MANNER OF MANUFACTURE
204 Austal's case on lack of manner of manufacture mirrors to some extent its submissions on other grounds of opposition.
205 It is said that the inventor has provided no consideration for the monopoly as the claims travel beyond any invention actually made. Austal relies on Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 263-4 ('Olin') and May & Baker Ltd's Application (1948) 65 RPC 255 at 288 and The Mullard Radio Valve Company Limited v Philco Radio & Television Corporation of Great Britain (1935) 52 RPC 323 at 347-348 and submits that, although analogous to a fair basis objection, it is available also under the rubric of manner of manufacture.
206 In respect of this argument, Austal says that the only innovative advance is confined to the specific hull shape of the preferred embodiment. As no other specific hull shapes are advanced or described with any experimental support, it is said that there is no consideration for a monopoly in them.
207 In Bristol-Myers, Black and Lehane JJ concluded at [30] that the threshold requirement of inventiveness of s 18(1) of the Act (which has been referred to as the requirement of a manner of new manufacture) as set out in NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 ('Mirabella')is determined by whether, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious. That is, if there is an admission on the face of the specification. It may be that, in context, it was this potential argument to which the High Court referred to in Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274 ('Lockwood') at [35].
208 In Lockwood the High Court at [59] reinforced the principle stated in Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701 at 709 per Rich, Dixon, Evatt and McTiernan JJ:
'"When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved."'
And continued at [60]:
'For the purposes of s 40(2)(a), it is not necessary for the inventor to disclose all the alternative means; it is enough that there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty…'
209 Further, at [69], the High Court made it clear that, in considering fair basis, the requirement for "a real and reasonably clear disclosure" does not limit disclosures to preferred embodiments. As noted in Doric at [93], a statement in the specification that the invention is not limited to the preferred embodiment has been held sufficient for courts to decline to construe the claims as so limited.
210 A claim that claims more than the preferred embodiment where the specification states that the invention is not so limited is not for that reason claiming an invention that is not properly the subject of letters patent.
211 Mr Nicholas submits that the claims define a hull for multi-hull seagoing vessels by reference to a combination of clearly defined physical features and characteristics and that the claimed practical utility of the product is clear from the specification. I agree. The combination of characteristics of the SWATH and a conventional catamaran produces a new and useful hull shape, said to provide the advantages as specified in the specification with respect to resistance, seakeeping and stern load stability. On this basis, as such it is proper subject matter for the grant of letters patent (National Research and Development Corporation v Commissioner of Patents (1959) 102 CLR 252 ('NRDC') )
212 Mr Nicholas submits that it cannot be said that there is a lack of inventiveness on the face of the specification and the threshold "lack of invention" test must fail for the reasons set out in Bristol-Myers at [45]. The case sought to be made out is one of obviousness. Evidence has been directed to the nature of the invention and the question of advances over the prior art hull forms. Characterisation as an absence of manner of manufacture, it is submitted, is inapt (Mirabella at 454; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243 at 253 - 255 ('Ramset'); Bristol-Myers at [19] - [31]).
213 Reliance is placed by Mr Hess on the infinite number of hull shapes (or as it is put, no shape at all) that fall within the parameters of the claims. This is also framed, perhaps as a corollary, as the parameters having no clear relevance to the invention. It is said that these failings are clear on the face of the specification and that the parameters are arbitrary, without any explanation of how they define an innovative hull shape. It is said that the claims do not define a "manufacture", as the description is of an abstract concept absent the usual parameters for defining a hull shape, in circumstances where the parameters given permit shapes that are clearly absurd.
214 I do not accept the factual basis of that submission. Dr Renilson has explained the relevance of the mathematical parameters to the concept of the invention. It is not to the point that the description does not use what Austal says are the usual parameters for hull design.
215 In part, this aspect of Austal's submission is based on the same evidence of the range of possible hull shapes that are encompassed by the claims as is relied upon for the ground of lack of utility.
216 As Austal concedes in its submissions on utility, a claim should not be construed so as to arrive at a ridiculous or concocted result. A specification should not be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 602 per Menzies J ('Welch Perrin')). A purposeful adoption of a hull form that would obviously malfunction is not an appropriate way of testing utility (Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1975) 49 ALJR 12 at 19 per Stephen J ('Washex Machinery')).
217 Austal submits that any inventive advance is in the specific hull shape of the preferred embodiment, uniquely defined by the body plan of figure 1 and that no other specific hull shapes are advanced or described with any experimental support. It is said that there is no consideration to support the multitude of hull shapes that fall within the parameters of claims 1 to 9.
218 In Flexible Steel Lacing Company v Beltreco (2000) 49 IPR 331 ('Beltreco'), Hely J observed at [86] that patent drawings are not designed to illustrate precise measurements unless so stated. They illustrate the concept. That same proposition has been supported in respect to this patent application by the evidence and by the reference in the specification to figure 2, where the curves are said to be characteristic of the invention. The specification also makes it clear that the exemplifying embodiment is typical of the invention but that persons skilled in the art can apply it to hulls of other sizes and under other conditions. It is not necessary for a patent application to provide experimental support for each embodiment covered by the claims.
219 There are numerous examples in the specification that make it clear that it was not intended to limit the invention to the preferred embodiment, which is described in terms of a preferred embodiment of an inventive hull structure and an "exemplifying" or "typical" hull structure and that persons of normal skill would be able to practice the invention on hulls of other sizes and under other conditions. There is no reason to construe the claims as limited to the preferred embodiment (Lockwood at [92]-[93]).
220 Austal says that, as the parameters of the prior art vessels are very close to or only marginally different from those of claim 1, it is apparent to the skilled addressee that, on the face of the specification, there is no innovation described.
221 Austal points to evidence where the Stena witnesses acknowledged the small numerical differences between the individual parameters of the prior art vessels and those of the claims but not to evidence that those witnesses saw innovation in the hulls of the specification. Indeed, it is acknowledged in Austal's submissions that the hull shape of figure 1 does represent a unique hull shape with different parameters which results in significant improvement in seakeeping.
222 As the parameters are only marginally mathematically different, Austal maintains that the hull shapes are "old". Consequently, the claims are said to comprehend an old product used for an old purpose with no new result being achieved by any marginal difference in the parameters of the claims. This ignores the fact that to the extent that "old" is the opposite of "novel", Austal has not established that the combination of the claim is old, nor that it is old in the sense of obvious.