IN THE MATTER OF AN APPLICATION BY ARTHUR ALLTREE FOR A PATENT

146 No. 4J REPORTS OJ!' PATENT,DESIGN, AND TRADE ~fARK CASES [Vol. XLI. Hole v. Coombes. Sir Duncan Ke1'ly I{.C. : My friend reminds. me that the Certificate should be as to all Claims on each of the Patents. '.DIE 1fABTEH OF 'rHE Ror.r.s : Yes, a Certificate that the validity came. in question in the case of all the Claims of Patents Band C. Sir Dimcan .Kerly K C.: And a Certificate for Particulars of Breaches. 5 THE MAf,TER OF THE R,OLLS: Yes. Before THE SOLICITOR-GENERAL. November su, 1923. IN THE MATTER OF AN ApPLICATION BY ARTHUR ALLTREE FOR A PATENT. Application for grant of Patent.-Opposition on qround (b) of Section 11 (1) 10 of th» Patents and Designs A.cts, 1907 and 1919.-Decision requirinq Lneertion. of a specific refel·ence.-Appea.l io Law Dlli-cer.-Decision vaned by dire'cting deletion oj matter from the Spec£fi.cation.-Each side to pay oum costs of Appeal, but coste qiuen. at hearing before As~istant-ComptroUer to stand. An Application No. 179,004 (5939 of 1921) for a Patent for an invention of 15 " Change-speed gearing for motor cycles and the like " was filed by ~4rthur Alliree on the 22nd of February, 1921, and the Complete Specification was accepted on the 4th of May, 1922. The invention comprised, ini.er aliar, an engine kick-starter combined with the lay shaft or counter shaft of the changospeed gear. Claim 1 was a claim for the construction of gear, and Claim 2 20 was as follows:- 147 Vol; XLI.] REPORTS OF PATENT, DESIGN. AND TRADE MARK CASES [No.4 In the Matter of an Application ['y Arthur AUtree for a Paicni, 5 10 1~ 20 • 25 30 35 40 '5 " 2. In change speed gearing as claimed in Claim 1, the combination with ., the lay shait of an engine kick starter ". Opposition to the grant of a Patent was entered by Sir Erncsi Jardine. Baronet, on the ground that the invention described. and claimed had in part O~8n published in the Specification of prior Letters Patent, No. 12,205 of Ifl!;'). At the hearing before the As.~ista.nt-Colllptroller, acting for the Comptruller· General, the Applicant did not, appear, and, after hearing the Agent for the Opponent and considering evidence submitted by the Applicant, 11 decision was given requiring amendment of HlP Specification by the insertion of 11 specific reference to the Opponent's Patent. Ttle A~plicJlll.LQ-PM.al~d, and the Notice of Appeal was accompanied b) a "tatemen suggesting amendments of the Specification as alternatives to the insertion of a specific reference. The Appeal was heard before the Solicitor-General on the 8th of November, 1923. I, [l uni cr Gray K.C. (instructed by .T. G. 11'ilBoII <f: Co.) appeared a,.:, Counsel for the Appellant (Applicant) and Carrol Romer (instructed by H. C. Sheldon) for the Respondent (Opponent), Hunter Ora-y, K.C., made application to refer to a prior Specification No. 13,574 of HH3, and this was allowed. Homer referred to 'I'hornborouqh. If; Wilks' Patent, (1800) 13 RP.C. 115. Sir '1'. IF. If. lnsl:ip S.G.-This case has followed a rather unfortunate course from m.y point of view ; because I have not the advantage of It decision of the As.~istant Comptroller upon the contentions that have been placed before me by Mr. Hunter Gray on behalf of the Appellant. The Appellant, for reasons of which I am not aware, der-ided to present his case by a written statement rather than by instructing a patent. agent or counsel to put forward the facts which might have been considered by the Assistant Com piroller. An application was made to me to admit further evidence. I should have been reluctant in a~ c~~~_sl1Ut out anything which was necessary to enable me to come to What T may thinK is the right. decision, and in this particular case I thought that it was proper to admit the further evidence, because it appears tIrat-TIli-S-pecHicatiol1 which Mr.' Hunter Gray desired to bring to my attention was known to the Respondent. The ground upon which the Opponent asked for a specific reference and uJlon whic-h the Assistant Comptroller decided the case is not the ground upon which it is a.~kt,c1 for before me. The grounrl upon which the Opponent presented his case originally was that Sir Ernest Jardine's Patent was a master patent, or something very like it, in the sense that his Specification was the first one in which the gear wheels had been used to fulfil two functions. That contention was not accepted by the Asnieiant. Com piroller, and with respect to this I am clearly of opinion that he took the right view; but in his decision he went on to say that the arrangement of the starting lever on the end of, or eoaxial with, the oountershaft., thereby dispensing with intermediate gearing between the lever and this shaft, is a feature that, is not found in any of the prior constructions to which his attention had been directed, and it is a feature of the arrangement described and claimed in the Applicant's Specification. On that ground, ~hich is a very int~lligible one. the Assistant Comptroller came to the conclusion that the Applicant should be obliged to insert a specific reference to the Opponent's Specification No. 12,295 of 1915. I have looked at the Specification of the Birmingham Small Arms 148 No.4] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. XLI. In the Mutter of an Application by Arthur Alltree for a Patent. Co., No. 13,574 of 1913, which was not before the Assistant Comptroller, and has been brought to my attention by Mr. Hunter Gray, not in order to show that Jardine's Patent is a bad one, but to show the state of the art at the time of the granting of Jardine's Patent; and I have come to the conclusion that there was publication in the Provisional Specification of the Birmingham Small Arms Co. 's Patent of what the Assistant Comptroller said was a distinctive feature both of the Opponent's and of the Applicant's inventions, which was not to be found in the constructions shewn in either of the prior specifications to which his attention had been directed. It appears to me that the feature of the arrangement to which the Assistant Comptroller refers, which is described and claimed in the Applicant's Specification, is not a feature that was published for the first time in Sir Ernest Jardine's Specificatlion, and, therefore, I have' come to the conclusion, that, having regard to the state of knowledge which has been revealed to me, it would not be right for a specific reference to Jardine's Specification to be inserted in the Applicant's Specification without a similar reference also to the Birmingham Small Arms Co. 's Specification. But in view of all the circumstances, and in the interest of the public who might be misled by Claim 2 of the Applicant's Specification, which would appear to give the Applicant the right to claim this construction as a distinctive feature of his invention, I think the proper course is for the Applicant to amend his Specification in the manner set out, by him in the statement which accompanied his No (...truncated)