Linotype Co Ltd (In Liquidation) v Mounsey [1909] HCA 39

Linotype Co Ltd (In Liquidation) v Mounsey [1909] HCA 39 - HCA 1909 case summary — Zoe

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indicating letters. his is all that is necessary to keep them legible, but the invention includes the device being large eng to keep the whole edge clean, if desired." 3 The applicant says in his specification that he is aware that single brushes have been fixed on or behind the distributor beam, by which one side only of the matrices can be cleaned, and - disclaims "the sole right of niaking such." Under the English patent law opposition to the grant of a patent on the ground of want of novelty is not allowed. In other countries, eg., the United States of America, novelty isa question _ to be investigated before the grant. The same rule was adopted in Queensland before the establishment of the Commonwealth, and - is adopted in the Commonwealth Patents Act 1903. The reasons for the alteration are sufficiently obvious. See. 56 allows opposi- tion to the grant of a patent on any of six grounds and no others, two of which are (¢) want of novelty, and (jf) prior pub- lication. What is commonly and conveniently called want of - subject-matter is not one of them. " Want of subject-matter" - really means that the alleged invention is not a "manner of ; new manufacture," and involves two questions, whether it is a "manner of manufacture," and whether it is new. An objection - that the alleged invention is for an idea only without any means - specified for giving effect to it would fall under the first head. The objection that it was already in use or had been already patented would fall under the second. Proof of want of novelty - is sufficient to support an objection for want of subject-matter, - but it does not cover the whole ground open under that objection. Both terms have long been in use in patent law. In my opinion the word "novel" in see. 56 (e) is to be read in the sense in which it has always been used in patent law. As applied to the present case it means that the alleged invention is substantially - identical with a process or "manner of manufacture" already known to be public, or, to adopt the words of Sir R. Webster in In ve Todd's Application (1), that the difference is not sufficient to differentiate that which had gone before from that which i 15

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which is not quite the same, but is analogous to the manner or Movssey. the purpose in or to which it has been hitherto notoriously used." Grisith c.3. In Gadd vy. Mayor, &e., of Manchester (2), cited in Williamson v. Patterson (3), Lindley L.J. said: - *" A patent for the mere new use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad, and cannot be supported. If the new use involves no ingenuity, but is in manner and purpose analogous to the old use, although not quite the same, there is no invention. . . . On the other hand, a patent for the new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been the first to see and overcome by some ingenuity of his own." Morgan & Co. v. Windover & Co. (4) (in the House of Lords), which was an action for infringement of a patent for affixing C-springs in front of carriages, affords a good illustration of the rule applicable to the issue of novelty. The defendant put in issue the novelty and the utility of the invention, and it appeared that such springs had already been used at the back of carriages. The following passage from Lord Herschell's speech (5) contains a clear exposition of the law applicable to such a case : - " Now, my Lords, if it had required mechanical ingenuity and skill to adapt the composite springs which had heretofore been used in the hind part of a carriage to the front part of a carriage, so that it was not the mere substitution in front in substantially the same way 5 as the substitution had taken place at the back, but that it needed some skill and ingenuity to adapt to the front part of the carriage that which had been applied to the back, I should have thought that there was sufficient subject-matter and that the patent could have stood. But when once it is admitted that all that can be claimed as new is the idea of putting it in the front instead of at the back, and that when once the idea was enter-

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edge and the " mould" edge respectively. The essential feature of Lock's invention is the automatic cleaning of the indicating edge of the matrices by means of a brush fixed on the side of the channel through which they pass on their round journey from the magazine back to the distributing box. The brush is placed at any portion of the channel which may be suitable for the purpose, and is so arranged that the indicating edge of each matrix must rub against it in passing. The applicant claims to register an invention which adapts the Lock system of automatic brushing to the cleaning at the same time of both edges of the matrix - the mould edge as well as the indicating edge. This is effected by brushes fixed in pairs opposite one another in the sides of the channel in two places - one or more pairs being attached to the intermediate elevator channel plate, and another or other pairs to the front and back plate of the distributor box. It is admitted that there is nothing new in the form of the brush or the method of attaching it to the plates, nor can it be contended that there is anything substantially new in applying Lock's method of auto- matically brushing one edge of the matrix to the cleaning of the other edge. The applicant in his specification, after disclaiming in substance the sole right of doing anything which could be effected by Lock's invention, states in these words what his own invention amounts to - " my invention having reference to double brushes placed on the intermediate elevator channel plate and on the distributor box of linotype machines." Taking, therefore, the applicant's own description, there are two features only, as it seems to me, in which he claims that his invention has gone beyond Lock's. First, in the use of brushes in pairs facing each other on opposite sides of the channel. Secondly, in selecting the point on the journey of the matrices at which the brushes are to be applied. As to the first, it may be conceded that the cleaning of the mould edge of the matrix is in one sense a different object from the cleaning of the indicating edge, which was the immediate object at which Lock was aiming. But Lock's invention was on the face of it capable of being applied to cleaning either edge or

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the most eminent authorities on patents as counsel, as Law Officer, as Master of the Rolls (1): - *JI have not to deal with subject-matter properly so called; that is to say, supposing Todd's invention to have been the first invention brought before me, it would not matter whether it showed no subject-matter, if it was a claim to that which had not been done before; 1 quite agree Ihave not to consider whether it is subject-matter or not. But when there is a previous anticipatory patent it is necessary to consider then indirectly the differences, and without saying whether those differences form subject-matter or not, to decide whether the differences are sufficient to differentiate that which has gone before from that which is now claimed." So here, the question is, is there a substantial margin in fact between Lock and Gardner's device and the applicant's ; and if there is, there is novelty, whether the novelty shows sufficient inventiveness or not. The same ground was taken by Sir John Rigby S.G. in In re Boult's Application (2); and Sir Robert Finlay S.G. in In re Wylie and Morton's Application (3). But in the case last mentioned, we have a good instance of the double use of the word "invention" - either a device properly patentable, or a device alleged to be patentable. In a previous patent, Gatty had specified for a dyeing process soluble salts of chromium and soluble salts of iron. The applicants claimed bisulphite of chromium (which is a soluble salt of chromium) and bisulphite of iron (which is a soluble salt of iron). The applicants had added nothing, whether showing inventiveness or not; and it was held, therefore, that the patent should be refused. Sir Robert Finlay S.G. said (4) : - * I am not satisfied that the applicants have shown any invention with reference to the process which they propose to use." The meaning in this case is obvious; for there was nothing additional at all. There was no "invention," for there was nothing more than in the prior patent. The same explana-

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found in an opponent's patent; another was in daily use: " When : those parts are struck out nothing remains which, to my mind can properly form the subject-matter for a patent." ' The case of Saxby v. Gloucester Waggon Co. (1), is at first - sight inconsistent. The plaintiff brought an action for infringe- : ment of his patent of 1874 for interlocking apparatus in railway a points and signals. But, under a plea of want of novelty, it was proved before a referee that every element of the patent was to be found in previous patents of 1870 and 1871, and there was no new result. The two alleged inventions were substantially _ identical in fact. This would be conclusive against the plaintiff, even without a plea of "not sutlicient subject-matter for a patent." But counsel for the plaintiff urged that his invention, as it combined the previous patents, was such a substantial im- provement on what had been already known as to render it the proper subject of a patent. The Court of Queen's Bench, speak- ing through Field J., held against the plaintiff, and diseussed the want of inventiveness as if it came under the defence of want of novelty. But the learned Judge was careful to point out that - both parties admitted "that the question to be decided was one of fact, whether or not the invention specified was such a substantial improvement on what had already been known and published as to render it the proper subject of a patent" (2). This admission, such as it is, goes no further than the plaintiff's counsel's view of expediency in a particular case, where want of inventiveness appeared under another plea,and would be as dangerous if taken thereunder as under the plea of want of novelty. Pleadings are merely means to an end; and in this case the parties and the Court were content to discuss the point as to inventiveness under the plea as to novelty. Moreover, nothing is more natural than to confuse in ordinary talk novelty in inventiveness with novelty in actual manufacture ("new manufactures," within the Statute of James I.); and yet the latter is the meaning of "novel" in the plea of not novel. his appears more clearly in the earlier cases when issues were more precise than they are now. In Walton v. Potter (3), it was held that, under the plea of want of

At a glance

Court

Decision date

Before

Source

Judgment (190 paragraphs)

Cited By (1)