A.C.(Wholesale)Components Pty Ltd v Rib Loc Australia Pty Ltd and Heatshield Pty Ltd

[1995] APO 28

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 634908 in the name of A.C. (WHOLESALE) COMPONENTS PTY LTD

Title:    Air Conditioning Dropper Improvements

Action:    Oppositions by RIB LOC AUSTRALIA PTY LTD and HEATSHIELD PTY LTD under section 59 of the Patents Act 1990.

Decision:    Issued            .

Abstract:    Some claims found to lack clarity and others to lack fair basis.  Some claims found to be lacking in novelty by reason of prior use.  Some claims found to lack an inventive step.  Applicant given the opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 634908 by A.C. (Wholesale) Components Pty Ltd and opposition by Rib Loc Australia Pty Ltd and Heatshield Pty Ltd under section 59 of the Patents Act 1990.

background

A.C. (Wholesale) Components Pty Ltd (the applicant) filed patent application 634908 on 13 September 1991.  This application was associated with an earlier provisional application PK2315 which was filed on 14 September 1990.

Notices of opposition were filed by Heatshield Pty Ltd and Rib Loc Australia Pty Ltd on 3 June 1993 and 4 June 1993, respectively.  Both opponents served statements of grounds and particulars on 3 September 1993.  All evidentiary stages were completed by 23 September 1994.

Two other notices of opposition were filed but these oppositions were subsequently dismissed as the respective parties failed to serve the statements of grounds and particulars within the required time.

The oppositions were heard in Canberra on 9 December 1994.  The applicant was represented by Dr. Paul Wyk, patent attorney of A.P.T. Patent and Trade Mark Attorneys, Adelaide, (by telephone) and by Dr. Mark Horsburgh of the same firm in person.  Rib Loc was represented by Mr. Richard Catt, patent attorney of R.K. Maddern & Associates, Adelaide.  Heatshield was not represented at the hearing but chose to rely on evidence which had already been served.

As the application was filed after the commencement of the Patents Act 1990, the opposition proceeds under section 59 of the Patents Act 1990 and Chapter 5 of the Patent Regulations 1991.

STATEMENTS OF GROUNDS AND PARTICULARS

The grounds and particulars of both statements are identical even to the inclusion of the unallowable ground of non-compliance with section 40(4).

The grounds listed are those specified in section 59(a),(b) and (c). However at the hearing, Rib Loc indicated that it would not pursue the first ground viz. that the nominated person was not entitled to the grant of a patent for the invention. The ground of non-compliance with section 18(1)(a) (lack of subject matter) was also not pursued at the hearing. Rib Loc relied on the grounds of lack of novelty, lack of inventive step and non-compliance with section 40(2) and (3).

The particulars refer to certain aspects of common general knowledge but refer only to one document in relation to this viz. Evaporative Air Conditioner Specification Manual 1977/1978 by Braemar Air Conditioning.

The particulars provide assertions of prior use and again refer to the Braemar manual.

In relation to prior publication (presumably in support of lack of compliance with section 18(1)(b)(i)), the particulars list a number of patent specifications and again the Braemar manual is referred to.

The particulars also list a number of issues in relation to non-compliance with section 40.  I will refer to these as necessary later in the decision.

THE SPECIFICATION

The specification commences by stating that the invention relates to improvements with respect to droppers in connection with air-conditioning ducting.  The specification continues by stating that it is conventional to provide in a building an inlet duct which might pass through a roof of a building and have air-conditioning units on an upper end and at a bottom end, have outlets which are directed substantially 900 to the vertical.  These can be directed at up to four different directions orthogonally orientated with respect to each other.  According to the specification, such a dropper provides structural support for the uppermost air-conditioning unit.  It is necessary at the bottom of such ducting to provide outlets to which ducting of circular peripheral shape will be attached.  The specification then states:

"It is inherent in the description that a dropper comprises a structure which can provide for structural support and is of substantially rectangular and in preference square cross-sectional shape throughout its length."

The description then highlights the problem to which the present invention is directed to be the achievement of efficient air transfer through such a dropper while at the same time maintaining economic cost of manufacture.  It has been found that there are substantial losses of air pressure caused by the air having to turn from coming down the dropper into the respective cylindrically shaped ducting.  Traditionally, droppers have been provided with substantially planar sides and a planar bottom with cylindrically shaped conduits connected to circular apertures in the sides of the dropper.  Although such droppers have large pressure losses, it has been difficult to find an economic alternative to solve this problem.

The specification then states:

"It is my discovery that an airfoil part may be formed or inserted in the bottom of the dropper to aid in overcoming this problem"

Then there is a consistory statement which is worded the same as claim 1 followed by a number of statements about preferred forms of the invention.

Some extracts from the description which are relevant to various issues raised by both sides are as follows:

"While reference has been made to a spherical shape, the purpose of the shape is to provide for an essentially aerofoil direction and accordingly, reasonably large differences from a classically spherical shape can be used whilst still being within the broadest conceptual basis of this invention." (underlining added)

"At the bottom of the dropper 2 there is located an airfoil 5 which is formed from compressed styrene plastics pellets, the shape being such that there will be provided a substantial streamlining effect for air issuing from the evaporative air conditioner 1 down the dropper 2 and into respectively further air conditioning conduits such as 6 and 7."

The specification ends with 24 claims, the independent claims of which are as follows:

1. An airfoil for an air-conditioning dropper, said dropper having a plurality of apertures connecting to a plurality of ducts and said airfoil having a concave surface being of a size and shape to provide improved air flow through the apertures from the dropper to the ducts.

1. An air-conditioning dropper in which the body shape of the dropper in the vicinity of a bottom portion of the dropper includes an airfoil section which has a start point at or above an approximately middle height with respect to at least one side aperture defining the entry to a cylindrical duct and at a middle point between sides of the dropper, said airfoil section then diverts from said start point with a shape defining substantially the shape of a sphere until a diametrical position is reached at the periphery of the at least one aperture.

1. An air-conditioning dropper comprised of a body having essentially planar sides and a flat bottom and at least one aperture in one side near the bottom and an airfoil located so as to be within the dropper and adjacent the flat bottom and circular aperture, said airfoil being of a size and shape to provide a low turbulence air flow through the aperture from the dropper.

16.  An air-conditioning dropper with an airfoil insert within the dropper wherein the dropper is comprised of a metallic body having essentially planar sides and a flat bottom and at least one circular aperture in one side at the bottom, the airfoil being located so as to be within the thus shaped dropper at the bottom of the dropper.

20.  An infill for the air-conditioning dropper of any of claims 8 to 19, said infill being of a size and shape to rest upon the concave surface of the airfoil such that if the number of concave surfaces exceeds the number of apertures the infill provides additional streamline surfaces to provide improved air flow through the apertures.

23.  A method of improving the flow of air through an aperture from air-conditioning dropper to a duct by forming or placing an airfoil in the dropper adjacent the aperture, said airfoil having a concave surface being of a size and shape to provide improved airflow through the apertures from the dropper to the ducts.

EVIDENCE

Both opponents served the same evidence in support in the form of four statutory declarations as follows:

.A statutory declaration by Kevin Patrick Haley who indicates that he is currently employed as the commercial manager of Heatshield Premium Products Pty Ltd and has been employed in the air-conditioning industry for some twenty years.  This employment has involved the design, manufacture and installation of air-conditioning equipment.  The declaration is accompanied by five exhibits.

.A statutory declaration by Gerard Paay who indicates that he is currently employed as an Advanced Skills Lecturer 2 teaching in the Associate Diploma in Refrigeration at the Regency Institute of Vocational Education.  The declaration is accompanied by seven exhibits one of which is Mr. Paay's curriculum vitae which shows that Mr. Paay has been involved in varying capacities in the air-conditioning industry for almost thirty years.

.A statutory declaration by Robert Stanley Freeman who indicates that he is currently employed as a lecturer in air-conditioning at the School of Electrical Engineering at the Regency College of TAFE and that he has been involved in the air-conditioning industry for more than twenty years.  The declaration is accompanied by four exhibits.

.A statutory declaration by Andrew Rogers who indicates that he is currently self employed as an industrial design consultant and has from about 1980 been involved in the design of various air-conditioning systems and has been predominantly involved in plastics design.

The evidence in answer consists of six statutory declarations as follows:

.A statutory declaration by Victor John Smith who indicates that he is currently employed by Advan Holdings Pty Ltd, a joint owner of the applicant company, as Group Engineering Manager since 1988.  Mr. Smith is one of the inventors of the present invention.  His declaration is accompanied by six exhibits.

.A statutory declaration by Adrian Johannes Van Diemen who indicates that he is currently a joint owner of the applicant company and that he has been involved in the air-conditioning industry since 1963.  Mr Van Diemen indicates that during this time he commenced his own business which was an independent manufacturer of air-conditioning components.  His declaration includes one exhibit.

.A statutory declaration by Leyden Eric Deer who indicates that he is currently employed as a principal mechanical engineer and that since obtaining his mechanical engineering degree in 1975 his fields of special competence include air-conditioning system conceptual design.  Mr. Deer's declaration includes two exhibits.

.A statutory declaration by Gordon Robert Thomson who indicates that he is currently a director of a family owned air-conditioning company and in which he has been actively involved for the last thirteen years.  Mr. Thomson indicates that he has been responsible for planning installations of domestic air-conditioning systems.

.A statutory declaration by Robert John Van der Hoeven who indicates that he is currently the owner/manager of and has been actively involved for the last eleven years in a family company involved in design and installation of domestic ducted evaporative air-conditioning systems.

.A statutory declaration by Pasquale Callisto who indicates that he is currently employed as a consulting engineer whose responsibilities are primarily the design and documentation of air-conditioning installations for commercial premises.  His declaration is accompanied by three exhibits.

The evidence in reply served by both opponents consists of three statutory declarations as follows:

.    A further statutory declaration by Gerard Paay.

.    A further statutory declaration by Robert Freeman.

.A statutory declaration by Roger Martin Grubb who indicates that he is manager of Ductair, a division of Rib Loc.  The declaration includes one exhibit.

SUBMISSIONS

I will summarise the major submissions provided at the hearing under the relevant headings of my decision.  However it is worthwhile to note that, at the hearing, I invited submissions from both parties on the question of costs.  I agreed to the request of both parties to provide me with written submissions on the matter of costs subsequent to the hearing.  Both parties have provided me with those written submissions.  However, Mr. Catt, on behalf of Rib Loc, chose to include further submissions in relation to certain of the grounds of opposition argued at the hearing.  As I did not agree to further written submissions of this nature being filed, I will ignore them.  Mr. Catt had ample opportunity at the hearing to make all the submissions he required.

DECISION

Preliminary Issues

As what interpretation I give to the term "airfoil" will have a major bearing on all the grounds of opposition, I will deal with this first.

As I see it, the issue is what interpretation should be given to a particular word in a claim (or in the body of the specification) where the normal meaning of that word (if there is one) is not consistent with the context in which the word is used.

During the hearing, I was referred to the rules of construction summarised in Decor Corp v Dart Industries, 13 IPR 385 by Sheppard J as follows:

(1)The claims define the invention which is the subject of the patent.  These must be construed according to their terms upon ordinary principles.  Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

(2)It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves.  To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

(3)Nevertheless, in approaching the task of construction, one must read the specification as a whole.

(4)In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification. 

(5)If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. 

(6)A patent specification should be given a purposive construction rather than a purely literal one.

(7)In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

(8)The body, apart from the preamble, is there to instruct those skilled in the art concerned in carrying out the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

(9)Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right. 

(10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid.  But the specification must be construed in the light of the common knowledge in the art before the priority date.

Therefore I should first of all decide whether or not the term "airfoil" has an ordinary meaning in the air-conditioning art.  In trying to determine the meaning of "airfoil" I have consulted a number of dictionaries and text books.  In doing so, I have been conscious of the argument put forward by Dr. Horsburgh that "airfoil" is used as one word in the present specification.  Any definition of the two word term "air foil" may not be relevant to the term used in the claim.

Webster's Third New International Dictionary, G & C Merriam Coy., 1976, lists the meaning of airfoil as "a body (as an airplane wing or propeller blade) designed to provide a desired reaction force when in motion relative to the surrounding air". (underlining added)

The Carrier Air Conditioning Company's Handbook of Air Conditioning System Design (1965) McGraw-Hill at page 6-3 discusses airfoil in relation to a particular type of fan blade.  Other text books also use the term in a similar fashion in relation to fan blades.

The Dictionary of Refrigeration and Air Conditioning by K.M. Booth, Applied Science Publishers Ltd, London lists "air-foil section" with a cross-reference to "aerofoil section" which is defined in terms of fan blades.

The Oxford English Dictionary, second edition, Clarendon Press, 1989, has a reference to airfoil as "airfoil U.S. = aerofoil".  Its definition of aerofoil is in terms of aircraft lifting surfaces or blades of ship's propellers.

Thus, as far as I can determine, the term "airfoil" is of U.S. origin and in general refers to lifting surfaces of aircraft or propeller blades.  In the general air-conditioning art, I have been unable to ascertain any other meaning for the term than a type of fan blade.

The question is:  Should I apply this interpretation to the word "airfoil" in the claims using the normal rules of construction?  While such an interpretation of this term is inconsistent with the arrangement depicted in the drawings accompanying the present specification, does this restrict me from using this interpretation in the claims?  If the interpretation of the term in this way gives me a nonsensical meaning in the claim then I believe that I should consider the third, fourth and fifth rules of construction above.  However if the meaning is a sensible one in the context of the claim then I should not add glosses from the body of the specification as per the second rule of construction listed above.

The broadest claims, for example claim 1, could conceivably include within their scope an airfoil fan blade especially as, in claim 1, the airfoil per se is defined not in combination with nor located at the bottom of the dropper.  It is a reasonable construction of such a claim that a particular airfoil blade for the evaporative flow air-conditioner fan improves the air flow through the apertures in the dropper because airfoil fan blades are more effective than other types of fan blades.   However later claims do not lend themselves to such a construction especially where the airfoil is defined as being at the bottom of the dropper.  I do not think that it is a proper interpretation to suggest that the dropper has another fan blade at its bottom.  Therefore I am of the opinion that I cannot answer the purely verbal question of what is meant by the term "airfoil" in the claims.

In accordance with the fifth rule above, I believe that I am permitted to resort to the body of the specification to clarify the meaning of "airfoil".

The applicant maintains that because no clear meaning can be given to this term the specification should act as a dictionary for this term when it appears in the claims.  However I am unable to find a clear statement in the body of the specification to act as a dictionary definition.  I compare this with the passage on page 2, lines 15 to 17, to which I have referred earlier where a specific definition of a dropper is provided.  There is no equivalent definition of an airfoil.  In this respect, I note the warning of Lord Reid in Minerals Separation North America Corporation v. Noranda Mines Ltd., (1952) 69 RPC 81 at page 93:

"The Appellants contend that there is in the earlier part of the specification a definition of the word "xanthate" as used by the Patentee which is in effect a "dictionary" and that, as the Patentee has shown that he intends the word to be understood in a limited sense throughout, that limited sense ought to be attached to the word when it occurs in claim 9.  Their Lordships do not doubt that it is possible for a patentee to make his own dictionary in this way.  If he has put something in the earlier part of the specification which plainly tells the reader that for the purpose of the specification he is using a particular word with a meaning which he sets out, then the reader knows that when he comes to the claims he must read that word as having that meaning.  But this is an awkward method of drafting ... and it is in all cases incumbent on a patentee who chooses to adopt this method to make his intention plain to those who read the specification." (underlining added)

In the present case, I do not believe that the applicant has made its intention plain to those who read the specification.

Dr. Horsburgh referred me to page 6, lines 23 et seq, where various discussions of the shape of the airfoil are described.  For example, lines 28 to 31 of this page specify:

"The shape [of the airfoil] in specific terms is such that there is a ventral apex 8 located at a middle height relative to the circular outlet shapes and the shape then curves downwardly and outwardly with respect to each respective outlet defining thereby with such an upper surface, a shape following the surface of a sphere."

This explanation is provided in the description of the preferred embodiment with reference to the drawings.  The question I have to decide is whether or not the term "airfoil" should be given this definition.  Should it be given an extended definition because the paragraphs following this extract further describe the shape of the airfoil?  I note the standard phrase at the end of the description viz. "Throughout this specification the purpose has been to illustrate the invention and not to limit this."  I also note that on page 3, lines 11 to 14, "In preference the airfoil is shaped, with respect to at least one aperture, to have an edge nearest the aperture substantially matching the shape of a portion of the aperture and a concave surface extending away from the aperture such that the concave surface defines a section of a surface of a sphere." (underlining added)  This appears to be indicating that the airfoil shape following the surface of a sphere is preferable but not an essential feature of the airfoil.  Therefore I do not believe that a person reading the specification would unambiguously interpret "airfoil" to mean something with the features listed on page 6, lines 28 to 31.

However, perhaps the most important question I have to decide in relation to the meaning of the term "airfoil" is whether or not this term should be interpreted to include an air diverter which has a concave surface.  Certainly the broad description of the invention on page 3, lines 5 to 9, refers to an airfoil which has a concave surface.  This would appear to be an essential feature of the invention.  However that is not to say that the term "airfoil" in its broadest form should include this feature.  Indeed, it seems to me that the way the specification and claim 1 at least have been drafted, the term "airfoil" excludes the requirement that the air diverter has a concave surface otherwise the wording on page 3, line 7, and in claim 1 that the airfoil does have a concave surface would be superfluous.  In other words, if the term "airfoil" includes an air diverter with a concave surface there is no need to further specify that it has a concave surface but the drafter of the specification has chosen to do so.  It seems to me therefore reasonable to assume that this wording is not redundant and the term "airfoil" in its broadest form does not include an air diverter with a concave surface.

For all the above reasons, I believe that all one is entitled to gather from the specification is that the term "airfoil" in its broadest form refers to a stationary device which assists in diverting air through the apertures in the side walls of the dropper.

I would add that I have interpreted the term "concave surface" to include the surface of the inside of a cylinder or the like as well as the surface of the inside of a sphere.

Section 40

Rib Loc highlighted a number of alleged section 40 defects in its particulars.  Mr. Catt elaborated on these at the hearing.  The main thrust of his argument was that the terminology of the claims was unclear and therefore the scope of the claims could not be determined and that the broad nature of the scope of the claims was such as to render them lacking in fair basis.  Dr. Horsburgh's submissions concentrated on the point that the specification should be read as a whole and that the opponent's own declarants appeared to have no trouble in determining what the scope of the claims was.

Much of the discussion in relation to section 40 centred around the interpretation of "airfoil" in the claims.  I have earlier indicated that I believe that the term should be interpreted in the claims as a stationary device which assists in diverting air through the apertures in the side walls of a dropper.  As I have indicated earlier, I do not believe that I can add any further limitation to this definition in looking at the broadest form of the term "airfoil".

Claim 1 does provide some limitation on the nature of the airfoil in that it must be concave and of a size and shape to provide improved airflow through the apertures in the dropper.  Mr Catt questioned the meaning of "improved airflow".  Both parties referred me to No-Fume Ltd v Frank Pitchford and Co Ltd (1935) 52 RPC 231 in this matter. This decision deals with the concept of setting out the scope of the invention in the claims by specifying the result achieved by the invention. In the present case, the specification refers to prior droppers which did not have any air flow diverters at all at the bottom of the droppers to divert air through the apertures to the ducts. Thus any air diverter which has a concave surface and which provides a better flow of air through the apertures compared with a flat-bottomed dropper would satisfy the requirement of claim 1 of providing improved air flow. I am satisfied that "improved" can be given a clear meaning by a person skilled in the art.

Mr. Catt also questioned whether or not claim 8 included within its scope an airfoil which was convex in shape.  Dr. Horsburgh argued that claim 8 was narrower in scope than claim 1 and therefore if claim 1 could be understood then claim 8 could also be understood.  Dr. Horsburgh also took the line that the term "airfoil" included all the limitations imposed on it in the body of the specification and since one of these limitations was that the airfoil was concave this also restricted the airfoil in the claim to being concave.

I have found great difficulty in interpreting claim 8.  I do not think that Dr. Horsburgh's arguments provide me with much help in interpreting the claim.  I cannot agree that if claim 1 can be understood than claim 8 can also be understood.  Claim 8 is an independent claim and defines the nature of the airfoil in an entirely different way.  Also I have already decided that the term "airfoil" should not draw all the limitations of an airfoil that are described in the body of the specification into the claim.  To do so would be contrary to the second rule of construction that I have referred to earlier in this decision.

The wording in Claim 8 in relation to the position and shape of the airfoil is somewhat ambiguous.  For example, the wording "a middle height with respect to at least one side aperture" could mean a height equivalent to the middle of the aperture or a height equivalent to the middle distance between the bottom of the dropper and the aperture.  The wording "at a middle point between sides of the dropper" could mean at a point which is the geometric centre of the dropper in cross-section or at a point located on one of the sides of the dropper but in the middle of two other sides of the dropper.  In this respect the claim does not specify between which sides of the dropper the start point is located in the middle.  Given the ambiguous nature of the wording in relation to the start point of the airfoil section, the nature of the rest of the airfoil section is unclear.  Because of this, I agree with Mr. Catt that the claim could include an airfoil section which is convex in shape.  As such, I do not believe that the claim is fairly based on the matter described in the specification because there is no "real and reasonably clear disclosure" of such an airfoil section in the body of the specification. (CCOM Pty Ltd v Jiejing Pty Ltd 1994 AIPC 91-079)

Mr. Catt also queried the term "substantially the shape of a sphere" in claim 8.  It seems to me that this terminology further exacerbates the lack of clarity in the claim as it is difficult to reconcile a substantially spherical airfoil section with the other limitations in the claim.  I note that claim 2 defines the concave surface of the airfoil as defining a section of a surface of a sphere.  It seems to me that this is a more accurate definition of the airfoil depicted in the accompanying drawings. 

Rib Loc, in its particulars, attacked claim 9 for being speculative and lacking in fair basis.  Given my interpretation of the term "airfoil", I agree that the claim is broad in scope.  As the claim does not specify that the airfoil has a concave surface, the question I have to decide is whether the specification provides a real and reasonably clear disclosure of any other type of airfoil.  It seems to me that the described invention requires the airfoil to have a concave surface as indicated for example on page 3, lines 5 to 9, and elsewhere throughout the description.  Therefore I do not believe that there is a real and reasonably clear disclosure of any other type of airfoil which achieves the promise of the invention.  Consequently I find that claim 9 lacks fair basis.  For similar reasons, I find that claim 16 also lacks fair basis.

I note that claim 20 defines an infill for the dropper of any of claims 8 to 19. Although Rib Loc included reference to section 40(4) of the Patents Act 1990 as a ground of opposition and included particulars in relation to this ground, no submissions were made at the hearing in relation to claim 20 on this or any other ground (section 40(4) not being a permissible ground of opposition). As there is a real and reasonably clear disclosure of the infill in claim 20, I cannot say that the claim lacks fair basis. However, given my construction of the earlier independent claims, I do note that claims 8, 9 and 16, to which claim 20 refers, do not define the concave surface which claim 20 alludes to in these claims. As a consequence claim 20 lacks clarity.

Some other matters itemised in the particulars were not pursued at the hearing and I do not intend to address them because they are very minor in nature.

Dr. Horsburgh defended the clarity of the claims by arguing that the opponent's declarants appear to have had no difficulty in construing the claims.  However, the opponent's declarants make no reference to having understood the claims.  They all indicate that they understand the invention in the specification.  The above defects I have identified relate to the claims and not to the body of the specification.

There was some debate during the opposition about the merits of two different tests carried out on the applicant's invention the results of which have been included as part of the evidence.  Both parties argued on the particular merits of the methodologies used in conducting the different tests.  However, whatever the results of the tests are, I do not see that they can be used to support or refute any matter arising under this ground of opposition.  It seems to me that the tests may or may not establish inutility but they do not provide support for any argument of insufficiency.

In Tetra Molectric Ltd.'s Application, (1977) RPC 290 at page 297, the Court of Appeal distinguished inutility and insufficiency, by saying that:

"If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency.  But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility."

It seems to me that the tests go to establishing whether or not the end product achieves its promise and as such are concerned with inutility which is not a valid ground of opposition.

In summary, I have found that claims 8 and 20 lack clarity and claims 8,9 and 16 lack fair basis.

Novelty

As a preliminary issue, I need to decide whether or not documents which were referred to in the particulars but not served as part of the evidence can be relied on to support the ground of lack of novelty.  During the hearing, Dr. Horsburgh objected to Mr. Catt referring to a number of patent specifications in support of his argument on lack of novelty.  These specifications had been particularised but had not been served in evidence.  Dr. Horsburgh referred me to Coal Corporation of Victoria v Hinkley & Anor (unreported decision on application 621944, issued 17 September 1993).  In that case, although a number of documents had been identified in the particulars, no evidence had been served.  The delegate of the Commissioner decided that the documents could not be included in the opposition as there was no evidence.  The documents were to be considered in a bar-to-sealing action.  In the present case all evidentiary stages have been completed.  Although a number of documents were served as part of the evidence, the particular patent specifications were not.  I see no reason why the above decision should be distinguished from the present facts.  I agree with Dr. Horsburgh that, because the patent specifications referred to in the particulars under the ground of lack of novelty were not filed as part of the evidence, they cannot form part of the present opposition. They would form part of a bar-to-sealing action should the present application proceed to that stage of prosecution.

The basic test for anticipation is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"

As to what constitutes infringement,  I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd (1969) RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co Pty Ltd and Another 14 ALR 149 at 157. The relevant words of Lord Upjohn are:

"To constitute infringement the article must take each and every one of the essential integers of the claim.  Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

It follows that if a citation discloses all the integers of the claim, the claim will lack novelty.  If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel; Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.

The following claims appear to be the most relevant in considering this ground of opposition.

As I see it, the essential integers of claim 1 are:

.an airfoil (being a stationary device which assists in diverting air through the apertures in the side walls of a dropper); and

.the airfoil having a concave surface which is of a size and shape to provide improved airflow through the apertures to the ducts compared to a dropper with no airfoil.

The essential integers of claim 9 are:

.an air-conditioning dropper having planar sides and a flat bottom and at least one aperture in one side near the bottom;

.an airfoil located in the dropper adjacent the flat bottom and aperture; and

.the airfoil having a size and shape to provide low turbulence air flow though the aperture compared with the dropper without the airfoil.

The essential integers of claim 16 are:

.an air-conditioning dropper having planar sides and a flat bottom and at least one aperture in one side at the bottom; and

.an airfoil located in the dropper at the flat bottom.

I do not believe that the dropper having a metallic body is an essential integer of claim 16 as the material does not materially affect the way the invention works.  Similarly I do not believe that it is an essential integer of the claim that the aperture be circular.

The various publications provided in evidence by Rib Loc disclose various arrangements of air-conditioning ducting.  However none of the publications explicitly refer to an air-conditioning dropper.  As I have found that such a dropper is an essential part of all the above claims, I cannot say that these claims lack novelty.  I note that one publication, Braemar Air Conditioning Handbook, does disclose a ceiling plenum diffuser for evaporative air-conditioning.  However there is no clear evidence of when this manual was published.  In any case, it seems to me that the plenum is quite distinct from a dropper, the plenum being located at the end of the ducting whereas a dropper is located between the evaporative cooler and the ducting.

Therefore I cannot say that any of the claims lack novelty in relation to the publications served as part of the evidence.

Prior user

The standard of proof required to establish prior user was considered by Graham J. in the UK Appeals Tribunal in Seiller's Application (1970) RPC 103 at 106 as follows:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

In the present case, Rib Loc alleges a number of instances of prior use.

The first, as I understand the argument, is that pairs of concavely curved surfaces have been used in the past to divert air flow at T-junctions and as such this constituted prior use.  The only evidence provided by the opponents in this respect is an assertion by Mr. Haley in his declaration that such arrangements have been known by him for 20 years and a sketch by Mr. Haley of such an arrangement as an exhibit to his declaration.  Mr. Catt argued that this had not been challenged by the applicant.

However, the Haley declaration appears to be establishing the nature of common general knowledge in the art.  Mr. Haley gives no specific indication of where and when these particular air diverters had actually been used.  In cases of prior user, I believe that the onus is on the opponent to establish the prior use with corroborated evidence.  I do not believe that it is sufficient for the opponent to argue that unsubstantiated evidence has not been challenged by the applicant.  Therefore I am not prepared to accept on the evidence before me that these particular devices had been used at any time in the last 20 years.  However, even if I did, I do think that this would provide sufficient support for the opponents' argument on prior user.

For example, claim 1 requires, by the use of the wording "for an air-conditioning dropper", that the airfoil be capable of being used in a dropper which is a vertical conduit substantially rectangular in cross-section throughout its length (page 2, lines 15 to 18 of the specification) and has a plurality of apertures connecting to a plurality of ducts.  This requirement seems to me to be an essential integer of the claimed airfoil.  All the other claims have similar or more narrow requirements.  While it might be possible to use the prior concavely curved surfaces in a dropper, there is no clear evidence that they have been so used.  I do not believe that the arrangement shown in Mr. Haley's drawing could be classed as a dropper because there is no vertical conduit.  Therefore I cannot say for certain that this earlier use of concave surfaces involved the use of all of the essential integers any one of the claims.  Therefore the ground of prior use has not been proven in this respect.

The second instance of prior use put forward by the opponent concerns the use of pyramid shaped inserts for droppers.  Both the Haley and Paay declarations refer to these inserts.  These inserts are referred to in the Smith declaration as standard pyramidal inserts.  Therefore I must assume that they were used in droppers before the priority date of the present claims as the applicant's own declarant has corroborated the opponent's assertions.  I also note that, in paragraph 27 of his declaration, Mr. Smith states that the pyramid inserts make little or no difference to the efficiency of air flow and in fact they can increase turbulence depending on the number and size of apertures in the dropper.  From this, I assume that the pyramid inserts can make some difference to the efficiency of the air flow.

There is no evidence that the pyramid inserts had concave surfaces and therefore I cannot say that prior use of the airfoil of claim 1 has been established.

However I believe that a dropper including all the essential integers of claim 9 has been shown to have been used before the priority date of the claim.  I note that the priority date of 14 September 1990 has not been challenged by Rib Loc.  Similarly, I find that a dropper with all the essential integers of claim 16 has been shown to be used before the priority date of the claim.

Claim 11, which is appended to claim 9, adds the further feature of the aperture in the dropper being circular.  However, I do not see this as an essential integer and thus I find that claim 11 is also not novel by reason of prior use.  However other claims which are appended to claim 9 do add features which are essential but which have not been shown to be prior used.

A further aspect to the opponent's case on prior use involved the assertion in the Freeman declaration that Mr. Freeman had constructed a two sided scoop in 1985 and located it in the bottom of a dropper for an air-conditioning installation in a shop.  However Mr. Catt conceded at the hearing that there is no proper evidence to support this assertion.  Mr. Catt instead chose to put the view that it was indicative of the obviousness of the claimed invention.

In summary I have found that claims 9, 11 and 16 are not novel by reason of prior use.

Person skilled in the art

There was much debate at the hearing on the nature of the person skilled in the art.  Mr. Catt for Rib Loc contended that the addressee was in fact a team of people including a person skilled in the manufacture of air-conditioning components and a person having knowledge of plastics.  He referred me to common air-conditioning fittings made of plastic to support this assertion.  However I believe I should disregard this as it seems to me that Mr. Catt has endeavoured to introduce further evidence into the debate. The evidence on file does not allude to such plastic components.  Dr. Horsburgh put forward the view that the person skilled in the art was a person skilled in the manufacture or installation of air-conditioning components and in particular droppers.

I should clarify a point here.  Rib Loc, at least, has referred to the addressee in relation to the question of lack of inventive step.  To my mind, this term is incorrect when considering the question of inventive step.  I believe that the addressee is the notional person skilled in the art to whom the specification is addressed.  However, the specification includes both the problem to be solved and the solution provided to that problem by the present inventor.  It seems to me that, when considering the question of inventive step, I should determine what is the art in which the problem is found in order to determine the person skilled in that art.  If I were to consider the art in which the solution is found, then I would possibly be resorting to ex post facto analysis, something of which the courts have consistently disapproved.  The solution may be derived from knowledge of a completely different art to that in which the problem exists.  This is why I do not believe that the addressee of the specification is necessarily relevant to the question of inventive step although, of course, in many instances the addressee of the specification and the person skilled in the art in relation to inventive step may be the same person.

In the present case, the problem lies in the area of air-conditioning droppers.  I agree with Mr. Catt that the person skilled in the respective art would be one who manufactures rather than installs such equipment.  However there is no evidence before me to suggest that such a person would have extensive knowledge of plastics or that the person skilled in the art would be a team of people including a plastics engineer.  Two of Rib Loc's declarants, Haley and Paay, provide no indication that they regularly worked with people skilled in the plastics technology.  This is supported by comments made in the Rogers declaration where, in paragraph 6, it is stated that "the design and construction of most air conditioning installations have invariably always been carried out by sheet metal tradesmen having little knowledge of alternative methods of construction, in particular plastic moulding methods... ".  The paragraph finishes by indicating that the use of plastic components as a substitute for sheet metal air conditioning components would have been obvious to an industrial designer in the plastics industry.

Therefore, on the evidence before me, I believe that, around 1990, the person skilled in the art would have little or no knowledge of the use of plastics to manufacture air conditioning ducting components.

Common general knowledge

In determining the extent of the common general knowledge in this matter, I am guided by the judgement of Aickin J. in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited, 144 CLR 253 at 292, in which he stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in the considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The nature of common general knowledge is discussed in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited (1972) RPC 457 at 482 as follows:

"The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury's Laws of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case (1971) FSR 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life."

From both of these references I deduce that common general knowledge is the background knowledge possessed by all in the trade not just the hypothetical non-inventive person.  I note that the quotation from the General Tire case (supra) mentions "the sort of man, good at his job, that could be found in real life".  From this I deduce that people in the art who could be said to be inventive also would possess the common general knowledge of the art.  While they may possess further knowledge which is not part of the common general knowledge, this does not necessarily follow from the mere fact that they are inventive.  The ability to be inventive does not necessarily come from an ability to retain vast amounts of knowledge.

Dr. Horsburgh referred me to Hood Computers Pty. Limited v Online Furniture and Weldun Engineering, 28 IPR 347 in order to persuade me that I should discount the evidence of some of the opponents' declarants because they might be classed as inventive. However, the delegate in this case was considering the question of obviousness where it is clear from case law that this should be considered in relation to the non-inventive person skilled in the art. That is different to the present question of deciding what is the common general knowledge in the art.

Therefore, I am of the opinion that I should not automatically dismiss what any of the declarants allege to be part of the common general knowledge in the art merely because those declarants may be said to be inventive.  In this respect, I note the delegate's comments in Braas & Co GMBH v Humes Limited, 26 IPR 273, where he comes to the view that evidence provided by "overqualified" experts may still be of high probative value in relation to the state of the common general knowledge in the art. I believe that this is equally true of experts who are said to be inventive.

In weighing up the evidence, I consider the following to be part of the common general knowledge in the air-conditioning art before the priority date of the claims in question.

.Droppers for air-conditioners and in particular evaporative air-conditioners, the droppers being rectangular or square in cross-section and having circular apertures in the side walls adjacent the flat bottom of the vertical dropper.  This is described as being traditional in the present specification and appears to have been accepted as part of the common general knowledge by all declarants.

.Pyramid shaped inserts for placing at the bottom of droppers to divert the air flow into the apertures in the side walls.  The Smith declaration acknowledges this piece of common general knowledge.

.Turning vanes and radius bends at least in large commercial installations.  This is acknowledged in the Smith declaration at paragraph 23.

There was some debate at the hearing on the question of whether or not knowledge that was commonly known in Adelaide or South Australia could be classified as common general knowledge in Australia as specified in section 7 of the Patents Act 1990 relating to inventive step. The applicant suggested that such knowledge in South Australia might not be known elsewhere in Australia. In the present circumstances I do not believe that this is an issue as all parties in their evidence have agreed to what I have indicated above to be the common general knowledge in the art.

Inventive Step

In HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437, Williams J said:

"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem."

In the present specification, the problem said to be solved by the present invention is stated as being to achieve efficient air transfer through the dropper while at the same time maintaining economic cost of manufacture.  I note that the specification indicates that one of the biggest problems with an airfoil with a concave surface is that it has to be economically manufactured.  This problem is solved by making the airfoil out of plastics material.  Thus I am of the opinion that those claims which do not refer to the airfoil as being manufactured from plastics material do not solve the problem of maintaining economic cost of manufacture.  Only claims 5,6,7,12 (only when it is appended to claims 8 or 10),13 and 19 define the airfoil as being made of plastics material so that it is only these claims which solve the problem of allowing economic manufacture.

Therefore, in relation to claim 1, the question I have to answer is how a person with ordinary skill in the relevant art would have solved the problem of achieving efficient air flow through a dropper.  I have no doubt that the person skilled in the art would consider using some kind of air diverter or turning vane to improve the change in direction of the air flow from the dropper through the aperture(s).  I am convinced that the person skilled in the art would consider a turning vane which is curved or concave in shape.  I have already decided that such arrangements were part of the common general knowledge in the art.

However, to establish a lack of inventive step, I do not believe that it is sufficient to say that a person skilled in the art would think of possible arrangements which might possibly solve the problem.  I believe that I need to decide if, having thought of such an arrangement, the person skilled in the art would then consider such an arrangement to be a solution to the problem and implement such a solution.  In this I am guided by the question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331, viz:

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

In the present case, I need to decide whether a person skilled in the art would take the necessary steps required to make an air diverter with concave surfaces.

The various declarations served by Rib Loc contain numerous statements by the declarants indicating that, while they would have considered using concave air diverters, such diverters have not been used because of the costs involved in manufacturing such components.  The following are examples:

.Haley's declaration, paragraph 9 - "the reason why such designs [concave airfoils] were not actively promoted in the past has not been due to a lack of design knowledge in the sheet metal trade but purely and simply as a result of labour and tooling costs associated with the manufacture thereof."

.Paay's first declaration, paragraph 5 - "However, I was and still am well aware that sheet metal manufacturing techniques and associated additional costs would not have made this [curved airfoil surfaces] cost effective."

.Paay's first declaration, paragraph 7 - "As a designer of duct work for air conditioning systems, I say that, in 1990, had I been asked to design an air diverter for use in a dropper, and had been (sic) given the opportunity of using moulded plastics or the like, I would have used curved or scalloped surfaces, as a natural progression of deflector/diverter designs which were well established in the industry at that time.  It would simply have been a case of taking advantage of modern manufacturing technologies available in the plastics industry whilst utilising well established knowledge and theory on air flow characteristics in air distribution systems." (underlining added)

.Freeman's first declaration, paragraph 7 - "As both Mr Paay and Mr Haley state, the concept of using curved surfaces for air diverters was well known prior to 1990 but avoided in the industry due to the additional costs associated with the relevant sheet metal manufacturing techniques to achieve such curved bends.  It is essentially for this reason that the well known pyramid shaped sheet metal inserts which were inserted at the base of the vertical dropper for diverting air into the branch ducts, were formed with planar sides rather than curved surfaces."

.Paay's second declaration, paragraph 4(i) - "In my opinion, the reason why such knowledge [pyramid diverters and the use of curves in ductwork] was not combined prior to 1990, was not due to a lack of appreciation of the air flow at the base of the dropper (and indeed it had already been acknowledged that this was suspected to be poor) but because sheet metal technology could not cost effectively provide a solution." (underlining added)

.Paay's second declaration, paragraph 7 - "Such a modification [modifying a pyramid insert by depressing the sides to form a concave surface] would have been far too labour intensive and required talents in panel beating and as I have stated previously, such a procedure would have been recognised as being too costly to pursue." (underlining added)

These comments from Rib Loc's own declarants suggest to me that while a person skilled in the art might initially consider using curved air diverters to solve the problem of achieving efficient air flow through the dropper, the person skilled in the art would then reject such a solution because of the magnitude of costs involved in its implementation. 

Thus I believe that the common general knowledge in the art would teach a person away from using such components in a dropper.  Certainly, the evidence does not allow me to say unequivocally that a person skilled in the art would as a matter of routine have used such a curved diverter to solve the problem.  In this respect I note the portions I have underlined above of paragraph 7 of Mr. Paay's first declaration where he indicates that, if he had been given the opportunity of using moulded plastics, he would have used curved surfaces.  It is quite apparent to me from this that Mr. Paay would not have used curved surfaces (because of the costs involved) in the normal course of his work.  Thus, I cannot say that those claims which are limited to a concave shaped airfoil lack an inventive step.

Claims 9,11 (when appended to claim 9) and 16 do not have any restriction to the effect that the airfoil is concave or even curved.  Therefore I find that claims 9,11 and 16 lack an inventive step in the light of the pyramid inserts which I have found to be part of the common general knowledge in the art.

Since there is no evidence before me to indicate that the person skilled in the art when faced with the problem of achieving efficient air transfer through the dropper while at the same time maintaining economic cost of manufacture would produce an air diverter with a concave surface out of plastics material, I cannot say that claims 5 to 7 and 19 lack an inventive step.  Claims 12 and 13 are appended to claim 9 which includes within its scope the use of pyramid shaped inserts.  While I cannot see that there would be any advantage in making these inserts out of plastics material, I do not have evidence to say that a person skilled in the art would have done so.  Certainly there is clear evidence to suggest that a person skilled in the art would not have done so as I have indicated above.  Therefore I cannot say that these claims lack an inventive step.

Some of the evidence and corresponding submissions at the hearing related to the questions of commercial success and copying of the invention in inventive step analysis.  The applicant has argued that the present invention has enjoyed great success in the market place and that Rib Loc has produced a device very similar to the applicant's invention.  The law relating to commercial success suggests that it can be a factor to be given weight when deciding on the question of inventive step and similarly the copying of the applicant's invention can also be relevant to inventive step deliberations. (Meyers Taylor Pty Ltd v Vicarr Industries Ltd supra)  However, in the present circumstances, the commercial version of the applicant's invention does not necessarily correspond to the invention claimed in the majority of the claims.  Therefore I do not think that I need to consider these issues further to establish whether there has been any commercial success or copying of the invention.

In summary, I have found that claims 9,11 and 16 lack an inventive step.

CONCLUSION

I have found that the oppositions have been successful on the grounds of non-compliance with section 40, lack of novelty and lack of inventive step.  As I believe that these defects can be overcome, I allow the applicant 60 days from the date of this decision to propose relevant amendments to overcome these defects.

COSTS

As Rib Loc has been successful in establishing all the grounds of opposition pursued at the hearing, I believe that I should follow the normal rule of costs following the event and award costs against the applicant, A.C. (Wholesale) Components Pty Ltd in relation to the Rib Loc opposition.

The Heatshield opposition relied on exactly the same evidence as that served by Rib Loc but Heatshield was not represented at the hearing.  The matter is further complicated by the fact that Rib Loc has acquired the business of Heatshield Pty Ltd.  From the material I have before me, I am unable to determine exactly when this acquisition took place.   A letter dated 24 June 1994 refers to the acquisition of Heatshield by Rib Loc.  This is after the evidence in answer was served.  However, I note that, in filing the evidence in support with this office, Mr. Catt has provided one covering letter and only one copy of the various pieces of evidence on behalf of both opponents.  It seems to me that even at this stage, both opponents appear to have been conducting a joint opposition rather than separate oppositions.

Another issue arises as to whether my findings would have been the same if I only had the evidence provided by Heatshield (and Rib Loc) before me without the benefit of the submissions from Mr. Catt who appeared only on behalf of Rib Loc.

In all the circumstances, I have decided to make no award of costs in the Heatshield opposition.

R.W. HALLETT

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  A.P.T. Patent and Trade Mark Attorneys, Adelaide

Patent attorneys for the opponents  :  R K Maddern & Associates, Adelaide