Hill v. Thomas & Sons. 66 66 66 66 66 (6 "fastenings to keep the gaiter in position when in use. The gaiter being first "fitted round the leg is then fastened by the means of a lace on one side and hooks "studs or other equivalent fastenings on the other side-In order to put my "invention into operation I make a gaiter of leather, cloth or other suitable material and of such a shape that it can be fitted round the leg of the wearer the 5 "two edges being preferably in front and the material being of such a size that one of such edges overlaps the other of a sufficient width from top to bottom-I provide a leather lace or other suitable flexible material and of the desired width and length-Down near the vertical edge of the aforesaid gaiter I punch a "number of holes A arranged in two's nearly touching each other-making in 10 all about fourteen holes or seven two's, each two holes being about 11" apart or instead of the former holes, oval shaped ones with a division in the centre of "each could be used-These holes can be strengthened by means of eyelets—In "the aforesaid holes I lace or thread a leather lace B or other flexible material— "The aforesaid lace has a knot tied in one end or fastened inside preferably the 15 66 bottom end, leaving the rest of the lace free-The aforesaid lace is then threaded "backward and forward through each of the aforesaid holes A forming a number "of loops of sufficient length C to hitch onto studs, hooks, or buttons onto the aforesaid overlap vertical edge The aforesaid holes being in pairs leaves the "lace in loops the number being according to the number of hooks or studs en 20 "the corresponding overlapped vertical edge-I rivet sew on or fix a number of hooks, studs or buttons D or other equivalent fastenings on to the overlap "down near edge the number determined according to the number of loops "formed by the aforesaid lace on the aforesaid underlap-Or the aforesaid hooks "could be inserted in the edge E or under the overlap On the aforesaid under- 25 lap could be rivetted hooks or studs to match the ones on the overlap-These "would be used for ornament--I make the gaiter or covering of such a shape "that it can be fitted round the leg of the wearer and when in position the "aforesaid loops C formed by the lace are hitched on to the hooks studs buttons "or others equivalent fastenings on the overlap vertical edge-The lace then can 30 "be drawn to any degree of tightness and it will be seen that it tightens the "aforesaid gaiter and holds the overlapping edge of the aforesaid gaiter securely "and firmly down upon the other edge F The each aforesaid loops are hitched 66 on to the aforesaid hooks studs or buttons nearest same C in a horizontal line or the loops of the aforesaid lace can cross each other by hitching on to hook 35 "above-The lace can be fastened by tucking it down inside of the legging "drawing it through one or more extra holes G tieing or other equivalent means— "The aforesaid lace could be enclosed on the inside of the gaiter so as to keep it "from the leg of the wearer-The gaiter can be made up with part buttons and part on the aforesaid principle-viz :-lace and studs &c-or with part buttons 40 "or spring and top part with lace-The same fastening can also be applied to "other articles or garments-The lower part of the gaiter or the whole of it may "be lined and stiffened according to the manufacturers judgment-The gaiter "or covering described is adjustable to several sized legs the amount of the underlap of the edges being greater or less accordingly— 45 66 66 66 66 "The aforesaid invention is a gaiter or covering for the legs and not likely to "shift while in use-The manufacturing and material may be varied or modified "more or less as may be found desirable-The aforesaid invention consists sub"stantially of a gaiter, one vertical edge of which overlaps the other & is kept "in position by means of a lace formed into loops by threading backwards and 50 "forwards through a number of holes down one side only near underlap edge "and when in position the aforesaid loops are hitched on hooks studs or buttons "on the overlap vertical edge in a horizontal or oblique line. The lace is then "tightened & fastened thus keeping the gaiter in position-The hooks and lace "could be reversed by putting the hooks where the lace is (in the underlap) and 55 "the lace where the hooks are viz:-overlap vertical edge-But the former way "of fastening is preferable Hill v. Thomas & Sons. "The aforesaid gaiter or covering is easy to put on & take off is durable com"fortable & neat & makes a very attractive unique covering especially if boots "and breeches are laced to match which can be done "The aforesaid studs or hooks could be fitted with rollers-If desired the 5" aforesaid hooks studs or buttons could be fixed to a separate piece or pieces of "leather or other flexible material and the leather sewn, or rivetted on to the "legging-" 66 The Patentee claimed :-" Improvements in fastening for gaiters or coverings "for the legs by means of a lace on the underlap about 14" from edge, the lace 10"continuing from bottom to top, & on vertical edge (or near edge) of overlap are fixed a number of studs hooks or other equivalent fastenings-The aforesaid "lace is formed into loops by passing through a number of holes the aforesaid "holes being arranged in two's down one side of the legging, the aforesaid loops "being hitched on to hooks or studs as aforesaid on overlap." 15 On the 23rd of March 1905 the Patentee commenced an action for infringement of the Patent against Thomas & Sons, claiming the usual relief. There was also a claim for passing off, but that part of the claim is immaterial for the purpose of this report on Appeal. The Plaintiff by his Statement of Claim alleged-(1) that he was the Patentee 20 and the owner of the Patent; (2) that the Defendants had infringed the Patent; and (3) that the Defendants had made leggings infringing the Patent. The Defendants by their Defence denied infringement, and alleged the invalidity of the Patent. The Particulars of Objections alleged-(1) that the Plaintiff was not the first 25 and.true inventor; (2) that the alleged invention was not new at the date of the Patent; (3) that the alleged invention was not proper subject-matter for a Patent ; (4) prior publication by the sale of a pair of leggings by the Plaintiff to T. Taylor of Port Rossetta, Alexandria; (5) that the alleged invention had been anticipated by the Specifications of E. Barnes (No. 3801 of 1880), of 30 Maurice Aron (No. 14,449 of 1896), and of A. Schwarz (No. 7188 of 1899). The fourth Objection was subsequently abandoned by the Defendants. The action was tried, on the 1st and 2nd of February and the 11th of April 1906, before Mr. Justice Sutton, who held that there was sufficient invention, that there was no anticipation and that the Defendants had infringed, 35 and gave judgment accordingly (23 R.P.C. 375). 40 The Defendants appealed. T. Terrell K.C. and E. Grimwood Mears (instructed by F. W. Langton) appeared for the Appellants; Bousfield K.C., and W. Neill (instructed by Ernest Bevir) appeared for the Respondents. Terrell K.C. for the Appellants.-The chief advantages now claimed for the gaiter are not mentioned in the Specification. In fact the chief advantage, namely, that it will fit loosely in some parts and tightly in others, does not obtain if it is made with rollers as suggested in one part of the Specification. The advantage derived from having the loops horizontal is also lost if the loops 45 are crossed as the Specification contemplates in one place. Clay v. Alcock and Co. Ld. (23 R.P.C. 745), clearly shows that where particular properties are relied on to give subject-matter to a Patent those properties must be clearly set out in the Specification. [FLETCHER MOULTON LJ. expressed his dissent, from this interpretation of the judgments in Clay v. Alcock.] There is no subject50 matter sufficient to sustain the Patent. Bousfield K.C., and Neill, for the Respondents.-This is a legging of great utility. It is the only practical laced legging. In previous laced leggings the lace was loose or else it always connected both sides of the legging, making it very awkward to put on. In this legging the lace is not loose, and is in fact an 55 integral part of the legging, while it is very easy to put on. In previous leggings the lace had to be fastened at the top and if the knot came untied the lace became unfastened the whole way down the legging. In this legging Hill v. Thomas & Sons. there is no such disadvantage. The legging can be made tight or loose at particular places at will. [BUCKLEY L.J.-The invention amounts to arranging a continuous lace so as to form a series of adjustable buttonholes.] The great utility of the legging and its novelty are sufficient to have subjectmatter. There is as much invention in selecting this method of lacing as was 5 shown in the cases of the American Braided Wire Company v. Thomson (6 R.P.C. 518) and Vickers v. Siddell (7 R.P.C., 292; L.R. 15 App. Cas. 496). Terrell K.C. replied. Lord ALVERSTONE L.C.J.-I regret to say that the Court is not unanimous in this case. In my judgment the decision of Mr. Justice Sutton was right, and 10 there was, on the evidence before him, ground for holding that there was good subject-matter. I quite agree that the case is very near the line, but I think that, if we were to go by comparison, there are many cases in which a less degree of invention, a less degree of ingenuity, has been held sufficient to constitute subject-matter, and from memory I will quote the Pavement Light 15 case*, and the Braided Wire Caset. Others can be found, but I do not consider it is desirable to deal with this case by comparison. We must deal with each case on the evidence before us. I wish it to be distinctly understood that in giving my judgment I am relying simply and solely on the evidence which has been before us and not upon anything else that may be known, or may be found, which 20 is not before us in the evidence. It does appear that with reference to the very simple and common thing of fastening on gaiters nothing of this kind was ever done before. From the point of view of novelty it is not really seriously disputed that the thing was new; but I quite agree with Mr. Terrell that in fact subject-matter cannot be discussed unless you get something new. I only 25 refer to that from the point of view of considering that argument, which has often been used, that, when you find common articles which have been used for generations, and nothing of the kind done, and certain advantages to which I will refer obtained by a particular arrangement, it is at any rate some evidence upon which Judges may take a view of novelty in dealing with subject-matter. 30 It appears that the Defendants here have taken the thing bodily and do not allege that there has been any anticipation in the shape of anything which could be said to be analogous, although they say, as I have pointed out, that there was no sufficient subject-matter. The first thing to be considered is what the Patentee claims. It is a very 35 badly drawn Specification,-obviously a Specification drawn by the Patentee himself,-containing a great many statements with regard to what might be done which are now used against him, and which if he had been wise he would not have put in; but I think you have to consider for this purpose what he has claimed. If the Defendants were taking parts of his combination, and using 40 them differently, the passages in his Specification might be of great service. He claims "Improvements in fastening for gaiters for coverings for the legs by "means of a lace on the underlap about 14′′ from edge, the lace continuing from "bottom to top, and on vertical edge (or near edge) of overlap are fixed a "number of studs, hooks, or other equivalent fastenings. The aforesaid lace is 45 "formed into loops by passing through a number of holes, the aforesaid holes "being arranged in two's down one side of the legging, the aforesaid loops being "hitched on to hooks or studs as aforesaid on overlap.' That is in my opinion an exact description of what is produced before us. I do not desire to say that I think he is entitled to say the two holes must be so close together as that the 50 two pieces of lace will be parallel when they go across the stud. I think it is quite plain that there is another passage in the Specification which shows they might be sloped, but that would, in my judgment, get rid of the advantages to be gained by what he has done. Hayward v. Hamilton (Griffin 115). American Braided Wire Company v. Thomson (ubi supra). Hill v. Thomas & Sons. On the evidence before us to have holes on one flap of a gaiter and studs upon the other was new. It may seem a very small thing, but that cannot be overlooked in dealing with the question which we are now considering. I was misunderstood when I used the expression opposite. I did not mean opposite 5 in the sense of opposite in a horizontal line. I meant on the opposite flap of the gaiter, and there is, as I understand, no evidence whatever-and it has been frankly admitted by Mr. Terrell, as stated by Mr. Neill-that on one flap of a gaiter or on one flap of a boot there had been holes through which the lace went, which lace was going to engage with hooks upon the other side. In my 10 judgment, on the point of view of subject-matter, that is a most material consideration. Further, this kind of arrangement for lacing had been attempted in two, if not three previous instances-one by Mr. Aron and another by Mr. Schwarz. In both cases it was done on the outside by having hooks or studs on either side, and with the disadvantages that it must be entirely an external 15 lacing so that, if anything got loose at any time, the whole lacing would go. It did not combine what this does combine-and what to my mind is a feature which again must not be overlooked-internal lacing with external fastening over the hooks. In my judgment that is the result of ingenuity, and of that amount of ingenuity and arrangement which may fairly be said to be sufficient 20 to support a Patent where there is a new article, therefore this arrangement, this novelty, the thing patented involved first, as I have said, the putting of eyelet holes on one flap and hooks on the other, which was new. It involved partly internal lacing and partly external fastening of great use with reference to the putting on of the gaiter easily, and of the taking off of the gaiter easily. It 25 undoubtedly allowed a buttonhole adjustable in point of length. Whether it was a straight buttonhole, if I may use that expression-a buttonhole with parallel sides or a buttonhole with diagonal sides-makes no difference. That is only possible if you have got the loop made by a lace passing through the two holes and engaging over a stud, and it is in evidence that the result is that you 30 can release the pressure upon parts of the gaiter by having a loose or comparatively long loop as compared with the other loop; and further it is the fact, although I attach very little importance to it, but I mention it because it was referred to by both sides, that the actual fastening at the top is not necessary. The importance of that is not, in my opinion, that it is not fastened at the top, 35 but that when it is fastened, as it is intended to be, by these loops being used, the loops do not come loose simply because the top of the lace happens to be loose. It is only one of the incidents which result from the combination which the Patentee has made. The fact that it remains loose in parts may be of great use when you are dealing with any man's leg on which it is not desirable to have 40 pressure the whole way down. The fact that it remains fastened, although the lace is loose at the top, is due entirely to the combination of eyelet holes on the one side and hooks on the other involving sufficient friction-that is all that need be said-upon the inside between the leg and the lace. Whether there is more or less friction than in other arrangements makes no difference, because the 45 friction is here utilized in connection with the stud on the one side and the two holes on the other. The fact that there are studs on the one side and eyelet holes on the other makes the gaiter very easy of being put on, and very easy of being taken off; or in other words, as Mr. Bousfield properly described it, you can have the gaiter flat, you can have it round your leg, and you get the 50 advantage of external lacing from the point of view of facility of putting it on and taking it off, and you get the internal lacing from the point of view of the lace remaining tight upon the studs even though part of the lace may be broken. It seems to me that this new combination, and these new results, attained, I agree, in a simple and humble article in daily use, never done before, cannot be 55 said not to involve good subject-matter unless it be shown that there has been before it what I may call an analogous use for a similar purpose. That has not been shown by any evidence to which our attention has been called. All that Hill v. Thomas & Sons. has been said is this, that you have got eyelet holes in boots: you have got hooks in boots: you can use either eyelet holes or hooks, and therefore this combination cannot be subject-matter. In my judgment that is going far beyond any decision which has been given. I have expressed my opinion with the greatest hesitation because I understand that both my learned Brothers 5 differ from me. I have no doubt in my own mind that Mr. Justice Sutton was right when he took the view that he could not say, on the evidence before him, that he ought to hold there was not sufficient subject-matter, and I think it only fair as we are dealing with the opinion of the learned Judge to call attention to the very short way, but in my judgment the very satisfactory way in which 10 he has dealt with the question of subject-matter. If the directions given in "the Specification are followed, a gaiter is constructed closely fitting with no "tendency to buckle or turn round"—and nobody has suggested it has a tendency to buckle although the studs or holes may be put further apart so that you have what may be called the accordian action to a certain extent being 15 set up. Then the learned Judge proceeded-" and its lace requires no fastening "at the top end. The gaiter is, moreover, adaptable to legs of different sizes. "These advantages resulting from the construction are, I think, indicated in "the Specification; but there is another advantage, and a valuable one, resulting "from the construction though not alluded to in the Specification, namely, 20 "that from point to point you can vary the tightness, and if at any point the "tightness is varied, the variation remains; in other words one loop can be made easy, and another tight, without any tendency to roll into one another. The "last mentioned characteristic is produced by friction. On the whole, I think "the Specification shows a sufficient exercise of the inventive faculty to 25 "constitute subject-matter." I could not put my judgment more concisely or in better words than Mr. Justice Sutton has done, and I only read that passage in order to show that he has briefly and clearly stated the grounds which I have thought it right to expand at greater length in consequence of the fact that my learned Brothers do not agree with me. 66 In my opinion this appeal should be dismissed. 30 FLETCHER MOULTON L.J.-I regret that I cannot come to the same conclusion as the LORD CHIEF JUSTICE. In my opinion there is no subject-matter for Letters Patent in this invention. It relates to a method of fastening up a continuous opening such as there is at the back of a pair of corsets, or in the 35 front of a boot, or in the front of a gaiter, by one continuous lace. The ordinary methods of doing this are very well known. In some cases there are rows of eyelets and the continuous lace is threaded through those eyelets, and then drawn tight; in other cases there are studs arranged on each side, and a lace is crossed from the studs on one side to the studs on the other, and then it is pulled up 40 and the two are drawn tight. It will be seen that in the latter case if you regard the side which has been drawn towards the other you will see that there are a series of loops formed in the lace, the base of the loops being the studs on one side, and the apex of the loops being the studs on the other side, and by drawing that lace tight you will shorten those loops. Now from an early 45 period in this case it seemed to me that the critical question was, for reasons which I will presently give, whether or not it would be good subject-matter for Letters Patent to have eyelets on one side to form the base of these loops and studs on the other to form the apex. For some reason or other no evidence was called to show that that had been actually done in the case of fastenings of this 50 kind, and although Mr. Bousfield for a long time protested against the suggestion that that would be invention he withdrew his admission, and Mr. Neill followed him in withdrawing the admission. So that I shall take it as a matter of fact that I must decide whether or not such a substitution of eyelets for hooks on one side would be invention. I unhesitatingly come to the conclusion that it would 55 not be invention. The means employed are so familiar to mankind, and are used so much in their ordinary life that we ought not to interfere with the |