GOULD INC.

[1988] APO 44

In the Matter of the Patents Act 1952 - and - In the Matter of Application Nos. 539758 and 541978 for Patents by GOULD INC. - and - In the Matter of Consideration of Sealing under Section 62.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

GOULD INC. lodged two applications relating to lead-acid storage cells which were advertised accepted as Nos. 539758 and 541978 on 11 October, 1994 and 31 January, 1985 respectively. The CHLORIDE GROUP opposed both applications and completed service of evidence in support of both actions by the end of January 1986. GOULD was granted extensions up to 30 April, 1988 for service of evidence-in-answer on both actions, but CHLORIDE withdrew both oppositions on 13 April, 1988, before GOULD had served any evidence- in-answer.

In accordance with office practice a delegate of the Commissioner then considered whether patents ought to be sealed on the GOULD applications having regard to the evidence placed on file by CHLORIDE. As a result, GOULD was advised in writing on 30 May and 7 June, 1988 (for the respective applications) that in the view of the delegate the applications in question included claims that were prior published and claims that were otherwise not novel.

The applicant was offered three options:

(i) request amendment under section 77 to remove the problem;
(ii) request to be heard in the matter;
(iii) lodge submissions in rebuttal.

The applicant chose to be heard, and a hearing was set down for 12 August, 1988 in Melbourne. Mr. M.J. Royal of Phillips, Ormonde & Fitzpatrick, patent attorneys of Melbourne, attended the hearing as representative of GOULD.

The Applications

The facts of the applications are sufficiently close that I need only consider one in detail. For this purpose I have selected No. 539758.

This application relates to lead-acid cells and batteries.  In particular it relates to maintenance free sealed cells capable of rapid deep cycling, that is, fully discharging and recharging daily.  Towards the end of the charging cycle any lead-acid cell loses water through electrolysis. In a conventional flooded electrolyte battery this is replaced by topping up with water at regular intervals; in a sealed maintenance free battery the loss is almost reversed by recombination. During charging the voltage of the cell rises and oxygen is formed at the positive electrode well before hydrogen is formed at the negative electrode. In a recombinant battery this oxygen is allowed to diffuse through the separator, which separates the positive and negative plates, and to react with hydrogen at the negative plate to "reform" water. In order for the diffusion to occur, there must be voids in the separator; that is, the latter is not completely saturated by electrolyte, but in order for the battery to operate properly, this wet separator must be tightly pressed between the electrode plates. Furthermore, to allow oxygen recombination to occur during rapid recharge as is required in daily deep cycling, the cells are pressurised with safety valves operating at up to 50 psig, which requires the use of strong, heavy cases.  All these features were known and are referred to in that part of the specification dealing with the background to the invention.

One further feature referred to in the description relates to the composition and structure of the electrode plates. In order to produce a grid which is rigid and self-supporting a variety of alloys has been used, e.g. lead alloys containing antimony, calcium, calcium-tin, cadmium-antimony and selenium-antimony-tin. In general, in the context of this art, all alloying produces problems as well ag benefits. Inclusion of antimony reduces the hydrogen overpotential, thus allowing gassing earlier in the charging cycle; inclusion of calcium produces a poor life if the battery is used in deep cycle operations.

The description states that the object of the invention is to optimise the features of a maintenance free, long cycle life, deep cycle cell. See for instance, page 11 line 15 of the specification:

"In general, the present invention is predicated on the discovery that a sealed, maintenance-free, absorbed electrolyte,-lead-acid cell that is capable of long cycle life in deep discharge applications requiring rapid recharging can be provided by utilising a hybrid grid alloy system having a low antimony, lead alloy for the positive grids and an antimony-free lead alloy for the negative grids. Sealed, absorbed electrolyte systems have not utilised antimony-containing grid alloys due to the generally accepted view that the presence of antimony would be expected to result in the generation of sufficient hydrogen to prevent an efficient oxygen recombination cycle, essential for maintenance-free use, from being established.  Surprisingly, however, the sealed, lead-acid cell of this invention provides a long life without maintenance for deep cycle applications at extremely low internal pressures."

For the purposes of this action claim 1 is the most relevant of the claims. It reads:

"A maintenance-free, absorbed electrolyte, lead-acid cell capable of enduring deep discharge and rapid recharge cycling, with long cycle life, comprising: a container normally sealed from the atmosphere in service; a plurality of positive plates in said container, each of said plates comprising a self-supporting grid of a lead alloy containing no more than about 2% antimony based upon the total weight of the alloy, and positive active material on said grid; a plurality of negative plates in said container, each of said plates comprising a self-supporting grid of essentially antimony-free lead alloy and negative active material pasted on said grid; sulfuric acid electrolyte in an amount sufficient to provide a desired capacity and an electrolyte-starved condition; separator material intimately contacting and separating said positive and negative plates, said separator material being at least 70% porous, easily wetted, and capable of wicking the electrolyte; said electrolyte being substantially completely absorbed in said plates and separators; and said separators providing a sufficient void volume in service to permit transport of oxygen gas generated during recharge at a sufficient rate so that pressure in the cell does not normally exceed about 10 psig."

The Objections against Application 539758

This application was examined under section 52C (Modified Examination), consequently the EP (European) and WO (International, PCT) search material fell outside the requirements of the Examiner's search.

When the equivalent application was considered in Britain, specification WO 80/01970 by CHLORIDE was cited. WO 80/01970 was open to public inspection in Australia on 29 September, 1980, before the earliest priority date of the applicant's specification (3 October, 1980).

The WO document discloses all but two features of claim 1 of the present application.

The first of these features concerns the percentage of antimony in the grid of the positive plate. The words of the claim are "alloy containing no more than about 2% antimony based on the total weight of the alloy".

According to the evidence-in-support, the British Office commented:

"It is pointed out that the above citation discloses the use of battery plates comprising antimony in amounts of 1.2 to 2.8%. Further, it is disclosed at page 4 that the antimony content should be kept below 3% to reduce the production of gas (and consequent water loss) and that a range of 1.2 to 2.8% antimony is suitable for the purpose, a value of 2.43% being used in Example 1.

The present invention is also directed to the same problem, that of preventing gag formation and water loss, and employs a similar solution, that of restricting the antimony content to an amount up to 2%.

It would appear that the value of 2% selected in the present invention is an arbitrary value selected from the range common to Sb-Pb battery alloys and indeed at page 14, paragraph 2 a range of about 0.5% to about 2% is described.

It is acknowledged that Example 2 of the present invention (referred to in your agent's letter of 28 November 1983) illustrates the benefit of 1.5% Sb against 2.1% Sb; however this would appear to be an expected result in view of the relationship between Sb content and gas production disclosed in the cited specification.

The selection of a maximum value of 2% Sb in the present invention does not therefore appear to produce any unexpected benefit and does not therefore appear to constitute an inventive step in view of the above citation."

It seems from these remarks that a large overlap occurs in the antimony content of "1.2 to 2.8%" in the citation and "no more than about 2%" in this application, and as stated about the feature in the last paragraph (supra), it "does not appear to produce any unexpected benefit". The delegate dealing with the application concluded therefore that this feature of the claim was disclosed because of the overlap of the range, and that this raised the possibility that the claim may not be able to rely on this feature for novelty even if the range were to be restricted.

The second feature also concerns the plate grids. In claim 1 the applicant defines the grids as being "self-supporting". This construction was customary in flooded batteries, and since pure lead is very soft and creeps over time, the lead was alloyed with elements such as antimony and calcium. As stated previously, the inclusion of antimony reduces the hydrogen overpotential and allows gassing earlier in the charging cycle. So in the development of maintenance free batteries pure lead was advocated. This much is disclosed in GB 1364283 (US 3862861) in the name of GATES RUBBER COMPANY. These plates were definitely not self-supporting and in the GATES specification they are rolled up in a manner similar to the construction of an electrolytic capacitor. However other experimenters have used plates made of alloys with reduced antimony content, (to reduce water loss), which were self-supporting. (See, e.g. US 4166155, in the name of MAO.) The MAO specification appears to disclose a flooded battery which need only be topped up about every 2 months instead of weekly. These particular references are acknowledged in the specification as prior art. Nevertheless, the WO 80/01970 citation is silent on this point.

However, Mr. Thomas McLean, in a declaration forming part of the evidence-in-support, refers to GB 1364283 (GATES RUBBER COMPANY) in these terms:

"I therefore believe that the substitution of self- supporting grids in the cells of British Patent 1364283 would not materially affect the working of the cell.  This substitution would be open to any expert in the field and would not require the exercise of inventive faculty."

In the result, the Attorneys for the applicant were advised by letter on 30 May, 1988 that the invention as claimed in all claims was prior published or not novel in the light of specification WO 80/01970 by CHLORIDE.

The Applicant's Submissions

At the hearing the applicant's attorney, Mr. Royal, restricted his remarks to legal argument relating to the principle of "bar to sealing", making no submissions on the technical facts of the case and the question of novelty.

His principal submission was that the Commissioner had no power under the Patents Act to refuse to grant a patent on an application that has been accepted but is not opposed (section 62). To reach this general conclusion, he made the following points:

• Section 155 expressly permits the Commissioner to interfere and refuse to grant a patent subsequent to acceptance -

  (a) if its use would be contrary to law; or

  (b) if it involved a mere mixture used for food or medicine;

  and an appeal lies to the Federal Court;

• Sections 59 and 60 confer on the Commissioner the power to refuse to grant a patent as a result of opposition proceedings and an appeal lies to the Federal Court; however withdrawal before a hearing under Regulation 61A terminates the opposition and prevents the Commissioner from considering the case under sub-section 60(2) as sections 59 and 60 no longer apply;

• Tate v. Haskins refers to the danger of departing from the scheme of the Act; to refuse the grant is to depart from that scheme and creates a number of inequities; where the Act provides a power to refuse it also provides for appeal, as specified in sections 52, 60 and 155; section 57 provides a mechanism for third parties to intervene before acceptance, and Part V (section 59), after acceptance; as neither apply in this case the applicant will lose the right to appeal; similarly there are no provisions that would allow the applicant to put evidence before the Commissioner; furthermore the applicant would have to comply with the more restrictive sub-section 78(2) as compared with sub-section 49(4) if forced to amend the claims, or to the more onerous provisions of section 51(4) if the applicant decided to divide out an invention;

• Tate v. Haskins also draws a distinction between "mandatory" and "discretionary" matters - "A matter which goes only to discretions stands in a very different position"; under sub-section 52(1) acceptance is mandatory where the Commissioner is satisfied there is no lawful ground of objection; however, a refusal to accept is discretionary (52(2)); United Kingdom decisions cannot be relied on - the 1949 UK Act specifically refers to the power of the Comptroller to refuse to seal a patent and limits this to prior publication; In order to refuse to grant the patent it must be shown that the patent granted would be manifestly bad.

Decision

(i) Development of the Law and Practice

It appears to me to be a proper administrative approach that the Commissioner should not seal a patent, which, on the face of material before him, would be clearly invalid. Historically, it seems that the UK Comptroller came to that conclusion a long time ago - see the ruling by the Comptroller-General in Wainwright's case (Ruling 1912(E), 29 RPC Appendix XI:

"I am clearly of opinion that apart from any specific provisions in the Act the COMPTROLLER - like any other Judge or Court of Justice - must have the general and inherent powers of preventing a fraud being committed on the Crown or an injustice or wrong being done to the public. In the case of a grant of a Patent the COMPTROLLER is administering a special prerogative of the Crown, and I cannot think that he is compelled to allow a grant of Patent rights where, under the special Circumstances of the case, the grant would be admittedly bad; or would be in effect a fraud upon the public, or the Crown."

Subsequently, various Solicitors-General maintained this view as did the Courts. Luxmore J. summed the matter up precisely in his judgement on Metz Laboratories Inc. Application 50 RPC 355, thus:

"   I think it is quite plain that there is jurisdiction in the Comptroller to take notice of any reason for not granting a patent at any time before the grant is made, although such reason might properly have been taken and considered at some earlier stage in the proceedings. The duty of the Comptroller subject to the provisions of the Consolidated Acts is twofold, to protect the public and to see that the Crown grant is not improperly given. This duty must remain unfettered during the whole period before the grant is made. This is the view I take of the matter, quite apart from any information as to the practice of the Office or any decided cases. I am glad to find that my view is entirely in accordance with the practice and that such practice has been recognised by the decisions of past Comptrollers-General and of the Law Officers. I have had my attention called to a number of those decisions; I entirely agree with what has been said with regard to the matter. In my judgement there can be no doubt but that the Comptroller has full power at any time before the grant of a patent is made to take any objection to the grant which is open, no matter when that objection is brought to his notice."

Eventually, and pursuant to paragraph 180 of the Swan Committee Report (1947), the aforesaid principles were enshrined in Statute Law in the form of section 15 of the UK Patents Act, 1949.

The historical development of the practice has been little different in Australia. There are no relevant provisions in the Act; however, the full bench of the High Court pronounced on the matter in Tate v. Haskins 53 CLR 594, in these terms:

"But under the analogous provisions of the English legislation it has been generally considered that if at any time before sealing it appears to the Comptroller that the applicant is not entitled to the grant he may, and ought to, refuse it. With the full approval of many law officers expressed in their reported decisions a practice has grown up under which the Comptroller acts upon matters which are brought to his notice during opposition proceedings falling outside any allowable ground of opposition. The practice has been recognised by Luxmoore J., sitting as the appeal tribunal (In re Metz Laboratories' Application).

A refusal to seal a patent which when sealed would be invalid has a justification which does not extend to objections affecting only matters preliminary to grant.  Notwithstanding that, under the procedure prescribed by the statute, an applicant has performed all the conditions upon which according to the terms of the statute the Comptroller's duty to seal arises, the very fact that the patent would be void when sealed means that the duty is only apparent and not real. The instrument would be inefficacious because contrary to law. It cannot be the imperative duty of any officer to issue such an instrument. Mandamus would not go to compel him to do so."

In giving effect to these comments of the Court, the Commissioner undertakes what is known colloquially as a "bar to sealing" action.  This involves investigation of the evidence on file to determine whether such evidence would result in clear invalidity of a patent if sealed on the application concerned. If a "bar to sealing" is found, the applicant is notified in writing accordingly.

(ii) Consideration of the Submissions

Section 62 of the Patents Act 1952 reads:

"62. If there is no opposition to the grant of a standard patent, or, in case of opposition, if the Commissioner's decision, or the decision on appeal from that decision, is that a standard patent should be granted, the Commissioner shall cause a standard patent, in accordance with the prescribed form to be sealed with the seal of the Patent Office."

Mr. Royal has argued that the terminology of this section (note the Commissioner shall ...") and the absence of specific appeal provisions* as are present in sections dealing with discretionary powers (cf. section 60) are indicative of the Legislature's intention that the section is concerned with mandatory powers. Thus (he said) it was never intended that once an opposition or appeal was settled favourably for an applicant, the Commissioner had the option to refuse to seal a patent. This may well be so, however, the full bench of the High Court made its judgement (Tate v. Haskins, supra) in the face of the then section 66 of the Patents Act 1903-1933 (No. 21 of 1903 - No. 57 of 1933), which is little different from present section 62, and reads as follows:

* Mechanisms of redress are available through the Administrative Decisions (judicial Review) Act 1977 or by means of prerogative writ.

"66. If there is no opposition, or in case of opposition if the determination of the Commissioner is in favour of the grant of a patent and no notice of appeal has been given within the time limited in that behalf, or if in case of an appeal to the High Court or the Supreme Court the Court determines that the grant ought to be made, the Commissioner shall cause a patent to be sealed with the seal of the Patent Office."

It follows that the law is unchanged, and the Commissioner is obliged not to seal a patent that would be clearly invalid.

There arises the question as to what is meant by "clearly invalid". Mr. Royal drew my attention to section 15 of the Patents Act (UK) 1949, which enables the Comptroller to refuse to grant a patent notwithstanding that he has previously accepted the complete specification and that no one may have opposed the grant, and the only ground on which he may do this is prior publication. Mr. Royal said that in the Australian situation if one follows the Office practice, there does not appear to be any limits on the type of objection" open to the Commissioner, and as there is no provision for .the applicant to be permitted to adduce evidence in its defence, the situation is anomalous, and could lead to injustice. I agree that if Mr. Royal's premise were true, then so would be his conclusions.  However, in my view of the law, the Commissioner is only entitled to refuse to seal a patent where that patent would be clearly invalid.  If such invalidity was contingent upon expert evidence from an erstwhile-opponent, it would be necessary in the interests of natural justice to allow the applicant to counter with its own expert evidence. Indeed, this is the normal inter partes opposition procedure. However a bar to sealing action is essentially an ex parte matter, and if in the latter type of action circumstances were such that the Commissioner would need to allow the applicant an opportunity to adduce its own expert evidence, or would need to decide between conflicting statements of expert witnesses, it seems to me very unlikely that there could be "clear invalidity". While I do not think this necessarily restricts the Commissioner to consideration only of matters of prior publication and lack of novelty, the nature of the other possible objections is such that it would be improbable that any would arise in this type of action.

Finally, I do not find Mr. Royal's points concerning proposals by the applicant under sub-section 51(4) and section 77 to be relevant. These points are equally applicable in respect of any standard patent application 3 months after acceptance thereof, whether or not opposition has been mounted.

(iii) Application of the Law to 539758

I have dealt with the facts of this application in some detail earlier in this decision. In summary there are two differences between the selected claim (claim 1) and the prior CHLORIDE specification viz. claim 1 defines "... each of said plates comprising a self-supporting grid of a lead alloy containing no more than about 2% antimony ..."; whereas the prior specification discloses an antimony range in the same context of "1.2 to 2.8%", but does not disclose the feature of self-support.

Respecting the first difference, there is an overlap in the range, the question of "unexpected benefit" does not arise in .relation to selection, and I find myself in agreement with the comments of the UK Office (reported earlier in this decision) as was the delegate of the Commissioner who considered the matter of the withdrawal of the CHLORIDE opposition.

Regarding the second difference, one of CHLORIDE's expert witnesses has stated (in a declaration forming part of the evidence- in-support)

"  that the substitution of self-supporting grids in the cells of British Patent 1364283 would not materially affect the working of the cell. This substitution would be open to any expert in the field and would not require the exercise of inventive faculty."

Two points arise in relation to this statement:

• the witness is making comments about the substitution of self-supporting grids in the cell construction as described in GB 1364283, and not the cell construction as described in the citation, i.e. the CHLORIDE specification WO 80/01970, which is quite different;

• the statement is the product of expert opinion expressed on behalf of CHLORIDE; there is no equivalent expert opinion on file on behalf of the applicant GOULD.

In my opinion, each of these points is fatal to the view that a patent sealed on the GOULD application would be clearly invalid. Even had the witness made his statement in relation to a cell construction identical to the one claimed by GOULD, the hurdle of the second point would remain. That is, I could not in the interests of natural justice, accept the CHLORIDE witness' statement without allowing GOULD an opportunity to adduce equivalent expert evidence. That being so, in the circumstances of this case, there is no question of clear invalidity. I make the same conclusions about application 541978.

Conclusion

I have found that where an application has been accepted, but before sealing, material has been drawn to the Commissioner's notice which would make a patent sealed on that application clearly invalid, the Commissioner has a duty not to seal that patent. I have also found that on the facts relating to applications 539758 and 541978, I cannot conclude that patents sealed thereon would be clearly invalid. I therefore direct that those applications proceed to sealing forthwith.

J.L. Roveta
Supervising Examiner of Patents
28 NOV 1988
Patent Attorneys for the applicant: Phillips, Ormonde & Fitzpatrick