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

[1987] APO 18

In the Matter of the Patents Act 1952

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In the Matter of Application 517760 for a Patent by BIO‑ENERGY SYSTEMS, INC.

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In the Matter of Opposition thereto by LAWRENCE JOHN WALTON, ROBERT NIVEN WALTON and PETER DONALD PARKER.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application 517760 entitled "TUBE MAT HEAT EXCHANGER" was filed on 31 January, 1980 by BIO‑ENERGY SYSTEMS, INC. This application claims Convention priority based on an earlier application filed in the USA on 9 March, 1979.  Acceptance of the application was notified in the Official Journal on 27 August, 1981 and notice of opposition was lodged by the opponents on Monday, 1 March, 1982.
         After service of evidence in support, answer and reply, a hearing in respect of the opposition was set for 2 May, 1986 in Canberra.  The applicant was represented by Mr. C. Sandercock, patent attorney of Sandercock, Smith & Beadle, Melbourne.  Prior to the hearing the opponents' then Patent Attorneys, T.G. Ahearn & Co., Brisbane, advised that the opponents would not be represented at the hearing.
         Subsequent to the hearing and prior to a decision on the opposition being issued, the application lapsed due to non‑payment of a continuation fee.  The application was advertised restored on 26 March, 1987.

The grounds of opposition listed on the notice of opposition are those grounds specified in paragraphs (d) to (i) of sub‑section 59(1) of the Act although the evidence addresses only those grounds listed in paragraphs (g) to (i).
The Specification
         The invention the subject of the opposed specification "concerns a heat exchanger in the form of a mat having a plurality of fluid conducting tubes arranged parallel to one another and joined by connecting webs".  The specification refers to the use in prior art radiant heating systems of copper pipe embedded within a concrete slab or beneath a slab in sand for additional thermal mass. Systems of this type are said to exhibit a number of disadvantages arising from the use of copper pipe.
         Following the reference to prior art systems, the specification includes two consistory statements, these equating with claims 1 and 9.  In essence, as described, the heat exchanger of the present invention utilizes a plurality of parallel fluid‑conducting tubes of elastomeric material formed into a mat with flexible webs connecting adjacent tube pairs, there being portions of the mat free of such webs.  Following the consistory statements, the specification lists a number of advantages arising from the use of such a tube mat in a heat exchanger system over one using copper pipes.
         A particular embodiment of the invention is then described with reference to the drawings.  These drawings illustrate a tube mat heat exchanger in a radiant heating system for use in a concrete slab floor.  The particular embodiment described shows a tube mat wherein the webs between tube pairs are freed and removed (i) at opposite ends of the mat to enable connection of the tubes to respective manifolds, and (ii) in a region intermediate the mat ends thus enabling an alignment of the mat sections either side of the intermediate region in a parallel, side‑by‑side and substantially coplanar configuration.  The tube mat shown has tear lines in the webs adjacent the tubes to facilitate the separation of tubes from the webs.
         While the tube mat heat exchanger is specifically described in relation to a radiant heating system, the specification explains that other applications are possible "such as in solar collecting apparatus".
         The specification as accepted concluded with 29 claims.  As a consequence of a Request to amend under Section 77 lodged on 12 May, 1983, the allowance of which was advertised on 26 January, 1984, three of the accepted claims have been deleted.  The amended specification under consideration includes a total of five independent claims directed to either apparatus or a method.  The main claims relevant to this decision read as follows:

"1.A heat exchanger having a plurality of parallel fluid‑conducting tubes of elastomeric material formed in an elongated mat with flexible webs connecting adjacent pairs of the tubes, there being pairing means for subsections of said mat comprising:

(a)a central mat section between said subsections which is free of said webs between the tubes with the tubes remaining uninterrupted and integral;

(b)said subsections being arranged substantially coplanar with the free tubes of the central section;

(c)first and second hollow manifolds; and

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

9.A method of installing a radiant heat exchanger in a building structure, said heat exchanger including a plurality of elongated mats of elastomeric material, each mat defining a plurality of fluid‑conducting tubes with flexible webs joining adjacent pairs of tubes, said tubes being connected to respective manifolds comprising:

(a)removing said webs from between said tubes in a central section of the mat whilst leaving the tubes uninterrupted and integral;

(b)removing said webs from between said tubes at end portions of the mats for connection to the manifolds;

(c)locating said mats in place on the building structure so that subsections thereof to each side of the central section are substantially coplanar; and

(d)covering said mats with a structural matrix.

14.In a heat exchanger wherein a plurality of parallel fluid‑conducting tubes of elastomeric material are formed in an elongated mat with a plurality of flexible webs connecting respective adjacent pairs of tubes, the improvement which comprises:

(a)first and second hollow manifolds arranged transverse to said fluid‑conducting tubes,

(b)one end of each tube being connected to the first manifold and one end of each tube being connected to the second manifold with a closed fluid‑

conducting path being defined through each tube from the first to the second manifold,

(c)the webs being separated from their adjacent tubes along tear lines at at least two longitudinally spaced portions of the mat.

19.A method of installing a radiant heat exchanger on a building structure, said heat exchanger including a plurality of fluid‑conducting tubes formed in elongated mats with flexible webs joining adjacent pairs of tubes, said tubes being connected to respective manifolds, which comprises:

(a)removing said webs from between said tubes at at least two longitudinally spaced portions of each mat,

(b)locating said mats in place on the building structure so that the mats are substantially coplanar, and

(c)covering the mats with concrete.

22.A method of installing a heat exchanger on a building structure, said heat exchanger including a plurality of fluid‑conducting tubes formed in elongated mats with flexible webs joining and spacing apart adjacent pairs of tubes and being separable therefrom along tear lines, said tubes being connected to respective manifolds, which comprises:

(a)separating said webs along said tear lines and removing the separated webs from between said tubes at at least two longitudinally spaced portions of at least one of the mats; and

(b)locating said mats in place on the building structure so that the mats are substantially coplanar."

The Evidence
         The evidence‑in‑support of the opposition consists of statutory declarations by Lawrence John Walton and Thomas Gipps Ahearn.
         Mr. Walton is one of the opponents and has been involved in the research and development of solar water heaters since 1974.  He exhibits with his declaration a number of patent specifications which are as follows:

Exhibit LJW  1  ‑  AU 508139  (opi 27.10.77)
                 LJW  2   ‑  AU 516962  (opi 17.5.79)
                 LJW  5   ‑  US 3648768 (patented 1972)
                 LJW  7   ‑  AU 430638
                 LJW  8   ‑  AU 511021
                 LJW  9   ‑  AU 276455
                 LJW 10   ‑  AU 409381
                 LJW 11   ‑  US 4060070 (1977)
                 LJW 12   ‑  US 4112921 (1978)

Mr. Walton is a member of the firm Zane Solar Systems (Aust.), a firm involved in manufacturing and installing solar pool heaters of the type shown in, or similar to, Exhibits LJW1 and 2.  Also included with his declaration are exhibits LJW3 and 4 which are photographs of heat exchangers said to be installed by his firm, on respectively, the Golden Rainbow Motel and the Sun Valley Apartments both located on the Gold Coast Highway, Qld., said installations being made in 1976 and 1977.
         Mr. Ahearn is a Registered Patent Attorney.  His declaration is concerned with a consideration of the specification and whether the requirements of Section 40 are satisfied.
         The evidence‑in‑answer consists of statutory declarations by Simon Boadle, Calvin Dodd MacCracken and Michael F. Zinn.
         Mr. Boadle of Victoria is a manufacturer of solar heating appliances, and Mr. MacCracken is President of Calmac Manufacturing Corp. of the USA and the patentee of United States Patent 4112921 (exhibit LJW12) as well as being the inventor in respect of many other patents.  They both comment on the application in suit and the evidence advanced by the opponents.
         Mr. Zinn is the President of Besicorp Group Inc. of the USA (formerly BIO‑ENERGY SYSTEMS, INC.) and one of the inventors listed on the present application.  He includes with his declaration a number of brochures on the heat exchanger of the present invention produced by his company.  In addition to these he gives some background details of the invention, and details of the re‑examination proceedings in the United States relating to the corresponding US patent.
         The evidence‑in‑reply consists of a statutory declaration by Trevor John Bloor.  Mr. Bloor is the General Manager of Zane Solar Systems (Aust.) and has had experience in solar heating systems for six years, that is since about 1979.  He makes a number of comments regarding the evidence in answer.
Section 40
         Mr. Ahearn in his statutory declaration has referred to a number of matters alleging non‑compliance of the specification with section 40.  In respect of one of those matters, my review of the description of the invention in the specification indicates to me that the invention is concerned with the provision of a heat exchanger utilizing fluid‑conducting tubes of elastomeric material ‑ advantages are given for this construction over the copper pipe systems of the prior art.  Since claims 19 to 26 are not limited to the tubes being of elastomeric material, I consider these claims to be not fairly based.
         The other points raised by Mr. Ahearn suggest that the claims are far broader than the disclosure, particularly the preferred embodiments, and hence are not fairly based.  I see no need to discuss each of these points in detail, suffice it to say that I am not in agreement with the allegations made.  In my view the disclosure is such that it supports claims having features more broadly defined than the specific examples described in relation to the preferred embodiments.
         Apart from the matters referred to by Mr. Ahearn, there are further matters that arise under this heading, matters which in my view establish further grounds of non‑compliance with the requirements of section 40 apart from the one already mentioned.  These matters are serious defects in the complete specification as they concern lack of clear definition and fair basis of the claims.
         Firstly, each independent claim includes a definition of the kind "flexible webs connecting adjacent pairs of the tubes".  This definition on my interpretation implies a pairing of the tubes of the mat with webs only connecting together each respective pair.  However in contrast, it is evident from the description of the invention that irrespective of the number of tubes in the mat, each tube is connected to an adjacent tube or tubes by a flexible web.  On a related point, in those claims where it is defined that the tube mat has sections free of webs ‑ or in the method claims, removing webs from between the tubes in specified sections ‑ the definitions are not such as to require all webs in those particular sections to be absent or removed as the description discloses.  For these reasons the claims lack clear definition of the invention described.
         Secondly, claim 1 from the definition in lines 4 and 5 characterises features of the "pairing means for sub‑sections of said mat" yet the features itemized relate to constructional features of the overall heat exchanger system rather than a definition of "pairing means"; in any event while the description refers to particular features of the tube mat and its manner of connection to manifolds, there is no identifiable disclosure of so‑called pairing means for sub‑sections thereof.  Claim 1 therefore is not a clear definition of the invention.  Claim 9 is similarly deficient due to the definition "said tubes ... comprising:".
         Thirdly, on my assessment of the description, the invention as disclosed includes the feature that each elongated tube mat possesses a section thereof intermediate its end sections which has all tubes free of the flexible webs.  Such a construction enables the looping of the mats as described in relation to Figures 3 and 6 or, as explained in the opposition evidence, allows the mats to negotiate surface obstructions on installation.  As independent claims 14, 19 and 22 are not limited to having elongated tube mats of this construction, I find these claims to lack fair basis on the matter described.
         A final point concerns an apparent inconsistency in the use of the expression "heat exchanger".  As used in the description particularly with reference to the preferred embodiment, the expression "heat exchanger" is used as a general descriptive term for the tube mat.  However in at least some claims, e.g. claims 1 and 14, the same expression apparently refers to a heating system including a tube mat.
         It is appropriate at this stage to refer to several other definitions in the claims to indicate their meaning and scope.  Firstly, the claims refer to the use of flexible webs between the fluid‑conducting tubes.  The specification provides no definition of a "web" in the context of the present invention, although as shown with reference to the preferred embodiments, the webs are thin pieces of material integral with the tubes occupying the entire space between adjacent tubes, the tubes being spaced some 2 to 3 tube diameters apart.  However it seems to me that any interpretation of "web" must also include a narrower portion of connection material especially as not all independent claims necessarily require a distinct and substantial spacing between adjacent tubes (see, e.g. claims 14 and 17).  Secondly due to the definitions such as "free of said webs between the tubes", "removing said webs from between said tubes", I interpret claims 1, 9, 19 and 22 to define portions of the elongated mat being entirely free of the webs; with regard to claim 14, I take the definition to require the web to be separated from adjacent tubes at spaced portions, but not necessarily entirely removed therefrom.
Prior Publication and Novelty
         In view of my findings concerning the specification in relation to the requirements of section 40, I find it unnecessary to consider in detail the question of novelty in respect of the claims presently before me.  However it seems to me that relatively minor amendments to claims 1 and 9 would avoid the section 40 deficiencies found.  Therefore whilst I propose to defer full consideration under this heading until the section 40 defects are satisfactorily rectified, I consider it appropriate to review to some extent the evidence before me on the question of novelty with claims 1 and 9 and the preferred embodiment in mind.
         From the evidence before me, I consider that the most relevant exhibits concerning the question of novelty are LJW3, 4, 5, 11 and 12:
         LJW3 ‑ This exhibit comprises two photographs of a solar heating system installed on the roof of the Golden Rainbow Motel on the Gold Coast.  This system, as appears from the photographs, comprises two spaced apart manifolds with a large number of plastic tube mats interconnecting the two manifolds.  Each tube mat comprises four tubes in a mat‑like structure and it would seem that the tubes are connected together by webs integral with the tubes.
         Mr. Sandercock submitted at the hearing that it was not clear from the exhibit that there are webs between the tubes.  Admittedly the photographs do not show very close‑up detail, but nevertheless it does appear to me that the tubes are spaced apart with webs therebetween.  Mr. Sandercock also submitted that if there are in fact webs present, they appear to be rigid and not flexible.  Whether the webs in the installation shown are "flexible" has not been addressed to any great extent by the declarant other than by equating the device shown with the defined features of claim 1 including "flexible webs".  I note however that the photographs illustrate the tube mat in non‑planar attitudes including a twisted configuration.  This to me does suggest flexibility in the tubes and connecting webs.
         LJW4 ‑ This exhibit comprises a single photograph of a solar heating system installed on the roof of the Sun Valley Apartments on the Gold Coast.  The photograph shows, somewhat indistinctly, a series of tube mats (each apparently similar to those of exhibit LJW3) on a sloping roof, with two manifolds adjacent each other and sited at the lower edge of the roof.  Each mat appears to comprise four tubes and at one end of the mat two tubes are joined to one manifold with the remainder joined to the second manifold.
         LJW5 ‑ This exhibit comprises a copy of US Patent 3648768 to Scholl.  It discloses heat exchanger elements of "suitable plastic" consisting of a plurality of substantially parallel tubes which are integrally secured to one another by connecting webs, which webs enclose the entire space between adjacent tubes.  In order to connect such an element to headers or manifolds, the specification states that "it is advisable to cut out the ends of the connecting webs" from the ends of the elements so that short tube ends project from the main webbed part of the element.  The description tends to suggest that the elements are sufficiently rigid and exhibit a high bending strength in at least one cross‑
sectional direction.  While there is no specific mention that the webs are "flexible", it is stated that different cross‑sectional shapes of the elements can be produced "at least to some extent during their installation" which to me necessarily implies that some flexibility of the webs is required.  The elements are shown incorporated in a system connected to headers.
         LJW11 ‑ A copy of US Patent 4060070 to Harter forms this exhibit.  This patent concerns a solar heater comprising an absorber made from a polymer material and consisting of a plurality of closely spaced tubular elements disposed in parallelism with web portions interconnecting the adjacent tubular elements and in tangential relationship therewith.  The tubular elements are connected to headers via tubular adapters and the base of the absorber can possess projections to enable securement to a base; there is no disclosure of separating or removal of the webs between the tubular elements.
         LJW12 is a copy of US Patent 4112921 to MacCracken, a declarant in this matter.  It discloses a solar collector consisting of a plurality of "parallel lengths of pairs of twin extruded tubing, each pair connected by a thin tear strip".  The tubing is made of a flexible synthetic material.  The tubing pairs can be separated "by a ripping motion" for ease of making joints at one end of the length to copper U‑bends and at the other end to copper headers : thus each tubing pair provides a flow path from one header via one tube and back to the second header via the second tube of each pair.  The specification states that the tubing pairs can be secured in position by pressing them into an undried black mastic layer covering an insulation base, or an "alternative method is to tape the mat to a foil‑faced insulation board and spray, brush, roll or trowel the cement or adhesive on top of and through the mat, covering all of the aluminium foil and making good fillet contact with the tubing walls".  A translucent cover sheet can be provided over the mat of tubing pairs.  While the description indicates that the "U‑bends at one end means headering and connecting is accomplished solely at one end instead of at both", not all claims are limited to such an arrangement and to me the overall disclosure is such as to include headering at opposite ends of the tubing.

         In my view, none of the five exhibits mentioned disclose a heat exchanger system including an elongated tube mat wherein the tube mat possesses end sections and a central section free of the flexible webs, features included in present claims 1 and 9 and described in relation to the preferred embodiment.  Furthermore I note that the applicant in its specification and in evidence discloses advantages that result from the complete absence of the webs in certain locations on the mat.  Consequently, in my view, claims could be appropriately formulated to avoid any problems based on novelty.
Obviousness
         I defer consideration of this ground of opposition until the section 40 deficiencies have been addressed.
Conclusion
         In summary I have found that the specification fails to satisfy the requirements of section 40.  As the deficiencies could be rectified by amendment I afford the applicant 60 days from the date of this decision in which to propose amendments accordingly.  Once this has been satisfactorily done, the parties will be afforded an opportunity to be heard on the specification as amended, in relation to the outstanding grounds of opposition.

(T.R. BRUHN)

Patent Attorneys for the applicant : Sandercock, Smith & Beadle