Supreme Court of Canada
The King
v. Uhlemann, [1952] 1 S.C.R. 143
Date:
1951-12-03
His Majesty The King (Plaintiff) Appellant;
and
Uhlemann Optical Company (Defendant) Respondent.
1951: April 9, 10, 11, 12; 1951: December 3.
Present: Rinfret C.J. and Kerwin, Locke, Cartwright and
Fauteux JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA.
Patents—Eye-glasses—Two-point Numount mounting—Action
for impeachment—Anticipation—Lack of invention—Ambiguity—Commercial success.
Pursuant to s. 60 of the Patent Act (S. of C. 1935, c.
32), the Crown, on the information of the Attorney General of Canada, sought to
impeach respondent's patent 381,380, covering an invention relating to a
mounting means for temples of rimless eye-glasses (spectacles), on the ground
that it was invalid for lack of novelty and lack of subject matter. The action
was dismissed in the Exchequer Court of Canada.
Held (Locke J. dissenting), that the judgment appealed
from be affirmed and the appeal dismissed, since there was no anticipation and
since the patent in suit contributed substantially to the solution of the
problem of breakage and did involve the taking of an inventive step which the
respondent was the first to take.
[Page 144]
Per Rinfret C.J. and Kerwin, Cartwright and Fauteux
JJ.: In an invention which consists in a combination as in the present case, it
matters not whether the elements thereof are old and were already known in the
art as separate entities, the only point is whether the actual combination is
new. The invention lies in the particular combination, provided it is not a
mere aggregation or a juxtaposition of known contrivances.
Whether there is invention in a new thing is a question of
fact for the judgment of whatever tribunal has the duty of deciding.
Ex post facto analysis of an invention is unfair to the
inventors and is not countenanced by the patent law.
Baldwin International Radio Co. of Canada Ltd. v. Western
Electric Co. [1934] S.C.R. 94; Samuel Parkes & Co. v. Cocker
Bros. 46 R.P.C. 241; British Westinghouse Electric and Manufacturing Co.
Ltd. v. Braulik 27 R.P.C. 209 and Non-Drip Measure Co. Ltd.
v. Stranger's Ltd. 60 R.P.C. 135 referred to.
Per Locke J. (dissenting): Since the essence of the
alleged invention as disclosed by the evidence lay not in attaching the temple supporting
arm to the lens edge engaging portion or shoe of the strap, but rather to the
nose-engaging, means at the point where the strap was soldered to it, for the
very purpose described in the specification of transferring any pressure from
the temples to the nose-engaging means and the bridge; and since, having regard
to the common knowledge in the art at the time of the alleged invention, there
was nothing new in such a construction or in any of the parts or in the idea,
the relief claimed should be granted.
The slight change made from the prior disclosure by Savoie in
securing the temple-bow holder to the strap by solder rather than to the ear of
the strap by a screw, did not involve the exercise of the inventive faculties;
the commercial success of the mounting, although extensive, cannot be regarded
as in any sense conclusive on the question in view of the evidence of the lack
of invention.
Natural Colour Kinematograph v. Bioschemes Ltd.
32 R.P.C. 256; Pugh v. Riley Cycle Co. 31 R.P.C. 266; Pope
Appliance Corp. v. Spanish River Pulp and Paper Mills [1929] A.C.
269; Crosley Radio Corp. v. Canadian General Electric Co. [1936]
S.C.R. 551; Vanity Fair Silk Mills v. Commissioner of Patents
[1939] S.C.R. 245 and Longbottom v. Shaw 8 R.P.C. 333 referred
to.
APPEAL from the judgment of the Exchequer Court of
Canada, Thorson P. , dismissing the Crown's action for a
declaration of invalidity of the respondent's patent 381,380.
E. G. Gowling K.C. and G. F. Henderson for the
appellant. The patent in suit is attacked on the grounds of anticipation, lack
of subject matter and ambiguity.
In construing the prior document to determine if it
constitutes an anticipation, the Court has regard to the effect of the
disclosure upon one skilled in the art namely one
[Page 145]
who is deemed to be familiar with the common knowledge 1951 in
the art: King Brown & Co. v. The Anglo American Brush
Corp. and Gillette Safety Razor Co. v. Anglo
American Trading Co. . The case of Rice v. Christiani
is also relied upon.
The prior publication must disclose invention claimed to the
extent that the skilled technician faced with the problem, would find the
answer obvious from examining the document: Electric and Musical Industries
Ltd. . A drawing alone can constitute an
anticipatory document.
The claim here is invalid since there is something old within
it and since it is not a combination patent within the case of Baldwin
International Radio v. Western Electric . The cases
of Smith Incubator Co. v. Seiling and The King v. Smith
Incubator are also relied upon.
It is not essential that the same problem be envisaged in the
anticipatory document. It is critical that the construction has been disclosed
to and is open to the public to use: John Summers & Sons Ltd. v. The
Cold Metal Process Co. .
Applying the foregoing principles, it is submitted that the
claims of the patent in suit are anticipated by Stevens U.S. patent 953,304,
Savoie U.S. patent 988,666 and Nerney U.S. patents 1,984,541 and 1,987,701.
Even if the prior documents should not be found to constitute
an anticipation or a disclosure of the invention, the degree of advance in the
art made by the patentee over the disclosures cannot constitute invention. Any
difference is in the matter of non-essentials structurally and functionally.
Every advance over the prior disclosures cannot constitute invention or the
grant of the patent monopoly would arrest rather than encourage development in
the arts and science: British Ore Concentration Syndicate Ltd. v. Minerals
Separation Ltd. 0. The cases of Vanity Fair Silk Mills
v. Commissioner of Patents 1 and Crosley Radio Corp. v. Canadian
General Electric Co. Ltd. 2 are relied on as cases dealing with
advances which did not
[Page 146]
constitute patentable advance over the prior publication. All
the advantages flowing from the alleged invention resulted from features which
were old in the art. All that the inventor did was to make a non-essential
contribution. The principle enunciated in Clyde Nail Co. v. Rusesll
is applicable. Reliance is also placed on the case of Morgan & Co.
v. Windover & Co. .
To the extent that there is a diversity between the claims of
the patent in suit and the prior art, it is merely one of form which does not
constitute an advance in the art to warrant the grant of a valid patent: Mauck
v. Dominion Chain Co. Ltd. . Similarly if the change over the prior
art is purely a matter of design, no invention has resulted: Safveans Aktie
Bodag v. Ford Motor Co. and Wood v. Raphael .
It is therefore submitted that the claims of the patent in
suit fail to disclose a patentable advance over the Stevens, Savoie and Nerney
patents.
It is further submitted that the patent in suit did not lead
to an unexpected result or the solution of a long existent problem. There was
no evidence of the existence of a problem. Rather than the satisfaction of a
long felt want, the patent in suit merely constituted a style change accepted
by the public for reasons of commerce rather than invention.
The trial judge placed too much weight on the commercial
success of the mounting. The success of the mounting was attributable to causes
other than the invention. The case of Niagara Wire Weaving Co. Ltd. v. Johnson
Wire Works Ltd. is relied on. The case of Western
Electric Co. v. Baldwin International Radio at page
595 is relied on to show the danger of looking at the evidence of witnesses on
the article in the market rather than looking at the specifications and claims.
The term "lens edge engaging portion of the strap"
is ambiguous. It is not defined in the patent. There is no evidence that the
phrase has any technical meaning to any one skilled in the art. It would appear
to have been a phrase chosen by the inventor and should, therefore, have
[Page 147]
been defined with precision by him, if
it constitutes the 1951 essence of the invention as defined by the trial judge.
Uncertainty relating to the meaning of the phrase is particularly
objectionable since it relates to the very essence of the invention as found by
the trial judge. Moreover, it is an obscurity that could easily have been
avoided by a more precise description in the specification. In the
circumstances, the principle of the decision in Unifloc Reagents Ld. v. Newstead
Colliery Ld. is applicable. There is an obligation
upon the inventor to provide the public with the subject matter of his advance
in the art without avoidable obscurity: Natural Colour Kinematograph Co. Ld.
v. Bioschemes Ld. .
Christopher Robinson K.C. and Rusesll S. Smart
for the respondent. Considered by the tests in Canadian General Electric
v. Fada and Pope Appliance Corp. v. Spanish
River Pulp and Paper Mills , none of the prior patents or
publications is an anticipation of the invention covered by the patent in suit.
As to the propriety of looking at prior patents, the cases of Non-Drip
Measure Co. v. Strangers and Fiberglas Canada Ltd. v. Spun
Rock Woods are cited.
Having regard to the findings of fact by the trial judge,
which are fully supported by the evidence, the respondent submits that this
case is similar to the cases of Non-Drip Measure Co. v. Strangers
(supra) and Samuel Parkes & Co. 1. Cocker Bros. ,
and that the mounting of the patent in suit was no mere workshop improvement
which was obvious to any workman faced with the problems of the old rimless
mountings, but was, on the contrary, an invention.
There was a problem and the existence of that problem plus the
commercial success is a strong evidence of an invention: Longbottom v. Shaw
,
Howaldt v. Condrup Ltd. , Albert Wood and
Amcolite Ltd. v. Gowshall Ltd. and John Wright and
Eagle Range Ltd. v. General Gas Appliances Ltd. .
[Page 148]
There is no ambiguity in the expression "lens edge
engaging portion". It means the base edge of the U.
It is a
combination invention and not a new invention in the sense that there are no
new parts.
E. G. Gowling K.C. replied.
The judgment of the Chief Justice and of Kerwin, Cartwright
and Fauteux JJ. was delivered by
The Chief Justice—This
action was instituted under the provisions of Section 60 of The Patent Act,
S. of C. 1935, c. 32. The information of the Attorney-General of Canada sought
to impeach patents 381,380 and 392,449 as well as industrial design
registration 58/12138; but the respondent withdrew its defence in respect of
patent 392,449 and the industrial design, so that the trial of this appeal
relates only to the validity of patent 381,380.
The disclosure of the nature of the invention of the
respondent and of the best mode of realizing the advantages thereof is
expressed as follows in the specification:
My invention relates to eyeglasses, and more specifically it
relates to a mounting means for the temple.
One of the objects of my invention is to provide an improved
temple mounting which prevents strain from being transmitted to the lenses.
A further object of my invention is to provide a temple
mounting that requires a minimum amount of labor in attaching the mounting.
A further object of my invention is to provide an improved
temple mounting which will be inconspicuous in appearance.
A further object of my invention is to provide an improved
temple mounting which will result in a saving of material.
The attacks made on the patent are its lack of novelty
(sometimes called anticipation) and lack of invention (usually referred to as
lack of subject matter), and the conclusions of the information were that the
letters patent be declared invalid or void and that the same be cancelled and
set aside.
The specification is dated the 28th day of February, 1938,
and the patent was granted to William R. Uhlemann on the 16th day of May, 1939.
It was subsequently assigned to the respondent.
The learned President of the Exchequer Court
dismissed, with costs, the appellant's action for a declaration of invalidity.
[Page 149]
The learned President arrived at the conclusion, on the
evidence submitted by the plaintiff, that it was shown that at an early date
efforts were made to improve rimless spectacles. He said:
The problem was to overcome their defects, namely, the high
rate of breakage of the lenses and their tendency to loosening, and at the same
time retain their advantageous features, namely, their lightness, wide range of
vision and comparative inconspicuousness. The problem was primarily that of
breakage and next that of loosening. It was also desired to reduce the
inconspicuousness of rimless spectacles still further. There was certainly a
clear recognition of the problem to be solved in the specifications of several
of the patents such as, for example, the Stayman, Ferris and Nerney patents.
He adds:
Without discussing the patents in detail, I think that it
may fairly be said that up to the time when the defendant's 2-point Numont
mounting came on the market no satisfactory solution of the problem had been
found.
When the defendant's mounting came into production in 1938
there was an immediate and wide demand for it and it almost swept other types
of rimless spectacles mountings off the market. This was admitted by Mr.
Elliott for the plaintiff who said that when it first came it was about 90 per
cent of the optician's business. Mr. Goodwin for the defendant also stated that
it was the greatest revolution in the optical frame business.
The judgment appealed from finds that:
The evidence establishes that there was no practical
contribution to the solution of the problem prior to the 2-point Numont
mounting. The inventions covered by the patents (filed as Exhibits) were in the
main paper proposals or, where that was not so, had no commercial success.
The judgment also states that:
The evidence establishes that the 2-point Numont mounting
went a considerable distance towards solving the problem to which the inventor
had addressed himself. There was really no substantial dispute of this fact;
and that
the evidence is conclusive that the defendant's mounting
made a substantial contribution to the solution of the problem of breakage.
The learned President then addresses himself to the question
whether the change from the prior art made by Uhlemann was a patentable
invention, and after having stated that "there was no novelty in any of
the parts, all of which were well known in the art prior to 1930," he
adds:
So that whatever invention there may be in the defendant's
mounting lies, not in any part or parts, but in the manner of attachment of
some of them … The inventive idea lay in having a mounting in which there
[Page 150]
is a single point connection with the lens and the temple
arms are connected at a specific place near the nasal edge of the lens, namely,
to the lens edge engaging portion of the strap. It was the essence of the
invention to have the temple arms so connected.
Perhaps it may be said at once that counsel for the
appellant suggested that the idea so described was not incorporated in the
claims at the end of the specification, but the answer of the judgment to that
objection was that:
It is to the securing of the temple arm at the lens edge
engaging portion of the strap that all the claims are directed … The thread
which runs through all the claims is the connection of the temple arm to the
lens edge engaging portion of the strap at the nasal edge of the lens. In my
opinion, counsel for the defendant has correctly set out the essence of the
alleged invention. I do not think that any person skilled in the art who read
the specification would have had any doubt about it or how to carry it into
effect.
It may be said that, at bar, Mr. Robinson, counsel for the
respondent, accepted this interpretation of the claims.
With this interpretation of the specification and of the
claims it is clearly shown that Uhlemann's invention consists in a combination
and it matters not, therefore, whether, as contended by counsel for the
appellant, the elements thereof are old and were already known in the art as
separate entities. As was pointed out by this Court in Baldwin International
Radio Co. of Canada Ltd. v. Western Electric Co. Inc. et al ,
"On this branch of the case, viz.: anticipation, the only point is whether
the actual combination is new" … "It is idle to repeat that
anticipation is not established by what may be qualified the 'imaginary
assemblage' of separate elements gathered from glosses selected here and there
in several and distinct anterior specifications." The invention lies in
the particular combination, provided it is not a mere aggregation or a
juxtaposition of known contrivances.
We have here a group of co-acting parts achieving a combined
result or, as was said in British United Shoe Machinery Company Ltd. v. A.
Fussell & Sons Ltd. , "a collocation of
intercommunicating parts so as to arrive at (what may be called) a simple and
not a complex result." As was found in the Baldwin case supra,
that satisfies the definition of a combination for the purposes of the patent
law.
[Page 151]
After having examined the several prior patents claimed by
the appellant to be anticipatory to the patent in issue, the judgment found that no anticipation had been established
because none of these anterior patents, for purposes of practical utility, were
equal to that given by the patent in suit; that nothing essential to the
invention and necessary or material for its practical working and real utility
could be found substantially in the prior publications, nor were there in them
clear directions to use it in order to produce the particular result brought
about by Uhlemann's discovery. In that connection, Lord Dunedin's reference to
a "mosaic" in the judgment of the Judicial Committee of the Privy
Council in Pope Appliance Corporation v. Spanish River Pulp and Paper
Mills, Ltd. was referred to.
We agree that the judgment appealed from cannot be disturbed
on that ground.
That leaves only the issue of subject matter; and the ground
upon which it is suggested that the invention in the present case was not
patentable is that the advantages "would be obvious as a workshop
improvement to a person skilled in the art and did not involve any inventive
step."
On that point, the judgment is to the effect that the result
accomplished by Uhlemann did involve the taking of an inventive step and that
he was the first to take it. That was the finding of the learned trial judge,
and with that conclusion we agree. Whether there is invention in a new thing is
a question of fact "for the judgment of whatever tribunal has the duty of
deciding." (Lord Moulton's dictum, quoted by Terrell on Patents, 7th
edition, page 71). The learned author adds:—
It would seem to be necessary to fix upon some definition of
invention, but this has never been done, and in my opinion no definition of
invention can be found which is of the slightest assistance to anyone in a case
of difficulty … When you approach the dividing line it is so impossible to get
a test that it becomes, more or less, a matter of personal opinion. Some of the
elements of a combination are altered so as to improve, but not essentially
change its working. Is that a new invention? If it is only the substitution of
mechanical elements which are notoriously the equivalents of the old elements
the law is clear, but in any other case it is treated as being a question of
fact for the judgment of whatever tribunal has the duty of deciding.
[Page 152]
As Tomlin J. (as he then was) said in Samuel Parkes &
Co. v. Cocker Bros. :
Nobody, however, has told me, and I do not suppose anybody
ever will tell me, what is the
precise characteristic or quality the presence of which distinguishes invention
from a workshop improvement. Day is day, and night, but who shall tell where
day ends or night begins? … The truth is that, when once it had been found, as
I find here, that the problem had waited solution for many years, and that the
device is in fact novel and superior to what had gone before, and has been
widely used, and used in preference to alternative devices, it is, I think,
practically impossible to say that there is not present that scintilla of
invention necessary to support the Patent.
In British Westinghouse Electric and Manufacturing Co.
Ltd. v. Braulik , Fletcher Moulton L.J. remarked that "ex
post facto analysis of invention is unfair to the inventors, and in my
opinion it is not countenanced by English Patent Law."
This was approved by the House of Lords in Non-Drip
Measure Company, Limited v. Stranger's Limited et al ,
where Lord Russell of Killowen remarked:
Nothing is easier than to say, after the event, that the
thing was obvious and involved no invention;
and Lord Macmillan said (at p. 143):
It might be said ex post facto of many useful and
meritorious inventions that they are obvious. So they are, after they have been
invented.
See, also, the remarks of Fletcher Moulton L.J. in Hickton's
Patent Syndicate v. Patents and Machine Improvements Company Ld. :
To say that the conception may be meritorious and may
involve invention and may be new and original, and simply because when you have
once got the idea it is easy to carry it out, that that deprives it of the
title of being a new invention according to our patent law, is, I think, an
extremely dangerous principle and justified neither by reason, nor authority.
We have it, therefore, in the present case that there was a
problem to be solved and a want to be supplied. The 2-point Numont mounting
made a substantial contribution to the solution of the problem. The commercial
success of the invention, if not conclusive, is, at least in this case, an
element to establish the clear recognition that the patent in suit met the
problem and the want; that the advantages therein involved an inventive step,
which
[Page 153]
Uhlemann was first to take, and that the appellant's action
for a declaration of invalidity was rightly dismissed by the judgment a quo.
The appeal should therefore be dismissed, with costs.
Locke J.
(dissenting):—This is an appeal from a judgment delivered in the Exchequer
Court dismissing a claim advanced in His
Majesty's name for a declaration that Canadian Patent No. 381,380 issued to one
Wm. R. Uhlemann on May 16, 1939, and assigned by the latter to the respondent,
be cancelled and set aside. The information filed claimed the same relief in
respect of Canadian Patent No. 392,499 and an industrial design registration,
but as to these the defence filed was withdrawn and the issues thus restricted
to the letters patent first above mentioned.
Of the grounds for the relief claimed disclosed in the
amended Particulars of Objection, those principally relied upon were: firstly,
that there was no invention, having regard to the common knowledge in the art,
and secondly, that the alleged inventions were not new and were known and used
by others before the date when the said inventions were alleged to have been
made. The patent in question was issued in Canada on the application of
Uhlemann on May 16, 1939. In advance of this, however, he had applied on April
22, 1937, for a United States patent and, pursuant to such application, letters
patent had been issued relating to the same matter under date of February 22,
1938. In the present proceedings the date of the filing of the application for
the American patent is claimed as the date of the invention.
The invention claimed relates to rimless eye-glasses and by
the specification it is stated that specifically it relates to a mounting means
for the temple. The objects of the invention are stated to be:—
(a) to provide an improved temple mounting which
prevents strain from being transmitted to the lenses;
(b) to provide a temple mounting that requires a
minimum amount of labour in attaching the mounting;
[Page 154]
(c) to provide an improved temple mounting which
will be inconspicuous in appearance; and
(d) to provide an improved temple mounting which
will result in a saving of material.
and this is followed by a further statement that other
objects and advantages of the invention will be apparent from the description
and the claims.
The construction in question, to adopt the language of the
specification, comprises:
a pair of channel-like straps having a lens-edge engaging
portion with ears extending therefrom for embracing the edges and adjacent
surface portions of the lenses, a bridge secured to these straps, a pair of
temple-supporting wires having an anchorage portion thereof also secured to the
straps, in general extending along, adjacent, and in the rear of the edges of
the lenses, and a pair of temples pivotally connected with the ends of the
wires, the axes of said hinge connections being substantially vertical, whereby
the temples will fold compactly.
This description does not include any reference to nose
guards, an essential part of any such construction, but later in the
specification it is said that "the usual nose guards are secured to the
straps in any suitable manner."
The straps so called are in general small "U"
shaped pieces of metal designed to receive the edge of the lens, the ears or
sides engaging the surface of the lens and the inner bottom portion or shoe
bearing against the edge. The lens is secured in this position either by means
of a screw passing through both ears of the strap or by cement, or by so
constructing the inner surface of the ears as to cause them to engage slots cut
into the side or the edge of the lens for that purpose. Samples of rimless spectacles
said to have been made in accordance with the specification of the patent were
filed at the trial. It is not apparent from the exhibits filed as to the exact
manner in which the mountings are put together. In the exhibit marked 31 (but
which, it would appear from the evidence, was exhibit 30) the inner extremity
of the so-called temple-supporting wires, the metal portion which carries the
nose guards, the outer side of one ear of the strap and the bridge appear to be
soldered together. In this exhibit the metal portion carrying the nose guards
does not appear to be an integral part of the bridge, but in Exhibit H,
produced by Uhlemann and also said to be made in accordance with the
specification, the bridge and the metal portion supporting the nose
[Page 155]
guards appear to be one unit, to which the rear of the shoe
of the strap and the temple-supporting wires are soldered. It is, in my
opinion, unfortunate, in view of the nature of the issues, that the witness
Uhlemann did not disclose the manner in which exhibits 30 and 31 were
assembled, these apparently being the mountings which are commonly in use. The
witness Elliott, an optician and optometrist of long experience, called on
behalf of the plaintiff, said in reference to Exhibit 30 (incorrectly referred
to as Exhibit 31 in the evidence) that it looked as if the temple arm was
soldered to the base of the "U" from which the straps project and to
the nose guard arm and the base of the bridge. In view of the great importance
said to attach to the fact that the temple arm was attached to the "lens
engaging portion of the strap", it would have been helpful if Uhlemann,
who presumably knew, had dealt with the matter.
Further statements in the specification illustrated by
reference to the drawings filed with it were to the effect that the
temple-supporting wires were secured to the "lens-edge engaging portion of
the lens-supporting strap" in the construction shown in two of the
drawings, and again that it was secured, as shown in another of the figures
"in the plane of the lens-edge engaging portion thereof as by welding,
soldering, or the like." Again referring to two of the illustrative
figures it is said that the straps are secured in any suitable manner as by
soldering or the like to the wire adjacent the junction of the bridge and the
temple-supporting wire, and that:
The temple-supporting wires extend from the portions secured
to the lens–engaging portions rearwardly and angularly to follow the contour of
the lens adjacent to and along the rear surface thereof.
which may perhaps be intended to indicate a direct
physical connection between the temple-supporting wire and a portion of the
strap. These various descriptions of the nature of the mounting conclude with
the following paragraph:
It will be seen that in all of the forms disclosed the
temple-supporting wire follows the contour of the edge of the lens so as not to
interfere with the vision and so as to be inconspicuous. It will also be noted
that in all of the forms the temple-supporting wire is supported by the
nose-engaging means.
[Page 156]
Before discussing the claims it should be noted that the
practice of affixing the lenses in rimless spectacles by the use of straps of
the nature referred to by Uhlemann in his specification was not new. In early
types of such spectacles the inner edges of the lenses were secured by these
straps which were soldered to the bridge or to the nose guards, while the
spectacles were held in place by wires extending rearward which were attached
by similar straps to the upper and outer edges of the lens and which engaged
the ears of the wearer. The types of spectacles theretofore commonly in use
employed frames in which the lenses were held and the elimination of such
frames obviously produced problems in breakage, which was much less with the
older type of framed spectacles. An examination of these early types of rimless
glasses employing the above described method of holding them in place upon the
nose makes it perfectly apparent that outward pressure upon the wires which
engaged the ears would endanger the lens at the point where the straps were
attached and cause breakage. Since of necessity a firm bridge and nose pieces
of the nature referred to in Uhlemann's specification as the
"nose-engaging means" were necessary component parts of any rimless
spectacles, these obviously afforded the only point where the temple-supporting
wires could be attached if direct strain upon the lenses, by reason of the
movement of such wires and their temple-bows or extensions which engaged the
ears of the wearer, was to be avoided. While to attach the temple-supporting
wire directly to the inner side of the lens in the immediate proximity of the
strap attached to the bridge, or the metal of the nose-engaging portion, might
reduce the danger of breakage from pressure from the temple wires, some risk
would undoubtedly remain.
Uhlemann made six claims for his invention, these being in
the following terms:
1. A spectacle construction comprising a pair of lenses, a
pair of channel-like straps embracing the edges of said lenses, respectively,
at the nasal edge of the lenses, each of said straps including a lens-edge
engaging portion, a bridge member for connecting said straps, and a pair of
temple– supporting wire members each having an anchorage portion extending
therefrom and being secured directly to the lens-edge engaging portions of the
strap and extending rearwardly and angularly therefrom and following the
contour of the lens adjacent to and along the rear surface thereof for
connection with the temple of the spectacle.
[Page 157]
2. A spectacle construction comprising a pair of lenses, a
pair of channel-like straps embracing the edges of said lenses, respectively,
at the nasal edge of the lenses, each of said straps including a lens-edge engaging
portion, a bridge member for connecting said straps, and a pair of temple–
supporting wire members each having an anchorage portion extending therefrom
and being secured directly to the lens-edge engaging portions of the strap
intermediate the ends thereof and extending rearwardly and angularly therefrom
and following the contour of the lens adjacent to and along the rear surface
thereof for connection with the temple of the spectacle.
3. A spectacle construction comprising a pair of lenses, a
pair of channel-like straps embracing the edges of said lenses, respectively at
the nasal edge of the lenses, each of said straps including a lens-edge
engaging portion, a wire bridge member connecting said straps, and a pair of
temple-supporting wire members each being formed integrally with said wire
bridge member and being secured to the lens-edge engaging portions of the strap
and extending rearwardly and angularly therefrom to follow the contour of the
lens adjacent to and along the rear surface thereof for connection with the
temple of the spectacle.
4. A spectacle construction comprising a pair of lenses, a
pair of channel–like straps embracing the edges of said lenses, respectively,
at the nasal edge of the lenses, each of said straps having a lens-edge engaging
portion, a bridge member for connecting said straps, and a pair of
temple-supporting wire members each having an anchorage portion extending
therefrom parallel to the lens-edge engaging portion of said channel-like
straps and being secured directly to said straps, there being offsets extending
from said portions in the direction of the lenses, said temple–supporting wire
members extending from said offset portions and following the contour of the
lens adjacent to and along the rear surface thereof for connection with the
temple of the spectacle.
5. A spectacle construction comprising a pair of lenses, a
pair of channel-like straps embracing the edges of said lenses, respectively,
at the nasal edge of the lenses, each of said straps including a lens-edge
engaging portion, a bridge member for connecting said straps, and a pair of
temple-supporting wire members each being secured to the lens-edge engaging
portions of the strap and extending rearwardly and angularly therefrom and
following the contour of the lens adjacent to and along the rear surface
thereof for a substantial distance, the free end portions of said
temple-supporting wire having a rearwardly extending portion terminating in a
hinge for pivotally receiving the temple of the spectacle.
6. A spectacle construction comprising a pair of lenses, a
pair of channel-like straps embracing the edges of said lenses, respectively,
at the nasal edges of the lenses, each of said straps including a lens–edge
engaging portion, a bridge member for connecting said straps, and a pair of
temple–supporting wire members each having an anchorage portion extending
therefrom and being secured to said straps in the plane of the lens-edge
engaging portions thereof, said temple-supporting wire member extending
therefrom to follow the contour of the lens adjacent to and along the rear
surface thereof for connection with the temples of the spectacles.
In each of the claims the shoe of the strap is referred to
as "the lens-edge engaging portion." The portion of the shoe which engaged
the edge of the lens was of necessity
[Page 158]
the inner portion forming the base of the "U".
Obviously the expression could not refer to this portion of it. Presumably what
was intended to be indicated was the exterior of the shoe and in claims 1, 2
and 3 the construction described involves an anchorage portion extending from
the temple-supporting wire being secured directly to the lens-edge engaging
portion of the strap. Claim 4 describes the temple-supporting wire members as
each having an anchorage portion "extending therefrom parallel to the
lens–edge engaging portion of said channel–like strap and being secured
directly to said straps," but does not specify whether the attachment
shall be to the shoe or to the ear of the strap. In Claim 5 there is no
reference to an anchorage portion of the temple–supporting wire, the connection
being described as directly between the temple–supporting wires and the shoe of
the strap. In Claim 6 the temple–supporting wire members are described as each
having an anchorage portion "secured to said straps in the plane of the
lens–edge engaging portions thereof", which apparently contemplates that
the attachment may be to one or other of the ears of the strap.
Reading the claims together with the specification that:
in all of the forms the temple-supporting wire is supported
by the nose– engaging means.
the inventor sought by attaching the temple–supporting
wire at some point on the strap, which strap in turn was connected by solder or
otherwise to the metal of the nose– engaging means, to transfer the pressure to
this portion of the structure and avoid any pressure on the lens itself.
The idea of a construction in which the pressure from the
temple–supporting wires was exerted upon the bridge rather than upon any part
of the lens was far from new. On July 14, 1908, Joseph Savoie applied for a
United States patent, for improvements in the class of spectacles having
frameless or rimless lenses described in the third of his claims as being:
the combination with a pair of frameless lenses and a
central nose-piece having said lenses mounted therein, of a pair of suitably
bent resilient holding wires rigidly secured to the rear portion of the
nose-piece and extending outwardly therefrom in a plane substantially parallel
with that of the lenses, and means connected with the free ends of said holding
wires adapted when in use to engage the head of the wearer.
[Page 159]
A patent was issued for the invention on March 16, 1909.
On February 23, 1909, Savoie applied for a Canadian patent
for a structure of almost identical form, except that the wires which connected
with the temple-supporting wires and extended rearward to engage the ears of
the wearer were of more rigid construction than those described in the American
application. Spectacles said to have been constructed in accordance with the
specification of Savoie's American patent were filed as exhibit A at the trial
and show the temple-supporting wires as being rigidly affixed to the bridge in
a manner rendering it impossible that any pressure from the temple wires could
be transmitted to the lenses. The latter were secured in straps similar to
those employed by Uhlemann and which were either an integral part of the bridge
or soldered to portions of the bridge projected forward to the point where the
temple-supporting wires were connected.
By an application for a United States patent filed February
19, 1910, Savoie applied for a patent for an improvement in frameless
spectacles, the object of which was to produce an improved temple holder
constructed so as to be:
easily, quickly and firmly attached or fixed to the usual or
ordinary nose-piece, and also capable of being as readily disconnected from it.
In the explanatory part of the specification the following
appears:
By means of my improvement herewith frameless spectacles as
usually constructed, that is, spectacles having the temple-bows jointed to the
lenses, may be quickly and cheaply converted into spectacles having, when in
use, the general appearance of frameless eye-glasses. That is to say, the
temple-bow members will then be jointed to bent wire holders having enlarged
head portions superimposed upon and conforming to the back faces of the rear
straps or ears of the well-known nose-pieces as devised for frameless spectacles,
all the members being secured together by means of the usual fastening screw.
Uhlemann's "temple-supporting wire member" was
described by Savoie as a "temple-bow holder" and the first of his
claims which were allowed describes the invention thus:
The improved one-piece temple-bow holder member herein
described, comprising a curved shank or body part having one end constructed
for a co-operative engagement with a temple-bow and having the other or head
end portion of the member elongated and extending inward toward the other end
of the holder, its wall being quite thin and resilient and concave-convex in
form cross-sectionally and adapted when in use to bear against and cover the
outer or convex face of an elongated aperture ear or strap of a nose-piece, the
said head part having a hole therethrough registering with that of the ear for
receiving the usual holding screw.
[Page 160]
The drawings attached to the application show the temple-bow
holder member fitted over the exterior of the ear of a strap similar to that
used by Uhlemann and secured by the screw which secured the lenses in the
strap. There was no contact in this construction between the temple-bow holder
member and the lens. The strap appears to have been either part of the bridge
or attached to it, as in the case of Uhlemann, by solder. It will be observed
that this connection, like that described in Claim 6 of Uhlemann's patent, was
"in the plane of the lens edge engaging portion" of the strap. The
method of attachment to be employed in the structure described in Claim 6 of
Uhlemann is not, however, specified.
On October 11, 1909, Frederick A. Stevens applied for a
United States patent for improvements in frameless spectacles, a patent issuing
pursuant to the application of March 29, 1910. Stevens' structure employed a
wire member similar to Savoie's temple bow-holder which followed generally the
lines of the lower edges of the lens rather than the upper, as in the case of
Savoie's design. The nose-piece was provided at each end with straps into which
the lenses were fitted and the connection between the wire members, according
to the specification, was as follows:
In the present invention the bent connection or member (the
temple-bow holder) is constructed and adapted to be readily positioned with
respect to the lens and nose-piece while at the same time being secured to the
lens and practically interlocking with the nose-piece, thereby, in co-operation
with the lens-screw, serving to maintain the several parts in position.
and further:
The inner end portions of said member are enlarged so as to
provide a substantially flat thin head, adapted in use to register with the
integral ear or ears of the nose-piece and also to lay flatwise snugly against
the rear side of the lens. In Figs. 1 to 4 the said head portion is represented
as having an open transverse notch or recess formed between the upper and lower
lugs shaped to receive therein the adjacent shank part of the nose-piece.
In Stevens' construction, while apparently the head of the
temple-supporting wire or temple-bow holder was in direct contact with the side
of the lens at the point of attachment, it also was designed to engage the
shank part of the nose-piece. As in the case of Savoie's design, a screw was
employed which passed through the ears of the strap and the head of the
supporting wire and the lens, to secure the latter in its place.
[Page 161]
Evidence as to other patents obtained after those of Savoie
and Stevens and in advance of that obtained by Uhlemann was given on behalf of
the Crown but, in my opinion, it is unnecessary to deal with these in detail to
dispose of the issues in the present action. Of these, the United States patent
obtained by Ferris on September 4, 1934, one of the objects of which was stated
to be the provision of a mounting adapted for use in spectacles for eliminating
strain upon the lenses, in which the temple-bows or wires which engaged the
ears of the wearer were attached at either extremity of the bridge or an
extension thereof and the lenses were secured from above in straps attached to
the bridge, and that granted to Bishop in the United States on March 26, 1936,
may be mentioned. Bishop's construction differed from that of Ferris in that,
while the temple-bows were affixed in like manner to the extremities of the
bridge or an extension of it and the lenses were similarly affixed in straps
soldered to the bridge, the nose guards were affixed to the lenses by straps
rather than to the bridge, as contemplated by Ferris.
Considering first the contention of the plaintiff that there
was no invention, having regard to the common knowledge in the art. The
Patent Act 1935, s. 2(d), defines invention as meaning:
any new and useful art, process, machine, manufacture or
composition of matter, or any new or useful improvement in any art, process,
machine, manufacture or composition of matter.
S. 26 provides that, subject to certain defined terms, a
patent may issue to an inventor of an invention which was, inter alia,
not known or used by any other person before he invented it. S. 35 requires the
applicant, by his specification, to correctly and fully describe the invention
and its operation or use as contemplated by the inventor and set forth clearly
the method of constructing the machine or manufacture in "such full, clear,
concise and exact terms as to enable any person skilled in the art or science
to which it appertains, or with which it is most closely connected, to make,
construct, compound or use it." In Natural Colour Kinematograph v. Bioschemes
Ld. , Earl Loreburn, dealing with the duty of
a patentee to state clearly and distinctly either in direct words or by clear
and distinct
[Page 162]
reference the nature and limits of what he claims, said that
if he uses language which when fairly read is avoidably obscure or ambiguous
the patent is invalid, whether the defect be due to design, or to carelessness
or to want of skill. In the present matter, the expression "lens-edge
engaging portion of the strap" used both in the specification and the
claims is, in my opinion, ambiguous in the sense of being capable of more than
one meaning, as has been pointed out above. While the objection of ambiguity is
made against both the specification and the claims, it appears to me
unnecessary to consider the point since, even if it be given the meaning
apparently adopted by the defendant as describing the rear of the shoe, the
patent cannot, in my opinion, be sustained.
The learned President of the Exchequer Court
in his judgment at the trial has found that the inventive idea lay in having a
mounting in which there was a single point connection with the lens and the
temple arms were connected at a specific place near the nasal edge of the lens,
namely, to the lens-edge engaging portion of the strap, it being of the essence
of the invention that the temple arm should be so connected. In view of the
statement in the specification that in all of the forms exhibited by the
illustrations and referred to in the specification the temple-supporting member
is to be supported by the nose-engaging means, and of the fact that the outer
portion of the case of the strap is soldered to the nose-engaging means, it is
necessary to examine with some care the evidence of the manner in which this
so-called invention has been used in practice, since the manner of its use
should lead to a sound conclusion as to what was the essence of the invention.
Four exhibits were filed at the trial and numbered 30, 31,
32 and 36 and it is common ground that these illustrated the manner in which
Uhlemann's invention was put to use. In the exhibit marked 30 the lens-edge
engaging portion of the strap, which I will continue to refer to hereafter as
the shoe, consists of a narrow piece of metal approximately three-eighths of an
inch in length, the inner portion of which engages, and is the only part that
engages, the edge of the lens. The only evidence given at the trial as to the
manner in which the mounting was assembled is that of Elliott,
[Page 163]
which is above referred to, but an examination of the
exhibit shows that there is no connection between the temple-supporting arm and
the shoe. In the case of the exhibits marked 31, 32 and 36, the shoe consists
of three small thin pieces of metal of differing lengths, the longer of which
is approximately three-eighths of an inch in length and the shorter of which
bears against and is attached to or constitutes the bottom of the "U"
shaped strap. In none of these exhibits is the temple-supporting arm attached
to the shoe. In the absence of any evidence on the point, and Uhlemann
apparently decided to give none, it is necessary to rely on what is disclosed
by an examination of the three exhibits, and in each of them the
temple-supporting arm appears to be soldered to the side of one of the straps
and at the same point to the metal of the nose-engaging means.
Uhlemann gave evidence at length at the trial and a fifth
exhibit marked "H" was introduced during his examination-in-chief and
his evidence directed mainly to it. In this exhibit the strap differed
materially from those used in the mountings theretofore produced, being
apparently of solid construction, the ears being in breadth practically double
their length and the shoe being of the same breadth as the ears. According to
Uhlemann, this type of strap was made in accordance with a patent developed by
his father some fifteen years ago and was so constructed that diagonally angled
slots within the lens engaged lugs inside the strap, creating a dove-tail
construction and this eliminated the necessity of drilling a hole in the glass.
In this exhibit the temple-supporting arm is soldered both to the side of one
ear and the rear of the shoe of the strap as well as to the metal of the
nose-engaging means, which is an integral part of the bridge. According to
Uhlemann, straps of this nature have not been sold "except through our own
distribution," and in cross-examination he said that they did not go into
general use. The spring type of straps, as used in Exhibits 31, 32 and 36, he
said, were acknowledged to be a better construction and tended to reduce
breakage.
It is, in my opinion, the only proper inference to be drawn
from the evidence that the method of attachment of the temple-supporting arm to
the so-called nose-engaging means shown in Exhibits 30, 31, 32 and 36 show the
manner in which the mounting described in the patent has been put
[Page 164]
to use. With great respect for the contrary opinion of the
learned President of the Exchequer Court, this demonstrates, in my opinion,
that the inventive idea, if there was one, lay not in attaching the
temple-supporting arm to the shoe of the strap but rather to the nose-engaging
means at the point where the strap was soldered to it, for the very purpose
described in the specification of transferring any pressure from the temples to
the nose-engaging means and the bridge.
In order to determine whether "Uhlemann's construction
was new, it is necessary to determine what was the state of the public
knowledge on April 22, 1937. Savoie had in July 1908 obtained his patent for a
form of mounting in which the temple-supporting wires were attached to a
projection from the bridge, and in 1909 had obtained a Canadian patent. In 1910
he had obtained his United States patent for the construction above described,
in which the temple-supporting wire was secured to the exterior of the strap.
In both of these mountings the pressure from the temples was conveyed to the
bridge and diverted from the lens. These patents were, in my opinion, for
combinations and, as said by Lord Moulton in Pugh v. Riley Cycle Co.
, the publication of a proper and sufficient
specification of an invention of a combination is a publication of each
subordinate integer of that combination. From the moment of its publication,
each subordinate integer therefore passes into the domain of public knowledge
as fully and as certainly as does the whole combination of which they are
parts. Uhlemann by his specification said that his construction provided a pair
of temple-supporting wires having an anchorage portion thereof secured to the
straps, and that in the construction shown in his Figures 1 to 3 the
supporting-wire was secured to the lens-edge engaging portion of the lens
supporting strap, while in Figure 6 it was secured to the rear edge of the
strap in the plane of the lens-edge engaging portion. It is only in Claims 1,
2, 3 and 5 that the temple-supporting arm is stated to be attached to the shoe
of the strap. Claim 4 refers to the anchorage portion of the temple-supporting
wire as being secured directly to the straps, while Claim 6 adopts the language
of the specification in saying that the
[Page 165]
anchorage portion is "secured to said straps in the
plane of the lens-edge engaging portion thereof." The manner of attachment
employed in actual use, as shown by the exhibits, is that described in Claim 4
and appears to me to fall within the language of the specification. How
soldering the temple-supporting wire to the shoe, which was in turn soldered to
the metal of the nose-engaging means, could be more effective in diverting
pressure from the lens than soldering it to the side of the ear of the strap
and to the nose-engaging means is not explained. The manner in which the
mounting was put to use and continues to be used shows conclusively, in my
opinion, what was the essence of the so-called invention. The learned trial
judge has found that there was no novelty in any of the parts, all of which
were well-known prior to 1930, and that the desirability of having a single
point connection with the lens and the temple arms connected somewhere near the
nasal edge of the lens was not new. It may also be said that the idea of
attaching the temple-supporting wires in a manner which would transmit the
pressure from the temple-bows to the bridge was not new, having been disclosed
in both of Savoie's patents.
The change made by Uhlemann from Savoie's construction
disclosed in the 1910 patent was to secure his temple-bow holder to the strap
by solder rather than to the ear of the strap by a screw. According to the
witness Uhlemann, while he had not constructed a mounting according to Savoie's
1910 patent, in use there would have been difficulty caused by the strain on
the temple-bow holder loosening the screw. Was it invention to guard against
any such movement by attaching the temple-bow holder to the side of the strap
in this manner to prevent this? In Pope Appliance Corporation v. Spanish
River Pulp and Paper Mills , Viscount Dunedin said that what
constituted invention was finding out something which has not been found out by
other people. It was Savoie's idea that the strain from the temples should be
transmitted to the bridge by attaching his temple-bow holder either in the
manner disclosed by his 1908 or 1910 patent. The strap to one ear to which
Savoie secured his temple-bow holder in his 1910 patent was either a part of,
or soldered to, the bridge, as
[Page 166]
was that of Uhlemann. Both constructions transferred the
pressure from the temples to the bridge. Did the slight change made involve the
exercise of the inventive faculties, or can it be said that it showed a degree
of ingenuity which must have been the result of thought and experiment (Crosley
Radio Corporation v. Canadian General Electric Company ,
Rinfret J. at 556). In my opinion, Uhlemann's construction was merely an
application of the ideas disclosed by Savoie "which anybody familiar with
and skilled in the art might be expected to arrive at without the exercise of
invention in the sense of the patent law", to adopt the language of Sir
Lyman Duff C.J. in Vanity Fair Silk Mills v. Commissioner of Patents
.
Much was made at the trial of the Success in the market of
mountings made in accordance with Uhlemann's patent. That, of course, is a
matter to be taken into consideration but, as pointed out by Lord Herschell in Longbottom
v. Shaw , it is obvious that it cannot be
regarded as in any sense conclusive on the question we are here considering.
That mountings made in accordance with Uhlemann's patent were very extensively
sold is undoubted but this is not to say that the advance made on previous
knowledge has been sufficient to constitute invention. In my humble opinion,
the contrary is established by the evidence in this case.
I would allow the appeal and direct that judgment be entered
for the plaintiff in the action for the relief claimed in the information, with
costs in both courts.
Appeal dismissed with costs.
Solicitors for the appellant: Gowling, MacTavish,
Watt, Osborne & Henderson.
Solicitors for the respondent: Smart & Biggar.
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