Tate v Haskins [1935] HCA 40

Tate v Haskins [1935] HCA 40 - HCA 1935 case summary — Zoe

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the wall of the pipe, at the same time imparting the requisite pressure to make it adhere to the pipe, while the finisher smoothed the cement. so deposited ; and that in a modified construction the rollers were replaced by slippers or guide shoes. The application and the provisional specification were accepted on 11th August 1931. The invention was described in greater detail in a complete specification which, accompanied by drawings, was lodged in March 1932. Details given therein of the spreader were that it was more or less bell-shaped, preferably of metal, having a conical or " bull" nose from which it was stepped or tapered to a trailing skirt which " has a multiplicity of small dehydrator holes through the periphery thereof"; that the spreader could be in one or in a plurality of parts, either shackled together, universally or otherwise, or directly and rigidly attached to each other, and in all cases, whether the spreader was of single or of multiple construction, the foremost portion functioned as a plastic concrete distributor and the rearmost portion as a lining compressor and smoother ; that a float could be incorporated with the spreader to follow it through the pipe and was especially useful with spreaders having dehydration orifices therein to amalgamate cementitious drippings therefrom with the lining; and that should a spreader having dehydration orifices therein be employed - its use was governed to a very considerable extent by the concrete mixture - a float as described was preferably coupled behind to smooth out and amalgamate with the lining the small amount of cementitious drippings passing through the dehydration orifices, or the orificed spreader was provided with an end cap as described. The object of the dehydration holes or orifices was to provide an escape for water or cement drippings pressed out of the cement mixture by the spreader as it was pulled through a pipe and thus avoid the slumping of the cement lining in the pipe. In two of his twenty claiming clauses Tate included the dehydration orifices among the elements which he associated as the features of his invention. The application and specifications were referred to an examiner, who submitted a report. After amendment had been made in some immaterial particulars the complete specification was, on 30th June 1932, accepted, and seven days later the application was advertised. On 3rd November 1932 Gerald Haskins, the

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mdent, gave notice of opposition to the grant of letters patent, the grounds of want of novelty and prior publication and jipation. On 8th December 1932 Tate sought leave to make her amendments in his complete specification. These amend- nents gave greater prominence in the body of the document to the hydration orifices in the spreader and to the idea of pressing the noisture out of the cement lining material. The proposed amend- ments introduced this feature in three principal claims as part of invention. The amendments were not opposed, and they were lowed on 6th March 1933. In the first claiming clause of the ete specification so amended Tate claimed an "improved apparatus for lining pipes with cementitious material constituted of a spreader having devices to cause dehydration of the lining erial immediately prior to the final smoothing thereof a ionary guide for and attached to the said spreader and a cable ttached to the said guide and hauling mechanism for said cable all the purposes set forth substantially as herein described and ined." Up to this time the point had not been taken by anyone that in relying upon the dehydration orifices and the idea of pressing the water the complete specification did not conform to the isional specification. The hearing of the opposition to the nt of letters patent was then commenced. In support of his is of opposition Haskins drew the attention of the Acting ioner to the absence from the provisional specification of iy reference to the dehydration orifices in the spreader. The ting Commissioner ruled that an opponent cannot set up discon- ity as a ground of opposition, but he considered that he himself bound to take into account any objection to a specification ch came to his notice before grant. He formed the opinion the amended complete specification was in disconformity with e provisional specification for the reason stated by Haskins. it the Acting Commissioner regarded the specification as open to on on the grounds also that it was indefinite and ambiguous. n 15th June 1934 he gave an interim decision to this effect and orded Tate an opportunity again to amend his complete specifica- A further application to this end was made by Tate on 23rd

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spreader in a completely central position as it passes through, and several guides have been devised. Two difficulties have been experienced in lining pipes in this manner. It has not been found easy to devise spreaders which will operate satisfactorily in curved and bent pipes. And it has not been found easy to use material which will be wet enough to form an even and smooth paste on the wall of the pipe but not so wet that it will fall off the upper part of the internal surface after the spreader passes. The applicant's invention, as it has been finally evolved, professes to overcome both these difficulties. The first is dealt with by the manner in which guides and spreader are arranged and coupled and by the nature of the guides supplied. The second is dealt with by perforating the wider part of the cylindrical cone so that it will allow a passage or escape for the water which, as it passes, it presses out of the concrete. In his provisional specification the applicant did not describe or disclose the latter device. It appears that he discovered the advantage of the orifices in the spreader in the course of experiments which he made after he obtained the protection which the filing of his provisional specification gave. He mentioned them, however, in the body of the complete specification which he filed and explained their purpose. In two of his twenty claiming clauses he included them among the elements which he associated as the features of his invention. After amendment in some immaterial particulars this specification was accepted. Then the respondent filed notice of opposition. After he had done so, the applicant sought leave to make further amendments in his complete specification. These amendments gave greater prominence in the body of the document to the holes in the spreader and to the idea of pressing the moisture out of the cement lining material. In three principal claims the proposed amendments introduced this feature as part of the invention. The amendments were not opposed and they were allowed. Neither the examiner nor anyone else up to this time took the point that, in relying upon the holes and the idea of pressing out the water, the complete specification did not conform to the provisional.

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If disconformity does not go to validity it can at most be a matter affecting the applicant's title to a grant from the Commissioner. The provisions which relate to it treat it as a matter going to- the regularity of the applicant's proceedings, to the propriety of his having a grant for the added matter and to the time as from which the grant should take effect. Sec. 40 provides that the examiner shall ascertain and report whether the invention described in the complete is substantially the same as that described in the provisional specification. Sec. 42 provides that if he reports thereon adversely the Commissioner may require the applicant to amend under his directions or he may direct that the application shall date from some specified later time. The provision, in our opinion, confers a discretion upon the Commissioner. He may require an amendment or may post-date the application or may notwithstanding the examiner's report simply proceed to acceptance, and this although he is not satisfied that the examiner is wrong about disconformity. If he thinks that the departure from the provisional is not likely to prejudice anyone, he may disregard it. If he thinks that the invention as it appears from the complete ought to be protected and that all prejudice to others will be avoided by giving a later commencement to the monopoly, he may adopt that course unless he thinks it unfair to the applicant to do so. If he thinks that there is good reason for denying the applicant the liberty to go outside the ambit of his provisional which the first two courses might concede, he may require an amendment of the specification. Further, the Commissioner may deal with a case of disconformity by applying more than one of these powers. He may, for instance, insist on the exclusion of part only of the new matter and for the rest go on to accept the specification. If the Commissioner post-dates the application or directs an amendment, the applicant may appeal to a law officer (sec. 43). Under sec. 46, in the absence of any lawful ground of objection the Commissioner must accept the application and specification unconditionally. This section confers a right upon applicants. That right might be enforced by appeal under sec. 47.

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Decision date

Source

Judgment (122 paragraphs)