Dennison Manufacturing Company v Monarch Marking Systems, Inc

[1987] APO 4

In the Matter of the Patents Act 1952

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In the Matter of Application No. 496414 for a Patent by DENNISON MANUFACTURING COMPANY

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In the Matter of a Request under Section 77

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In the Matter of Opposition thereto under Section 82 by MONARCH MARKING SYSTEMS, INC.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent Application No. 496414 by DENNISON MANUFACTURING COMPANY (hereinafter called DENNISON) was lodged on 30 March, 1976 as a divisional application of Patent Application No. 27715/71 (now Patent No. 471689).  It was advertised accepted on 12 October, 1978 and MONARCH MARKING SYSTEMS, INC. (hereinafter called MONARCH) lodged a Notice of Opposition under section 59 on 9 April, 1979.
         A hearing on the section 59 opposition was held on 25 September, 1984 and a decision issued on 12 October, 1984.  Subsequent to the decision, amendments under section 77 were proposed in order to overcome the adverse findings of the hearing officer.  Particulars of the request to amend were advertised in the Official Journal on 21 March, 1985.  MONARCH subsequently lodged a

Notice of Opposition under section 82 on 13 September, 1985 after being granted an extension of time in which to do so.
         A hearing to determine the section 82 opposition took place in Canberra on 21 January, 1987.  The opponent MONARCH was represented by Mr. A.W. Cowie, Patent Attorney of Cowie, Thomson & Carter, Melbourne, while the applicant DENNISON through its Patent Attorneys, Griffith, Hassel & Frazer, Sydney, chose not to be represented, but instead relied on written submissions filed prior to the hearing.
         The opponent's section 82 Notice of Opposition sets out the grounds of opposition as:

1. That as a result of the amendment, the specification claims matter not in substance disclosed in the specification as lodged.

2.That the claims of the specification as amended do not fall within the scope of the claims of the specification before amendment.

3.That as a result of the amendment, the specification does not comply with the requirements of Section 40 of the Act."

The Specification
         The specification as accepted relates to an apparatus for utilising plural assemblies of fastener attachments in which the individual attachments are secured by a neck to an assembly rod.  The accepted specification contains 6 claims of which claims 1 and 2 reads as follows:

1. An apparatus for utilizing plural assemblies of fastener attachments in which the individual attachments are secured by a neck to an assembly rod, said apparatus comprising

a plunger at least partially movable along guide means provided in the apparatus,

said plunger having an end for pushing said fastener attachments,

feeding means for bringing each of an assembly of fastener attachments, one at a time into position to be pushed by said plunger,

and means movable with the plunger to cause operation of the feeding means.

2.An apparatus according to claim 1 in which said means movable with said plunger comprises a cam means surface adapted to move with said plunger and wherein a cam follower means is provided to engage said cam means surface to operate said feeding means."

Claims 1 to 4 as proposed by the request to amend which were the claims of major contention, read as follows:

1. An apparatus for utilizing plural assemblies of fastener attachments in which the individual attachments are secured by a neck to an assembly rod, said apparatus comprising

(a)a plunger at least partially movable along a guide structure and the plunger being arranged for advancing said attachments which are to be inserted into an object,

(b)guide means comprising a portion for penetrating the object and guiding the fastener attachment into the object,

(c)said plunger having an end for pushing said fastener attachments into guided relationship with the guide means,

(d)feeding means for bringing each of an assembly of said fastener attachments, one at a time, into position to be pushed by said plunger,

(e)means for moving the plunger from an initial position for pushing the fastener attachment into and along the guide means when the penetrating portion is disposed for guiding the fastener attachment through the object, and means for returning the plunger to its initial position, and

(f)cam means associated with the plunger and cam follower means arranged in the apparatus to co‑operate with said cam means for actuating through a linkage the feeding means in suitable synchronisation with the plunger.

2.An apparatus according to claim 1 in which said cam means comprises a cam surface provided on a cylindrical body portion of said plunger.

3.An apparatus according to claim 1 or claim 2 in which said feeding means comprises a gear wheel having teeth for engaging the necks coupling the fastener attachments to the rod in order to bring each fastener attachment into position, and wherein said linkage includes a pawl for indexing the gear wheel means.

4.An apparatus according to anyone of the preceding claims, in which said cam follower means comprises a lever having surface contact means carried thereby for engaging the cam means surface, pivotal movement of said level (sic) operating the linkage."

The present opposition centres around features (d) and (f) of proposed claim 1, and the further characterisations of claims 3 and 4.
The Evidence and Submissions
         The evidence‑in‑support of this opposition consists of a statutory declaration by Paul Helmut Hamisch, Jr.  No evidence‑in‑
answer was filed.
         Mr. Hamisch is currently the Program Manager for hand‑held products of the Opponent company in the USA, having been employed by the company since 1957.  In support of the grounds of opposition stated Mr. Hamisch declares as follows:

"6.I have examined the specification, and the claims as set out in "Exhibit PHH 1", and in regard to feature (f) of amended claim 1, I cannot find any reference to a "linkage" in the specification as lodged and as published.  A "linkage" as I understand it in the engineering sciences, is a system of two or more links or bars which are jointed together and more or less constrained by means of which paths may be traced.  The only means described in the specification for actuating the feeding means by engagement between the cam follower and the feeding means is a fulcrum lever having a pawl at one end thereof, and I do not consider that such a construction constitutes a linkage.  I also note from the amended specification that the only reference to a cam follower is that to roller 101.

7.I note that amended claim 3 states that the linkage includes a pawl and amended claim 4 which is appended to claim 3 states that the cam follower means comprises a lever engageable by the cam means surface and that pivotal movement of the lever operates the linkage.  I would understand claim 4 to define the so‑called "linkage" as a pawl and something else which is not the lever, but I can see nothing in the description which would support such a definition.  Again I would refer to my statement in paragraph 6 above that the only reference in the specification to a cam follower is to roller 101 and I would draw attention to the definition of a cam follower in Webster's Third New International Dictionary, viz: "the peg or roller which follows the curvature of a cam and to which the motion of the cam is thereby directly communicated".  If this dictionary definition is to be accepted, then in my opinion the lever cannot constitute a cam follower."

Mr. Terry, Patent Attorney for DENNISON, in his written submissions has contended that Mr. Hamisch's interpretation of the term "linkage" is a narrow definition and that there is no support for such an interpretation.  In contrast, the applicant relies upon the plain broad English language meaning and a number of dictionary extracts were supplied with the submissions.
         The applicant has also submitted that Mr. Hamisch relies on a particular meaning of the term "cam follower" which is plainly an example of what is a cam follower without being all embracing.  It is submitted that any person with an engineering background would view a cam follower as something which "follows a cam" and is displaced by the cam's profile to cause some corresponding motion to take place, and thus the surface of a lever biased against a cam surface is an excellent example of a cam follower and the words are used in the claim with an ordinary, fair and plain meaning.  Finally, Mr. Terry for DENNISON contended that taking words out of the context of the claims and in isolation from the preceding description, as he alleged Mr. Hamisch to have done, is not the correct manner for interpreting the claims.
         Mr. Cowie's submissions at the hearing supported the points in Mr. Hamisch's declaration.  In response to Mr. Terry's submissions, Mr. Cowie contended that the arrangement of the lever and pawl is not referred to as a linkage in the description and does not operate in the same manner as a known linkage.  Mr. Cowie also asserted that he was not aware of any other embodiment of a linkage other than that advanced by Mr. Hamisch and if there is some other definition, it has not been brought out in the specification.
         With regard to the term "cam follower", Mr. Cowie agreed that a lever was an excellent example of a cam follower but submitted there is no disclosure of this in the description.  He also pointed out that it is quite clearly stated that the lever engages the cam surface through a roller, and he also asserted that he cannot see how that lever could function as a cam follower unless it was shaped differently.
         Mr. Cowie referred me to two judgements.  The first was Mond Nickel's Application 1956 RPC 189 and the three‑fold investigation set out therein for determining whether matter is "in substance disclosed", namely:

1.Is the matter claimed broadly described in the specific‑

ation as lodged?

2.Does the claim include anything inconsistent with the disclosure in the specification at lodged?

3.Does the claim include a feature on which the specific‑

ation is wholly silent?

Mr. Cowie submitted that in the light of this investigation, the proposed amended specification claims matter not in substance disclosed in the specification as lodged because (1) there is no linkage broadly described in that specification, (2) the claim includes a linkage which is inconsistent with the disclosure which describes merely a pivotal lever having a pawl attached thereto, and (3) the claim includes a linkage on which the specification is wholly silent.
         The other judgement referred to was AMP v. Commissioner of Patents 1974 AOJP 3224.  In the light of this, Mr. Cowie submitted that the substance must appear from the language of the claim itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior art to which the claim relates.  Consequently, in the ordinary rules of interpretation of a linkage in the engineering sciences, the lever and pawl do not constitute a linkage.
The Decision
         Before considering whether the amendment complies with the requirements of section 78, it is appropriate to consider the meaning of the terms "linkage" and "cam follower".  Both the applicant and the opponent have referred me to a dictionary definition of a "linkage" in Webster's Dictionary.  In addition, on referring to the McGraw‑Hill Dictionary of Scientific and Technical Terms (3rd. Ed.), I note a "linkage" is defined as:

"[MECH ENG] A mechanism that transfers motion in a desired manner by using some combination of bar links, slides, pivots and rotating members."

Given these definitions, I believe it is clear that the lever 98 and pawl 102 arrangement of the present specification constitutes a linkage since motion of the cam follower roller 101 is transferred by these elements to the gear 92.  Similarly I consider that the pawl 102 in combination with the spring 104 constitutes a linkage between the lever 98 and the gear 92.  It seems to me that the opponent has placed a rather narrow interpretation on what constitutes a linkage.
         On the matter of a "cam follower", I also consider that the definition relied upon by MONARCH is a rather narrow interpretation.  Again from the Dictionary of Scientific and Technical Terms, a "cam follower" is defined as:
         "[MECH ENG] The output link of a cam mechanism."
Thus a cam follower can be just something that follows the motion of a cam.  Therefore, as submitted by Mr. Terry, a lever which is biased against and moved by a cam is a good example of a cam follower.
         I now turn to the question of whether the amendment is allowable.  The opponent's argument on this question centred around the definition in claim 1 concerning the "linkage" between the cam follower means and the feeding means.  On the matter of "in substance disclosed", Mr. Cowie referred me to the investigation in Mond Nickel's Application (supra).  Considering this investigation in the light of the interpretation I have given to the term "linkage", I am unable to agree with Mr. Cowie's conclusion as related previously.
         In the specification as lodged, there is disclosed in broad terms means enabling the feeding means to be moved in response to the movement of the plunger, and a particular arrangement for this purpose is described.  As indicated earlier, the embodiment described has at least two portions of this arrangement which can be described as a linkage.  The fact that the applicant did not call it a linkage is immaterial.  Consequently I conclude that there is a broad disclosure of a linkage as the actuating arrangement in the specification as lodged.  With regard to the other two parts of the three‑fold investigation, I consider that claim 1 does not include anything inconsistent with the disclosure in the specification as lodged nor include a feature on which the specification is wholly silent.
         In relation to claim 4 as proposed and particularly in regard to the term "cam follower", I need only say that there is a disclosure of such an arrangement in claim 4 as originally lodged. Accordingly I am satisfied that as a result of the amendment, the specification would not claim matter not in substance disclosed in the specification as lodged.
         With respect to the ground of opposition concerning whether the claims as amended fall within the scope of the claims before amendment, the test to be applied is that specified, for example, in W.J. Voit Rubber Corp.'s Application (1965) AOJP 1752, which is

"would the amendment make anything an infringement which would not be an infringement before amendment."

I see no need to discuss this issue in any great depth.  It is readily apparent, I believe, that in relation to the amended claims, the answer to the question posed is in the negative and so this ground of opposition is not established.  I would merely add that the introduction of the term "linkage" in proposed claim 1 and the alteration to the pawl reference in proposed claim 3 as compared to the claims before amendment, in my view does not result in the scope of the claims being extended.
         Mr. Cowie also submitted that claim 4 as proposed to be amended is unclear as it suggests that the lever there defined is not part of the linkage.  I am unable to agree with Mr. Cowie's overall view of the claims on this point.  It seems to me that the opponent's interpretation of claim 4 has been influenced somewhat by the description of the preferred embodiment in that the description refers to a "pawl" and "lever" for actuating the feeding means, whereas the "lever" of the claim relates to the cam follower means, thus in the opponent's view generating an ambiguity.  This conclusion however incorrectly associates the "lever" of claim 4 with the "lever" 98 of the embodiment.  There is no support for such an association of these terms.  It is noted that the claims first introduce "a lever" in claim 4 in definition of the cam follower means which itself is a perfectly clear and precise definition.  The only specific characterisation of the "linkage" in the claims is that it "includes a pawl" (claim 3).  Moreover it is clear from feature (f) of claim 1 that the "cam follower means" is entirely distinct from the "linkage".  Consequently I find no lack of clarity or amibiguity in relation to claim 4.
         I note that the accepted claims specify that a "cam follower means" transmits motion from the cam means surface to the feeding means (see accepted claim 2) : appended claims characterise features of the "cam follower means".  In contrast, the proposed amended claims provide a definition of the elements to transmit this motion in different terms, namely via cam follower means actuating through a linkage (see feature (f), proposed claim 1).  Proposed claims 3 and 4 then characterise the "linkage" and the "cam follower means".  Given the above definitions, it is clear that the feature "cam follower means" used in the proposed claims does not directly equate with the same worded feature of the accepted claims and in fact is of narrower scope.  It appears to me that this change in terminology and definition may have unduly influenced the opponent in its interpretation of the proposed claims.  In my view, the proposed claims are a clear definition and, despite the somewhat different terminology, define apparatus having a construction within the definition of the accepted claims.
         Accordingly having fully reviewed the proposed amendment, I am not satisfied that as a result of the amendment, the specification fails to comply with the requirements of section 40.
Conclusion
         I have decided that the opposition fails on all grounds relied upon, and subject to any appeal which may be lodged, I direct that the amendment be allowed.
         I award costs in this matter against the opponent.

(T.R. BRUHN)

Patent Attorneys for the Applicant : Griffith, Hassel & Frazer