519
REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES.
Vol.
XJ.~VII.J
DECEMBER 17TH,
Before
[No. 15.
I~30.
THE SOLICITOR-GENERAL.
April 4th, 1930.
IN THE MATTER OF AN ApPLICATION (No. 307,808) FOR A' PATENT BY JAMES YATE
JOHNSON.
.
()pposition to the grant of a Patent on g.rollunds (b) and (c) of Section. 11 (i')
of the Patents -& Designs Acts, 1907 to 1928-Applicant clairning the use, as
initial material in a known, process for producing synthetic rubber, of a subetance obtained in a particular but knoum. manner-Held, that aithouqh. there
might be advantage in the use of the material when so prepared, there uxu
10 no patentable invention where, such advantage depended only on the fact that
the material when. so prepared was free from impurities-Grant refueed-«
Appeal to Law Officer dismissed.
5
Where an Opposition is based on grou/ad (c) of Section 11 (i) it is open to
the Opponent to raise the issue whether that which is described in the S pecifica15 tion is an "i,nvention" within the meaning of the definition contained ifl,
Section 93.
Whether such objection is raised by the Opponent or not, the
aom.ptrollen is entitle;"d to rejuse the grant of a patent upon an wppZication..
which is in contravention of the prouisione of the Acts.
An Appldcation No. 307,808 was made by Lames Yate Johnson in respect of
20 an invention communicated to him by 1.G. Enrbeniauiustrie Aktieruresellechaf»
for "Improvements in the manufacture and production of artificial rubber."
The grant of a Patent was opposed by N aamlooze Vermootschap de Bataafsche
Petroleum M a'atschapP'ij on two grounds, namely (1) prior publication in
Specifications Nos. 17193 of 1913 and 211,125, and (2) that the nature of the
25 invention or the manner in which it was to be performed was not sufficiently
or fairly described and ascertained rin the Complete Specification.
The parties were heard by the Assistant-Com-ptroller (Mr. H. O. JIaycraft)
acting for the Comptroller-General. Kenneth Swan appeared as Counsel for
the Applica.nt; H. D. Elkington appeared as Agent for the Opponents.
30 The decision of the Assistant-Comptroller so far as material for this report
was as follows:ce The Applicant's Specification ris concerned with the manufacture of
ce artificial rubber, and its nature lis clearly set forth in Claim 1, which reads
cc as follows:3 B
520
N·o. 15.]
REPORTS: OF PATENT, DESIGN, AND TRADE MARK· CASES.
[Vol. XLVII.
In the Matte·r oj an Application, (No. 307,808) lor a
Patent by James Y ate Johnson.
" c In the manufacture and production of plastic polymerisation products of
, butadiene, which when vulcanised, give a product of the nature of vulcanised
, rubber, from acetylene or gaaes containing acetylene, by converting the said
, acetylene rinto acetaldehyde and the latter into aldol and reducing the sadd
, aldol to 1.3 butyleneglyool, splitting off water therefrom by treatment with
'phosphorus pentoxide or with catalysts capable of splitting off water so as
'to form butadiene and polymerising the butadiene to obtain the afore'mentioned plastic product, the step of producing the acetylene or gases
, containing the acetylene drrectly from methane or gas mixtures containing
'methane, so as to obtain the acetylene free from substances deleterious to
, the subsequent reaction, substarrtially as described.'
" This is a five-stage process, lin which we begin with acetylene and end with
"polymerised butadiene, which is an artificial dridiarubber.
" An example is given rin which the acetylene is described as being obtaiined
u by passing methane through a flaming arc.
" The mater ial documents referred to are Bpecifications Nos. 17193 of 1913
" and 211,125 and Lewes' book on Acetylene. Of these, Specification No. 17193
" of 1913 (Dreyfus) discloses the substance of the Applicant's first Claim as far
" as' the words 'the step' (page 3, ldne 3) that is to say, the whole process
"claimed is disclosed lin Dreyfus' Specification, except that Dreyf1.ts does not
" suggest the use of acetylene derived from methane. Specification No. 211,125
" describes an improved process and apparatus for the production of acetylene
" from methane (or' gases containing methane) by the use of electric sparks.
cc Lewes' book describes, in the portion heginning at page 499, various methods
":for the purification of acetylene,
" Mr. Swan,in opening the case for the Applicant, referred to the well known
" case of W'iliiam« v. Nye (1890) (7 R.P.C. 62) where it was decided thwt a
" patent for the. mere association of a mincing machine and a sausage filling
"machine was mvaldd, He sought to distinguish therefrom some hypothetical
"oases in which the association of the mincing and filling machines would
ct' produce some special or unexpected result.
In such cases, he argued, there
" would be something patentable. As further examples of patentable selection
" of suitable, elements in a combinabion, or suibable condit.iona in a process, he
" instanced the use of osmium, tantalum, and tungsten for electric lamp fila,. ments, the annealing of nichrome at a particular temperature, and the ageing
"of viscose in the production of artificial silk. These cases, he said, were
"analogous to the Applicant's case because the Applicant obtained by his
" process a special result owing to the absence of impurities in the acetylene.
" The Applicant's rinvention was based on two discoveries:" 1. That pure acetylene is required to avoid poisoning of the catalyst used
" in the subsequent steps of the process, and difficulties in polymerisation.
"2. That an acetylene free from impurities is obtained from methane.
" It was not obvious, said Mr. Swan, that there was an advantage in using
" acetylene obtained from methane nor that it possessed the requisite qualities.
It The Opponents had cited no prior publication of these discoveries; and they
" were not obvious.
"1M.·r. Swan referred to the judgment of the Master of the Rolls in Teste v.
II Coombes, (1924) (41 R.P.C. 101) and cited the following passage :-' For the
" 'purpose of establishing subject-matter, it is of course necessary to show
U "something of manufacture; secondly" that it is novel; thirdly, that [t is
"
"
"
"
"
"
"
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"
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Vol. XLVII.]
REPORTS OF PATENT, DESIGN, AN]) TRADE MARK CASES.
[No. 15.
In the Matter of an Application (No. 307,808) for a
Patent by James Yate Johnson.
" , of utility in the patent sense; and fourthly, that it was not obvious toa
4' 'person skilled in the common knowledge of the art at the time when the
It I specification was first published.'
" It was further argued by Mr. J..'{wan that we are not dealing in the present
5 "case with articles in common use, the properties of which are well known,
" but wi th two particular pnior specifications, namely, Nos. 17193 of 19~3 and
. " 211,125. By combining the processes described in these Specifications an
" advantage lis obtained due to the purity of the acetylene, and this constituted
" a patentable manufacture which was clearly not obvious or there would be
10 "evidence available of prior publication.
" Mr. Elkington, for the Opponents, drew attention to the fact that, accord" ing to the Provisional Specification (page 1, lines 18-21), methane was only
"one of a number of alternative sources of the acetylene to be used in the
"process. It was usual to purify gases when necessary, and the purification
15 "of acetylene was well known dn 1900, as shown by the publicatdon in Lewes'
"book on acetylene, One method of manufacture of acetylene from methane
" was disclosed in Specification No. 211,125. Mr. Elkington submitted that the
"Applicant's Specification did not fairly describe an dnverrtion which could
"be regarded as a manner of new manufacture within the meaning of the
20 "Statute of Monopolies." The alleged invention resided solely in the use of
"acetylene obtained ina, particular known manner in a process in which
" acetylene had been used before, and this was in no sense a manner of new
" manufacture.
c In reply Mr. Swam. contended that the unvention arose as the result of a
25 "discovery that acetylene produced from calcium carbide gave rise to difficulties
"when producing synthetic rubber. The public did not know this, nor did
" they know that the acetylene obtained from methane was partdcularly pure
" and suitable for the process. If the public had known these facts, someone
"would have taken out a patent. These facts were brought to light :by the
30 "inventor,. and he was entitled to a patent,
"The question that I have to determine in this case is whether there is a,
" patentable dnvent.ion in selecting a mater-ial derived from a particular source
" &8 an ingredient in a. known process, the material lin the, present case being
~'acetylene derived from methane, and the process being that of Dreyfus'
35 "Specification No. 17193 of 1913. Mr. Swan's contention is that the Applic'ant
" was presented with a problem, and that his discoveries embodied the results
" of the exercise of ingenuity in the solution thereof.
" I think that in cases of this kind the onus falls on the Applicant to show
"that a Patent can be granted without an unwarranted interference with
40 "the ordinary right of a manufacturer to employ in a known process materials
" produced in a known manner.
"Certain Sections of the Statute of Monopolies have been repealed, as for
" example Sections 10, 11 and 12, which were repealed by Section 113 of the
" Patents, Designs and Trade Marks Act, 1883. But Section 6 has never been
45 "repealed, and ds as fully operative to-day as it was when lit was enacted in'
"the year 1623. Section 6 reads as follows:" , Provided also that any declaration before mentioned shall not extend -to
" , any letters patent and grants of privilege, for the term of. fourteen years
" , or under, hereafter to be made of the sole working, or making of any manner
50 C4' of new manufactures within this realm, to the true and first inventor and
3 B 2
522
No. 15.]
REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES.
[V 01. XLVII.
In the Ma,tter of an Application (No. 307,808) for a
Patent by James Y ate Johnson .
inventors of such manufacture" which others ,at the tdme of making such
'letters patent and grants shall not use, so as also they be not contrary;
" 'to the law, or mischievous to the State, by raising prices o~ commodities
" , at home, or hurt of trade, or generally inconvenient. . . .'
t c The Applicant's case may be tested, I think, by compar-ison with analogous
"cases. When the method of producing pure copper on a commercial scale by
" electrolytdc deposition from an impure copper was first invented, a valuable
" invention was undoubtedly made, resulting dn a new industry of great public
"oonent. But when such copper was placed upon the market it was open to
" any manufacturer to use the new material for any purposes to which copper
" can be applied, and in my view there would have been an infringement of ltUe
" Statute of Monopolies lif the Orown had subsequently granted a series of
" patents forbidding the use of the new material for the manufacture of copper
"kettles,. electrdc cables, sheets for roofing and so forth. And this, I think
" would have been true, even if, for example, a roofing of the pure copper was
" found to be more durable than a roofing of the copper hitherto procurable.
" No manner of new manufacture would, as it seems, to me, have been involved
" in any such uses of the new producn. and the monopolies would· have operated
" to the detriment of trade and would have been generally inconvenient. There
"lis a growing tendency to-day to seek monopolies of this character, which
" operate in restraint of trade, without any consideration being given in the
" form of some real addition to technical knowledge.
" It has been known for many years that acetylene can be obtained from
"methane. Specification No, 211,125, cited by the Opponents, merely describes
"one particular manner of such production. The App licant asks for a
" monopoly forbidding the puhlic, when using the process described by Dreyfus
" in Specificanion No. 17193 of 1913 to employ acetylene which has 'been ohtained
" in any known manner from methane or from gases contadrring methane. Such
" a patent, which if granted may endure for a term of sixteen years, might un
"effect prevent manufacturers of synthetic indiarubber in this country from
" using the most suitable raw material which was to be found upon the market,
" The mere fact that the acetylene so obtained has a 'high degree of purity ds
" in my view no adequate reason for granting such a monopoly. The very same
",attribute is found in electrolytic copper, and no person in any process of
" manufacture rejects a high-quality raw material merely because it is of high
"quality. The question is purely one of price lin all such eases. If the con" ditions were reversed, and the presence of a particular impurity found in
" some one out of many alternative kinds of raw material, were essential to
"success, there might well be a substantial addition to technical knowledge
"[n ascertaining such a fact, and consequently a real basis for the grant of a
" patent; but where a pure substance best serves the end in view, I am of
" opinion that the public should not, by the grant of a patent, be prevented
" from using the pure substance in a process which has become open to free
" public user.
" For these reasons 1 d-ecide to refuse, the grant of a Patent on the Appldca" tion."
The Applicant appealed to the Law Officer.
Kenneth Siuam. appeared as Counsel for the Appellant; Sir Arthur Colefaa:
K.C.,. appeared as Oounsel for the Respondents. J'udgment was reserved and
was delivered on the 13th of May, 1930.
.c ,
.;c
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523
--------------------------------'-
Vol. XLVII.]
REPORTS OF I:'ATENT, DESIGN, AND TRADE MARK OASES.
[No. 15.
In the Matter of an Application (No. 307,808) for a
Patent by James Yate Johnson.
Sir James Melville, S.-G.-This is an appeal by the Applicant from the
Decision of the Assistant-Comptroller whereby he refused the Application for
a Patent.
The invention relates to the manufacture of rubber products by a, process
5 of synthesis starting with acetylene and subjecting it to successive chemical
operations which gradually build it up 'by adding carbon or hydrogen to the
original substance, there being actually five steps in the, process.
The Opposition was on the grounds of prior publication in British Specifications Nos. 17193 of 1913 and 211,125 and of insufficient or unfair descripbion.,
The Application was refused by the Aseistant. Comptroller on the ground that
10
there lis no patentable invention in selecting a material derived from a particular source aa an ingredient in a known process, the material here being
acetylene derived from methane and the process being that described in Dreyfus'
Specification No. 17193 of 1913.
15
The process described in Dreyfus' Specifica.tion is open to use by the public,
as no Patent was sealed thereon. Even if a Patent had been sealed, it would
now have expired by lapse of bime,
It has been known for many years that acetylene can be obtained from
methane, one method being described in the cited Specification No. 211,125.
20 The Assietant-Oomptroiler considered that to grant the Applicant a monopoly
forbidding the public, when using the process described by Dreyfus, to employ
acetylene obtained in any known manner from methane or from gases contairring methane would be contrary to the provisions of Section 6 of the Statute
of Monopolies as being hurtful of trade or generally inconvenient.
25
Mr. Swan, who appeared for the Applicant, did not dispute the Opponents'
contention that the .fiv~-step process is disclosed in Dreyfus' Specification, nor
that it is known to obtain acetylene from methane.
But Mr. Swan put forward this dual argument. He says dn the first place
that the grant of a Patent can only be opposed upon one or more of the
30 six grounds that are specified in Sub-section (1) of Section 11 and that the
Assistant-Comptroller has refused the Patent upon a ground that does not
appear lin Section 11 and the refusal is therefore ultra vires. He says, secondly,
that this invention is in essence an invention by selection. The Applicant has
found that the Dreyfus process can most efficiently and successfully be worked
.35 by selecting a particular source for the acetylene, that is to say, by using such
acetylene, or gases contairring acetylene, as are produced directly from methane
or from gas mixtures containing methane. Mr. Swan dendes that the choice
of such a particular source of acetylene is an obvious one" and he alleges that,
where such freedom of choice exists and the inventor claims particular
40 advantages for his selection, he ds entitled to the grant of a Patent. It tis
for the Court to determine whether the selection made is of such merit as to
confer validity upon the Patent. '
Sir Arthur Colefaa did not controvert the principles laid down in regard
to a Patent by selection but he contended that they were irnmater;ia.l in the
45 present case. It could not be held, he argued, that there ds any manner of reew
manufacture, within the meaning of Section 93 of the Acts, disclosed in the
Applicant's Specification. For the purposes of his argument he was prepared
to assume that it was not known at the date of the Application that aeetylena
obtained from methane was of such punity as not to poison the catalysts used
50 in Dreyfus' process. But the Applicant cannot be heard to say that acetylene
524
No. 15.J
':REPORTS OF PATENT, DESIGN, AND TRADE MARX' CASES.
[Vol. XLVII.
In the Ma'tter 01 an Appiication (No. 307,808) for a
Patent byJames Yate Johnson.
obtained from other sources is not also suitable for the Dreyfus process, for
in his OWIl. Provisional Specification he says (page 1, lines 18 to 2,1) that the
acetylene may be of any convenient origin, and at line '32 he expressly mentions
carbide as a source of the acetylene. The process in. Dreyfus' Specification in
fact starts with acetylene, and to grant a Patent in relation to that process 5
prohibiting the use of acetylene obtained in a known manner fromm,etha,n,~
would, he .argued, be in contravention of the Statute of Monopolies.
,
I do not think it can be held that there is in this case any patentable selection
or combination in using in a known process a known method of obtadning the
material used in the initial stages of that process. The Applicant himself says 10
no more than that, while the acetylene " may be of any convenient origin,'
acetylene prepared from methane is the most suitable. I will not deal, therefore, with, the cases which were cited by Mr. Swan on the question of invention
by selection.
, As regards the objection raised by Mr. Swan that it was neither open to the 15
Opponents to object to the grant on the ground that no manner of new manufacture is disclosed nor to the Oomptroller to refuse a Patent upon that
ground, I think that two observations must be made,
First, I would point out that Opposifion was entered on two grounds. The
first ground was that of anticipation in the two prior Specifications to which 20
I have already referred. The second ground was that "the nature of the
"invention or the manner in which it is to be performed is not sufficiently
'
" or fairly described in the Complete Specification."
In considering the meaning of the words It that the nature of the invention
"lis not fairly described," as used in Section 3 _(2) of the Acts, it is to be '25
observed that it has been definitely raia-down that these "' words .invclve a
consider~~"~,2,J.l:Qt __tl1e~,qP:l~§ltion whe~4er._,t4~t,.wbich ,is, de~crThe'a:~ "In" the specificatioh- i~'-~s~~~ .,,' ~aIl:lle:r' .". of new manufacture. This point was considered by
the~prv'isioiiaJ Court 'in the case of 'The King v. Comptroller-General of
Patents (Ex parte MU,ntz) (1922) (39 R.P.O. 335). Lord Heuiart there said 30
(pages 339, 340): "The whole matter starts with an application which contains
" a declaration to the effect that the applicant is in possession of an invention,
" and the argument on the part of the prosecutor here involves this proposi"tion" that, although it llllay well be the idut.y of the Examiner "to report
" whether the nature of the invention is or is not fairly described, it is not 35
" open to him to say that that which is put forward as an invention is not
" an invention at all. In my opinion, the question whether the alleged inven"tion is an invention in the sense of being some manner of new manufacture
"lis clearly a question which may be reported upon within Section 3."
If the words used in Section 3 (2) are to be so dnterpreted, I can see no 40
"reason why the same interpretation should not equally be applied to the same
words as used in Sub-section (1) (c) ,of SeotionTl, and" i.fsoJ an opponent
isnot. precluded froni'::raising this fundamental obj~Qt.~Qn,a.~ to the non-patentwbility of an allegeddnvenbion.
"IrLit;"'"'i!uite' apart from this question as to the right of an Opponent to 45
raise this issue, there lis another aspect of the subject, and it is one that in
my opinion would of itself justify the Assistant-Comptroller in resting his
De-cision on the ground that the Specification discloses no invention within the
meaning of the statutory definition. It was held by the Law Officer in the
case of S'» Application (1923) (40 R~P.C. 461) that the worlds "manner of 50
525
Vol. XLVII. J
REPORTS OF 'PATENT, DESIGN,AND', TRADE MARK· CASES.
{No.' IS.
In the Matter of an Application (No. ·307,808) fora
Patent by James Yate Johnson.
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new IDB,:g,.ufacture" used in the definition of an invention contained in Section 93'-of the Acts must be read as a, whole. It is not legitimate to ask first:
H Is this a manufacturerrr-~andWc''to--reregate to the limited enquiry made under
Section 7 the further question: "Is it new 7" Moreover, there is authority
in the case of Wodham:», Application, (1910) (27 R.P.C. 172 at page 174,
lines 23 to 27) and in Hughes ch Kennaugh's Application, (1910) (27 R.P.C.
281) for saying that, when the Comptroller is dealing with a Specification in
Opposition proceedings, the r~l!~~.,~!.~~h~"r:.£}!pIt~LJl,!3!,§t~b.tL~,CQJJ,~g~.:r~,d,.and the
Comptroller has jurisdiction to act In the dnterests of the publdc even though
the Opponent may fail as regards his own presentation of the ease. In
Hughes & Kennaugh's case Sir Samuel Evans used these words: "I see
" no reason why the Comptroller should be restricted to information given to
"him by an opponent or why he should not be entitled to avail himself for
"the public benefit of the information of the Patent Office. Whatever has
"taken place before the acceptance of a Speeificabion under Section 7, I think
"the whole question of whether the patent ought to be granted and upon
" what terms was open upon the hearing of the Opposition-just as it would
"be open upon the hearing of an appeal by the Law Officer under Sub"section 3 of Section 11."
In view of these authorities, I do not think that it can be contended that
it is not within the inherent jurisdiction of the Comptroller or the Law Officer
to refuse to grant a patent upon an Application which is clearly in contravention of the provisions of the Acte.
To quote the Ruling by the Comptroller-General in W ~'!!;}!!.!i!lat' sease
(Ruling 1912 (E), 29 R.P.C. Appx. xli): "The Comptroller-l,ike any other
"Judge or Court of Justice-must have the general and inherent powers of
" preventing a fraud being committed upon the public. In the case of a grant
"of a patent the Comptroller is administering a special- prerogative. of 'the
" ,Orown, and I ?_~~I!2~ ~hink that , ' ,!t~ . ,_~~~~!!lP~D~d ,tQ_~llQ'\V.,a ~rant of, patent
"rig~ts ,'Y~e~~_.·-ll:~g~,r, tIre-~speCiar~'''ciicUD:ls~aI:lG~~t, pro tb.~., . ~8Jse ,~tIie'grant,~:o,uld
" be~~~~itte'~l~'- bad, or be lin effect a fraud upon the""jlubI,ic or' the Crown."
I acce,p'f .aIld"'re-affirm thatRuljng.
'In 'the present case the use of acetylene obtained from methane may no doubt
be a,dvant.ageous, but there appears to me to be no, i~1:~~~!~!!",;~"t'?.:Y~Iyed'i and
I agree WIth the Assistant-Comptroller that the Appncation should be refused.
In the result I dismiss the Appeal and I award the Opponents twelve guineas
costs.