De Beers Industrial Diamond Division (Pty) Ltd v Ishizuka

• Jurisdiction: South Africa
• Judge: Nicholas J, Human J and Gordon J
• Judgment Date: 30 October 1979
• Court: Transvaal Provincial Division
• Citation: 1980 (2) SA 191 (T)

Nicholas J:

In March 1968 Mr Hiroshi Ishizuka of Japan made an application under No 68/1735 for a patent under international arrangement with H effective date 23 March 1967. The invention was then entitled 'A large sized high temperature high pressure apparatus'. In December 1969 Adamant Laboratories (Pty) Ltd gave notice of opposition to the grant of the patent on the grounds that the invention was obvious. There followed delays which were protracted even for a patent case, and the application was not heard until August 1978. By then the title of the invention had been amended to 'apparatus for producing high temperature and high pressure'; the name of the objector had been changed to De Beers Industrial Diamond Division (Pty) Ltd; and the notice of opposition had been amended so that the grounds of opposition

Nicholas J

were obviousness, anticipation, insufficiency and

'that the alleged invention, as set out in the claims, is not an invention as defined in the Act'.

A The matter was heard by FRANKLIN J sitting as Commissioner of Patents. He held that the objection of non-invention was not a competent ground of opposition in terms of s 23 (1) of the Patents Act 37 of 1952 which governed the application, and that the objector had failed to discharge the onus of proving any of the other grounds of objection. The learned B Judge accordingly granted the application for letters patent on South African Patent Application No 68/1735 and ordered the objector to pay the costs.

The objector noted an appeal against the whole of the judgment and the order. For the sake of convenience I shall in this judgment continue to C refer to the appellant as the objector and to the respondent either as Ishizuka or as the applicant.

In the first paragraph of the specification it is stated that:

'The present invention relates to apparatus for producing high temperature and high pressure and particularly relates to a large size apparatus for producing high temperature and high pressure.'

There follows a description of the prior art apparatus:

D 'As an apparatus for producing high temperature and high pressure to be used for the production of diamonds and for various high pressure experiments, there is already known an apparatus formed of opposed punches, a die, a reaction chamber defined between the punches and die and containing reaction materials, means for providing a relative motion between the punches and the die to compress the reaction materials and E gaskets provided between the punches and the die.

In such apparatus, for the means for providing a relative motion between the punches and the die to compress the reaction materials, there is usually used a piston and cylinder device.'

F (My italics. Reference will be made to the words italicised when I come to deal with the construction of claim 1.)

There is then a discussion of the deficiencies in the prior art apparatus:

'In such apparatus, when a pressure is applied by the device, the force generated will concentrate in an extremely limited area at the tip of each of the opposed punches and will compress the reaction materials placed in the reaction chamber defined between the punches and the die. Since a very high pressure is generated by thus concentrating the large load generated G by the press in such a small area if the centre line of the force generated by the device does not coincide with the centre line of the punches, die, reaction chamber and gasket or the respective centre lines of the punches and die do not coincide with each other, when a pressure is applied, an undesirable force will be applied to components of the apparatus and there will be a danger that the die will be misaligned from its desired position or break. Thus, when the centre lines of the punches H do not coincide with each other, the die held between the punches will incline more and more with the progress of the application of the pressure and, once in such state with only the piston and cylinder device acting, such inclination will not be able to be stopped nor corrected. When the inclination is large, unbalanced forces will act on the respective parts of the apparatus and, when the compressive strength of each member is exceeded, the member will break.

Further, the inclination will render non-uniform the thickness of the gasket sealing the pressure in the reaction chamber placed between the punches and die and will be likely to suddenly jet the reaction materials out of the reaction chamber through gaps thus formed since the materials in the reaction chamber are subjected to very high pressures from all directions.'

Nicholas J

The inventor then refers to known palliative measures for these deficiencies:

A 'Such inclination as is described above can be considerably improved usually by making the structure of the device stronger, increasing its rigidity, increasing the precision and strength of the sliding parts and precisely finishing the piston and cylinder. But each measure requires so many steps in the production that a high cost will be required.

It is known to make the centre line of the die coincide with the centre line of the punches by providing the die with a small guiding device but this cannot be said to be satisfactory.'

B This is followed by a formulation of the problem which awaited solution:

'Therefore, in order to establish conditions under which stable reaction at high temperature and high pressure can be continuously conducted, the apparatus should necessarily be operated in a correct posture maintaining the inclination of the die within a range where no forces or insufficient force will be produced to reduce the durability of the apparatus or break it.

C In the case of a large apparatus for producing high temperature and high pressure, the respective members will be large, and uniform large component of a super hard alloy to be mostly used for such type of apparatus will be difficult to produce and will not be easy to work. Thus it will be very difficult to obtain the same strength as in a small apparatus and the cost will be high.

However, in order to save labour to produce larger diamond crystals, it is necessary to make the apparatus large.

D Further, it is required to construct the device larger for such a large force capacity but enlargement of only the dimensions of the device components of the same type as used for smaller forces causes various problems in the selection of suitable materials and operation of the apparatus.'

He says that:

E 'As a result of making researches and experiments in view of the abovementioned various disadvantages, the present inventor has succeeded in obtaining a large apparatus for the production of high temperature and high pressure.'

Then comes the consistory clause:

'The present invention comprises an apparatus for producing high temperature and high pressure which apparatus comprises opposed punches, a F die, a reaction chamber which is defined between said punches and said die and is charged with reaction materials to be subject to high temperature and high pressure and means for providing relative motion between said punches and said die and to compress said reaction materials in the reaction chambers, characterized in that said punches, said die and said means are mounted in a frame body which is constructed by laminating a number of steel plates and in that at least two means for regulating the disposition of the die and maintaining its horizontality are provided for G the frame body. Preferably, a sealing element is provided between the punches and the die.'

He concludes by describing how his apparatus works.

Before turning to the grounds of objection, the first question to be determined is the proper construction of claim 1 of the patent in suit. (It was accepted by both parties that the other claims need not be considered.) Claim 1 reads as follows:

'1.

An apparatus for producing high temperature and high pressure which apparatus comprises opposed punches, a die, a reaction chamber which is defined between the said punch and said die and is charged with reaction materials to be subjected to high temperature and high pressure and means for providing relative motion between said punches and said die to compress said reaction materials in the reaction chamber, characterized in that said punches, said die and said means are mounted in a frame body which is constructed by laminating a number of steel plates and that at least two means for regulating the disposition of the die are provided to the frame body.'

The words which I have italicised are substantially identical with the

Nicholas J

words italicised in the description of the prior art apparatus in the body of the specification. What is claimed in claim 1 therefore is the prior art apparatus, described by reference to its separate integers, and two A additional features, namely, a laminated steel frame and at least two means for regulating the disposition of the die provided to the frame body.

Mr Kentridge, senior counsel for the objector, argued that the words italicised in claim 1 were merely a descriptive preamble and did not contain any of the essential integers in the claim. These were, he submitted, to be found in the characterizing portion, namely:

B 'Characterized in that said punches, said die and said means are mounted in a frame body which is constructed by laminating a number of steel plates, and that at least two means for regulating the disposition of the die are provided to the frame body.'

Not every feature referred to in a claim is necessarily an essential C integer of the claim. The claim may refer to a feature which is not claimed at all. See Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger Aktiengesellschaft 1960 (3) SA 747 (A) at 762H. The question of what is an essential integer is one of construction. See Gentiruco AG v Firestone SA (Pty) Ltd...