IN THE MATTER OF APPLICATIONS BY J. R. QUAIN AND BY THE QUAIN ELECTRIC COMPANY LIMITED AND J. R. SPINK FOR PATENTS

46.2 No. 15.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. XL. In the Matter of an Application. for a Paient by S. ment or adoption of a plan or of a, system which cannot" properly speaking, be 'said to be a new manufacture, then it is not a, manner of now manufacture 5 -':within Section 9'3 of the Act. In this case it appears to me that the placing on the reverse side of the disc .which contains in the middle a, printed label and on the circumference a record 'of spoken words, is a. mere system, or plan, or selection of what, will be played. It might be that, the spoken words would be mingled with the musical record, or 10 that the printed label would occupy a, greater space on one disc or a smaller space .on the other. I cannot think that any such .arrnngement constitutes a manner of new manufacture within the meaning of Seotion 9 I do not, base my decision upon the mere fuct that, double-sided discs had been familiar in this. industry before this Specification. I base my conclusion upon the broad ground that, the 15 ~lere selection of words on records or labels to be placed on the back or on any portion of the disc is not, a manner of new manufacture, and it comes within what Sir StanJey Buckm aeter has described in the case of W.' s Applicciion, reported in 31 R,.P.C. at page 141. Sir Stanley Buclem.aster said (page 142, line 52): " I take the view that, this. case is. within those which have decided ~O " that mere systems, more convenient, methods of arranging well-known objects, " so that, you may have them handy for reference, are not matters within " Section 93 ". In may be that, the prior words of that sentence are not all applicable to the facts of this case, but in substance the rule is applicable to this case, because this is a mere system or a, mere method of arranging words 25 -or objects upon the discs, and that I think, is not, a manner of new manufacture within Section 93. 13. Before THE SOLICITOR-GENERAL. April 20t,h and June 7th, 1928. IN THE l\1ATTER OF .itPPLICATIONS BY J. R,. QUAIN AND BY THE QUAIN ELECTRIC COMPANY LIMITED AND J. R. SpINK FOR PATENTS. 30 Applictiiion« [or grant of Patents.-Oross opposi"tions.-(}rollnds (a), (bb) -aaui (d) of Section 11 (1) of the Paieni« and Designs Acts, 1907 and 1919.Patent on Qllain,' s Application directed to be sealed, and Pa,tent on the Qllain Electric 0011tpany Limited and Spink's Applica,tion refused.-Appeal to Law 35 Officer.-No disconformity between Provisional and Com-plete Specifications..Appeal disntissed unih oub costs. . t,ha,t it is a, manner of new manufacture within the meaning of Section 93 of the .Patents Act, I think the words. " manner of n.ew manufacture " must be read .as a whole, and if the subject-matter of the invention is merely the re-arrange- 463 Yo!. XL.,] REPORTS OF PATENT, DESIGN, AND TRADE 1\fARK CASES [No. 15~ In the Matter of Applications by J. R. Quain and by ,the Qua,in, ELectric Oompany Limited and J. R. Spink for Patents . 120, .An AppIication, No. 10,810 of 1915, f~,r' at Patent for an invention of " Improvement'S relating to cigar lighters and bhe like" was filed by John Robert Quain on the 26th of July, 1915, and was accompanied by a Provisional Specification, On the 31st of December, 1919, an Application, No. ,'5 160,582, for a, Patent, for an invention of " Improvements relating to electric " cigar lighters and similar devices" was filed by The Quain Electric Oompan,y Limited and J oh.n. Ronald Spink and was also accompanied by a Provisional Specification. 'I'he Complete Spocification of Application No. 160,582 was filed on the Ist of November, 19 and that of Application No. 10,8100£ 1915', 10 under Rule 3 (c) of the Patents, etc., Temporary Rules, 1914, on the 10th of J'anuary, 1921. Opposition to a grant of a Patent on Application No. 160,582 was ,entered by John Robert Quain under Section 11 (1) (a) (bb) of the Patentsand Designs Acts, 1907 and 1919 on the grounds:15 "(1) that the, Applicants obtained the invention from the Opponent. " (2) that the invention claimed is claimed in the Complete Specification '" of Opponents' Application No. 10,810 of 1915, the Patent on which, if " granted, will be. of prior date to that on the Applicants ,A.pplica,tion." The grant of a Patent on Application No. 10,810 of 1915 was opposed by 20 John Honold Spink under Section 11 (1) (a) (d) of the Patents and Designs Acts, 1907 and 1919 on the grounds.:" (1) that the. Applicant obtained the invention from the Opponent. " (2) that the Complete Specification describes or claims an invention other "than that, described in the Provisional Specification and that such other '25 "invention forms the subject of Application No. 160,582 made by the " Opponent in the interval between the leaving of the Provisional Specification " and the leaving of the Complete Specification." The Assistant Com-ptroller oj Patents, acting for the, Com.piroller-General. held that, as regards Application No. 10,810 of 1915, there was no disconformity ,30 between the Provisiona,l and Complete Specifications, and, after examining a number of witnesses, including the parties themselves, he came, to the conclusion that J. R. Quain and J. R. Spink had arrived at tho same result, independently. He therefore decided to seal a Patent upon Qua.in's Application No. 10,810 of 1915" and a,s, a, consequence. held that the second ground of objection to 35 Spink's Application No. 160,582 was good, namely, bhaf his invention had been claimed in the Complete Specification of Quain's Application, the, Patent on which would be of prior date to the date of Bpink'« Application. He, therefore, refused to grant. a, P atenf on Application No. 160,582. J. R. Spink appealed in both cases, and the appeals were heard before the 40 SOIJICITOR-GERERAL on April 20t,h, 1923. Carrol Homer (instructed by Hans &; Danielsson) appeared as Counsel for J. R. Spink and R. Moritz (instructed by Edward Evans &;, 00.) as Counsel for J. R. Quai-n. Judgment was reserved and was given on the 7tlh of June.. ·45 SIR T. W. H. INSKIP, S.-G.-These are appeals by J, R. SpinI~ from the decisions of the Aesieiani. Conipiroller whereby he decided-to grant a Patent on J. R. Quain's . Application, No. 10,810 of 19'15, and refused to seal a Patent on Spink's Application, No. 160,582. [A statement of the material facts here followed.] ' . 2 T 2 464 No. 15.] RErPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. XL. In the Matter of Applicoiions by J. R. Quain and by the Quazin. Electric Com.pcnu Limited and J. R. Spinl: for Paienis, Mr. Romer put, his case on the ground of disoonformity bet,wee~, the Provisional and Complete Specification in No. 10,810 of 1915. He did not ask me to disturb the. finding of the, Assistan,t Com.piroller on the questions of fact as to " obtaining the invention." No witnesses were called before me, and I should therefore have, been very slow, even if Mr. Romer had asked me 5 to do S01 to reverse the Ass (...truncated)