Anthony Michael Barker v D. & v Rassac Estates Pty Ltd, Peuren Agencies Ltd and Colonial Fireplaces Pty Ltd

[1986] APO 30

In the Matter of the Patents Act 1952

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In the Matter of Application No. 525662 for a Patent by ANTHONY MICHAEL BARKER

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In the Matter of Opposition thereto by

D. & V. RASSAC ESTATES PTY. LTD., PEUREN AGENCIES LTD. and COLONIAL FIREPLACES PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS

On 9 April 1979 Davies & Collison, Patent Attorneys of Melbourne, lodged application No. 525662 entitled "A Stove", in the name of Anthony Michael Barker.  The application was duly examined, and advertised as accepted in the Official Journal of 18 November 1982.
         D. & V. Rassac Estates Pty. Ltd., Peuren Agencies Ltd. and Colonial Fireplaces Pty. Ltd. lodged notice of opposition under section 59 respectively on the 14, 16 and 18 of February 1983.
         Following service of evidence in support (although not finalised by Colonial) including further evidence adduced under regulation 59 by Rassac and Peuren, the applicant proposed to amend his specification under Section 77 in accordance with a request lodged 9 October 1984.  The request was examined and ultimately allowed on 21 June 1985.  Colonial and Rassac have now withdrawn their oppositions, the withdrawals being advertised in the Official Journals of 22 May 1986 and 28 August 1986, respectively.

Peuren has maintained its opposition, and requested to be heard on the amended specification.  The hearing was held in the August 1986 Melbourne sessions; Mr K. Leslie, patent attorney of Davies & Collison represented the applicant, and Mr W.L. Thomson, patent attorney of W.L. Thomson & Associates, Canberra, represented the opponent.
Section 40
         Claim 1 in its amended form reads‑

"A stove including a casing, a door on one wall of the casing, a controllable air inlet opening into said casing in an upper region thereof, a deflector mounted in said casing adjacent said air inlet, said deflector provided as a vane projecting downwardly from adjacent the upper region of the casing and including a lower portion situated adjacent an upper portion of a transparent portion positioned in a front face of the casing, said lower portion directed toward the transparent portion to, in use, deflect air downwardly within the casing past the transparent portion and toward a main combustion zone within said casing, an outlet positioned in an upper region of the casing remote from said inlet and separated from said main combustion zone by a partition positioned in the upper region above the main combustion zone and extending towards said front face said partition forming a heated zone between said main combustion zone and said outlet, where main combustion gases after passing forwardly beneath said partition mix and secondary burn with inlet air before passing rearwardly to said outlet, a closable by‑pass aperture provided through said partition adjacent said outlet to provide a by‑pass of said heated zone to said outlet".

There is a description of the invention in the specification set out in identical terms to claim 1.
         Mr Thomson made two submissions concerning claim 1.  His first submission was that the definition of the partition and the zone which it is to form were not understandable.  It transpires however that Mr Thomson's point, which he also made in his evidence in support, is not relevant to the claim in its amended form.  His second submission bears somewhat more consideration.  He notes that claim 1 defines the deflector to be "provided as a vane", and that whereas the disclosure appears to be of a fixed deflector, a vane ‑ according to the dictionary definitions ‑ is a moveable (usually rotatable about a pivot) device.  Consequently, claim 1 is not fairly based.
         It seems to me that Mr Thomson's view of the meaning of the word "vane" is somewhat limited.  In the field of patents, the meaning to be given to technical terms is that which would be given by a person skilled in the relevant art.  In the present case the relevant art could be broadly designated as "heating and ventilating".  In this art, vane‑axial fans have been common knowledge for many years before the date of publication of the specification in suit.  A fan of this type comprises a tube in which the fan blades are mounted, and fixed air‑guide vanes in the tube down stream (and sometimes upstream as well) of the fan blades.  I note also that the air deflectors on many air conditioning duct outlets are fixed.    
         In the art, these are referred to as "non‑adjustable" vanes e.g. The American Society of Heating and Ventilating Engineers publication "Heating Ventilating, Air Conditioning Guide 1953" (Vol 31) which was available in the Patent Office Library on 10 October 1954, and which publication has been and still is extensively used in the Australian Industry, refers to Wall Outlets, inter alia, in the following terms:

"2.Vaned Outlets.  Outlets equipped with either vertical

or horizontal adjustable vanes or both are particularly suited to sidewall distribution.  For proper control over the airflow, the vane ratio should be from 1 to 2. Outlets with non‑adjustable vanes may be employed, but they should only be used where the performance is not critical or can be adequately predicted.  Vanes should be properly designed to prevent an increase of noise above permissible level".

Clearly then, a vane may be fixed or movable.  Accordingly the "deflector" of claim I may be either fixed or moveable.  The question now is, insofar as the deflector can be moveable, is the claim fairly based?  In my view it is.  Firstly, there is a description of the invention at page 2a in the same terms as claim I; secondly, the description of the preferred embodiment indicates that the

".... deflector may take the form of a plate or vane so arranged as to direct inlet air downwardly over the inner face of the window in the door 32".

Despite the fact that the deflector is illustrated in the drawings only in the form of a fixed vane, the terminology used (i.e. specifically the word "vane") is such as to disclose to a person skilled in the art a fixed or moveable deflector.  Consequently claim 1 is not, in this respect, any broader than the matter set out in the description.  It may well be that the specification as amended includes matter not originally disclosed:  this is not however a point at issue ‑ if Mr Thomson is of that view he could have opposed allowance of the amendments under section 82, and evidence could have been adduced by the applicant and opponent to enable this point to be properly determined.  Consequently I reject Mr Thomson's submissions.
Costs
         When Colonial and Rassac withdrew their opposition, they did so on the basis of agreement with the applicant that the respective parties would bear their own costs.  Peuren's evidence comprises almost in total photocopies of evidence lodged by Rassac.  In addition, Peuren's evidence in support raised the section 40 matter (concerning the partition) to which I have referred above.  This was a serious matter not raised by Rassac and Colonial and an award of costs must follow accordingly.  I note that the applicant did not serve evidence in answer on the Peuren opposition, but instead lodged notice under regulation 57 A, and it was only subsequent to that notice that further evidence under regulation 59 was adduced by Peuren.  The Section 77 application was made after all evidence had been served.
         In my view then, Peuren, is entitled to costs incurred up to completion of the section 77 action by the applicant.
         As to costs incurred since completion of the section 77 action, including those associated with this hearing, Mr Thomson has been unsuccessful concerning the two matters which he raised under section 40.  However, he appeared to take the view that in order to obtain an award of costs for Peuren, it was necessary for this hearing to go ahead:  this is of course, not so.  It is only necessary that any opponent who is satisfied with the state of an applicant's specification pursuant to amendment consequential upon evidence served by that opponent to request an award of costs.  This is usually done by agreement with the applicant i.e. the opponent agrees to settle after finalisation of the section 77 action provided the applicant pays the costs.  If the applicant refuses to pay the costs on this basis, the hearing under section 60 will be necessary.  In the present case, the applicant settled with Rassac and Colonial on the basis that they would withdraw their oppositions and each party would be responsible for its own costs.  It was open to Peuren to make a similar agreement, or to settle on the basis that the applicant pay the relevant costs.  It chose not to do so, and therefore must bear the costs incurred since completion of the section 77 action.
Summary
         I have found that of the two grounds under Section 59 alleged to be remaining since amendment of the specification, one is not relevant to the amended specification, and the other has no basis:  however there was a serious ground of objection under section 40 raised in Peuren's evidence, therefore I award costs up to completion of the section 77 action in favour of Peuren, and costs since that time, to date, in favour of the applicant.
         Finally, I direct that the application shall proceed to sealing, subject to lodgment of any appeal.

J.L. Roveta
  Supervising Examiner of Patents    
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