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Windsurfing International Inc v Tabur Marine (Great Britain) Ltd

Court of Appeal (Civil Division)

[1985] RPC 59

HEARING-DATES: 28, 29, 30 November 1983, 31 January 1984

31 January 1984

CATCHWORDS:
Patent -- Validity -- Obviousness -- Anticipation -- Amendment -- Practice -- Patent invalid by reason of
obviousness and anticipation -- Discretion to amend refused.
Patents Act 1949, sections 30, 32(1)(e), (f)

HEADNOTE:
The patent in suit claimed a wind-propelled vehicle having an unstayed spar connected through a universal joint
and a sail attached along one edge to the spar and held taut between a pair of arcuate booms mounted on the spar at one
end and joined together at the other (ie a Bermuda rig with a wishbone spar). The unstayed sail was used to steer the
vehicle and could be jettisoned in case of trouble.
In an action for infringement of the patent, the defendants counterclaimed for its revocation on the grounds that
what was claimed lacked novelty over a prior user by C and was obvious in view either of the prior user or of a printed
publication D.
D was an article entitled "Sailboarding -- Exciting New Water Sport" which described the same basic concept as
that of the patent but the sailboard had been fitted with a square-rigged sail.
The cited prior user had taken place some ten years before the date of the patent when C (then a 12-year old boy)
had built a sailboard and used it on an inlet near Hayling Island on summer weekends during two consecutive seasons.
The user was open and visible to anyone in the vicinity of the caravan site where the family stayed. C's sailboard
differed from what was claimed only in that the sail was held between a pair of booms which were straight when the
vehicle was at rest. However the evidence was that in use the booms were sufficiently flexible to assume an arcuate
shape.
In the Patents Court, Whitford J found the claims invalid as anticipated by the prior user and obvious in view of D
but he made no finding of obviousness based on the prior user. The plaintiffs then sought to amend by restricting their
claims specifically to a surfboard of the Californian type as shown in figure 1 of the drawings, but the judge concluded
that there was no scope for such an amendment and refused to allow it.
The plaintiffs appealed to the Court of Appeal against the findings of anticipation and obviousness and the refusal
to allow amendment. The defendants lodged a respondents' notice on the question of obviousness over the prior user.
On the question of obviousness, the defendants argued that it must be assumed from the mere fact of publication
that a skilled man would have been familiar with and interested in what was known. The plaintiffs contended that it was
necessary to show that a person interested in the field of the invention would have been likely to have come upon what
was known and to have appreciated its significance and utility. They argued that a man skilled in the art would have
dismissed D as describing a not very practical toy which it would not have been obvious to develop. They argued that
C's isolated user could not be relied upon for obviousness, as opposed to anticipation and that it was not an anticipation
because the booms were not arcuate at rest.
Held, dismissing the appeal and upholding the defendants' contentions on the respondents' notice:
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(1) The philosophy behind obviousness must take into account the same concept as anticipation, namely that it
would be wrong to prevent a man from doing something which was merely an obvious extension of what he had been
doing or what was known in the art before the priority date.
(2) It could not matter with regard to section 32(1)(e) that a prior user was non-commercial and of relatively short
duration if it was not accidental and was exposed to public view; there was no context for giving the words "having
regard to what was used" any different meaning for the purposes of sub-paragraph (f).
(3) The question of obviousness was not to be answered by looking with the benefit of hindsight at what was now
known and what had been known at the priority date and asking whether the former flowed naturally and obviously
from the latter, but by hypothesising what would have been obvious at the priority date to a person skilled in the art who
had access to what was known in the art at that date.
(4) The question to be answered was whether what had been claimed was obvious, not whether it would have
appeared commercially worthwhile to exploit.
(5) The man skilled in the art must be assumed to be sufficiently interested to address his mind to the subject and to
consider the practical application of the information which he was deemed to have.
(6) Answering the question on obviousness required four steps to be taken:
(i) identifying the inventive concept embodied in the patent;
(ii) imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at
the priority date;
(iii) identifying the differences if any between the matter cited and the alleged invention; and
(iv) deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps
which would have been obvious to the skilled man or whether they required any degree of invention.
(7) The inventive concept of the patent in suit was the free-sail concept.
(8) At the priority date anyone familiar with sailing craft would have known as part of his general knowledge the
difference between square and Bermuda rigs and the disadvantages of the former for maneouvrability. He would also
have been familiar with a wishbone boom.
(9) D was clearly relevant to the field to which the claims of the patent related. This was not a case where the prior
document was directed to a different problem. D disclosed the same inventive concept and the only difference of
substance was the use of a square rig held by a crossed spar and boom instead of a Bermuda rig held by a wishbone
boom.
(10) One did not have to assume that the skilled man would treat D as something which had a great commercial
future which he must bend every effort to develop and improve, but he must at least be assumed to appreciate and
understand the free-sail concept taught by D and to consider in the light of his knowledge and experience how the
vehicle described would work on the water.
(11) In the light of the evidence, the skilled man would have immediately recognised the disadvantages of the
square rig in D, and it would have been immediately obvious to him by applying his own general knowledge that these
disadvantages would disappear if the rig were changed to Bermuda. It would also have been obvious to him that this
change required the sail to be stretched by means of a wishbone boom.
(12) Any skilled adult who applied his mind to C's device would at once have seen it as obvious that the
unconventional and primitive split boom ought to be replaced by a wishbone boom.
(13) Anticipation by the prior user was established. A skilled man reading the specification would at once identify
what was described as "arcuate booms" as a wishbone boom, and C used what was clearly a primitive form of wishbone
boom. C's device would quite clearly have constituted an infringement of the patent if it had been manufactured in
1980 instead of 1958.
(14) If a patentee wished by amendment to support a claim to monopoly on some alternative basis, it was for him to
raise the point in the pleadings and adduce appropriate evidence for the purpose at the trial. It would be difficult to
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persuade the court, even in a strong case, that discretion could properly be exercised to adjourn the proceedings so that a
specialised inventive concept could be raised and investigated as the basis for a claim to monopoly.
(15) The plaintiffs' proposed amendment would be incapable of yielding a useful result. Given prior user of the
alleged invention in connection with a floating board, its use in connection with a surfboard would have been so entirely
obvious as clearly not to constitute a patentable invention.
(16) The effect of the proposed amendment would have been not simply to amend the specification but to turn it on
its head by elevating to the status of the essential component the one feature of the allegedly inventive combination
which was previously described in terms which made it entirely clear that it was non-essential. This would go well
beyond the scope of mere amendment; it would be putting forward an essentially different concept.

CASES-REF-TO:

Losh v Hague (1838) 1 WPC 202

Galloway v Bleaden (1839) 1 WPC 521
Carpenter v Smith (1841) 1 WPC 530
Stead v Williams (1843) 2 WPC 126
Siddell v Vickers, Sons & Co (1890) 7 RPC 292
Savage v DB Harris & Sons (1896) 13 RPC 364
Taylor's Patent (1896) 13 RPC 482
Gillette Safety Razor Co Ltd v Anglo-American Trading Co Ltd (1913) 30 RPC 465
Allmanna Svenska Elektriska A/B v The Burntisland Shipbuilding Co Ltd (1952) 69 RPC 63
Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346
The General Tire & Rubber Co v The Firestone & Rubber Co Ltd [1972] RPC 457
Bristol-Myers Co (Johnson's) Application [1975] RPC 127
Sandoz Ltd (Frei's) Application [1976] RPC 449
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.

INTRODUCTION:
This was an appeal by Windsurfing International Inc from an order made by Whitford J in the Patents Court on 7
April 1982 dismissing their action against Tabur Marine (Great Britain) Ltd for infringement of the plaintiffs' patent No
1258317 and ordering upon the defendants' counterclaim that the patent be revoked.
The facts are set out in the judgment of the Court of Appeal, Figure 1 of the drawings in the specification is
reproduced below, simplified by omission of reference numerals not mentioned in the judgment.
[See Diagram in original]

COUNSEL:
NR Pumfrey and Henry Carr for the plaintiffs (appellants); David Young QC and SJ Thorley for the defendants
(respondents).

PANEL: Oliver, O'Connor and Slade LJJ

JUDGMENTBY-1: OLIVER LJ

JUDGMENT-1:
OLIVER LJ, (reading the judgment of the court): The patent in suit ("the Schweitzer patent") relates to the basic
equipment employed in what has, in the past few years, become increasingly popular international sport, that of
windsurfing, but, on the face of it, it covers also a very much wider field, namely that of wind-propelled vehicles
generally. The plaintiffs, as their name suggests, are an American corporation and the patent in suit results from a
convention application with a priority date of 27 March 1968. The specification is headed "Wind-propelled Vehicle"
and the statement begins by defining the field of art to which the invention relates as including "the field of ships,
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particularly sailboats and iceboats, and field of land vehicles with sail propulsion". Sail propulsion, it continues (page 1
line 17):
"has been suggested as a motive means not only for boats and iceboats, but also for such watercraft as surfboards
and landcraft such as sleds ie generally any lightweight small craft. Typically, a sail is provided on a mast that is rigidly
secured to the craft in a vertical position and additionally the sail and mast can be entwined in a network of riggings and
control mechanisms".
It goes on to identify two problems, first that the effect of providing a sail on a normally sail-free vehicle such as a
surfboard is to "denature" the vehicle and convert it substantially into a sailboat and secondly that, when a sail is fitted
to a vehicle which does not have high roll stability, there is a danger of its being overturned by sudden or excessive
winds.
"A need therefore exists for safely providing wind-propulsion means for a vehicle not normally so equipped but
which means preserves the original ride and control characteristics of the vehicle."
The consistory clause, which is reproduced in claim 1 of the claims, is in these terms:
"In accordance with the present invention there is provided a wind-propelled vehicle comprising body means, an
unstayed spar connected to said body means through a joint which will provide universal-type movement of the spar in
the absence of support thereof by a user of the vehicle, a sail attached along one edge thereof to the spar, and a pair of
arcuate booms, first ends of the booms being connected together and laterally connected on said spar, second ends of the
booms being connected together and having means thereon connected to the sail such that said sail is held taut between
the booms."
The specification goes on to expand upon the method of connection of the spar to the body by means of a universal
joint to describe the purpose of the arcuate booms and to explain the method of operation of the invention. It is easier to
read the relevant passages in full than to summarise them. Starting from line 63 on page 1 the specification continues:
"In particular embodiments, the spar is connected to the vehicle body by means of a universal joint, ie a joint
having three axes of rotation.
"The pair of arcuate booms are provided laterally disposed on the spar to hold the sail taut and provide a hand hold
for the user.
"The invention can be used on water-craft, iceboats and landcraft. It can be used on small yachts, runabouts,
canoes, rowboats, and other such craft, but it most advantageously used on small and lightweight vehicles such as
surfboards, iceboats, and sleds. Leeboards can be provided for a water-craft of low roll stability such as a surfboard.
The term 'leeboard' used in the specification and claims is meant to include centre boards and dagger-boards, as these
terms are known to the sailing art, as well as other projections from the body of the craft, planar or otherwise, extending
into or onto the water for stabilization.
"The present invention allows essentially all of the steering and control to be accomplished through the sail, ie no
rudder or other steering mechanism is needed, although such need not be excluded. One may accelerate, turn and tack
merely by manipulating the sail. However, because the sail spar is free to move in any direction, the sail must be held
by the user with the user relying on his skill with the vehicle for balance. In the event of sudden or excessive winds, the
user need only release the sail and it will immediately fall in any direction, freeing the vehicle from the propulsive
force."
There follows a detailed description of a particular embodiment of the invention illustrated by drawings
accompanying the specification. There is no need to refer to these in detail -- the essential features of the embodiment
can be seen in Figure 1 which is described as
"a perspective view of a wind-propelled apparatus according to an embodiment of this invention, obtained by
modifying a surfboard with a sail, spar and booms therefor and leeboard".
What is illustrated is what we have been told is a conventional surfboard of the type known as a "Californian
surfboard" (10) fitted with a leeboard, and having mounted on its upper surface immediately above the leeboard and
approximately in the centre of the surfboard a block carrying a universal joint to which is attached a spar (12). Attached
to the spar by its leading edge is a triangular sail (14) which is held taut by two arcuate booms (16 and 18) connected
together at each end and connected at their forward ends to the spar.
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The method of operation is described at page 2 line 122 et seq as follows:

"In operation, the user stands on the top . . . of the surfboard 10 behind the point where the spar 12 is attached by
the universal joint . . . and grips one or the other of the booms 16 or 18. If he were going before the wind and wished to
make a turn, he would tilt the sail 14, forwardly and downwardly, thus applying the force of the wind to the nose of the
surfboard 10 and causing the board 10 to turn to the left or right depending on which side of the sail 14 was to
windward. On the other hand, if he wanted to tack, he would pull the sail 14 backwardly and downwardly to apply the
force of the wind to the rear of the board 10, causing the rear of the board 10 to move so as to come into the wind. As
he is into the wind, he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other
side and setting the sail 14 so that the wind captures it and the board 10 is then on its new course. The sail may be tilted
forward or backward for speed control.
"In the event that a sudden surge of wind threatens to capsize the surfboard 10, the user may merely release the sail
14 and it will fall free into the water, completely removing the danger. The sail 14 is provided at its spar 12 end with a
rope 106 so that the user can readily pull the sail 14 back into sailing position."
Turning now to the claims, claim 1 has already been read, and claims 2 to 6 inclusive are merely variants of claim 1
by the addition or subtraction of individual features. It is accepted that they must stand or fall with claim 1. Claim 7 is
the "picture claim":
"A wind-propelled vehicle substantially as hereinbefore described with reference to the accompanying drawings."
It merits separate mention because, although it was relied on in the pleadings as one of the claims alleged to have
been infringed by the defendants, and although it was distinctly challenged by the defendants in their pleadings, counsel
then appearing for the plaintiffs, in opening the case before the learned judge, disclaimed any allegation of infringement
of this claim so that, in the event, no evidence was directed to this particular embodiment as opposed to the general
concept embodied in claims 1 to 6.
That then is the specification and it starts, as it must, from the proposition which is acknowledged on page 1 (lines
13-26) that there is nothing whatever novel in the concept of sail propulsion, whether applied to land or to watercraft. It
is, therefore, important at the outset to isolate and identify what is the inventive concept for which the patentee is
claiming monopoly protection. Mr Young for the defendants describes it as 'the free-sail concept". Mr Pumfrey for the
plaintiffs on the other hand, says that it is the combination of the unstayed spar (ie "the free-sail concept"), the sail
attached to the spar along one edge, and the connected arcuate booms. In the sense that what is claimed in the claims is
protection for the combination of features described, Mr Pumfrey is, of course, right. As the learned judge observed at
page 7 of the transcript of his judgment:
". . . for present purposes it is sufficient to direct my attention to claim 1, a claim to a wind-propelled vehicle having
in combination the features I have already enumerated. Although the claims, other than claim 7, cover any wind-
propelled vehicle, the only wind-propelled vehicle which, as far as I can tell on the evidence, would be of interest to the
plaintiffs, certainly the only one which is apparently of interest to the defendants, is a surfboard carrying a sail, a type of
equipment apparently known today as a sailboard".
At the same time, the combination of the features of the triangular sail attached to the spar by its leading edge and
held taut by arcuate booms is not in itself a novel combination. It was one which was perfectly well known in the
sailing world well before the priority date. What renders the combination novel is simply a particular feature of the
spar, namely that it is not stayed but is free to move under the direct manual control of the user. That is the feature
which distinguishes the apparatus from other conventional sailing apparatus and which meets the two problems
postulated in the specification, namely that of "denaturing" the body on which the sail is mounted and that of
overturning in high winds. It cannot be expressed better than by adjoining the language of the learned judge when he
said (at page 6 of the transcript):
"The specification is disclosing the concept and method of constructing a wind-propelled craft carrying a sail which
is mounted on a mast free to move in any direction. In contrast with other vehicles with which the reader would be
familiar the reader is taught that the mast should not be rigidly secured on the craft but left free to move. It is this
freedom of movement which allows the user to control the course of the vehicle in the manner indicated, and indeed in
moments of difficulty allows him to let the sail fall so as to take away the propulsive force of the wind. Mast and sail
are supported by the user and moved by him so as to steer the craft either when he is running before the wind or when
he wants to tack".
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That is the essential teaching of the specification. Its attractiveness and utility as a means of transport may not be
immediately apparent, at any rate to those lacking a high degree of tolerance to immersion in cold water. The evidence
established, however, that sailboarding started to become a very popular aquatic sport during the mid-1970s although its
popularity in the United Kingdom lagged behind that which it acquired in warmer climates. The climatic obstacles,
however, were to a large extent overcome by the advent of the wet-suit and the establishment of sailboarding schools
with land simulators and a successful advertising campaign have ensured that sailboarding is now established as an
increasingly popular sport in this country and have resulted in a considerable commercial success for the plaintiffs and
their licensees.
The defendants having dealt in this country in sailboard equipment incorporating the features described in claim 1
of the specification, the plaintiffs commenced infringement proceedings. Predictably, the response was a defence and
counterclaim contesting the validity of the patent on various grounds, the material ones for present purposes being that
the alleged invention so far as claimed in each and every claim was not new or was obvious, in support of which the
defendants relied upon prior publication, prior use and prior common general knowledge.
The learned judge upheld the defendants' objections both on the ground of obviousness, having regard to the prior
publication referred to below, and also on the ground of anticipation by the user, before the priority date, of an apparatus
constructed by a Mr Chilvers who gave evidence at the trial. He made no finding of obviousness based upon this user
and that point forms the subject-matter of a respondents' notice.
It will be convenient to deal first with obviousness based based upon prior publication. The document relied upon
by the defendants here was an article by a Mr Darby entitled "Sailboarding: Exciting New Water Sport" which had first
appeared in an American publication, Popular Science Monthly, and which was reproduced in the United Kingdom in
October 1966 in a publication entitled Practical Hydrofoils produced by the Amateur Yacht Research Society and
circulated to its members who number some 600. That article described a sailboard with an unstayed sail attached to a
spar held by the user and inserted into a hollow socket in a mast step mounted on the sailboard. The mast step was
slotted immediately in front of the spar socket to carry a daggerboard. The basic concept, ie the use of an unstayed sail
which is used to steer the vehicle and which can be jettisoned in case of trouble, is the same concept as that in the patent
in suit. The principal differences are that the sail shown in the publication is a square sail actuated by the user standing
on the lee side of it with his back to the spar, and that, instead of the spar being attached to the vehicle by a moveable
joint, free movement is achieved by a socket from which the spar can be removed, the suggestion being that the sail
should be attached to the sailboard by a lanyard to prevent their drifting apart when the sail is jettisoned.
The first of these two differences is, Mr Pumfrey submits, crucial. The sail shown in the photographs and drawings
is a square sail which is attached by its ends longitudinally to an 11'6" spar and laterally to an 8'4" yard, the spar and
yard each being tapered at the tips so as to form a bow or arc holding the sail taut. What Darby teaches, he suggests, is
essentially confined to a vessel propelled by a sail of this configuration, ie a square-rigged vessel, and he refers, in
particular, to the manoeuvres which are figuratively described in the article (being manoeuvres appropriate to a square-
rigged vessel) and to the follow passages. On page 73 of the publication it is said:
"Learning to handle a sailboard is quite a change . . . because you have no rudder and must steer with the sail. You
also have to learn to handle what is really a square-rigged ship rather than a fore-and-aft Marconi rig like that on small
sailboats you have known."
It should be mentioned that "Marconi rig" is an alternative description of the triangular sail described in the patent
in suit, more commonly known as a Bermuda rig.
The other passage to which Mr Pumfrey draws attention is the narrative on page 74, under the illustration of the
basic sailing position, which reads:
"sailing positions are similar to those for any sailboat, but this one is a square-rigger, so the wind pushes it. You
steer by pivoting the mast in its socket, tilting sail".
The article goes on to describe how to build the sail and board, with diagrammatical illustrations, and concludes
with a statement that a limited number of completed sailboards and kits can be obtained from the author.
As regards the second difference noted above, the learned judge observed:
"The mast merely rests in position in the step, but is free to move in any direction. The article does however
suggest a more complex swivel step for advanced riders. That is a suggestion which we find in an illustration of the
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Darby sailboard at . . . page 75 of the article. Exactly what is intended is not known but the words used, to my mind at
least, plainly suggest some sort of universal joint."
Very little, if anything turned on this point in the argument before this court, Mr Pumfrey's principal attack being
upon the judge's approach to the first difference referred to. At page 14 of the transcript of his judgment, the learned
judge drew attention to this point. The illustration, he said,
"shows what I think Professor Bradfield (the second expert called by the plaintiffs) thought should more correctly
be described as a kite rig. The kite sail operates like a square sail and its mode of operation as compared with the
Marconi . . . can be appreciated by referring to Mr MacAlpine-Downie's primer, pages 1 to 4".
That document was an elementary guide to yachting, describing and illustrating sailing manoeuvres both with fore-
and-aft rig and square rig vessels.
"With the kite rig the wind is always on one side of the sail, so Mr Darby has only on arcuate boom, as we can see
from the illustration and from the drawing on page 75. His mast, it is to be observed, is also arcuate to allow for the
bellying out of the sail. The Darby article plainly discloses the freely moving mast, what Mr Young for the defendants
described as the free-sail concept. It discloses a rig that everybody was agreed . . . is not nearly as satisfactory a type of
rig as the Bermuda or fore-and-aft rig when you are sailing into the wind. It is an article which never seems to have
excited any interest in this country other than the interest of Mr Ellison, who was called by the defendants, but Mr
Ellison never in fact did anything about it. I do not know what interest it may have excited in the United of America,
where indeed, according to the article, kits for the manufacture of the Darby sailboards were on sale: but it is of no
significance what happened there."
The learned judge then postulated the question (which he answered in the negative):
"could there by any inventive step in substituting in Darby board a fore-and-aft rig for a kite sail or a square rig sail,
for if anyone decided to take this step it is I think on the face of it apparent, and indeed was confirmed in evidence by
Mr McAlpine-Downie, that you would need a pair of arcuate booms rather than one boom as you would be
contemplating operating with the wind working on either side of the sail".
The learned judge concluded:
"In my judgment, a substitution of this kind must be obvious. It was a step which, on their evidence, certainly
occurred to Mr McAlpine-Downie and Professor Bradfield. I do, however, have this very much in mind, that they were
individuals who could be described as highly skilled."
The plaintiffs challenge this conclusion. In the notice of appeal it is simply said that the judge's finding was
contrary to the weight of the evidence but Mr Pumfrey's submission to this court was rather more sophisticated than
might appear from that rather bald challenge. What Mr Pumfrey submits is that the learned judge went wrong in law in
that he started from a false assumption that he must consider Darby as a starting point from which improvements
required to be made and that he then applied to that assumption evidence which was in fact directed to answering a
question which, as a matter of law, did not arise. Both Mr Pumfrey and Mr Young have taken us with care and in
considerable detail through the evidence and it will be convenient to consider what this amounted to, before passing to
the question of whether the judge approached the question which he was required to answer in the right way and
whether the evidence in fact supported the conclusion at which he arrived.
The witnesses on this aspect of the matter were four in number. The plaintiffs called two extremely highly
qualified experts, Mr McAlpine-Downie and Professor Bradfield, the former being an extremely experienced and
successful designer of sailing craft, although without formal qualifications, and the latter a very highly qualified marine
engineer and an expert on advanced wind-powered water-craft. Evidence was given for the defendants by Mr IM
Nicholson, a naval architect and a partner in a very old established firm of yacht designers and surveyors, and Mr RM
Ellison, formerly an officer in the Merchant Navy and an experienced amateur yachtsman. Mr McAlpine-Downie had
not seen the Darby article in 1966 when it was published in this country and his evidence, like that of all the other
witnesses other than Mr Ellison, was therefore directed to a hypothetical reconstruction of what his reactions to it would
have been. He identified, however, only two differences between Darby and the patent in suit, one of principle and one
of degree, the latter being simply in the degree of sophistication of the design of the hull. The difference in principle he
identified as the square rig held behind the user in the Darby article as contrasted with the fore-and-aft rig held in front
of the user in the patent in suit. The former had disadvantages not present in the latter as regards both efficiency and
ease of handling, in that it produced only a poor approximation of an aerofoil and was likely to perform inefficiently
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upwind. Mr McAlpine-Downie was in an obvious difficulty in giving a reliable account of what he might have done to
improve or develop Darby because he thought that his reaction to it in 1966 would have been the same as his initial
reaction to the embodiment of the patent in suit, namely that it was no more than a beach novelty which he would not
have thought worth developing. If asked to make a more efficient craft of Darby, he would not have thought of
changing the rig but would have moved in the direction of securing it. He agreed, however, that postulating a desire to
make Darby safer and more efficient as a novelty or beach sport he would naturally go to a Bermuda rig and that, if one
was going to adopt a Bermuda rig, it would, at some stage, have become apparent that the practical way to do so would
be by the use of a split boom.
Professor Bradfield's view of Darby was similar to that of Mr McAlpine-Downie, in that he would not have
regarded it as a serious proposition meriting his interest. If he had been asked to develop it, he, too, thought that he
would have concentrated on improving its performance as a vehicle by staying the mast and providing a rudder,
although he accepted that the adoption of a different rig would have been a possibility.
Mr Nicolson though that, if he had seen Darby in 1966, he would have thought it a basically interesting design, but
one which required development by improving the rig and improving the shape of the hull. His evidence was that he
would have suggested a Bermuda rig in place of the kite sail and that, if such a rig were adopted, the use of a split or
"wishbone" boom, which had been familiar since the 1930s, would have been obvious.
Finally, Mr Ellison was the one witness who had actually read the Darby article at the time of its publication. His
evidence was that he had been excited by it but did not follow it up. If he had done so, he thought that he would have
built the board and sail according to instructions, but would not expect the kite rig to operate efficiently. Using only the
materials suggested in the article, the obvious thing to do in order to improve performance would be to fold the sail in
two and wrap it round the mast, holding it taut by a boom on either side.
That being, in summary, the evidence, it is Mr Pumfrey's submission that the learned judge reached the conclusion
that he did quite simply by asking himself the wrong question. He accepts that, to anyone skilled in the art and
contemplating the field of the patent in suit in 1968, Darby's article would be a relevant document, but, when
considering the patent in suit in the context of whether or not it was inventive, he submits that it cannot be assumed that
such a person would take Darby as his starting point and set about seeing whether he could make any improvements to
it. The instant case is not one of which it can be said that there was an existing problem for which the sailing-boat or
leisure industries had been searching for a solution, and Mr Pumfrey submits that the burden lies on the defendants to
show that Darby was a concept which a skilled man would have recognised as calling for development. Far from this
being the case, he suggests, in the evidence -- and, in particular, that of Mr McAlpine-Downie and Professor Bradfield
-- pointed in the opposite direction.
This submission discloses a fundamental difference between the appellants and the respondents as regards the
approach of the court to published information claimed to render an alleged invention obvious and it calls for some
analysis of a number of authorities in which the question has fallen to be considered. The instant case is concerned with
two sub-paragraphs of section 32(1) of the Patents Act 1949, sub-paragraphs (e) and (f), the terms of both of which need
to be borne in mind.
The grounds upon which a patent may be revoked under these sub-paragraphs are:
"(e) that the invention, so far as claimed in any claim of the complete specification, is not new having regard to
what was known or used, before the priority date of the claim, in the United Kingdom;
"(f) that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve
any inventive step having regard to what was known or used, before the priority date of the claim, in the United
Kingdom;"
Essentially what separates the plaintiffs and the defendants is the meaning to be ascribed to the words "having
regard to what was known" in sub-paragraph (f). Do they mean, in effect, as the defendants contend, "having regard to
what was available to be known and studied", so that familiarity with and interest in what was known may be assumed
from the mere fact of publication before the priority date? Or do they, as the plaintiffs contend, signify some more
precise and intimate acquaintanceship so as to impose upon the defendants an obligation to show a likelihood that a
person interested in the field of the invention would, in fact, have been likely to have come upon what was known and
appreciated its significance and utility?
 Page 9

The question to be decided when an objection is made on the ground of obviousness is, as Jenkins LJ observed in
Allmanna Svenska Elektriska A/B v The Burntisland Shipbuilding Co Ltd (1952) 69 RPC 63 at page 70:
"in the end of all . . . as it were a kind of jury question".
But it is one which has to be answered, not by looking with the benefit of hindsight at what is known now and what
was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by
hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit
relates, who is assumed to have access to what was known of the art in the United Kingdom immediately before the
priority date.
The hypothetical Skilled Man is, no doubt, (together with his cousins the Reasonable Man and the Officious
Bystander) a useful concept as setting a standard and, in the instant case, as providing the touchstone by which the
question of obviousness may be judged by the equally hypothetical Juror; but he must not be allowed to obscure the
nature of the inquiry which the words of the statute require, and one cannot help feeling that his image may lead to
confusion if one seeks to attribute to him human qualities either of constitutional idleness or of perception beyond the
knowledge and skill in the field in which he is hypothetically supposed to operate. It is accepted by the appellants that
the question of whether the alleged invention was obvious has to be answered objectively by reference to whether, at the
material time (that is, immediately, prior to the priority date), the allegedly inventive step or concept would have been
obvious to a skilled addressee, but Mr Pumfrey submits that, whilst one has to assume that Darby was within the
cognisance of the skilled man, one is not to assume that he has any interest in it. The burden, he suggests, lies upon the
defendants to show some reason why such an interest should be aroused. In support of this he relies upon the warning
voiced by Whitford J in Sandoz Ltd (Frei's) Application [1976] RPC 449 at 457, and upon the speech of Lord Reid (in
which Lord Morris concurred) in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC
346.
As regards the former, the particular passage to which he has drawn our attention is one in which Whitford J drew
attention to the dangers of too ready an assumption that the significance of existing published material in relation to the
problem dealt with by the patent in suit would necessarily be apparent to the hypothetical skilled man.
Without in any way seeking to detract from that valuable warning, we do not find it of much assistance or of much
relevance in the instant case, for it was pronounced in relation to an objection under section 14 and in a case where the
particular specification relied upon was in fact directed to a different, though not dissimilar, problem from that to which
the patent there in suit was directed. It does not seem to us that this can be of any real help in a case such as the present
where the document relied upon as the basis for the objection is so clearly relevant to the field to which the claims in the
patent in suit relate.
Mr Pumfrey's principal support, however, is derived from the speech of Lord Reid in the Technograph case at page
355 where he defines the characteristics of the hypothetical skilled man and where, after referring to the fact that, in
section 32(1)(e), the words "having regard to what was known" included matter which no-one ever knew in fact or was
likely to know, he observed:
"I think that in head (f) the words should have the more natural meaning of what was or ought to have been known
to a diligent searcher."
This view was not supported by Lord Diplock (see page 361), but Mr Pumfrey points out that it was concurred in
by Lord Morris. Mr Pumfrey accepts that this was, in any event, obiter, but adopts it as justifying a more restricted
approach to the extent of the knowledge to be imputed to the hypothetical skilled man than that which would be
appropriate to a case of anticipation under head (e). Essentially, his argument is that, although he accepts Darby as a
relevant document which would be assumed to be within the knowledge of the skilled man, nevertheless, when
considering whether the patent in suit is an obvious development, one has to consider what a person confronted with
Darby in 1966 would actually have done. If, he suggests, there was then no reason for considering Darby to be of any
interest, the improvement of Darby, even by what might be considered mere workshop trial and error, would not have
been obvious.
Now, even assuming this to be a correct approach, it is not, in our judgment, one which derives any support from
the dictum of Lord Reid referred to above nor, we think, does Mr Pumfrey so suggest, for, as has been mentioned, he
accepts Darby as a relevant document within the knowledge of the skilled man. What he challenges, or what we
understand him to challenge, is that Darby would have led to any further inquiry at all, even of a routine workshop kind.
 Page 10

If and so far as it is necessary to express a preference for the two obiter views expressed in Technograph, we would
respectfully favour that of Lord Diplock, for we find it difficult to see any context for reading the same words in the two
sub-paragraphs in different senses.
But, in fact, even accepting Lord Reid's more restricted reading of the sub-paragraph, one inevitably arrives, as it
seems to us, at the conclusion that Darby is a document which must be taken into consideration by the hypothetical
skilled man and we do not find that Lord Reid's formulation assists in determining what the skilled man would have
done with it. He does, it is true, go on to describe -- and, it is common ground, rightly to describe -- the hypothetical
skilled man as "unimaginative" but he describes him as being "well acquainted with workshop technique" and as having
"carefully read the relevant literature". What Mr Pumfrey's refinement on this seeks to suggest is not only that the
skilled man, who is to set the standard, is uninventive but that, in the absence of some evidence to the contrary, he is
uninterested; and that is, in our judgment, a view which obscures the real question that has to be answered and which is
not supported in authority. What has to be determined is whether what is now claimed as inventive would have been
obvious, not whether it would have appeared commercially worthwhile to exploit it.
Thus the test as formulated by Lord Herschell in Siddell v Vickers, Sons & Co Ltd (1890) 7 RPC 292 at 304 was
whether what is claimed is
". . . so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing
the end . . .".
Similarly, Lopes LJ in Savage v DB Harris & Sons (1897) 13 RPC 364 at 370 observed:
"The material question to be considered in a case like this is, whether the alleged discovery lies so much out of the
track of what was known before as not naturally to suggest itself to a person thinking on the subject. . ."
The same approach -- namely that one has to assume a man skilled in the relevant art who is at least sufficiently
interested to address his mind to the subject and to consider the practical application of the information which he is
deemed to have -- appears to us to emerge from the judgment of Sachs LJ in The General Tire & Rubber Co v The
Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 497 when he said:
"When head (f) is invoked it is, of course . . . for whoever seeks revocation of a patent to show that the alleged
inventive step was obvious to a normally skilled addressee in the art. On the way to that end there are here a number of
preliminary questions to be resolved. These include the common general knowledge to be imputed to that addressee;
whether what had to be done to achieve the step was truly a matter of inventive experiment or merely a matter of that
type of trial and error which forms part of the normal industrial function of such an addressee; what documents he
would find in the course of such researches as he would be expected to make; and how he would regard those
documents in the light of common general knowledge."
In summary, Mr Pumfrey's submission is that in 1966 nobody would have considered Darby as more than a beach
novelty (which was the reaction of Mr McAlpine-Downie and Professor Bradfield) and that, therefore, nobody would in
fact have been interested in doing anything more than, perhaps, building it and playing with it. Thus, the argument
proceeds, there would not have been any reason for developing Darby and hence no development, even of a routine
nature, would have been obvious or even have occurred to the skilled man, who would merely have dismissed Darby as
a not very practical toy. It is from this foundation that he goes on to submit that the learned judge asked himself the
wrong question and wrongly accepted as evidence of what was obvious the evidence of witnesses as to how Darby
might have been improved, for, in suggesting improvements to or embellishments upon that which called for no
improvement or embellishment, they were doing so in response to an invitation to treat Darby as a springboard to
further development and invention and were in fact suggesting inventive steps.
We have not felt able to accept Mr Pumfrey's submissions. There are, we think, four steps which require to be
taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit.
Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the
priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third
step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged
invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those
differences constitute steps which would have been obvious to the skilled man or whether they require any degree of
invention. As regards the first step, we respectfully agree with the learned judge that the inventive concept of the patent
is the free-sail concept. It is that which constitutes the essential difference between the patent in suit and other
 Page 11

conventional vehicles propelled by sail. Going back, then, to the priority date, anyone familiar with sailing and sailing
craft would then have known, as part of his general knowledge, the difference between square sail and Bermuda rigs
and the disadvantages as regards manoevrability presented by the former. He would also have been familiar with twin
booms arcuate in shape known as "wishbone" booms which, though not in wide use in the 1960s, were well known to
anyone interested in constructing light craft. Darby's article was addressed initially to the knowledgeable handyman for
whom the American journal Popular Science Monthly (in which it first appeared) was designed and, so far as the
publication in this country was concerned, was directed to members of a society dedicated to amateur research into
yachts. It in fact disclosed, and disclosed to persons knowledgeable in the art, the self-same inventive step claimed by
the patent in suit, the only difference of any substance being the use of the kite rig held by the crossed spar and boom
instead of a Bermuda rig with a wishbone boom. We agree, of course, that one must not assume that the skilled man,
casting his experienced eye over Darby, would at once be fired with the knowledge that here was something which had
a great commercial future which he must bend every effort to develop and improve, but he must at least be assumed to
appreciate and understand the free-sail concept taught by Darby and to consider, in the light of his knowledge and
experience, whether it will work and how it will work. In the light of the evidence, it seems to us inescapable that
anyone skilled in the art and contemplating Darby's article in 1966 would immediately recognise, as the witnesses did,
that the kite rig suggested for this very simple and elementary device would suffer from the disadvantages that it would
perform poorly upwind and would require to be manipulated from the lee side of the sail. It does not, in our judgment,
require the attribution to the skilled addressee of any inventive faculty to say that, if he applied his mind to it at all, it
would be immediately obvious to him that these disadvantages would disappear if the rig were changed to Bermuda, a
change which, as would also be obvious to him, required the sail to be stretched by means of a wishbone boom. It may
well be that nobody in the United Kingdom at that time would have considered that there was a commercial future in
this interesting beach novelty, but that is not as we conceive the question which has to be answered. One has, in our
judgment, to postulate a person who comes to Darby knowing of the advantages of a Bermuda rig over a square rig and
who is at least sufficiently interested to read the article and consider how the vehicle described would work on the
water. All the evidence suggests that such a person would immediately see, by application of his own general
knowledge, the adoption of a Bermuda rig as an obvious way of improving the performance of the Darby vehicle.
We do not find an answer to this in the two forensic questions which Mr Pumfrey poses, namely, why, if it was
obvious that a fore-and-aft rig would perform better, did Darby himself (who clearly knew about such rigs) not suggest
it and why, so far as the evidence shows, did no development of Darby take place in the United States? As to the
former, there was, so far as we are aware, no evidence as to Mr Darby's qualifications or experience, but in any event
the answer is, we think, to be found in Mr Nicolson's evidence that, in his view, Darby was merely directing himself to
constructing the simplest possible design both as regards hull and rig. As to the latter, there was no evidence either way
as to whether or not Darby was taken up or developed in the United States. No doubt, if the defendants had produced
evidence that Darby's article excited great interest in the United States and that the kite rig was immediately replaced
with a Bermuda rig, that would have reinforced their arguments on obviousness, but we do not think that it can be right
to treat the lack of such evidence as detracting from the argument and as leading to the necessary conclusion that there
was no interest and no development.
We are, therefore unable to accept Mr Pumfrey's criticism that the learned judge was wrong in saying that what
happened in the United States was of no significance. Nor do we think that he can be legitimately criticised for his
approach to the evidence. He had, as appears from his judgment, well in mind that he had, in Mr McAlpine-Downie
and Professor Bradfield, witnesses who were very highly qualified and for this reason he cautiously sought confirmation
from other evidence (namely that of Mr Chilvers) that the degree of percipience which their evidence showed in relation
to Darby was not beyond that which the ordinarily skilled man might properly be assumed to possess. It does not
appear to us that the questions which they were asked involved the application to Darby of any inventive faculty. In our
judgment, the learned judge did not make any wrong assumption. He asked himself the right questions and gave the
right answers.
Subject to a point raised in the Notice of Appeal as regards amendment of the specification, that is sufficient to
dispose of the appeal but, in deference to the very full arguments addressed to us, we ought to deal with the other two
points raised by the defendants, one of which formed the primary ground for the learned judge's decision. These relate
to the evidence of Mr Chilvers, whose evidence was that, in 1958 when he was 12 years old, he had made a sailboard
which he had used for sailing in an inlet at Hayling Island on summer weekends during two consecutive seasons. There
is no doubt that that user was in public in the sense that it was open and visible to anyone in the vicinity of the caravan
site at Hayling Island where the family stayed, and it was relied upon by the defendants to support objections based both
 Page 12

on anticipation and obviousness. Mr Chilvers' device and its relation to the patent in suit cannot be better described
than by adopting the following extract from the judgment of the learned judge:
"He was able to sail it both before the wind and into the wind, indeed on a triangular course. The Peter Chilvers
board is illustrated at page 444 of volume 5. This was a first rough sketch which was prepared to indicate what the
nature of the Chilvers board was. At page 21 of bundle 1 there is a perhaps more accurate representation. It is
particularly I think possibly more accurate in the indication it gives as to the height of the booms which Peter Chilvers
held at about shoulder level. If one looks at the illustration, at page 21 of bundle 1, one can see the board which consists
of a hull, there is a daggerboard, and as illustrated there is a rudder with a tiller. There is a mast which is mounted upon
a crude type of universal joint -- these were, I understand, two hooks which were pressed together so that the mast was
held in such a manner that it could be moved in any direction. The sail is attached down the leading edge to the mast
and it is held at the far end between two booms which extend across to the mast, to which they are lashed in a somewhat
crude way. These are not as shown in his drawing arcuate booms. Originally, Peter Chilvers told me, he envisaged
steering the craft by means of the rudder but he ascertained in practice that he could steer it by movement of the sail.
He cut off most of the tiller and nailed the rudder down.
"Mr Jacob, having accepted that the evidence plainly established a prior public use, further very properly accepted
that the Peter Chilvers sailboard had all the features of claim 1 other than, on the face of the drawing provided, a pair of
arcuate booms. As I have said, there is a pair of booms. They are straight as we see them in the illustration. They hold
the sail taut and provide, and this was the purpose for which they were used by Peter Chilvers, a handhold for the user.
They are not arcuate booms when the vehicle is at rest. In use Peter Chilvers gripped the boom on the windward side of
the craft on which he would be standing. Depending upon the strength of the wind he was able to lean into the wind to
a certain extent. The wind held the sail taut against the boom to leeward. Peter Chilvers in fact by holding on to the
boom and leaning out would cause the boom to bend, the wind in the sail would cause the unheld boom to bend in the
opposite direction. His evidence as to what happened in practice is confirmed by Mr McAlpine-Downie's expectations
as to how the board would operate in use."
Now, it is clear from that description that the Chilvers sailboard constituted, beyond argument, an anticipation of
the patent in suit save for one point, namely the arcuate booms employed in the Schweitzer patent, for it embodies every
other feature of the alleged invention. The defendants pray it in aid as an anticipation but they also sought to rely upon
it as something which was "used in the United Kingdom" within sub-paragraph (f) and thus as the foundation for an
argument that, quite apart from Darby, the alleged invention was obvious. In the light of the view which he took that
the Chilvers sailboard was an anticipation and that the Schweitzer patent was obvious having regard to Darby, the
learned judge found it unnecessary to determine this point, merely contenting himself with observing that interesting
questions might arise as to the extent to which a use of this kind, ten years before the date of the patent, ought in any
event to be allowed to form a satisfactory basis for an attack on the ground of obviousness. Assuming, for the moment,
that the learned judge was wrong in concluding that Chilvers was an anticipation of the Schweitzer patent, the limited
and fairly distant use of the Chilvers board appears indeed to constitute the only ground upon which the attack on the
ground of obviousness could be resisted. The arcuate booms form the only feature of the Schweitzer patent which
differs in any material respect from the Chilvers board and, although their substitution may not have been immediately
apparent to a 12 year old boy -- all other considerations apart they would be more difficult to manufacture -- anybody
with a reasonable degree of sailing knowledge, looking at the Chilvers board, must at once have seen that the perfectly
well known device of a wishbone boom would be an obvious substitute for the primitive split boom actually employed.
The real question is how far Peter Chilvers' relatively isolated user of his device -- albeit carried out publicly -- can
be relied on in support of a case of obviousness as opposed to anticipation. Mr Pumfrey submits that it cannot be relied
upon at all -- it was, he suggests, a "freak" use which no man skilled in the art would have considered for one moment
as seriously meriting his attention, let alone any development. It is, he submits, contrary to commonsense that a patent
which has resulted in a considerable commercial success over the past ten years should be invalidated as the result of
the use, years ago and on a comparatively obscure holiday beach, of a primitive plaything put together by an
adventurous youth.
We do not see why such a notion should be repulsive to commonsense. If Peter Chilvers had adopted, as part of his
device, the conventional wishbone boom in place of the more primitive straight split boom which he in fact used, it
would, we should have thought, have been quite unarguable that this would not have been an anticipation under sub-
paragraph (e), for the notion behind anticipation is, as we understand it, that it would be wrong to enable the patentee to
prevent a man from doing what he has lawfully done before the patent was granted. No doubt, the philosophy behind
 Page 13

sub-paragraph (f) is different to this extent, that a patent is granted only for an invention and that which is obvious is not
inventive, but it also must, we think, take into account the same concept as anticipation, namely that it would be wrong
to prevent a man from doing something which is merely an obvious extension of what he has been doing or of what was
known in the art before the priority date of the patent granted. This emerges perhaps most clearly from the following
passages from the speech of Lord Moulton in Gillette Safety Razor Co Ltd v Anglo-American Trading Co Ltd (1913) 30
RPC 465 at 480:
"But he" -- a prior inventor -- "has shown the world how to make a safety razor by clamping a blade in the way
which I have described . . . The knowledge so communicated applies to blades of any section. After the public has been
shown how thus to clamp a blade, one cannot make a novel invention by saying that, instead of clamping a thick blade,
one will clamp a thin one . . . If the claims of such a patent were so wide as to include it, the patent would be bad,
because it would include something which differed by no patentable difference from that which was already in
possession of the public. Such a patent would be bad for want of novelty . . . from the point of view of the public it is
important that this method of viewing their rights should not be overlooked. In practical life it is often the only
safeguard to the manufacturer. It is impossible for an ordinary member of the public to keep watch on all the numerous
patents which are taken out and to ascertain the validity and scope of their claims. But he is entitled to feel secure if he
knows that that which he is doing differs from that which has been done of old only in non-patentable variations, such
as the substitution of mechanical equivalents or changes of material shape or size."
Mr Chilvers, of course, and, indeed, any of the persons who witnessed or copied his aquatic feats, are members of
the public and one asks then on what principle should such persons, who clearly cannot be prevented from doing exactly
that which they did before, be prevented from doing that which is no more than an obvious variant of what they did
before?
It is, of course, perfectly true that the user proved was relatively short, extending over two summer seasons, that it
can, of its nature, have had only a limited audience, and that there is no evidence that it excited anything more than mild
amusement in those who witnessed it. But it was certainly not secret and it was not accidental. Mr Chilvers knew
perfectly well what he was doing and he was doing it to achieve exactly the same result as the patent in suit (see the
speech of Lord Reid in Bristol-Myers Co (Johnson's) Application [1975] RPC 127 at 141 lines 1-15). Nor can it matter
that the user was of relatively short duration. In his speech in Bristol-Myers (at pages 144-5), Lord Morris recognised
that it was possible to conceive of circumstances in which prior user was so trivial as to be capable of being disregarded,
but said that he could find no warrant either in reason or in authority for the contention that what amounts to a user is
not to be so regarded if it is "merely temporary"; and Lord Diplock (at page 159) observed that:
"it is, at any rate by now, clear law that prior use which defeats a patent, need not be habitual -- one single instance
is enough . . ."
Nor can it be said that Mr Chilvers were merely carrying out an uncompleted experiment (as postulated in the
summing-up in Galloway v Bleaden (1839) 1 WPC 521 at 525). No doubt the craft was initially experimental in the
sense that it had not been done before, but Mr Chilvers in fact worked it and used it for two seasons for the recreational
purpose for which it was constructed. It cannot legitimately be objected that his user was simply recreational and non-
commercial. The purpose, indeed, of the patentee's embodiment is recreational and the commercial success of the
product has been achieved by popularising the recreation; and it is clearly established that non-commercial user for the
private purpose of the user is sufficient to found an objection based on prior user, so long as the user is overt, in the
sense of being exposed to public view: Stead v Williams (1843) 2 WPC 126, Carpenter v Smith (1841) 1 WPC 530,
Taylor's Patent (1896) 13 RPC 482. The user, Lord Diplock observed in Bristol-Myers (at page 159) need not be for the
purposes of trade "if it is use from which the user derives a practical benefit". Finally, it is no objection that the user
excited no interest and created no public demand (Losh v Hague (1838) 1 WPC 202 at 205). In our judgment, Mr
Chilvers' user is clearly user to which regard must be had under sub-paragraph (e) and we can see no context for giving
the words "having regard to what was used" any different meaning for the purposes of sub-paragraph (f). "A man
cannot be said to be the inventor of that which has been exposed to public view and which he might have had access to
if he had thought fit" (Carpenter v Smith) (1841) 1 WPC 530 at 536 per Lord Abinger CB).
If that be right, then one asks "upon what ground could it be said that the substitution of a wishbone boom was not
obvious?" Only, we think, upon the ground that the hypothetical skilled man in 1958 would have been so uninterested in
this child's plaything that he would not have applied his mind to the matter at all for, on the evidence, it is, we think,
clear that any skilled adult who applied his mind to Chilvers' device would at once have seen it as obvious that the
 Page 14

unconventional and primitive split boom devised by Chilvers ought to be replaced by the conventional wishbone boom
which, even though not in everyday use, would then have been familiar to anyone skilled in yachtbuilding.
As already mentioned, one has, in our judgment, to postulate a skilled man who is applying his mind to making
what he sees work, and accordingly we hold that the Schweitzer patent was obvious having regard not only to Darby but
also to Chilvers. That conclusion renders it strictly unnecessary to consider the primary ground of anticipation upon
which the learned judge decided the case in the defendants' favour. Nevertheless, in deference to the arguments
addressed to us we ought to express a view.
As mentioned already, the only feature which, in substance, distinguishes claims 1 to 6 from Chilvers is the use of
the arcuate booms or wishbone boom. The purpose served by those booms in relation to the alleged invention is
described in lines 67 to 70 on page 1 of the specification as "to hold the sailt taut and provide a handhold for the user".
If their purpose is thus limited, it is clear that they are merely an alternative means of achieving exactly the same result
as the two connected straight booms used by Chilvers. What is said by the plaintiffs, however, is that, if one studies the
specification carefully, it will be seen that there is a further purpose served by the arcuate booms not comprehended in
the passage to which reference has been made and not encompassed by the Chilvers boom. On page 3 of the
specification there is a description of how the user can perform the operation of tacking, in the course of which it is said
(lines 9 to 14):
"he may complete the tack by merely walking in front of the sail 14, grasping the boom on the other side and
setting the sail 14 so that the wind captures it".
In the course of his evidence Mr McAlpine-Downie drew attention to the importance of the sail being properly
"set" so that it assumes an aerofoil shape. He said:
"The basic premise, that you want a sail which sets as an aerofoil, one cannot argue with. The assumption of the
wishbone is the best way of getting it."
Thus, the argument proceeds, the specification as a matter of construction prescribes the arcuate booms not only for
the purpose of holding the sail taut and providing a handhold (which could equally well be served by a pair of straight
booms so connected as to leave sufficient room for a handhold) but also for the purpose of giving the sail room to belly
and so be properly set in an aerofoil shape. Otherwise, the argument proceeds, there is really no sensible meaning given
to the word "arcuate" and the specification might just as well have specified merely a pair of connected booms. Now
the evidence was that, when in use, booms of the Chilvers craft were sufficiently flexible to assume, to some extent, an
arcuate shape, although Mr McAlpine-Downie did not think that the bowing would be particularly large. He agreed,
however, that the effect would be to start to return the sail to a "reasonably fair shape". Thus, if and so far as the arcuate
booms in the specification are designed to achieve this purpose, which depends upon the degree of curvature of the arc,
the Chilvers design achieved, albeit perhaps to a very limited extent, the same purpose by becoming arcuate in use.
The learned judge observed that the extent of the freedom of the sail to assume a perfect aerofoil shape would
necessarily depend on the nature and curvature of the booms and continued:
"But this of course is not a matter which forms any part of the disclosure or the claims of the specification. All the
arcuate booms have to do is to hold the sail taut and provide a handhold for the user. There is in fact a reference in the
document to a boom arcuate in shape which could properly be described as a wishbone boom: it has to be arcuate, it has
to bow out on both sides, and quite plainly, so far as any question of achievement of effect is concerned, it has got to do
that when the craft is sailing . . . Claim 1 of the patent is not concerned with arcuate booms so shaped that the sail will
take up an aerofoil shape: it requires no more than a pair of arcuate booms which hold the sail taut, as stated, and which
provide a grip for the user in use. It is quite plain on the evidence that the Peter Chilvers boom would have taken an
arcuate form. The craft when sailing would fall within claim 1, and indeed within the remainder of claims 2 to 6. If this
be right, then in our view anticipation by prior public use is plainly established."
The plaintiffs submit that, in saying this, the judge failed properly to construe the specification purposively in
accordance with the recent decision of the House of Lords in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC
183.
The difficulty that we feel about this, however, is that, if one is to give a purposive construction to the word
"arcuate" in the specification, then the only useful purpose that one can conceive is that envisaged by the learned judge,
and that leads, as it seems to us, to the conclusion that the only significance of "arcuate" is that the booms shall be
arcuate in use, which leads in turn to the conclusion as to anticipation at which the learned judge arrived. The plaintiffs'
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argument has, therefore, to be for what might more properly be described as a "non-purposive" construction, a
construction which would involve the conclusion that the booms have to be arcuate at rest and that it is this feature
which prevents Chilvers from being an anticipation of the patent in suit, for his booms were straight at rest and not
arcuate. But then one has to ask: What purpose does the arcuate nature of the booms serve when the article is not in
use? There is no specification of the degree of curvature and there is nothing to indicate why, on this footing, the word
"arcuate" is in the least material to the claim, save as indicating the use of a wishbone boom. In their evidence, both Mr
McAlpine-Downie and Mr Nicolson appeared to agree that the Chilvers boom was in fact a primitive form of wishbone
boom. Thus it seems to us that the plaintiffs are faced with the dilemma that if "arcuate" means "arcuate at rest", it is
immaterial and achieves nothing beyond the stated purposes on page 1 of the specification -- purposes which would be
achieved by any split boom -- or it means "arcuate in use" and signifies no more than a pair of booms so constructed as
to permit the sail to assume a more or less aerofoil shape according to the distance allowed in manufacture and the
flexibility of the material used -- a purpose achieved, although perhaps not very effectively achieved, by the Chilvers
boom. One has to bear in mind always Lord Diplock's statement of principle in Catnic at pages 242-243 of the report:
". . . a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to
those likely to have a practical interest in the subject matter of his invention (ie 'skilled in the art'), by which he informs
them what he claims to be the essential features of the new product or process for which the letters patent grant him a
monopoly. In those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of
the claim. A patent specification should be given a purposive construction . . . The question in each case is: whether
persons with practical knowledge and experience of the kind of work in which the invention was intended to be used,
would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended
by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly
claimed, even though it could have no material effect upon the way the invention worked."
Judging the patent in suit by this test, we are clearly of the opinion that the learned judge was right in the
conclusion to which he came. It is, in our judgment, beyond doubt that a skilled man reading the specification would at
once identify what was described as "arcuate booms" as a wishbone boom. Chilvers used what was clearly a primitive
form of wishbone boom and, if he had manufactured his article in 1980 instead of 1958, it would, in our judgment, quite
clearly have constituted an infringement of the plaintiffs' patent.
Even if, however, the reference in the specification to arcuate booms has the effect of preventing Chilvers from
being strictly an anticipation, the defendants are, in our judgment, entitled to succeed under their respondents' notice on
the ground of obviousness for the reasons already given.
The final matter requiring consideration is the plaintiffs' challenge to the exercise by the learned judge of his
discretion to permit the plaintiffs to amend their specification pursuant to section 30 of the Act of 1949. What occurred
at the trial was that, after judgment, Mr Jacob, who was then appearing for the plaintiffs, asked for the order revoking
the patent to be suspended pending consideration of an amendment to the specification, the nature of which is briefly
considered below. After a short discussion, in the course of which the judge invited Mr Jacob to proceed with his
application for amendment there and then, he said that he could see no scope for amendment and the order as
subsequently drawn recorded that "this Court doth not think fit to give leave to the plaintiffs to amend the complete
specification".
The plaintiffs submit that this was quite wrong. What should have happened was that the order should have been
suspended and the matter adjourned for the proper steps to be taken to make any appropriate amendments, join any
interested parties, and have the amended specification considered on its merits. Such an application might not have
succeeded but at least, it is argued, the plaintiffs should have been given the opportunity to try. If the judge had been
persuaded that there was any scope for a possible amendment which might save any part of the patent, we are disposed
to think that that might have been the proper course and it is Mr Pumfrey's submission that that is the course which this
court ought now to take, remitting the matter back to the judge for consideration of the proposed amendments. What is
said is that, so far as anticipation goes, that could be overcome by a disclaimer of the Chilvers device which would
make it clear that anything constructed precisely in accordance with Chilvers would not constitute an infringement.
Indeed, Mr Young does not contest that, if the matter rested solely on anticipation by Chilvers, that might be the proper
course to take. But it did not. It rested in the court below also on obviousness from Darby, and it rests in this court on
obviousness from both Darby and Chilvers. What amendment, Mr Young asks forensically, could now possibly be
made which would disclaim Chilvers and yet leave anything at all in the claims capable of salvage? What is suggested
as a possible amendment is this. Claims 1 to 6 are directed to a device applying the free-sail concept, putting it in broad
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terms, to any vehicle, and although that may fail for obviousness and anticipation, yet nevertheless there is an element
of novelty in applying it specifically to a surfboard (as opposed to a simple board) and specifically to a surfboard of the
California type shown in the specific embodiment depicted in claim 7. Therefore, it is argued, the plaintiffs ought to be
given the opportunity to amend by restricting their claims specifically to surfboards and to the specific claim 7
embodiment, the judge having wrongly concluded that there was no scope for such an amendment on a wrong principle.
We are unable to accept this.
In the first place, as Mr Young has pointed out, it was for the plaintiffs, if they wished to support their claim to
monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial.
In fact, however, no-one, from first to last, advanced or considered the specialised qualities of a surfboard as an
inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as
the basis for the claim to monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of the most
important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence
on an issue never previously suggested either in the specification or in the pleadings. We would require considerable
persuasion that the imposition upon a successful defendant of such a manifestly inconvenient and oppressive course
would be a proper exercise of discretion even in an otherwise strong case. But, if it is to be justified at all, there must at
least be ground for some degree of confidence that such an exercise is capable of yielding a useful result and that, in our
judgment, is conspicuously lacking here.
The whole emphasis of the specification and the claims is upon a device for applying the free-sail concept to any
type of vehicle and the one thing that is quite clearly not treated as of any importance is the type of body to which the
invention is to be applied. Quite apart from the fact that, given prior user of the alleged invention in connection with a
floating board, its use in connection with a surfboard would, we should have thought, have been so entirely obvious as
clearly not to constitute a patentable invention, the effect of the proposed amendment is not simply to amend the
specification but to turn it on its head, by elevating to the status of the essential component the one feature of the
allegedly inventive combination which was previously described in terms which make it entirely clear that it is non-
essential. What was previously put forward as the novelty of a free-sail rig to be fitted to any sort of body is now to
become the novelty of a particular type of body to be fitted with a free-sail rig. That seems to us to go well beyond the
scope of mere amendment and to be putting forward an essentially different concept. We agree, therefore, with the
learned judge. We likewise do not see any scope, in the light of the conclusions to which we have come, for any useful
amendment which could salvage anything for the patentees. We refuse the opportunity to amend which the plaintiffs
seek and dismiss the appeal.

DISPOSITION:
Appeal dismissed with costs, those costs to include the respondents' notice. Leave to appeal to the House of Lords
refused.

SOLICITORS:
SJ Berwin & Co; Bird & Bird