Reports of Patent, Design, and Trade Mark Cases

In the Matter of Owen's Patent.

"and unslaked lime or other suitable materials in a mould box which is then "placed in a cylinder; and after being tightly closed the cylinder is filled with "water, and steam is then let into the water for the double purpose of imparting pressure and heat thereto; the pressure counteracting that generated within "the box during the formation of the stone. By this method large quantities 5 "of air and gases brought into the cylinder by the steam and also already con"tained in the water itself are forced into the mould box and form innumerable "air cracks in the mass therein contained, with the result that it is impossible "to produce a perfectly sound stone. Also it is impossible to obtain a high "degree of temperature for as the pressure required in the cylinder is only fifty 10 "to sixty pounds per square inch it is obviously impossible to get to a higher "degree of temperature than that of slightly superheated steam itself at this "pressure, say 281 to 292° F.-which has proved not to be enough to produce a "highly finished and reliable stone. Another objection to this method is that "the stone at the end of the process is soft and friable, and for several weeks is 15 "totally unfit for using in masonry.

"I get over all these difficulties by the process hereinafter described whereby "I produce a stone (in half the time required by the above mentioned method) "which is sound, hard, homogeneous, free from all cracks, flaws, and other "imperfections, and can be used in masonry after it is taken out of the cylinders 20 " and mould box without having to be left to harden as above described.

"I require for my process a mould box of any suitable construction to receive "the ingredients of which the stone is to be composed and a cylinder or "chamber preferably of the kind illustrated in the accompanying drawings of "the same

"The process in which the aforesaid cylinder and mould-box, or equivalents are employed is as follows :-The mould-box M having been filled with the "lime and other components of the artificial stone is run into the cylinder E "which is then closed and filled with water at a temperature of 212° F., and an accumulator or pump is kept working until a hydraulic pressure of about 60 30 "pounds per square inch is shewn on the cylinder pressure gauge; the supply "of water is then stopped. Steam is then let into the heating coils F to raise "the temperature of the contents of the cylinder gradually to between 400° and "450° F., or even higher; this raising of the temperature should be commenced "within one hour after filling the cylinder with water as described. It is 35 "desirable that the maximum temperature should be reached within five hours "from the time of filling the cylinder with water,-and it is to be kept up "for say 30 hours to effect the 'setting' of the stone after which the steam is "partially shut off and the water drained out of the cylinder. The cylinder is "then converted into a rapid drying chamber, the steam supply to the coils 40 "being maintained, but regulated to give a temperature of say 200° F. in the "cylinder in order to expel all moisture from the stone. After say 10 hours of "this drying operation, the steam to the coils F is entirely shut off; the cylinder " is opened, and the mould-box taken out and opened. The stone will then be "found to be hard, practically dry, and ready for immediate use in masonry. 45 "It is found that the absorption of water from the cylinder E by the contents "of the mould-box during the slaking process which takes place in the latter "during the first hour, has very little effect in diminishing the volume of the "water in the cylinder, but if any decrease of the volume and pressure of 'liquid in the cylinder E should occur, it will be very slight and a few strokes 50 "of the supply pump will restore the original conditions of working. This is "the only pumping which need be done after once the process is begun, whereas "hitherto it has been necessary to maintain a continuous circulation of the liquid contents of the cylinder for the whole duration of the process. Any gases formed or given off during the process ascend through the tubular 55 "screws F1 into the drum whence they can be allowed to issue by way of the "outlet L'.

In the Matter of Owen's Patent.

"It is an important feature of this process that the air cracks hitherto pro"duced in the artificial stone are avoided by using in the cylinder E distilled "water free of air and by not permitting the steam used as the heating medium, "to have any access to the cylinder except under confinement in the coils F; 5"thus no air can get to the contents of the mould-box M.

"The power of the water to penetrate the mass is so great in this process that "it is not necessary to provide special holes for access to the mass inside the "mould. I usually use packing along the edges of the mould and find that the "unavoidable leakage at the angles of the box is sufficient to supply the water necessary.

10"

"By this particular method I have found it possible to get sufficient moisture "at a high degree of temperature to enable me to use not only various sands "and grits, but to use chips of marble ground into a powder and with the "requisite proportion of hydraulic lime (say 80 to 85 per cent. of marble to 20 or 15 per cent. of lime) produce an artificial marble capable of being polished "and of precisely the same texture, closeness, specific gravity and appearance "as the natural marble."

15 "

25"

The Patentee claimed :—" (1) A method of manufacturing artificial stone in "which the components of the stone are submerged in water under pressure 20" which is deprived of air, and which is heated and maintained at a high temperature by a heating medium having no direct access to either the stone or "the water substantially as and for the purpose described. (2) A method of "manufacturing artificial stone and the like in which the components of the "stone are subjected to treatment with and subsequently without water under pressure substantially as herein before described. (3) A method of manufacturing artificial stone and the like in which the components of the stone are "subjected to treatment with water (either with or without subsequent treatment "without water) under pressure substantially as hereinbefore described and "approximately for the periods and at the temperatures specified. (4) Artificial 30" marble produced by subjecting a mixture of pulverized or broken marble "with hydraulic lime to heat and pressure in the manner and substantially as "described. (5) In apparatus for the manufacture of artificial stone and the "like a cylinder such as E and its appurtenances substantially as and for the purpose described and illustrated in Figures 1, 2, and 3 of the accompanying 35" drawings."

In 1897, Charles Augustus Peters presented a petition, to which William Owen and The Owen Stone Company of Scotland, Ld., were Respondents, for the revocation of the patent, the presentation of which petition was authorised by the Attorney-General pursuant to Section 26, (4) (b), of the Patents, &c. Act, 1883. 40 The petition alleged that the Petitioner was entitled to Letters Patent, No. 8017 of 1891, and No. 8142 of 1893, for improved apparatus employed in the manufacture of artificial sandstone, subject to certain licenses therein mentioned, and that the invention included in the patent No. 12,368 of 1896 was the same as that included in the Petitioner's patents, and that the invention in respect 45 of which the patent was granted was not novel at the date of the same.

The Particulars of Objections alleged (inter alia) want of novelty, want of utility, and insufficiency of Specification, the grounds being fully set out and alleging various inaccuracies and errors in the statements and directions of the Specification, also want of subject-matter, and that the alleged invention was 50 not capable of being carried into practice.

On the 23rd of May 1898, the Respondent, William Owen, applied for an order that he might be at liberty to apply at the Patent Office for leave to amend his Specification. On the 13th of June 1898, STIRLING, J., adjourned the hearing of the summons for the Applicant to show what disclaimer he 55 proposed to make, and on the 27th of June 1898, the matter was adjourned into Court.

The Respondent, William Owen, stated in an affidavit (inter alia, and after

In the Matter of Owen's Fatent.

certain explanations) :-"I know that the statements made in two places in my "Specification are incorrect, and should be altered in the manner hereinafter "indicated. The two places I refer to are page 3, lines 22 to 26, where I state "that a temperature of 281° to 292° F. is not sufficient to produce a highly "finished and reliable stone; and page 4, line 22, where I make the statement 5 "that the temperature of the contents of the cylinder is raised to between “400° to 450° F. At the time that I inserted those temperatures I believed my "statements to be perfectly accurate, relying upon the readings that I had "actually obtained from my thermometer, but it having now been pointed out "to me that those statements are not accurate, I desire to correct them by 10 "removing from the Specification the sentence upon page 3, lines 22 to 26; "and upon page 4, line 22, altering the figure 400° into 250°, and the figure "450° into 350°."

Moulton, Q.C., and J. C. Graham (instructed by Ashurst, Morris, Crisp, and Co.) appeared for the Respondent William Owen; Bousfield, Q.C., and S. O. 15 Buckmaster (instructed by J. and M. Solomon) appeared for the Petitioner.

Moulton, Q.C., and Graham for William Owen.-It is quite clear that the figures in the Specification are in error. Disclaimer is almost a matter of right on proper terms as to costs. It will be said that the words disclaimer, "correction, or explanation," being in Section 18, but the word "disclaimer" 20 only in Section 19, the latter section ought to be read narrowly, but the omission of the other words in Section 19 is merely a slip in the Act, and a broad meaning should be put on the word "disclaimer." The point was raised in Re Lang's Patent, 7 R.P.C. 469, where the Law Officer decided that the meaning should not be limited as contended. There is no reason why 25 disclaimer should be allowed pending proceedings, but that correction or explanation should not be allowed. Prior to the Act of 1883 disclaimers only were allowed. [Bousfield, Q.C.-Disclaimers and memoranda of alteration.] Lang's case shows that disclaimer must be taken to include explanation and correction. We have only to get over sub-section 10 and then we may, at the 30 Patent Office, ask for any amendment. I admit that what we ask for is correction; if the narrow construction of disclaimer is adopted we are not within it. In Gaulard and Gibbs Patent, 5 R.P.C. 189, the amendments were by way of correction. It would be a hardship on Patentees if their rights as to amendment should be taken away when their attention is called to a defect 35 by a petition for revocation. In Deeley v. Perkes, 13 R.P.C. 581, this point did not arise, but the House of Lords acted on the principle that an opportunity should be given to a Patentee to make his patent good. Section 19 was only intended to give the Court power to protect litigants.

Bousfield, Q.C., and S. O. Buckmaster for the Petitioner.-[STIRLING, J., 40 asked what reason there was for the difference of language in the two sections.] Section 18 goes beyond the former Acts, and it was probably thought that the privilege ought not to be extended in cases where litigation had been commenced. The object of the Legislature in allowing disclaimers is shown by Ralston v. Smith, 11 H.L.C. 223. There is no case 45 where anything more than disclaimer has been allowed during litigation. Practically, sub-section 1 of Section 18 is the only sub-section cut out by there being pending litigation. It cannot be said that there is a slip in the Act, as Section 18 has been amended since and not altered in this respect, which rebuts that suggestion. Lang's Patent was a case of pure disclaimer, so also 50 was Gaulard and Gibbs' Patent. The dictum of Chitty, L.J., in Armstrong's Patent, 14 R.P.C. 754, is in accordance with the construction for which we contend. The difference between the sections may be to meet possible cases of fraud by Patentees in putting in wrong information or concealing the real invention, and then attempting to amend when a petition is presented.

STIRLING, J.-This is an application made to me under Section 19 of the Patents Act of 1883, which provides that "In an action for infringement of a

In the Matter of Owen's Patent.

patent, and in a proceeding for revocation of a patent, the Court or a Judge may, at any time, order that the Patentee shall, subject to such terms as to "costs and otherwise as the Court or a Judge may impose, be at liberty to "apply at the Patent Office for leave to amend his Specification by way of 5" disclaimer, and may direct that, in the meantime, the trial or hearing of the "action shall be postponed." There is pending before me a proceeding for revocation of this patent, and the application to me is, in accordance with that Act, that the Patentee may be at liberty to apply at the Patent Office for leave to amend his Specification by way of disclaimer. When the matter came 10 before me in Chambers, it was stated by the other side that the application that was proposed to be made to the Patent Office was not really to amend by way of disclaimer within the meaning of that section, and thereupon I requested that it should be made clear to me exactly what the Patentee proposed to apply for, and accordingly the Patentee has produced to me on the present 15 argument a copy of the Specification amended as he desires to have it amended, and it is for leave to make this amendment that he proposes to apply.

Now, the language of the 19th Section of the Act, and of the two sections which precede and follow it-the 18th and 20th Sections-is somewhat remarkable. Section 18 begins, sub-section 1, by providing that "An applicant 20 or a Patentee may, from time to time, by request in writing left at the Patent "Office, seek leave to amend his Specification, including drawings forming "part thereof, by way of disclaimer, correction or explanation, stating the "nature of such amendment and his reasons for the same." Sub-sections 2 to 9, inclusive, are consequential on that, and then, in the original Act, there stood 25 this clause, sub-section 10:-"The foregoing provisions of this section do not apply when and so long as any action for infringement or other legal pro"ceedings in relation to a patent is pending." By the Amendment Act of 1888 another sub-section 10 was substituted for that, which runs thus :-"The fore"going provisions of this section do not apply when and so long as any action 30" for infringement or proceeding for revocation of a patent is pending.' Then Section 19 I have already read. It is important to observe that it is limited to amendment by way of disclaimer, and that the words, "Correction or explanation," which are in Section 18, sub-section 1, are not found there. Section 20 also deals with amendments and is this :-"Where an amendment by way of 35" disclaimer, correction or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention "before the disclaimer, correction or explanation, unless the Patentee establishes, "to the satisfaction of the Court, that his original claim was framed in good "faith, and with reasonable skill and knowledge."

The contention on the part of the Applicants is, that there has been a slip made in the Act and that the word "disclaimer," which alone occurs in Section 19, ought to be read as having the same meaning as if the words "correction or explanation" were added, though those words are not found in the 19th section. It has been admitted very candidly by Mr. Moulton that the 45 amendment which he has brought under my notice is not by way of disclaimer, if the word "disclaimer" is to be construed in its narrow meaning, but is really an application for leave to amend by way of correction; and his junior, Mr. Graham, though he has not expressed himself in precisely the same language, has been unable to show me what disclaimer in the strict sense there 50 is to be found here.

It is said that this matter has been discussed before the Law Officers and before the Courts, and it is said that the wider construction has been put upon it, and I have been referred to various cases in which the matter has been brought under the consideration of the Law Officers and of the Courts in support of that 55 proposition.

The practice is said to have been settled, so far as the Law Officers are concerned, by the case of Re Lang's Patent, 7 R.P.C., page 469. That was a

In the Matter of Owen's Patent.

case in which an application was made to amend by way of disclaimer. That was the form of the application, and the Law Officer, dealing with the argument upon the sections, expresses himself thus :-"My jurisdiction here is under the "combined operation of the 18th and 19th sections of the Patents Act, and I "have no doubt when, under the 19th section, the Court or Judge orders that 5 "the Patentee shall be at liberty to apply to the Patent Office for leave to "amend his Specification by way of disclaimer, the provisions of Section 18 "do apply as if that section stood without the three words in it, 'correction "or explanation." He is there dealing with an objection which apparently was taken founded upon the peculiar language of Sub-section 10 of Section 18, 10 followed by the peculiar phrasing of Section 19. Section 18, sub-section 10, as amended by the Act of 1888, says that the foregoing provisions in that section do not apply when and so long as any proceeding for revocation, for example, is pending. Section 19 provides that in a proceeding for revocation of a patent the Court or a Judge may at any time order that the Patentee shall 15 be at liberty to apply at the Patent Office; but it goes no further, and, as the Court has merely power to direct that in the meantime the trial or hearing of the action shall be postponed the proceeding is left pending, and, according to Sub-section 10, none of the provisions of the earlier clauses in Section 18 would apply, and there is no machinery for making an application to the 20 Patent Office. Consequently it would seem as if the function of the Court being discharged by giving liberty to apply, there is no way of making the application which the Court orders. Well, the Court and the Law Officers have got over that by saying that Sub-section 10 must be read subject to the qualifying proviso contained in Section 19, and that when liberty has been given an 25 application may be made to the Law Officers in accordance with Section 18. But does that enable an application to be made otherwise than for an amendment by way of disclaimer? In the judgment of the learned Law Officer he answers "No." He says:-" I have no doubt that when, under the 19th section, "the Court or Judge orders that the Patentee shall be at liberty to apply to the 30 "Patent Office for leave to amend his Specification by way of disclaimer, the provisions of Section 18 do apply as if that section stood without the three "words in it, correction or explanation."" Consequently it is limited to disclaimer alone. He continues thus :-" My jurisdiction in the main depends "on the 18th section, and I do not doubt that I have power to allow any 35 "amendment, whether of the letterpress of the Specification or of the drawings, or by way of adding drawings, if drawings have not in the first "instance been appended to the Specification, necessary to define the disclaimer "which it is desired to make." That is to say, that when an application is made for a real disclaimer there is power to amend the body of the Specification 40 or the drawings by giving all necessary information and explanation for the purpose of defining more accurately the disclaimer; and in that sense the Specification which came before the Law Officer on that occasion was one which it was sought to amend by way of disclaimer. That seems to me that is quite clear from the report and from the subsequent portions of the judgment, which it is 45 not necessary for me to quote at length.

I was also referred to the case of Gaulard and Gibbs' Putent, in which an application was made for leave to amend by way of disclaimer, the disclaimer being really the excision of Claim 3 of the Specification, and upon that, in the same way as allowed by the Law Officer in the case of Lang's Patent, certain 50 portions of the body of the Specification were allowed to be struck out or altered.

These cases do not help the present application. But the very point seems to have been present to the mind of Lord Justice Chitty in the case of Re Armstrong's Patent, in 14 R.P.C., page 754. There, in dealing with an argu- 55 ment which had been addressed to the Court, he said this :-"The amendment "that could be made, even if leave were granted, would merely be by way of

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Reports of Patent, Design, and Trade Mark Cases, Volume 15