Bio-Energy Systems, Inc v Lawrence John Walton, Robert Niven Walton and Peter Donald Parker

[1991] APO 35

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No 517760 by BIO-ENERGY SYSTEMS, INC and Opposition to the Grant of a Patent thereon by LAWRENCE JOHN WALTON, ROBERT NIVEN WALTON and PETER DONALD PARKER

Background

In my decision in this matter dated 30 July 1987 I found that the opposition was successful on the ground that the specification did not comply with section 40 [1952 Act].  I afforded the applicant an opportunity to amend its specification to overcome the deficiencies identified.  In that decision I reviewed to some extent the evidence relevant to the opposition grounds of prior publication and novelty, but I deferred deciding on those grounds and on obviousness until the section 40 defects in the claims had been addressed.
          A request to amend together with a first statement of proposed amendments was filed on 17 September 1987.  Examination action ensued during which three further amendment statements were filed.  Eventually, on 7 December 1989 the request to amend was advertised in the Official Journal.  In the absence of opposition, this request was allowed on 16 March 1990 and the specification amended at that time in accordance with the request.
          On 13 September 1990 the patent attorney representing the opponents, Mr John Gardner, advised by letter that the opponents did not wish to be further heard before a final decision issued in this matter.  However the attorney asked that certain matters referred to in his letter be considered before that decision issues.  In January 1991, the patent attorney for the applicant, Mr Charles Sandercock,

confirmed that the applicant did not wish to be further heard.  Accordingly I am now able to decide this matter.
The amended specification
          The amended specification now concludes with 32 claims, claims 1, 13, 18, 25 and 28 being independent.  These independent claims correspond, in a general sense, with the independent claims before amendment.
          Claim 1 reads as follows:

1.A heat exchanger comprising a plurality of parallel fluid-conducting tubes of elastomeric material formed in an elongate mat with flexible webs connecting adjacent tubes, and wherein:

(a)a section of the mat intermediate the ends thereof between sub-sections of said mat is free of said webs between the tubes with the tubes in said section remaining uninterrupted and integral;

(b)said subsections being arranged substantially coplanar with the free tubes of said section of the mat intermediate ends thereof; and further comprising

(c)first and second hollow manifolds; and wherein

(d)opposite end portions of all of the tubes remote from said section of the mat intermediate the ends thereof being free of said webs and being connected to the respective hollow manifolds through respective holes in the manifold walls.

Claim 18 is also directed to a heat exchanger and claims 13, 25 and 28 are directed to a method of installing a radiant heat exchanger on a building structure.
Section 40
          In my earlier decision at pages 7 and 8, I referred to specific section 40 deficiencies in the claims then before me.  In my opinion the independent claims which are now present in the specification avoid the deficiencies previously identified.  Thus I am satisfied that the independent claims adequately define the invention and are fairly based on the matter described.
          The attorney representing the opponents has referred to the definition in a number of the claims.  His comments, firstly, suggest that certain claims may lack clear definition, and secondly, draw attention to the possible scope of certain claims.  I will consider those points in some detail following.
          Firstly, Mr Gardner draws attention to claim 1 and the definition "said mat is free of said webs between the tubes" and notes that claim 5, which appends indirectly to claim 1, in referring to the same webs, requires that the webs "are removed from the mat".  I agree with Mr Gardner that because of the definition in claim 5, claim 1 includes an arrangement wherein the webs in regions can be free from the tubes but not removed from the mat.  I note that claim 18 requires a similar interpretation.
          Secondly, Mr Gardner refers to claim 3, which is appended to claim 1, and its definition "wherein the flexible webs space adjacent tubes apart".  He suggests that this definition makes uncertain the scope of claim 1 regarding whether the webs space the tubes apart.  Given these definitions, in my opinion, claim 1 includes arrangements of webs which may or may not result in adjacent tubes being spaced apart.  A similar observation applies to claim 18.
          Thirdly, Mr Gardner draws attention to the definition in claim 4 concerning "two tear lines" connecting the webs to the tubes.  I would agree that this definition creates some uncertainty regarding whether the webs connect directly to the tubes or via some intermediate element (such as the "two tear lines", by which I assume was intended two lines of weakness).  Nevertheless, if the "tear lines" are part of the web, then there is no uncertainty.  I do not see the definition of claim 4 and any uncertainty it creates as a defect which alone should, at this stage, prevent the application proceeding to grant.
          The final points Mr Gardner raises concerns claims 18 and 22.  Whilst it seems to me that a part of the definition of claim 22 is superfluous in view of claim 18, I do not believe that this creates ambiguity as suggested by the opponent's attorney.
Prior Publication and Novelty
          In my earlier decision I deferred full consideration under this heading until the section 40 defects were satisfactorily addressed.  I referred to the most relevant exhibits and provided an indication of their disclosure in my earlier decision.  I will not repeat those observations here, but I will consider those exhibits more specifically on the opposition grounds of prior publication and lack of novelty in relation to the present claims.
          LJW3 - This exhibit comprises two photographs of a solar heating system installed on a roof.
          LJW4 - This exhibit is a photograph showing another solar heating system on a roof.
          Exhibits LJW3 and LJW4 appear to show similar heat exchangers for the respective heating systems.  These heat exchangers comprise four fluid-conducting tubes in a mat, there being webs between and connected to the tubes.  At the ends of the mats, the webs between the tubes have been cut or divided to thus leave a tube unconnected to an adjacent tube.  It is not evident from these exhibits whether the heat exchanger mats are actually free of webs between the tubes at their ends or at an intermediate portion between the ends - there is no evidence from the declarant on this point.
          LJW5 - This exhibit is a copy of US Patent 3648768.  It discloses a heat exchanger element comprising a plurality of tubes each connected to adjacent tubes by webs.  The element is connected to headers at its ends, the webs being cut away between the tubes at the element ends to aid the connection.  The document implies that the webs are "flexible".  There is no disclosure of a sub-section of the element intermediate the ends being free of the webs between the tubes.
          LJW11 - This exhibit is a copy of US Patent 4060070.  It discloses a solar heater comprising an absorber consisting of a plurality of spaced tubular elements interconnected by web portions in tangential relationship therewith.  There is no disclosure of separating or removing webs between the tubular elements at any location.
          LJW12 - This exhibit is a copy of US Patent 4112921.  It discloses a solar collector consisting of a plurality of tube pairs, "each pair connected by a thin tear strip".  The tubing pairs can provide an out-and-back path for fluid, the tubes of the pair being separated to enable a connection to be made to respective headers at one end and being separated and connected to the respective arms of a U-bend pipe at the other end to create the out-and-back path.  There is no disclosure of separating or removing webs between the tubes, although the tubes can be separated at the ends of the pair "by a ripping motion" whereby a tear is created in the tear strip.  Furthermore, there is no disclosure of separating or removing webs between the tubes at a portion of the tube pairs intermediate its ends.

Thus the mentioned exhibits disclose heat exchangers including elongated tube mats wherein the adjacent tubes of the mat are connected by flexible webs.  However they do not disclose that such tube mats have end sections and a section intermediate their ends free of the webs, that is, free in the sense of either being separated or removed from its adjacent tubes.  As the features referred to in the previous sentence characterize the invention defined in each of the independent claims, there is no prior publication of the invention claimed.
          On the question of novelty, applicant's evidence identifies alleged advantages from having the webs separated or removed from certain locations of the tube mat.  In particular, advantages are advanced for providing a web free section of the mat intermediate the ends.  Such advantages include increased versatility and ease in installing the heat exchanger on surfaces, particularly those having base surface obstructions intermediate the mat ends, and the ability to enable side-by-side alignment of the end sections of the mat without the need to destroy the integrity of the tubes at the intermediate section.  It seems to me that the invention does indeed present these advantages.  Whilst the differences between the claimed invention and some of the prior devices appear rather minor, I am not convinced that the claimed invention clearly lacks novelty over such devices.
Obviousness
          The opposition ground of obviousness is listed on the notice of opposition.  As to the question of obviousness, the issue to be determined is whether, at the priority date of the claims, the invention as claimed would have been obvious to a notional person
skilled in the relevant art.  Furthermore it is well accepted in Australian Patent Law that the determination of obviousness is a matter dependent upon the common general knowledge in Australia in the field of the invention.
          I have little evidence before me on this question.  Although involved in research into, and development of, solar water heaters since 1974, and in the installation of many solar pool heaters, Mr L. Walton in his declaration in support of the opposition, provides no indication of matters of common general knowledge in the art of tube mat heat exchangers as of March 1979.  While he comments that the use of tear strips is known in various arts to effect separation of components, there is nothing to indicate to me that a person skilled in the art of the invention viewed the separation of a pair of tubes from a connecting web by means of tear strips as a matter of common general knowledge.  Furthermore there is no evidence to establish that the prior patent specifications put in evidence formed part of common general knowledge at that time.
          In the absence of relevant evidence, I am unable to consider this ground of opposition further.
Conclusion
          I have decided that the opposition grounds of prior publication, lack of novelty and obviousness of the invention claimed have not been established.  Furthermore, I do not believe that the specification exhibits any section 40 defect which prevents the application proceeding to sealing.  Accordingly I dismiss the
opposition and direct that the application proceed to sealing, subject of course to any appeal which may be made to this decision.

(T.R. BRUHN)
  Supervising Examiner of Patents

Patent attorneys for the applicant: Davies & Collison, Melbourne
Patent attorney for the opponent  : John R.G. Gardner