Maeder v Busch [1938] HCA 8

Maeder v Busch [1938] HCA 8 - HCA 1938 case summary — Zoe

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The alleged invention is for a process for forming permanent waves in hair and for a means of producing permanent waves. Presumably, the means resides in the preparations described in claims which are appended to the specifications. Of the claims for preparations, two only are alleged to be infringed. They claim respectively "'a preparation for waving hair characterized by the presence of a dissolved sulphide" and "a preparation for waving hair characterized by the presence of a hydrosulphide, in particular ammonium sulphide." As a claim to a thing or substance, neither could possibly stand, and as claims for using the chemicals mentioned for the purpose of waving hair, even if they could bear that inter- pretation, they cannot have any greater, or, indeed, as much, validity as the claims for the process. The claims for a preparation may, therefore, be put aside. The three claims for a process upon which the plaintiff relies merit closer attention. His alleged inven- tion, which is the subject of a convention patent dating as from 13th June 1933, professes to give at least two advantages in the practice of the art of permanent waving. It makes it possible to wave the hair without a prolonged application of heat. The second advantage flows from the first. It consists in allowing the use of less elaborate implements for heating. It does not require an apparatus containing elements at a high temperature which must be brought in hazardous proximity to the scalp. The principle upon which it was said the methods so far in use depended was that of subjecting hair wound on a curler to an alkaline solution which was heated to boiling point. The curler with the hair so wound upon it was enclosed in some form of cylinder or small chamber heated, usually electrically, for the purpose. Machines were in use furnished with numerous cylinders or similar attachments into each of which the operator would introduce a curler with an appropriate quantity of the customer's hair wound upon it, while the customer sat beneath until the required heat had been long enough applied.

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plaint is made on behalf of the appellant to the effect that his counsel lost an opportunity of discussing before his Honour the significance and credibility of this evidence in consequence of the course which was taken at the trial in deference to a conclusion against the plaintiff, which the learned judge announced, based upon the meaning ascribed to the specification. On the other hand, we had the advan- tage of hearing an argument in which the evidence as it is recorded was examined and criticised ; and I think it would be difficult for any tribunal of fact to adopt any view of the evidence more favour- able than that which for the purpose of my decision I am prepared to assume. Stated briefly and in general terms that view is as follows : - In at least two establishments in Melbourne a weak solution of ammonium hydrosulphide was regularly employed for long periods at a stretch. It was used in the main because supplies of tablets for a solution prepared by the makers of one kind of over- head apparatus were difficult to obtain. It was also sometimes used because a particular customer's hair was of a type difficult to treat and the sulphide was known to give a better result. It would have been used more but for the fact that it gave off an unpleasant smell. In one or two other establishments a more haphazard or occasional use was made of the same sulphide. In Adelaide an experimental use was made of solutions of barium sulphide and of sodium sulphide. None of those who used any of the three sulphides had any knowledge of chemistry. The solution used was weaker than that employed by the plaintiff. To a large extent in turning to it they were guided by the general use in the trade of ammonium hydrosulphide. They knew what results it produced, but had no knowledge of why it did so. In fact the alkalinity of the weak solution may have been the cause of its efficacy, and not other properties peculiar to soluble sulphides. The degree of heat applied was in all these cases high or prolonged. In some instances the heat was produced chemically and not electrically. Little importance can attach to the question whether the hair was moistened before or after winding, but the fact appears to be that sometimes it was done before and sometimes after. In contrast to this use of sulphides, the plaintiff sought to

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process, in the second place, it employed a greater concentration in the solution, and, in the third place, it depended, not on alkalinity, but on the properties peculiar to sulphides. For the last he relied upon recent scientific explanations or hypotheses as to the operation of sulphides upon the keratin molecular structure. He did not pretend that, in making his alleged invention, he was indebted to these theories, but he relied upon them as suggesting that his process differed in its scientific basis from that followed in the instances of prior user set up. On behalf of the plaintiff it is contended that what took place was at most but a fortuitous and accidental user which did not really disclose the invention. In this view I cannot agree. It is, in my opinion, answered by the plaintiff's own specifica- tion and by the breadth of his claims. In the authority chiefly relied upon, namely, the decision of Astbury J. in Boyce v. Morris Motors Ltd. (1), the alleged prior user was a casual and temporary application of the idea embodied in the subsequent invention in order to fulfil a quite different purpose. In the present case the prior user was an adaptation to precisely the same purpose of the same ordinary trade knowledge or practice as the plaintiff made the source of his invention ; applied, moreover, ina way which would now amount to an infringement of the plaintifi's claims. In the course of the specification the following passages occur : - ' It will be understood that it is possible to treat such hair with a built-in heater. and by such use the before-described curl formation is shortened. On account of the altered temperature it is of course necessary to change the concentration of the moistening bath in accordance with the temperature. In normal cases this would be far too high so that the temperature must of necessity be lowered." "The necessary concentration of sulphides stand in inverse proportion to the applied heat, that is. if a weaker concentration is used so the heating temperature must be higher, for instance 180 degrees C. When using a lower temperature it is necessary to strengthen the concentrate. With hair which shows more hardness it is necessary to use a stronger concentrate or a higher temperature than with thicker hair.

At a glance

Court

Decision date

Before

Source

Judgment (139 paragraphs)