Samuel Taylor Pty Ltd v SA Brush Co Ltd - [1950] HCA 44 - HCA 1950 case summary — Zoe

CTHHCA

Samuel Taylor Pty Ltd v SA Brush Co Ltd

[1950] HCA 44

High Court of Australia|1950-07-01|Before: Webb JJ, Australia Abbott J

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Source facts

Court

High Court of Australia

Decision date

1950-07-01

Before

Webb JJ, Australia Abbott J

Source

Original judgment source is linked above.

Judgment (19 paragraphs)

[1]

High Court of Australia Latham C.J. McTiernan and Webb JJ. Samuel Taylor Pty Ltd v SA Brush Co Ltd [1950] HCA 44

[2]

The appellant, Samuel Taylor Pty. Ltd., is the assignee of Australian letters patent No. 106694 in respect of improvements in or connected with brooms, brushes and the like. The company threatened proceedings against the respondent, S.A. Brush Company Ltd., for infringement of the patent. The latter company then took proceedings for alleged groundless threats of legal proceedings under s. 91A of the Patents Act 1903-1946. The appellant counterclaimed, alleging infringement of the patent, and the respondent in reply alleged that the patent was invalid, raising most of the objections to the validity of a patent, namely, not a manner of new manufacture, not new, prior publication, not useful, no improvement, no invention, specification insufficient to enable the alleged invention properly to be carried into effect. In the Supreme Court of South Australia Abbott J. held against these objections except in relation to the first objection, which was that the subject matter of the patent was not a manner of new manufacture, and the last objection based on insufficiency of directions in the specification to enable the alleged invention to be carried into effect. The appellant appeals to this Court, contending that the patent is valid. The respondent has repeated in this Court and supported by argument most of the objections to the patent which were taken in the Supreme Court.

[4]

The evidence which was accepted by the learned trial judge showed that sweeping brooms had always necessarily been made with long bristles. There is a distinction between a brush used for brushing and a broom used for sweeping; a broom must have long bristles, hairs or fibres. It is common knowledge that brooms have been made for many years with wood stocks. The evidence as to toilet brushes and clothes brushes showed that the practice of forming a recess in the wooden body of the brush was well known. The evidence also showed that long bristles, which were much better than hairs for brooms, were always supplied to broom manufacturers with their roots or thick ends together and that those ends were always placed in the stock so that the flag end was used in contact with the surface which was being swept, the flag end being split to some degree and being much better adapted to sweeping than the thick end. The evidence, particularly the evidence as to Hinde's brushes, was that for some years before the grant of the patent hair brushes and clothes brushes had been made with the bristles or hairs held in position by cement in a recess formed in the body of the brush, but that no broom had ever been made with the bristles held in position by cement either in tufts or in lines. There were practical difficulties which had prevented the manufacture of a long bristled broom of this type until the patentees in England and the appellant, the assignee to the patent in Australia, produced a broom which is known in Australia as the "Dustmaster". This broom satisfies the description of the broom described in the patent and has been a great commercial success. The bristles of this broom are long, as in the case of all brooms, and are set in cement in tufts, the cement being a phenol formaldehyde cement which became commonly known not long before the application for the patent in 1936. The respondent, the plaintiff in the action, has in recent years made a broom known as the "Sweepiest" broom, in which the hairs are set in cement contained within a recess in a wooden stock arranged in tufts round the outside but in lines on the inside of the head of the broom. The respondent's experts have not yet been able to solve the problem of arranging the hair in tufts in cement in a broom, but it is not disputed that the respondent has infringed the patent.

[7]

The invention claimed is not a claim for a process. No process of manufacture is described. It is a claim for a product - a broom head which possesses certain characteristics - long bristles set in a recess with their root ends inward, the recess containing cement, the bristles arranged either in tufts or otherwise. As already stated, all the features mentioned were well known except that long bristles had not successfully been set in cement. The specification gives no direction as to how to bring about the improved result which it describes. It is contended for the defendant that the description of the broom in the specification is such that a competent workman would be able with the use of ordinary skill to make a broom according to the specification. Much evidence was given upon this aspect of the case. It appeared that when the plaintiff company was in treaty with one of the patentees in England for an assignment of the patent the patentee informed it that the patent itself was not very important. It was the secret technique of manufacture which was important and it was stated by the patentee that if the plaintiff company knew this technique they ought not to be greatly concerned if the application for the grant of the patent in Australia should fail. The witnesses for the defendant, when giving evidence, refused to disclose the method so successfully adopted by the defendant for making the "Dustmaster" broom. It was suggested by these witnesses that any workman could make a broom in accordance with the specification by arranging bristles between cardboard or other slips with the ends projecting, holding the cardboard slips with the interposed bristles in position by some means and merely inserting the ends of the contained bristles into waiting cement in a recess. The learned trial judge was not satisfied that an effective broom with the necessary splayed ends and edges could be so manufactured, and there is no evidence that such means were practical or that they would in any circumstances, to use the words of the specification, "improve the construction of the brooms" so as to "cheapen the cost of production". The method suggested by the defendant's witnesses as obvious to a skilled workman would not, as one of the plaintiff's witnesses said, produce anything that could be called a broom "if one wishes to sell it."

[13]

Abbott J. upheld this objection. His Honour applied the principles by which Lindley L.J. in Edison & Swan Electric Light Co. v. Holland [1] , said that the question of the sufficiency of a specification should be determined. In that case Lord Lindley said: "On the one hand, the Patentee must make the nature of his invention, and how to perform it, clear and intelligible; on the other hand, it is not necessary for him to instruct persons wholly ignorant of the subject-matter to which his invention relates, in all that they must know before they can understand what he is talking about. The Patentee is adding something to what was known before, and he does all that is necessary as regards the language he uses, if he makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which his patent relates, and having reasonably competent skill in the practical mode of doing what was then known. In complying with the first condition, i.e., in describing the nature of his invention, the Patentee does all that is necessary, if he makes the nature of his invention plain to persons having a reasonably competent knowledge of the subject, although from want of skill they could not themselves practically carry out the invention. In complying with the second condition i.e., in describing in what manner the invention is to be performed, the Patentee does all that is necessary, if he makes it plain to persons having reasonable skill in doing such things as have to be done in order to work the patent, what they are to do in order to perform his invention. If, as may happen, they are to do something the like of which has never been done before, he must tell them how to do it, if a reasonably competent workman would not himself see how to do it on reading the Specification, or on having it read to him. The principle to be applied to the language used to comply with the two conditions is the same for both; but one class of persons may understand only one part of the Specification and another class only the other, and yet the patent may be valid. In a well drawn Specification, the two conditions that have to be complied with are kept distinct; but in many Specifications this course is not pursued. The nature of the invention and the manner of performing it are often described together".

[19]

The appellant company is the assignee of a patent granted in England and accepted and advertised in Australia. It claims that the assignor discovered that the root end of bristles would be held firmly by cement rubber or the like in a recess as shallow as three-sixteenths of an inch. This fact, it claims, was not known generally, or at all, although the flag ends of bristles were usually, if not invariably, made the sweeping surface of brooms and brushes, and bristles were sold in bundles with the root ends together. It is claimed that broom manufacturers, being ignorant that the root ends would be firmly retained in so shallow a depth of cement rubber or like material, used much more of the bristle than was necessary to attach it to the broom head, or paid penalty rates to operatives, who had to spend more time when less bristle was used in so doing; and, further, that much time was spent in making holes into which the root ends were pressed in tufts and there held by glue or like material and by transverse pressure. However, the mere discovery that root ends could be held in cement rubber or like material only three-sixteenths of an inch deep could not itself be the subject of a patent: it had to be applied in a way that would render such application an inventive step of some utility. It was applied to the making of the appellant company's "Dustmaster" broom. Labour and material were saved and cost of production reduced. The "Dustmaster" was a commercial success; although this appears to have been due largely to a secret process for positioning the bristles as desired. But assuming all these claims to be well-founded, the complete specification does not state, and the drawings that are part of it do not indicate, that the root ends are to be placed in cement rubber or like material of any particular depth. The specification states that the width of the wall or flange of the recess is narrow, but nothing is said about its depth. So the inventive step for which we are told the patent was secured is not revealed. Even a skilled worker kept in ignorance of the inventive step would be likely to continue to use as much of the bristles as before, and to spend as much time in affixing them to the broom head. Nothing new was revealed. Apart from the capacity of root ends to hold fast in three-sixteenths of an inch of cement rubber or like material there was nothing new to reveal, except the method of positioning the bristles. A stock with recess containing cement rubber or the like for holding bristles was already in use in brushes, but the composition of the cement rubber or like material was a secret and templates and other mechanical contrivances were employed in positioning the bristles.