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[1995] ZASCA 131
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G I Marketing CC v Fraser-Johnston (172/94) [1995] ZASCA 131; [1996] 1 All SA 1 (A) (20 November 1995)
Case No 172/94
IN THE SUPREME COURT OF SOUTH AFRICA (APPELLATE DIVISION)
In the appeal of :
G I MARKETING CC
Appellant
and
I
FRASER-JOHNSTON
Respondent
CORAM
: CORBETT CJ, E M GROSSKOPF, NESTADT, HARMS JJA, et SCOTT
AJA.
DATE OF HEARING
: 18 September 1995
DATE OF JUDGMENT
: 20
November 1995
JUDGMENT
CORBETT
CJ: /
2
CORBETT
CJ:
In the Court below, the Court of the Commissioner of Patents,
the
respondent made separate applications for the revocation of patent no
87/6659
("the 1987 patent") and patent no 89/8855 ("the 1989 patent"). The
patentee
in each case was the appellant. The two applications were heard
together by
the Commissioner (Van Dijkhorst J).
The history of the two patents is briefly as follows. The 1987 patent
application was filed on 7 September 1987. One aspect of the
invention as
described in the body of the specification was a lavatory plumbing arrangement,
which included a toilet pan incorporating
a water-trap, a waste disposal pipe
connected to the pan, a waste pipe extension, which extended only a short height
above the pan
flood level, and a two-way valve means (normally closed) leading
to the atmosphere. Another aspect of the invention described in
detail in the
specification was the two-way valve means. The patent specification contained 15
claims. Of these claims 1 to 8 inclusive
and 14 related to the lavatory plumbing
arrangement; and claims 9 to 13 inclusive and
3 15 to the two-way valve means. In 1989 applications were made to amend
the
1987 patent by the excision of the claims pertaining to the valve means, i
e
claims 9 to 13 and 15. At the same time the patentee launched a
divisional
application for the 1989 patent with the request that it be
antedated to 7
September 1987. This application related essentially to the
same invention but,
when granted (as it was), it had the effect of claiming
the valve means formerly
claimed in the 1987 patent, though in different
language and in 25 claims.
These applications were granted.
It later transpired, however, that the amendments to the 1987 patent were not
sought and effected in the manner prescribed in
sec 51(1)
of the
Patents Act 57
of 1978
("the
Act") and
in 1992 the amendments were set aside by the
Commissioner. In the result the 1987 patent reverted to its original state. Thus
claims
relating to the valve means are to be found in both patents.
At the hearing before Van Dijkhorst J the grounds of revocation were reduced
to three, viz lack of novelty, obviousness and, in the
case of the 1987 patent,
ambiguity as well. These issues were referred for the hearing of
4 oral
evidence, but at the request of the parties Van Dijkhorst J decided the
issues of novelty and ambiguity on the papers. For the purposes of
deciding
the issue of novelty he concentrated on claim 9 of the 1987 patent
and claim 1
of the 1989 patent, since it was common cause that a successful
attack upon
them would, as he put it, "bring about the demise of the
patents". He held that
claim 9 of the 1987 patent was anticipated by a
state-of-the-art document
referred to as "the Schneider patent" and that both patents were anticipated
by
a document known as "the Blau patent". He further held that claim 2 of
the
1987 patent was ambiguous, i e was not clear (see
sec 61(l)(f)(i)
of the
Act).
>He accordingly made an order revoking the patents, "subject to what is
ordered
in paragraph 2 of this order", and decreeing that the patentee should pay
the
costs of both applications. Paragraph 2 of the order reads as follows:
"The revocation orders granted ... are provisional. They will become fully
operative in respect of the patent concerned, if the patentee
does not within
one month file notice of an application to amend such patent, or if having filed
such application, the patentee withdraws
it. If such an application is made as
aforesaid and not withdrawn, it shall be decided at the hearing of such
application whether
or not the revocation order is to be put into
operation."
5 The judgment of the Court a quo has been reported (see
Ian
Fraser-Johnston v
G I Marketing CC
1993 BP 461).
With the necessary leave, appellant has appealed to this
Court
against the judgment and order of the Court a quo, save for the finding
and
order of invalidity made in respect of the 1987 patent on the ground that
claim
2 thereof was lacking in clarity. Thus all that remains in issue, as
far as this
appeal is concerned, is whether either or both of the patents
is/are not new by
reason of anticipation by either the Blau patent or the
Schneider patent or both
of these state-of-the-art documents. Before dealing
with these issues it is
necessary to say more about the patents
themselves.
I commence with the 1987 patent. It is entitled simply "Vent" and the opening
sentence of the specification states that the invention
relates to vent systems
for use in the "plumbing field". The background to the invention is thus
described in the specification (for
convenience of reference I have numbered
this and other paragraphs quoted from the specification):
(1) "A lavatory pan is in practice connected behind the trap
to
6
a waste pipe for conveying away matter flushed from the pan. This waste pipe is
normally provided with an extension pipe extending
upwardly above the roof of
the building (at least two metres above the location of the pan). This extension
pipe provides a source
of air to the waste pipe when matter is flushed down the
pipe to prevent there being an airlock in the waste pipe or the syphoning
dry of
the water trap. Furthermore the upper extension of the waste pipe provides a
safety feature for the plumbing in case there
should be a blockage in the waste
pipe. The feature of the waste pipe extension is technically satisfactory and is
widely and extensively
used in plumbing. However the provision of this extension
has its disadvantages because of the extra costs involved in the erection
of the
extension, especially in tall buildings, and the fact that roofs have to be
modified to accommodate these extensions and whenever
a building is being
decorated or redecorated the extension pipe must itself be additionally painted
separately from the wall beside
which it is
located."
The specification then proceeds to
describe the two "aspects" of the invention (to which I have already alluded) in
the following
terms:
(2) "According to one aspect of the invention there is provided a plumbing
arrangement including a toilet pan incorporating a water
trap, a waste disposal
pipe connected to the pan and a waste pipe extension extending above the water
trap, characterised in that
the waste pipe extends only a short height above the
pan flood level and there has a normally closed two way valve means leading
to
7
atmosphere. The valve means is preferably a differential valve opening to the
atmosphere, the arrangement being such that only a
small pressure difference is
required to permit air to flow into the waste pipe extension and a larger
pressure is required to allow
air to escape. A cover is preferably provided to
permit the air flow to and from the valve but still to prevent the ingress of
leaves
or dirt which could have a detrimental effect upon the working of the
valve.
(3) According to another aspect of the invention there is provided two-way valve
means for use in an arrangement as set out above,
the valve comprising a
housing, which is preferably cylindrical, having a cross-plate thereacross, at
least two apertures through
the cross-plate and a pair of one-way valves opening
in opposite directions and carried in the cross-plate, the one-way valves being
preferably arranged to open at different pressures. The one-way valves
preferably each comprise a seat, a flexible disc which can
seal on to the seat
but which when there is excess pressure through the seat moves off the seat to
permit gas flow therethrough and
spring means holding the disc on to the seat,
the strength of the spring means determining the said excess pressure. There are
preferably
more than one such aperture and a one-way valve
therein."
The specification continues by describing
various embodiments of the invention with reference to certain accompanying
drawings. These
show the general plumbing arrangement, including lavatory pan,
water trap, waste pipe
8 and an upward waste pipe extension; and also, in
detail, the two-way valve
means. From the drawings it appears that the "flood level" of the pan,
referred
to in the specification in the context of the height of the waste
pipe extension,
is located at the top of the rim of the pan. It is claimed in
the specification that
the valve arrangement provides a satisfactory seal in
normal circumstances to
prevent gasses with foul smells escaping from the
waste pipe, while at the same
time permitting air ingress to the waste pipe
extension to prevent (a) air locks
being formed in the waste pipe or (b) the
syphoning dry of the pan trap. It
further permits gasses to escape should
there be a blockage in the waste pipe.
Claims 1 and 9 of this patent read as follows:
"1. A plumbing arrangement including a toilet pan incorporating a water trap,
a waste disposal pipe connected to the pan and a waste
pipe extension extending
above the water trap, characterised in that the waste pipe extends only a short
height above the pan and
there has a normally closed two way valve means leading
to atmosphere.
9. Two way valve means for use in an arrangement as claimed in any one of the
preceding claims, the valve means comprising a housing
having a cross-plate
thereacross, at least two apertures
9
through the cross-plate and a pair of oppositely opening one-way valves carried
in the cross-plate."
The "arrangement as claimed in
any one of the preceding claims" referred to in claim 9 consists of the general
plumbing arrangement
described in claim 1 and the body of the specification
(including the two-way valve) and various permutations thereof referred to
in
claims 2 to 8.
According to its specification the 1989 patent, which is
entitled "Plumbing Equipment", describes an invention relating to "vent systems
for use in the sanitary plumbing field". The specification explains the
background to the invention in terms identical to those appearing
in the 1987
patent. (See the above-quoted paragraph (1) of the 1987 specification.) It then
refers to the plumbing arrangement provided
for in the 1987 patent; and
continues to describe "the present invention", viz a two-way valve means, in
terms similar, but by no
means identical, to those appearing in the above-quoted
paragraph (3) of the specification relating to the 1987 patent. There follow
embodiments of the invention which use exactly the same drawings as those
appearing in the specification of the 1987 patent.
10 The specification of the 1989 patent claims the advantages
to be
derived from the valve arrangement in the same terms as the specification of
the
1987 patent. Claim 1 of the former specification reads as follows:
"1. A valve means for use in sanitary plumbing, the valve comprising a housing,
having
(a) an inlet connectable to a
pipe,
(b)
sealing means at the said inlet whereby the inlet can be sealed to
the said pipe,
(c)
a cross-plate across the
housing
(d)
a plurality of apertures through
the said cross-plate, and
(e)
a plurality of
one way valves respectively controlling fluid flow through the said apertures,
at least one of such valves permitting
flow through its associated aperture in
one direction only and the other said valve permitting flow through its
associated aperture
in the opposite direction
only."
It will be apparent from the aforegoing that
essentially the invention to which these patents relate is the two-way valve
means as
utilised in a sanitary (or lavatory) plumbing arrangement. The
arrangement, in so far as it comprises a toilet pan, a water-trap,
a waste
disposal pipe and a waste pipe
11
extension, is well-known and commonplace and could not possibly constitute
subject-matter for a patent. And the main advantage claimed
for the two-way
valve means is that it enables one to dispense with a relatively long waste pipe
extension.
I turn now to the issue of anticipation. By reason of the view which I take
of the matter it is necessary to refer only to the Blau
patent specification. It
is not disputed that this document formed part of the state of the art
immediately before the priority date
of the 1987 and 1989 patents and that it
consequently qualities as a document which could legally anticipate. The vital
question
is whether it does anticipate. This involves a comparison between the
claims which I have highlighted and the Blau specification.
It is appropriate to now take a closer look at the Blau
specification
which was published in 1973 and in terms of which a patent was granted by
the Patent Office, London. The specification, entitled "Closure Cap",
states
that:
"The present invention relates to a closure cap for a container
or which may be used as a pipe socket closure in which excess
12
internal or external pressures occurring in the interior can be compensated
automatically by valve members mounted in the
closure."
After referring to various other known
closure devices, the specification proceeds:
"It is an object of the present invention to provide a simplified structure and
mounting of automatically acting valve members relative
to a rigid insert plate
having air vents and sealing tori, and whereby both excess internal and external
pressures are automatically
compensated.
According
to the present invention, there is therefore provided a closure cap comprising a
rigid insert plate having vent holes provided
therethrough, which vent holes are
adapted to be opened and closed by valve members subject to the action of
compression springs,
at least one valve member allowing air or gas to pass
through at least one vent hole in one direction and at least one other valve
member allowing air or gas to pass through another vent hole in the opposite
direction, the valve members being constituted by a
sealing plate supported
against annular toroidal supports pressed out of the insert plate, one such
sealing plate being located above
the insert plate and a second sealing plate
being located below the insert plate such that when the pressures on opposite
sides of
the insert plate are not equal, one sealing plate is removed from its
supports and air or gas passes through the thus opened vent
hole.
13
Preferably, the vent holes are eccentrically disposed in the insert plate.
Advantageously, the vent holes allowing the passage of air or gas through the
insert plate in one direction are located diametrically
to but on opposed sides
of the centre of the insert plate from the vent holes allowing the passage of
air or gas through the insert
plate in the opposite
direction".
There follow examples or embodiments,
accompanied and illustrated by drawings. In describing one illustrated
embodiment the specification
states:
"Over the inner circumference of the closure cap 1, there is mounted a rigid
insert plate 2 having a sealing ring 3. The sealing
ring 3 is located around the
circumferential edge of the closure cap and is retained in a hollow 4 provided
in the lower portion
4 of the closure cap which is pressed thereunder in the
region of the rim portion 1 of the closure cap. Against the outer surface
thereof, a sealing ring 5 is supported between the closure cap and the edge of a
socket (not shown) of a container or pipe socket
part. In the embodiment shown
the lower portion 4 is drawn cup-shaped similar to the closure cap. In a known
manner, a bayonet catch
bridge member is mounted thereon which is subject to the
action of a compression spring. The invention is, however, applicable to
any
kind of closure cap, such as screw threaded sockets to be fastened downwardly or
even simple stopper closures. "
And, finally, claim
1 of the patent reads:
14
"1. A closure cap comprising a rigid insert plate having vent holes provided
therethrough, which vent holes are adapted to be opened
and closed by valve
members subject to the action of compression springs, at least one valve member
allowing air or gas to pass through
at least one vent hole in one direction and
at least one other valve member allowing air or gas to pass through another vent
hole
in the opposite direction, the valve members being constituted by a sealing
plate supported against annular toroidal supports pressed
out of the insert
plate, one such sealing plate being located above the insert plate and a second
sealing plate being located below
the insert plate such that when the pressures
on opposite sides of the insert plate are not equal, one sealing plate is
removed from
its supports and air or gas passes through the thus opened vent
hole."
Upon analysis Van Dijkhorst J found claim 9
of the 1987 patent to comprise the following integers:
(a) Two-way valve means for use in an arrangement as claimed in any one of the
preceding claims,
(b)
the valve means comprising a housing,
(c)
having a cross-plate thereacross,
(d)
at least two apertures through the
cross-plate,
(e)
and a pair of oppositely
opening one-way valves carried in the
cross-plate.
15 As regards claim 1 of
the 1989 patent, the learned Commissioner
found the following integers:
(a)
A valve means for use in
sanitary plumbing the valve comprising
(b)
a
housing having
(c)
an inlet connectable to a
pipe,
(d) sealing means at the said inlet whereby the inlet can be sealed to the said
pipe,
(e)
a
cross-plate across the housing,
(f)
a
plurality of apertures through the said cross- plate
and
(g) a plurality of one-way valves respectively controlling fluid flow through
the said apertures,
(h) at least one of such valves permitting
flow through its associated aperture
in one direction only, (i) and the other said valve permitting flow through
its associated aperture
in the opposite direction only.
These analyses are accepted by
the appellant.
16
Van Dijkhorst J made a comparison between these claims,
thus
analysed, and the Blau patent and held that it was clear that integers (b),
(c), (d) and (e) of claim 9 of the 1987 patent and integers
(b), (c), (e), (f),
(g), (h) and (i) of claim 1 of the 1989 patent were to be found in the Blau
patent. (The judgment does not mention
integer (c) in this context, but this
appears to have been an oversight: there does not seem to be any dispute about
integer (c).)
This finding was not challenged on appeal. The dispute is thus
narrowed down to integer (a) of both patents and integer (d) of the
1989 patent.
I shall deal first with integer (a).
Integer (a) of the 1987 patent speaks of a two-way valve means
-
"for use in an arrangement as claimed in any one of the preceding
claims."
Clearly this must be read as referring to use in a plumbing arrangement in a
toilet system. Integer (a) of the 1989 patent speaks
of a valve means -
". . . for use in sanitary plumbing . . ." Appellant contends that these uses
are integral parts of the invention and that they serve
to distinguish the 1987
and 1989 patents, as claimed, from the Blau
17 patent. The same contention
was put forward, and rejected, in the Court a quo,
which held that the words expressing these uses informed the reader of
the
claims what the field of application of the invention was, but did not
constitute
essential integers thereof. (See reported judgment, at pp 474-5.)
I agree. The general approach to be adopted in regard to words in a patent
claim indicative of a use or purpose to which the invention
is put was dealt
with by this Court in the case of
Gentiruco AG v Firestone SA (Pty)
Ltd
1972 (1) SA 589 (A). The subject-matter of the invention in that case was mainly
a method for the making of pneumatic tires out
of synthetic rubber. The opening
words of claim 1 of the specification read -
"A method of making a rubber compound suitable for a rubber
tire
The meaning in this context of the words "suitable for a rubber tire" was a
much-debated issue on appeal to this Court. The question
was whether they
imported an integer delineating the kind of rubber compound and, if so, in what
way; or whether it was merely descriptive
and consequently of no real
significance. This issue of interpretation was of importance, inter alia, on
the
18
question of anticipation. In regard to certain submissions made on behalf
of
the respondent (Firestone SA (Pty) Ltd), the alleged infringer of the
patent in suit, the judgment of the Court (delivered by Trollip
JA) stated the
following (at 631 CD):
"Mr. van Reenen, for Firestone, relied on authorities to show that claiming a
process, machine, etc., "for" or "suitable for" a particular
purpose is usually
ineffective, since the inventor's purpose or object is irrelevant. That may be
so especially with a machine or
product claim, where, as the Court a quo
observed, the words may merely
'define the field of
application of the invention as distinct from limiting the invention itself
'.
But it is always essentially a problem of construing the words in the context
of the claim; where the phrase imports some limitation
or special quality or
characteristic into the allegedly invented method, machine, product, etc., then
the claim must be construed
accordingly; what its effect will be, i.e., whether
that renders it inventive or novel, is another matter."
In the context of anticipation the judgment dealt with similar submissions by
counsel for the respondent as follows (at 651 H - 652
C):
"On this and other aspects of the appeal Mr. van Reenen for Firestone argued,
on the authority of Molins and Molins Machine Co. Ltd
v Industrial Machinery Co.
Ltd., 55 R.P.C. 31 (C.A.) that
19
difference in purpose between two processes was irrelevant, and he referred to
the minority judgment of WILLIAMSON, J.A.,. in Drummond-Hay's
case, supra, 1963
(3) S.A. 490 (AD.) at pp. 506B-D, 508H. That argument is, I think, probably
correct where two processes are otherwise
the same or substantially the same,
since such processes could conceivably serve different purposes. But usually
processes devised
for different purposes are themselves different in one or more
essential integers, and difference in purpose therefore might well
be a good
indication that the processes do differ or that, if the difference is small, it
is real or crucial. That is, I think, the
explanation of certain dicta by
STRATFORD, J.A., in Veasey's case at pp. 284-5 which WILLIAMSON, J.A., said in
Drummond-Hay's case,
supra, may require some qualification. STRATFORD, JA.,
compared the respective purposes or objects of the two rival rock-drills and
concluded that they were so radically different in aim that the defence of
anticipation had necessarily to fail. But it is clear
from the facts that the
difference in purpose or object was really a manifestation of an essential
difference in an important device
of the two machines. See too p. 268 of
Veasey's case, per WESSELS, J.A."
(See also
Letraset Ltd v Helios Ltd
1972 (3) SA 245 (A), at 268 A-D.)
Thus, where a patent claim contains words denoting a particular object or
purpose for the invention, a distinction must be drawn between
(i)
20
words which, especially with machine or product claims, merely define the
field
of application of the claimed invention and (ii) words which import
some limitation or special quality or characteristic of the invention
and
consequently constitute an essential integer of the claim. Whether words
indicating object or purpose fall into category (i)
or category (ii) is
essentially a problem of construing them in the context of the claim. If the
words of the claim in question fall
into category (i) they will not serve to
distinguish the invention claimed from - and thus avoid anticipation by -for
example a prior
state-of-the-art document which otherwise discloses all the
integers of the claim. If, on the other hand, they fall into category
(ii), they
may constitute a vital or crucial distinction between the invention as claimed
and the prior disclosure which will defeat
anticipation.
Applying these
principles to the facts of the present case, I am of the view that the words
denoting use or purpose in claim 9 of
the 1987 patent and claim 1 of the 1989
patent merely indicate or define the field of application of the invention
claimed. In this
connection it must be emphasized that these claims relate to a
machine or mechanical contrivance; that, use aside, all the
21
integers of these claims are to be found in the Blau patent; that the
disclosure
in the Blau patent of a closure cap which may be used as a pipe
socket closure in which excess internal or external pressures occurring
in this
interior can be compensated automatically by valve members mounted in the
closure, is general in its terms and is not limited
to any field of application;
that the contrivance described in the claims does not differ mechanically in any
material respect from
that described in the Blau patent; that the contrivance in
the claims operates in exactly the same way and serves the same purpose
as that
disclosed in the Blau patent; and that the words in the claims denoting use or
purpose do not import any limitation or special
quality or characteristic into
the contrivance described in the claims and the Blau patent.
It was submitted by appellant's counsel that the law as laid down in the
Gentiruco
case, supra, had been rendered obsolete by the
Act and
in this
regard he referred in particular to the new provisions introduced into our
patent law by
sec 25
(9), (11) and (12). Counsel also referred to similar
provisions contained in the British Patents Act of 1977 and to various decisions
of the
22
English courts relating to those statutory provisions. In addition our
attention
was drawn to the decisions of the various courts of the European Patent
Office in the so-called Mobil case. His submission, as I understood
it, was that
these authorities confer novelty on a "new use" claim, not only within the
medical field, but in other fields as well.
I do not intend to be drawn into a consideration of these matters and
authorities. Subsections (9), (11) and (12) of sec 25 of the
Act deal solely
with inventions consisting of a substance or composition for use in a method of
treatment of the human or animal
body by surgery or therapy or of diagnosis
practised on the human or animal body and have no application to the facts of
the present
case. The new use of a known chemical compound, dealt with in the
Mobil
case, is also far removed from the problem now under
consideration.
For these reasons I hold that the Court a quo correctly found that the words
denoting use in claim 9 of the 1987 patent and claim
1 of the 1989 patent do not
rescue the patents from anticipation by the Blau patent.
The other issue concerning novelty raised on appeal and in
the
23
Court a quo relates to integer (d) of claim 1 of the 1989 patent which, it
will be
recalled, consists of a -
"sealing means at the said inlet whereby the inlet can be sealed to the said
pipe."
It was contended on behalf of appellant that this integer was not disclosed
in the Blau patent. The contention is, in my view, without
substance. The
"inlet" referred to in integer (d) means the inlet in the "housing" of the valve
which is connectable to a pipe; and
the sealing means is one which seals the
connection between the inlet and the pipe. In the third of the extracts from the
Blau patent
quoted above reference is made to -
"... a sealing ring 5 .. . supported between the closure cap and the edge of
a socket (not shown) of a container or pipe socket part."
This description must be read in conjunction with figure 1 attached to the
specification and the number 5 serves to identify the sealing
ring. Having
studied the illustration in conjunction with the description in the body of the
specification, I am of the view that
this sealing ring performs substantially
the
24 same function as the sealing means described in integer (d).
Consequently
integer (d) does not save the 1989 patent from anticipation by the Blau
patent.
Accordingly the appeal fails. The order of the Court a quo stands, save that
it is necessary to provide that the period of one month
referred to therein will
now run as from the date of this judgment.
The following order is
made:
(1)
The appeal is dismissed with
costs.
(2) The period of one month referred to in para 2 of the order of the Court a
quo shall run as from the date of this judgment.
M M
CORBETT
E M GROSSKOFF JA) NESTADT JA) HARMS JA) CONCUR SCOTT AJA)