Endtune Pty Ltd v Quickfire

[1985] APO 2

In the Matter of the Patents Act 1952 and - In the Matter of Application for Extension of Term of Petty Patent No. 534720 in the Name of ENDTUNE PTY. LTD. and - In the Matter of Objection under Sub-section 68B(3) by QUICKFIRE.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Petty Patent 534720 was sealed on February, 1984 in respect of an invention entitled "Method of Protecting Exposed Conductors of Spark Plug Leads". The priority date is the date of lodgement, viz. 18 April, 1983. On 7 December, 1984 the patentee made application in accordance with ss.68B(l) of the Act for the grant of an extension of term of the petty patent. However on 7 August, 1984 ss.68B(3) notice had been lodged in the name of Quickfire informing the Commissioner of certain facts that allegedly establish various of the grounds set out in that sub-section. In support thereof, the following documents were lodged:

(1) Statutory Declaration made by Rodney Clifford McLeod dated 16 July, 1984;

(2) Statutory Declaration made by Philip Alder dated 19 July, 1984, accompanied by six exhibits;

(3) Statutory Declaration made by Robin Thomas Kelly dated 6 August, 1984, accompanied by two exhibits.

In this matter Mr. J.L. Davies, Patent Attorney, Melbourne acted on behalf of Endtune and Mr. R.T. Kelly, Patent Attorney of G.R. Cullen & Co., Brisbane, acted on behalf of Quickfire. Mr. Kelly indicated that he did not wish to be heard but would rely on the declarations lodged with the ss.68b(3) notice together with some written submissions, Mr. Davies indicated that Mr. Christopher Ford, a director of the Patentee Company, Endtune would attend a hearing. The matter was heard in Melbourne on 5 March, 1985.

The Specification

The specification is entitled "Method For Protecting Exposed Conductors of Spark Plug Leads When Folded Back Under Crimped Connectors". The description commences by stating that the invention relates generally to a method for protecting exposed wires of electrical leads from corrosion or shorting due to ingress of moisture, and that more particularly, the invention provides a method of protecting from corrosion, the folded over exposed ends of conductors of spark lead terminals. It goes on to explain that spark plug electrical conductor lead terminal connections are prone to premature electrical failure because of corrosion at the ends where the insulation is stripped back from each end and the exposed conductor at each end is folded over and then crimped under the sleeve of the terminal, whereby the exposed conductor core is particularly prone to wear put.

The solution to these problems offered by the specification is to coat the terminal and exposed conductor ends of the spark plug leads with a corrosion and moisture-protective coating of polyurethane varnish to provide a hard, flexible, durable film which is oil, chemical and moisture resistant and also electrically insulating. This is done by virtue of vertical dipping and short immersion time at ambient temperature in a bath of a dilute solution of polyurethane in methylene chloride solvent followed by vertical draining with subsequent drying at ambient temperature to evaporate the solvent. The resultant residual film or coating of polyurethane is apparently sufficiently thin and brittle to enable sufficient scraping off to occur during mechanical connection between terminal sleeve and spark plug pin when the terminal socket is pushed into the pin, whereby the electrical performance of the leads is unaffected.

The method of the invention is defined in the appended claim as follows:

"A method of protecting an exposed single conductor core of graphite-impregnated rubber at the ripped back end of a silicone rubber insulation -type spa:[ plug lead for an internal combustion engine spark plug, the lead having terminals connected to each end thereof, a socket terminal being connected to one end thereof said Socket terminal being in the form of a sleeve having axially opposite end portions, one end portion comprising a female socket for engaging the spark plug pin, the opposite end portion comprising a crimping ferrule for crimping the terminal to the end of the spark plug lead, the conductor core being folded back along the outside surface of the insulation and crimped under the crimping ferrule portion of the socket terminal to be between ::he outside surface of the insulation and the inside surface of ;he ferrule portion of the terminal, which method comprises: coating the crimped, connected socket terminal end of the end by dipping the whole terminal vertically downward into a bath of liquid dip comprising a dilute solution of a maj4r proportion of methylene chloride solvent and minor proportion of polyurethane resin at ambient temperature for a period of time sufficient to form a protective coating around the exposed surfaces of the core and the terminal, followed by rapidly raising, draining and then drying at ambient temperature to obtain an exposed conductor and lead socket terminal coated with thin protective layer of polyurethane whereby the coating thus formed on the inside surface of tie female socket is readily abraded by the spark plug pin, when the socket is engaged with the pin, enabling conductive contact to be made between the inside surface of the socket and the spark plug pin when the lead is connected thereto."

Novelty

Before giving my views under this heading I will present the text of the written submissions lodged by Mr. R.T. Kelly, which, in part, have led me to my views, but which, in any case, require comment. That text reads as follows:

"It is clear that the allegedly novelly conferring features of the above claim are 1. dipping the whole terminal vertically downwardly into a bath Of liquid dip Comprising a dilute solution of methylene chloride solution of methylene nal olvent and polyurethane aretisngn ofnorthaepeterirmoid Of time sufficient to form a protective followed by 2. rapidly raising draining and the drying the terminal at ambient temperature to obtain a :cied protective coating on the terminal of polyurethane.

Apparently step (2) has the result thqj the coating formed by the inside surface of the female socket if readily abraded by the spark plug pin when the socket is engaged the-rewith. This enabler cinductive contact to be madi 9:tween the inside surface of the socket and the spark plug pin when the lead is connected thereto.

The Evidence already lodged in our view clearly establishes that:

3. dipping of terminals in protective solvents such as organic solvent? or resins is well known (gee Exhibit PA3 and in particular reference to silicone electric compound G635 which is used for automotive and reraft electrical connectors, ignition.systems and e like and also TRANZ Q43 electrical.silicone insulating combound used for ignition systems which has been in use sincc 1959; reference should also be made to Exhibit PA5).

4. The Patentee has been carrying out the steps (1) and (2) and selling the coated.terminals prior to the priority date of Petty Patent 534720 - see paragraph 3 of Alder Declaration and attached copy invoices dated January 24, 1983; February 14, 1983; January 26, 1983; March 24, 1983; and March 30, 1983; and

5. polyurethane resins are used for surface coatings and methylene chloride is a commonly known "reducer' for polyurethane resins (see Exhibits RTKI-2).

From the foregoing it is our contention that there is no invention in taking a commonly known organic resin (i.e. Polyurethane resins) admixed with a commonly known organic solvent (methylene chloride) and dipping ignition lead terminals in same when other protective resins (e.g. silicones alkyd resins) have been used for this purpose."

In considering the content of the informant's documents and submission, I cannot find any disclosures to support the ground of want of novelty. It is apparent that, before the priority date of the claim under consideration, it was common knowledge to dip the ends of spark plug leads in a mixture of a polyurethane resin and an organic solvent, however, it has not been demonstrated that the use of methylene chloride as a "reducer" when carrying Out this dipping process was common knowledge or in fact had even become public knowledge. I am assisted in this matter by the declaration of Mr. Alder which states, at paragraph 5, that, inter alia, he (Mr. Alder) was advised that the spark Plug leads he manufactures and sells would not infringe the claim under contention "because of the fact that I (Mr. Alder) did not use methylene chloride as an organic solvent associated with the polyurethane resin".

Further, the only evidence placed before me which discloses the use of methylene chloride as a solvent for polyurethane resins is contained in exhibit RTK2 to Mr. Kelly's declaration. This exhibit is an extract from a publication entitled "The Development and Use of Polyurethane Products" by E.N. Doyle (published 1971) in which it lists, in Table 8, methylene chloride as a solvent, but, more importantly, doe's not contain any disclosure of the solvent being used as a "reducer" in the process of dipping spark plug leads. None of the remaining documents relied on by the informant disclose the particular process defined in the present claim.

Mr. Kelly's submissions rightly summarise the (allegedly) novelty conferring features-of the claim in items 1 and 2, first occurrence. He then correctly summarises in items 3, 4 and 5 the importance of the evidence which he lodged in support of the ss.68B(3) notice. However, the comparison of these two sets of items is illuminating in that it demonstrates the absence of the features of novelty (as part of the c7aimed method) from the evidence.

One further comment needs to be made in respect of item 4. Firstly, it is not clear from the evidence that the coated terminals sold in accordance with the invoices of the dates specified were in fact made by the process claimed. However, even if they were, it does not seem likely that such sales would constitute a publication of the treatment process, the steps of which, including the use of methylene chloride, could not be determined from the finished product.

Consequently, I conclude that the invention claimed does not lack novelty in the light of the evidence on file.

Obviousness

There is grave doubt whether all the documents attached as exhibits to the declarations in evidence would constitute common knowledge in the field of the present invention, before the priority dote of the claim, i.e. 18 April, 1983. Nevertheless, the evidence does show that it was known prior to that date to dip spark plug lead terminals into a solution of polyurethane resin and non-chlorinated organic solvents. Exhibit RTK2, as I have stated previously, is the only document of the evidence on file which refers to methylene chloride as a urethane solvent. However, firstly, there is no evidence to the effect that the document which constitutes this exhibit is common knowledge in the present art: secondly, even if there was such evidence nothing suggests that a non-inventive skilled workman in the art would select methylene chloride as the particular solvent. In fact, there is a reference in this exhibit concerning urethane formulations which may deter such a workman from making that selection:

"Chlorinated solvents are not generally accepted for use in these formulations, but they are quite useful in many applications."

Thus I am guided by the decision of Aikin J.-in Minnesota Mining and Manufacturing Co. v. Beiersdorf, H.C. of A (1979) at p.33 in which he stated:

"The proper question is not whether it would be obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have keen obvious to a non- inventive skilled worker in the field to select from possibly a very large range of publications The particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications."

I am therefore not satisfied that the ground of obviousness has been made out.

Conclusion

In conclusion I am not satisfied on consideration of all the documents lodged in support of the notice and submissions before me that grounds have been established for refusing to extend the term of the petty patent. Accordingly, under ss.68B(5) of the Act, I grant an extension of term of petty patent No. 534720, and I award costs against Quickfire.

(J L Roveta)

Supervising Examiner of Patents

26 MAR 1985