Bristol-myers Company v Wik Elektro-Hausgerate Vertriebsgesellschaft mbH & Co. Produktions-Kommanditgesellschaft

[1985] APO 36

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 531331 for Letters Patent by BRISTOL-MYERS COMPANY and - In the Matter of Opposition thereto under Section 59 by WIK ELEKTRO-HAUSGERATE VERTRIEBSGESELLSCHAFT mbH & CO. PRODUKTIONS- KOMMANDITGESELLSCHAFT.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application No. 531331 by Bristol-Myers Company is a Convention application based on a U.S. application lodged 27 August, 1979 and is for an invention entitled CURLER BRUSH. The application was lodged on 30 July, 1980 and was advertised as accepted in the Official Journal of 18 August, 1983. A Notice of Opposition under section 59 to the grant of a patent was lodged on 17 February, 1984 by WIK Elektro-Hausgerate Vertriebsgesellschaft mbH & Co. Productions-Kommanditgesellschaft (WIK) after three months extension of time was granted within which to lodge notice of opposition.

The opposition under section 59 was heard in Melbourne on 16 August, 1985. The applicant was represented by Mr. T.J. Collins, patent attorney of Phillips, Ormonde & Fitzpatrick, Melbourne and the opponent was represented by Mr. C.D. Macauley, patent attorney of Callinan & Associates, Melbourne.

The grounds of opposition stated in the notice are those specified in paragraphs (a) to (i) of sub-section 59(1). However, the submissions made-at the hearing were limited to those grounds specified in paragraphs (d) and (i), i.e. prior claiming and non-compliance with section 40.

The Specification

The specification, commences by stating that the invention "relates to a lockable rotatable heated curling brush which is used for styling and curling hair". It then lists certain "disadvantages" of known curling brushes as follows:

"Known curlers with lockable rotatable heated brushes having heating units in the inner tube are characterised as having the inner tube and outer tube made from heat conductive material such as fiberglass filled polyamide. The inner and outer tubes are made of the same material and thus have the same coefficient of expansion, thus assuring that the rotatability of the brush is not adversely affected. We have found, however, that the distribution of heat in such curler brushes is uneven, being hotter in the center and cooler on the ends, thus adversely affecting the performance of the curler. There is a need, therefore, to improve the heat distribution on the curling brush."

The specification then states that:

"Accordingly, it is an object of this invention to provide an improved heated lockable, rotatable curler brush having means to provide uniform heat distribution in the curler brush."

There is a consistory statement which is equivalent to claim 1 followed by a preferred feature and a preferred embodiment of the invention.

A series of tests are then described "to demonstrate the effect of the aluminium inner tube ... and tie placement of the PTC heater ... on the uniformity of temperature on the rotating curler brush". Some of the tests involved the use of a known curling brush called a "Rollomatic-Brush" and manufactured by WIK, the present opponent.

The specification ends with four claims, claim 1 being the only independent claim.

Claim I reads as follows:

"1. A heated lockable rotatable curling brush for styling and curling hair comprising:

a rod housing serving as a handle;

an elongated cylindrical inner tube made substantially of aluminium fixedly attached to said rod housing, protruding therefrom; and adapted to rotatably support an outer tube;

an outer tube of heat conducting plastic supporting a round brush, rotatably supported on said inner tube and in heat conductive contact therewith, wherein said inner tube is in heat conducting contact with substantially the whole length of said outer tube;

an elongated resistance heater in said inner tube in heat conduction relationship therewith, and with the axial center of the heater positioned forward of the longitudinal center of said inner tube at a point which offsets the unequal heat loss rate to the atmosphere of the forward and rearward ends of the outer tube to thereby provide substantially uniform heating of the outer tube and brush; an electric cord in the inner tube connected to tie heater and an outside power source; and

a selectively engageable spring latch coupling mechanism between the handle and outer tube at the front of the rod housing for locking the outer tube and rotatably releasing the outer tube."

Section 40

Mr. Macaulay submitted that the specification does not fully describe the invention as there is not a full description of the "Rollomatic-Brush" referred to on page 6. He argued that, if an addressee in Australia was not provided with the constructional features of this "Rollomatic-Brush", the addressee could not adequately perform the tests the results of which are found in Tables 1 and 2.

I do not agree with this. The first reference to the "Rollomatic- Brush" occurs on page 6, lines 13 to 17, of the specification in relation to the tests described to demonstrate the effectiveness of the present invention with respect to known curling brushes of which the "Rollomatic-Brush" is one. This reference appears after the preferred embodiment of the present invention is described. The preferred embodiment fully describes all the features of the present invention. There is no requirement for the specification to describe the features of a known curling brush such as the "Rollomatic-Brush" used to test the effectiveness of the present invention. Thus I cannot agree that the specification does not fully describe the invention.

Mr. Macauley further submitted that claim 1 was unclear. He referred, first of all, to the wording in paragraph five of the claim and, in particular, to "the axial center" of the heater and "the longitudinal center" of the inner tube. Mr. Macauley submitted that if the terms "axial center" and "longitudinal center" referred to the longitudinal midpoints of the heater and inner tube then the claim should use that term.

I agree with Mr. Macauley that the terminology appears to be inconsistent. However, I am unable to interpret the claim in any other way than that the "axial center" of the heater and the "longitudinal center" of the inner tube refer to the longitudinal midpoints of the heater and inner tube. I note that Mr. Macauley came to tie conclusion that the terms might be referring to the longitudinal midpoints. Thus, while I feel the terms "axial centre" and "longitudinal center" introduce an initial difficulty into the construction of the claim, I do not think that they render the claim unclear.

Mr. Macauley also argued that claim 1 was unclear due to the wording "the unequal heat loss rate to the atmosphere of the forward and rearward ends of the outer tube". He submitted that, without reference to the length of the outer tube and without knowing the length of the heater, the expression is meaningless.

I do not consider that the length of the heater or the length of the outer tube need be referred to as I consider the present wording of the claim to be clear. The claim, in part, uses the technique known as "defining by result" (No Fume Ltd. v. Frank Pitchford and Co. Ltd., (1935) 52 RPC 231). Whatever the length of the outer tube and the length of the heater, the claim indicates that the "axial center" of the heater should be positioned forward of the "longitudinal center" of the inner tube "at a point which offsets the unequal heat loss rate to the atmosphere of the forward and rearward ends of the outer tube to thereby provide substantially uniform heating of the outer tube and brush". The lengths of the inner and outer tubes are specified to the extent that the inner tube "is in heat conducting contact with substantially the whole length of said outer tube". The length of the heater may vary depending on the type of "elongated resistance heater" used but the position in which such a heater is to be located is clearly defined in the claim. I therefore do not think that claim 1 is unclear.

Prior Claiming

The opponent has submitted that claims 1, 2 and claims 3, 4 of the specification in suit are prior claimed by independent claim 1 and omnibus claim 12, respectively of Australian Patent No. 537185 to WIK, sealed on 21 August, 1985.

The claims of the specification in suit, Patent Application No. 531331, have a priority date of 27 August, 1979 and the claims of the WIK Patent have a priority date of 27 January, 1979.

It may be helpful to set out the respective independent claims as follows:

537185 Claim 1	531331 Claim 1
"A heated lockable rotatable curling brush for styling and curling brush for styling and curling hair including:	"A heated lockable rotatable curling brush for styling and curling hair comprising:
a rod housing serving as a handle;	a rod housing serving as a handle;
An elongated cylindrical inner tube fixedly attached to said rod housing, protruding therefrom; and adapted to rotatably support an outer tube	an elongated cylindrical inner an elongated cylindrical inner tube fixedly attached to said made substantially of aluminum rod housing, protruding therefrom; fixedly attached to said rod housing, and adapted to rotatably support an outer tube;
an outer tube of heat conducting plastic supporting a round brush, rotatably supported on said inner tube and in heat conductive contact therewith, wherein said inner tube is in heat conducting contact with a major part of the outer tube;	an outer tube of heat conducting plastic supporting a round brush, rotatably supported on said inner tube and in heat conductive contact therewith, wherein said inner tube is in heat conducting contact with substantially the whole length of said outer tube;
an elongated resistance heater in said inner tube in heat conduction relationship therewith;	an elongated resistance heater in said inner tube in heat conduction relationship therewith, and with the axial center of the heater positioned forward of the longitudinal center of said inner tube at a point which offsets the unequal heat loss rate to the atmosphere of the forward and rearward ends of the outer tube to thereby provide substantially uniform heating of the outer tube and brush;
an electric cord in the inner tube connected to the heater;	an electric cord in the inner tube connected to the heater and an outside power source; and
a selectively engageable spring latch coupling mechanism between the handle and the outer tube at the front of the rod housing for locking the outer tube and rotatably releasing the outer tube."	a selectively engageable spring latch coupling mechanism between the handle and the outer tube at the front of the rod housing for locking the outer tube and rotatably releasing the outer tube."

The differences between the two claims have been underlined.

In considering the feature of "an outside power source" in the sixth paragraph, I agree with Mr. Macauley that this is a mere "trimming".

Further, I consider that the difference in wording in the fourth paragraph with respect to the inner tube and its heat conducting contact with the outer tube would not be sufficient to avoid prior claiming in the present situation were this the only difference between the two claims.

However, claim 1 of the specification in suit specifies, in paragraph 3, that the inner tube is made substantially of "aluminum". Further, in paragraph 5, the claim defines:

"the axial center of the heater positioned forward of the longitudinal center of said inner tube at a point which off- sets the unequal heat loss rate to the atmosphere of the forward and rearward ends of the outer tube to thereby provide substantially uniform heating of the outer tube and brush."

It is these two differences between the claims which are important in considering the question of prior claiming.

At the hearing Mr. Macauley submitted, and I agree, that the earlier WIK claim 1 includes within its scope the curling brush of the Bristol-Myers claim 1. However, it is not sufficient to show that all the features of a later claim are included within the scope of an earlier claim to establish prior claiming.

Both Mr. Macauley and Mr. Collins referred to a number of decided cases to support their respective arguments on the question of prior claiming. However, I am guided by the words of Mr. Justice Graham in his conclusion that there was no prior claiming in Westinghouse Electric Corporation (Frost's) Application 1973 RPC 139 at 145:

"One might well, for example, as I have done in this case, come to the conclusion, that as a matter of substance, the two inventions claimed are different, although as a matter of words on its broadest construction the earlier claim can be said to include the later in its area."

Mr. Justice Graham also commented on the question of prior claiming in the earlier Ethyl Corporation (Cook's) Patent 1970 RPC 227 at 231:

"It may, however, perhaps be useful to note that the practice of having claims in the modern form has, speaking quite generally, resulted in three typical instances where conflict arises. First, using the spatial analogy, where the earlier claim lies wholly within the area of the latter claim; secondly where the areas of the earlier and later claims are not coterminous but overlap, and thirdly where the earlier claim is broader than and includes within it the area covered by the later claim.

The first two cases can usually and should, in my judgment, continue to be dealt with in the way they are normally dealt with, namely, by amendment. The area covered by the later claim which includes or overlaps the area of the earlier claim should be excluded from it by amendment. There is then no conflict between the two claims and objection to double grant ex hypothesis no longer lies.

It is the third case which is liable to give rise to difficulties in practice and the present appeal is an instance of such a case. Here again, however, experience shows that there are mainly two alternative situations which arise - first, where the earlier and later inventors are really concerned with the same problem and provide the same solution but claim their respective inventions in words which result in the later claim being smaller in area than the earlier, and, secondly, where the two inventors can on the proper construction of their specifications and claims be seen fairly to have been addressing their minds to different problems or different aspects of the same general problem, and to have provided different or sometimes more specific solutions."

The present situation, I think can clearly be classified as the second alter- native situation in the third case mentioned. The earlier claim is broader than and includes within it the area covered by the later claim. However, the two inventors have addressed their minds to different problems and have provided different solutions.

The WIK patent specification commences as follows:

"The present invention relates to a hair styling device for styling, curling and drying hair, of the type having a rod- shaped casing and an internal tube protruding therefrom for the accommodation of the circular brush affixed to an external tube, the latter being rotatable on said internal tube, a coupling between the internal - and external tubes for locking the circular brush and a heating device.

Various types of hair styling devices are already known using warm air. In those, a heating device and a fan is accommodated inside the rod-shaped casing, which blows warm air produced by the heater to the circular brush. These hair styling devices have the following disadvantages: on one hand - for the heating of the circular brush the provision of a fan is required, on the other hand - the indirect heating of the circular brush by hot air requires large heating power and for this reason their energy consumption is high. This invention intends to remedy these shortcomings.

The object of the present invention is to create a hair styling device of the type described in the introduction, which allows simplified construction and optimises the heating of the circular brush."

The specification then describes and claims the curling brush with the features defined in the WIK claim 1 referred to earlier. There is no disclosure of an aluminium inner tube nor is there any disclosure of the specific positioning of the heater with respect to the inner tube as defined in the Bristol-Myers claim 1.

The invention of the WIK patent specification is directed to remedying the shortcomings of having to use a fan and having a high energy consumption.

The invention of the Bristol-Myers specification is directed to over- coming the problem of uneven heat distribution in curling brushes having outer and inner tubes and a heating unit in contact with the inner tube. Thus, the curling brushes of the two specifications are directed to solving different problems. The Bristol-Myers specification includes a number of tables showing the results of tests to compare the Bristol-Myers curling brush with a known curling brush manufactured by WIK. These tables show that there is some advantage gained in using an aluminium inner tube as opposed to a plastic inner tube. The tables also show that there is an even greater advantage gained in using an aluminium inner tube and positioning the heater at a point which offsets the unequal heat loss rate to the atmosphere of the forward and rear- ward ends of the outer tube. The opponent has produced no evidence to dispute this advantage nor is there any evidence to suggest that these characterising features of an aluminium inner tube and the specific positioning of the heater, are part of the common general knowledge of the art. Accordingly, I am of the opinion that claim 1 of the specification in suit is claiming an invention which differs from the invention of the WIK claim 1. I do not consider that the WIK claim 1 prior claims claim 1 in suit. Further, claim 2, which is appended to claim 1, is not prior claimed by the WIK claim 1.

The WIK claim 12 is an omnibus claim and, as there is no disclosure in the WIK specification of an aluminium inner tube or of the positioning of the heater to provide substantially uniform heating of the outer tube of the brush, claim 12 does not prior claim either of claims 3 and 4 of the specification in suit.

Conclusion

The opposition fails on all grounds relied upon and therefore I dismiss the opposition. Subject to the lodgement of any appeal, I shall direct that the application proceed to sealing. Although the specification was amended under section 77 after the lodging of the notice of opposition, those amendments had no bearing on the outcome of the opposition, and accordingly I award costs against the opponent.

(A.J. EVANS)

Supervising Examiner of Patents

24 DEC 1985