A-212-73
George L. Leithiser, The Timberland Ellicott
Limited (Appellants)
v.
Pengo Hydra-Pull of Canada, Limited (Respond-
ent)
Court of Appeal, Jackett C.J., Thurlow J. and
MacKay D.J.—Ottawa, November 19-22, 1974.
Patents—Infringement action—Invention for applying uni
form tension to electrical conductors—Claims invalid—
Whether invention "on sale in Canada'—Patent Act, R.S.C.
1970, c. P-4, ss. 2, 28, 35, 36, 46, 47—Federal Court Rules
408(3), 482.
The appellant, Leithiser, devised and built a "cable boost
er machine" for providing uniform tensioning in electrical
cable conductor installations and for preventing damage to
the cable as it is unwound from the reel. The action brought
by the inventor and his assignee against the defendant for
infringement was dismissed and the claims in the patent
were declared invalid by the Trial Division (not reported,
T-1738-71) on two grounds: (a) the disclosures of the
specification did not support the claims; (b) there was
non-compliance with the requirement in section 28(1)(c) of
the Patent Act that the "invention" that was the subject of
the suit had not been "on sale in Canada" for more than two
years prior to the application for the patent.
Held, the appeal is dismissed. With regard to the first
ground, the first question was whether the claims of the
appellant claimed more than he invented; the second was
whether the claims were broader than the invention
described in the specification. If the answer to either ques
tion was in the affirmative, the claims were invalid. In
respect of all eight claims in the patent, the answer was in
the affirmative on both accounts. The appellant's patent was
invalid. It was unnecessary to express an opinion on the
second ground.
Radio Corporation of America v. Raytheon Mfg. Co.
(1957) 16 Fox Pat. C. 122; Smith Incubator Company
v. Albert Seiling [1937] S.C.R. 251 and Commissioner of
Patents v. Farbwerke Hoechst Aktiengesellschaft Vor-
mals Meister Lucius & Bruning [1964] S.C.R. 49,
followed.
APPEAL.
COUNSEL:
R. G. McClenahan, Q.C., and A. M. Butler
for appellants.
I. Goldsmith, Q.C., and D. J. Bellehumeur
for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for
appellants.
Goldsmith & Carswell, Toronto, for
respondent.
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: I concur in the reasons for
judgment of Thurlow J. and in the disposition of
the matter proposed by him. I propose, how
ever, in addition to concurring with him, to state
certain additional views with regard to the
matter.
This is an appeal from a judgment of the Trial
Division dismissing an action for infringement
of a patent and granting a declaration that the
claims in the patent alleged to have been
infringed are null, void and of no effect.
The learned Trial Judge based his judgment
on a finding that the claims in the patent alleged
to have been infringed are invalid on two
independent grounds, viz:
(a) the "disclosures" of the "specification"
did not support the "claims"; and
(b) there had not been compliance with the
requirement of section 28(1)(c) of the Patent
Act that the "invention" that was the subject
matter of the suit had not been "on sale in
Canada" for more than two years prior to the
application for the patent.
I do not find it necessary to express any
opinion on the second of these two grounds and
will defer expressing any opinion on the mean
ing of the words "on sale in Canada" in their
context in section 28(1)(c) until it becomes
necessary to do so. I am not, at present, pre
pared to adopt the view of the breadth of the
meaning of those words that it was necessary
for the learned Trial Judge to adopt to reach the
finding that they apply to the facts of this case.
With reference to the first ground relied upon
by the learned Trial Judge, I follow him in
adopting the law as expressed by President
Thorson in Radio Corporation of America v.
Raytheon Mfg. Co.' as follows:
It is a cardinal principle of patent law that an inventor
may not validly claim what he has not described. In the
patent law jargon, it is said that the disclosures of the
specification must support the claims. If they do not, the
claims are invalid. 2
Furthermore, whatever be the invention, if any,
that can be taken to have been described by the
"disclosures" in the "specification", I agree
with the learned Trial Judge that every claim in
the patent relied on "overclaimed" so as to be
invalid within the principle of law laid down in
the quotation from President Thorson. As
already indicated, on this aspect of the case I
adopt the reasons of my brother Thurlow.
That is all that, in my view, I need say to
justify my conclusion that the appeal should be
dismissed with costs. However, I cannot resist
the impulse to make some comments on the way
in which the relatively narrow issues that in fact
and in law existed between the parties in this
case resulted in a lawsuit involving some twelve
days of hearing of evidence and some four days
of argument, at a cost I am afraid, of thousands
of dollars per day, and to express my conclu
sions on certain further aspects of the case that
flow from such comments.
In the first place in my opinion, it was clear
from the beginning, without evidence, that the
patent was invalid because it did not disclose
any invention' and the entire matter might well
have been disposed of on that basis by way of a
preliminary proceeding.
' (1957) 16 Fox Pat. C. 122, at page 133.
2 See, also, The Smith Incubator Company v. Albert Seil-
ing, [1937] S.C.R. 251 per Duff C.J., at page 257, and
Canadian Patent Law and Practice by Fox, 4th ed. at page
216.
See section 2 of the Patent Act:
2. In this Act, and in any rule, regulation or order made
under it.
"invention" means any new and useful art, process,
machine, manufacture or composition of matter, or any
new and useful improvement in any art, process, machine,
manufacture or composition of matter;
To appreciate that this is not some mere tech
nicality, before explaining the basis for that
conclusion, I will recall the general scheme of
the Patent Act. The Patent Act is a statute under
which a seventeen-year monopoly in respect of
the use of an "invention" will be granted to an
inventor who reveals his invention to the public
in such manner that, subject to his monopoly,
the invention will become available to the
public. (It is a statute designed to benefit the
public and not a statute for the exclusive benefit
of inventors.) This is accomplished by the grant
of a patent under section 28 of the Act 4 after
the inventor has made "compliance with all the
other requirements of this Act". The require
ments in the Act around which the whole
scheme turns are the requirements for "a
specification" and for "a claim or claims"
which, in due course, are made public. (See
sections 35, 36 and 46.) 5 With his application
for a patent for an invention, the applicant must
send in a "specification ... of the invention"
(section 35). In the specification for an inven-
4 See section 28:
28. (1) Subject to the subsequent provisions of this
section, any inventor or legal representative of an inven
tor of an invention that was
(a) not known or used by any other person before he
invented it,
(b) not described in any patent or in any publication
printed in Canada or in any other country more than
two years before presentation of the petition hereunder
mentioned, and
(c) not in public use or on sale in Canada for more than
two years prior to his application in Canada,
may, on presentation to the Commissioner of a petition
setting forth the facts (in this Act termed the filing of the
application) and on compliance with all other require
ments of this Act, obtain a patent granting to him an
exclusive property in such invention.
s See sections 35, 36 and 46 of the Patent Act:
35. The applicant shall, in his application for a patent,
insert the title or name of the invention, and shall, with
the application, send in a specification in duplicate of the
invention and an additional or third copy of the claim or
claims.
36. (1) The applicant shall in the specification correctly
and fully describe the invention and its operation or use as
contemplated by the inventor, and set forth clearly the
various steps in a process, or the method of constructing,
making, compounding or using a machine, manufacture or
composition of matter, in such full, clear, concise and
tion consisting of a machine, 6 the applicant is
required
(a) correctly and fully to describe the
machine that constitutes the invention, and its
operation and use as contemplated by the
inventor,
(b) to set forth clearly the method of con
structing the machine "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 ... construct ... it",
(c) to explain the principle of the machine,
(d) to explain the "best mode" in which he
contemplates the application of that principle,
and
(Continued from previous page)
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 the case of a machine he shall explain the principle
thereof and the best mode in which he has contemplated
the application of that principle; in the case of a process
he shall explain the necessary sequence, if any, of the
various steps, so as to distinguish the invention from other
inventions; he shall particularly indicate and distinctly
claim the part, improvement or combination which he
claims as his invention.
(2) The specification shall end with a claim or claims
stating distinctly and in explicit terms the things or combi
nations that the applicant regards as new and in which he
claims an exclusive property or privilege.
46. Every patent granted under this Act shall contain
the title or name of the invention, with a reference to the
specification, and shall, subject to the conditions in this
Act prescribed, grant to the patentee and his legal repre
sentatives for the term therein mentioned, from the grant
ing of the patent, the exclusive right, privilege and liberty
of making, constructing, using and vending to others to be
used the said invention, subject to adjudication in respect
thereof before any court of competent jurisdiction.
6 As this is a patent for a machine, I am restricting my
references to the requirements for a "machine" invention.
(e) to indicate particularly and "distinctly
claim" the "part, improvement or combina
tion which he claims" as his invention.
(See section 36(1).) Having so prepared the
specification, the applicant is required to place
at the end thereof "a claim or claims stating
distinctly and in explicit terms the things or
combinations that the applicant regards as new
and in which he claims an exclusive property or
privilege" (see section 36(2)). That such "claim
or claims" is something quite distinct from the
part of the "specification" referred to in section
36(1) where the applicant indicates what he
claims as his invention appears not only from
the different language used—"part, improve
ment or combination which he claims as his
invention" in section 36(1) and "the things or
combinations that the applicant regards as new
and in which he claims an exclusive property or
privilege" in section 36(2)—but also from the
requirement in section 35 that the applicant
send in the specification "in duplicate" and "an
additional or third copy of the claim or claims".
Moreover, as President Thorson indicated
(after, as we all know, a thorough review of the
jurisprudence), a claim has always been regard
ed and held to be a means of defining in precise
terms the boundaries of that which (within what
has, in general terms, been described as his
invention in the "specification") the inventor
asserts as his claim to an exclusive privilege. As
is well known, when a patent issues, the specifi
cation with the claim or claims appearing at the
end thereof, becomes an essential part thereof.
I have spelled out this part of the scheme of
the Patent Act in some detail because it indi
cates how careful the legislature was to ensure
that the inventor made clear to the public what
his invention was and how to take advantage of
it as a condition precedent to his getting his
monopoly grant. In my view, full and explicit
compliance with section 36(1)—i.e., providing a
specification that would tell all the world what
his invention was and how to make use of it—is
a condition precedent to any monopoly coming
into existence under the Patent Act. See section
46 of the Patent Act which makes the grant of
the patent "subject to the conditions in this Act
prescribed".
In this case in my view, the specification did
not comply in any substantial sense with section
36(1). The first part of the specification' (down
to the paragraph beginning "In the accompan
ying drawings ...") talks about the purposes
and objects of the "invention" and says what it
"relates to" but does not describe it, much less
set forth how to construct it, explain its "princi-
ple" or indicate or claim the "part, improvement
or combination" claimed to be the inventor's
invention. Once the "specification" starts to
refer to the drawings, it does nothing but
explain the particular machine that those draw
ings represent and it makes it very clear that
they, "for the purpose of illustration", show
"only a preferred embodiment of the invention"
which I take to be patent jargon for saying that
they are a fulfillment of the requirement that the
applicant explain "the best mode" in which he
contemplates the principle of the machine
"being applied".
In my view, the specification in this patent is
not, in any proper use of language, a fulfillment
of the requirements of section 36(1) and having
regard to the essential part that the section 36(1)
specification plays in providing to the public the
consideration for the monopoly, in my view, the
complete failure of the "specification" to meet,
in any substantial way, the requirements of sec
tion 36(1) is ample ground for holding the patent
to be invalid.
I come to the second point that I cannot
prevent myself from making after reading the
record in this case.
7 The learned Trial Judge quotes the specification in his
Reasons and I do not propose to re-quote it.
Quite apart from the various elements explic
itly spelled out in the statutory definition of
"invention"—viz: novelty, utility, etc.—there is
a further requirement that the thing claimed as
an invention must be the result of inventive
ingenuity and not a mere "workshop" improve
ment or development. See Commissioner of Pat
ents v. Farbwerke Hoechst Aktiengesellschaft
Vormals Meister Lucius & Bruning 8 per Judson
J. (delivering the judgment of the Supreme
Court of Canada) at pages 56-7. Once a patent
is granted, however, it is prima facie valid. 9 The
practice that seems always to have been fol
lowed when it is desired to put the question of
validity in issue on the ground of lack of inven
tive ingenuity, and that was followed in this
case, is simply to state in the pleadings that the
"alleged invention" was "obvious" and "did not
involve any inventive step". In my view, this is
not a sufficient allegation for the purpose, if
attacked by way of a preliminary proceeding.
Whether or not the alleged invention involves
inventive ingenuity can only be determined by
considering it (as described in the specification)
against the relevant state of affairs as they
existed immediately before the time of the
alleged invention, which state of affairs is usual
ly known in patent jargon as the "prior art".
But, while the interpretation of the specification
is a question of law, the "state of the art", in my
view, is a question of fact, which should be
pleaded so that the issues with regard thereto
may (before trial, by the pleading process) be
reduced to whatever aspects thereof are in bona
fide dispute between the parties. I suggest to the
members of the profession engaged in this class
of litigation, and to the Trial Division, that seri
ous attention should be given to applying the
Rules of this Court to this branch of pleading in
future cases of this kind even though in other
more leisurely times it was thought fit to leave
8 [1964] S.C.R. 49.
9 See section 47 of the Patent Act:
47. Every patent granted under this Act shall be issued
under the signature of the Commissioner and the seal of
the Patent Office; the patent shall bear on its face the date
on which it is granted and issued and it shall thereafter be
prima facie valid and avail the grantee and his legal
representatives for the term mentioned therein, which
term shall be as provided in and by sections 48 and 49.
such questions in the air until they reach the
ultimate court of appeal. 10
The result of having this case tried in the
absence of any such pleading of the "prior art",
in my view, is a very diffuse and untidy record
upon which it is difficult, if not impossible, to
come to any conclusion concerning the element
of "inventive ingenuity" even assuming that the
"invention" that the learned Trial Judge took
such pains to spell out of the specification for
the appellant (or the somewhat different one
suggested to us by counsel for the appellant)
could be taken to have been divulged by the
specification."
10 In this connection reference might be made to Rule
408(3), Odgers on Pleading and Practice, 20th ed., at page
96, and the portion of the "White Book" dealing with
"conditions precedent"—e.g., the 1965 volume at pages
372-73.
11 After the best consideration that I have been able to
give to the matter and after hearing counsel for the appellant
on the matter, I am of the view that the balance of probabili
ty is that there was no inventive ingenuity involved in the
assembling of the parts (none of which is itself claimed to be
inventive) that became the machine that was produced by
the patentee. While no great emphasis was placed on the
fact, it seems clear that a then recent change in the industry
gave rise to a demand that made it economic to have a new
machine, that the "inventor" received an order for such a
machine and that he developed it. This is not, therefore, a
case of a long standing requirement in respect of which no
person could see a simple solution. (Indeed, no suggestion
has been made of any result achieved by the combination
claimed as an invention over and above the aggregate of the
results achieved by its separate elements, none of which was
claimed as involving inventive ingenuity in itself.) In my
view, this machine combination does not appear to involve
inventive ingenuity but mere engineering skill and compe
tence, as appears from the evidence of the respondent's
expert witness.
Finally, as my third point, I feel I should say a
word about the use in this case of the affidavits
of the "experts". Rule 482 was inserted in the
Rules to effect a reduction in the length and
expense of trials involving the use of "experts"
and to aid in the pre-trial settlement process. It
only has the desired result when counsel make a
bona fide effort to make it work and do not
subconsciously or otherwise fall back into their
old "poker-playing" habits of keeping their best
cards up their sleeves until the ultimate appeal
unless forced to reveal them earlier. In this
case, a reading of the record leaves me with the
impression that a large part of the trial was
taken up with time involved in requiring experts
to give explanations and draw illustrations that
could—and should—have been incorporated
more usefully and effectively in the affidavits
themselves. If counsel are permitted gradually
to slip into the practice of nominal compliance
with Rule 482, it will become a mere additional
step in the proceedings and should, in my view,
be revoked 12 .
The following are the reasons for judgment
delivered orally in English by
THURLOW J.: The appellant, Leithiser,
devised and built a machine for obtaining uni
form tensioning in electrical cable conductor
installations and for preventing damage to the
cable as it is unwound from the reel. In opera
tion, the machine is interposed between the reel
and the pole or tower on which the cable is
being installed. By absorbing the force applied
to pull the cable to the pole or tower it governs
the tension on the cable between it and the pole
or tower and takes the strain off the cable on
12 An indication of how the Rule can be abused is the
motion that was made in the course of the trial herein to
strike out portions of an affidavit of an expert on the basis
that his cross-examination had shown that his evidence in
chief was irrelevant. Such a motion would never have
occurred to counsel if the evidence in chief had been given
without the aid of an affidavit that had been filed under the
Rule.
the reel. It is fitted with a means for automati
cally aligning a groove on a capstan wheel
receiving the cable with the cable as it comes
off the reel. By this means it achieves what has
been referred to as level wind. The machine can
be operated in reverse to provide even or level
winding of cable on a reel.
The principal features of the appellant's con
trivance consist of a chassis on which is a frame
mounted on a pivot so that the frame can be
moved to either side of its vertical position. On
the frame are two capstan wheels in tandem
formation fitted with three or more smooth
semicircular or u-shaped grooves for receiving
several turns of the cable. A hydraulic system,
working on the principle of the opening of a
valve when the hydraulic pressure within the
system reaches a predetermined level, is pro
vided for retarding the rotation of the capstan
wheels and, through the friction between the
cable and the wheels, increasing the tension on
the cable being pulled through the device.
Hydraulic means are provided for automatically
moving the frame to one side or another on its
pivot to align the desired groove on the receiv
ing capstan wheel with the cable coming from
the reel. Automatic operation of this system is
arranged through sensors positioned on either
side of the cable as it reaches the device which
mechanically actuate the hydraulic means for
moving the frame from side to side.
At the material time, March 3, 1958, there
was no novelty in any of these features by
itself. The common knowledge in the field of
devices for tensioning cable installations includ
ed fixed tandem capstan wheels with a plurality
of grooves and hand operated devices for
achieving level wind by guiding the cable into
the receiving groove. In some related fields con
cerned with cable winding there were mechani
cally operated devices for guiding the cable to
achieve level wind. It was also known that
because of the greater contact area of the cable
with the sides a v-shaped groove would produce
more friction than a semicircular or u-shaped
groove.
In the submission of counsel for the appel
lants none of the machines in the field up to the
material time had (1) pivoting or moving capstan
wheels, (2) control exercised over a movable
capstan wheel frame by an automatic sensing
device activated by lateral motion of the cable
or (3) hydraulic retarding control of the rotation
of the capstans. His position, as I understood it,
was that the appellant's machine was novel and
that his invention consisted in the incorporation
into his machine of the combination of
(1) a movable capstan wheel frame;
(2) the control of the movement by a sensing
device automatically activated by the lateral
motion of the cable coming from the reel; and
(3) hydraulic means for controlling the swing
ing movement of the frame and for retarding
the rotation of the capstan wheels.
On this basis two questions arise.
The first is whether the claims of the appel
lant's patent claim more than he invented. The
second is whether the claims are broader than
the invention which is described in the specifi
cation. If the answer to either question is in the
affirmative, as I understand the law, the claims
are invalid.
The disclosure portion of the specification of
the patent is set out in full, save for the draw
ings, in the reasons for judgment of the learned
Trial Judge and I propose only to summarize it.
It recites the making by the appellant of an
invention entitled "Cable Booster Machine" and
that the disclosure contains a correct and full
description of the invention and of the best
mode known to the inventor of taking advantage
of it. Next it states that the invention relates to
equipment for applying uniform tension to elec
trical conductors during their installation on
transmission structures. The three paragraphs
that follow describe drawbacks of existing
devices and problems to be solved and the
specification then states:
It is a purpose of this invention to provide mobile equip
ment, classed as a semi-trailer, which may be readily trans
ported to the job site and which will provide consistent and
controllable retarding forces applied directly to the conduc
tor at the smooth grooved surfaces of tandem capstan
wheels, with provision being made to automatically align the
capstan wheels with the point on the reel from which the
conductor is paying-out in order to prevent scraping the
conductor against an adjacent cable wrap on the reel.
A further object of this invention is the provision of a
cable tension booster adapted to provide tension values
adequate for stringing transmission lines where applied volt
ages, conductor characteristics and/or stringing conditions
necessitate smooth, uniform tensioning.
A further object of this invention is the provision of a
cable tension booster adapted to be used in connection with
power driven or mounted reel trailers.
Other objects and advantages of this invention will be
apparent during the course of the following detailed
description.
From that point to the end of the disclosure
portion the specification, as I read it, consists of
a detailed description of the appellant's tandem
capstan machine, not as being the invention but
as being the preferred embodiment of it. There
is no description whatever of any machine
having a single capstan wheel, or of how such a
machine might be devised or how it might work.
Nor is there any description of any device
having capstan wheels with a single groove, or
of any means of mounting the capstan wheel
frame for movement from side to side other
than by mounting it on a pivot.
Nevertheless six of the eight claims, viz.
claims 2, 3, 4, 5, 7 and 8, include machines with
a single capstan wheel, and seven of the claims,
viz. claims 1, 2, 3, 4, 6, 7 and 8, embrace any
means of mounting the capstan wheel frame for
side to side movement.
The eight claims read as follows:
1. In a cable tension booster assemblage, the combination
of a supporting chassis, a frame, means mounting the frame
upon said chassis for sidewise movement thereon, a plural
ity of capstan wheels rotatably mounted upon said frame on
parallel axes transverse to the frame and with the wheels
disposed in the same plane, hydraulic means upon the
chassis and frame for retarding rotation of said wheels, and
means controlled by the paying out of cable from a supply
source to said capstan wheels for regulating sidewise move
ment of said capstan wheel frame.
2. In a cable tension booster, in combination with a cable
supply reel having a cable coiled thereon and means for
rotatably supporting the reel for rotation, a supporting chas
sis, a frame mounted on the chassis for lateral movement
thereon, a capstan wheel rotatably carried by the frame
having grooves thereon for receiving coils of cable extend
ing from said reel as the cable is payed out from said reel,
guide means movably connected to said frame including
members thereon disposed at opposite sides of the cable as
it extends from the reel to the capstan wheel, and means
actuated by movement of the members of the guide means
as they contact the cable for laterally moving the said frame
to align the grooves of the capstan wheel with the position
of the cable coil being payed out from said reel.
3. A booster as described in Claim 2 in which the means
actuated by said guide means comprises a double acting
hydraulic cylinder and piston assembly operatively connect
ed to said chassis and frame, a valve for controlling flow of
hydraulic fluid to and from said cylinder at opposite sides of
the piston thereof, and means connecting the guide means to
said valve for regulating the valve through movement of the
members of the guide means.
4. In a cable tension booster, the combination of a sup
porting chassis, a frame, means movably mounting the
frame upon the chassis for sidewise movement upon the
chassis, capstan wheel means rotatably supported by said
frame on a transverse axis on the frame and bodily movable
with the frame as it is moved sidewise, said capstan wheel
means being grooved to receive convolutions of a cable
being payed out under a pulling force remote from the
booster, hydraulic actuated motor pump means geared to
said wheel means for retarding rotation of the wheel means
in order to tension the cable as it is drawn from said wheel
means, hydraulic means for supplying the desired hydraulic
fluid retarding force to said motor pump means, hydraulic
means connected to the motor frame and the chassis for
moving the frame sidewise upon the chassis and the wheel
means therewith, and means to control the fluid of the last
mentioned hydraulic means to effect sidewise degree of
movement of the frame comprising a control operated by
the position of the cable as it is fed to said wheel means.
5. A cable tension booster as defined in Claim 4 in which
the frame for sidewise movement has a pivot on said chassis
with its axis lengthwise of the cable as it is payed out from
the wheel means.
6. In a cable tension booster, the combination of a sup
porting chassis, a frame, a plurality of cable receiving cap
stan wheels rotatably supported upon the frame on parallel
axes, means mounting the frame upon said chassis for
sidewise movement in a plane transverse to the plane in
which the capstan wheels lie, a hydraulic motor pump
mounted on said frame for each of the capstan wheels,
means gearing the hydraulic motor pump to the respective
capstan wheels, hydraulic means operating the hydraulic
motor pumps tending to retard the paying out action of the
cable from the wheels, means for control pressure feeding
of hydraulic fluid to said hydraulic motor pumps whereby to
selectively regulate rotation of said wheels against a force
acting to pay out the cable from said wheels, and hydraulic
means normally actuated by lateral positioning of the cable
as it enters upon the capstan wheels to control sidewise
movement of the capstan wheels upon the chassis frame.
7. In combination with a cable supply reel having a
supply of cable wound thereon, a cable tension booster
comprising a supporting chassis, a frame mounted upon the
supporting chassis, a capstan wheel rotatably supported
upon said frame grooved to receive the cable from the
supply reel in coiled relation thereon, a hydraulic motor
pump, means for supplying fluid to the hydraulic motor
pump, valve means for varying the supply of fluid to said
hydraulic motor pump, means gearing the hydraulic motor
pump to said capstan wheel to selectively retard cable
paying out rotation of the wheel according to the degree of
pressure upon the hydraulic fluid of said motor pump, and
means to provide sideways movement of the capstan wheel
upon said frame comprising a hydraulic piston and cylinder
arrangement connecting the frame of the capstan wheel to
said chassis, and hydraulic means to actuate the piston of
said cylinder for moving the frame laterally upon the
chassis.
8. A cable tension booster as described in Claim 7 in
which means is provided for regulating the flow of fluid to
the piston of said cylinder under automatic control by the
lateral position of the cable paid out from the reel onto the
capstan wheel.
Turning to the first of these claims in my view
it is obvious that to cause a cable to be wound
levelly on a horizontal capstan it will be neces
sary either to move the cable sideways to guide
it on to the capstan or to move the capstan
sideways in relation to the cable. There could, in
my opinion, be no invention in electing to devise
a method of moving the capstan to serve the
purpose. It is, I think, even more obvious that if
one object is to remove cable from a reel in a
way calculated to reduce scuffing, a method of
shifting the receiving device in relation to the
cable coming off the reel is more likely to
achieve the purpose than one in which lateral
pressures are exerted on the cable. If, therefore,
there is anything inventive about the lateral
movability of the capstan frame in the appel
lant's machine it must, as it seems to me, lie in
the selection or application of the particular
means devised to provide such lateral movabili-
ty in combination with the other features of the
machine. The only means devised by the appel
lant to achieve such lateral movability in combi
nation with other features of his machine and
the only means for such purpose described any
where in the specification is by mounting the
frame on a pivot. Other means are conceivable
and appear to have been considered, such as
mounting or hanging the frame on a rail or on
wheels or cogs but no machine incorporating
such means in combination with the other fea
tures was ever designed or built. Nor is the use
of any such means in the combination
described. Nevertheless claim 1, as worded, is
broad enough to embrace a combination includ
ing any means whatever for movably mounting
the capstan frame.
It must, I think, be remembered that while
what is new and inventive in an art, process,
machine, manufacture or composition of
matter 13 may properly be the subject matter of a
patent claim and while such novelty may consist
in a combination of known elements, in the case
13 See the definition of invention in section 2 of the Patent
Act.
of a machine such elements are not intangible
notions such as movability, but tangible parts of
the machine itself. The invention here, if there
is one, is a machine (or perhaps a manufacture)
and as the movability of the frame is neither
inventive nor an element of the machine there is
nothing apart from the particular means chosen
for mounting the frame movably which can
form part of the novel combination. In my opin
ion in claiming a combination embracing any
means for mounting the capstan wheel frame on
the chassis for sidewise movement claim 1
claims more than was invented and more than
was described and is on both accounts invalid.
The same applies to claims 2, 3, 4, 6, 7 and 8.
I turn next to the several claims for combina
tions which embrace the use of a single capstan
wheel, that is to say claims 2, 3, 4, 5, 7 and 8.
The language of each of these claims in my
opinion contemplates a device that may have as
few as one capstan wheel but that, whether
there is one or more, it or they will be grooved
to receive, in the case of claims 2, 3, 4, and 5, a
plurality of coils or convolutions of the cable
and, in the case of claims 7 and 8, at least one
complete coil of the cable.
It appears from the evidence that a single
capstan wheel assembly is not operable save by
the use of a single groove which, since the
cable, when in it, will be in contact with but half
the circumference of the wheel, will not pro
duce adequate friction for tensioning the cable
unless a v-shaped groove is used. When such a
groove is used there is much greater likelihood
of producing an undesirable phenomenon
known as birdcaging which may result in
damage to the cable. There were thus, in my
view, particular problems to be solved if any
useful cable tensioning machine having a single
capstan wheel was to be devised.
Evidence given on discovery by the appellant,
Leithiser, which was read in at the trial included
the following:
Q. Did any of the bullwheels that you made or used as
part of your invention ever have less than four
grooves?
A. No.
Q. In making your invention, did you ever devise a
machine in which there were less than four complete
coils of the cable being tensioned?
A. Well, yes. A four-groove machine provides only three
coils.
Q. The first prototype that you made had four grooves
and three coils?
A. That's correct.
Q. Did it work?
A. Yes.
Q. Satisfactorily?
A. In that respect, yes.
Q. Did you ever make a machine that had less than three
cells?
My Lord, that should be "coils". Do you agree with that?
MR. MCCLENAHAN: Yes.
MR. GOLDSMITH:
Q. Did you ever make a machine that had less than three
coils?
A. No.
Q. Did you ever have any kind of drawings of a machine
with less than three coils?
A. No.
Q. Did you ever contemplate using one with less than
three coils?
A. No.
Q. Did you ever in the course of making your invention
use or contemplate or have drawings of a bullwheel
which had only a single "V"-shaped groove?
A. No.
Q. Have you ever tried using a tension booster which has
a single capstan wheel and three or more grooves, a
tension booster, with a cable coiled around it?
A. No.
Q. Do you think such a device would work?
A. No.
Q. You think it wouldn't work?
A. I think it would not work.
Q. Did you ever in the course of your invention either
make, contemplate or have a drawing of a bullwheel
which had grooves other than "U"-shaped grooves,
semi-circular grooves?
A. No.
Following along in that same context if Your Lordship will
turn to page 98 my learned friend asked a question in
re-examination, Question 574:
Q. During a few of the lattermost questions asked you by
Mr. Goldsmith, "did you make or contemplate", I
think were the words that he used, and one such
question was in relation to a single groove bullwheel
construction. By the use of the word, "contemplate",
do you mean that you did not think of it or that you
did not use that type of construction in your
machines?
A. Well, I meant I did not contemplate using it.
Q. Could you enlarge on that at all?
A. It was thought of. I have had experience with single
wheel bullwheels in the wire cable business with a
single wide groove, but I didn't consider that I wanted
to use it for this particular kind of equipment.
In the light of this evidence it is, in my view,
apparent that the appellant never invented a
cable tensioning machine having a single cap
stan wheel with a multiplicity of grooves and
that such a device if made would not be work
able and further that the appellant never invent
ed or devised a single capstan wheel machine
with a single groove or with a v-shaped groove.
Moreover, no such machine is described in the
specification. The claims which include such a
single capstan wheel machine accordingly in my
opinion claim more than the appellant invented
and more than is described in the specification
and they are on both accounts invalid.
As it follows from the foregoing that the
appeal fails it is unnecessary for me to consider
the second ground upon which the learned Trial
Judge proceeded, that is to say, that the inven
tion was on sale in Canada for more than two
years prior to the filing of the application for the
patent and I shall express no opinion on it.
I would dismiss the appeal with costs.
* * *
MACKAY D.J. concurred.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.