Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65;

Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65; - HCA 1968 case summary — Zoe

[15]

"My invention relates to improved means and method for

handling, shipping and applying to stuffing machines, casings

made from animal intestines, which are used as containers for

foods, including sausages and other packinghouse products.

In accordance with present practice, casings, after being

cleaned and prepared for use, are usually gathered together

in bundles and salted for storage and shipping. Being very

small in their collapsed state, and very light and flexible

they become twisted and tangled and much time is consumed

in separating them and applying them, without tearing, to the

spouts of the stuffing machines in the sausage rooms. It is the

object of my invention to entirely avoid these difficulties, to

reduce the cost of shipping and handling, and also to provide

means whereby the casings can be applied quickly to the stuffer

spout without any possibility of tearing them. In carrying

out my invention an animal intestine, when cleaned and

prepared for use as a casing, is applied either by hand or by

a machine, to a collapsible, water-proofed tube . . . of suitable

material, such as paper, the tube being of sufficiently smaller

diameter than the casing . . . to permit the formation of

circumferential folds in the casing whereby a casing may be

mounted on a tube whose length is much less than the length

of the casing and less than the length of the spout of the stuffing

machine. After being mounted on the tube, the casing is dried

and the assembled casing and mounting tube is flattened. . . .

In this form casings may be closely and economically packed

for shipment and yet each will remain entirely free from

others and there will be no difficulty in separating them.

Prior to the application to the stuffing machine, the mounted

casings are immersed in warm water to again render them

soft and pliable, and then by pressure on the edges or otherwise,

the end of the mounting tube is opened to receive the end of

the stuffer spout . . . of the filling machine and is pushed

over the spout. The tube may be quickly and readily

withdrawn

from the casing which is then properly mounted on the

spout for filling in the usual manner. Of course the removal

of the mounting tube before the filling of the casing, is not

essential if the tube is prevented, by suitable means, from

slipping off the spout." (at p160)

[19]

8. It could hardly be made clearer than Mr. Flomen has made it that the invention which he and his colleagues assert consists solely in the provision of a tab or tabs for pulling a sausage-casing holder of a known kind on to a stuffing horn, and that the provision of an eye on each tab forms no part of the invention though it is seen to be useful either for engagement with a hook on the stuffing horn (if there happens to be such a hook) or for tying a number of holders together in a bundle. I shall have to consider whether a patent ought to be granted upon claims which extend to a holder with a tab, or a sausage casing unit with a tab, when the tab alone is the invention; but for the moment it is convenient to observe upon another important feature of the case, namely that the specification of the basic Canadian patent does not so much as mention the provision of a tab or ear for the purpose of being gripped in drawing the holder on to the stuffing horn. There is provision for an ear at one end of one or both of the walls of the holder, "having a connecting eye adapting it for temporary attachment to the stuffing horn" - "adapted to engage a hook on the stuffing horn". Of the twenty-one claims, some mention as a feature of the invention "an ear having a connecting eye", some "a connecting eye for connection to a sausage-stuffing tube", and others "connecting eyes" for other purposes. But none mentions a tab or ear without an eye in it, or mentions a purpose of the tab or ear save as the thing forming an eye. Nothing more is taught than that it is an advantage to have a connecting eye in an ear, that is to say a hole in a projecting piece of material. No one would gather from this document the idea of having an ear suitable as regards size and strength for being used as means of pulling the holder on to the stuffing horn. In my opinion, the Australian specification, so far as it claims a holder or unit with a tab adapted to be so used, as distinguished from one serving merely as the surround of an eye, is not "fairly based on matter disclosed in the basic application", and therefore the priority date of the claims is not, by virtue of s. 141, the date of the making of the basic application, namely 22nd April 1961, but is the date of lodgment of the Australian specification, namely 11th May 1961: s. 45. (at p162)

[23]

12. Moreover it appears from an affidavit of Thomas Lyall, which has put the Court in possession of some important information that was not before the Deputy Commissioner, that more happened in Australia before 25th May 1964 than the mere publication of the appellant's specification. A company of which Mr. Lyall has been a senior executive for many years is a Sydney manufacturer of sausage casings and a supplier of them to sausage manufacturers. It seems that until early in 1963 nothing in the foreign specifications of Brecht, Flomen or Vogt had led to any departure from the traditional course of supplying sausage casings in hanks. The sausage manufacturer soaked the hanks in water for some hours and then, after dealing with any tangles that occurred and at some risk of breakage, sleeved a hank on to the stuffing horn by pulling opposite sides of the hank apart at one end and working it up the horn by alternate hand-pulls of four to six inches per movement. The publication of the respondent's specification in 1961 had apparently caused no change in the practice (a licence of course would have been required for an adoption of the invention there disclosed), but early in 1963 Mr. Lyall's company heard of the appellant's invention for which the 1962 patent application had been made in the United States, and on 16th April 1963 it obtained from the appellant a licence to put up sausage casings by the appellant's method and to sell such casings in Australia. It proceeded to act on the licence, the method it used involving, as is said in Mr. Lyall's declaration, "a polyethylene sleeve or tube approximately thirteen inches in length and one and five eighths inches in flat width, having at one end a fold-sealed nose with a diagonal cut or opening on each side and the other end of the tube being cut back one to one and a half inches on each side to form two pull-tabs". In July 1963 the company commenced putting up, packaging and selling sausage casings according to this method ; and it still does so. The sausage manufacturers to whom the company has supplied such casings have always used them as above described. On these facts the objection of want of novelty must be sustained as regards each claim of the specification, even if it be read as claiming only the invention which Mr. Flomen says is disclosed. (at p164)

[24]

13. I return now to the requirements of s. 40 (1), namely that a complete specification (a) shall fully describe the invention and (b) shall end with a claim or claims defining the invention. If, as I find from Mr. Flomen's declaration, there was no inventive step taken unless it was in the provision of a tab or ear, one must consider whether an application for a patent should be granted, if there is no other valid objection to it, where the complete specification (a) in the body of it describes the invention as being of the entirety of a holder for casing gut, comprising a pliable water-proof sleeve for receiving a shirred length of casing gut, the sleeve being provided at one end with at least one tab, and (b) in each of its claims defines the invention in similarly wide terms. The provision of the tab or ear was at best an improvement on a known device, not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specification as being for a new combination of old integers ; they are for the known device of a sausage casing holder (or unit) with an improvement in a particular part of it, consisting of an extension of the walls with a cut-out or cut-outs made in it so that what remains of the extension, namely the tab or ear, may be used for gripping to pull the holder (or unit) on to the stuffing horn more easily and therefore more quickly than before. Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s. 40 (1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes ; and, secondly, that the claims themselves offend against s. 40 (1) by defining as the invention something that was much more extensive than the invention : see Fletcher Moulton on Patents (1913), pp. 85 et seq., Frost, Patent Law and Practice, 4th ed. (1912), pp. 236 et seq., May v. Higgins [1916] HCA 8; (1916) 21 CLR 119 . This is a ground upon which, in the public interest even if not for any other reason, the Deputy Commissioner could, and in my opinion should, have upheld the objections and refused to grant a patent upon the specification in its present form, even if no ground of opposition were established except that provided for by s. 59 (1) (i) : cf. Wadham's Application (1910) 27 RPC 172, at p 173 , and see other cases cited in Terrell on Patents, 11th ed. (1965), par. 439. I do not mean that in every case of opposition it is a function of the Commissioner to investigate for himself the question how the actual invention compares with the invention as claimed. What I have said is based upon the circumstance that the evidence of Mr. Flomen, one of the actual inventors, contains clear admissions, indeed positive assertions, of facts which leave no room for doubt that the specification both in its description and in its claims disobeys s. 40 (1). The nature of the disobedience is such that the specification is likely to mislead, and for that reason the application ought to be refused in the exercise of those general and inherent powers of the Commissioner and the Court which Lord Morton explained in Alderton and Barry's Application (1941) 59 RPC 56, at pp 61-63 , even if s. 51 (1) did not contain ground (i). (at p165)

At a glance

Court

Decision date

Before

Source

Judgment (27 paragraphs)

Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65; (1968) 119 CLR 156 (21 October 1968)

Parties

Legislation Cited (1)

Cases Cited (2)