Baracuda (Proprietary) Limited v Fernand Louis Oscar Joseph Chauvier

[1987] APO 3

In the Matter of the Patents Act 1952

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In the Matter of Application 521920 for a Patent of Addition by BARACUDA (PROPRIETARY) LIMITED

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In the Matter of Opposition thereto by FERNAND LOUIS OSCAR JOSEPH CHAUVIER

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 521920 by BARACUDA (PROPRIETARY) LIMITED, which was formerly in the name of HELMUT JOSEPH HOFMANN, was lodged as a Patent of Addition to Patent No. 502993.  The application was lodged on 6 October, 1978 and claimed priority from a Republic of South Africa patent application dated 18 October, 1977.  The parent 502993 was lodged on 22 August, 1977 and claimed priority from Republic of South Africa patent applications dated 23 August, 1976, 8 November, 1976 and 30 May, 1977.  The parent was laid open to public inspection on 1 March, 1979 and was sealed on 26 February, 1980.
         The application was advertised as accepted on 6 May, 1982 and Notice of Opposition was lodged by F.L.O.J. CHAUVIER on 28 June, 1982.  The accepted application invokes the provisions of Section 72, i.e. seeks the grant of a patent of addition to Patent 502993.
         Subsequent to the completion of evidence, special leave was granted to the applicant to adduce further evidence.  This evidence was completed on 7 March, 1986.  The hearing was set down for 15

August, 1986 in the Melbourne session.  Mr. R.J. Strickland, Patent Attorney of Clement Hack & Co. represented the applicant, and Mr. R.C. Wray, Patent Attorney of Wray & Associates represented the opponent.
Grounds of Opposition
         At the  hearing Mr. Wray stated that the grounds of opposition relied upon were those of prior claiming, prior publication, obviousness and non‑compliance with section 40.
The Specification
         The specification is directed towards the art known as "suction sweepers" and is particularly directed to sweepers for use in cleaning swimming pools.  Two forms of known pool cleaners are discussed; one I take to be a reference to the pool unit known as the "Pool Ranger" and the other I take to be a reference to the pool unit known as "Kreepy Krauly".  On the basis of the evidence lodged I take this latter unit to be covered by the opponent's Australian patents 490972 and 505209.
         These known pool units comprise an operating head connected to a suction line and are designed to traverse the base and walls of a pool during cleaning.  The "Pool Ranger" operates by "cutting off the suction to the operating head of the equipment in a manner which will cause the liquid in the suction pipe to cause the latter to flex and move the head along the surface to be cleaned".  The specification states that this device suffers from the problem that it "tends to move slowly over the surfaces to be cleaned".  The "Kreepy Krauly" operates in a different manner and this is expressed in the specification as follows:

"In another form of equipment the suction pipe is connected to the common outlet of a pair of rigid passages which are connected through valve seats to the suction inlet to the equipment.  A flapper valve is provided in the operating head which, while suction is applied through the equipment, oscillates automatically to alternately close off the passages to the suction pipe.  Because of the particular arrangement of the passages and the valve relative to the inlet opening to the apparatus the action of the valve is such that by striking the valve seats the equipment experiences a driving force that has a nett component in a direction parallel to the surface being cleaned.  Also as flow is alternatively suddenly stopped and accelerated against the inertia of the liquid in the two passages a further impulse force to move the equipment over the surface to be cleaned is generated."

The rigid passages are said to make this form of equipment "cumber‑
some and bulky".
         Against this background, the specification states that:

"It is the object of the present invention to provide equipment which will effectively clean submerged surfaces and which is neat and compact and which can move over the surface to be cleaned at a rate in the vicinity of twelve feet per minute."

(I note that the parent specification states the same object).
         Then follows a consistory statement in terms identical to claim 1 and description of the invention by way of a preferred embodiment.
         The description of the preferred embodiment is made by reference to two drawings, which drawings are identical to drawings of the parent.  However while the description of the parent specification refers to two passages through the operating head unit "of different shape and size" which are alternatively subject to suction, the present specification refers to a "passage" and a "restricted suction connection" through the head unit, with the latter "connection" being stated to be "restricted as practically commensurate with proper valve movement".  The effect of this construction is stated to greatly reduce the quantity of liquid flow via this connection through the head compared to that through the passage, which is said to result in an intermittent cut off of the flow through the head and cause pulsations in the suction pipe thus generating movement of the unit over the pool surface.
         The specification ends with six claims, claims 2 to 5 being appended to claim 1 and claim 6 being an omnibus claim.  Claim 1 is as follows:

"1.Apparatus for cleaning submerged surfaces comprising:

a balanced operating head having an inlet and an outlet defining respective inlet and outlet axes,

the outlet adapted to be swivelably connected to a longitudinally resilient and flexible suction hose,

the inlet axis being inclined at an angle of between thirty degrees and sixty degrees to that of the outlet axis,

a passage through the head from inlet to outlet,

an oscillatable valve in the head adapted to alternately open and close said passage,

a baffle plate in the head between the inlet and the valve to form a restricted suction connection between the inlet and outlet around the valve when the passage is closed,

the connection being as restricted as practically commensurate with proper valve movement,

the valve shaped so that liquid flow through the head will cause automatic oscillation thereof between terminal positions."

Section 40
         Mr. Wray on behalf of the opponent submitted that claim 1 is not clear in that (a) it fails to properly distinguish between "a passage" and the formation of the "restricted suction connection" and (b) because the expression "the connection being as restricted as practically commensurate with proper valve movement" lacks any meaning.
         On the first point, Mr. Wray's main argument as I understand it, rests on the proposition that the claim only specifies one "passage" through the head from inlet to outlet, yet the restricted suction connection seems to provide a second passage thus generating, prima facie, a conflict.  On my interpretation, the claim requires both "a passage" and "a restricted suction connection" through the head from inlet to outlet, i.e. two flow paths ‑ the flow path provided by the "restricted suction connection" being in use when the other flow path, via the "passage", is closed.  It seems to me that the different expressions in the claim for these flow paths have been chosen in order to provide, or attempt to provide, a constructional and functional distinction between these flow paths since the description refers to flow through the "restricted suction connection" being "greatly reduced" compared to that through the "passage".  I note that slightly different terminology has been used in the present application as compared to that in the parent specification, but this, of itself, is not significant.  In my view, the expressions at issue in the claim have a clear meaning.
         There is however another aspect worthy of comment at this stage and this concerns the characterization in the claim:

"a baffle plate in the head ... to form a restricted suction connection ..."

As is evident from the description, the restricted suction connection is not formed solely by the baffle plate as implied by the above definition ‑ in fact it is the baffle plate plus walls of the head and surfaces of the valve which together delineate a suction connection around the valve when the passage is closed, with the disposition of the baffle plate relative to the valve determining the size of the entrance to that connection.  Accordingly I consider the definition in claim 1 fails to clearly define the "restricted suction connection" of the apparatus.
         Mr. Wray's second point concerns the degree of restriction of the suction connection and how this bears with "proper valve movement".  The claim refers to the restricted suction connection as "being as restricted as practically commensurate with proper valve movement".  The description of the invention provides little assistance in the understanding of this feature; for instance there is no indication of what constitutes "proper valve movement".  However what the description does indicate is that the degree of restriction envisaged is a severe one; the flow through the suction connection is "greatly reduced compared to that through the passage", that this flow path is "only open for a brief period" when the passage is closed and that "appreciable liquid flow there‑ through" is prevented.  The description in referring to the preferred embodiment explains:

"In one such position (of the valve) the flow is substantially full and direct through opening 18 and passage 13 to outlet 3 while in the other there is maximum reduction in liquid flow through the head (via the restricted suction connection).  This results in use to an intermittent cut off flow through the head as the valve 14 oscillates between its terminal positions ..."

I interpret the feature in the claim in question to mean that the restriction of the suction connection is interrelated to the functioning of the valve, to the degree that such a restriction which would lead to the valve not performing properly its opening/closing function of the passage, is not a construction encompassed by the claim.  However what this interpretation implies, given that the restricted suction connection is restricted relative to the passage, is that there will be a range of sizes for the restricted suction connection applicable to a particular sized passage since it is clear that the valve will operate properly given varying relative sizes of "suction connection" to "passage".  Hence the feature of the restricted suction connection in the claim is not limited to that degree of restriction which is contemplated by the description of the invention, and advanced in submissions on behalf of the applicant; that is, one which is so severe that it practically cuts off liquid flow through the head when the flow path of the "passage" is closed. Consequently I conclude that claim 1 lacks fair basis in this regard.
         One further point raised by Mr. Wray was the matter of disconformity between the description and the claims in respect of the terms "baffle plate" and "restricted suction connection" of the claims and the respective terms "partition member" and "suction communication" of the description.  It seems to me that these terms are unnecessarily different but nevertheless I do not believe that this creates any difficulty in the interpretation of the document.
         There is another matter under this heading which I have noted but which was not raised at the hearing.  This concerns the definition in the claim concerning the valve oscillating between "terminal positions" and the absence in the claim of any definition relating to the open/closed nature of the restricted suction connection when the passage is open.  While from the claim the terminal positions of the valve can be related to the open or closed nature of said passage, these positions may or may not correspond to any closure of the restricted suction connection.  Claim 1 therefore includes apparatus of two constructions, one wherein the valve never closes the "restricted suction connection" and a second wherein the valve alternates between closing the "passage" and the "restricted suction connection", respectively.  From my assessment of the specification I find no support for the invention described encompassing the former construction.  The only specific description of the invention by way of a preferred embodiment indicates that the oscillating valve closes the restricted suction connection in one terminal position and closes the passage in its other terminal position; the specification explains it thus:

"The suction communication is adapted to be shut off when the flow passage is open and is only open for a brief period when the valve 14 closes the flow passage."

There is no indication whatsoever in the description of the invention that the valve need not be arranged to close the suction connection and yet achieve the objects of the invention.  This is not surprising since in submissions and evidence on behalf of the applicant in these proceedings it was contended that the present invention was an improvement in, or modification of, the invention claimed in the parent specification.  That invention related to apparatus having two flow passages which were alternatively closed by an oscillating valve, and in relation to the present application the modification contended concerned the severe restricting of one of those flow passages to create a "restricted suction connection".  Consequently I find that insofar as claim 1 includes the first of the two aforesaid constructions, it is not fairly based.
Prior Claiming
         The opponent has submitted that claims 1 to 6 of the opposed patent of addition specification are prior claimed by claims 1 to 5 and 7 of the parent patent 502993.  At this stage it is useful to set out the respective main claims:

Claim 1 application 521920

apparatus for cleaning submerged     apparatus for cleaning submerged
surfaces comprising:                surfaces comprising:

a balanced operating head having     a balanced operating head having
an inlet and an outlet defining     an inlet and an outlet
respective inlet and outlet
axes

the outlet adapted to be            the outlet adapted to be
swivelably connected to a           swivelably connected to a
longitudinally resilient and        longitudinally resilient and
flexible suction hose               flexible suction hose

the inlet axis being inclined       the inlet axis being inclined at
at an angle of between thirty       an angle of between thirty degrees
degrees and sixty degrees to        and sixty degrees to that of the
that of the outlet axis             outlet

a passage through the head from through the
inlet to outlet  head from inlet to outlet

an oscillatable valve in the        an oscillatable valve in the head
head adapted to alternatively       adapted to alternatively close
open and close said passage

a baffle plate in the head          a baffle plate in the head between
between the inlet and the           the inlet and valve to cause one
valve to form a restricted
suction connection between the
inlet and outlet around the
valve when the passage is                 
closed

the connection being as
restricted as practically
commensurate with proper valve
movement

the valve shaped so that liquid     the valve shaped so that liquid
flow through the head will cause     flow through the passages will
automatic oscillation thereof       cause automatic oscillation
between terminal positions.         thereof between terminal positions

.

The differences in wording between the two claims have been underlined.  Additionally, claims 2 to 6 of the application‑in‑suit are identical in wording to claims 2 to 5 and 7 of the parent.
         Mr. Wray submitted that both claims are of substantial identity.  I think it is clear that the scopes of the constructions defined in the first four paragraphs of each claim as set out above are identical; the references to respective inlet and outlet axes is "mere trimming".  Mr. Wray also submitted that, if they were distinct entities, the "passage" and "restricted suction connection" of the application‑in‑suit were in reality identical to the two passages of the parent.  I am inclined to agree since the second passage of the parent, being a passage that is "more restricted and less direct" than the other passage, in effect forms a "restricted suction connection".
         While a comparison of respective paragraphs six and seven of the claims reveals a difference (claim 1 of application 521920 does not specify that the restricted suction connection is closed by the valve), in view of my earlier conclusion that the claim of the application‑in‑suit is not fairly based in this regard, these paragraphs would be equivalent if the claim were to be corrected. The only other difference of note relates to the characterization in the application‑in‑suit that "the connection being as restricted as practically commensurate with proper valve movement".  I have already discussed the meaning of this expression and have found that it merely interrelates the restriction to proper valve movement; by which I mean that the restriction is chosen so that valve movement is possible and the invention performs its stated objects.  As such, I consider this characterization is inherent within the definition of the parent claim, since that claim provides for apparatus wherein one flow passage is "more restricted and less direct" than the other passage with each passage being alternatively closeable by the oscillatable valve.
         Consequently claim 1 of earlier Patent 502993 includes within its scope the apparatus of claim 1 of the application‑in‑suit.  However, this of itself is not sufficient to establish prior claiming for the reasons I will now discuss.
In Ethyl Corporation (Cook's) Patent (1970) RPC 227, Graham J. considered three typical instances that can arise in prior claiming considerations (see pages 231, 232). I find the present situation equates with the "third case" discussed there, namely the two specifications being considered are concerned with the same problems and the solution profferred by each is substantially the same such that the latter claim falls wholly within the scope of the earlier claim. The test that Graham J. thought appropriate in these cases is derived from considerations of "selection" patents. He expressed himself in the following terms:

"There is, however one test which in my judgment is of assistance in all prior claim cases of this third type because it is of general application. This test is derived by analogy from the position of a so called "selection" patent. In a "selection" case the position is that there is a narrower later claim which falls wholly within the broader area of the disclosure of an earlier published prior document. In such case there will be anticipation unless the patentee of the later invention can show that he has selected an area from the prior broad disclosure which gives advantages beyond or different from those disclosed by the prior document. Provided the strict rules for validity laid down in I.G. Farbenindustrie's Patents (1930) 47 RPC 289, and other cases are observed, there is no reason why the claim in the later selection patent should not be valid. The patentee must of course frame his specification in proper form and the court must be satisfied that there are real advantages in fact in his selection, but provided that this be so there is no reason why he should not have such a claim and why, if it is fought such a claim should not be upheld. By analogy it seems to me that, if the true position in a prior claiming case, where of course the prior document ex hypothesi has not been published, is that had such prior document been published the later inventor would have been able to frame his specification in the form of a selection patent and would have been able to claim specific advantages for his later and narrower claim, then there is no reason why he should not also in effect be in that position in a prior claiming case. If the proper conclusion is that he is in such a position, then in my judgment the right decision is that there is no prior claim. On the other hand, if the conclusion is that he is merely reclaiming again a small portion of that field already claimed in the prior document without being, as it were, in the selection position so far as the prior invention is concerned, then the decision should be the opposite."

To summarize, the position as I understand it, having regard also to remarks in Westinghouse Electrical Corporation (Frost's) Application (1973) RPC 139 and B.A.S.F. AG's (Distler's) Application (1977) FSR 137, is this : if on considering the specification alleged to be prior claimed it is concluded that, upon its face, a selection patent could have been obtained, then there could not be said to be prior claiming. While it is clear from the authorities mentioned that this is not the only test, and of itself may not be conclusive of the issue, it seems to me that in the present case it is an appropriate test to apply, which I will now proceed to do.
         The I.G. Farbenindustrie's case (supra) laid down three rules which must be satisfied for a valid selection patent.  The first requires that the selection must be based on some substantial advantage gained or some substantial disadvantage avoided.  In the present application, given the apparatus of the invention claimed in the parent specification (the prima facie prior claiming document), the only feature of the apparatus capable of characterizing such a selection must reside in the feature of the "restricted suction connection" which is "restricted as practically commensurate with proper valve movement".  A review of the description of the invention in the specification reveals no mention of any advantage gained (or disadvantage avoided) by the apparatus due to this feature.  Assuming the apparatus is such that it achieves the object of the invention, then this suggests the apparatus to be one which effectively cleans and operates at a useful speed over the surface to be cleaned, but the same can be said of the apparatus of the parent specification.  There is no suggestion in the present specification that the effectiveness or operating speed of travel of the apparatus is superior over that of the parent apparatus because of the selected feature.
         The declaration by the inventor H.C. Hofmann filed in this opposition states:

"6.b..... This enabled me to build a machine with the flow path around the side of the valve opposite the passage restricted to a degree which resulted in a minimal flow around the valve causing a practical cut off of flow through the cleaner.  The cleaner made in this way was more efficient than that where the flow path around the valve was substantial as in the cleaner described in my Patent No. 502993."

This suggests that some benefit or advantage may arise from apparatus constructed as stated.  But the specification itself contains no hint whatsoever of such a benefit or substantial advantage arising.  Nor does the specification suggest that the apparatus, because of the selected feature of "restricted suction connection", displays a quality of special character peculiar only to apparatus having the one flow path restricted as stated (selection rule 3).
         I think it is clear from the authorities already mentioned, as well as others dealing with "selection" patents, that in order to argue that a valid selection has been made, the description of the invention in the specification itself must provide the basis on which to so argue.  As I have indicated in the above discussion, the specification itself provides no such basis.  It is therefore my conclusion that the present application could not constitute a "selection" and accordingly the finding of prior claiming based on the parent patent claim must be made out.  I am of the opinion that this finding applies to all claims of the present application.
         The opponent in its notice of opposition also alleged prior claiming in respect of the Chauvier patents 490972 and 505209.  Mr. Wray did not actively pursue this allegation at the hearing.  In my view, an assessment of the claims of 490972 and 505209 reveals that the allegation cannot be supported.
Prior Publication
         At the hearing, Mr. Wray raised matters which in short amounted to an argument that the claimed invention had been prior published by the specification of patent 490972, which was published before the priority date of the present claims.  There is no doubt that the apparatus disclosed by patent 490972 has a number of constructional features which equate with features defined in claim 1 of the present application.  However there is no disclosure in the specification of 490972 that one of the two flow passages is in any way restricted or enables a different level of flow therethrough.  Consequently applying the strict well established tests for prior publication, I find that this ground of opposition has not been proved.  Furthermore, in my view, the claimed invention does not lack novelty in the light of patent 490972.
Obviousness
         There were no submissions put to me at the hearing concerning the opposition ground of obviousness.  In fact there is no evidence before me on this issue at all.  Consequently I dismiss this ground of opposition.
Section 72
         In his submissions at the hearing, Mr. Wray in effect contended that the application did not possess the necessary qualities of a proper application for a patent of addition (section 72).  In line with the discussion earlier in this decision regarding the prior claiming issue, I consider that the present invention is not in respect of an improvement in, or modification of, the main invention as defined in the parent patent.  It seems to me that the present specification merely relates to a design optimization of the earlier invention particularly with respect to the restricted passage, rather than being concerned with any identifiable improvement in or modification of that invention. However, insufficient status as a patent of addition is not in itself a ground of opposition, although in view of the provisions of section 76, the validity of the application in suit could be affected if patent of addition status were not applicable; in the present case this is not an issue since the parent specification was not published before the priority date of the application in suit.  There is of course ultimately a discretion on the part of the Commissioner when the application is otherwise in order for sealing whether to grant a patent as requested by the applicant (see sub‑section 73(1)). In the present circumstances, in view of my finding of the existence of prior claiming as expressed earlier in this decision, I find it unnecessary to form any conclusion under sub‑section 73(1) at this stage.
Conclusion
         In summary I have found the opposition successful on the grounds of non‑compliance with section 40 and prior claiming.  While I believe the section 40 deficiencies could be rectified by amendment, I have doubts whether the prior claiming problem can be similarly overcome by amendment action given the nature of the specification on file and the limitations placed on possible amendments to the specification under section 78.  Nevertheless rather than refuse the application at this stage, I will allow the applicant a period of 60 days from the date of this decision to consider and if thought appropriate request any amendment action.  Unless a request to amend is filed in that period or the application withdrawn, and subject to any appeal being filed against this decision, I will refuse the application.
         I award costs against the applicant.

(T.R. BRUHN)

Patent Attorneys for the applicant : Clement Hack & Co.