F. & H. Holdings, Inc. v Tracylisa Pty Ltd

[1986] APO 21

In the Matter of the Patents Act 1952

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In the Matter of the Extension of Term of Petty Patent No. 542745 in the Name of

F. & H. HOLDINGS, INC.

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In the Matter of Notice under Section 68B(3) by TRACYLISA PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         This matter concerns Petty Patent No. 542745 entitled "Device for Pressing Garlic and the Like".  The application, No. 35348/84 was lodged on 12 November, 1984 and was accepted and sealed as petty patent 542745 on 28 March, 1985.
         A Notice under sub‑section 68B(3) was lodged by R.C. Wray & Associates, patent attorneys, on 18 April, 1985 on behalf of Tracylisa Pty. Ltd., the informant.  This notice was accompanied by one United Kingdom and three United States patent specifications.  The patentee was duly informed of this notice in accordance with sub‑section 68B(7).  Subsequently the patentee filed an application under sub‑section 68B(1) seeking an extension of term of the petty patent.
         The matter was set down for hearing in Canberra on 28 April, 1986.  The patentee was represented at the hearing on this date by Mr. A.W. Cowie, patent attorney of Cowie, Thomson & Carter.  Prior to 28 April, 1986, Mr. E.J. Harwood, patent attorney for the informant, of Wray & Associates, notified that he was not able to attend the hearing on that date and requested to be heard at a later date.  There is no requirement of the Act in matters such as this for

the Commissioner to hear parties to the matter at the same hearing, although this is desirable for administrative convenience.  Accordingly Mr. Harwood was given the opportunity to be heard at a later date but he notified the Patent Office on 30 May, 1986 that the informant no longer wished to be heard in respect of this matter.
         In its sub‑section 68B(3) notice the informant has not actually identified the paragraphs of sub‑section 100(1) of the Act upon which it relies.  However it appears from the material lodged that the informant relies upon paragraphs (e) and (g), i.e. the claim of the petty patent was obvious and did not involve an inventive step, and the invention so far as claimed in the claim of the petty patent was not novel.
The Specification
         The specification commences by stating that the invention:

"relates generally to the field of food extruders and more particularly to a device for pressing garlic cloves into smaller and more usable sizes."

It goes on to explain that known garlic presses have the disadvantage that these presses require cleaning after each use which is a "tedious process".  This disadvantage is overcome in the present invention by way of the garlic press being also a storage container for the garlic when not in use.
         The device is defined in the appended claim as follows:

"Device for extruding garlic cloves and the like, comprising:

(a)an elongated cylindrically tubular, plastic body having a cylinder wall and also having a closed end and an open end, said closed end having a thread support section through which extend generally axially disposed internal threads for receiving a threaded stem member, the open end of said body having external threads for receiving a threaded end piece, said body defining therein a storage cavity,

(b)a shallow, cylindrical cup‑shaped plastic end piece having a side wall and a bottom wall and also having internal threads on said side wall for threadably engaging the external threads on the open end of said body, and further including a plurality of openings in said bottom wall, said end piece having an annular, radially inwardly offset closure cap engaging surface around the outside of said bottom wall,

(c)a cylindrically shaped plastic piston member slidable within said body and shaped to present a generally flat round surface facing toward the open end of said body and designed to be engaged by a piston stem,

(d)an elongated plastic threaded stem member for being received at said closed end of said body through said internal threads and having an inner end which coactingly engages said piston member within said body and which extends out of said closed end and has an outer end to which is attached a handle means for threading said stem member in and out as required, and

(e)a plastic closure cap means for engaging said closure cap engaging surface on said end piece for enclosing the interior of said device and preventing the escape of odors from food contained within said storage cavity."

Novelty, Obviousness
         The evidence lodged with the sub‑section 68B(3) notice consists solely of:

(i)G.B. Patent Specification No. 2064947 in the name of David Peter Harris,

(ii)U.S. Patent Specification No. 2955530 in the name of Dominick J. Nilo,

(iii)U.S. Patent Specification No. 1661802 in the name of Charles R. Hitz, and

(iv)U.S. Patent Specification No. 2826138 in the name of Myron R. Pexton.

In regard to the question of novelty, I consider that only US 2955530  is of any relevance and warrants discussion as the other specifications are wholly silent on a number of the features defined in the claim.
         US 2955530 discloses a tissue press which comprises a cylindrical body with a movable piston which is moved by a threaded stem.  Mr. Cowie submitted that there are a number of differences between this device and the present invention.  These differences, in his submission, are mainly that the disclosed device in US 2955530 has "two open ends and is limited in the description and claims to the use of a locking ring to hold the piston on the threaded stem, there is no end piece having apertures therein, ... there is no end cap disclosed and no radially inwardly offset closure cap engaging surface at the open end".
         I do not entirely agree with Mr. Cowie's assessment of this US specification and comparison with the present claim.  Without going into detail, I consider that having the locking cap (32) on the cylindrical body (10) is equivalent to one end of the device being closed.  Also, since the claim defines that the piston and threaded stem member are designed to engage each other, it includes within its scope the arrangement of US 2955530.   However, I agree with the other points regarding this specification made by Mr. Cowie.  In particular, as a consequence of there being no disclosure of a "shallow, cylindrical cup‑shaped plastic end piece" as defined by the claim, nor of a "closure cap means" which engages the "closure cap engaging surface", I do not consider that the invention defined by the claim lacks novelty.
         On the question of obviousness, Mr. Cowie referred me to two judgements, namely Minnesota Mining and Manufacturing Company and 3M Australia Pty. Ltd. v. Beiersdorf (Aust.) Ltd. 29 ALR 29 and Graham Hart (1971) Pty. Ltd. v. S.W. Hart & Co. Pty. Ltd. 52 ALJR 279. It is apparent from these judgements that obviousness has to be considered against the background of the proven common general knowledge in the art in Australia at the relevant date. However there is no evidence before me to establish what was the common general knowledge in respect of the art here in question. Clearly the patent specifications cited by the informant can not be treated as representing common general knowledge in the art in Australia especially in the absence of evidence from appropriate addressees to establish that fact. Consequently, given the absence of any expert evidence before me relevant to the issue of obviousness, I am unable to conclude that the claimed invention was obvious and did not involve an inventive step.
Conclusion
         I have found that none of the material accompanying the sub‑section 68B(3) notice would invalidate the claim of the patent in suit.  Accordingly, under sub‑section 68B(5) of the Act I grant an extension of the term of petty patent No. 542745.
         I award costs in this matter against the informant, Tracylisa Pty. Ltd.

(T.R. BRUHN)

Patent Attorneys for the patentee  :  Cowie, Thomson & Carter