respondent (Firestone SA (Pty) Ltd), the alleged infringer of the patent in suit, the judgment of the court (delivered
by Trollip JA) stated the following (at 631CD):
"Mr van Reenen, for Firestone, relied on authorities to show that claiming a process, machine, etc., 'for' or 'suitable for' a
particular purpose is usually ineffective, since the inventor's purpose or object is irrelevant. That may be so especially with a
machine or product claim, where, as the Court a quo observed, the words may merely
'define the field of application of the invention as distinct from limiting the invention itself'.
But it is always essentially a problem of construing the words in the context of the claim; where the phrase imports some
limitation or special quality or characteristic into the allegedly invented method, machine, product, etc., then the claim must
be construed accordingly; what its effect will be, i.e., whether that renders it inventive or novel, is another matter."
In the context of anticipation the judgment dealt with similar submissions by counsel for the respondent as follows
(at 651H652C):
"On this and other aspects of the appeal Mr van Reenen for Firestone argued, on the authority of Molins and Molins Machine
Co. Ltd. v Industrial Machinery Co. Ltd., 55 R.P.C. 31 (C.A.) that difference in purpose between two processes was
irrelevant, and he referred to the minority judgment of WILLIAMSON, J.A., in DrummondHay's case, supra, 1963 (3) S.A.
490 (A.D.) at pp. 506BD, 508H. That argument is, I think, probably correct where two processes are otherwise the same or
substantially the same, since such processes could conceivably serve different purposes. But usually processes devised
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for different purposes are themselves different in one or more essential integers, and difference in purpose therefore might
well be a good indication that the processes do differ or that, if the difference is small, it is real or crucial. That is, I think,
the explanation of certain dicta by STRATFORD, J.A., in Veasey's case at pp. 2845 which WILLIAMSON, J.A., said in
DrummondHay's case, supra, may require some qualification. STRATFORD, J.A., compared the respective purposes or
objects of the two rival rockdrills and concluded that they were so radically different in aim that the defence of anticipation
had necessarily to fail. But it is clear from the facts that the difference in purpose or object was really a manifestation of an
essential
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difference in an important device of the two machines. See too p. 268 of Veasey's case, per WESSELS, J.A."
(See also Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A), at 268AD.)
Thus, where a patent claim contains words denoting a particular object or purpose for the invention, a distinction
must be drawn between (i) words which, especially with machine or product claims, merely define the field of
application of the claimed invention and (ii) words which import some limitation or special quality or characteristic of
the invention and consequently constitute an essential integer of the claim. Whether words indicating object or
purpose fall into category (i) or category (ii) is essentially a problem of construing them in the context of the claim. If
the words of the claim in question fall into category (i) they will not serve to distinguish the invention claimed from
and thus avoid anticipation by for example a prior stateoftheart document which otherwise discloses all the
integers of the claim. If, on the other hand, they fall into category (ii), they may constitute a vital or crucial
distinction between the invention as claimed and the prior disclosure which will defeat anticipation.
Applying these principles to the facts of the present case, I am of the view that the words denoting use or
purpose in claim 9 of the 1987 patent and claim 1 of the 1989 patent merely indicate or define the field of
application of the invention claimed. In this connection it must be emphasised that these claims relate to a machine
or mechanical contrivance; that, use aside, all the integers of these claims are to be found in the Blau patent; that
the disclosure in the Blau patent of a closure cap which may be used as a pipe socket closure in which excess
internal or external pressures occurring in the interior can be compensated automatically by valve members
mounted in the closure, is general in its terms and is not limited to any field of application; that the contrivance
described in the claims does not differ mechanically in any material respect from that described in the Blau patent;
that the contrivance in the claims operates in exactly the same way and serves the same purpose as that disclosed
in the Blau patent; and that the words in the claims denoting use or purpose do not import any limitation or special
quality or characteristic into the contrivance described in the claims and the Blau patent.
It was submitted by appellant's counsel that the law as laid down in the Gentiruco case, supra, had been
rendered obsolete by the Act and in this regard he referred in particular to the new provisions introduced into our
patent law by section 25(9), (11) a n d (12). Counsel also referred to similar provisions contained in the British
Patents Act of 1977 and to various decisions of the English courts relating to those statutory provisions. In addition
our attention was drawn to the decisions of the various courts of the European Patent Office in the
Page 10 of [1996] 1 All SA 1 (A)
socalled Mobil case. His submission, as I understood it, was that these authorities confer novelty on a "new case"
claim, not only within the medical field, but in other fields as well.
I do not intend to be drawn into a consideration of these matters and authorities. Subsections (9), (11) and (12)
of section 25 of the Act deal solely with inventions consisting of a substance or composition for use in a method of
treatment of the human or animal body by surgery or therapy
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