Nicaro Holdings Pty Ltd v Martin Engineering Company

No judgment structure available for this case.

NICARO HOLDINGS PTY. LIMITED; MATFLO ENGINEERING PTY. LIMITED
and RICHARD COUPER
And: MARTIN ENGINEERING COMPANY and E.S.S. ENGINEERING SERVICES
& SUPPLIES PTY. LIMITED
No. G486 of 1989
FED No. 37
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Lockhart(1), Jenkinson(2) and Gummow(3) JJ.

CATCHWORDS

Patents - novelty - obviousness - observations on the distinction between novelty and obviousness - whether the patent in suit was anticipated by prior publication disclosed in the specifications for three United States patents - whether the patent was anticipated by disclosure in several machines in prior use - meaning of the terms "mechanical equivalent" and "workshop improvement" and cognate expressions.

Patents - the rule against "mosaics" - whether the prohibition against the making of a "mosaic" to supply an anticipation destructive of novelty is qualified so as to permit an internal cross-reference from one document to another.

Patents Act 1952

Patents and Designs Act 1932 (U.K.)

Patents Act 1949 (U.K.)

General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457

Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. (1970) 44 ALJR 385

Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228

R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679; (1989) 13 IPR 513

Von Heyden v Neustadt (1880) 50 LJ Ch (NS) 126

Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253

Martin and Biro Swan Ltd. v H. Millwood Ltd. (1956) RPC 125

Populin v H.B. Nominees Pty. Ltd. (1982) 59 FLR 37

Walker v Alemite Corporation (1933) 49 CLR 643

Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212

Hill v Evans (1862) 4 De G F & J 288; (1862) 31 LJ Ch 457

Catnic Components Ltd. v Hill & Smith Ltd. (1982) RPC 183

Rehm Pty. Ltd. v Websters Security Systems (International) Pty. Ltd. (1988) 81 ALR 79

Genentech Inc.'s (Human Growth Hormone) Patent (1989) RPC 613

Savage v D.B. Harris & Sons (1896) 13 RPC 364

E.I. Du Pont De Nemours & Co. (Witsiepe's) Application (1982) FSR 303

Washex Machinery Corporation v Roy Burton & Co. Pty. Ltd. (1974) 49 ALJR 12

Acme Bedstead Co. Ltd. v Newlands Bros Ltd. (1937) 58 CLR 689

Pope Appliance Corporation v Spanish River Pulp & Paper Mills Ltd. (1929) AC 269

C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61

Olin Corporation v Super Cartridge Co. Pty. Ltd. (1977) 51 ALJR 525

Ransburg Company v Aerostyle Ltd. (1968) RPC 287

N. Guthridge Ltd. v The Wilfley Ore Concentrator Syndicate Ltd. (1906) 3 CLR 583

Broken Hill South Silver Mining Co. No Liabililty v N. Guthridge Ltd. (1908) 8 CLR 187

British Ore Concentration Syndicate Ltd. v Minerals Separation Ltd. (1909) 26 RPC 124

Sharp & Dohme Inc. v Boots Pure Drug Co. Ltd. (1927) 44 RPC 367, (1928) 45 RPC 153

Acetylene Illuminating Co. Ltd. v United Alkali Co. Ltd. (1925) 22 RPC 145

Warner Laboratories Pty. Ltd. v Chemspray Pty. Ltd. (1967) 37

Australian Official Journal of Patents 2513

Griffin v Isaacs (1942) 12 Australian Official Journal of Patents 739

Dennison Manufacturing Co. v Monarch Marking Systems Inc. (1983) 66 ALR 265

HEARING

SYDNEY

#DATE 19:2:1990

Counsel and Solicitors for P.W.J. Gray Esq.
the Appellants: instructed by Messrs.

Dunhill Madden Butler

Counsel and Solicitors for D.K. Catterns Esq.
the Respondents: instructed by Messrs.

ORDER

The appeal be dismissed.

The appellants pay the costs of the respondents of the appeal.

Note: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.

JUDGE1

This is an appeal from the judgment of a single Judge of the Court (Burchett J.) dismissing the cross-claim of the appellants against the respondents. His Honour heard together two suits brought by the respondents for infringement of the same standard patent in each of which there was a cross-claim seeking revocation of the patent on the grounds of want of utility, lack of novelty and obviousness. The course was taken of hearing first the evidence and argument in relation to those matters and postponing the other questions which arose in the two proceedings. His Honour also dismissed the cross-claim in the second proceeding (No. G212 of 1988); but there is no appeal by the unsuccessful cross-claimants (who are different persons from the present appellants) from that dismissal.

The learned primary Judge rejected the contentions of the appellants of want of utility, lack of novelty and obviousness. The appellants appealed to this Full Court solely on his Honour's finding that the invention lacked novelty.
The patent in suit is a convention patent no. 512902, the priority date of which is 10 January 1977. The patentee is Martin Engineering Company, the first respondent, a United States corporation, and the second respondent is the holder of an exclusive licence from the first respondent in respect of the patent. I shall refer to the patent as the Martin patent.
The evidence shows that conveyor belts used in the mining industry and elsewhere for the transport of materials require to be cleaned, generally by some form of scraping, at a point at or near the commencement of the return run of the belt after discharge of its load. Various problems are associated with this operation. The load may leave a residue which may build up on the scraper or scrapers and on the means by which they are applied to the belt. Maintenance may be rendered more difficult by constriction of space under and in the vicinity of the belt, and particularly at the point of discharge of its load. The minimisation of loss of the productive operation of the belt during any stoppage for maintenance of scraping equipment is a consideration of some importance.
It appears that various devices have been adopted in the past, from quite primitive scrapers to relatively complex equipment. Patents obtained in respect of such equipment span a period of over forty years up to 1977.
The Martin patent is in respect of an invention entitled "Belt Cleaner Mounting Arrangement" which is described in the abstract of the disclosure as:

"a track mounted conveyor belt cleaner wherein individual belt scraper blades are affixed to sleeve members which slide linearly along a support member positioned generally transverse to the direction of travel of the belt to be cleaned. The sleeves are slidably mounted on the support member such that they may freely slide from one end to the other but are fixed against either rotational or vertical movement and provide for repair or replacement of wiper blades without requiring conveyor belt shutdown."

There is in the specification a recital of the prior art, suggesting that many arrangements "have presented certain problems with respect to repair or replacement of individual blade elements." The recital provides as follows:

"Sometimes the wiper blades are carried on one end of a torsion spring. The other end of the spring is affixed to a transverse support. Such an arrangement is illustrated in U.S. Patent 3,342,312. As the wiper blades wear, periodic replacement is required. Occasionally a wiper blade becomes damaged during regular use and the individual blade must be replaced. In either of these situations the conveyor belt must be shutdown and one of two alternatives is presented to the belt operator. If access permits, the operator may be able to disconnect the individual wiper blades from the support shaft and replace them as needed. In the majority of situations however, access to the underside of the conveyor belt is limited and the entire support shaft must be removed from the side of the conveyor housing. This is often difficult to accomplish because of limited space. The time lost for conveyor shutdown due to wiper blade replacement is a critical factor to be considered. It is therefore an object of the present invention to provide a belt cleaner mounting arrangement which will obviate or minimise the foregoing disadvantages in a simple yet effective manner or which will at least provide the public with a useful choice."

There follows the consistory clause in the following terms:

"Accordingly the invention consists in apparatus for cleaning a conveyor belt comprising a linearly extending support member adapted to be positioned beneath the conveyor belt in use and generally transverse to the direction of the conveyor belt travel; at least one sleeve member mounted on the support member for sliding movement therealong, the sleeve member being arranged to cooperate with the support member to prevent rotation of the sleeve about the support member when mounted thereon, mounting means on the sleeve members, one or more belt cleaning elements mounted on the mounting means, and an adjusting element operable on the support shaft for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt."

The body of the specification then proceeds to describe "one preferred form of the invention" in which there is a support member beneath the return run of the belt adjacent to the roller at the discharge end of the belt. The support member is transverse to the direction of travel of the belt, i.e. parallel to the roller. It is a tubular hollow shaft with a projection forming a key beneath its lower surface along substantially its length. Upon this support member are slid sleeves in the shape of tubes having a slightly larger diameter than the shaft, so as to fit over it, with a channel cut out at the bottom to enable them to slide past the key, which then prevents them revolving round the shaft. At the top of each sleeve there is provided a fixing means to enable a scraper blade to be bolted to the sleeve (or in a more complex version to enable a torsion arm bearing a scraper blade to be bolted to the sleeve).
The specification states: "For purposes of illustration three such sleeve members ... are shown ... but the number will vary depending upon the width of the belt to be cleaned, the width of the scraper blades and a number of other factors." In the preferred embodiment, these sleeve members are linked for simultaneous movement along the support shaft, being designed to slide freely along it. But rotation is prevented by the key, so that when the support shaft is itself either rotated or lifted to bring the scraper blades into contact with the belt a predetermined angle of contact will be maintained.
The preferred embodiment includes, too, a flexible cable passed through the hollow centre of the support shaft and hooked at each end to the edge nearest that end of the nearest sleeve member. If the members are then connected, this facilitates adjustment of the position of the group of members relative to the conveyor belt to be cleaned. The preferred embodiment also involves a fairly complex mechanism for raising and lowering the support shaft at each end by the use of a jacking screw.
A modified embodiment is described in which each wiper blade is carried on a torsion arm instead of being mounted directly to the sleeve.
In another modified embodiment the support member is formed of a tubular section with a piece of angle iron welded to the top of it, and the configuration of the sleeve is altered to fit over (and round the edges of) the piece of angle iron, as an alternative to having sleeves of a circular cross-section with a keyway to fit a key attached to the support member.
The body of the specification concludes:

"Various features of the invention have been particularly shown and described in connection with the illustrated embodiments of the invention, however, it must be understood that these particular arrangements merely illustrate and that the invention is to be given its fullest interpretation within the terms of the appended claims."

Claim 1 defines the invention as follows: "1. Apparatus for cleaning a conveyor belt comprising (a) a linearly extending support member adapted to be positioned beneath the conveyor belt in use and generally transverse to the direction of the conveyor belt travel, (b) at least one sleeve member mounted on the support member for sliding movement therealong, (c) the sleeve member being arranged to cooperate with the support member to prevent rotation of the sleeve about the support member when mounted thereon, (d) mounting means on the sleeve members, (e) one or more belt cleaning elements mounted on the mounting means, and (f) an adjusting element operable on the support member for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt."

I have inserted the letters "(a)" to "(f)" for convenience because they define more clearly the six integers of the first claim and enable the arguments of counsel to be more readily understood with respect to the question of alleged anticipation of certain of the integers.
Counsel for the appellants concentrated his attack on claim 1 and conceded that, if that attack failed, it must fail also with respect to claims 2 to 6, so it is unnecessary to state them.
As mentioned earlier, the sole ground of revocation relied on in this appeal is absence of novelty: para. 100(1)(g) of the Patents Act 1952 ("the Act").
The generally accepted test for anticipation is the "reverse infringement" test: General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (1972) RPC 457 at 485-6; Meyers Taylor Pty. Limited v Vicarr Industries Limited (1977) 137 CLR 228; Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Limited (1980) 144 CLR 253; R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Limited (1989) 13 IPR 513 at 517.
It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication. See Hill v Evans (1862) 31 LJ Ch 457 at 466; General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited at 486; Washex Machinery Corporation v Roy Burton & Co. Pty. Limited (1974) 49 ALJR 12 at 18; and Van der Lely N.V. v Bamfords Limited (1963) 80 RPC 61 at 72-3.
In revocation proceedings the prior publication must disclose all of the integers with the possible exception of the substitution of "mechanical equivalents to perform analogous purposes" Sunbeam Corporation v Morphy-Richards (Aust) Pty. Limited (1961) 35 ALJR 212 per Windeyer at 220; R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Limited; Dennison Manufacturing Co. v Monarch Marking Systems Inc. (1983) 66 ALR 265 at 273, 274, 276 and 286. Although nothing turns on it in this case, I accept the correctness of the submission of counsel for the respondents that the term "mechanical equivalents" is properly used in cases of want of novelty and the term "workshop improvement" is essentially a term applicable to cases of obviousness: see Blanco White, Patents for Inventions, 5th Ed para. 4.212 and Terrell, The Law of Patents, 13th Ed., para. 5.108; cf Terrell para. 6.52.
The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is, however, permissible, to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross referencing system solely as a shorthand means of incorporating a writing disclosing the invention: George C. Warner Laboratories Pty. Limited v Chemspray Pty. Limited (1967) 37 AOJP 2513 at 2516; Blanco White 5th Ed. at para. 4.107 and Gratwick "Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343.
In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent: Blanco White para. 4.107.
There are important distinctions between lack of novelty and obviousness and they have been extensively considered in the reported cases. The most recent discussion of the distinctions is in Werner v Bailey (supra) per Lockhart J. at 521-533 and Gummow J. at 539-550. It is important to keep these distinctions in mind when considering the contentions of the appellants in this case.
Reference was made in argument by counsel for the appellants to the judgment of McTiernan J. in Chemspray where his Honour dealt with the objection of the defendant that the relevant invention lacked novelty and relied on the prior publication of the specifications for four United States patents known as Groeniger, Langdon, Hayes and Bradshaw. In dealing with the Hayes' patent his Honour said at 2515-6:

"It is important to notice that the specification for the Hayes' patent concludes with references to each of the United States patents cited in the file of this patent (i.e. Hayes'). These patents include a patent for an invention of which Groeniger was inventor. ... A composition of extracts from Groeniger's specification relating to the particulars of his back-flow preventor and of extracts from Hayes' specification relating to fitting a mechanism functioning in the same manner in a hose nut made according to his instruction cannot be likened to a mosaic because the respective specifications are a single source of information as to the state of this art. ... I find that Groeniger's specification and Hayes' specification taken together are an anticipation of such combination. It is permissible to consider them as connected documents because Hayes' specification refers to Groeniger's. ..."

It is not clear from the report of Chemspray what the precise context was in which the Hayes' specification referred to the Groeniger specification. McTiernan J. obviously regarded himself as simply applying established principles, but his Honour's use in the passage cited of the word "mosaic" with reference to the fact that the respective specifications were a single source of information "as to the state of this art" is the use of an expression that is classically used in relation, not to novelty, but to obviousness. His Honour said at 2516 that:

"... it is within the capacity of an expert workman who has studied both specifications to turn to account the knowledge, thus derived, by devising means for prevention of back-flow substantially similar to the combination which is the subject of the present patent."

Again his Honour is using the language of obviousness, not novelty. An enquiry into obviousness, that is into what was common general knowledge in the art, may legitimately involve reference to and reliance on patents incorporated in others by cross reference as "a single source of information as to the state of this art": c.f. the 3M Case. Similarly in Sharp and Dohme Inc. v Boots Pure Drug Company Limited (1927) 44 RPC 367 and (1928) 45 RPC 153 at 180 cross-referred journals were used in relation to obviousness for want of subject matter, the cross-references being by way of adoption: see Ricketson, The Law of Intellectual Property (1984) at para. 49.13 and Terrell at 5.92. But the position is fundamentally different when considering an argument for want of novelty where reliance is sought to be placed on cross-referred patents.

The appellants relied on the following three aspects of the prior art as constituting anticipation:

(1) US patent 3,674,131 ("the later Matson patent");

(2) US patent 3,342,312 ("the Reiter patent"); US patent 2,794,540 ("the later Sinden patent") The Stephens-Adamson cleaner. This is a cleaner which has what is called a "cross-angle" upon which the individual cleaning elements are supported and this would have to be removed, not the support shaft. The principle of the Stephen-Adamson cleaner is described in the Reiter patent and the later Sinden patent.

(3) Four T-slot or T-bar cleaners, namely, Trelleborg

Firestone

Dunlop-Skega

Jerry-rig

Each of these publications and cleaners was published or used before the priority date of the patent in suit, namely, 10 January 1977.
I turn first to the later Matson patent. Counsel for the appellant argued that all integers in the claims of the Martin patent are disclosed in the later Matson patent. He conceded that the sixth integer is not expressly found in the later Matson patent; but submitted that this integer is both old and obvious and a mere "workshop improvement" and placed reliance upon Griffin v Isaacs (1942) 12 AOJP 739 and Werner v Bailey. Counsel for the appellant relied, in the alternative, on the fact that the later Matson patent referred to the earlier Matson patent and to the Reiter patent (which is in turn referred to in both the earlier Matson patent and the Martin patent). Counsel submitted that it is permissible to read together the earlier Matson patent and the Reiter patent, which he said were incorporated by reference in the later Matson patent, as examples of the various pieces of the prior art and that by reading them together the sixth integer is disclosed. Reliance was placed upon Chemspray and other cases to which reference has been made earlier.
As mentioned earlier claim 1 of the Martin patent has six integers, namely:

1. a linearly extending support member adapted to be positioned beneath the conveyor belt in use and generally transverse to the direction of the conveyor belt travel;

2. at least one sleeve member mounted on the support member for sliding movement therealong;

3. the sleeve member being arranged to co-operate with the support member to prevent rotation of the sleeve about the support member when mounted thereon;

4. mounting means on the sleeve members;

5. one or more belt cleaning elements mounted on the mounting means; and

6. an adjusting element operable on the support member for bringing the belt cleaning element into engagement or out of engagement with the conveyor belt.

The learned primary Judge rejected the submission of counsel for the appellant that integers 2 and 6 were disclosed in the later Matson patent. His Honour said that the invention the subject of the later Matson patent was for a sophisticted means of elastically mounting the scraper blades and was not concerned with the problem of ready removal of the entire mount, bearing the individual blade, from the rigid support member in a simple fashion, without going under the conveyor which is an important feature of the Martin patent. His Honour said that it was apparent from the later Matson patent that the references in it to axial assembly and disassembly are not references to the attachment to the support shaft at all; but to the assembly and disassembly of the complex elastic mount itself. The mount is attached to the support shaft on what are described in the later Matson patent specification as "brackets". His Honour went on to say:

"In the first preferred embodiment of the later Matson patent, the support shaft is shown as of square cross-section, and the bracket is fitted to it by an attachment which encompasses it, having the same cross-section. I do not doubt that in some contexts that attachment could be described as a sleeve. In the case of the specification of the later Matson patent, however, it is shown with a bolt going through it and the support shaft, so that it is firmly attached and cannot slide at all. There is no suggestion in the specification that it is intended to be slid into position, or out of position, at any time during the period when the cleaner is installed. To the contrary, the emphasis in the specification upon the axial assembly and disassembly of the part attached to the bracket makes it clear that the intention is to effect those operations with the bracket already in place. There is nothing to suggest that it would not be fixed prior to the installation of the support shaft, and retained at all times until after removal of the support shaft, should that event ever occur. That there is no thought of a "sleeve member mounted on the support member for sliding movement therealong" is also confirmed by a second preferred embodiment, in which the bracket could by no stretch of the imagination be described as a sleeve member. In that case, it involves a clamp gripping a tubular support shaft, to which it is immovably fixed by the tightening of two bolts, one on each side."

It was submitted by counsel for the appellant that the passage which I have underlined above was erroneous in that the later Matson patent does not show a bolt going through a sleeve and the support shaft and that his Honour was in error in concluding that what he described as a sleeve was shown as being firmly attached and unable to slide at all. This was the principal attack made by the appellant upon his Honour's findings with respect to the later Matson patent.
Reference to the later Matson patent and to the figures appearing therein, in particular figures 2 and 3, disclose a cotter pin, which is a form of split pin akin to a bobby pin, going through the sleeve and the support shaft and the cotter pin being turned up at the ends so that the sleeve is firmly attached and cannot slide. Criticism that the cotter pins are not depicted as going through the sleeve at all so that they do not block the passage of the sleeve across the support shaft is ill founded. I respectfully agree with his Honour's conclusion that the later Matson patent does disclose a sleeve that is firmly attached to the support shaft and cannot slide during operation. It is perhaps open to argument as to whether a cotter pin is accurately described by his Honour as a bolt, but in my opinion this is an accurate description. The cotter pin serves the same function as a bolt in that it passes through both the sleeve and the support member and the sleeve is firmly attached by reason of the presence of the cotter pin and prevents sliding across the support member. This attack on the primary Judge's finding therefore fails. His Honour correctly held that integers 2 and 6 are not disclosed in the later Matson patent.
The primary Judge dealt with the submission that the sixth integer was both old and obvious, a mere "workshop improvement" and that by cross reference to the earlier Matson patent and the Reiter patent the prior art was disclosed.
The later Matson patent refers as part of the "Background Of The Invention" to the earlier Matson patent in these terms:

"A representative prior US pat. is that to C.G. Matson No. 3504786, and consider also the art cited in that patent".

A little lower down in the specification under the heading "Descriptions of Preferred Embodiments" the following appears:

"As will be clear from the above-mentioned Matson patent, the cleaner structure is mounted transversely of the length of an endless belt, preferably at one end thereof and beneath the return run."

The earlier Matson patent (US No. 3,504,786) describes the invention in the abstract of the disclosure as

"a conveyor, cleaner or belt, scraper especially adapted to scrape the upper surface of the lower or return run of an endless belt conveyor and constructed to provide a plurality of blades arranged diagnally of the length of the run in overlapping echelon fashion so as to cause the scraped material to be directed toward and discharged at one end of the run."

As part of the "Background of the Invention" the following appears:

"It is well known that endless belt conveyors accumulate material thereon during operation and that, unless this material is scraped off either continuously or intermittently, the build-up interferes with efficient operation. Several such scrapers have been patented, primarily as evidenced by such US Patents as 1,975,591 and 3,342,312, but all of these operate on the principle of cleaning the under or bottom surface of the return run of the belt, because, obviously to scrape the top surface of the upper or delivery run is merely to scrape off the material being conveyed. So far as is known, no patentee has recognised the need for scraping the inside of the belt; that is, either the underside of the delivery run or the top side of the return run."

The US patent first mentioned is an earlier Sinden patent and the patent later mentioned is the Reiter patent. At the conclusion of the claims in the earlier Matson patent references are cited which include the earlier Sinden and the Reiter patents.
Even if it is permissible for present purposes for reliance to be placed upon the earlier Matson patent which is incorporated by reference in the later Matson patent and in turn to the earlier Sinden patent and the Reiter patent incorporated by reference in the earlier Matson patent, formidable problems confront the appellant. Integer 2 cannot be gleaned from the earlier Matson patent; nor is integer 6 disclosed because there is no adjusting element as claimed in integer 6 in the Martin patent. Also, the Martin patent is a combination patent. Each of the integers of a combination patent may not be novel. They may be part of the prior art, but it is the interaction of the combined integers to produce a new result which constitutes the invention the subject of a combination patent. Even if it were right to say that there can be gleaned from the Reiter patent, the earlier Sinden patent and the earlier Matson patent one or more of the six integers the subject of the first claim in the Martin patent and that the later Matson patent discloses another integer or integers, it is impossible to conclude that any one or any combination of these patents said to constitute the prior art discloses the combination which is the essence of the Martin patent. His Honour correctly held that the Martin patent is a combination patent and then said:

"If some only of the integers are disclosed in one specification, a reference of the kind in question here to another specification, which contains the remaining integer or integers, no more discloses the combination than does the knowledge possessed by the expert in the area of each of the old integers. Such a reference contains no suggestion whatever that the different integers should be brought together. Indeed, the reference in the specification of the earlier Matson patent to the still earlier patents of Reiter and Sinden is simply dismissive. The logic which forbids the assembly of previously known specifications into a mosaic of the invention, in order to deny its novelty, is not less offended when those specifications are linked only as antitheses. At the least, a real link is requisite: Minnesota Mining and Manufacturing Case at 292-3, 298."

I respectfully agree with these statements by his Honour.
There is a fundamental problem in the path of the appellant in relying on these earlier patents as disclosing prior art because the cross-referencing is, in my opinion, impermissible. The reference in the later Matson patent to the earlier Matson patent does not disclose a cross-reference merely as a shorthand means of incorporating disclosure of any of the essential integers in the invention disclosed in the Martin patent. Nor by referring to the earlier Matson patent (with its cross-references to the earlier Sinden patent and the Reiter patent) is there disclosure of any essential integers of the invention of the Martin patent.
The Stephenson-Adamson cleaner was relied on as part of the prior art. Like the earlier Sinden and Reiter patents the Stephens-Adamson cleaner does not disclose a sleeve member mounted on the support mechanism on which is mounted the belt cleaning element which co-operates with the support member to prevent rotation or, alternatively an adjusting element operable on the support member. His Honour found that at the priority date the Stephens-Adamson cleaners were so rare that two highly qualified experts, one for the applicants and one for the respondents, as well as other witnesses of great experience in the industry had never heard of them. The Stephen-Adamson cleaner therefore did not disclose integers 2, 3 and 6. In my opinion his Honour's conclusion was correct.
Various cleaners or scrapers were relied upon by the appellant as constituting anticipation, in particular the Dunlop-Skega belt scraper, the Jerry-rig, the Trelleborg and the Firestone scrapers. It was argued that each of these cleaners is in anticipation of Claim 1.
Expert evidence was called for both parties and his Honour examined the evidence of those witnesses. He preferred the evidence of Professor Thomas and Mr. Dunn, who were experts called for the respondents, and relied upon their evidence to support his finding that the T-shaped channels cut in the bottom of the rubber bar to take the head of the T-bolt in these cleaners were not "sleeve members" or their functional equivalents "mounted on the support member for sliding movement therealong". His Honour held that integer 2 was absent from these cleaners, also that integer 3 was absent and that the differences were not mere workshop improvements. Whether it be correct to describe them as "workshop improvements" which is more the language of obviousness or as "mechanical equivalents" is not to the point because his Honour's finding would lead to the conclusion a fortiori that the alleged differences were not "mechanical equivalents to perform analogous purposes": Sunbeam Corporation per Windeyer J. at 220.
The respondents by notice of contention challenged his Honour's finding that the counterweights or springs in the Trelleborg, Firestone, Dunlop-Skega and Jerry-rig cleaners were "adjusting elements for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt". I do not find it necessary to decide this question in view of my other findings.
I have dealt with the principal arguments of counsel for the appellants. Other arguments were advanced by him in support of the contention that each of the integers in Claim 1 are disclosed in the later Matson patent. These arguments were correctly rejected by the primary Judge and in view of my earlier findings it is not necessary to refer to them.
I would dismiss the appeal with costs.

JUDGE2

I agree that the appeal should be dismissed with costs, for the reasons given by Gummow J.

JUDGE3

Introduction

This is an appeal from the decision of a Judge of this Court (Burchett J.) given upon issues arising in two patent suits. His Honour's judgment is reported, (1989) AIPC 90-601. The respondents are patentee and exclusive licensee respectively of Australian Patent No. 512902 ("the Patent" or "the patent in suit"). The Patent is a standard patent granted under the Patents Act 1952 ("the Patents Act"). The priority date is 10 January 1977. The respondents sued alleged infringers in two proceedings and in each case there was a cross-claim alleging invalidity of the Patent. The grounds advanced were want of utility, lack of novelty and obviousness. The issues going to invalidity were heard in advance of those going to infringement and for this purpose his Honour ordered that the evidence in one proceeding be evidence in the other. His Honour found for the respondents upon all issues of validity. This appeal is by the unsuccessful parties to one of the proceedings in question. Only lack of novelty was relied upon in the appeal. There was no question before us of lack of utility or obviousness. Much of the submissions before us concerned the construction of claim 1 in the Patent and the interpretation of documents each said to amount to prior publication of the claimed invention. I should add that counsel for the appellants did not appear in the proceedings at first instance.

The task of the Court in such a situation was explained by the English Court of Appeal in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 485, as follows:

"The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. . . . When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new . . . falls to be decided as a question of fact."

It is not for the Court by its own efforts to put itself in the position of a person skilled in the relevant art at the priority date of the Patent on 10 January 1977. Upon the hearing of the appeal, both counsel tended to encourage the Court to do just that. I will refer again to this aspect of the case later in these reasons.
The Patent is in respect of an invention entitled "Belt Cleaner Mounting Arrangement". It claims a new combination of integers. Claim 1 is for a combination which comprises six integers. I set out the text of this claim later in these reasons. It was accepted by both sides that if the attack upon claim 1 failed then any attack upon the other claims also would fail. Hence, attention was directed solely to claim 1.
Burchett J. referred to the need for conveyor belts used in the mining industry and elsewhere for the transport of materials to be cleaned, generally by some form of scraping. The evidence showed that a number of devices had been adopted and that, at least in the United States, patents for such equipment had been granted over at least a forty year period before 1977. In the Complete Specification for the Patent, there is reference to the prior art and it is said that difficulties have been presented with respect to repair or replacement of blade elements used in the scraping devices. An object of the invention claimed in the Patent is said to be to obviate or minimise these disadvantages. The disadvantages are stated as follows:

"The load may leave a residue which may build up on the scraper or scrapers, and on the means by which they are applied to the belt. Maintenance may be rendered more difficult by construction of space under and in the vicinity of the belt, and particularly at the point of discharge of its load. The minimisation of loss of the productive operation of the belt during any stoppage for maintenance of scraping equipment is a consideration of some importance."

Legal Issues

Two issues of patent law were debated upon the appeal.
The appellants rely as anticipations upon the disclosures in the specifications for three United States patents, each of which was "published" in the technical sense in Australia before the relevant priority date. Each disclosure is said to constitute an anticipation rendering the combination in claim 1 of the Patent bad for want of novelty. The three United States patents are No. 3674131 ("the later Matson patent"), No. 3342312 ("the Reiter patent") and No. 2794540 ("the Sinden patent").
In addition to these alleged documentary anticipations, the appellants also rely upon the disclosure in several machines in prior use. Those machines were identified not by the production in evidence of actual examples, but partly by the recollection of witnesses and partly by drawings in catalogues and brochures. This method of proving alleged anticipation has to be approached with some caution, as Menzies J. pointed out in Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. (1970) 44 ALJR 385 at 387; see also Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235, per Aickin J. Upon the appeal, the Court's attention was directed to the Stephens-Adamson catalogue (Exhibit LP5), in association with the Reiter patent, and to the Skega Belt Scraper brochure (Exhibit WTB3) as an example of what were identified as the T-slot or T-bar cleaners.
The appellants, on one formulation of their arguments, conceded that the sixth integer of claim 1 of the patent in suit was not found in the later Matson patent or in the Reiter patent or the Sinden patent, and that the T-slot cleaners lacked a sleeve member as claimed in the second integer of claim 1 of the patent in suit.
However, in each case, the missing integer was said by the appellants to be old and obvious and that it would have needed a mere workshop improvement to supply it. At the trial, Burchett J. held that the differences between the alleged anticipations and the invention claimed in the Patent "cannot be described as unsubstantial or as workshop improvements". The appellants submitted to us that where the difference from the prior art consists in matters which make no substantial contribution to the working of the thing claimed, or involve no ingenuity or inventive step, so that the variations amount to mere "workshop improvements", the patent is invalid for want of novelty. Reliance was then placed upon what was said by Lockhart J. and myself in R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679 at 698, 700, 707.
Lockhart J. held (at 698) that lack of inventiveness may not be raised under a claim of want of novelty on an objection to grant of a patent "except in a clear case where the invention claimed obviously possesses no inventive merit whatever". His Honour later (at 700) held of the invention in question that it disclosed an inventive step over a prior disclosure, "something more than a mere workshop variation or mechanical equivalent." In my judgment (with which Jenkinson J. agreed), I approached the question somewhat differently, saying (at 707) to categorise an alleged invention as a mere workshop improvement over an item in the prior art does not necessarily mean that, under an objection for want of novelty, reliance is being placed upon the ground of obviousness. Judgment in this case was delivered by the Full Court after Burchett J. had reserved his decision in the proceedings giving rise to the present appeal.
On the other hand, on the present appeal, counsel for the respondents submitted that revocation proceedings in respect of a claimed combination cannot succeed on the ground of want of novelty unless there is an anticipation comprising all of the integers claimed, except that novelty may still possibly be lost by prior publication or user which has the substitution of "mechanical equivalents" to perform analogous purposes. The respondents submitted that in this context the term "workshop improvement" can lead to error, it being properly used only in cases of obviousness. This, as I understood it, the appellants denied, and they sought to challenge the particular findings of Burchett J.
This, then, presents the first of two issues of law which arise on the appeal.
The second issue of law concerns the question of "mosaics". The appellants accept that generally it is not permissible to make a "mosaic" of, or to read together, various pieces of prior art for the purposes of assessing novelty. This proposition is usually said to date from the judgment of the English Court of Appeal given by James L.J. in Von Heyden v Neustadt (1880) 50 LJ Ch (NS) 126. That was at a time when the distinction between novelty and obviousness was not as clearly understood as it has since become. This is apparent from what was said by James L.J. at 128, the emphasis being supplied by me:

"But it is contended that it is not novel, because it is anticipated by information given to the world in prior publications, being part of the common stock of knowledge possessed by the chemical portion of the public. The burden of proving this anticipation is on the defendants, and it must be made out very clearly in order to destroy the patent of a man who, at all events, was the first person who de facto produced the thing to the public practically in a working state."

As the law now stands, it would not be necessary to show of an anticipation that it was part of a common stock of knowledge possessed by those in the art concerned.

In Australia, where obviousness is put in issue it is not possible to "make a mosaic" out of existing publications which do not form part of common general knowledge; rather, where what is claimed is a combination, the question is whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.
The inhibition against the making of a mosaic applies with even greater force in Australia where the challenge to validity is based on lack of novelty. In Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253 at 292-293, Aickin J. (with whom the other members of the High Court agreed) after dealing in the manner I have above described with the inhibitions upon making a mosaic to support an allegation of obviousness, went on to deal with novelty in the following terms:

"The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process."

In Martin and Biro Swan Ltd. v H. Millwood Ltd. (1956) RPC 125, Viscount Simonds said in the course of his speech (supra at 133):

"The next question then is whether the claim, whatever it may be, has been anticipated. Clearly it was not by prior user. Was it anticipated by what was known before the priority date of the claim in the United Kingdom? To establish such anticipation the Appellants must show that in some prior publication there is to be found information about the alleged invention equal for the purposes of practical utility to that given by the patent in suit. It is not enough, to use the familiar metaphor which has perhaps been run to death, to make a mosaic of prior publications and to say that thus the whole invention has been already disclosed. This is particularly the case where the invention is said to consist of a novel combination, or, as is sometimes said, a new functional inter-relation of integers. For that, too, if the word has not already acquired a sinister content, might well be described as a mosaic. In the present case I do not think that the combination of integers was anticipated in any prior publication. The learned Judge, as I have said, did not deal with this aspect of the case, and I am far from criticising him. He did, I think, regard Weiller's Patent, to which I must refer again, as an anticipation of at least one important integer of the combination in the patent in suit, but that does not cover the point."

However, the appellants point to the statement in the 12th edition of "Terrell on the Law of Patents", para 297, where, after discussion of the English authorities supporting a proposition that it is not legitimate to piece together a number of prior documents to produce an anticipation of an alleged invention, it is said:

"A series of papers which form a series of disclosures and refer to each other, so that 'anyone reading one is referred by cross-references to the others', do not, however, form a mosaic."

Of the prior art cited in the present case, in the later Matson patent reference is made to United States patent No. 3504786 ("the earlier Matson patent"). It is then submitted by the appellants that the earlier Matson patent discloses the sixth integer of claim 1 of the Patent, which is that which may otherwise be missing from the later Matson patent. It also is said that both the earlier Matson patent and the patent in suit refer to the Reiter patent, and that this also discloses the missing sixth integer.

There is thus presented the second legal issue raised on the appeal. Involved in it is the question of whether the prohibition against the making of a "mosaic" to supply an anticipation destructive of novelty is qualified so as to permit an internal cross-reference from one document to another, and, if so, what is the nature of that qualification to the general principle.
Burchett J. held, in effect, that if there was such a qualification to the prohibition against mosaics, the qualification did not apply to the facts of the present case. The appellants submit that there is such a qualification and that it does apply here.
I turn to consider the first of the legal issues.
Novelty and Workshop Improvements
A prior publication does not amount to an anticipation of an invention claimed as a combination if it discloses some but not all of the integers of that combination: Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253 at 298, per Aickin J. That proposition is of considerable importance on this appeal.
It is important for a patentee to claim only the essential integers in a combination and to distinguish what is essential from what is inessential. This is because to establish infringement of a combination patent the patentee must show that the defendant has taken each and every one of the essential integers of the plaintiff's claim; if on its true construction the claim is for a particular combination of integers and the alleged infringer omits one of them, the infringer escapes liability: Populin v H.B. Nominees Pty. Ltd. (1982) 59 FLR 37 at 41. Further, where what is in question is an inessential integer, a device which contains the essential integers will fall within the claim, whether or not an inessential integer is replaced by an obviously equivalent device or omitted altogether; hence, the expression "mechanical equivalent": Walker v Alemite Corporation (1933) 49 CLR 643 at 650, 657; Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 217; Blanco White, "Patents for Inventions", 4th Ed., para. 2-208.
On the other hand, the expressions "workshop adjustment", "workshop improvement" and "workshop alteration" are usually employed in relation to obviousness: Blanco White, "Patents for Inventions, 4th Ed., para. 4-212. They are used in the sense of something a skilled workman would have come to, proceeding along previous lines of inquiry and having regard to what was known or used.
In Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235, Aickin J. said:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement (see, e.g., Harwood v Great Northern Railway Co. (1865) 11 HLC 654 at 681). Here no prior object and no object according to a prior document involved or incorporated all the integers of any one of the claims and could therefore possibly constitute an infringement. Accordingly I am satisfied that the objection of want of novelty has not been made out."

There was some discussion before us as to the significance of the reverse infringement test as a criterion for judging anticipation. In the Meyers Taylor Case (supra) Aickin J. was dealing with alleged anticipation of a combination patent; none of the alleged anticipations incorporated all the integers of any one of the claims. Therefore, as his Honour said (137 CLR at 235) none of them "could therefore possibly constitute an infringement". In such a situation, the adequacy of the reverse infringement test will be readily apparent, given the fatal effect upon an infringement suit of omission from the alleged infringement of an essential integer. But Aickin J. described this test only as "generally" applicable. Where the alleged anticipation is a paper publication, particularly a prior patent specification, there may be ground for debate in a comparison with the specification in suit as to the presence of inessential integers and mechanical equivalents. King J. pointed this out in his judgment at first instance in Werner's Case (supra at 702). There may also be dispute whether what has been disclosed sufficiently reveals an essential integer, in the light of the principles in Hill v Evans (1862) De G F & J 288 (see Werner's Case at 683 per Lockhart J.).
The appellants sought, somewhat tentatively, to pray in aid the principles of "purposive" construction of patent specifications, described by Lord Diplock in Catnic Components Ltd. v Hill & Smith Ltd. (1982) RPC 183 and discussed in several decisions of this Court. The particular point at issue in that case concerned whether the defendant escaped infringement because, whereas one of the integers of the claimed invention spoke of a rear support member "extending vertically", the alleged infringement included a member inclined at 6 degrees or 8 degrees from the vertical. A reduction of this order had a negligible effect upon function. The House of Lords found infringement. One may observe that such a result in an Australian court would have caused no great surprise to the reader of Commonwealth Industrial Gases Ltd. v MWA Holdings Pty. Ltd. (1970) 44 ALJR 385 at 388. I would not treat the House of Lords as having propounded any novel principle or new category of "non-textual infringement", and this Court has treated the decision in that light: Populin v HB Nominees Pty. Ltd. (1982) 59 FLR 37 at 42-43; Rehm Pty. Ltd. v Websters Security Systems (International) Pty. Ltd. (1988) 81 ALR 79 at 91-92. Certainly there is, in my view, no significant assistance to be gained in dealing with the issues that arise in this case from the Catnic Case, concerned as those issues are with lack of novelty.
At the heart of the first of the legal issues on the present appeal is the correct description of that area of activity which is not specifically dealt with in the alleged anticipation but nevertheless sufficiently made apparent to the skilled addressee to enable one to say there has been an anticipation within the principles stemming from Hill v Evans (supra).
There has been some drift in the authorities as to the degree of rigour with which the alleged anticipation is to be tested. (As is illustrated by the discussion of the English authorities by Falconer J. in Genentech Inc.'s (Human Growth Hormone) Patent (1989) RPC 613 at 629-633, selection patents may require special attention, but that is a matter for another day.) It was settled in Savage v D.B. Harris & Sons (1896) 13 RPC 364 at 368-369, per Lindley L.J., that the degree of disclosure in an alleged paper anticipation does not have to be so great as to amount to a full description of the invention allegedly anticipated, including the best method of performing it in the sense now required by s. 40 of the Patents Act. Something less will do for sufficient disclosure to constitute an anticipation.
The position in England under the Patents Act 1949 (U.K.) appears from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 485-486, a passage described as "much quoted and useful" by Lord Wilberforce in E.I. Du Pont De Nemours & Co. (Witsiepe's) Application (1982) FSR 303 at 310-311. In this passage, the English Court of Appeal, in dealing with anticipation by prior publication, had said (emphasis supplied):

If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable (sic) directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428 at 457, line 34, approved in B.T.H. Co. Ltd. v Metropolitan Vickers Electrical Co. Ltd.

(1928) 45 RPC 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

This passage also was approved and applied by Stephen J. in Washex Machinery Corporation v Roy Burton & Co. Pty. Ltd. (1974) 49 ALJR 12 at 18. But it is apparent from other Australian authority that what was said by the English Court of Appeal has to be read with some qualifications.

One begins with the judgment of Latham C.J. in Acme Bedstead Co. Ltd. v Newlands Bros. Ltd. (1937) 58 CLR 689. The Chief Justice cited what was said by the Privy Council in Pope Appliance Corporation v Spanish River Pulp & Paper Mills Ltd. (1929) AC 269 at 276. This was a passage in which their Lordships in turn had adopted what had been said in the 1908 and 1928 decisions referred to in the above extract from the judgment of the English Court of Appeal in the General Tire Case. Latham C.J. (58 CLR at 700-701) said:

"It is contended, however, that there is no justification for, to put it shortly, adding common knowledge to an alleged paper anticipation and thus depriving a patent of subject matter. It is urged that the authorities show that a paper anticipation must show, and precisely show, the whole of the claimed invention in order to be an anticipation at all, and that, if an alleged anticipation does not satisfy this requirement, it should be ignored (See Pope Appliance Corporation v Spanish River Pulp and Paper Mills Ltd. (1929) AC 269 at 276). But a given specification is not to be read as in a vacuum. The reader must be regarded as having at least the common knowledge of the art. If a competent workman, seeing either a given specification or an article in actual use, could, upon a defect being pointed out, devise, without the exercise of any inventive ingenuity, a means of overcoming the defect, there would not be invention in the result which he so achieved."

In the same decision, at 707, Dixon J. referred to the:

". . . well-settled rule that a prior paper publication, giving information that does not become part of common knowledge, does not invalidate a subsequent patent unless it supplies enough information to enable a person of proper skill in the art to produce the mechanical device or appliance or carry out the process claimed in the later specification."

Twenty-five years later, in C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61 at 71, Lord Reid said:

"The law regarding anticipation derives from Lord Westbury's statement of it in Hills v Evans (1862) 4 De G F & J 288. There are two branches of this statement. The first is that 'a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.' The appellants maintain that even if the skilled man could perceive in the photograph all the integers in claim 1 he would not apply the discovery without making further experiments. But Lord Westbury must have meant experiments with a view to discovering something not disclosed. He cannot have meant to refer to the ordinary methods of trial and error which involve no inventive step and are generally necessary in applying any discovery to produce a practical result. . . . The other requirement is that 'the information given by the prior publication must for the purposes of practical utility be equal to that given by the subsequent patent.' There may be cases where the skilled man has to have the language of the prior publication translated for him or where he must get from a scientist the meaning of technical terms or ideas with which he is not familiar, but once he has got this he must be able to make the machine from what is disclosed by the prior publication. This part of Lord Westbury's statement appears to have been universally accepted, and I need only refer to the latest authority in this House, Martin v Millwood (1956) RPC 125." (Emphasis supplied).

In the High Court of Australia, in Olin Corporation v Super Cartridge Co. Pty. Ltd. (1977) 51 ALJR 525 at 536, Stephen and Mason JJ. referred with apparent approval to the passage I have quoted from the speech of Lord Reid.

In Ransburg Company v Aerostyle Ltd. (1968) RPC 287 at 299, Lord Upjohn, in delivery a speech with which the members of the House of Lords agreed, said:

"In King, Brown & Co. v Anglo-American Brush Corporation (1892) 9 RPC 313 Lord Watson at page 320 pointed out that a patentee must describe his invention in such detail as to enable a workman of ordinary skill to practise it and the penalty of non-compliance with that condition is forfeiture of the privilege; but with regard to prior publication he said that it is 'sufficient to convey to men of science and employers of labour information which will enable them without any exercise of inventive ingenuity to understand his invention and to give a workman the specific directions which he (the patentee) failed to communicate'.

That was a rather broader proposition than the celebrated statement of Lord Westbury in Hills v Evans (1862) 4 De G F & J 288, but was accepted as correct in Savage v Harris (1896) 13 RPC 364.

In the recent case of Van der Lely N.V. v Bamfords Ltd. (1963) RPC 61 my noble and learned friend Lord Reid at page 71 put the test of prior publication more favourably to the grantee of the patent and solely for that reason I am prepared to adopt in this case Lord Watson's test when studying the alleged prior publications."

In Australia, Lord Watson's observations in the Anglo-American Case (supra) were adopted in N. Guthridge Ltd. v The Wilfley Ore Concentrator Syndicate Ltd. (1906) 3 CLR 583 at 591 (per Griffith C.J.), 601 (per Barton J.) and 606 (per O'Connor J.). Isaacs J. did likewise in Broken Hill South Silver Mining Co. No Liability v N. Guthridge Ltd. (1908) 8 CLR 187 at 202. Lord Watson's remarks are also consistent with what Latham C.J. and Dixon J. said in the passages I have set out from the Acme Bedstead Case (supra), where some reservations were placed upon other English authority.
It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans does not require a literal disclosure and something less may suffice, and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which the combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity and the taking of any inventive step.
Any references in this context to workshop improvements or variations should not be understood as importing into this field of novelty concepts of obviousness. There may be room for disagreement upon the English authorities as to what degree of activity by the skilled addressee may be called for in respect of an alleged anticipation for it still to suffice to destroy novelty. In my view, the way in which the English authorities have been treated by the High Court supports the position as stated by Lord Reid in Van der Lely's Case (supra). It is also to be borne in mind that the notional addressee of the alleged anticipation is a skilled addressee with common general knowledge of the art. But his Lordship was not saying that an alleged anticipation of a combination claim, which did not include an integer thereof, nevertheless would constitute an effective disclosure if what was required of a skilled addressee to produce that claimed combination was the taking of an obvious and non-inventive step by way of workshop improvement.
In R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) 85 ALR 679, King J., at first instance, used the terms "workshop variation" and "mechanical equivalent" in the course of dealing with an objection to grant for want of novelty (see 85 ALR at 703). I accepted the proposition, drawn from his Honour's reasoning, that where the alleged anticipation disclosed all the esssential integers of the claimed combination, the conclusion as to lack of novelty which would follow therefrom was not avoided and the invention claimed would not be saved "merely because there were differences which might be described as mere mechanical equivalents or workshop variations" (see 85 ALR 679 at 708, 716). The use of the expression "workshop variation" was not designed to introduce any concept of the presence or absence of a further step which was an inventive step or any notions drawn from the law as to obviousness. (It may be noted that in Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 220, Windeyer J., when dealing with want of novelty, spoke simply of the doctrine of mechanical equivalents.) In any given case, there may well be an overlap between novelty and obviousness on the evidence before the Court, and to use a mechanical equivalent may be to effect a workshop variation; but that should not encourage any blurring between the legal norms of novelty and obviousness.
Where, in a case such as the present, the question is whether one or more integers of a claimed combination is not disclosed in an alleged anticipation, and it is said that what is disclosed does sufficiently reveal that integer within the principles of Hill v Evans, it will not be helpful to ask whether variations between the anticipation and the claimed combination answer the description "workshop improvement". Perhaps recognising this, in reply counsel for the appellants put his case simply on the alternative basis that the differences represented no more than the substitutions of mechanical equivalents, thereby bringing his case back to the legal mainstream. But, as will later appear, to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a "mechanical equivalent". The reasoning in the infringement cases, to which I have referred, suggests the contrary.
I return to consider whether the appellants' submissions succeed on the merits of this case, after dealing with the second legal issue.
Mosaics and Cross-References
What is the rationale underlying the prohibition against the making of mosaics? If this is perceived, then one will be better equipped to consider whether the appellants are correct in their suggested qualification.
In Acme Bedstead Co. Ltd. v Newlands Bros. Ltd. (supra at 703-704), Starke J. quoted what was said by Fletcher-Moulton L.J. in British Ore Concentration Syndicate Ltd. v Minerals Separation Ltd. (1909) 26 RPC 124 at 147. His Lordship said (emphasis supplied):

"It cannot be too carefully kept in mind in patent law that, in order to render a document a prior publication of an invention, it must be shown that it publishes to the world the whole invention - i.e., all that is material to instruct the public how to put the invention in practice. It is not enough that there should be suggestions which, taken with suggestions derived from other and independent documents, may be shown to foreshadow the invention or important steps in it. Since the date of the vigorous protest of Lord Justice James in Von Heyden v Neustadt (50 LJNS Ch 128) against such a 'mosaic' of prior publications this has been a universally accepted and most salutary principle. It applies with exceptional force in cases where the alleged prior publications are the Specifications of unsuccessful inventions which have accordingly never passed into public general knowledge but have rightly been forgotten. All my past experience emphasizes in my mind the justice of this rule. The industrial and scientific problems, which face mankind, are being attacked all over the world by busy inventive minds from the most varied points of view. When some lucky inventor has been successful in solving the problem and - whether for the purposes of an action or otherwise - the records of past failure or incomplete success are searched, it is common to find that suggestions or adumbrations of each of the various steps, by which he has achieved his result, are to be found in some one or other of the works of those who have gone before him, though in different connection and forming part of a different and probably unsuccessful process. When such records are selected from a mass of antecedent publications and put in an isolated form before a Court, there is a danger of their giving rise to a suspicion of a general lack of novelty in the successful invention. But it must be remembered that these alleged prior publications are the product of a selection made with a knowledge of the successful invention, and that probably hundreds of proposals equally promising, but which point in wholly different directions, have been rejected in the search by reason that they do so. It is somewhat as though one were to decry the merit of a prospector who had discovered that sands were auriferous by showing that after due rejection of most of the non-metallic particles from a handful of sand the gold may be made to appear visible to the naked eye."

In his article "Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343, Mr. Gratwick QC, after referring to the case law as it had developed up to the end of the last century, said:

"It is clear that, by this time, the importance of dealing separately with the issues of lack of novelty and obviousness had become well appreciated, even though the language used in the judgments was not always chosen as carefully as it might have been.

While the division between these two heads of objection was becoming appreciated, the law relating to lack of novelty was developing certain quite clear and strict rules. Thus, ever since Von Heyden v Neustadt (1880) 50 LJCh 126 it has been accepted without hesitation that, if a given prior document does not disclose the whole of the invention, the deficiency cannot be made good from another document unless there is a cross-reference between them. . . ."

I have set out earlier in these reasons the passage from Terrell upon which the appellants rely. In the 4th edition of his work "The Canadian Law and Practice relating to Letters Patent for Inventions", Mr. Fox QC said (at 139):

"The rule against making a mosaic of documents does not apply when the documents are connected together and form a consistent whole as, for example, when they are chapters in a series of disclosures where anybody reading one is referred by cross-reference to the others."

The authorities supporting these passages in Terrell and the Canadian work, are stated to be observations of Astbury J. and Sargant L.J. in Sharp & Dohme Inc. v Boots Pure Drug Co. Ltd. (1927) 44 RPC 367 at 402, (1928) 45 RPC 153 at 180, respectively. It is necessary to look rather closely at that case. The patent whose validity was successfully challenged had been granted in 1923 and related to certain chemical substances, the "higher alkyl resorcinols", said to be very valuable as germicides. The judgment of Astbury J. was delivered ex tempore at the end of a seventeen day trial. The remarks in question appear in a passage at p 402 of the report. Before us, the respondents submitted that these remarks were directed to obviousness only and not to cases where lack of novelty was alleged. I do not believe this to have been the case.
His Lordship said (with emphasis supplied):

"Then the Plaintiffs' Counsel very properly discussed separately the question of novelty and subject-matter. Their argument on novelty depends really upon what I have said, that these bodies are new and valuable. For that purpose they cite the case of Hills v Evans. Nobody is likely at this stage to question anything in the classic judgment of Lord Westbury in that case; but Hills v Evans is a case which deals only with anticipation; it has no bearing at all upon subject-matter. A patent may be hopelessly invalid for want of subject-matter, although there is no disclosure of its process or of its contents in any prior document at all. If it be that, having regard to what the world knows in the art, the making of the body, if it be a body in a patent, is a matter of routine, is a matter which the ordinary tools of the chemist will enable him to obtain, or is a matter which will be obtained in fact, if you follow the anticipatory directions contained in an earlier document, then there may be no subject-matter in the patent, although the contents of it do not appear in the way of anticipation. Then reliance is placed on Von Heyden v Neustadt and it is attempted to be said on the Plaintiffs' behalf in this case that the Defendants rely upon a mosaic within the meaning of that authority. All I can say is that it does not seem to me to be anywhere near what was laid down in the decision in that case. Here these papers, especially the more relevant ones, are one consistent whole; they are chapters in a series of disclosures on the particular topics which they deal with, which include those which are relevant in this case. Anybody reading one is referred by cross-references to the others, and, so far as I can see, the mosaic theory has no application at all. It is not suggested on behalf of the Plaintiffs that the law which applies to anticipation has any relation to the law applicable to subject-matter. As to subject-matter, Sir Arthur Colefax and Mr. Cripps have naturally had a good deal to say. They submit very confidently that in the case of a chemical patent, if the invention is novel and useful, subject-matter has nothing to do with it. That, again, in one sense is a truism. If there is invention and if it is novel and if it is useful, then it is not much use troubling about subject-matter. But the question here is whether there is any inventive step at all. To be novel in this sense the thing claimed must be new in the sense that invention was required to produce it, and in my opinion in this case there is no inventive step in the Plaintiff's Patent at all, having regard to what had been published to the world in the documents that I have read."

I turn now to the references to the Reiter patent upon which the appellants rely.
In the earlier Matson patent a reference to the Reiter patent appears under the heading "References Cited" and above the name of the United States Primary Examiner. Five United States patents are listed, one of them Reiter. This of itself would leave Reiter as an independent document as regards the earlier Matson patent, and a fortiori as regards the later Matson patent and the patent in suit.
Also, in the earlier Matson patent under the heading "Background of the Invention", it is said:

"It is well known that endless belt conveyers accumulate material thereon during operation and that, unless this material is scraped off either continuously or intermittently, the build-up interferes with efficient operation. Several such scrapers have been patented, primarily as evidenced by such U.S. Patents as . . . 3,342,312, (the Reiter patent) but all of these operate on the principle of cleaning the under or bottom surface of the return run of the belt, because, obviously, to scrape the top surface of the upper or delivery run is merely to scrape off the material being conveyed. So far as is known, no patentee has recognized the need for scraping the inside of the belt; that is, either the underside of the delivery run or the top side of the return run." (Emphasis supplied.)

This teaches away not towards the Reiter patent, as disclosing something which does not recognise a need to be met by the earlier Matson patent. As Burchett J. put it, the reference is simply dismissive. To read it with the patent in suit would indeed be to offend the precepts which forbid the assembly of mosaics.
There is a reference to the Reiter patent also in the Complete Specification of the patent in suit. The reference is in the opening passages of the Specification:

"This invention relates to a belt cleaner mounting arrangement. Many varied arrangements have been provided in the prior art for mounting conveyer belt cleaners on a support member mounted transverse to the direction of conveyer belt travel. All of these arrangements have presented certain problems with respect to repair or replacement of individual blade elements. Sometimes wiper blades are carried on one end of a torsion spring. The other end of the spring is affixed to a transverse support. Such an arrangement is illustrated in U.S. patent 3,342,312. As the wiper blades wear, periodic replacement is required. Occasionally a wiper blade becomes damaged during regular use and the individual blade must be replaced. In either of these situations, the conveyer belt must be shut down and one of two alternatives is presented to the belt operator." (Emphasis supplied.)

There follows an identification of what are indicated to be two disadvantages of this prior art. The Specification continues by stating:

"It is therefore an object of the present invention to provide a belt cleaner mounting arrangement which will obviate or minimise the foregoing disadvantages in a simple yet effective manner or which will at least provide the public with a useful choice."

The appellants rely upon the Reiter patent as disclosing the sixth integer in claim 1 of the patent in suit. (In fact, Burchett J. found to the contrary, and I deal with this holding later in these reasons.) But plainly the Reiter patent is referred to in the course of pointing out the alleged shortcomings in the prior art and the teaching is away from the Reiter patent. This is very far from placing reliance upon that patent and from disclosure of "one consistent whole", as in the Sharp & Dohme Case. Accordingly, I would treat the prior specifications relied upon as independent documents.
On that basis, I turn to consider whether the appellants have made out their case challenging his Honour's findings against them on novelty.
Claim 1 of the Patent
As I have indicated, on the appeal it was accepted by both sides that if the attack upon claim 1 of the Patent, for lack of novelty, was not successful then any attack upon the other claims also would fail. Claim 1 comprises six integers, all of which were treated by both sides as essential. I set out below the text of claim 1 with interpolations to indicate each integer:

"Apparatus for cleaning a conveyor belt comprising:

(i) a linearly extending support member adapted to be positioned beneath the conveyor belt in use and generally transverse to the direction of the conveyor belt travel;

(ii) at least one sleeve member mounted on the support member for sliding movement therealong,

(iii) the sleeve member being arranged to cooperate with the support member to prevent rotation of the sleeve about the support member when mounted thereon,

(iv) mounting means on the sleeve members,

(v) one or more belt cleaning elements mounted on the mounting means, and

(vi) an adjusting element operable on the support-member for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt."

The invention claimed in claim 1 is thus for a new combination, the integers being so arranged and related that they work together to produce a single and new result. If that result was new and was not obvious, then the claim would be valid notwithstanding that each of the integers was known before the priority date; see Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 213, per Windeyer J. In the present case, Burchett J. found that the combination was not obvious. That finding was not challenged on appeal. That being so, and given the state of the authorities on novelty, it was somewhat beside the point for the appellants to submit that each of the various alleged anticipations destroyed novelty, even though it disclosed less than all of the integers of claim 1, and to submit this was so because to supply the missing integer would have been obvious. Nor, looking at the other way the case was put, would one ordinarily describe the addition of a missing integer of a claimed combination, not being an inessential integer, as the substitution of a mechanical equivalent; for there would be lacking that for which the "substitution" was made.
The Later Matson Patent
The first anticipation relied upon is the disclosure in the later Matson patent. Burchett J. held that in this patent there was no disclosure of either the second or sixth integer. These holdings were challenged by the appellants, to some extent upon fresh points as to construction of this patent.
The question, in accordance with the authorities which I have discussed, is whether the disclosure in an alleged paper anticipation such as the later Matson patent shows to a reader with ordinary knowledge of the subject the whole of the claimed combination. In the passage from C. Van der Lely NV v Bamfords Ltd. (1963) RPC 61 at 71 set out earlier in these reasons, Lord Reid was dealing with a photograph which clearly showed all but one of the integers of a claimed combination. The combination was a hay rake. His Lordship held that "the typical skilled man" would infer from the photograph that the wheels were rotated by contact of their teeth with the ground, this being the crucial integer in the combination. Lord Reid rejected the submission that there could not be an anticipation unless the photograph "clearly and unmistakably" (a phrase drawn from earlier authorities I have already discussed) showed that the wheels were ground driven; rather, "the anticipating material must be as good for practical purposes as the material in the appellant's specification".
Lord Reid was at pains to point out the importance of evidence in resolving such an issue. The question was what the eye of the man with appropriate engineering skill and experience would see in the photograph. His Lordship said, (1963) RPC at 71:

"(T)he judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance. The photographs must be looked at through the eyes of the typical addressee of the appellants' specification - the kind of person who would be expected to make a machine of this kind."

These words are to be borne in mind where, as in the present case, the appellant's submissions invited a close analysis of the drawings and descriptions constituting the alleged anticipations. I have already referred to what was later said on the subject by the English Court of Appeal in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 485.

The evidence in this respect was strikingly deficient. In substance, what the appellants were seeking to have this Court do on appeal was substitute its view, unaided by evidence of the category I have described, for the construction placed upon the later Matson patent by the learned trial judge.
Does the later Matson patent disclose a combination including at least one sleeve member mounted on the support member "for sliding movement therealong" (the second integer)? The respondents submit that his Honour correctly read the later Matson patent as teaching away rather than towards inclusion of such an integer.
His Honour referred to the abstract of the later Matson patent which is in the following terms:

"An improved mount for a conveyor cleaner arm featuring a split tube about a torsionally elastic torus and wherein the arm is rigidly secured to the tube, as by welding, across the split or gap so as to fix the gap dimensionally whereby the gap provides a keyway to receive a key on the exterior of the torus."

"Torus", used as an architectural term, is a large convex moulding, as at the base of a column; in geometry it describes a surface or solid generated by the revolution of a circle about any axis (The Shorter Oxford English Dictionary, Vol. II, p 2331). His Honour's reading of the specification of the later Matson patent satisfied him that it referred to a sophisticated means of elastically mounting the scraper blades and that the invention was not concerned with the problem of the ready removal of the entire mount, bearing the individual blades, from the rigid support member in a simple fashion without going under the conveyor; it is this which was the important aspect of the patent in suit. Burchett J. concluded that when the specification of the later Matson patent was studied, it became apparent that the references in it to axial assembly and disassembly were not references to the attachment to the support shaft at all, but to the assembly and disassembly of the complex elastic mount itself. The mount was attached to the support shaft on what the specification described as "brackets". His Honour concluded:

"In the first preferred embodiment of the later Matson patent, the support shaft is shown as of square cross-section, and the bracket is fitted to it by an attachment which encompasses it, having the same cross-section. I do not doubt that in some contexts that attachment could be described as a sleeve. In the case of the specification of the later Matson patent, however, it is shown with a bolt going through it and the support shaft, so that it is firmly attached and cannot slide at all. There is no suggestion in the specification that it is intended to be slid into position, or out of position, at any time during the period when the cleaner is installed. To the contrary, the emphasis in the specification upon the axial assembly and disassembly of the part attached to the bracket makes it clear that the intention is to effect those operations with the bracket already in place. There is nothing to suggest that it would not be fixed prior to the installation of the support shaft, and retained at all times until after removal of the support shaft, should that event ever occur. That there is no thought of a 'sleeve member mounted on the support member for sliding movement therealong' is also confirmed by a second preferred embodiment, in which the bracket could by no stretch of the imagination be described as a sleeve member. In that case, it involves a clamp gripping a tubular support shaft, to which it is immovably fixed by the tightening of two bolts, one on each side." (Emphasis supplied.)

On the appeal, the appellants directed criticism to the sentences to which I have given emphasis in the above passage from his Honour's judgment. In the first of the emphasised passages, his Honour was referring to a passage in the complete specification which is to be understood with reference to figures 2 and 3 of the accompanying drawings, or preferred embodiments. The interior of the torus is described as being affixed to a rod like member and it is said that this member "may be confined at opposite ends by cotters . . . and the brackets may be likewise confined by cotters . . .". His Honour's reference to a bolt is, in my view, to be understood as a reference to these cotters. A cotter is a pin or wedge slitted or driven into an opening in order to secure something or hold the parts together; a cotter pin is a cotter with a split end which is spread after being pushed through the hole to prevent the cotter from working loose: "The Macquarie Dictionary", p 426. The question, as counsel for the respondents put it, really is whether in figures 2 and 3 the cotter is shown as going through the bracket or sleeve as well as through the support shaft. In figure 2, the cotter is shown as going only through the support shaft. Counsel for the respondents urged that if one read figure 3 with the text of the specification, it was plain that the cotter went through both the bracket sleeve and the support shaft. Counsel for the appellants disputed this.
In the absence of any evidence as to how a skilled reader would look at the drawings figures 2 and 3 in conjunction with the text of the specification, I am not prepared to find against the patentee and to find that the cotters do not go through both the bracket or sleeve and the support shaft. This would mean that in order to give the necessary movement required for integer 6, it will be necessary to bend the cotter pins straight so that they might be removed.
I turn to the second passage to which the appellants directed criticism. The appellants submit that all that would have to be done would be to stop the operation of the apparatus and loosen the bolts; the clamp then would not grip the tubular support shaft so strongly as to impede a sliding movement. The second integer, as Jenkinson J. pointed out in argument, uses the word "for" in a purposive sense so as to indicate adaption or suitability for attaining a certain result; see Blanco White, "Patents for Inventions", 4th Ed., para 2-213. In my view, one could not fairly describe the disclosure as one of a sleeve member mounted on a support member "for sliding therealong".
There is no disclosure of the second integer in the later Matson patent.
The appellants conceded that in the later Matson patent, the sixth integer of claim 1 of the patent in suit was not "expressly" to be found. That is to say, there was no "express" identification of "an adjusting element operable on the support-member for bringing the belt-cleaning elements into engagement or out of engagement within the conveyor belt". (Hence the importance attached by the appellants to relaxing the prohibition upon "mosaics".) However, the appellants submitted that it was obvious that there would need to be some means whereby the scraper blades might be brought into and out of engagement with the conveyor belt, and that there were numerous examples of such means having been known and used in Australia prior to 1977. For example, in his affidavit sworn 15 August 1988, Mr. Bowden, speaking of the sixth integer in claim 1, had said:

"In my experience all conveyor scraper systems, even the most primitive type of conveyor belt system, have some means, normally operable on the support member, for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt. This was commonly achieved in and prior to 1977 in Australia by counter-weighted arms, sprung loaded arms, or adjustable brackets attached to the support member."

So much may be agreed, but the ingenuity of the combination claimed in claim 1 being conceded by acceptance of Burchett J.'s finding on the issue of obviousness, it is not to the point to augment the disclosure in a piece of prior art such as the later Matson patent, by saying that the missing integer was something that was known. Nor would it be the case that to add it would be to supply a "mechanical equivalent".
The appellants then submitted that the torus itself constituted the adjusting element, (the sixth integer of claim 1), even though not claimed to be such in the later Matson specification. Counsel for the respondents submitted that whilst the torus might adjust the tension as it flexed, it did nothing to bring the cleaning element into or out of engagement with the conveyor belt; it was not an adjusting element operable on the support member, for bringing the cleaning element into and out of engagement with the conveyor belt. There appears to be some substance in this response to the appellants' submission. But that submission was not put below. In the absence of evidence that a skilled addressee would so read the patent in suit and the later Matson patent, the argument should not be entertained on this appeal.
The Reiter and Sinden patents and the Stephens-Adamson Cleaner
His Honour introduced his discussion of these alleged anticipations as follows:

"The Reiter patent relates to a cleaner the manufactured version of which was the Stephens-Adamson cleaner, . . . and there was evidence that a number (though perhaps not many) of these had been sold in Australia prior to the priority date. Another U.S. patent, for the earliest version of the Stephens-Adamson cleaner, was referred to as the later Sinden patent. The specification of that patent became open to public inspection in the Australian Patent Office, Canberra, on 27 February 1958. It was not suggested by counsel for any party that, for present purposes, a significant distinction should be drawn between the two patents relating to cleaners of the Stephens-Adamson type. Each involves a supporting pipe transverse to the conveyor belt, held at either end by attachment to a vertical support with a series of holes drilled in it, so as to make provision for raising and lowering the pipe. Another support, of a length at least equal to the width of the belt, rests on the supporting pipe. That other support is called, in various parts of the specification of the Reiter patent, 'the supporting frame', 'a support adapted to be mounted transversely of the belt to be cleaned', 'the support', 'an elongated support member, holder or cross angle'. It is of L-shaped cross-section, and has fixed to it a number of C-clips (catalogues with illustrations of the Stephens-Adamson cleaner show two C-clips), so that when it sits on the pipe support the two surfaces presented by its L-shaped cross-section encompass about half of the circumference of the pipe support, which the C-clips enable it to grip by partially completing that encompassment. As the specification says: 'The holder . . . is mounted to rotate and to slide on the supporting pipe . . . by a plurality of C-clips . . . fixed to the holder . . .'

At one end of the holder there is a mechanism comprising a lever, arcuate slot, and wing nut, by means of which the scraper blade pressure may be regulated by rotating the holder on the pipe support. In the Reiter patent, the arms bearing the scraper blades are 'fixedly connected to the supporting frame', that is to the holder. The specification refers to a method for 'fixedly connecting one end portion to the support' by the use of mounting eyelets by which it is bolted to the support. The method of getting access to work on the scraper blades of the Stephens-Adamson cleaner for maintenance is simple, but it obviously requires space beside the conveyor belt comparable to the width of the belt itself, for the holder (with its attachments) has to be slid off the pipe support, after removal of the wing nut on the bolt in the arcuate slot which fixes the whole apparatus in position."

Integers 2 and 3 of claim 1 of the patent in suit require at least one "sleeve member" mounted on the support member "for sliding movement therealong" and the sleeve member to be arranged "to cooperate with the support member to prevent rotation of the sleeve member about the support member when mounted thereon".
Burchett J. held that the holder with the C-clips did not disclose the second integer of claim 1 of the patent in suit; in his Honour's judgment, a piece of angle iron with an L-shaped cross section was not a "sleeve" within the meaning of the patent in suit. On the appeal, the appellants challenged this view. But, in any event, in order for the appellants to succeed it would be necessary for them to show that there was an anticipation as regards the third integer and that the sleeve member was arranged to cooperate with the support member to prevent rotation of the sleeve about the support member when mounted upon it. The appellants did not seriously challenge his Honour's finding that the Reiter patent required rotation of the holder about the pipe support as its means of achieving adjustment of the pressure exerted by the wiper blades on the conveyor belt. The apparatus was fastened in position and rotation was prevented, not by any co-operation between the sleeve and the support member (as required by the third integer of claim 1 of the patent in suit) but by the frictional force applied by the wing nut to the sides of the arcuate slot formed in the lever. The appellants did assert before us that the Sinden patent did disclose the third integer of claim 1. This apparently was not put to his Honour and was not assisted by any evidence.
Further, his Honour held that in any event, even if the holder (with or without the C-clips) is a sleeve, then the prior disclosures lack the sixth integer of claim 1 of the patent in suit. This was because the adjusting element is not operable on the support member but on the sleeve. His Honour reached this conclusion in the following passage:

"The Stephens-Adamson cleaner also (i.e. like that of the invention claimed in the patent in suit) has a support member which may be adjusted by rotating it to achieve contact with the belt, but in that case the method of removal for maintenance is by removal of the entire support member with its attachments bearing the scraper blades. In the case of the Stephens-Adamson cleaner, the pipe support is really the means by which the support member is held in position beneath the conveyor belt. If, indeed, the pipe support is regarded . . . as the support member, on which the holder is to be regarded as a sleeve, then the Stephens-Adamson cleaner does not have the (sixth) integer of claim 1 (of the patent in suit). For that integer is 'an adjusting element operable on the support member for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt.'(His Honour's emphasis). Although it is true that the Stephens-Adamson cleaner involves a crude means of adjustment of the position of the support pipe by raising or lowering its attachment to its vertical supports, this is certainly not provided 'for bringing the belt cleaning elements into engagement or out of engagement with the conveyor belt'. Given that the Stephens-Adamson equipment is held in a suitable position beneath the conveyor belt in the way mentioned, the method by which the belt cleaning elements are brought into or out of engagement with the belt is the rotation of the holder by means of the lever arm, and the fixing of the rotated position with the wing nut. (Emphasis supplied.) If the holder is not the support member, it is clear this is not accomplished by an adjusting element operable on the support member, but by an adjusting element operable on the holder, that is, on the (appellants' arguments), on the sleeve member. As it is expressed in the specification of the Reiter patent, 'the pressure handle (i.e. the lever) positions the wiper blade and springarm assemblies for proper blade pressure and other vertical adjustments'."

On the appeal, the appellants challenged the reasoning in this passage, particularly in the portions I have emphasised. There was, it was said, another method for removal for maintenance and this did not involve removal of the entire support member. Counsel for the appellants sought to persuade the Court of this by reference to what was said to be a grub screw disclosed in figure 6 to the specification for the Sinden patent. His submission was as follows (Transcript p 43):

"Your Honours will see at the bottom of figure 2 the adjusting lever 20, and where the adjusting lever 20 joins the support member there is a join which is not given any numerical notation but, I am instructed, consists of a grub screw which can be removed at that point and then the angle - not the support member - but the angle, can be slid out the other way."

Of this submission, several things may be said. It appears not to have been put below, and it invites us to discern something to which the patentee of the Sinden patent did not attach sufficient significance to identify by number so as to pick up the body of the specification. Further, we are invited to construe the drawing being figure 6 without any assistance by evidence from a skilled addressee. This is a further example of the deficiencies in the appellants' case to which I have earlier referred, with particular reference to what was said by Lord Reid in Van der Lely's Case (supra). The Court should not enter upon the path put before us by the appellants. I should add that from my unskilled appreciation of figure 6, there appears some force in the respondents' submission that the angle may be welded to, not grub screwed in, the arm or support member.
The appellants asserted that if, as in my opinion is the case, the appellants have not shown any anticipation including the sixth integer of claim 1, it would have been a mere workshop improvement to add that integer. As I have already indicated in another context in these reasons, that is an impermissible approach to the issue of alleged anticipation in this case.
It follows that, without finally deciding whether his Honour was correct as to the meaning of the term "sleeve", and even if the appellants were correct that the Sinden (although not the Reiter) patent disclosed the third integer of claim 1, nevertheless there is no disclosure of the sixth integer (in the sense required by the authorities) by the Reiter and Sinden patents and the Stephen-Adamson cleaner.
The Trelleborg, Firestone, Skega and Jerry Rig Cleaners
Burchett J. described these as the T-slot cleaners and said that they shared one basic principle. All use a counterweight or spring to exert the appropriate degree of force for the application of a hardened rubber scraper bar or bars to the underside of the conveyor-belt. On the appeal, the Court was invited to have particular regard, as an appropriate example, to the drawings and description of the Skega belt-scraper in the brochure Exhibit WTB-3.
His Honour gave the following description of the T-slot cleaners, in a passage not challenged on appeal:

"Each of these consists of a support shaft transverse to the belt, on top of which is fixed firmly a thick bar of hardened rubber, or in the case of the Trelleborg cleaner a series of shorter lengths of such bars arranged in a manner thought to provide maximum cleaning effect. In each of these cleaners, the method of fixing the rubber bar or bars to the support is by bolting. The bolts of course do not pass through the entire thickness of the rubber bar, which would result in the bolt head scoring the underside of the conveyor belt. Even if the bolt head were countersunk, the same result might ensue after a period of wear. The method adopted, in each case, is to have a T-shaped channel cut in the bottom of the rubber bar to take the head of a T-bolt, by which the bar is then bolted to its support. The bolt passes through the support, to be tightened by a nut underneath. In the case of the Trelleborg cleaner, the T-shaped channel, which is described in the specification of the Trelleborg patent as 'an outwardly open undercut groove for a bolt', is bonded to the rubber bar by vulcanization."

The parties (unusually for this litigation) led expert evidence on the question whether the T-slot cleaners failed to disclose the second integer of claim 1, viz. "at least one sleeve member mounted on the support member for sliding movement therealong". His Honour preferred the evidence of the respondents' experts, Professor Thomas and Mr. Dunn insofar as it conflicted with that of the appellants' expert, Mr. Frost, in reaching his conclusion that the T-shaped channels or slots were not "sleeve members" or the functional equivalents thereof, mounted for sliding movement along the support member. His Honour decided that the function of the T-slot is to provide a convenient means for attachment of the bolts and it is not relevantly adapted for sliding movement. The appellants pointed to other evidence that in practice the scraper bars would be slid onto the heads of the T-bolts before the bolts were tightened by a nut underneath. But Mr. Dunn, who had over twenty-five years practical experience, said (and this was accepted by his Honour) that this movement would be achieved only with a great deal of difficulty particularly where the scraper bars were to be slid off rather than on to the heads of the T-bolts; his reasons were given in paragraph 4 of his affidavit.
I see no reason for departing from Burchett J.'s conclusion on this point. But it had been submitted to his Honour that if there was no sleeve member in these alleged anticipations, it would have been obvious and a mere workshop improvement to supply one. His Honour held that even if Griffin v Isaacs (1942) 12 Australian Official Journal of Patents 739, applied in its full vigour (as on the then state of authority it appeared to do) there would be no anticipation of claim 1 of the patent in suit. Nothing has been put on the appeal to throw that finding into doubt.
Accordingly, the T-slot cleaners do not amount to anticipations. In these circumstances, it is unnecessary to consider whether his Honour erred (as by their Notice of Contention the respondents contend) in not also finding that there was a lack of anticipation for want of disclosure of the sixth integer of claim 1 of the patent in suit.
In my opinion, the appeal should be dismissed with costs.

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19 FEBRUARY 1990