190

No. 10.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vo1. LXXI.

In the Matter of an Application for a Patent by Littlewoods Mail Order Stores Ld.

;Mr.Lochner {lu]}t!her argued that other aspects of lthe invention, such as the sharing round
of the subscription cards among tthe subscribers, and the drawing of lots to estabiish
the order' of turns, showed mechanical purpose of the same 'nature as that disolosed in the
printed Sheet cases which had been allowed,
'It is' to be noted that in R's Application to waieh I have referred, where the alleged 5
invention was an index comprising a number of printed sheets, the allegation of " mechanical
" purpose" was rejected by the Solicitor-General, who observed "The fact that the index
"embodied in this index enables one to obtain a mechanical result and to obtain something
" W1hidh is a manufacture Like a volume or series of volumes is not in my opinion sufficient ".
Mer very careful eonsideraeion of t1he invention described by the Applicants, and of the 16
very able arguments PUlt forward by Mr. Loch.ner, I am unable to agree tlhiat the arrangement
of printed matter described and claimed by the Applicants can be properly sand to serve
a mechanical purpose. I have also found that the Applicants' alleged invention is cleanly

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distinguished from the invention dealt MTittlh in the judgment in Cobianchi's case.
In the result therefore II find tibIa'! tlhe Examiner's objection rth,at fue specification does 15
not describe an invention within the meaning of Sec. 101 of the Act is well founded, and
I accordingly refuse to grant a patent on the applioation.

PATENTS· ApPEAL TRIBUNAL.

Before "MR. JUSTICE LLOYD-JACOB.

February 23rd and 24th. 1954. 20

IN THE MATTER OF AN ApPLICATION FOR A PATENT BY j\LEXANDER LENARD.

Patent-Manner of manufacture-Objection by the Examiner that the application

appeared to be concerned with a method of agriculture or horticulture which is not regarded
as a manner of manufacture-Application refused-Appeal to Patents Appeal Tribunal-
Appeal dismissed-Patents Act, 1949, Sec. 101. 2S
Held that a method of agricultural or horticultural treatment such as described in the
specification cannot fairly be said to come within the present Patents Act.
Observed: Once the end product of an alleged invention is defined it becomes possible
to consider whether in the preparation or [ormuiation of that end product a manner of
manufacture has been utilised. 30
G. E. C.'s Application (1943) 60 R.'P.C. 1, and R. H. F.'s Application (1944) 61 R.P.C. 49
considered.
AJpplicati?n No. 6214/51 by A. ~. was .for a patent for "TmprovedMejnods for Meeting
"or Offsetting lt1he Advance of Disease m Clove Trees", and was based on the alleged
discovery by the Applicant that the disease known as Dieback and Sudden Death was due 35
to a fungus as opposed Ito a virus. The improved method is succinctly described in
tfhe provasfonal speoification as folilows :-" iIlt lis held that pruning would cause death of
"clove trees but my findings are that it heals and that mortality caused by disease can
"be reduced by carrying out drastic tree surgery and long pruning, provided the I1a1W
.., surfaces are protected withgood sterilising dressing to prevent the entry of fungi". 40
 191

Vol. LXXI.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 10.

In the Matter 01 an Application for a Patent by Alexander Lenard.

On examining the complete specificaeion, which read -in similar terms, the Examiner
reported that the method described was not regarded as a "manner of manufacture." and
supported his objection by reference to R. H. F.'s Application (1944) 61 R.P.C. 49. The
Applicant contested tihe Examiner's view, and in correspondence argued that, judged by the
5 so-called G. E. C. rules see (1944) 60 R.P.C. 1, at page 4, lines 33-38, his methods of
treatment ought to Ibe regarded as manners IOf manufacture,
In due course a hearing was appointed, and in rthe absence of the Applicant, who was
abroad, the Superintending Examiner (Mr. D. H. Reed), alerting for the Comptroller-General,
gave a decision supporting the Examiner, land refused to proceed wifh the application.
10 The Applicant appealed to jhe Tribunal, and the appeal came on for hearing before
Lloyd-Jacob, J., on 23rd and 24th February, 1954. Stephen Gratwick appeared as Counsel
for the Applicant and Mr. D. H. Reed (Superintending Examiner) appeared on behalf of
the Comptroller-General.

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Counsel's submissions may be briefly summarised as follows. Firstly that tlhe invention
15 relates to a clove tree, whiclh is an article and a vendible product, and that the process
which is claimed is wholly man-conducted, since it involves only the steps of pruning and
spraying; secondly, ItJbJat the value of the tree is enhanced by the process, since one can
assert that, if the tree has been bitherto unaffected, itt will have an increased resistance
and, if irt is already affected it willll have an increased chance of reoovery : and finally, that
20 although it is the subsequent conduct of nature that enables one to make that assenion,
nature itse~ takes no pant in the process sought to be protected, and that, therefore, although
one must rest utfu1ity and inventiveness on nature's assistance, one does not rest the
manner of manufacture on such assistance, Accordingly, Mr. Gratwick submitted, the
alleged invention should be regarded as a manner of manufacture within the meaning of
25 Sec. 101.
Lloyd-Jacob, J..-1"ih[s is an appeal from a decision of Mr. Reed (Superintending Examiner,
acting for the Comptroller-General), by wlhtidh he decided that an application for Letters
Patent standing in the name of Mr. Alexander Lenard could not be permined to proceed
to grant, on the ground that tlhe alleged invention therein described and claimed did not
30 disclose a manner of manufaoture.
At the hearing before the Superintending Examiner the Applicant was not represented,
but when the matter was brought to appeal t1he Applicant had the assistance of Counsel and
I am greatly indebted to Mr. Gratwick for the able manner in w!h1.oh he has developed
the argument in support of this application, Unhappily fur him, I do not find myself
35 able to accede' 'to tit, and I will endeavour to explain the grounds upon which I find
myself constrained to come to that conclusion. I could have contented myself with saying
that I accept and endorse the decision and the way in which the matter has been dealt
with, but, in deference to Mr. Gratwick's argument, I will endeavour to express in my own
language the way in wlhiclh the matter presents itself to my mind.
40 In spite of the warning which Lord Morton. when Morton, J., sitting as the Patents
Appeal Tribunal, expressed in the G. E. C. case, where he explained that it was certainly
not his intention to lay down any rule wihriah could be regarded as definitive, the useful
enunciation of vendibility as a guide in this type of oase has, as subsequent events have
shown, led to some confusion.
45 For my own part, I think that Iii lis clear that when Morton, J., in the R. H. F. case was
approving Mr. Oates' decision he was approving it upon the basis that in considering
the word "vendrilblre" or "vendibility " the exclusion from it of, for example, fruit was a
proper exclusion, and I relg~d that decision as indicating th~at there must be that limi'tat~on
applied to Ithe word "v~ndllbl}e" w~en tJh~ so-oaUe~ 1iu~:es. In. the G. E. C: case are being
50 applied, It is true Itlh1at an 'that particular instance ~he Jimitation was only In respect of the
application of rthe first rule, namely, the ~e which says that a ~ann;eT o.f mlan~aotufe
must result in the production of some vendible product; but, seemg that It WJaS In fact
a limitation of the "voodibi~ity", in my judgment it must necessarily apply, not only to,
the first b,ut to the second and tlhinl rules alike, and therefore the G. E. C. rUileis must
55 be applied agarin'Slt the bac~ground ofrthe limi\tation u1pon the scope of "vend1ible product "t
192

No. 10.] REPORTS OF PATENT, DESIGN, AND TRADE M[ARK CASES [Vol. LXXI.

In the Matter of an Application for a Patent by Alexander Lenard.

not only in respect of the exclusion of fruit and the like, but also in the llig;ht of the
subsequent considerations expressed by the present Master "Df the Rolls in other oases,
Attention must: be directed to tJhe industrial or commercial or trading character of tlhe
process alleged to be patentable, [If in a field of activity which can fairly be said to have
a manufacturing characteristic the alleged invention finds its place, fhis difficulty Wli:ll not S
normally present [ltse~. There may, no doubt, be borderline cases, but, in my judgment,
once the end product of an alleged invention is defined it becomes possible to consider
whether in the preparation or formulation of that end product a manner of manufacture
has been utilised.
Mr. Gratwick has urged that in th~s case tbe end product is the clove tree as improved, 10
that is to slay, as pruned and sprayed and thereby rendered resistant to or unaffected by
further outbreaks of disease, but I cannot hold this to have proceeded from a manner of
manufacture.

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Itt appears to be plain that a great advance may have been made in the culture of clove
trees-i-an advance which may welll result, not only in great prosperity in tJhe territory in 15
which clove trees are cultivated, brut also to all those persons in wade and commerce
who are aoncerned w~1Jh the distribution of cloves, It may be unfortunate that someone
who by the application of his ingenuity and ability has conferred this benefit upon the
world 'is unable to get the form of protection for his discovery which is afforded to persons
following other lines of development : but I sit here rto apply the Statute and, so IOf11Jg as 20
the law remains as ilt is at present, I Clan find no way of persuading myself that a
method of agricultural 0[' horticulrural treatment such as the~ present can fairly be said
to come within the present Patenes Act.
Accordingly, I must dismiss this appeal.

PATENTS ApPEAL TRIBUNAL. 25

Before MR. JUSTICE LLOYD-JACOB.

February 24th, 1954.

IN THE MATTER OF AN ApPLICATION FOR A PATENT BY N.V. PHILIPS'

GLOEILAMPENFABRIEKEN.

Patent-Manner of manufacture-Objection by the Examiner that plants and the methods 30

of growing them are not manners of manufacture-Application refused-Appeal to Patents
Appeal Tribunal-Appeal dismissed-Patents Act, 1949, Sec. 101.
Held: When one can isolate the alleged invention as a modification of the conditions
under which natural phenomena will pursue their inevitable course, it would be a misuse
of language to hold that that discloses a manner of manufacture. 35
Observed: The manner of manufacture has to be disclosed as an essential ingredient
of the invention itself and cannot satisfactorily be found in the means by which the invention
is exploited.
" Application No. 3128~/52 by P. G. was for .a pa~e-~~ for" In?IPDorv.em~l1lt'S in and relating
Ito methods of producing a new form of Poinsettia . A Poinsettia 1S a plant which is 40
natural lin the tropics, where it flowers under the prevailing conditions of high temperature
and light for 11 to 13 hours a day.