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[1986] ZASCA 154
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Kreepy Krauly (Pty) Ltd. v Hofmann (162/86) [1986] ZASCA 154 (28 November 1986)
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE
DIVISION
)
In the matter of:
KREEPY KRAULY (PROPRIETARY) LIMITED
... appellant
and
HELMUT JOSEF HOFMANN
respondent.
Coram: CORBETT, JOUBERT, SMALBERGER JJA,
GALGUT
et
NICHOLAS AJJA.
Date of Hearing
: l8 August 1986.
Date of Judgmen
t: 28 November
1986.
JUDGMENT GALGUT
AJA:
The appellant applied in the Court of the Com-missioner of Patents (NESTADT
J) for the revocation of Patent No 77/6199 ("the patent").
The respondent is
/ the
2
the patentee. The application was dismissed with costs. The judgment is
reported in 10
Burrell's Patent Law Reports
at p 360. The nature of the
patent and the issues in the case are fully set out in that judgment. I shall
refer to it as the reported
judgment. I will set out only so much as is
necessary to facilitate the reading of this judgment and will confine myself to
the main
sub-missions made in this Court.
The appeal is direct to this Court,
the parties having consented thereto, in terms of
sec 76(4)
of the
Patents Act
No 57 of 1978
("the
1978 Act"). The
effective date of the patent is 18 October
1977. It was granted on an application made under the provisions of Patents Act
No 37
of 1952 ("the 1952 Act"). The revocation pro-ceedings are therefore
regulated by sec 61 read with
sec. 3(1)(a)
of the
1978 Act. The
grounds of
revocation are governed by
sec. 23
read with sec. 43 of the 1952 Act.
/ The
3
The patent is for an invention entitled "Cleaning apparatus
for submerged surfaces".
Sec. 23 of the 1952 Act read with sec. 43 sets out the grounds on which
revocation can be sought. Six of these grounds were relied
on and set out in the
notice of application for revocation. I set them out hereunder, in the sequence
in which they were urged in
this Court. I also set out the relevant subsections
of sec. 23 of the 1952 Act. The words in brackets are the headings used in this
Court.
A. "That the invention is not useful" (Inutility).
See sec. 23(1)(e).
B. "That the invention was not new at the
effective date of the application"
(Anti-
cipation). See sec.
23(1)(l).
C. "That the claims of the
complete specifi-cation do not sufficiently and clearly define the
subject-matter for which pro-tection
is claimed" (Ambiguity). See sec.
23(1)(g).
/ D. "That
4
D. "That the complete specification does
not fully describe and ascertain
the
invention and the manner in which it
is to be performed"
(Insufficiency).
See sec. 23(1)(f).
E. "That the application contains a
material
misrepresentation" (Material
Misrepresen-tation). See sec. 23(1)(i).
F. "... that the invention is obvious in that
it involves no inventive
step having re-
gard to what was common knowledge in the
art at the
effective date of the appli-
cation" (Obviousness). See sec. 23(1)(d).
In order to consider the submissions made in this Court it is necessary to
ascertain the nature and scope of the invention. The nature
of the apparatus
covered by the patent is depicted in two drawings, Figures 1 and 2, contained in
the specification. For reasons
which will appear later they have been reproduced
and attached to this judgment. The apparatus is designed
/ to
5
to be connected to a source of suction power. In a swimming bath it would be
the pool filter motor.
The opening paragraphs of the
specification
read:
"This invention relates to equipment for cleaning submerged surfaces and more
particularly to the type of equipment known as 'suction
sweepers'.
Suction sweepers are almost universally used for cleaning submerged surfaces
such as swimming pools and the like. Many forms of sweepers
have been designed
and produced and some of these have included features which make them more or
less self-propelled while suction
is applied through the equipment.
Alternatively this desirable self-propelling action has been obtained by
applying an auxiliary
fluid flow to the cleaning
head."
There then follows a description
of known types of
equipment (ie the prior art) for cleaning submerged
sur-
faces (see the reported judgment at pp 362 to 363).
Having set out that the types of equipment
/ in
6
in present use move slowly over the surfaces to be cleaned
and are, in
some cases, cumbersome, the specification then
goes on to read:
"It is the object of the present invention to provide equipment which will
effectively clean submerged surfaces and which is neat
and compact and which can
move over the surface to be cleaned at a rate in the vicinity of twelve feet per
minute."
Thereafter the consistory
clause reads (the reason for
the underlining, which is mine, will appear later):
"According to this invention there is provided apparatus for cleaning sub-merged
surfaces comprising -
a balanced
operating head having an inlet and an outlet defining respect-ive inlet and
outlet axes, the outlet adapted to be swivelably
connected to a longitudinally
resilient and flexible suction hose, the inlet axis being inclined at an angle
of between thirty degrees
and sixty degrees to that of the outlet axis,
a passage
through the head from inlet to outlet,
an oscillatable valve in the head adapted to alternately open and close said
passage
.
/
a baffle
7
a baffle plate in the head between the inlet and the valve to form a
restricted suction connection between the inlet and outlet around
the valve when
the passage is closed, the con-nection being as restricted as practi-cally
commensurate with proper valve movement
,
the valve shaped so that liquid flow through the head will cause automatic
oscillation thereof between terminal positions."
The
specification then states:
"Many other features of this invention will become apparent from the following
description of a pre-ferred embodiment which is made
with reference to the
accompanying draw-ings in which:
Figs. 1 and 2 show part
sectional front and side elevations of one embodiment of the invention.
This form of the invention is designed as swimming pool cleaning
apparatus."
The description then set out is lengthy. It need
not
be set out in detail. It is sufficient to say that
a valve is located within the head of the apparatus and
/ it
8
it is vital to the operation of the apparatus that this valve is so placed
and designed that when suction is applied, water is drawn
through the head and
that the force of the water passing from the inlet to the outlet of the head
causes the valve to oscillate.
It is of the essence of the invention that the
position and de-sign of the valve is such that when so oscillating it opens and
closes
on its one side a passage which is termed a "flow" passage and on its
opposite side a "suction communication which is designed so
that there is as
restricted an opening between inlet and outlet of the head as is commensurate
with the proper operation of (the)
valve".
Having set out the above (as
already stated at some length), the specification then reads:
"With the construction above set forth it has been found that when the head is
submerged and a swimming pool suction filter applied
to the pipe
12
/ the
9
the flow of water causes the valve to oscillate between its two terminal
po-sitions. In one such position the flow is substantially
full and direct
through opening l8 and passage 13 to outlet 3 while in the other there is
maximum reduction in liquid flow through
the
head."
The patent has six claims. Claims 2 to 5
are
dependent on claim 1. It is common cause that only
claims 1 and 6 need be
considered. As to claim 6 more
later. Claim 1 is set out in full at p 364 of
the reported
judgment. It is accepted by both parties that it has
the
following integers:
(i) An apparatus for cleaning submerged surfaces comprising
(ii) a balanced operating head having an inlet and an outlet defining respective
inlet and outlet axes,
(iii) the outlet adapted to be swivelably con-nected to a longitudinally
resilient and flexible suction hose,
(iv) the inlet axis being inclined at an angle of between thirty degrees and
sixty degres to that of the outlet
axis,
/(v)
10
(v) a passage through the head from inlet to outlet,
(vi) an oscillatable valve in the head adapted to alternately open and close
said pas-sage,
(vii) a baffle plate in the head
between the
inlet and the valve to form a restricted suction connection between the inlet
and the outlet around the valve when the pas-sage is
closed,
(viii) the connection being as restricted as practically commensurate with
proper valve movement,
(ix) the valve shaped so that liquid flow through the head will cause automatic
oscillation thereof between terminal
positions.
It is convenient at this stage, in order to
better understand the
areas of the dispute between the
parties, to set out relevant principles governing the
interpretation of a specification. Sec. 10(1) of the
1952 Act provides that every specification shall commence
with a title sufficiently indicating to what the relevant
invention relates. Secs. 10(3)(a) and (c) read:
/ "A complete
11
"A complete specification shall —
(a) fully
describe and ascertain the in-
vention and the manner in which it
is to be
performed;
(b)
(c) end with a claim or claims defining
the
subject-matter for which pro-
tection is claimed."
I set out hereunder some of the relevant princi-ples discussed in
Gentiruco A.G. v Firestone SA (Pty)
Ltd
1972 (1) SA 589
(A) at pages
614-616.
(a)
A specification must be
construed like any other document (p 614 A).
(b)
The words used must be read grammatically and in their ordinary
meaning (p 614 C).
(c)
If words are of a
technical nature or if in the particular art or science words have a special
meaning, extrinsic expert evidence
/ is
12
is permissible to prove their meaning (p 614 D).
(d) A court must be instructed by expert evidence
in so much of the art or
science, commonly
known at the time, as is necessary to enable
it to
construe the specification properly (p
614 E).
(e) If a word or expression is susceptible of some
flexibility in its
ordinary connotation, it
should be interpreted so as to conform with
and
not to be inconsistent with or repugnant
to the rest of the specification (p
615 B).
(f) The interpreter "must be mindful of the objects
of a specification and
its several parts" (p
615 B).
(g) ".... if the object of the claims is
borne in mind, their meaning, as
ascer-
tained from their own language, must pre-
vail over the rest of the
specification.
/ For
13
For not only have they, according to sec. 16(3), to be stated distinctly and
pre-cisely, but their purpose is to delimit the monopoly
claimed;
'the forbidden field must be
found in the language of the claims and not elsewhere' "
— per TROLLIP
JA at p 615 C . (Sec. 16(3) above referred to is of the 1916 Act. Sec. 10(3)
(quoted above) of the 1952 Act is
for all prac-tical purposes the same as sec.
16(3).)
(h) "If the meaning of a claim so ascertained is clear and unambiguous, it is
decisive, and cannot be restricted or extended by anything
else stated in the
body or title of the specification (see the above authorities). 0n the other
hand, if it is ambiguous (in the
wide sense), the body and title of the
specification must be invoked to ascertain whether at least a reasonably certain
meaning can
be given to the claim" —
per
TROLLIP JA at p 615 F.
At pages 616 D to 6l8 F TROLLIP JA discusses
the
question of whether the evidence of a skilled expert
witness's opinion as to
the meaning of any part of the
/ specification
14
specification including the claims is admissible. It
appears from what is
there said (p 617 B) that the learned
Judge was of the view, in cases where
the subject-matter
of a specification is of a highly complex
scientific
nature, that the opinions of the parties' well-qualified
and
experienced experts, as being representative of the
skilled addressees of the
specification, on the meaning
of their understanding of its relevant parts,
while not
binding on the court, might be of appreciable help.
The learned
Judge concluded, however, that such evidence
was not admissible and at p 6l8
A he quoted, with appro-
val, the following
dictum
of Lord TOMLIN in
British Ce-
lanese Ltd v Courtaulds Ltd
(1935) 52 RPC 171:
"He (ie the skilled expert witness) is not entitled to say nor is counsel
entitled to ask him what the specification means, nor does
the question become
any more admissible if it takes the form of asking him what it means to him as
an engineer or a chemist. Nor
is he entitled to say whether any given step or
alteration is obvious, that being a question for the Court."
/ It
15
It was said by Lord RUSSELL, in
Electric
and
Musical Industries Ltd and Another v
Lissen Ltd and Another
(1939) 56 RPC at p 39,
"The function of the claims is to define clearly and with precision the monopoly
claimed."
The learned Judge then goes
on to say:
"The claims must undoubtedly be read as part of the entire document, and not as
a separate
document."
Blanco White
in his
Patents for Inventions
(5th edition) at para 2-103 on p 12 states:
"A specification is a single document and like any other document, must be read
as a whole. It is necessary to read the body before
proceeding to the claims. A
claim must be treated as part of the entire document, not as a separate
document. If the claims when
so read are still not clear, reference should again
be made to the body of the specification to assist in construing them; in
particular,
reference should be made to the 'consistory clause' and the preamble
generally."
/ In
16
In para 2-104 at p 13 the learned author goes on to say:
"Where it is obvious to a skilled reader what the patentee meant to include and
what to exclude, the claims should be read accordingly:
they must be read
'purposively' rather than being subjec-ted to 'meticulous verbal analysis'. Thus
preference should be given to
the clear intention of the whole, as against
particular words that might destroy it, a construction leading to an absurd
re-sult
being avoided wherever
possible."
A specification is addressed
to those who will be responsible for putting it into practice and who have the
necessary skill to use
it. Such persons "may be assumed to possess not only a
reasonable amount of common sense but also a competent knowledge of the art
or
arts which have to be called into play in carrying the paten-tee's directions
into effect" - see the authorities cited in
Colgate-Palmolive Co v Unilever
Ltd
1983 (4) SA 249
(T) at pp 252 H to 254 C. The Court when interpreting a
specification has to do so as would the addressee.
/ As
17
As we have seen a specification must be given a purposive construction. It
must be read with a mind willing to understand and not
to misunderstand -see
Selero (Pty) Limited & Another v Chauvier & Another
9
Burrell's Patent Law Reports
at 171 C and
1984 (1) SA 128
(A) at p 143
D-G.
I pause to stress that the onus is on the appli-cant for revocation to prove
his case upon a balance of probabilities - see
Miller v Boxes & Shooks
(Pty) Ltd
1945 AD 561
at 581.
Having set out some of the relevant principles relating to the interpretation
of specifications I turn to discuss the grounds of invalidity
raised by
appellant.
Ad A above - Inutility
Both parties filed affidavits by experts. They were Dr Schwartz on behalf of
the appellant and Dr Stephenson on behalf of the respondent.
To the
/ extent
18
extent that they expressed their opinions as to the meaning of claim 1 their
evidence is, as we have seen, inadmissible. I do not
find it necessary to refer
to those aspects of their evidence. The conflicts in their evidence relating to
technical aspects will
be referred to later. Drs Schwartz and Stephenson were
agreed that the addressee of the specification in issue would be (to quote
Dr
Schwartz) "a person having train-ing and experience in fluid mechanics and
concerned in the principles of manufacture and design
of pool cleaners". He does
not have to be a highly qualified academic.
Both Dr Schwartz and Dr Stephenson set out their interpretation of claim 1.
Their opinions differed in regard to the interpretation
of the words "a passage"
in integer (v) and "connection" in integers (vii) and (viii). As we have seen
their opinions in this regard
are not admissible. They were, however, agreed
that
/ there
19
there had to be two flow paths through the head, one on each side of
the valve, in order for the valve to oscillate and to render
the patent utile,
and that without such oscillation the apparatus would not be operative.
The submissions by counsel for the appellant can be summarised as
follows:
(aa) The subject-matter of the specification was not of a highly complex
scientific nature; it did not contain words of a technical
nature or having a
particular import, scientific or otherwise.
(bb) The word "passage" in integer (v) is an ordi-nary English word and its
meaning is clear and unambiguous. This, too, is the meaning
it would have to one
skilled in the art of the apparatus claimed.
(cc) There is no express or implied definition
/ in
20
in the body of the specification to suggest
that any special meaning be given to the word
other than its ordinary
meaning. (dd) The body of the specification contains a des-
cription of the prior art as having provided
"a pair of rigid passages"
and "two passages". (ee) Reading the specification as a whole, therefore,
the use of the singular "passage" must be
given its normal meaning. (ff)
The words "suction connection" in integer
(vii) are also ordinary English words which
must be given their ordinary English meaning.
The ordinary English meaning of the word "con-
nection", in the context of this integer is
"a join" or "a fastening".
(gg) There is, in the use of the word "connection",
no connotation of a path or passage allowing
/ a flow
21
a flow of water or fluid.
(hh) The consequence of adopting the ordinary English meaning of the words
used is thus that there is no ambiguity and results in
a claim for a device
having one passage (only) through which the water or liquid is to flow.
(ii) The conflict between the description of the invention in the body of the
specification and the claim made in the claims does
not render them ambiguous or
unclear.
(jj) It does not follow from the wording of inte-gers (vii) and (viii) that
integer (v) is to be given any other meaning than the
or-dinary meaning of the
words used therein.
It follows from what has been said above that the addressee is a man of some
skill and understanding in the field of the invention;
he is not a mere
layman;
/ he
22
he will read the specification as a whole, ie the body of the specification
and the claims; he will then seek to analyse what is said
in claim 1; he will
not do so with "an attitude of studied obtuseness" but will do so "with a mind
willing to understand and not
to misunder-stand". He will obviously not stop
reading when he has read integer (v) but will read all the integers following
thereon;
he will not, as it were, peer exces-sively at integer (v) and ignore
integers (vii), (viii) and (ix); he will see that in integer
(vii) there is a
baffle plate between the inlet and valve to form a
restricted suction
con
nection
around a valve
when
the passage in (v) is closed; he
will immediately be driven to wonder what is meant by "a restricted" con-nection
which is also a
"suction" connection. Further-more he will wonder how such a
connection can be "around a valve"; he will then read in integers (viii)
and
(ix)
/ that
23
that the connection is to be restricted so as to be "commensurate with proper
valve movement" in respect of a valve so shaped that
liquid flowing through the
head will cause the valve to oscillate; he will, in my view, immediately realise
that the patentee did
not intend "connection" to be a "join" or "fastening".
The word "connection" is not limited to meaning "a join" or "fastening". The
word can connote a linking up; one also speaks of a "connecting"
rod. Hence a
restricted suction connection which can pass round a valve which oscillates does
not suggest a "join" or "fastening".
It will be remembered that in the
Gentiruco
case,
sup
.
cit
., TROLLIP JA said (see (e) above) that if a word or expression is
susceptible of some flexi-bility in its ordinary connotation it
should be
inter-preted so as to conform with the rest of the specification.
/ He
24
He also said if a claim was ambiguous (in the wide sense) the body and title
of the specification must be invoked to ascertain whether
a reasonable meaning
can be given to the claim. It appears also from what CORBETT JA said in the
Selero
case,
sup
.
cit
., at p 140 that where a term in a
specification is "sufficiently flexible and imprecise", it is permissible to
have recourse to the
body of the specification. This also appears from what is
said by Blanco White in the par. 2-103 above-quoted.
It follows that the addressee of this specifi-cation who does not approach
the issue of interpretation of claim 1 with an attitude
of studied obtuseness
but with a mind willing to understand what the patentee in-tended to convey,
will have, and will be entitled
to have, recourse to the body of the
specification. For the reasons stated above there can be no doubt that the
/ words
25
words "restricted suction connection" are sufficiently
flexible and
imprecise to permit him (and of course the
Court) to do so. As will be seen
from p 386 E of the
reported judgment the Commissioner was of the view
that
the "meaning of 'passage' and 'restricted connection'
is
sufficiently unclear to render it permissible,
indeed obligatory, to interpret these expressions in
the light of the body
of the specification". In the
specification the following is said:
"On the side of the valve opposite the flow passage 13 through the head is a
suction communication which is designed so that there
is as restricted an
opening between inlet and outlet of the head as is commensurate with the proper
operation of valve 14. Water
flow through the suction communication is therefore
greatly reduced compared to that through the passage 13. The suction
communication
is adapted to be shut off when the flow passage is open and is
only open for a brief period when the valve 14 closes the flow passage.
The
shape and size of the valve 14 in the head together with the location of the
partition member 17 constricts the suction
/ communication
26
communication to the size which prevents appreciable liquid flow
therethrough."
There is thus a direct
reference to a flow of water "through the suction communication". The
specification discloses a device with
a flow passage 13 through which
the
water passes to the filter and a suction connection
so
through which there is a flow of water/reduced as
is
commensurate with proper valve movement.
It follows from all the above that claim 1 has two flow paths through the
head (albeit one is re-stricted) and hence the apparatus
will operate. The
appellant has failed to establish that the patent is inutile.
Ad B above —Anticipation
In terms of sec. 43(1) read with
sec. 23(1)(l) of the 1952 Act a patent may be revoked on the ground
/ that
27
that the invention was not new at the effective date
of the application.
"New" is defined in sec. l(ix)
of the above Act. There is no need to set out
the
definition. The facts are self-explanatory. The res-
pondent had at an
earlier date applied for a patent
for a similar device in terms of an
application No
76/5024. That application was opposed. It would
have as
effective date, 23 August 1977. In terms of sec.
l(ix)(e) of the 1952 Act it
ranks, as a patent, prior in
date to No 77/6199, the effective date of which
is 18
October 1977.
In both cases the invention was entitled "Cleaning Apparatus for Submerged
Surfaces". The two specifications are largely identical.
A comparison of the
consistory clauses shows that the subject-matter is similar. The consistory
clause in No 77/6199 has been set
out above. I draw attention to the
underlining. In No 76/5024 the consistory clause reads (the underlining is
mine):
28
"According to this invention there is
provided apparatus for cleaning
submerged
surfaces comprising
a balanced operating head having an
an inlet and/outlet, the outlet being
adapted to be swivelably connected
to a longitudinally resilient and
flexible suction hose,
the inlet axis being inclined at an
angle of between thirty degrees and
sixty degrees to that of the outlet,
a pair of passages
through the head
from inlet to outlet,
an oscillatable valve in the head
adapted to alternately close said
passages
,
a baffle plate in the head between
the inlet and valve to cause one
of the passages to be more restricted
and less direct between inlet and
outlet than the other
and
the valve shaped so that liquid flow
through the passages will cause auto-
matic oscillation thereof between
terminal positions
in each of which
one of the
pa
ssag
e
s through the head
is closed.
"
/ The
29
The difference in the wording of the consistory clauses in the two
specifications appears from the passages I have underlined. In
No 77/6199 the
invention consists of a passage and a suction connection which as we have seen
(see A above) is a suction communication
through which the flow of water is as
restricted as is practically commensurate with valve movement. In No 76/5024 the
invention
consists of a pair of passages, one of which is more restricted than
the other.
The appellant's contention was that claim
6 of Patent No 77/6199
was anticipated by claim 7 of
Application No 76/5024. Claim 6 reads:
"6. Apparatus for cleaning a submerged surface substantially as described
with reference to the accompanying drawings."
Claim 7 reads:
"7. Apparatus for cleaning swimming pools substantially as described
/ with
30
with reference to Figures 1 and
2 or 3 of the accompanying drawings."
The law on this aspect of the case is set out by TROLLIP JA in the
Gentiruco
case at the pages set out hereunder. He was there concerned
with sec. 6 of the 1916 Act. Its provisions differ from the prior claiming
provisions in sec. l(ix)(e). The effect, however, for the purpose of this case
is the same. At p 646 C of the report the learned
Judge said:
"I turn now to the objection of anticipation. It relates to the claims and not
the description of the invention in the body of the
specification
(
Veasey
's case, p 282). Hence the particular claim must be construed to
ascertain its essential constituent elements or integers. For the
purpose of
this objec-tion the claim so construed is assumed to be inventive
(
Veasey
's case, pp 280,
284).
The prior patent alleged
to be anticipatory is then construed. As
Blanco White
,
supra
,
says at p 101:
'The question whether a claim has novelty over what is dis-closed in an
earlier document is primarily one of construction of the two
documents.'
/ The
31
The two documents are then compared to ascertain whether the prior patent
was
granted for the same process,
etc, as
that claimed. And at p 653:
The prior patent must have been granted for the same or substantially the same
process, etc, as claimed in the patent in suit; that
is, the two must overlap to
the extent that the prior process, etc must contain at least the essen-tial
integers of the latter and
their special combination, if any. This is usually
determined by construihg and then comparing the claims of the res-pective
patents."
I proceed, therefore, to
construe the said claims 6
and 7.
The drawings referred to in claim 6 of No 77/6199 are Figure 1 (which shows a
part sectional front elevation of one embodiment of
the invention) and
Figure
2 (which shows a side elevation of that embodiment).
Those drawings
are identical (save in an irrelevant
minor respect) with Figures 1 and 2 of
Application No
/ 76/5024
32
76/5024. The Figure 3 in No 76/5024 relates to an alter-native embodiment and
is hot relevant to the present inquiry.
It was contended on behalf of the appellant that claim 6 of No 77/6199 is
stated as being a claim to the apparatus which is "substantially
as described
with reference to the accompanying drawings" and therefore it would not be
proper to consider the description in the
patent in suit; that claim 7 in No
76/5024 is similar-ly stated; since the drawings are identical, so the argu-ment
ran, prior claiming
is established.
I do not agree with the premise. Neither the drawings nor the description are
intelligible without the other. The numbers on the drawings
cannot be understood
without reference to the description; and the description cannot be understood
without reference to the drawings.
In this regard the words of P0LL0CK MR in
Tucker v Wandsworth Electrical Manufacturing Company Ld
42 (1925) RPC
531
/ (CA)
33
(CA) at 537, line 35, to 538, line 1, are apposite;
"The Claim, in fact, is in these
words:
'2. An electric switch, substan-tially as herein set forth and
illustrated.'
Those words 'substantially as herein
set forth and illustrated' are commonly
used in drawing the Claims to Specifica-
tions. As Mr
Terrell
has pointed out,
it was said by Lord MOULTON in the case
to which he referred that they had not
received judicial interpretation. On
the other hand, one must not forget
that in a very recent case, the case
of
Hale v Coombes
, Lord BUCKMASTER said
of those words that the result was to
throw one back to the body of the Speci-
fication. His words are: 'I do not
see how they can be used so as to exclude
the references to the figures which are
the graphic representations of the actual
invention', and he finds himself thrown
back to the body of the Specification
and the illustrations; that is to say,
he interprets those words according to
their face meaning."
/ See
34
See also the judgment of WARRINGTON L J at p 540, lines 25-35.
In each of the specifications the description
is
prefaced by the following words:
"Many other features of this invention
will become apparent from the
following
description of a preferred embodiment
('preferred embodiments'
in the case
of Application No 76/5024) which is
made with reference to the
accompanying
drawings ".
Thus it is
emphasized that what is claimed in the respect-
ive claims is the preferred
embodiment. Compare the
following passage from the speech of Lord M0RT0N
of
HENRYTON in
Raleigh Cycle Coy Ld v H Miller and Coy
Ld
65 (1948)
RPC 141
(H.L.) at 157 lines 35-44:
"I now come to Claim 5, and before examining its wording I desire to make some
preliminary observations. For many years it has been
a common practice to
insert, as the last claim in a patent specification, a claim on the same lines
as Claim 5 in the present case.
I
think
/ that
35
that the reason why such a claim has
been inserted, in the present case
and
in countless other cases, is as follows.
The patentee fears that his
earlier claims
may be held invalid, because they cover
too wide an area or
fail sufficiently
and clearly to ascertain the scope of
the mqnopoly
claimed. He reasons as
follows: 'If I have made a patentable
invention and
have described the pre-
ferred embodiment of my invention
clearly and
accurately, and without any
insufficiency in the directions given,
I must
surely be entitled to protection
for that preferred embodiment, and
that
protection may fairly extend to cover
anything which is substantially
the same
as the preferred embodiment'. This
reasoning seems sound to
me "
The effect of the phrase "as
described with reference to the accompanying drawings" is therefore to "import
into the claim those features
of the embodiments described that (as a matter of
construction) are held out in the specification as essential features of the
invention".
Blanco White, 5th ed, p 23 para 2-113 D, citing
Rose Street
Foundry & Engineering Company Ld
/ v
India
36
v India Rubber Gutta Percha and Telegraph Works Company Ld
46 (1929)
RPC 294
(CA).
The main differences between the description of the preferred embodiment of
Patent No 77/6199 and that of Application No 76/5024 are
the following.
According to Application No 76/5024 there
are two
flow passages through the head, which passages
open and close alternately as
the valve moves between
its terminal positions. The passages are of different
shape and size; in one the flow is substantially direct
through opening l8
to outlet 3; in the second passage
the flow is restricted and indirect
because the water
must pass in the space 22 between the partition member
17 and the base of the valve 14. The description
states -
"The space 22 may be made about one tenth of the opening
18".
/ According
37
According to Patent No 77/6199, on the other
hand,
there is a passage through the head between inlet
and outlet, and
"On the side of the valve opposite the flow passage 13 through the head is a
suction communication which is designed so that there
is as restricted an
open-ing between inlet and outlet of the head as is commensurate with the proper
opera-tion of valve 14. Water
flow through the suction communication is
therefore greatly reduced compared to that through the passage 13. The suction
communica-tion
is adapted to be shut off when the flow passage is open and is
only open for a brief period when the valve 14 closes the flow passage.
The
shape and size of the valve 14 in the head together with the location of the
par-tition member 17 constricts the suc-tion communication
to the size which
prevents appreciable liquid flow there-through."
Despite the difference in terminology it is clear that
the "suction communication" of No 77/6199 performs a
function similar to that of the second (restricted)
passage of Application No 76/5024. However that may
/ be
38
be, the difference in terminology does not assist in solving the issue. What
must be considered is sub-stance, not language (see Blanco
White (5th ed) at p
116 para 4-306). The substantial difference between the two descriptions is that
the "suction communication"
of No 77/6199 is "designed so that there is as
restricted an opening between inlet and outlet of the head as is commensurate
with
the proper operation of valve 14"; whereas, although the second passage of
Application No 76/5024 is restricted, it is not limited
in the same way: all
that is said is that "the space 22 may be made about one tenth of the opening
18". In other words, in the prior
specification the space 22 may be determined
in proportion to the opening 18. In Patent No 77/6199, the patentee does not
tell the
world the proportion between integers 22 and 18; the extent of the
restriction is defined with reference to a desired
/ result
39
result, namely, the proper operation of the valve.
The fact that an
earlier claim is wider or less spe-
cific than the later claim does not mean
that the
former anticipates the latter. See the
Gentiruco
case
at p
649 E-G. It is clear from the consistory clause,
which sets out the various
elements of which the inven-
tion is to consist, that this feature (which was
not
claimed in the earlier application) is an essential
feature of Patent
No 77/6199. Cf.
Tucker v Wa
ndsworth
Electrical Manufacturing
Company Ld
(
supr
a) at p 540.
The following statement by Dr
Stephenson is significant:
"In the latter case (ie No 77/6199) the claims are confined to a restricted
pas-sage that has been reduced to a suction communication
only. In other words,
there must be significant interruption in the flow through the head in the
lat-ter case. I consider that the
latter specification and claims could develop
from the former.
The significantly re-stricted flow will result in a more
positive movement of the machine over the surface to be cleaned
."
/ Dr. Schwartz
40
Dr Schwartz did not challenge the portion underlined by me. The difference
between the two patents is thus a real one.
It follows that all the essential features of claim 6 of No 77/6199 were not
claimed in claim 7 of No 76/5024. Consequently invalidity
on the ground of
anticipation was not established.
Ad C above —Ambiguity
.
In support of this ground counsel for
appellant
submitted (I quote from his heads of
argument):
"(a) Integer (vi) of claim 1 claims an
oscillatable valve adapted alternatively to open and close the passage.
However, integer (vii) provides for a baffle plate in the
head between the inlet
and valve to form a restricted suction connection between the inlet and outlet
around the valve when the passage
is closed.
/ (b)
41
(b) integer (vii) was incompre-
hensible since, if the passage is closed, there can be no communication
between the inlet and outlet."
As was shown when considering the issue of lack of utility (Ground A above),
integers (vii), (viii) and (ix) describe a "restricted
suction connection"
through which there is a restricted flow of water. Integer (v) refers to a
passage through which there is a flow
of water. The flow in this passage is the
main flow from the inlet to the outlet of the head of the apparatus - and such
flow would
go to the filter. The restricted flow is to be commensurate with
proper valve movement, ie, the valve in integer (vi). The claim
therefore
describes two flow paths, the one being the passage carrying the main flow, the
other being the restricted connection carrying
the restricted flow. The flow in
the passage and the flow in the restricted communication are around opposite
sides of the oscillatable
/ valve
42
valve. There is thus no ambiguity when integers (v), (vi), (vii) (viii) and
(ix) are read together. In short, once it has been found,
for the reasons set
out in A above, that this patent is not inutile, the ground of ambiguity cannot
be sustained.
Ad D above — Insufficienc
y.
All that need be said on this ground is to
quote
from appellant's written heads of argument.
The relevant passages read:
"The Appellant's contentions insofar
as the objection of insufficiency
is
concerned, depend upon the argument that
the claim is one for an
apparatus having
one passage
The fate of the objection on the ground of insufficiency is, therefore,
dependent upon the fate of claim 1 on the ground of lack
of utility. It is
respectfully
/ submitted
43
submitted that it is therefore immaterial whether it be on the ground of
insuffi-ciency or on the ground of inutility that the appeal
be
upheld."
In the result this ground of
revocation has not been
established.
Ad E above - Material Misrepresentation
s
In the notice of application for revocation
this
ground was set out as follows:
"The Patentee knew of the existence of his prior patent application No 76/ 5024
and the product covered by such patent application.
Despite this, the Patentee
represented in the Patents Form no. 1 filed in support of his patent application
No 77/6199 that to the
best of his knowledge and belief there is no lawful
ground of objection to the grant of a patent on the application.
In the circumstances the Patentee has obtained a patent which should not have
been granted."
/ It
44
It was not suggested that there was any evidence as to appellant's alleged
knowledge and belief other than as stated by him on the
said patents form. The
submission by appellant on this ground is that "if the objection of anticipation
based on claim 6 is upheld,
the objection based on misrepresentation need not be
dealt with as a separate ground of objection". Coun-sel for appellant intimated
that if appellant failed to establish anticipation he could not urge this ground
of invalidity. More need not be said.
Ad F above - Obviousness
An inquiry into obviousness involves
determining what the common knowledge in the art was at the effective date of
the patent in suit
and determining whether the invention claimed is a step
forward on such common know-ledge and, if so, whether that step is
inventive.
/ This
45
This in effect means an investigation into what formed part of the ordinary
mental equipment of a skilled per-son at the time of the
application for the
patent. It is essentially a matter for evidence - see the
Gentiruco
case,
sup
.
cit
. at pp 653 G - 659.
The appellant submitted that the evidence of Dr Schwartz showed -
(i) that a device made in accordance with Figure 1 of the patent in suit - if
it was a two-passage device -was such as was known as
a Kreepy Krauly which
formed part of the common knowledge as at October 1977; and
(ii) that a
skilled addressee would have to make only a few simple experiments to produce a
device that was more compact and moved
faster than the Kreepy Krauly device if
he set out to do so;
(iii) that the Commissioner had erred in finding that
there was a conflict of fact on this issue and
/ in
46
in finding that appellant had not discharged the onus of showing
obviousness.
The Commissioner dealt with this issue at pp 370 G to 371 F of the reported
judgment. As appears from the extracts of evidence there
quoted, and from
the
affidavits of Dr Schwartz and Dr Stephenson, there existed
1977 as at 18 October/a two-passage device known as Kreepy
Krauly. Dr Schwartz contended that -
"It would have required a skilled addressee
only a few simple experiments to
produce
a device that was more compact and moved
faster than the Kreepy
Krauly device
if he set out to do
so "
Dr Stephenson, in his affidavit,
explained that -
" the Kreepy Krauly machine referred
to has two passages of equal and substan-tial length of about a metre and of
exactly equal size. There is no restriction at all of
either of the
passages.
He then went on to say :
/ ".... there
47
" there is no possible basis for
the assumption that such experiments would lead to a construction falling within
the scope of the claims of Patent No
77/6199."
Dr Stephenson thus stresses that the flow
paths in
the Kreepy Krauly machines are very different
from the flow paths in No
77/6199. Furthermore, the
last-quoted passage from his evidence is a denial
of
Dr Schwartz's contenti on. There is thus a conflict
of fact which
cannot be resolved on affidavit, ie.
without oral evidence. I agree, with
respect, with
the Commissioner that appellant has not discharged the
onus
of establishing this ground for revocation.
In the result the appeal is dismissed with costs, including the costs of two
counsel.
O GALGUT. CORBETT JA) NICH0LA5 AJA)
COMPLETE SPECIFICATION
HELMUT JOSEF HOFMANN 2 Sheets
COMPLETE SPECIFICATION Sheet No. 1
APPLICATION NO. 77/6199 Orlglnal
SEE
ORIGINAL JUGDMENT SKETCH
JOHN & KERNICK
Patent Attorneys for the
Applicant
JOHN & KERNICK
Patent Attomeys for the Appllcant
COMPLETE SPECIFICATION
HELMUT JOSEF HOFMANN 2 Sheets
COMPLETE SPECIFICATION Sheet No.
2
APPLICATION NO. 77/6199 Orlginal
SEE ORIGINAL JUGDMENT SKETCH
JOHN
& KERNICK
Patent Attorneys for the Applicant
JOHn & KERNICK
Patent Attorneys for the Applica