the adaptation." His lordship then discussed the anticipations (as shewn above), and continued (p. 122): “In each case the mode of attachment and the plastic head is precisely the same as that employed by the respondents. The question is, whether given the use for the purpose of a button or stud, of a celluloid head or cap attached to a flanged metal foundation tube or shank, by pressing it over and under the flange, there is any invention which will support a patent in employing the same device for an eyelet. The contrivance is the same. It can hardly be contended that the purpose of ornamenting or protecting his eyelet is not analogous to the purpose for which it is used in the stud. Is there any novelty in the mode of adaptation ?" The patentees do not claim any of their three modes "as novel or part of their invention. . . . I can find no suggestion of any difficulty to be overcome in adapting the contrivance for the purpose of an eyelet which does not equally exist in the case of a button or stud . . . it is a great demand on one's credulity to say there is any invention in the matter."

As to the difficulties and experiments of the patentees, his lordship pointed out that they did not know of Joyce's and Smidt's specifications. "The force of the argument, of course, depends very much on the inventive faculty and knowledge of the experimenters. . . . The question of patentable novelty must be determined from the subject itself, and not from evidence that a particular person was a longer or shorter time in arriving at it."

1897. THE LANCASHIRE EXPLOSIVES Co. v. THE ROBURITE EXPLOSIVES Co., 12 R. P. C. 470 and 14 R. P. C. 304.

Amount of Ingenuity required for Invention-Construction of Claim. (First Action, 12 R. P. C. 470.)

A patent was granted in 1885 (No. 13690) to H. H. Lake for an invention of "an improved explosive compound."

The complete specification (as amended)1 commenced with a general statement as to the defects of nitroglycerine and the objections to its use; the new invention is then described :

"This explosive material or compound, which is termed 'Bellit,' is composed of only two solid substances, a nitrate, as for instance nitrate of ammonia, nitrate of potash, nitrate of baryta, or nitrate of soda, and a bi- or tri-nitrate of carburetted hydrogen, such as binitro-benzine, trinito-naphthaline, or trinitro-totuol, mixed with such proportions that, in the explosion, the hydrogen of the carboniferous matter burns to water, and its carbon

1 As no question was raised by the amendments, they are not here noticed; some were mere improvements in translation, others substantial.

2 "Carburetted hydrogen" obviously means "a hydrocarbon." The specification was translated into English, the invention being communicated by a foreign inventor, Carl Lamm.

burns to carbonic oxide or carbonic acid or a mixture of both, at the expense of the oxygen contained in the nitrate conjointly with the oxygen already existing in the bi- or trinitro compound of carburetted hydrogen."

"The manufacture is carried on in such a manner that the bi-nitro benzine, the trinitro-naphthaline, or the trinitro-totuol, which are solids, are first pulverized conjointly with the nitrate or separately, after which they are mixed together, preferably in a revolving cylinder, which by means of steam is heated to 100° C., when the said nitric or nitro compounds melting at a temperature of between 75° and 100° C. completely coat the particles of nitre or saltpetre all over, the bi- or tri-nitro compound, after cooling, turns solid or sets, the whole becoming thus a solid, hard mass." The material is pressed into required shape before cooling, or is granulated afterwards. Proportions are then given for the ingredients, so as to form either carbon monoxide and water after explosion, or carbon dioxide and water, or mixtures of both. The excellent properties of the resulting explosive are pointed out. The specification concluded:-

“The 'Bellit' is, moreover, composed of only such nitrated carburetted hydrogens as are very rich in oxygen, but poor in carburetted hydrogen, and, amongst these, such as melt at from 75° to 100° Celsius. In consequence of the intimate mixture when heated, Bellit becomes so homogeneous that, without the addition of any nitro-glyceriniferous substances, picrate or gun-cotton, it may be caused to explode only by means of a fulminating cap. This circumstance renders the said explosive quite free from danger, both in loading, as any ordinary shock will not cause it to explode, and in storing, as it cannot be ignited by fire. The greatest advantage offered by the Bellit is that it may thus very advantageously serve the purpose of ordnance, partly as a charge of powder and partly as charge in the projectiles, as the effect of shooting does not cause the explosion of the Bellit."

The claim was for :

"An explosive material or compound termed 'Bellit,' prepared by mixing two solid substances, viz. such bi- or tri-nitro compounds of carburetted hydrogen (or mixtures thereof) as are perfectly solid below 75° C., and a nitrate (or mixtures thereof) which substances are heated after being mixed together, so that the solid bi- or tri-nitro carburetted hydrogen melts, and after solidifying completely surrounds the unmelted nitrate, substantially as above set forth."

An action for infringement was brought against the defendants for the manufacture of an explosive called "Roburite," consisting of 86.45 per cent. of ammonium nitrate, 13.30 per cent. of chlorodinitro-benzole, and 0.25 per cent. of moisture.

The only defence finally relied on was that of want of" subject-matter," or lack of a sufficient exercise of inventive ingenuity.

The chief alleged anticipations were Sprengel's (No. 2642 of 1871) and Jensen's (No. 2422 of 1876).

The principle of Sprengel's invention was to keep separate the

396

“ oxidizing” and “combustible" agents (one at least being a liquid) until the explosive was required to do its work. A large number of oxidizible substances were mentioned, liquids and solids, e.g. oxygen acids, preferably nitric acid, nitrates, and other solids. Amongst a long list of "combustible" substances were mentioned (solids) such nitro compounds and nitrates of non-explosive, e.g. nitro-naphthaline and nitrate

organic compounds as were

of aniline, also amongst the liquids, benzol, and nitro-benzol. When made in the prepared form certain solid oxidizing and combustible substances were to be added in proportions required to produce the explosive effect.

Jensen's Specification,

a provisional one, alleged an invention of an

explosive compound made of mono-, di-, or tri-nitro-benzol nitrated alkalies, with chlorate of potash by preference, treated as directed in another provisional specification of the same date.

stearine, paraffin.

The latter was for mixing nitrated

alkalies with hydro-carbons, not liquefying at ordinary temperatures, eg. The hydro-carbons were to be liquefied "by heating before mixing with the nitrated alkalies, which thereby are to be made

non-deliquescent.”

It was proved at the trial that:

The substances mentioned in the patent in question were included in Sprengel's, but it was only during the progress of manufacture that one of

the substances was a

liquid.

The efficiency of the "Bellite" was due to

each solid particle being coated with the other ingredient during manufacture, which was not indicated in Sprengel's. Jensen's explosive, made as described by him, could not be fired without a powerful detonator, unless

chlorate of potash were an

ingredient, and if it were used the manufacture
The nitrate of a hydrocarbon

Would be too dangerous to be carried on.
used in Bellite was not included in Jensen's, but it had the same "water-

proofing" effect.

An expert of fifty years' experience considered it would

require experiment and invention to produce Bellite, and that sufficient directions for that purpose were not given in Sprengel's, Jensen's, or the other

Publications relied on.

It was also proved that it was known that the ingredients of Bellite could be mixed as described, and that a chemist conversant with explosives would suppose a priori that Bellite would be an explosive.

The defendants relied on the last-mentioned evidence elicited in cross

examination.

The learned judge held there was no invention, and the injunction

asked for was refused.

On appeal to the Court of Appeal :—

Held, that there was ample evidence of sufficient ingenuity, and the

injunction

was granted.

Per Lord Herschell (at p. 479): "The patent is not merely for mixing treats them in a particular way. He treats them with heat, and he directs together the substances he describes. When he mixes them together he the degree of Celsius at which the substances will melt, because the

to

object is that one of them when heated shall melt, and that the other shall remain a solid, and that then they shall be allowed to cool, and that that which has melted shall surround the solid, so that you get a substance capable of detonation, and yet not too readily to be detonated, and yet one which is what is called waterproof. Where is the suggestion of Sir F. Abel that any chemist would have known that? He is not asked the question. Under these circumstances I am really at a loss to see how it can be said that in this case there was no invention. Chemists of the highest experience have said that it would require experiment and research. There is produced to the public, and the method of producing it is described, a new and useful substance, possessing qualities not known by any explosive which the world had been told about before, and it seems to me that the patent cannot be otherwise than supported."

Per Rigby, L.J. (at p. 482): "Invention consists in many cases of putting together items of common knowledge which no one else had ever thought of combining-common knowledge that you may mix, common knowledge that you may waterproof; but the essence of this invention appears to be that the inventor has taken a great many things that were common knowledge, and tried which of those items of common knowledge would produce a new and useful result, and he has ascertained that, following the process described by him, you will arrive at the new and useful result which he does arrive at, and I consider that this is undoubtedly invention. I go further, and say that in this particular case it would seem to me to be invention of a somewhat high order."

(The Second Case, 14 R. P. C. 304.)

The defendants thereupon altered their mode of manufacture of their powder, and made it in the following manner. About two per cent. of chloronaphthaline was used as a third ingredient; it was added to the nitrate of ammonia, before the addition of the binitro-benzine. Heat was used, but not above 40° C., so the binitro-benzine was never melted as described in the specification. Complete "waterproofing" was not secured. On a motion to commit for breach of the injunction the learned judge held that the defendants had not infringed.

The Court of Appeal upheld this decision.

On appeal to the House of Lords :

Held, that the patent was confined to the substance produced by means of heat as described, and that the claim did not cover what the defendants had done.

Per Lord Herschell (at p. 311): "Of course, it very often happens that a patentee claims less than he could have done. I do not say that is the case here it is not necessary to apply one's mind to that; but a patentee often makes that smaller claim in order to render himself perfectly safe with the smaller claim, when a larger claim would have rendered his patent one open to cavil and question. Of course, very often when he

makes that smaller claim he does not foresee that making it smaller in order to make his patent safe, he has at the same time laid himself open to the danger of having something made which may be more or less equivalent to his invention without his invention being infringed. That is always one of the risks that a patentee runs. If he makes his patent too wide, it may be held bad. If, on the other hand, he makes it too narrow, he may find its value very largely diminished, because the protection it affords is very small. The difficulty always is to hit the medium between these two extreme cases. But nevertheless where a patentee has, as I think he has here, clearly and unequivocally made a smaller and more limited claim. . . it is impossible to construe his claim as extending to something which its language does not naturally include."

1897. WOOD 7. RAPHAEL, 14 R. P. C. 496.

Want of Inventive Ingenuity-Alleged Combination.

A patent (No. 8124 of 1893) was granted to J. J. Wood for " Improvements in, or connected with, pince-nez or double eye-glasses."

The complete specification described the object of the invention, so to construct pince-nez that the centres of the glasses should be a constant distance apart corresponding with the normal distance apart of the user's eyes, and the supports be adjustable so as to firmly and comfortably fit, no matter on what part of the nose they are placed. The specification continued :—

"According to this invention, I combine with eye-glasses having a rigid or firm bridge and fixed centres, arms mounted at one end upon a hinge or joint, each having a spring in connection with it, adapted to normally press the arms towards the nose; and at the other end, gripping bearers which are hinged by a pivot, or equivalent loose joint or carrying support through which said bearers may move or swivel about on said arms; or, one only of said gripping bearers may be loose upon its joint and free to swivel thereon, the other being fixed, after being fitted or adjusted to the wearer's nose."

The invention will be apparent from Fig. 1, in which “a are the glass frames, is a rigid or practically rigid bridge connecting said frames a together, and c are the glasses; d are the rigid or practically rigid arms, and e are gripping bearers hinged on the ends of the arms d. Each of the arms dis hinged at its base to the frames a, and is pressed outwards from their frames by springs, one of which, f, is shown on the right-hand side of Fig. 1."

The details of the springs and attachments are described, as well as other modifications.

It is unnecessary to give the other diagrams here. The author is indebted to Mr. Raphael (defendant's solicitor) for exhibits used in this case.