Acme Bedstead Co Ltd v Newlands Brothers Ltd [1937] HCA 63; (1937) 58 CLR 689 (24 November 1937)

HIGH COURT OF AUSTRALIA

Acme Bedstead Company Limited Plaintiff, Appellant; and Newlands Brothers Limited Defendant, Respondent.

H C of A

On appeal from the Supreme Court of New South Wales.

24 November 1937

Latham C.J., Starke and Dixon JJ.

Dudley Williams K.C. (with him Hardie), for the appellant.

Bonney K.C. (with him Thomas), for the respondent.

Dudley Williams K.C., in reply.

The following written judgments were delivered:—

Nov. 24

Latham C.J.

The plaintiff appellant succeeded before Nicholas J. in an action against the defendant respondent for infringement of letters patent No. 24143 of 1929. The Full Court of the Supreme Court of New South Wales upon appeal reversed the decision of the trial judge and dismissed the action on the ground of lack of subject matter in the alleged invention.

The letters patent related to improvements in hospital beds. The specification described a hospital bed which could be raised at one end and adjusted to varying heights so that a desired inclination could be given to the bed and the bed could be moved about on wheels or castors attached to an inverted "U" at the bottom of a central post or leg at the end of the bed. A bed constructed according to the specification would not tilt and could readily be moved about on its wheels. The central post was mounted telescopically within a sleeve which was integral with the bed. The sleeve had a slit in it through which a pawl could engage in a tooth rack upon the post. When the end of the bed was lifted the end of the pawl rode over the teeth, and the bed became stable when the end of the pawl fell by its own weight so as to engage in the teeth. In order to lower the elevated bed the weight of the bed was taken off the pawl by a slight lift, the pawl was manually disengaged from the teeth, and the bed was allowed to descend by gravity to the floor or to any desired height, the pawl re-engaging as required. During both lifting and lowering the bed was under easy control and a single person could adjust it.

Before the plaintiff's bed was designed, beds were known which had an additional central leg at one end by means of which the bed could be raised to a position with one end higher than the other for the purpose of moving the bed more easily upon wheels. The bed, when so raised, would be resting upon one leg only at the elevated end, and accordingly would be unstable, so that it could not be used in the raised position unless, as in the case of any other bed, blocks were placed under the other legs. Thus these beds did not achieve the same results as the plaintiff's bed. They, however, presented the feature of a telescopic additional leg held in an elevated position by a pawl, though, as the object was simply to make the bed easily movable, there was no provision for varying the height to which the bed could be raised. These beds had only one wheel or castor at the foot of the additional leg, but it is not claimed by the plaintiff that the addition of an inverted "U" with a wheel or castor at each foot involved inventive ingenuity.

The plaintiff took out a patent in 1928 for a bed and the specification of this patent is relied upon by the defendant as an anticipation of the 1929 patent upon which the plaintiff sues. This bed could be adjusted to varying heights. The sliding member in the additional leg was round. There was one series of holes in this member and another series in the round sleeve within which it worked. A curved bolt was provided to enter the openings in the sleeve and the sliding member when openings were opposite to each other, thus holding the bed securely at the desired height. The sliding member, however, could turn round or rotate in its sleeve. Then the holes would not register and the bolt would not enter any hole in the member. Thus is was difficult for a single person to adjust the bed readily and a patient in the bed might be seriously jarred or jolted if, as was quite possible, the device did not work smoothly and immediately. The bed had an inverted "U" foot on the additional leg. Beds made in accordance with the 1928 specification were used in the Royal Women's Hospital before the date of the 1929 patent.

The plaintiff's 1929 invention substitutes a non-rotatable (e.g., rectangular) member moving in an appropriately shaped sleeve for a round member, and thus prevents any movement of the inner member which would interfere with the ready engagement of a bolt or pawl. In the plaintiff's bed also a ratchet and pawl are substituted for other devices for holding the end of the bed at the desired height.

The first claim in the plaintiff's patent is: "A hospital bed having at one end thereof means for elevating or lowering the supporting standards thereof at such end, such means comprising a hollow member affixed to said end of the bedstead between the said standards and having an opening therein, a single telescopic post with teeth non-rotatably mounted in said member and having castor feet, and a bolt pivotally supported on said end of the bedstead and passing through the opening in said member and adapted to ride over said teeth and to become lock-engaged with one of said teeth when the said end of the bed is being elevated, the said bolt being also adapted to be manually tipped from engagement with any of said teeth when the said end of the bed is to be lowered." Claims 2 and 3 incorporate claim 1 with additions, and claim 4 is for a hospital bed substantially as described in the specification with reference to the accompanying drawings. The bed so described and referred to has a rectangular member within a rectangular sleeve.

The defendant relied (inter alia) upon the defence that the alleged invention was not proper subject matter for the grant of a patent "having regard to general common knowledge in the art in which the said alleged invention belongs."

The evidence shows that the plaintiff's bed possessed new features as compared with all known previous beds. The ratchet and pawl device had not previously been actually incorporated in a bed nor had a rectangular or other non-rotatable telescopic member been used in a bed for the purpose for which it was used in the plaintiff's bed. It is not disputed that a ratchet and pawl is an old device for procuring freedom of movement in one direction and arrest of movement in the opposite direction. A common form of lifting jack and many other mechanical devices embody this feature. The other distinctive feature, the non-rotatable member, whether in rectangular or other form, is shown by the evidence to be a device which would readily suggest itself to the mind of a competent workman if he was asked to prevent a telescopic member from rotating within another member.

The evidence also shows that hospital authorities had desired to obtain a bed with the features of the plaintiff's bed, namely, possibility of elevation of one end to a desired height, and safety and mobility of such a bed. The plaintiff's bed is plainly a good and effective article. But it is necessary for the plaintiff to show that an inventive step was involved in designing the bed. He has combined together well-known mechanical integers and has used each of them for its natural and well-known purpose. I agree with the Full Court that there is no inventive ingenuity in using a rectangular or other non-rotatable leg instead of a round leg or in using a ratchet and pawl for a purpose for which a ratchet and pawl has always been used. The plaintiff has simply applied well-known things to an article to which they had not formerly been applied.

It is contended, however, that there is no justification for, to put it shortly, adding common knowledge to an alleged paper anticipation and thus depriving a patent of subject matter. It is urged that the authorities show that a paper anticipation must show, and precisely show, the whole of the claimed invention in order to be an anticipation at all, and that, if an alleged anticipation does not satisfy this requirement, it should be ignored (See Pope Appliance Corporation v. Spanish River Pulp and Paper Mills Ltd.[1]). But a given specification is not to be read as in a vacuum. The reader must be regarded as having at least the common knowledge of the art. If a competent workman, seeing either a given specification or an article in actual use, could, upon a defect being pointed out, devise, without the exercise of any inventive ingenuity, a means of overcoming the defect, there would not be invention in the result which he so achieved. This proposition is supported by the following authorities:— Bloxham v. Kee-Less Clock Co.[2]: "The first so-called invention is, in my judgment, merely a correction of an obvious defect in the machine described in the first specification and cannot, therefore, be properly considered an invention at all"; Adelmann and Ham Boiler Corporation v. Llanrwst Foundry Co.[3]: "The alleged invention, though possessing the advantages of being an excellent design, is simply the application of a well known and well understood piece of mechanism to achieve an obvious advantage, and is not the proper subject of letters patent"; Amalgamated Carburetters Ltd. v. Bowden Wire Ltd.[4]: "There is sufficiently disclosed in this specification a solution of the problem, and none the less sufficiently disclosed because the device shown in the drawing to which the specification refers requires such modification or alteration as can be done by a trained mechanic. If this is so, it is unnecessary to consider whether the effect of that is that this specification defeats the plaintiffs' claim, on the ground that it is a complete anticipation of their invention, or on the ground that there is no subject matter"; Paper Sacks Pty. Ltd. v. Cowper[5], where it was held that there was no subject matter in an improvement to an invention disclosed in a prior specification if the making of the improvement was an obvious course to adopt for the attainment of the desired objective.

Thus, in my opinion, there is no subject matter for a grant of letters patent in what is described in claim 1. Claim 2 is for a hospital bed according to claim 1 in which the hollow member is of rectangular formation. Claim 3 is for "a hospital bed according to either of the preceding claims, in which the bolt is weighted and is pivotally secured to a bracket affixed to the end of the bedstead which is to be raised or lowered." Claim 4 is for "a hospital bed substantially as herein described with reference to the accompanying drawings." These claims are, in my opinion, also invalid for the reasons which I have stated in relation to claim 1.

The judgment of the Full Court should be affirmed.

Starke J.

This is an appeal from a judgment of the Supreme Court of New South Wales reversing the decision of the trial judge and dismissing a suit alleging the infringement of letters patent No. 24143 of 1929 on the ground that the invention, the subject matter of the letters patent, was wanting in subject matter. The letters patent were in respect of improvements in hospital beds.

Claim 1 is for "a hospital bed having at one end thereof means for elevating or lowering the supporting standards thereof at such end, such means comprising a hollow member affixed to the said end of the bedstead between the said standards and having an opening therein, a telescopic post with teeth non-rotatably mounted in said member and having castor feet, and a bolt pivotally supported on said end of the bedstead and passing through the opening in said member and adapted to ride over said teeth and to become lock-engaged with one of said teeth when the said end of the bed is being elevated, the said bolt being also adapted to be manually tipped from engagement with any of said teeth when the said end of the bed is to be lowered."

Admittedly all the elements in the claim were old, and the only question is whether the aggregation or combination of them involved the exercise of inventive genius or only a mechanical adaptation.

In 1928 the appellant, the Acme Bedstead Co. Ltd., had obtained letters patent for improvements in hospital beds. It was for a hospital bed having elevating means attached to the end thereof between the legs of the bed, such elevating means comprising a tube with a series of openings therein, a member adapted to telescope with the said tube and having a series of openings therein and a foot, a bracket slidable on the tube and a manually operable lever pivoted to the said bracket and carrying a curved bolt adapted to enter the said openings in the tube and telescopic member when oppositely disposed openings in the tube and telescopic member are brought in to register with each other.

The appellant in the 1929 patent substituted, for the openings in the tubes and a manually operable lever pivoted to the bracket and carrying a curved bolt adapted to enter the openings, a weighted pawl or bolt adapted to engage a tooth rack or, in other words, a ratchet and pawl device. Ratchet and pawl devices are very old mechanical contrivances and their purpose is to enable movement to take place in one direction and to arrest movement in the other direction between two members. All this was well known and perfectly understood, yet this is all that the appellant substituted for his 1928 device of openings in the tubes and a lever with a curved bolt. The evidence of the engineers Reynolds and Wilkins is, I think, really decisive. It shows that the ratchet and pawl device was in common use and in a great variety of forms. The device was so well known and its functions so well understood that any trained mechanic if he desired or was directed to modify or alter the openings in the tube and lever with a curved bolt by the substitution of a ratchet and pawl device would have known how to make the necessary alterations, using only the skill and knowledge acquired in his art. The substitution would not involve the exercise of any inventive faculty but only mechanical skill in adapting an old contrivance to an analogous use. But this is insufficient to sustain the 1929 patent as a new invention. It is wanting in subject matter. Claims 2, 3 and 4 are also wanting in subject matter and for the like reasons. And in addition claim 2, if it were valid, is not infringed, for it is restricted to a hollow member of rectangular formation which the respondent does not use.

But I must refer to an argument which was much stressed on behalf of the appellant. It is forcibly stated in the case of the British Ore Concentration Syndicate Ltd. v. Minerals Separation Ltd.[6]:—"It cannot be too carefully kept in mind in patent law that, in order to render a document a prior publication of an invention, it must be shown that it publishes to the world the whole invention, i.e., all that is material to instruct the public how to put the invention in practice. It is not enough that there should be suggestions which, taken with suggestions derived from other and independent documents, may be shown to foreshadow the invention or important steps in it. Since the date of the vigorous protest of James L.J. (Von Heyden v. Neustadt1(1880) 14 Ch. D. 230; 50 L.J. Ch. 126.) against such a mosaic of prior publications this has been a universally accepted and most salutary principle."

To establish prior publication it is not necessary, however, to prove common knowledge: public knowledge is sufficient whether the invention be known to many or few.

In Savage v. D. B. Harris & Sons[8] Lindley L.J. said: "It is admitted that his specification was published in this country and was matter of public knowledge and public property, although very likely not of common knowledge, the difference between the two being obvious." "While it is in general not legitimate to assume that the craftsman would carry all the various matters of public knowledge in his mind simultaneously, and it is therefore not proper to combine items from different publications so as to destroy the subject matter of a later patent, matters of common general knowledge are assumed to be always present to his mind, and therefore such matters may be combined with other matters of public knowledge. Thus a reader of any publication may be assumed to interpret or even extend it in view of the common general knowledge of the trade" (Fletcher Moulton on Patents, 1st ed. (1913), p. 57; Paper Sacks Pty. Ltd. v. Cowper[9]; Amalgamated Carburetters Ltd. v. Bowden Wire Ltd.[10]).

It is legitimate, therefore, to consider the appellant's specification of 1928 with the common general knowledge of the time. Taken together in the present case no room is left for the exercise of any inventive faculty in the manner claimed by the appellant.

The appeal should be dismissed.

Dixon J.

The patent which the appellant seeks to uphold concerns no unfamiliar art or branch of knowledge and has no deep purpose. Its object is to allow the foot of a bed to be raised and to make it easier to move the bed about. The means by which it is done does not seem complicated. The end of the bed is furnished with two additional castor feet, close together, branching from a middle post that slides up and down. The middle post is not round but rectangular in section, or at any rate angular, and slides in a hollow upright of the same shape. At one side or edge it has a ratchet into the teeth of which a pawl enters through a slit in the hollow upright. When the end of the bed is lifted, the middle post slides in the hollow upright and the pawl rides over the teeth of the ratchet. When the required height is reached, under the weight of the bed the pawl is caught in a tooth of the ratchet, with which it meshes, and the bed is supported at that end by the post and its two castor feet. The angularity of the post and the hollow upright within which it slides prevents the post turning and so keeps the ratchet facing the pawl. It is unnecessary to say that the operation of the pawl and ratchet is of a commonplace nature and could be seen in very many appliances, as, for instance, in an ordinary lifting jack or in the catch of a railway carriage window. Of the various means practised for preventing a rod from revolving in a hollow pipe or channel into which it telescopes, perhaps the commonest is to give them a rectangular, polygonal or elliptical section.

The question for consideration is whether the device for raising the foot of the bed amounts to an invention forming subject matter for a patent.

In the actual specification the claims are four in number. The substantial effect of the first of them is to claim a form of construction for the end of a hospital bed as a means of raising and lowering the foot of the bed. The features claimed are the hollow upright between the ordinary bed posts, and a post bearing castor feet which is to telescope into the upright and is so mounted as not to revolve but always to present a ratchet edge or side to a pawl sliding over the teeth, as the bed is raised, and manually released, when the bed is to be lowered. This claim covers all methods of preventing the rod from turning in the hollow upright.

In the second claim, the method is limited to making the post and tube rectangular.

The third claim expressly introduces another feature by way of limitation, but a feature that is almost implied in the first claim, namely, that the pawl, or bolt as it is called in the claim, should be weighted and secured by a pivot to a bracket affixed to the end of the bed.

The fourth claim is for the bed substantially as described in the specifications and drawings.

If the contrivance embodied in the bed end possesses the necessary quality of invention, at least it does not carry it upon its face. No evidence is needed to show that very familiar and very old expedients are employed. They are not applied to any new purpose, except in so far as raising and lowering a bed by mechanical means may be considered a new purpose. The telescoping post, the hollow upright and the ratchet and pawl cannot be regarded as a combination of features or elements. They constitute one element, a commonplace mechanical contrivance for the performance of the very purpose to which it is applied. To form the opinion that a mechanical means of lifting the foot of a hospital bed is desirable, to choose as the means a single telescoping post with a ratchet and pawl, to place it midway between the two end bed posts and to furnish it with two castor feet close together may amount to invention, but unless these things do, it is not obvious what other considerations there can be which will support the patent.

As is usual, however, the defendants in the suit were not content to depend on public general knowledge. They cited some prior publications as paper anticipations and of these they continue to rely upon two. One of these consists in standards containing slots into which an automatically turning pawl fitted. But it differs from the appellant's design in several respects. The standards are two in number; they are detachable and do not form part of the bed; and the pawl is not manually released by a lever but is turned over by lifting the bed to a higher slot. The other is a prior patent obtained by the appellants themselves. It is for an invention from which that now in question differs only in the use of a ratchet and of a quadrangular section in the hollow upright. The appellant's former invention made no provision for preventing the post with the castor feet from revolving and, instead of a ratchet, the telescoping post was pierced at intervals with holes which it was necessary to bring opposite a hole in the hollow upright in order to peg it by means of a curved bolt attached to the bed by a pivot and worked by hand. The contrivance shown in this specification was the subject also of an instance or instances of prior public user. I should not think that either of these two devices were anticipations invalidating the appellant's invention, if otherwise it were novel and possessed subject matter. As paper publications neither appears to me to furnish the information of which the appellant's device is a substantial embodiment. The part of the actual construction and use of beds containing the appellant's prior invention, falling short as it did of making a contribution to common public knowledge, carries the matter very little further. It is said that to substitute a rectangular hollow upright and post for the tube and for the post liable to revolve and a ratchet and pawl for the holes and bolt was to take an obvious step to overcome an obvious defect.

No doubt, in considering anticipation and subject matter, a difference between an earlier invention and a later claim to a similar invention has sometimes been held insufficient to support a patent for the later because it involved no step calling for research, discovery, or any use of the inventive faculty. But, in such cases, the substantial invention constituting the contribution to public knowledge made by the earlier invention is reproduced in the later specification with insubstantial variations. A difficulty exists in reconciling some applications that have been made of this principle with the well-settled rule that a prior paper publication, giving information that does not become part of common knowledge, does not invalidate a subsequent patent unless it supplies enough information to enable a person of proper skill in the art to produce the mechanical device or appliance or carry out the process claimed in the later specification. In some cases the approach to the question of subject matter appears to have been, first, to take the information disclosed in a prior document cited as an anticipation and then to consider what advance was contained in the invention the subject of the subsequent patent and to determine whether that advance involved subject matter. In other cases, in which greater insistence on the settled rule is to be found, the approach is quite different. In these the existence of novelty and patentable subject matter has been considered in the light of public general knowledge only and then, when it has been found that, unless anticipated by prior publication, a meritorious invention has been made, the documents cited have been scrutinized to see whether they would present the intelligent and informed reader with that invention. When both alleged inventions relate to a special or new art or branch of knowledge the progressive development of which can be plainly followed, the two ways of looking at the question of subject matter will seldom make much difference in the result. For, in such cases, the earlier publication will, as a rule, disclose some definite discovery or advance and, if this forms the central feature of the later specification, it matters little whether the variations are examined as affording possible subject matter, or the two specifications are compared with a view of ascertaining whether the earlier gives all the information, which, apart from colourable or unsubstantial distinctions or differences depending on obvious or well-known equivalents, was needed for the purpose of constructing the device or appliance or carrying out the process forming the subject of the later.

In such a case as the present, however, there may be more danger of error. For it is a case in which the alleged anticipations and the specification in question are all directed to supplying by the selection from a great variety of very familiar expedients the most suitable means for fulfilling a requirement or performing a function. The very lack of complete success in the means adopted in the earlier examples may lead one mind to find in the improvement made in the later an ingenuity or inventive act which, perhaps, would not have been found if the later device had been first considered independently in the light of the very common knowledge from which the methods employed have been drawn, all perhaps with simplicity and directness of application. Another mind might, by fastening on one step only, that differentiating the later from the earlier contrivance, overlook a faint but sufficient inventive step in correlating a number of old means to form a device of some novelty and value, independently conceived and not really anticipated. To my mind the truth of the present case is that once mechanical means of raising and lowering a hospital bed were asked for, the task of supplying them became one of selecting the most convenient and satisfactory out of a host of mechanical expedients all lying ready to hand. The actual inventor has narrated how matrons of hospitals asked him for such a bed and how he set to work to devise it. He has stated and illustrated expedients which he adopted or with which he experimented. The whole process through which he went affords, to my mind, confirmation of the view that he was not employed in invention but in supplying out of an embarrassing number of choices open to him that which in its practical application would prove most useful and commercially successful. The case falls, I think, within the language used by Maugham J., as he then was, in Adelmann and Ham Boiler Corporation v. Llanrwst Foundry Co.[11]: "The alleged invention, though possessing the advantages of being an excellent design, is simply the application of a well-known and well-understood piece of mechanism to achieve an obvious advantage, and is not the proper subject of letters patent."

In my opinion the appeal should be dismissed with costs.

Appeal dismissed.

Solicitors for the appellant, Harold T. Morgan & Sons.

Solicitor for the respondent, T. J. Purcell.