About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: Supreme Court of Appeal
SAFLII
>>
Databases
>>
South Africa: Supreme Court of Appeal
>>
1988
>>
[1988] ZASCA 82
|
|
De Beers Industrial Diamond Division (Pty) Ltd. v General Electric Company (188/87) [1988] ZASCA 82; [1988] 2 All SA 616 (A) (30 August 1988)
Case No 188/87
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE
DIVISION
)
In the appeal of :
DE BEERS INDUSTRIAL DIAMOND
DIVISION (PROPRIETARY) LIMITED
appellant
versus
GENERAL ELECTRIC COMPANY
respondent
CORAM
: CORBETT, HEFER, NESTADT,
KUMLEBEN JJA, et BOSHOFF AJA.
DATE OF HEARING
: 9 May 1988
DATE OF JUDGMENT
:
JUDGMENT
CORBETT
JA:
The respondent, the General Electric Company, of
Schenectady, State of New York, United States of America, is the patentee of
South
African patent no. 78/7060, a convention patent, entitled "Composite
compact components
/ fabricated
2
fabricated with high temperature filler metal and method of making same". The
patent application was filed with the Registrar of Patents
on 18 December 1978
and the patent was granted with 10 January 1978 as the effective date, being the
date upon which application
for the protection of the invention was made in the
convention country, viz. the United States of America.
In March 1982 appellant, De Beers Industrial Diamond Division (Pty) Ltd, made
application for the revocation of patent no. 78/7060
upon the grounds that the
invention was not new, that it was obvious, that the claims of the complete
specification did not sufficiently
and clearly define the subject-matter for
which protection was claimed and that the complete specification did not fully
describe
and ascertain the invention and the manner in which it was to be
performed. Respondent filed a counter-statement to this application
in which it,
in a
/ special
3
in a special plea, referred to a simultaneously filed application for the
amendment in various respects of the complete specification
of patent no.
78/7060, which amend-ment, it averred, would have a material effect upon the
issues raised in the appellant's revocation
application, and prayed that the
latter application be stayed in terms of
sec 51(9)
of the
Patents Act 57 of 1978
("the
1978 Act").
>The application for amendment was opposed by appellant, which filed its
answering evidence, in the form of an affidavit by Dr R J
Caveney, an expert in
the scien-tific field to which the invention claimed in patent no. 78/7060
relates. In his affidavit Dr Caveneý
averred (and sought to substantiate
these averments) that the proposed amendments conflicted with the provisions of
sec 51(6)
and
sec 51(7)
of the
1978 Act and
would also not cure either the
ground of revocation based upon lack of novelty or that contending that the
claims of the
/ complete
4
complete specification did not sufficiently and clearly define the
subject-matter for which protection was sought. Dr Caveney did
not traverse the
other grounds of revocation since (according to him) he had been ad-vised that
this would more appropriately be
done in the application for revocation itself.
In reply respon-dent filed an affidavit by its expert, Mr H P Bovenkerk. In this
affidavit
Mr Bovenkerk gave respondent's answers to the averments made by Dr
Caveney and, in respect of certain of them, stated that in order
to limit the
issues in the application for amendment respondent was prepared, by way of
alternative relief, to apply for certain
alter-native amendments. The ,original
notice of motion was thereafter amended to include these alternative
amend-ments. This provoked
a further affidavit from Dr Caveney, criticising the
alternative amendments on various grounds and contending that they were in
conflict
with the provisions of
sec 51(6)
of the
1978 Act or
, alterna-
/ tively
5
tively, rendered claim 1 of the specification ambiguous. In answer to these
criticisms respondent filed a further affidavit from Mr
Bovenkerk.
The application for amendment was heard by Van Zyl J, sitting as Commissioner
in the Court of the Commissioner of Patents. At the
hearing respondent abandoned
the original application for amendment and pursued only the application for the
alternative amend-ments.
The application was opposed by appellant. Van Zyl J
granted the application and ordered appel-lant to pay the costs occasioned by
its opposition. An appeal by appellant to the Full Bench of the Transvaal
Provincial Division ("the TPD") was dismissed with costs.
The judgment of the
TPD has been reported (see
De Beers Industrial Diamond Division (Pty) Ltd v
General Electric Company
1987 (4) SA 362
(T) ). Appellant now appeals to
this Court.
/ The
6
The invention disclosed by the complete
speci-
fication of patent no. 78/7060 relates to
components
consisting of what are termed "abrasive compacts",
which are
used in wire dies, wear surfaces, rock-cutting
and drilling equipment and
cutting tools for machining.
According to the body of the specification, the
area
of "primary interest" for the invention is in components
useful as
cutters for rock-drilling bits and techniques
for the fabrication of such
components. The specifica-
tion uses two terms in relation to compacts, viz.
"cluster
compact" and "composite compact". These are defined.
A cluster
compact is stated to be —
" a cluster of abrasive particles
bonded together either (1) in a self-bonded relationship, (2) by means of a
bonding medium disposed between the crystals, or (3) by
means of some
combination of (1) and (2)."
A composite compact is defined by the specification, in its original form, as
—
/ "a cluster
7
"a cluster compact bonded to a substrate material such as cemented tungsten
car-bide. A bond to the substrate can be formed either
during or subsequent to
the formation of the cluster
compact."
In both these definitions
there is, in addition, reference
to disclosures in certain United States
patents, which are
said to be incorporated by reference in the
specification;
but more of this anon.
The specification further discloses that con-ventional rotary drill bits have
until now used as cutting elements steel teeth, steel
teeth laminated with
tungsten carbide, an insert of cemented tungsten carbide or natural diamonds,
all of which are set or moulded
in a tungsten car-bide crown. Due to the
relatively short life and/or high operating cost of these conventional designs,
it has recently
been proposed to use synthetic diamond composite compacts as the
cutting element in such drills.
/ The
8
The specification goes on to explain that in adapting composite compacts to
certain drill bit appli-cations, it has been found to
be desirable to provide an
elongated base or support for the composite compact to aid attachment in the
drill crown. While it is
tech-nically feasible to form an integral composite
compact of an adequate length directly under high temperature and pressure (and
here the specification makes reference to the disclosures in another United
States patent), this has not been adopted commercially
because of the
significantly increased cost of manufacture. One method of avoiding this added
cost is to braze an additional length
of cemented carbide to the carbide. base
of the composite compact (and here again reference is made to what is disclosed
in certain
United States patents). Where this has been done, field tests have
revealed a problem in that the stresses on each cutting element
en-
/ countered
9
countered in rock-drilling are severe and some "disattach-ment" of the
cutters has been experienced because the bond strength of the
components which
have been thus brazed together is not strong enough to withstand these
stresses.
At this point I should digress to state that
in the
specification "brazing" is defined as —
".... a group of welding processes where-in coalescense is produced by heating
to suitable temperatures above 800°F and by using
a brazing filler metal
having a melting point below that of the base metals. The filler metal is
distributed between the closely
fitted surfaces of the joint by capiiiary
action."
Reverting to designs whereby additional lengths
of
cemented carbide are brazed to the carbide base of
the composite compact, I
note that the specification
states that in these designs available attachment
techniques and
acceptable brazing filler metals for use
/ with
10
with a diamond composite compact —"made in accordance
with the
teaching" of United States patent no. 3,745,623 —
are limited because
the diamond layer of such compacts
is thermally degraded at temperatures
above approximately
700°C. Similarly it has been found that a cubic boron
nitride
composite compact — "made in accordance with
the teaching of" United
States patent no. 3,743,489 —
is also thermally degraded at
temperatures above approximately 700°
Because of the thermal degradation
problem, it has been
necessary to use brazing filler metals with a
liquidus
(meaning, in lay terms, melting point) below 700°C.
Such metals form
braze joints generally of lower strength
than braze filler metals having a
higher liquidus.
Moreover, even when metals having a lower liquidus
are
used temperatures approaching those at which the
diamond layer is degraded
are required, resulting in
great care having to be exercised to prevent
degradation
/ of
11
of the compact during brazing.
With this introduction the specification then proceeds to describe the
invention. The objects of the invention are stated as follows:
"Accordingly, it is an object of this invention to provide improved and stronger
components comprised of composite compacts.
Another object of this invention is to provide an improved cutter com-ponent for
drill bits.
Another object of this invention is to provide an improved fabrication technique
for forming high strength bonds to composite compacts
without degrading the
particulate layer of the composite compact.
Another object of this invention is to provide an improved fabrication technique
for forming a high strength bond between a composite
compact and cemented
carbide pin in the fabrication of cutters for drill bits.
Another object of this invention is to provide improved techniques where-by
small composite compacts produced by an expensive high
temperature,
/ high
high pressure process can be dimensionally scaled up to larger sizes permitting
easier attachment of the compact to a tool
body".
Under the heading "Summary of
the Invention" the invention
itself is thus described:
"These and other objects of the invention are accomplished by a component
comprised of a composite compact bonded to a substrate
with a high temperature
filler metal which, to form a bond, re-quires the exposure of the surfaces to be
bonded to a temperature
substantially greater than the degradation temperature
of a particulate layer of the compact and a method for fabrication thereof.
The
method comprises the steps of (1) disposing the composite compact in thermal
contact with a heat sink, (2) disposing the compact
adjacent to a substrate with
a high temperature filler metal disposed therebetween, and (3) heating the base
layer of the compact,
filler metal and substrate to a temperature in excess of
the degradation temperature to form a high strength bond while maintaining
the
temperature of the particulate layer of the compact below the degradation
temperature thereof".
/ It
13
It appears from the drawings contained in the specifica-tion and the
description of the preferred embodiments that the "particulate
layer" referred
to in the summary of the invention consists of a layer of bonded abrasive
particles of either diamond or hard phase
boron nitride, which is bonded along
an interface to a base layer of cemented carbide to form the composite compact.
As I understand
the position, it is the exposed or upper surface of this
particulate layer which forms the cutting edge of the compact.
As the summary of the invention indicates, the invention consists of both a
product and a method. The product is a composite compact
bonded to a substrate
(sometimes referred to as a "pin") with high temperature filler metal which, to
form a bond, requires the exposure
of the surfaces to be bonded and the filler
metal to a temperature substantially greater than the degradation
/ temperature
14
temperature of the particulate layer of the compact. The method is one for
fabricating such a compact, using,
inter alia
, a heat sink which
maintains the tem-perature of the particulate layer of the compact below the
degradation temperature thereof,
while at the same time the base layer of the
compact, the filler metal and the substrate are heated to a temperature in
excess of
the degradation temperature to form a high strength bond. One of the
drawings, as explained in the section on preferred embodiments,
shows an
apparatus for fabrica-ting a component, consisting of composite compact and
substrate, in this way.
The specification concludes with 14 claims, some of them product claims,
others method or apparatus claims. Of them only claims 1
and 2 are of relevance
for present purposes. They read:
/ "A component
15
"1. A component comprising:
(a) a composite compact comprised of
(i) a particulate mass of bonded abrasive particles selected from the group
consisting of diamond and boron nitride, said particulate
mass being subject to
degradation at temperatures above a predetermined temperature, and
(ii) a second mass bonded to said parti-culate mass along an interface, said
second mass having a surface spaced from said interface;
(b)
a substrate;
and
(c)
a filler metal disposed between and
bonding said substrate to the surface of said se-cond mass, said filler metal
having a liquidus
greater than said degradation
temperature.
2. The component of claim 1
wherein:
(a)
said particles are
diamond;
(b)
said degradation temperature is
approxi-mately 700°C; and
(c)
said
substrate and said mass are cemen-ted carbide."
/ I
16
I come now to the application for amendment. The main aim of this
application, as originally conceived, was to amplify the wording
of claim 1 and
incorporate in it the substance of claim 2. The allegation in the revocation
proceedings that the invention was not
new (referred to above) was based upon an
anticipation said to be found in S A patent specification 77/1904. This patent,
of which
respondent was also the patentee, related to a rotary drill bit. In the
specification there is a description of a diamond compact
comprising a thin
layer of polycrystalline diamond bonded to a cement car-bide substrate; and of a
cutting element formed by at-taching
the compact to a drill bit by brazing or
soldering the carbide substrate to a cemented carbide pin. In his affidavit
filed in support
of the original applica-tion for amendment the late Dr J R
Steyn (whose untimely death last year was a great loss to the profession)
iden-
/ tified
17
tified this description as being the probable basis of the appellant's attack
upon the novelty of the invention; but went on to point
out that it appeared
clearly from other portions of the specification of patent no 77/1904 that the
process therein described degraded
the diamond layer, whereas the present
invention had as its object the prevention of such degradation. Dr Steyn further
stated that
respondent had been advised that claim 1 of the patent in suit might
conceivably be interpreted as including a composite compact
having degraded
diamond particles, although such an interpretation would be con-trary to the
whole purpose of the invention. Accordingly,
the application included an
appropriate amendment of claim 1. At the same time it was necessary to limit
claim 1 to cubic boron nitride
(instead of boron nitride) in order to bring the
claim into conformity with the body of the specification and to amplify it so as
to
/ incorporate
18
incorporate claim 2. These considerations prompted a proposed amendment of
sub-paras (a) (i) and (c) of claim 1 to read as follows
(the new words being
underlined):
"A component comprising:
(a) A composite compact comprised of
(i) a particulate mass of bonded abrasive
particles selected from the
group
consisting of diamond and
cubic
boron nitride, said
particulate
mass being subject to degradation
at temperatures above a
pre-determined
temperature
of approximately 700°C
said
particulate mass not having
been so degraded
, and
(b) A filler metal disposed between and
bonding said substrate to the
surface
of said second mass,
said substrate
and said mass being
cemented carbide
,
said filler metal having a liquidus
greater than
said degradation tempera-
ture."
The amendment application comprehended other matters
as well, but these
were merely the correction of certain
typing errors and the substitution of
new reference numbers
/ for
for certain United States patent applications (referred to in the
specification) which had since been granted.
In his answering affidavit Dr Caveney criticised the proposed introduction in
claim l(a)(i) of the words "of approximately 700°C
said particulate mass
not having been so degraded" by pointing out that the only disclosure or basis
in the body of the specification
for the introduc-tion of these words was a
passage (referred to above) in which it is stated that the diamond layer of
composite
compacts made in accordance with United States patent no 3 745 623 and
that the cubic boron nitride layer of composite compacts made
in accordance with
United States patent no 3 743 489 are thermally degraded at temperatures above
approximately 700°C. Thus
the reference to this temperature factor is
confined to these two types of composite compact. Dr Caveney went on to explain
that
the temperature at which a particulate mass of bonded
/ abrasive
20
abrasive particles selected from the group consisting of
diamonds and cubic boron nitride would degrade depended on many factors and
could in certain circumstances in fact be as high as 1000°C. He, therefore,
submitted that the temperature limitation which
the respondent sought to
introduce in claim 1 related only to the com-pacts described in the two United
States patents cited and
that consequently claim 1 in its amended form, to the
extent that it was not limited in this way, would not fairly be based on the
specification before amendment (in contravention of
sec 51(6)(b)
of the
1978
Act) and
would introduce new matter or matter not in substance disclosed in the
specification before amendment (in con-travention of
sec 51(6)(a)
). Dr Caveney
furthermore contended, for reasons which need not be canvassed, that the
introduction of the words "of approximately
700°C" as a qualification of
the original words of the claim,
/ "a predetermined
21
"a predetermined temperature", was ambiguous and that, whichever way it was
read, it would result in the amend-ment being in conflict
with either
sec 51(6)
or
sec 51
(7).
In his replying affidavit Mr Boyenkerk explained that the invention in suit
described a technique that was of relevance to a specific
compact, namely one
which had diamond or cubic boron nitride bonded to a substrate material such as
cemented tungsten carbide. He
admitted that there were diamond and cubic boron
nitride compacts which would degrade at a temperature much higher than
700°C,
but averred that the patent in suit did not describe such compacts
and that the purpose of the proposed amendment to claim 1 was
to exclude such
compacts. He further admitted that the temperature limitation to be introduced
by the proposed amendment was in order
to limit the claim to the types of
composite compacts
/ described
22
described in the cited United States patent specifications.
He denied the
various allegations that the proposed amendment
was in conflict with
secs
51(6)
and/or (7). He stated,
however, that in order to "limit the issues" in
the amend-
ment application respondent was prepared by way of
alter-
native relief to change the amendment applied for in
respect of para. (a)(i) of claim 1 to read (the changes
from the original
being underlined) —
"A particulate mass of bonded abrasive particles selected from the group
con-sisting of diamond and
cubic
boron nitride, said particulate mass
being subject to degradation
in said com-posite compact
at temperatures
above a predetermined
degradation
temperature,
said particulate mass
not having bee
n
so degraded
,
and".
He further indicated that another
amendment, which would "solve the Respondent's (the appellant on appeal)
pro-blem", would be one
which added at the end of the first sentence of the
definition (quoted above) of composite
/ compact
23
compact in the body of the specification the words —
" and which is made in accordance
with
the teaching of US Patent 3,745,623 or US Patent 3,743,489 or US Patent
3,767,371."
These two proposed amendments were incorporated in the amendment asked for in
the alternative prayer in an amend-ed notice of motion,
which prayer was, as I
have indicated, granted by the Commissioner.
On appeal before us two main issues were
argued:
(a)
Whether the application for amendment in terms of the alternative
prayer was not defective in that "full reasons" for the amendment
had not been
furnished, as required by
sec 51(1)
of the
1978 Act.
(b
)
Whether the amendment would not give rise to an invalid claim. If it
would, then, so it was argued, it ought not to have been
granted.
/ Although
24
Although appellant's counsel did not place issue (a) above in the forefront
of his oral argument — in fact he merely referred
to what was stated in
the heads of argument — the point has been raised and it is necessary for
us to deal shortly with it.
The relevant portions of
sec 51
read as follows:
"51. (1) An applicant for a patent or a patentee may at any time apply in the
prescribed manner to the registrar for the amendment
of either the relevant
provisional specification or the relevant complete specification, and shall in
ma-king such application, set
out the nature of the proposed amendment and
furnish his full reasons therefor.
(9) Where any proceedings relating to the application for a patent or a patent
are pending in any court, an application for the amendment
of a relevant
specification shall be made to that court, which may deal with such application
as it thinks fit but sub-ject to the
provisions of subsections (5), (6) and (7),
or may stay such pending proceedings and remit such application to be dealt with
in accord-ance
with subsections (2) to
(8).''
/ It
25
It seems clear that the application in
casu
fell to be dealt with
under
sec 51(9).
This subsection does not lay down any particular procedure, nor
is one to be found in the regulations. Unlike certain other subsections,
subsec
(1), which speaks of "full reasons" being furnished in an application to the
registrar for amendment, is not referred to or
incorporated into sub-sec (9).
Nevertheless, it was held by McEwan J in the Court of the Commissioner of
Patents, in the matter of
Dresser Industries Inc v South African Inventions
Development Corporation
(1982)BP 317, at p 328 B, that a court to which an
application under subsec (9) was made should be informed of the nature of the
application and that the applicant should equally be required to furnish his
reasons therefor. In the Court of the Commissioner and
in the Court a
quo
(see reported judg-ment at p 365 D-G) it was held that the respondent had
/ furnished
26
furnished reasons, both for the amendment as originally conceived and for the
alternative amendment. Before us respondent's counsel
challenged the correctness
of what was decided in this connection in the
Dresser In-dustries
case,
supra
, and submitted that it was not necessary in an application under
sec 51(9)
for reasons to be furnished. I very much doubt whether this
sub-mission is sound, but I do not find it necessary to de-cide the point
for I
am of the view that it was correctly held by the Courts a
quo
that
respondent had sufficiently complied with this requirement.
I have dealt at some length with the reasons given by Dr Steyn in his
affidavit for the original appli-cation. In my view, this affidavit
fully
explains why respondent sought to amend claim 1, eliminate claim 2 and make the
other formal corrections to the specification.
And I do not understand
appellant's counsel to contest
/ this
27
this. Appellant's attack, on this issue, is, as I
understand it, confined to the alternative amendment.
Here it is true that
the only explanation for the deviations
from the original amendments which were brought about by
the alternative amendment is to be found in the somewhat
cryptic statements in Mr Bovenkerk's affidavit, where
he speaks of limiting the issues and solving the appellant's
problem.
Reading his affidavit, in conjunction with
that of Dr Caveney, it i s clear, however, that the devia-
tions from the original amendment were designed to over-
come Dr Caveney's
two main grounds of attack upon the
alternative amendment by limiting the
claim to the com-
pacts described in the United States patents cited
and
by eliminating the reference to the temperature of "approxi-
mately
700°C", alleged to be a source of ambiguity and
consequent invalidity.
In my view, this sufficiently
explains the alternative amendment in so far as it de-
/ viates.
28
viates from the original amendment; and, as I have indicated, it is not
disputed that adequate reasons were given for the original
amendment. Issue (a)
must there-fore be decided in favour of the respondent.
I turn now to issue (b). In the instant case the Commissioner recognized that
although he had a dis-cretion in amendment proceedings,
subject to his paying
due regard to the provisions of subsecs. (5), (6) and (7) of
sec 51
, an
amendment should not be g
ranted if af
ter amendment the specification
would contain an inval
id claim (see in this connection the judgment of
Colman J, sitting as Commissioner in the Court of the Commissioner of Patents,
in
the matter of
James s Robbins & Associates Inc v Dresser Industries
Inc
(1975) BP 411, at pp 418 E - 419 A). Be-fore us the parties appeared to
accept the correctness of this proposition.. Furthermore
it seemed to be common
cause that inasmuch as an amendment, if allowed,would
/ be
29
be retrospective in its operation to the effective date (cf
Holtite
Limited v Jost (Great Britain) Limited and Others
[1979] RPC 81
, at p 91)
the question as to whether it would introduce an invalid claim should be
adjudged in the light of the law as it was as
at the effective date (see
Burrell:
South African Patent Law and Practic
e, 2nd ed,
sec 9.20).
Since
the effective date of SA patent no 78/7060 is 10 January 1978 and since the
1978
Act came
into operation only on 1 January 1979, it would appear that the Patents
Act 37 of 1952 (the 1952 Act) is the legislation relevant
to such questions of
invalidity.
In oral argument before us appellant's
counsel
relied solely on sec 23(1)(g) of the 1952
Act, which
provides that the grant of a patent may be opposed on
the ground —
"that the claims of
the complete spe
cifi-
cation do not
sufficient
ly and clearly d
efine _t
he__subjec
t-matter for whic
h
protection is cl
aimed."
/
Similarly
30
Similarly a patent granted may be revoked on this ground (see
sec 43(1) of the 1952 Act). This may, therefore, be regarded as a ground
of
invalidity. (Reference may also be made in this connection to the provisions of
secs 10(3)(c) and 10(4) of the 1952 Act.) Although
this ground of invalidity is
often referred to as "ambiguity", "uncertainty of claiming" would appear to be a
preferable expression
(see remarks of Nicholas J in
Colgate-Palmolive Company
v Unilever Limited
(1981) BP 121, at p 125 G). In
Letraset Ltd v Helios
Ltd
1972 (3) SA 245
(A) Holmes JA spoke of "sufficiency of definition of the
claims" (at p 251 B) and summarized what he termed "the basic principles
of
approach" (see pp 249 H - 251 A). Although in the final result the judgment of
Holmes JA was a minority one, what he said on the
issue of sufficiency of
definition carried the approval of all the other members of the Court. A full
discussion of the topic of
uncertainty
/ of
31
of claiming is also to be found in the judgment of the Full Bench of the TPD
(delivered by AckermannJ in
Colgate
-
Palmolive Co v Unilever Ltd
1983 (4) SA 249
at p 251 F - 254 H. It is not necessary to dilate upon this
topic: I shall merely highlight some of the principles which appear to
be of
importance in this case. Although I am primarily dealing with the position as it
was under the 1952 Act, these principles have
in general transcended the
replacement of the 1952 Act by the
1978 Act.
>The function of the claims in a complete speci-fication is to demarcate the
monopoly which the patentee thereby stakes out for himself
and thus to inform
prospec-tive rivals of the extent of the forbidden field. On the other hand, the
function of the body of the specifi-cation
is to instruct interested members of
the public on how to carry out the invention once the monopoly comes to an end
with the expiry
of the patent and the invention
/ becomes
32
becomes available for general utilisation. In order that they should properly
fulfil their appointed func-tion the claims must sufficiently
and clearly define
the ambit of the monopoly; hence the provisions of,
inter alia
, sec
23(1)(g) of the 1952 Act. What is re-quired is not absolute certainty, but
reasonable certainty. Consequently vagueness or ambiguity
or uncertainty of
claiming which cannot be resolved with reasonable certainty by a process of
interpretation will cause a claim to
fall foul of sec 23(1)(g) and render it
invalid. The criterion of reasonable certainty must be considered from the point
of view
of the reader of the patent who is reasonably skilled in the relevant
art, the so-called skilled addressee. Who he is and with what
knowledge and
expertise he should (hypothetically) be endowed will depend upon the nature of
the invention and the technology of
the field in which it operates. As remarked
by Ackermann J in the
Colgate-Palmolive
case,
supra
, at
/ p 254 D —
33
p 254 D —
" having regard to the fact that
the function of the claim is to inform prospective rivals of the limit of the
monopoly, the expertise required of the addressee must
be the level of expertise
possessed by the ordinary rival, 'the ordinary skilled or qualified persons
engaged in the art'."
In the case of a
field having a highly developed technology
the hypothetical skilled reader
may not be a single person,
but a team of persons whose combined skills would
normally
be employed in that art in interpreting and carrying
into effect
the instructions contained in the patent.
These principles appear from the
judgments cited in the
previous paragraph, to which may be added
Gentiruco
A G
v Firestone SA (Pty) Ltd
1972 (1) SA 589 (A), at pp
611 H -
612 F, 615 C - 616 D; and the remarks of Nicholas
J in
Beecham Group
Limited v The B-M Group (Proprietary)
Limited
(1977) BP 14, at pp
27 G - 30 E). In the last-
mentioned case Nicholas J stated, with reference
to the
/ skilled ..
34
skilled addressee (at p 30 E):
"How is this 'hypothetical, 'notionaT, 'representative' person rendered
incarnate so as to be able to perform the important role
in a patent case? That
can only be done through the medium of an expert
witness."
It was recognized in
Gentiruco
's case,
supra
, at p 615 E, that certain words or
expressions in the claims may be affected or defined by what is said in the body
of the specification,
in which case the lang-uage of the claims must be
construed accordingly (see also the
Letraset
case,
supra
, at p 250
A).
A complete specification is also required to fully describe and ascertain the
invention and the manner in which it is to be performed
(sec 23(1)(f) of the
1952 Act). This is mainly the function of the body of the specification. Failure
to do so is generally termed
"insufficiency". Here the skilled addressee will
be
/ presumed
35
presumed to have a knowledge of the state of the art as it existed at the
date of the patent, and to be endowed with a reasonable
amount of common sense.
(See Burrell, op.
cit
. at pp 169-70 and the authorities there cited.)
In the present case claim 1 of the
complete
specification relates to a component
comprised of (a)
a composite compact, (b) a substrate and (c) a filler
metal. The term
"composite compact" is defined in the
body of the specification. For convenience I repeat
that definition,
including the words whose insertion
is sought by the alternative amendment (underlined),
and I add the two sentences following the definition
to indicate the
context:
"A composite compact is defined as a cluster compact bonded to a substrate
material such as cemented tungsten carbide
and which is made in accordance
with the teaching of U.S. Patent 3,745,623 or U.S. Patent
3,743,489
/ or
or U.S. Patent 3,767,371
. A bond to the substrate can be formed either
during or subsequent to the formation of the cluster compact. Reference can be
made
to U.S. 3,743,489, U.S. 3,745,623 and U.S. 3,767,371 for a detailed
disclo-sure of certain types of composite compacts and methods
for making same.
(The disclo-sure of these patents are hereby incorpora-ted by reference
herein)."
It is clear that this is a
case where the claim is affected or defined by what is stated in the body of the
specifica-
tion and that the term "composite compact" in the claim must be
interpreted accordingly.
Appellant's counsel, recognizing this, argued that the introduction of the
words underlined would ren-der the definition of "composite
compact", and
therefore claim 1, uncertain because of —
(1)
the use of the word
"teaching" which was uncer-tain in meaning and/or ambiguous;
and
(2)
the reference to the three United
States patents.
/ The
37
The relevant meaning of the word "teaching" is: "That which is taught; a
thing taught, doctrine, instruction, precept"
(The Oxford English
Dictionary
, sv. "teaching"). The "teaching" of a patent means, in my view,
the instruction contained in the specification as to how the invention
works or
how to make or operate it. This is done by the body of the specification (see
Colman J in
P.A. Moroney v West Rand Engineering Works (Pty) Ltd
(1970)
BP 452, at p 456 G; see also Blanco White,
Patents for Inventions
, 5th
ed, par 2-004, 2-005). Accordingly, I do not find any ambiguity or uncertainty
inherent in the mere use of the word "teaching".
It is argued, however, that its
use in conjunction with the three United States patents gives rise to
uncertainty.
It was submitted by appellant's counsel, in
the
first place, that it was not legally competent for a patentee to incorporate an
extraneous document by
/ reference
reference as part of the process of defining his
monopoly.
No authority was quoted in support of this submission.
Indeed counsel for both parties informed us that they
were not aware of
any case-law on the subject, either
in this country or in England. In
Power Steel Construction
Co (Pty) Ltd v African Batignolles
Constructions (Pty)
Ltd
1955 (4) SA 215 (A), the specification of
the patent
in suit expressly referred to an earlier patent of the
patentee
in certain of the claims, but that was a patent
of addition. In the case of
B-M Group (Pty) Ltd v
Beecham Group Ltd
1980 (4) SA 536 (A),
the "penicillin
case", there was the following express reference in
the
patent specification (the patent having been granted
in 1963) to an
earlier patent (granted in 1959) in the
name of the same patentee:
"Thus the compounds of the present in-
vention may be prepared and isolated
in
the manner described and claimed in our
South African patent no
59/3827.... "
(This appears from the
appeal record.)
/ In
39
In considering the issues of usefulness and
inventiveness
raised in regard to the 1963 patent Trollip JA,
delivering
the judgment of this Court, stated (at p 548 A) —
"For these purposes it is permissible to have regard also to the specification
of the 1959 patent, since it is incor-porated into
the 1963 patent
specifica-tion, expressly as to part thereof and by reference as to the
remainder. The manifested intention of the
patentee was that the two
specifications should be read together for those purposes (cf, eg, Wessels
Law of Contract
2nd ed vol 1 para
1979)."
The paragraph in
Wessels
referred to contains the fol-
lowing statement:
"It is obvious that if two instru-ments relate to the same subject matter and
the one refers to the other, the intention of the parties
can be gathered from
both, and therefore it follows that the one can be used to interpret the
other."
It would seem from this that,
as far as the description
of the invention is concerned, there i s no
objection
/ in
40
in principle to the incorporation by reference of the teaching of a prior
patent. Accordingly it may be argued that a claim which
refers, expressly or by
impli-cation, to a component which is described in the body of the specification
by reference to a prior
patent is equally unexceptionable.
In England the only case of any relevance which I have been able to find is
Temescal Metallurgical Corpo-ration's Application
[1964] RPC 1, which
endorsed a pre-vious ruling by the Assistant Comptroller in another matter. The
gist of the decision was that
an application purporting to be a convention
application accompanied by a "specification" which consisted merely of
references to
an application filed in the United States Patent Office (which
priority document was not available in the United Kingdom at the time
the
application was filed) was held not to be a complete specification within the
meaning
/ of
41
of the Patents Act 1949. This, however, was an extreme case of incorporation
by reference (see p 3 of the report) and, by reason of
the subsequent filing of
an amended specification fully describing the invention, the case was mainly
concerned with the question
of priority dates.
In the United States of America, where much the same requirements in regard
to sufficiency of disclo-sure and certainty of claiming
obtain as in this
country (see
American Jurisprudence
2d, vol 60, paras 346 and 398;
Lipscomb's
Walker on Patents
, 3 ed, paras 10.17 and 11.10 (pp 234 ff and
346) ), the incorporation by reference of prior United States patents is a
recognized
practice (see
American Jurisprudence
, op
cit
, para 359;
Walker op cit
, para 10.12, pp 206 ff). In the leading case of
General
Electric Company v Brenner
159 USPQ 335, a decision in 1968 of the Court of
Appeals, District of Columbia, Justice Tamm stated (at p 337) —
/ "The
42
"The doctrine of incorporation by reference is more clearly associated with
the law of wills where it antedates the federal system.
It is the offspring of
the economies of time and space and is used to enable one document to become.
part of another by reference
and to take effect as if the former clearly
outlined . the latter. In the law of patents, however, incorporation by
reference is
a new arrival. Its birth has been retarded by a too literal reading
of the statutes."
Later, referring to the extent to which incorporation
by reference may be
permitted, the learned justice said
(at p 338) —
"It is limited to reference to material available to the public. This would
exclude secret or privileged materials as in the case
of some abandoned patent
applications. It is reasonable also to exclude materials which are not easily
available to the public or
the Patent Office. This would include unpublished
dissertations and theses, obscure foreign publications and publications to which
there are no available English transla-tions. Books and learned treatises with
the imprimatur of the particular profession to which
they relate
ought
/ to
43
to be permitted to be incorporated by reference as to the specifics contained
therein."
In terms of guidelines
formulated by the United States
Commissioner of Patents essential material
may not be
incorporated by reference to,
inter alia
, foreign
patents,
apparently on the ground of possible non-availability
in the
United States (see
Walker
, op
cit
, para 10.12,
p 211).
Under our system of patent 1aw I can see no objection in principle to the
incorporation by reference in a patent specification of
the teaching of another
patent specification, provided that the other patent specification is available
to those persons interested
in ascertaining the limits of the monopoly, in other
words, rivals in trade. In fact considerations of economies of time and space
often make it desirable that there should be such incorporation by
reference,
/ particularly
44
particularly where the subject-matter of a patent specifi-cation consists of
a development of, or addition to, an existing patented
invention. That is
exemplified by the patent in suit, where the patentee took a number of
components well-known in the art (and,
in the case of the composite compact, the
subject-matter of certain prior patents) and added a technique whereby a filler
metal with
a liquidus temperature higher than the degra-dation temperature of
the particulate layer could be used to braze together the composite
compact and
the substrate without causing the particulate layer to be degraded, thus
spawning product, process and apparatus claims.
The proviso regarding
availability must, of course, not be lost sight of. Where the patent which is
incorporated is a South African
patent, no problem arises. As regards a foreign
patent, it seems to me that (in the absence of a rule or guideline similar
to
/ that
45
that adopted in the United States of America) its avail-ability to trade
rivals (or potential trade rivals) in South Africa must be
a question of fact to
be deter-mined in the circumstances of each case.
In the present case there is no evidence on this point. Nor is there any
suggestion by Dr Caveney in his second affidavit that the
United States patents
referred to in the portion of the alternative amendment relating to the
definition of composite compact were
not available to appellant. It was
apparently conceded by appellant in the Court below that it bore the onus in
regard to the objections
raised by it to the amendment and appellant's counsel
did not argue differently before this Court. Moreover, the concession would
seem
to be well-founded (see
Interfelt Products (Pty) Ltd v Feltex Ltd
1972
(3) SA 335 (T), at p 343 A;
Colaate-Palmolive Company v Unilever Limited
(1981) BP 121, at
/ p 126 A;
46
p 126 A; 1983 (4) SA 249 (T), at p 252 F); at any rate, in my view, there was
at least an onus upon the appellant to adduce evidence
on this issue. The
absence of such evidence must, therefore, redound to the detriment of the
appellant; and I find that the appellant's
first ground of objection based upon
the incorporation of the United States patents to be not well-founded.
It was further submitted by appellant's counsel that the incorporation by
reference of the teaching of the three United States patents
gives rise to what
was picturesquely described as "a marsh of uncertainty" in that —
(a) the contents of the United States patent spe-cifications may vary from time
to time and it is not clear whether the reference
in the proposed alternative
amendment is to the spe-cifications as originally published or as
sub-
/ sequently
47
sequently amended and published from time to
time;
(b)
the
United States patent specifications them-selves refer to prior art and prior
United States specifications;
(c)
the United
States patent specifications contain numerous examples and embodiments and
teach
or disclose both products and processes and
there is no indication as to which of these teachings was intended; and
(d) there is an inconsistency between the incorpo-
ration by reference of
the three United States
patents and the sentence which comes after
the
definition of "composite compact" (see quo-
tation above) and which
speaks of "certain
types of composite compact".
/ It
48
It seems to me, with respect, that these problems are chimerical rather than
real. As to (a) I am not con-vinced that the reference
to the teaching of the
United States patents should be read to include subsequent amendments, but apart
from this there is no evidence
to suggest that according to United States patent
law a patent once granted can be amend-ed in any significant manner; nor is
there
evidence, if such amendment can in law take place, to indicate that this
has occurred, or is likely to occur, in the case of the
three patents in
question. And in this connection it is worthy of note that when Dr Caveney
deposed to his second affidavit (on 14
September 1983) each of these patents had
been running for about ten years of its appointed term of seventeen years. The
absence
of such evidence must again redound to the detriment of the
appellant.
As to (b) and (c) above, an examination of the specifications of the three
United States patents reveals the following:
/ (1) United
49
(1) United States patent no 3,743,489, issued
on 3 July 1973, is entitled "Abrasive bodies
of finely-divided cubic boron nitride crystals"
and from the summary of the invention it appears
that the patent relates to the production of
cubic boron nitride compacts, by employing
various alloys as bonding media and the produc-
tion of tools wherein the cubic boron nitride
compact is bonded to a sintered carbide support
block. The specification further explains
that the composites produced in the practice
of the invention will usually be bonded to
a larger body, eg a tool shank or drill bit
for presentation to the tool to be cut.
The specification disclosed products and processes
for making the same.
(2) United States patent no 3,745,623,
issued on
/ 17 July
50
17 July 1973, is entitled "Diamond tools for machining". The
summary of the invention discloses that it relates to the preparation
of
diamond-tipped machine tools in which the working diamond content is present,
either in the form of a mass of diamond crystals
bon-ded to each other or in the
form of a thin skin of diamond crystals bonded to each other, such diamond
content being directly
bonded to a mass of extremely stiff cemented carbide
substrate, significantly larger than the dia-mond material being supported
thereon.
Else-where the specification speaks of this diamond content as a
"diamond compact". Both products and processes are disclosed.
(3) United States patent no 3,767,371, issued on
23 October 1973, is entitled "Cubic boron nitride/ sintered carbide abrasive
bodies". The summary
/ of
4
51
of the invention shows that it concerns the production of ábrasive
compacts comprising combinations of cubic boron nitride
crystals. and sintered
carbide. The specification again discloses various products and processes.
It is true that these specifications contain references to previous United
States specifications, but as I read them these references
are merely for the
purpose of describing the existing state of the art, matters which I imagine the
patentee could have assumed would
be known by the skilled addressee. For
example, under the heading "Background of the invention" reference is made in
patent specification
no 3,743,489 to a prior patent in which the preparation of
cubic boron nitride is disclosed and to another patent which discloses
the
bonding together of cubic boron nitride crystals to form a compact abrasive
body. And in a description
/ of
52
of one preferred embodiment a high pressure, high tempera-ture apparatus, as
disclosed in another prior patent, is referred to. And,
in any event, Dr Caveney
does not, in his second affidavit, appear to raise these cross-references to
earlier patents as an objection
to the amendment.
More specifically, in regard to (c) above, Dr Caveney stated in his second
affidavit, taking one of the United States specifications
by way of example,
that if the words "made in accordance with the teaching" of the patent meant in
accord-ance with the disclosures
in the body of the specification, including the
examples, different products with different characteristics would be obtained
depending
upon which example was followed. This, according to him, intro-duced
uncertainty. In answer to this respondent's coun-sel contended
that there was no
uncertainty at all: the words quoted meant that the term "composite
compact",
/ as
52
of one preferred embodiment a high pressure, high tem-perature apparatus, as
disclosed in another prior patent, is referred to. And,
in any event, Dr Caveney
does not, in his second affidavit, appear to raise these cross-references to
earlier patents as an objection
to the amendment.
As to (c) above, Dr Caveney stated in his second affidavit, taking one of the
United States specifications by way of example, that
if the words "made in
accordance with the teaching" of the patent meant in accordance with the
disclosures in the body of the specification,
including the examples, different
products with different characteristics would be obtained depending upon which
example was followed.
This, according to him, intro-duced uncertainty. In answer
to this respondent's coun-sel contended that there was no uncertainty
at all;
the words quoted meant that the term "composite compact",
/ as
53
as used in the specification of the patent in suit, in-cluded
all
composite compacts made in accordance with the teaching of each of the United
States patents, how-ever much the compacts might differ
from one another in
content or characteristics. Thus the definition, so he argued, might run to a
large number of diverse compacts,
but this did not render the claiming of the
patent in suit vague or uncertain, whatever other conse-quences it might have.
It seems
to me that this conten-tion is correct and that it completely disposes
of this ground of objection. In substance, too, it represents
Mr Bovenkerk's
answer on affidavit to Dr Caveney on this point.
As to (d) above, I do not think that there is any inconsistency between what
is to be inserted by the alternative amendment into the
definition of "composite
compact" and what appears in the later sen-
/ tence
54
tence. Clearly the three United States patents do dis-close certain types of
composite compact and methods for making the same and
it is these composite
compacts that are made the subject-matter of the definition.
For these reasons I have come to the conclusion that none of the appellant's
objections to the proposed amendment of respondent's
patent specification is
well-founded. While I fully subscribe to the importance of re-quiring a patentee
to demarcate his monopoly
with reasonable certainty, I do not think that in this
case appellant has shown that the proposed amendment will render claim 1 of
the
specification invalid on the ground of uncertainty of claiming.
The appeal is dismissed with costs, including the costs of two counsel.
CORBETT JA.
HEFER JA)
NESTADT JA) CONCUR KUMLEBEN JA) CONCUR. BOSHOFF AJA)