Elconnex Pty Limited v Gerard Industries Pty Ltd

[1994] APO 18

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 594433 in the name of ELCONNEX PTY LIMITED

Title             :   Corrugated Plastic Pipe Connector

Action:   Opposition by GERARD INDUSTRIES PTY LTD under Section 59 of the Patents Act 1952.

Decision:   Issued            .  Opposition succeeds; Claims 1 to 10 obvious in light of evidence and Federal Court decisions in relation to petty patent 597305 (Elconnex Pty Ltd v Gerard Industries Pty Ltd 105 ALR 247 and 25 IPR 173).

Application refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 594433 by ELCONNEX PTY LIMITED and opposition thereto by GERARD INDUSTRIES PTY LTD under section 59 of the Patents Act 1952.

background

Patent application 594433 by ELCONNEX PTY LIMITED was filed on 5 February 1987 as PCT/AU87/00031 (69382/87) and claims priority from provisional application PH 4459 filed on 5 February 1986.  The application was advertised accepted on 8 March 1990 and on 13 and 15 March 1990 respectively further applications 51285/90 and 51374/90 were filed under section 51 of the 1952 Act. Application 51285/90 was sealed as petty patent 597305 on 11 May 1990, however in a Federal Court judgement dated 22 November 1991 Burchett J found the petty patent invalid on the grounds of obviousness.  This decision is reported as Elconnex Pty Ltd v Gerard Industries Pty Ltd 105 ALR 247 and was confirmed on appeal to the full bench of the Federal Court as reported at 25 IPR 173.

GERARD INDUSTRIES PTY LTD filed a notice of opposition to the present application on 8 June 1990 under sec 59(1) of the Patents Act 1952. Evidence-in-support was served by the opponent on 8 March 1991 and on 23 March 1993 the applicant advised that it did not intend to serve any evidence-in-answer.

The opposition was heard in Canberra on 14 December 1993.  The applicant was represented by Mr D.K. Catterns of counsel and Mr A.R. Smeeton, patent attorney of the firm Davies Collison Cave, Sydney, and the opponent was represented by Mr D.M. Yates of counsel and Mr R.S. Catt, patent attorney, of the firm R K Maddern & Associates, Adelaide.

Mr Catterns at the hearing indicated that in light of the decision of the Federal Court in relation to petty patent 597305 the applicant would not press claims 1 and 2 but would press claim 3 and claims 4 to 10 as dependant on claim 3. For its part the opponent in the notice of opposition referred to the grounds available under section 59(1) of the 1952 Act, paragraphs (c) through (i) however it became apparent at the hearing that only grounds (f), (g) and (i) were to be relied on.

THE SPECIFICATION

The specification commences by stating that the invention relates to a liquid tight connector for corrugated piping or conduit.  It is then said that with existing corrugated flexible conduit the only available method of joining involves encasing the joint and gluing to ensure an adequate join.  This leads to the problems of delays while the adhesive sets and the weakening effect that the adhesive has on the conduit.

The present invention is said to ameliorate these problems by "providing a push-on connector which provides a liquid tight seal without the aid of adhesives, and which is reusable and adjustable during installation".  A consistory statement follows in similar terms to claim 1.  The claims of the specification read as follows:

1. A one‑piece liquid tight plastics connector, for affixing, in a liquid tight manner, to a conduit, having a ridge located adjacent to its end, comprising: a body open at one end to receive a conduit in a bore communicating with said open end; sealing means, in said bore, remote from said open end, which are adapted to seal against, in a liquid tight manner, the conduit pushed into the said bore; and locking means located in said body so as to project into the said bore so as to lock onto the ridge of conduit in said bore, so as to hold in said bore said conduit in a liquid tight seal against the said sealing means, wherein said locking means comprises an axially extending resilient finger, having a projection located at or adjacent its free end being remote from the open end and which projects into the bore; the axially extending resilient finger being joined to the connector body by a thin walled section of less thickness than the thickness of the wall of the body such that in use when a withdrawal force is applied to a conduit held in said connector, the projection is drawn deeper into engagement down the ridge, without any portion of the finger beyond the projection abutting with the conduit, such that the stronger the withdrawal force on the conduit the more the projection is drawn deeper into engagement with the ridge.

2. A liquid tight connector according to Claim 1 wherein said body has a thin walled section extending from the finger to the open end of the bore.

3. A liquid tight connector according to Claims 1 or 2 wherein the finger has on its underside a ramp rising adjacent the projection from the finger to an apex, intermediate the ends of the finger.

4. A liquid tight connector according to Claim 3 wherein the apex extends into the bore a lesser distance than the projection.

5. A liquid tight connector according to any one of Claims 1 to 4 wherein said projection has a substantially planar face, extending substantially radially to the bore and facing away from the open end of the body.

6. A liquid tight connector according to Claim 5 wherein said substantially planar face extends at an angle inwardly away from the open end of the body.

7. A liquid tight connector according to any one of Claims 1 to 6 wherein said sealing means is a resiliently deformable seal adapted to abut against the end of the conduit in a liquid tight manner.

8. A liquid tight connector according to any one of Claims 1 to 6 wherein said sealing means comprises a tapered section of said bore whereby said conduit which is pushed into said bore is compressed against and seals against the tapered section in a liquid tight manner.

9. A liquid tight connector according to Claim 8 wherein there is also located a resiliently deformable seal in said bore to seal in a liquid tight manner against the conduit pushed into said bore at or adjacent its free end.

10. A one‑piece liquid tight plastics connector substantially as hereinbefore described with reference to the accompanying drawings."

Following the description of a preferred embodiment the specification at page 4 states that "Because the connector in the preferred embodiment is a unitary plastics moulding, a special method of moulding had to be developed to allow for the formation of the locking members 9".  This method is described in relation to figures 3a, 3b and 3c and most significantly results in the connector finger being moulded with a ramp rising to an apex intermediate the ends of the finger.  When solidified the ramp acts as a camming surface to force the finger away from and therefore prevent interference with the retreating core pin.

THE EVIDENCE

The evidence in support comprises a number of statutory declarations, or true copies thereof, made by:

.Richard Stuart Catt;

.Graham Scott Vasileff;

.Manfred Zockel;

.Richard Butler Frost;

.Graham Norman Duell;

.William Muir Halliday;

.John Douglas Gerard;

.Michael John Bernard Hasler;

.Malcolm Sinclair Williamson;

.Lance David Wasson; and

.Ernst Pocksteiner.

Notably the exhibit EP1 to Ernst Pocksteiner's declaration (the "Dietzel connector") was not filed with the other evidence-in-support having been filed with the Federal court in relation to the petty patent action.  It was however furnished at the hearing and since the applicant clearly had knowledge of and access to this evidence from an early stage I believe it can rightly be considered along with the other material.  According to Mr Yates this evidence exhibits some but not all of the affidavit material before the Federal Court in relation to petty patent 597305.

SUBMISSIONS

The main points made by Mr Yates for the opponent are summarised as follows:

1.The dependant claims of the application do not overcome the objection of obviousness since they do not add features that are either inventive or contribute to the working of the invention.

2.The evidence illustrates what was known and used before the priority date of the present application.  It shows that the quest for a reusable plastic connector for corrugated conduit and using resilient fingers engaging the conduit is not new.

3.The trial judge in relation to the petty patent held that a claim corresponding to claims 1 and 2 was invalid on the basis that it was an obvious combination; findings that were not disturbed in the full Federal Court.

4.In claim 3 and 4 the ramp is part of a moulding process which is necessary for the item to be injection moulded.  It is purely a manufacturing feature which plays no role in the functioning of the connector as such and has nothing to do with the working of the invention.  Claim 3 seeks to introduce into the unpatentable combination of claims 1 and 2 (unpatentable because it is an obvious combination) a feature which has no working interrelationship with that combination and is therefore a mere collocation.

5.  Otherwise the ramp is merely an obvious addition necessary for the production of the finger since using ramps for camming is common engineering practice.  In this regard a hearing officer can apply his own knowledge and experience of the relevant scientific and technical background to the subject matter of the invention (Johns-Manville Corp. Pat. 1967 RPC 497).

6.Features added in claims 4-9 are either in the same category as claim 3 or add features which are obvious.  Claim 10 does not add any new features to the preceding claims; features which have no working interrelationship with the other obvious features or which in themselves are obvious.

7.If the integers of the claim are found to have a working interrelationship the specification as a whole offends against section 40(1) since it does not refer to those matters being part of the working of the invention and particularly the resilient finger and projection (Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156).

For the applicant Mr Catterns made the following main points:

1.The appended claims are valid combinations. The way to look at it is not something held to be obvious plus an additional feature but the combination as a whole.

2.The present combination was not disclosed in the prior art.  The Dietzel connector for example does not have sealing means or a thin wall section on the finger. This plus the ramp feature has not been shown to be obvious.

3.The action of the thin wall section in moving the centre of rotation of the finger was not fully dealt with by the court and together with the features of the appended claims moves the balance away from the opponent.

4.Features of the design of a product which makes it easier or cheaper to make can be just as much a part of the invention as features of the invention that make it work better. 

5.There is no evidence that the ramp feature is obvious or well known in the moulding art.

6.A new result does not mean the result that happens in the outside world when you use the thing. Rather it means a resultant product.  The new result of this invention is a product which:

a)works in a way which is new, although held obvious, and

b)is made more cheaply by the injection moulding process.

This is distinct from a mere collocation.  The ramp is entirely integral to the making of the connector and can be part of the inventive step.

7.Because there is no submission that the ramp makes the connector work better the point made in relation to Sami S Svendsen (supra) does not arise.

DECISION

From the submissions of the respective parties it is apparent that ultimately the issue to be decided is whether or not what is claimed in claims 3 to 10 amounts to a patentable and non-obvious combination.  In this regard the questions of obviousness and subject matter are closely related.  Lord Tomlin in British Celanese Ltd v Courtaulds Ltd 52 RPC 171 at 193 said that:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result then there is patentable subject-matter in the idea of the working interrelationship brought about by the collocation of the integers."

Furthermore Dixon J.in Palmer v. Dunlop 59 CLR 30 provides the following quote from Lord Davey in the matter of Klabers Patent:

"A proper combination for a patent is the union of two or more integers, every one of which elements may be perfectly old, for the production of one object which is either new, or at any rate is for effecting an old object in a more convenient, cheaper or more useful way. But the point in a combination patent must always be that the elements of which the combination is composed are combined together so as to produce one result."

In May v Higgins (1916) 21 CLR 119 at 121 it was also said that:

"A combination is not an invention unless the combination is substantially a new thing."

When considering the question of obviousness in relation to a combination it is the inventiveness of the combination as a whole that must be looked at rather than that apparent from examining each integer in turn (Minnesota Mining & Manufacturing Co v Beiersdorf (1980) 144 CLR 253). Nevertheless in Winner v Ammar (1993) AIPC 971 it was said that:

"Notwithstanding that the inventive step may lie in the choice and management of integers in a combination patent (Wellcome Foundation at 281), where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step "unless the combination is substantially a new thing." "

Similarly Burchett J said at 105 ALR 266 that:

"... this is not the case of a new combination, although of old integers, but of an old combination which has been, at most, subjected to slight variations. The question must be whether those variation are other than obvious." 

The general test to be applied in determining obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date (The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

The applicant has here effectively conceded that the combination claimed in claims 1 and 2 is obvious as it corresponds to the claim of the petty patent and consequently falls within the ambit of the Federal Court decision. It is therefore clear that the opposition succeeds at least against those claims. Interestingly Mr Catterns suggested that the effect of the reduced finger portion of the resilient finger in this combination was not fully dealt with by the court and that I should gives some weight to this when considering the appended claims. I however reject this as it was a point specifically dealt with on appeal. I note particularly the judgement of Lockhart J. 25 IPR 173 at 185. On the basis that the combination of claims 1 and 2 is obvious, Mr Yates says further that what is added in the appended claims is obvious and the result is a mere collocation of integers having no working interrelationship.

In relation to claims 3 and 4 it is agreed that the additional features all relate to the moulding process described on page 4 of the specification.  As such even were they to be claimed in the context of that process I do not believe it could be said that these features are material to the way the invention works.  This is because the invention of the present application is not the process or even a connector made by that process.  It is a connector with a number of specific features designed so that it provides "a liquid tight seal without the aid of adhesives, and which is reusable and adjustable during installation".  In this regard the moulding process is not referred to in relation to the prior art or the object of the invention but only after the description of the preferred embodiment where it is said that "Because the connector in the preferred embodiment is a unitary plastics moulding, a special method of moulding had to be developed to allow for the formation of the locking members".  Consequently, I believe that it would be obvious to a skilled addressee that the features in question were not intended to materially affect the way the invention works and therefore I cannot consider these features to be essential to the combination claimed (Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183).

Similarly, I do not believe that it could be said that a working interrelationship exists with the other features claimed to produce a new or improved result.  Mr Catterns submitted that the new result of this invention is a product which works in a way which is new, although obvious, and is made more cheaply by the injection moulding process.  In my view this result is not evident from the invention as claimed and if it was it would reflect two distinct and independent results rather than the "one result" referred to in Palmer v. Dunlop, supra.  Thus I find that on a true construction of the claims the additional features of claims 3 and 4 must be disregarded when considering the combination of features defined.  Since what remains is the obvious combination in claims 1 and 2, the combination defined in claims 3 and 4 is also obvious in light of the authorities referred to above.

Mr Catterns conceded that the remainder of the claims added very little, however in light of my findings above I will deal with each briefly. Claims 5 and 6 present some difficulty in that the additional features relating to the radially extending face of the projection are not discussed at all in the body of the specification and are not considered in the evidence. Mr Yates submitted that the "substantially planar face" in common with the ramp of claims 4 and 5 was designed merely to facilitate moulding of the connector and particularly to allow easy removal of the movable part of the external mould. Mr Catterns on the other hand suggested that the planar face was designed to allow better engagement with the corrugations of the conduit. Even if I accept the latter view I find that all the features mentioned in these claims are represented in the Dietzel connector which has been accepted as common knowledge in the art (105 ALR 264) and which Burchett J considered to be "an old combination which has been, at most, subjected to slight variations" (105 ALR 266). Thus the features here are part of the old combination and following the principles applied by the Federal Court I do not think it is open to me to find that the combination claimed is other than obvious.

Claims 7 to 9 further define the sealing means in claim 1 and each relate to apparatus that is plainly common knowledge in the art. In this regard I note para 5 of the first Halliday declaration and exhibits WMH1, 2 and 11, the Frost declaration dated 2 November 1990 and para 16 of the Zockel declaration dated 19 February 1991. Burchett J at 105 ALR 265 stated in relation to the sealing means that "But the perception that a connector, such as the Dietzel connector, could be combined with the sealing means already provided by existing connectors for corrugated electrical conduit cannot be regarded as something that would not "at once occur to anyone acquainted with the subject, and desirous of accomplishing the end"". Thus I believe that the invention claimed in these claims is obvious and reflects the mere choice among functional equivalents with no particular advantage or difficulty overcome.

Claim 10 is of the normal omnibus type and it is accepted that such claims are limited to the essential features of the invention as shown (Witty v Turbon Engineering Co. Pty. Ltd. (1961) AOJP 2760). Since there is no significant difference between the essential features as illustrated and their definition in the claims as already discussed I do not believe there is anything in the claim which amounts to an inventive step.

On the above consideration I find that the opposition succeeds on the basis that the invention, so far as claimed in claims 1 to 10, is obvious in light of what was known or used in Australia before the priority date.

conclusion

I have found in light of the evidence and the decisions of the Federal Court in Elconnex Pty Ltd v Gerard Industries Pty Ltd (105 ALR 247 and 25 IPR 173) that the invention claimed in claims 1 to 10 was obvious and did not involve an inventive step having regard to what was known or used before the priority date. The opposition therefore succeeds in relation to all claims.

In light of my findings I am unable to identify any patentable subject matter disclosed in the specification that could form the subject of valid claim.  Accordingly, I refuse the application.

COSTS

In accordance with the principle that costs follow the event I awards costs against the applicant, Elconnex Pty Limited

Philip Spann
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant: Davies Collison Cave, Sydney

Patent attorneys for the opponent: R K Maddern & Associates, Adelaide