IN THE MATTER OF AN APPLICATION FOR A PATENT BY W. R.

216 No. 6] [Vol. XLI. REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES In the Matter of Carbonit AktiengeselLschaft. the parties should be· treated as having made themselves liable to a proper The particular Order made by the learned Judge is not Order for costs. impugned, and, therefore, I think the result is that the appeal should be dismissed. It was ordered that a. sum of SOOL. in Court a.nd directed by the Order of 5 the Court below to be paid out to the Disposals Board, a.nd also a. sum paid into Court as security far the a.ppeal, should be paid out to the Treasury Solicitor. Before THE SoLICITOR-GENERAL. February 14th, 1924. IN THE MATTER OF AN APPLICATION FOR A PATENT BY W. R. 10 AppUcation for Grant of Patent.-Manner of new manufa.cture.-Application refused.-Patents and Designs Acts, 1007-1919, Section 93. On the 8th of June, 1922, an application was made for protection of oo aJ.leged invention entitled '' Educational Appliance,'' relatillg to appliances £or ~ving in~J!~c~~.~".P.~:y~ical. exercises, a.nd campl"i;sing illustra.t~ charts showmg. ~he e~erCises, .. and gramophone sound records WJ.th corresponding vooal ana musical se!ections. Objection was raised by the Eza.miner that the inventa.on{lid not constitute a manner of new manufacture within the meaning of SecHon 93 of the Patents and Designs Acts, 1907 and 1919. The Assistant ComptrolLer of Patents (acting for the ComptrolLer-General) refused the Application. The Applicant appeaJed to the Law Officer. F. W. Golby appeared as Agent for the Applicant, and the Assistant-ComptrolLer of Patents a.ppeared in support of his decision. In addition to the cases referred to in the decision of the SoLICITOR-GENERAL,. the following cases were referred to on behalf of the Applicant, namely : 0. 's Application, ((1920) 37 R.P.C., 247, at p. 248, l, 19; and Merk-Wirz's Patent, ((1923) 40 R.P.C. 270); Cooper's Application, ((1902) 19 R.P.C. 53) and Ward's Application ((1912) 29 RP.C. 79) were also mentioned. Sir HENRY SLESSER S.G.-In this· case, an ApplicaHon is made for a Patent for an educationaJ appliance, the substance of which is, first, a gramophone --- 15 20 25 30 217 Vol. XLI.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [N'o. 6 In the Matter of an Applicati on for a Patent by W. R. re.cord which will give hy sound an indicatio n as to the' manner in which c]!J~Al. physi~ .exercises are to . be performed, . pos_~i:Qly ~cp!!J...P~_ied by muSlc appro~nate to such ~x_er~1!!.~~~ and. sec~I!~'llt .._lt-. ~h~~. sh~w1i),g tlie vanous aflt,ltu es, whicli may 5e,1¥en up 1>y the. person who. Wishes to e:x:elrcise 5 hi!Iiiself with the assistanc e of the gramophone. It is clear to my mind that. the gramophone record by itself would not be proper subject"m atter for a pa.tent. There has recently been before my prede.cessor, Sir Thomas Inskip, the case of the B.'s Applicati on for a Patent, ((1923) 40 R.P.O., page 461) which was. 10 an application fotr a Patent for '' A single-sided gramophone disc record provided " on the reverse side to that upon which a piece of music is recorded for " reproduction, with a spoken record in explanat ion or description of the music '' or the work ITQIIIl which it is taken, or af particula rs of interest in connection. "therewi th." That is to say, the suggested invention contempla.ted the pro15 duction by a gramophone of a piece of music preceded orr followed by a description given verbally through the gramophone of the subjec~matter of the. music. That A!pplication was refused by the then Solicitor-General. In subst,ance, he applied the decision in W.'s Applicati on, ((1914) 31 R.P.C., .page 141) " that mere '' systems, more convenient methods of arranging well known objects so that 20 " you may have them handy for reference arl' not matters within section 93," and he applied the doctrine laid down with reg~d to written matter in W's Application. to oral utterance s produood by a gramophone. In my opinion, it is not possible to distmguish the description of a musical piece which the gramophone is just about to render, and a description of exercises which shall 25 bEl! used in connection with the music produced by the gramophone. Then there is connecte d with the user of such record a chart. The chart admitted ly by itself ie. a mere written or drawn de.scription of what the exerciser should do. It is quite clear from many authoriti es that a mere artrangement of words on discs is not in itself an invention within Section 93. I understa nd it es. cO to be· conceded by the Applicant that ne>ither of these t·wo things by themselv then But stands. now law the as would properly form tlie subject of a patent, n, it is urged that the. C:Qill2,Q.i.Q.l~Ai.on of _th,£l§\:B Jwo_ :matters., :\i.h_e J!?0..9t£!.. Jl.ttd. th....e..desig wTll by virtue of that combination-fall within Section 93. I am of opinion, that there is in fact no combination here at all, much less a: patentab le combi]J.ation. 35 ThEire is at mo>St: a.-mere-collocation 'oi two matters., .the record and the chart, within the same room, azicf T-tlii:i::ili:~lnan·irwoUld be a misuse of words to describe the me~ ooll~gation.or sirnl.lltane()us vse~ Q\L~9 in~~r;t.y:p.Jillts as a combination as that w'Ord IS properly to be understood. That being s.o, I cannot see how the me.re joint user at the same .t.ime of t.wo instrume nts, neither of which is 40 in it,sel£ a. proper subject for a patent, can be brought within the principle governing the grant of patents for combinations. Here there is nothing more, as it s.eems to me., than a gramophone reoord on the one hand and a chart· on ·the other hand which ma~ be used together, or which possibly will be used toge.ther. For these reasons I am of opinion that the Assistant -Comptro ller was right in 45 re.fu~ to aooept the Applicati.on, a.nd the appeal will be dismissed.  (...truncated)