C.R. Diffen Transport Pty Ltd v Cable Makers Australia Pty Ltd and Vita Pacific Limited

[1988] APO 8

In the Matter of the Patents Act 1952 and In the Matter of an Application under Sub-Section 68B(l) for an Extension of the Term of Petty Patent 542752 in the Name of C.R. DIFFEN TRANSPORT PTY. LTD. and In the Matter of a Notice under Sub- Section 68B(3) in the Name of CABLE MAKERS AUSTRALIA PTY. LTD. and - In the Matter of a Notice under Sub- Section 68B(3) in the Name of VITA PACIFIC LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Petty patent application 37665/85 for an invention entitled "COXPOSITE BED MATTRESS" was lodged on 14 January, 1985 as a divisional application of standard patent application 557350 (formerly numbered 34223/84). A petty patent numbered 542752 was sealed in respect of the application on 18 April, 1985. The earliest priority date of the claim of the petty patent is 29 February, 1984.

On 14 March, 1986, the patentee (DIFFEN) lodged an application under sub-section 68B(l) for an extension of the term of the petty patent and on the same day, a notice under sub-section 68B(3) was lodged on behalf of VITA PACIFIC LIMITED (hereinafter VITA -PACIFIC). Earlier on 10 March, 1986, CABLE MAKERS AUSTRALIA PTY. LTD. (hereinafter CABLE MAKERS) lodged a notice under sub-section 68B(3).

Section 68B provides for the extension of the term of a petty patent. The provisions are such that if the Commissioner is satisfied of the existence, in relation to a petty patent of any of the grounds set out in paragraphs 100(l)(b) to (g) of the Act, he may refuse to grant an extension of the term. In the present case, the respective notices under sub-section 68B(3) assert that the facts establish those grounds as set out in paragraphs 100(l)(e) and (g). Those grounds are:

(e) that the invention, so far as claimed ... in the claim of the petty patent specification ... was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim; and

(g) that the invention, so far as claimed ... in the claim of the petty patent specification ... was not novel in Australia on the priority date of that claim.

Following lodgement of the sub-section 68B(3) notices, the Commissioner determined that the petty patentee be allowed an opportunity to lodge and serve evidence in answer to the respective notices. The patentee subsequently filed such evidence within time so allowed.

In accordance with practice dictated by sub-section 68B(8) and regulation 85, the parties were afforded an opportunity to be heard at a hearing in Canberra on 19 May, 1987. Mr. J. Murray, patent attorney of Edwd. Waters & Sons, Melbourne, appeared representing not only the patentee but Pacific Dunlop Ltd. who he said had recently been favoured with an assignment of the petty patent-from the patentee. Prior to the hearing both VITA PACIFIC and CABLE MAKERS had indicated that they would not be attending.

Proposal to amend

It is clear from the official file that after filing its answering evidence the patentee foreshadowed to each informant a possible amendment to its specification involving an amended claim. Moreover Mr. Murray advised that discussions between the parties had continued to as late as the day prior to the hearing. Insofar as CABLE MAKERS is concerned, its non-attendance at the hearing seemingly followed from those discussions since its attorneys advised the Patent Office by facsimile on 18 May, 1987:

"Pursuant to proposed amendments to the above-mentioned Petty Patent by the Patentee we hereby withdraw our Notice Under Section 68B(3) in respect of this matter. Accordingly, we advise we will not be attending the Hearing into this matter."

It should be noted that the Act or Regulations make no provision for withdrawal of a sub-section 68B(3) notice. Consequently CABLE MAKERS advice is merely taken as declining the chance to be heard it is clear from the provisions of section 68B that the Commissioner in determining whether to extend the term of a petty patent ought to consider all relevant evidence including that of a party not wishing to be heard.

At the hearing, Mr. Murray on behalf of the patentee lodged pursuant to section 77 a request to amend the petty patent specification. The reason given for the proposed amendment is "To better define the invention", and the proposal seeks to provide an amended claim.

In view of the fact that the request to amend was lodged at the hearing and that both informants apparently declined to attend the hearing on the understanding that amendment of the patent would be sought, I decided to defer a decision on the extension of the term of the Petty Patent pending advertisement of the request to amend. (s.81) and determination of the request (s.83). The parties were so advised and the request to amend was advertised on 24 September, 1987. No opposition has been lodged to that request.

The proposed amended claim of the petty patent specification reads as follows:

"1. A composite bed mattress comprising a first lower resilient foam layer and a second upper resilient foam layer, said first foam layer being relatively firm compared to said second foam layer, said first and second foam layers being disposed in face to face contiguous relationship to one another, said first and second foam layers having abutting major substantially planar surfaces, wherein said first foam layer contains a single recess in its planar surface adjacent the second foam layer, said second foam layer has a single foam projection which is relatively soft compared to said first foam layer and which fits into said recess, the ratio of the softness of the first foam layer to that of the second foam layer is in the range from 0.1 to 0.7 and the region of the mattress containing said recess and said projection corresponds with the hip region of a person laying on the mattress, so that the region of the mattress corresponding with the hip region of a person laying on the mattress is relatively soft compared to all other regions of the mattress."

Compared to the claim at sealing, it is evident that this definition more precisely defines the invention described in the specification and is of narrower scope.

As the determination and allowance of the amendment request in this case is closely related to the question of whether an extension of term of the petty patent can be granted, I will first consider the extension of term matter in the light of the proposed amended claim.

Extension of term

The invention the subject of the proposed amended claim relates to a composite bed mattress comprising two foam layers of different firmness arrange in a specific manner to each other and inter-alia including a projection on the upper layer fitting in a recess of the lower layer.

The evidence lodged by CABLE MAKERS in support of its sub-section 68B(3) notice comprises declarations by Robert Frank Manley and Alec George Abel. Their evidence includes reference to mattresses involving either coiled spring or foam construction, and wherein variations of firmness are provided in different areas of the mattress - in the case of the foam mattresses, the variation of firmness is achieved in one construction by providing a series of side by side foam units of differing density. Australian Patent 511996 exhibited to the evidence, is illustrative of such mattress constructions (both coil springs and foam).

The evidence lodged by VITA PACIFIC consists of a declaration by Peter Russell Gibson. This evidence refers to mattress constructions similar to that in CABLE MAKERS' evidence.

The evidence by CABLE MAKERS and VITA PACIFIC does not, in my view, disclose any bed mattress comprising foam layers and having constructional features as defined by the proposed amended claim. For instance, I can find no disclosure or suggestion in the material placed before me in evidence of the features of a single recess and a single foam projection associated with two foam layers at the region of their planar abutting surfaces. Thus it is clear to me that the claim does not lack novelty. Furthermore given the evidence lodged, I am unable to conclude that the invention as claimed is obvious.

Accordingly, I am not satisfied that the grounds set out in paragraphs 100(l)(e) or (g) have been established in relation to the proposed amended claim. An extension of term of the petty patent amended as proposed is, in my view, therefore justified.

Conclusion

Given the above considerations, I determine that the section 77 request to amend petty patent specification 542752 should be allowed and I so direct that allowance. Furthermore I grant an extension of term of the petty patent.

(T.R. BRUHN)

Supervising Examiner of Patents

10 MAR 1988

Patent Attorneys for the patentee : Edwd. Waters & Sons

Patent Attorneys for CABLE MAKERS : Shelston Waters

Solicitors for VITA PACIFIC : Blake & Riggall