Majority
COUR SUPRkME DU CANADA
THE GENERAL TIRE & RUBBER
6,
Judgment of the Court
HALL J.:-The events leading up to this litigation and their chronological sequence are set out at length in the reasons for judgment of the trial judge', Gibson J. In summary these are appeals arising out of two actions in the Exchequer Court, Numbers A-169 and A-1178 which were tried together and in which Gibson J. gave common reasons, but in respect of which there were separate formal judgments.
1 [19661 Ex. C.R. 31 Fox Pat.
The actions arose out of a conflict in the Patent Office under s. 45 of the Patent Act between patent applications of the three parties to these appeals, the appellant being hereafter referred to as General and the two respondents respectively as Dominion and Phillips. The patent applications in question were:
The conflict concerned three claims identified as C4, C5 and C6. The Commissioner of Patents decided that Dominion was entitled as against the other two parties to claims C5 and C6. General then instituted in July 1961 the first of the two actions (A-169)
naming Dominion as defendant. In March 1963 Phillips instituted the other action (A-1178) naming Dominion and General as defendants. Ultimately the pleadings in both actions were amended by consent so that they corresponded in substance and raised the same issues, and the actions were tried together.
The position of General was that none of the parties was entitled to any of the conflicting claims C4, C5 and C6. The position of Phillips was that it was entitled as against the other parties to all three of the claims, though at the trial it withdrew its assertion of entitlement to claims C5 and C6. The position of Dominion was that both actions should be dismissed, with the result that it would remain, under the Commissioner's decision, entitled to all three of the claims. The judgments were that none of the parties was entitled to claim C4 and that Dominion was entitled as against General and Phillips to claims C5 and C6. There is no appeal from the judgments in respect of claim C4. Phillips took no part in the. hearing in this Court.
Action No. A-169 in which General was plaintiff was dismissed. It was adjudged that Dominion was entitled as against General and Phillips to the issue of a patent including claims CS and C6 on its Canadian application 636,139 and it was further adjudged that none of the parties was entitled to a patent containing claim C4. Action No. A-1178 in which Phillips was plaintiff was also dismissed. It was adjudged that Dominion was enti- Tias & tied as against General and Phillips to the issue of a patent Co. including claims C5 and C6 on its Canadian application 636,139, that none of the parties was entitled to the issue LrD. et al. of a patent containing claim C4, that the counterclaim of General was otherwise dismissed and that claim C9 submitted by General in the preliminary proceedings to the trial was unpatentable. An application to vary the minutes by deleting the reference to claim C9 was dismissed.
Claims C5 and C6 which were awarded to Dominion relate to the inclusion of oil in cold high Mooney rubber by the latex blending of oil and rubber. The trial judge considered that claims C5 and C6 related to an invention but that claims C4 and C9 differed from C5 merely by referring to specific amounts of oil and precise Mooney measurements. He reached the conclusion that there was nothing inventive in the selection of these precise amounts of oil or Mooney measurements and that C4 and C9 were therefore not inventively distinguishable from claim C5 and were therefore unpatentable.
The said claims C4, C5, C6 and C9 read as follows:
C4. The method of making a mass of polymeric material vulcanizable to a rubber-like state comprising forming an emulsion of monomeric material comprising at least one conjugated diolefin; polymerizing said monomeric material in said emulsion at a temperature below 15'C.; the resulting polymer having a raw Mooney value (ML-4)
of at least 90; adding to a latex of said polymer a hydrocarbon softener as a dispersion in water, said softener being added in an amount of between and 50 parts by weight per parts by weight of crubber; and recovering resulting softened polymer.
C5. The process of making a mixture comprising a synthetic rubber and a processing oil which comprises coagulating and drying the coagulum of an aqueous mixture containing dispersed particles of a rubber processing oil and a synthetic rubber latex which has been emulsion polymerized at a temperature between -40*F. and -60*F. and the rubber content of which has an ML-4 Mooney viscosity in the range of 75 to 200. C6. A mixture of a low temperature, viz., -40*F. to -60*F.
aqueous emulsion polymerized synthetic rubber having an ML-4 Mooney viscosity in the range of 75 to 200, and a rubber processing oil, said processing oil having been co-coagulated with the synthetic rubber from a mixture comprising an aqueous- dispersion of particles of the processing oil and synthetic rubber latex.
C9. The method -of making a mass of polymeric material vulcanizable to a rubber-like state comprising forming an emulsion of monomeric material comprising at least one conjugated diolefin; polymerizing said [19671 It will be seen that claims C4 and C9 are very similar, differing only in the words underlined in C9 above.
We are here concerned with whether the addition of the oil softener by a particular method, namely, by latex masterbatching, also known as co-coagulation, was an invention within the meaning of the Patent Act. The respondent says that it was and Gibson J. so held. The appellant contends that there was a lack of patentability having regard to the state of the art and what Dr. Howland (Dominion's alleged inventor) did was an obvious user of a process then well known in the art.
It is beyond doubt that Gibson J. was right in his finding that the process known as latex masterbatching was a well-known process at all times material to this litigation However, it is equally clear that this particular process had not been used in respect of high Mooney cold rubber. It had been used experimently with what is known as GRS rubber by which is meant Government Rubber Styrene, a synthetic product produced by a hot process and the method was not adopted by the trade because of certain economic disadvantages not present in the methods then being used, namely, by milling or in the Banbury machine or by solution incorporation.
High Mooney cold rubber is a synthetic product which was not generally available in late 1947 and certainly not in the latter part of 1946 or early 1947 as found by Gibson J.
Dr. Howland conceived and disclosed as of December 12, 1947, the idea of combining high Mooney cold rubber, carbon black and oil through the method of latex masterbatching (co-coagulation). In a report he prepared and sent to Rubber Reserve on that date he said in part: [1967f MASTERBATCHES
A successful 3-component masterbatch has been made with X-384 latex (high Mooney redox polymer made at Institute). Our tests have TimE & since indicated that the cure is satisfactory. The physical tests obtained Co. by us are given below.
DoVn.ow pts et al. EPC pts black pts
EPC pts with with
Parablack
Pararegular treated
Para- Paraadded as latex latex milled milled emulmastermasterbatch batch X-384.................
....
..................
Black.................
Paraflux
.
Zincoxide.
.
MBT.................
Sulfur.................
1.5 Comp'd .....
300%.........
Tensile............
Elongation............
Set....................
*Added to latex rotor
An explanation as to why a good cure was obtained with J-793 while we have not yet been able to obtain a satisfactory cure with a 3-component masterbatch of normal GR-S that the high Mooney the X-384 latex used in the preparation of J-693 causes a greater amount of work to be done on the masterbatch in compounding so that a better dispersion is obtained.
It is conceded that Phillips could not have made any invention relevant to the questions in issue here prior to January 19, 1948, and General prior to April 14, 1949. We, therefore, have the situation where an alleged inventor has used a known method, latex masterbatching, not previously used for that purpose to soften a known product high Mooney cold rubber with oil. Latex masterbatching had been used to combine other ingredients. Oil had been widely used to soften GRS and to soften high Mooney cold rubber but by milling or in the Banbury ID. et al. machine or by solution incorporation. Was what Dr. Howland did a patentable invention?
Gibson J. dealt with the problem as follows:
In my opinion, the concept of using high amounts of softener and incorporating the same in high Mooney cold rubber, was not inventive. Instead, as stated, what was inventive was the idea at the material time to combine the softener with the high Mooney cold rubber in a particular way, namely, by latex masterbatching.
In this, clearly on the evidence, Dominion, through Howland, was first.
(The italics are mine.)
The essence of Howland's invention, if it was an invention, was the use of a known process, masterbatching, to combine an oil softener with high Mooney polymer and carbon black in the making of synthetic rubber at a stage in the process before the solution was separated and became a solid mass. The product which emerged from the process was high Mooney cold rubber with the oil softener as an integral element of the final product as it came from the manufacturer. This result was a very beneficial one economically as it was no longer necessary to put the synthetic rubber through the milling process or the Banbury machine or in any other way prior to being able to use it in the manufacture of tires and other products. Gibson J. found that what Howland did was not obvious to persons skilled in the art. He deals with this point as follows:
Phillips, in the period 13 October to 17 November, 1947, in Tire Test 123 which was the last practical tire test made prior to the alleged invention of Dominion, employed all the elements set out in all the conflict claims, and the specific amounts of the alleged important elements of conflict claim C-4 (namely, high Mooney cold rubber mixed with amounts of oil softener in excess of 15 parts per 100 parts of rubber) and incorporated the same in a Banbury, but not by latex masterbatching. It probably did this, it may be inferred from the evidence, because incorporating softener into GRS rubber up to that material time had proved to have disadvantages. It is therefore a reasonable inference from this evidence alone that those skilled in the art employed by Phillips, which personnel had very considerable capacity, did not consider it obvious to incorporate the oil into this new rubber namely, cold rubber, by way of latex masterbatching.
R.C.S.
[19671 Many cases were cited by counsel dealing with the question of inventiveness through the use of a known process & with known materials to produce a hitherto unknown or unexpected result. I do not think it is necessary to go beyond the decision of this Court in Commissioner of Patents v. Ciba Limited'. Martland J. in Ciba, speaking for et al. the Court, had to deal with such a situation on an appeal from the Exchequer Court 2 which reversed the Commissioner of Patents who had refused to grant a patent because the process defined in the process claims was not new. After considering the authorities and in particular the judgment of Jenkins J. in In re May and Baker Limited and Ciba Limited', Martland J. said:
... To constitute an invention within the definition in our Act the process must be new and useful. There is no question as to the process here being useful, as it produces compounds which have been admitted to be both new and useful.
Is it a new process? Is the element of novelty precluded because it consists of a standard, classical reaction used to react known compounds? In my opinion the process in question here is novel because the conception of reacting those particular compounds to achieve a useful product was new. A process implies the application of a method to a material or materials. The method may be known and the materials may be known, but the idea of making the application of the one to the other to produce a new and useful compound may be new, and in this case I think it was. In the present case Howland applied the known method of masterbatching to a known substance, an oil softener, with a new compound, high Mooney cold rubber, at a time in the process of making high Mooney cold rubber which resulted in the finished product being available to the market and immediately ready for processing into tires. Hitherto the tire manufacturer had had to soften his synthetic rubber whether GRS or the new high Mooney cold rubber in the Banbury machine or by one of the other two methods previously described.
In my opinion Gibson J. was right in finding that this was an invention and the evidence supports his finding. There is one other aspect of the appeal to be dealt with. The appellant has asked that the judgments be varied by deleting therefrom the paragraph which reads:
TmIs CounT claim C9 submitted General in the preliminary proceedings to this trial is unpatentable. 1 [19591 S.C.R. 378, Fox Pat.
2 (1957), 27 C.P.R. 82, 17 Fox Pat.
3 (1948), 65 R.P.C. 255.