories Inc. (5).] The effect of the cases on s. 18 of the English Act of 1883 before leave to amend was made conclusive is discussed in Patewi and Practicehj Robert Frost, 4 th ed. (1912), vol. 2, pp. 103 et seq. and in Terrell and Shelley on Patents, 9th ed. (1951), pp. 195 et seq.
M. F. Mclnerney, for the Commissioner of Patents.
Cur. adv. vult.
(1) (1912) 29 R.P.C. 284.(4) (1936) 55 C.L.R. 714.
(2) (1931) 48 R.P.C. 1.
(5) (1933) 50 R.P.C. 355, at p. 358.
(3) (1934) 51 R.P.C. 241, at
253.
HIGH COURT
[1954.
H. C. OF A.
The following written judgments were delivered:—
1954.
D i x o n C.J.
The proceeding before us consists of two appeals
M a r t i n
and a cross-appeal, all argued together. The appeals are by the
V.plaintiff from judgments of the Supreme Court of Victoria {Sholl J.)
S cribal
pronounced for the defendant in two actions for infringement of
I't v .
L t d .
Sopt. 14.patents. One action (No. 314 of 1947) was commenced on 9th May
1947. It was based on a patent granted to the plaintiff as of 8th December 1943 which it was alleged the defendant had infringed. The action failed because it was held that on the proper construction of the specification there was no infringement. The second action (No. 58 of 1951) was commenced on 24th April 1951. I t was based on a patent granted to the plaintiff as of 31st December 1943 which again the defendant was alleged to have infringed. This action failed on the ground that the claims were void for ambiguity and in any case that they were so constructed or expressed that no infringe ment was committed. The cross-appeal by the defendant relates to action No. 58 of 1951. I t is an appeal by leave from part of an interlocutory order determining certain questions of law before the trial of the action and from a further interlocutory order determining certain issues before such trial.
The subject of both patents is a ball-pointed fountain pen employ ing viscous ink fed from the reservoir to the ball-tip. Each patent is for an alleged invention for a pen of this type. Neither specifica tion indicates the principles which, as is now ascertained, govern the operation of such a pen or precisely how they apply. Much of the attack on the two patents flows from this circumstance. I t is therefore as well to begin with an abstract description of the working of an ordinary bail-point pen. The ball which transfers the ink to the paper revolves in a collar. The inner revolving face is in contact with a column of viscous ink and carries the ink out as it rolls round so as to become the outer face of the ball. The reservoir which contains the column of viscous ink is a capillary tube or duct the diameter of which should not exceed 4 mm. The capillary tube is open to the air a t the end furthest from the ball, or a t all events at that end there is an air vent. At that end a concave meniscus is formed at the interface of the viscous fluid and the air. I t is formed because of the surface tension of the liquid and its adhesion to the walls of the tube. The ball is very small. At the place where the viscous fluid is in contact with the ball the diameter of the vein is smaller and accordingly the meniscus of the surface of the viscous ink is of less radius. When the pen is turned down to write the ball suffices to overcome the effect of gravity. But when it is inverted the greater strength of the smaller meniscus.
92 C.L.R.] OF AUSTRALIA.
53
or to state it more accurately, the decreased pressure at that surface
H. C. OF A.
and the atmospheric pressure operating over a greater surface at
1954.
the other end, suffice to overcome gravity. The viscosity of the
M a r t i n
ink absorbs ordinary shocks which would break the meniscus of
V.
S c r i b a l
a more liquid ink. The result is to give a pen which will write
P t y . L t d .
until the vein of ink is exhausted and in which ordinary use will
D ix o n
C .J .
not interrupt or break the continuity of the vein. However if the pen is used to write vertically upwards or at a high angle the ball may lose contact with the ink and as the ball rotates draw in air causing a distortion of the meniscus and a consequent failure to sustain the weight of the column of ink. To restore the pen to its function it will be enough to point the pen downward again and write so as to rotate the ball. The ink will flow back to contact with the inner face of the ball and the pen will write again.
The first of the two patents put in suit (No. 122073) rests upon a specification which describes the invention it covers as relating to improvements in fountain pens of the ball-tip type and particularly to means for providing a regular ink feed to the ball constituting the active or writing element of such instrument. The specification in fact discloses, in the drawings and the text explaining them, a construction which on the foregoing principles would result in a workable pen. But no one reading the specification can escape the impression that the inventor had missed the more essential points of the construction and was relying on certain features which he introduced unnecessarily as forming an integral part of his invention. One of these features is the taking of the tube forming the reservoir through an extended path between the air vent and the ball. He insists on a tube or conduit that is extremely small but describes its size by saying that it must be “ of so small a cross-section that a suitable ink cannot escape from the air intakes under the effects of gravity ” . To explain the drawings the specification says that the throat of the channel is relatively small for example of a section of less than 5 mm. It does not say that it must be of capillary size. The conduit is always described and depicted as in helical coils or in unclosed annular convolutions. Though these two forms are not given as essential, there is an insistence on the conduit following an extended path starting at the air intake and ending at the recess for the ball, and of course the two forms of construction shown do give it the required “ extended path ”. Dense ink seems to be the only form of ink in contemplation but it is not definitely specified. A distinction is drawn at all events in some forms of construction between the conduit and a channel leading from the conduit to the ball. The specification says that, inasmuch as the
HIGH COURT
[1954.
| H. | C. OR A. conduit is of small section, when charged with ink it will contain | |
|
M a r t i nthe channel. I t proceeds to state that, due to this and other
V.relatively adjusted arrangement of the ball in the setting for it
S c r i b a l
P t y . L t d .whereby the tip of the instrument remains closed, the ink cannot
be discharged by gravity. Notwithstanding this denial of the
D ix o n
C .J .
effects of gravity there follows a statement that, as the ink is used through the use of the instrument, the charge in the form of a vein of liquid will be displaced so as to occupy the space of the portion carried out by the ball. This is then explained on the ground that the vein of liquid remains uninterrupted and is displaced as a whole the rear terminal thereof being in contact with the atmosphere by means of the air intake and therefore the continuity thereof will subsist as the ink is used and there will be no risk of interruptions. I t is not easy to suppose that the inventor thought that gravity had no part a t all in this phenomenon. And yet he says later that, as the reservoir shown is formed by a coil of small section the instrument may be placed in any position and used in any manner without the vein of liquid being affected by gravity. I t all reads as if the extension of the path of the tube by convolution or the like coupled with the exceedingly small diameter of the tube and the closure of the ball were relied upon to keep the vein of dense liquid within the pen when inverted and held with the ball upward.
The specification contains nothing amounting to a definition of the invention. Indeed where it might be expected that this would be done, there is found only a succession of objects which the invention achieves. Summarized they are: (1) to prevent even a dense ink leaking and to do so though the pen is held with the air intake down ; (2) to overcome the difficulty that when a ball pen is held with the point up contact between the ball and the ink is lost; (3) to provide a reservoir in which the ink forms a continuous vein feeding the ball and its position is not altered by gravity ; (4) to provide an ink reservoir a t once strong and simple ; (5) to provide detachable reservoirs so that the charge of ink may be replaced ; (6) to provide a fountain pen without the need of auxiliary means to cause the ink to reach the ball. What no doubt purports to be a definition of the invention follows the statement of these objects. I t begins with the traditional words “According to the present invention ” and goes on—“ an instrument of the ball-tip type is provided in which the ink reservoir is formed by one or more conduits starting at an air intake, and after following an extended path, communicating with the recess for said ball, the said conduit
104 HIGH COURT
[1954.
H. C. OF A.
during the normal use of the instrument.
I have no doubt that the
1954.claim should not be read in the wider sense. The invention relates
M a r t i nto writing instruments and it would be doing an injustice to the
V.language of the claim to read it otherwise than as a claim that the
S c r i b a l
vein of ink would be maintained in the position indicated during
P t a ' .
L t d .
conditions prevailing in the course of its normal employment and
T a y lo r
,1.
use as a writing instrument.
The matter remaining for consideration on the main appeal is the question of infringement and this question is m a considerable measure related to the question of construction to which I have just referred. For the respondent contends that, even conceding the narrower construction of the relevant words of clause 1 to be correct, the pen which, is alleged to infringe the appellant’s letters patent is not a pen in which a vein of ink extending to the ball is maintained in the relevant circumstances. I t was shown that such a vein was not maintained “ when an attem pt was made to write on a horizontal surface above the writer’s head, or on a vertical or inclined surface in a position where the bail-point of the instru ment . . . was raised substantially above the end remote from the ball.” On this point Sholl J. said :—“ Now I leave out of account altogether the case of attempting to write on a horizontal surface above one’s head. There might be some extraordinary case in which someone might want to write on a ceiling or in some similar position, but it would certainly not be a normal method of use. But the question of writing on a vertical or inclined surface with the point above the opposite end is quite a different m atter.” After reviewing the evidence his Honour proceeded :—“ Now can it be said that the defendant’s pen is one in which ‘ when charged wdth viscous ink a continuous liquid vein is maintained extending from the ball ’, in what I shall, for brevity, describe as all conditions of normal use ? I have come to the conclusion that it cannot. To begin with. Dr. Fehling, at p. 198, when considering whether any conditions of ‘ normal use ’ could arise resulting in a risk of leakage, described one case by saying, ‘ The only condition I know and the user of the hallpoint pen is familiar with,—if I write upwards . . . ’ But in the next place, I cannot say, viewing the matter as a jury would, and using my own genera] knowledge of everyday affairs and events, that it is not one perfectly normal method of using a writing instrument in general, or a fountain-pen or ballpoint pen in particular, to write on a vertical or inclined surface with the point of the instrument above the horizontal. Nor can I say, looking at exhibit 8, that it would be quite abnormal to seek to write in such a position more than there appears. Almost everyone, I suppose.
92 C.L.R.] OF AUSTRALIA.
105
has seen on the vertical notice-boards of social or other clubs, or of
sporting bodies, documents on which persons are invited or expected
1954.
to write names or other particulars, and on which it is usual or
M a r t i n
preferable to write in ink,—e.g., entries for tournaments, results of
V.
S c r i b a l
matches, subscriptions for donations, and the like. Many persons
P t y . L t d .
have seen in the headquarters or other establishments of the armed T a y lo r
J .
forces, or in the laboratories or control rooms of many kinds of technical establishments, charts, lists, maps, or other documents on vertical walls or boards, on which it is the practice manually to write in ink entries from time to time of all kinds of particulars. Tradesmen and carriers are frequently seen to write in such a position against a wall. Viewing the matter again as a judge of fact, I entirely disagree with Mr. Phillips’ suggestion that in such cases people attempt to write with the point below the horizontal; that would be most unusual. I t is hardly a matter on which one can expect evidence to establish any more than one’s observation and commonsense tell one. Accordingly I am of opinion that the defendant’s pen, exhibit E, and any similar pen relied on by the plaintiff as an infringement, has not been shown to infringe claim 1, nor, therefore, any other claim of the patent, if one construes claim 1 as I have construed it (and as the plaintiff’s counsel construed it) in relation to the first four elements referred to in it, and assumes it not to be invalid for ambiguity as to the last element mentioned in that claim ” .
In one sense it may, I think, be quite fairly stated that a pen is not normally used to write at a height on vertical surfaces. At all events pens ordinarily serve their purpose in less awkard circum stances. But, however, this may be there was abundant evidence which was not in dispute that both the patented instrument and the defendant’s pen would for a short period write, not only when the end remote from the ball was some distance below the latter, but even when held vertically with the bail-point uppermost. I t was only after use in this position for some short period that the possi bility of air entering the bail-point end occurred and made possible the displacement of the otherwise constant vein of ink. There was evidence, apparently acceptable to his Honour, that the defendant’s pen, and indeed other pens of the same type, will continue to write and that the vein of ink extending to the ball will otherwise be maintained indefinitely not only during the ordinary vicissitudes of the normal life of a pen, but also if used with the end remote from the ball poised below the level of the writing end to the extent of about one inch. I t is only when the remote end if lowered further
lOG
HIGH COUET
[1954.
H. C. OF A.
and tlie pen is used in that position for some little time that possi
1954.bility of disturbance of the vein of ink occurs. Now, whatever may
]\Ia rtinbe thought of the learned trial judge’s view of what may be con
V.sidered to be the normal use of a pen, I am firmly of opinion tha t
Scriba l
P t y . L t d .it is no part of the normal function of a pen and that a pen is not
normally used to write for long periods upon highly placed vertical
T a y lo r
J .
surfaces. Nor can I believe that the relevant words of the claim would be so understood by “ a reader ordinarily intelligent and versed in the subject-matter ” (per Lord Shaw of Dunfermline in British Thomson-Houston Co. Ltd. v. Corona Lamp Works Ltd. (1)). The use of a pen for the purposes indicated in the illustrations given by his Honour may be thought to constitute normal use, but none of such purposes require the use of a pen for long periods or, necessarily, in a position in which the infringing instrument or the patented instrument would not continue to function indefinitely. On the contrary, the evidence seems clear that the vein of ink would be maintained for considerably longer than it would take to complete entries or notations of the nature indicated by his Honour even if the pen were held in a vertical position with the writing end uppermost.
These reasons lead me to conclude that the first appeal should be dismissed and that the matters debated in the second appeal should be decided in favour of the appellant. Accordingly it becomes necessary to consider the matters which arise in the respondent’s appeal.
I have already stated in a general way the defences unsuccessfully raised in the suit. Not all of these defences were, however, pursued in the appeal. Those which were are concerned, in some way or other, with events which occurred between the lodging of the complete specification for No. 133 on 31st December 1943, and the acceptance of the speci6.cation in its finally amended form on 14th June 1949, and it is material to refer to some of those events. The first event of any significance was that on 29th May 1946, there became available for inspection in the library of the Patents Office a t Canberra the complete specification of what was referred to as United Kingdom letters patent No. 573. Thereafter, on 18th December 1946, the specification for No. 133 was amended. The result of this amendment was to make the specification identical in terms with that of the United Kingdom patent. The next event was that the specification, in its original form, was, pursuant to s. 38a of the Patents Act 1903-1946 (which came into force on 11th September 1946) published in the official journal on 19th February
(1) (1921) .39 R.P.C. 49, at p. 89.
92 C.L.R.] OF AUSTRALIA.
107
1948. At later stages, naraely on 28th January 1948, 16th November H.
C. O F A.
1948, 10th March 1949 and 16th May 1949, further amendments
1954.
were made. The complete specification, as so amended, was, as
M a r t i n
I have said, accepted on 14th June 1949 and such acceptance was
V.
S c r i b a l
duly advertised pursuant to s. 50 on 30th June 1949.
P t y . L t d .
The first point which is made upon a comparison of the specifica tion in its original form and the form in which it was accepted is that the invention ultimately claimed was not the invention described or claimed in the original specification. The immediate result of
| T a y lo r | J . |
this, it is contended, is that the letters patent are invalid.
Several
steps are involved in this argument. First of all, it is said, it is a condition precedent to the right of the commissioner to seal letters patent that a complete specification of the invention shall have been lodged and accepted. In the present case, it is then said, no such specification was in existence at the relevant time. I t is true, of course, that there was in existence a dociunent which purported to be such a specification and that the commissioner purported to accept it as a specification, but this docmnent came into existence by the amendment of the original specification and, it is argued, the power implicit in s. 45 of the Act to allow amend ment does not authorize amendments which would result in claims for an invention not described or claimed in the original specification. Any amendment which purports to produce this result, it is con tended, is without legal effect and since, it is further claimed, this was the purport of the amendments in this case the specification as finally amended is not a specification at all and is entirely without legal effect.
I t is possible, however, to concede that the power to allow the amendment of a specification is not unlimited without producing the result contended for by the respondent. A mere perusal of the provisions of Div. 4 make it appear clearly that amendments should not be made in pursuance of that division which “ would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment ” (s. 78) but it appears equally clearly that “ leave to amend shall, notwithstanding the last preceding section, be conclusive as to the right of the party to make the amendment allowed except in the case of fraud ” (s. 79). Again, the question whether “ all directions for amendment are complied with ” under s. 44 is a matter for the consideration of the commissioner alone. I t would be strange if, these matters having been left to the decision of the commissioner, the legislature, in enacting ss. 45 and 46, intended to pursue the entirely different
108 HIGH COURT
[1954.
H. C. 03? A.
course of allowing the question of the validity of a patent to depend
1954.
upon a subsequent judicial inquiry whether some particular amend
] \L \ r t i nment to the specification as originally lodged should have been
V.
SCRI33ALpermitted under s. 45. During the discussion concerning this
P t y . L t d .problem counsel for the respondent emphasized the difficulties
created by s. 38a and s. 54 if the contrary view should be taken.
I'aylof
J .
After publication of a complete specification of an invention the applicant has, by virtue of the provisions of s. 54, “ the like privileges and rights as if a patent for the invention had been sealed on the date of the publication of the complete specification But what happens if, after publication and before acceptance, the specification is amended in such a way as to claim a different invention ? Is the later invention protected as from the date of the publication of the original specification ? Or does protection for the invention as originally claimed exist until amendment and thereafter protection accrue to the new invention ? But these and other like questions which may be asked concerning the effect of s. 54 in such cases do not serve to indicate that it was intended that the question of the propriety of amendments under s. 45 should be removed from the bona fide discretion of the commissioner. At the most they go to show that it was not intended that the commissioner should permit amendments, so to speak, at large and that it was intended that the power should be exercised within limits not wider than those specified for the operation of Div. 4 by s. 78 thereof. Moreover, it should be noted, the difficulties—which to me seem rather apparent than real—may present themselves fairly and squarely in relation to amendments allowed in the discretion of the commissioner under that division.
The question whether the propriety of amendments under s. 45 is a matter for the bona fide discretion of the commissioner is, I think, best solved by an examination of that section and s. 46. Clearly s. 45 contemplates amendments to meet the adverse report of an examiner and the amendments contemplated are amendments to the specification of an invention already disclosed. This alone is sufficient to enable one to say that the section does not contemplate that by amendment the specification of one invention may become the specification of a new and different invention. But whether any proposed amendment would produce this result is, in my
opinion, a matter for the commissioner to determine.
Under s. 46
“ I f the Commissioner is satisfied that no objection exists to the specification on the ground that the invention is already patented in the Commonwealth or in any State or is already the subject of any prior application for a patent in the Commonwealth or in any
92 C.L.R.] OF AUSTRALIA.
109
State he shall in the absence of any other lawful ground of objection
H. C. OP A.
accept the application and specification without any condition
1954.
The commissioner’s opinion as to the particular matters specified
M a r t i n
is the condition upon which the application and specification may
V.
S c r i b a l
be accepted. But it is contended that the “ absence of any other
P t y . L t d .
lawful ground of objection” refers to an existing state of fact and, T a y lo r
J .
further, that this state of fact does not exist when an amendment outside the scope and contemplation of s. 45 has been allowed. But what happens when the commissioner is not satisfied of some one or more of the matters referred to in the section ? He may refuse to accept the application and specification or he may accept them “ on condition that a reference to such prior specifications as he thmks fit be made thereon by way of notice to the public.” Either course may be taken if he is not satisfied, not only of the particular matters specified in the section but also as to the absence of “ any other lawful ground of objection.” From his adverse decision on such a question an appeal lies to the High Court or the Supreme Court. But he can refuse to accept an application and specification only if he is not satisfied. Accordingly he is bound to accept them if he is satisfied not only of the particular matters specified but also of the absence of any other lawful ground of objection. Surely in these circumstances it may well be said that the condition precedent to such acceptance is not that amendments which have been made are within the scope of s. 45 but that the commissioner is satisfied that they are. There is in the present case no ground for any suggestion, and no suggestion is made, that the commissioner’s discretion was not exercised bona fide and this being so it is unnecessary to consider whether our own view as to the prop iety of the amendments which were made coincides with that of the commissioner.
I t appears to me that the solution of this problem must also assist materially in the solution of the remaining questions which were debated on the respondent’s appeal. Based on the proposition that the invention claimed in the finally amended specification for No. 133 was substantially different from that described and claimed or described and disclosed in the specification as originally lodged, the respondent alleged that the appellant was not in possession of the former invention when the specification in its original form was lodged. In its particulars of objections the respondent by par. 6 alleged quite unequivocally that the appellant “ as applicant for the grant of the said letters patent was not on 31st December 1943 in possession of the invention the subject matter of the letters patent ultimately granted as at that date and that by reason thereof
110
HIGH COURT
[1954.
H. C. OF A.
tlie grant thereof . . . is and at all material times has been invalid
1954.void and of no effect.” The question whether this allegation, among
M a u t i nothers, constituted a good defence in law was argued as a preliminary
V.matter of law and by the order then made it was declared that par.
S c r i b a l
P t y . L t d .6, “ so far as it depends exclusively upon the aforesaid allegations of
fact (i.e. allegations appearing in par. 4 of the particulars) constitutes
T a y lo r
J .
a good defence in law to the plaintiff’s claim herein to the following extent and not otherwise, viz., so far as they allege that the effect of the amendments therein referred to or either of them was that the complete specification of the letters patent No. 133163 in its final form claimed an invention substantially different from the invention described and disclosed by the complete specification originally lodged with the application dated 31st December 1943.” But par. 6 did not, and did not purport, to depend in any way at all upon allegations of fact previously made in the particulars of objection, nor did the allegations previously made, so far as, apparently, they were thought to be material, go further than allege that “ on or about 18th December 1946 the plaintiff lodged in the Patent Office what purported to be but was not an amended com plete specification as the complete specification accompanying the said application of 31st December 1943, but the said specification so lodged on or about 18th December 1946 described and claimed then as the invention something which was not the invention described and claimed in the complete specification lodged on 31st December 1943 as aforesaid but something substantially different therefrom.” I fail to see how par. 6 of the particulars of objection depended substantially on this or any similar allegation for, if the truth of this objection be assumed all that can be taken as established is that the plaintiff first described one invention and at a later stage described another. These cireumstances alone cannot give rise to the inference that the plaintiff was not in posses sion of the second invention when he described the first. Never theless, the matter proceeded to trial without any amendment of the pleadings or any further definition of this or any other issue.
In these circumstances the issue between the parties assumed a completely artificial aspect and, strictly speaking, the respondent could not succeed upon it unless it appeared that the specification in its finally amended form claimed then as the invention something which was substantially different from the invention described and disclosed by the specification originally lodged. On this view of the matter the primary allegation that the appellant was not, at the time when the original specification was lodged, ‘in possession of the invention as finally described and disclosed would become
92 C.L.R.] OF AUSTRALIA.
I l l
immaterial and the only matter of importance would be, in effect
H. C. OF A.
whether the invention finally described and claimed was substan
1954.
tially different from that originally described and disclosed. A
M a e t i n
conclusion favourable to the respondent on this point would, of
V.
SO R IB A U
course, be precisely tantamount to holding that the amendments P t y . L t d .
which resulted in the specification in its final form were improperly
| T a y lo r J . |
allowed by the commissioner and this conclusion, it seems to me,
is, for the reasons already given, not open to us.
What the defendant really sought to establish on the trial, however, was that the plaintiff was not, in fact, in possession of the patented invention at the time when he made his original application and he sought to do this, in effect, by contending that the successive specifications described two different but related inventions and that a close examination of the terms of the original specification tended to show that at the time of the plaintiff’s apphcation he did not appreciate or understand the principle of the second invention. To my mind this represents a doubtful approach to the determination of the question of fact which the defendant sought to raise and an approach which, were it not for the contrary view held by the majority of the Court, I should be prepared to hold was precluded by the allowance of the amendments in question and the acceptance of the specification in its final form. The matter, however, is by no means free from doubt and I am not prepared to dissent from the orders proposed in the plaintiff’s second appeal and the defendant’s appeal. The plaintiff’s first appeal must of course be dismissed.
Plaintiff’s Appeal from the Judgment in Action No. 314 of 1947.
Appeal dismissed.
Plaintiff’s Appeal from the Judgment in Action No. 58 of 1951.
Order that i f within two months of the date on which this judgment is pronounced the plaintiff appel lant notifies the defendant respondent and the Principal Registrar in writing that he desires that there he a further trial of the issues raised hy the fifth and sixth particulars of objection dated \^th July 1951, then set aside the judgment appealed from and direct that there he a further trial of the action limited to those issues, the other issues in the action being treated as determined in favour of the plaintiff and that the costs of the
112 HIGH COURT
[1954.
H. C. OF A.
action he disposed of by the judge at such further
1954. trial. I f the plaintiff appellant do not so notify
M a h t i n
the defendant respondent and the Principal
?>.
Registrar then dismiss the appeal.
SC IU H A L
1’t y . L t d ,
Defendant's Appeal in respect of Action No. 58 of 1951.
Appeal from so much of the orders or judgments of \'hth June 1953 and of 22nd June 1953 as in the notice of appeal are referred to allowed. Discharge such orders.
■
Reserve the question of the costs of all the appeals for
the further order of this Court.
Solicitors for the plaintiff-appellant-respondent, Martin, Moule,
Hamilton & Derham.
Solicitors for the defendant-respondent-appellant. Scribal Pty. Ltd., J. T. Brock.
Solicitor for the Commissioner of Patents, D. D. Bell, Crown Solicitor of the Commonwealth of Australia.
R. D. B.
26
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