Hitachi, Limited v Hoover (Australia) Pty Limited and Simpson Limited

[1985] APO 20

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application 533370 in the Name of HITACHI, LIMITED - and - In the Matters of Oppositions under Section 59 thereto by HOOVER (AUSTRALIA) PTY. LIMITED and SIMPSON LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent Application 533370 in the name of Hitachi Limited (Hitachi), entitled "Automatic Washing Machine" was lodged as a Convention application on 10 February, 1982 based on patent application 158779/81, lodged in Japan on 7 October, 1981. The priority date is therefore 7 October, 1981, and this has not been disputed.

Acceptance of the application was advertised in the Official Journal of 17 November, 1983. The grant of letters patent has been opposed by Simpson Limited (Simpson) and Hoover (Australia) Pty. Limited (Hoover) under section 59 of the Act, in separate actions. Service of the evidence-in-support of the Hoover opposition was completed by 7 December, 1984, and service of that for the Simpson opposition was completed by 7 January, 1985. Hitachi did not serve its evidence-in-answer to either opponent within the times allowed, but applied for extensions of time in which to do so. Both opponents objected to Hitachi's applications in this matter : however in a decision dated 28 May, 1985, Mr. D. Rainey, Assistant Commissioner of Patents, granted the applications, awarding costs against the opponents.

Despite this, Hitachi chose not to lodge any evidence-in-answer; instead it proposed to amend the statement of claims and the equivalent description in a way which presumably would avoid any problems attributable to the evidence-in-support. Neither Hoover nor Simpson considered the proposed amendments to be adequate and the oppositions were heard in the Patent Office, Canberra on 25 July, 1985.

Hitachi was represented by Mr. F.L. Schilling, Patent Attorney, of F.B. Rice & Co., Sydney, assisted hy Mr. C. Owens also of that firm. Hoover and Simpson were represented by Dr. I. Ernst, Patent Attorney, of Shelston Waters, Sydney.

The Specification as Accepted

"The descriptions opens by stating that the field of "the present invention relates to a washing machine and, more particularly, to an automatic washing machine adapted to automatically perform the steps of washing, rinsing and drying."

It goes on to explanation that, in general ,

"automatic washing machines proposed and used hitherto can be sorted into two types: namely, pulsator type machine in which a rotary blade unit is rotated in the washing and rinsing steps at a comparatively high speed in one and the other directions with a comparatively long interval of switching of rotation direction, and agitator type machine in which the rotary blade unit is rotated in the washing and rinsing steps at a comparatively low speed in one and the other direction at a comparatively low speed in one and the other directions (sic) with a comparatively short interval of switching of rotation direction.

More specifically, in the pulsator type washing machine, the direction of rotation of the rotary blade unit is switched at a long interval such that the rotation of the rotary blade unit is stopped for 3 seconds after a continuous forward rotation for 27 seconds and followed by a continuous backward rotation for 27 seconds.

The rotation speed of each forward and backward rotation is as high as 400 rpm. For these reasons, the pulsator type washing machines usually suffer the following problems."

Then follows a resume of problems concerned with entanglement and damage of clothes during washing, rinsing and drying steps in pulsator type machines.

The description then turns to agitator type washing machines in the following terms:

"The entanglement and the damage of clothes are not so heavy in the agitator type washing machines because in this case the rotary blade unit is rotated in the forward and backward directions within an angle less than 3600 at a low speed. The agitator type washing machines, however, have the following drawbacks.

(1) The washing power is so limited that the contaminants of the clothes cannot be removed perfectly when the washing is made with cold water, i.e. unless warm water is used.

(2) A complicated mechanism is necessary for reciprocatingly rotating the rotary blade unit within the angle less than 3600. This complicated mechanism seriously lowers the productivity of the washing machine."

The object of the invention is stated to be to

"provide an automatic washing machine which undergoes reduced entanglement and damaging of clothes as compared with the pulsator type machines and which exhibits a greater washing power than the agitator type washing machine, while eliminating the twining of the clothes around the cylindrical member."

The specification then describes the preferred embodiment with respect to thirty one figures of drawings and charts.

In the specification as accepted, claim 1 reads:

"An automatic washing machine comprising: an outer cell; a washing/drying cell rotatably mounted in said outer cell; a rotary blade unit rotatably mounted on the inner bottom surface of said washing/drying cell; and a washing machine motor to rotate the rotary blade unit in forward and backward directions in a washing step and a rinsing step and to rotate the washing/ drying cell at a high speed in one direction only during a drying step, wherein said rotary blade unit is provided at the center of the upper surface thereof with a cylindrical member, the ratio d/D between the outside diameter d of said rotary blade unit and the inside diameter D of said washing/drying cell being determined to fall within the range of between 0.6 and 0.8, the speed of rotation of said rotary blade unit being selected to range between 100 rpm and 250 rpm, and the time length of rotation of the washing machine motor in each of forward and backward directions being selected to be less than 1 second."

Claim 20, the only other substantive independent claim, reads:

"An automatic washing machine comprising: an outer cell; a washing/drying cell rotatably mounted in said outer cell; a rotary blade unit rotatably mounted on the inner bottom surface of said washing/drying cell; and a washing machine motor to rotate the rotary blade unit in forward and backward directions in a washing step and a rinsing step and to rotate the washing/drying cell at a high speed in one direction only during a drying step, wherein the ratio d/D between the outside diameter d of said rotary blade unit and the inside diameter D of said washing/drying cell is determined to fall within the range of between 0.6 and 0.8, that the speed of rotation of said rotary blade unit is selected to range between 100 rpm and 250 rpm, and that the time length of rotation of the washing machine motor in each of forward and backward directions is selected to be less than 3 seconds."

Claim 20 differs from claim 1 in that the rotary blade unit (agitator) is not limited to being provided at the centre of the upper surface thereof with a cylindrical member, and the time length of rotation of the unit in either direction must be less than 3 seconds rather than 1 second as required in the earlier claim. The description provides (at page 27 lines 12 et seq) that where the cylinder is detached from the rotary blade unit, the time can be prolonged to 3 seconds because in such a case, it is not necessary to take the measure for preventing twining of the clothes round the cylinder.

I note at this stage that while claim 1 is supported in the description by a statement in substantially identical terms thereto, claim 20 is not. Also, aside from the consistory statement and claim 1, the specification makes it clear that it is essential (i.e. for achieving the object of the invention) - presumably where the cylinder is mounted on the agitator - to keep the rotation period of the agitator in each direction to be less than 1 second (see pp.25-26).

The Specification as Proposed to be Amended

Claim 1 as proposed to be amended by section 77 request lodged 15 July, 1985 reads:

"An automatic washing machine comprising: an outer cell; a washing/drying cell rotatably mounted in said outer cell; a rotary blade unit rotatably mounted on the inner bottom surface of said washing/drying cell; and a washing machine motor to rotate the rotary blade unit in forward and backward directions in a washing step and a rinsing step and to rotate the washing/drying cell at a high speed in one direction only during a drying step, wherein said rotary blade unit is provided at the center of the upper surface thereof with a cylindrical member, the ratio d/D between the outside diameter d of said rotary blade unit and the inside diameter D of said-washing/drying cell being determined to fall within the range of between 0.6 and 0.8, the average speed of rotation of said rotary blade unit in each direction being selected to range between 100 rpm and 250 rpm under no load conditions, and the time length of rotation of the washing machine motor and the rotary blade unit in each of forward and backward directions being selected to be within the range of 0.8 to 1 seconds."

The section 77 request also proposes the addition of a new claim 2, the deletion of independent claim 20, and consequential amendments to the description and appended claims. The new claim 2 reads:

"An automatic washing machine as claimed in claim 1, wherein the average speed of rotation of the rotary blade unit in each direction is selected to range between 180 and 190 RPM."

As can be seen from my underlining in the proposed amended claim 1, this claim differs from claim 1 as accepted by referring to the average speed of rotation of the rotary blade unit (agitator) under no load conditions. This is, of course, the correct way to describe such speed as the unit comes to a stop before each direction reversal; further, unless a no load condition is specified, the agitator speed would be indeterminate or at best not comparable to other machines. This accords with the terminology common in the art, on my view of the evidence. The proposed claim 1 also differs from claim 1 as accepted by stating a lower limit of 0.8 seconds for the time length of rotation of the washing machine motor and blade unit in each of the forward and backward directions.

The Evidence

As the evidence of Hoover and of Simpson was presented in sequence hy Dr. Ernst during the course of his submissions at the hearing, I shall consider the two oppositions together rather than as separate matters.

There are two main declarants on behalf of the opponents, namely Reginald George Vicary (Hoover) and Howard Arthur Prendergrast (Simpson). Both men are qualified engineers having extensive relevant industrial experience, especially in domestic washing machine design, testing, and manufacture. It was conceded by Mr. Schilling that these declarants are proper addressees of the Hitachi specification. Their evidence shows that there were washing machines sold on the Australian market before the priority date of the claims, which clearly anticipate claims 1, 20 et al as accepted - specifically, these were the Hoover model 830. This model has the same constructional features as the machine claimed, plus the following design parameters -

agitator/bowl ratio (d/D) - 0.64

average RPM agitator (no load) - 100

time of agitator rotation in - 0.31 seconds

each direction.

Mr. Schilling conceded this anticipation at the hearing.

In total, there are more than 1,000 pages of evidence, but this does not include the unfolioed exhibits, some of which are working engineering drawings. The evidence establishes that all the major constructional features of the washing machine described are common knowledge in the art. There are of course, at least some constructional features described in the specification which are entirely new. For example, the spin-brake is certainly of unusual design. However the design parameters relating to the agitator speed and times of rotation do not form part of the common knowledge, i.e. insofar as those parameters appear in proposed amended claim 1 - 100 to 250 rpm, average speed under no load conditions for 0.8 to 1 seconds in either direction. What the evidence also shows is that the Hitachi machine falls intermediate in these design parameters between the known agitator and pulsator types of washing machine, the advantages and faults of which are also part of the common knowledge.

Obviousness

As I found that claims 1, 20 et al in their accepted form are anticipated, and this was not disputed hy the applicant, the hearing proceeding on the basis of the specification as proposed to be amended. Quite clearly, there is no anticipation of the claims thereof. The opponents however made submissions which can be summarised as follows:

• the character of the washing machine claimed is intermediate the known agitator and pulsator types;

• this does not amount to selection as there are no special results obtained, other than what would be expected, i.e. the Hitachi machine has washing characteristics intermediate those of the two known types;

• the Hitachi machine is therefore merely the result of design choice from a wide variety of well known and understood design parameters;

• furthermore the evidence of the experts in the art is to the effect that not only were the particular design parameters of the Hitachi machine well known, but the combination thereof was an obvious choice.

The applicant's submissions - made, it must be remembered without support from any persons expert in the art - may be summarised as follows:

·      the particular combination as defined by the claims nowhere appears in any prior art, either as paper proposals or as part of the common knowledge as revealed by the evidence;

·      consequently, the Hitachi invention is effectively a selection;

·      even if the Hitachi invention is not a selection in the patent sense, the opponents have not shown that it would have been obvious to the unimaginative skilled worker in the art to arrive at the same combination;

·      furthermore, I should think carefully before concluding that the several engineers from Hoover and Simpson whose work has been included in the opponents' evidence come into the category of "unimaginative" or "non-inventive" workers; finally, with all the work Hoover was doing on various washing machine designs, it is interesting to note that they did not hit upon the Hitachi combination, which they allege to be obvious.

I totally reject any submission to the effect that the Hitachi invention is a selection. As I have already stated it is constructionally a standard machine but characterised by parameters intermediate those of agitator and pulsator machines. Its properties as such are similarly intermediate, however I will say more on this point later.

I turn now to consider whether the allegations of obviousness are in substance proved by the evidence. The specification itself correctly identifies the two major types of prior art washing machines as the agitator and pulsator types - it briefly describes the known characteristics of each together with the known faults of each. However the second drawback as set out by the description for the agitator washing machine is incorrect, i.e. that a complicated mechanism is necessary for reciprocating, by rotating the agitator within an angle less than 3600, which mechanism seriously lowers the productivity of the machine. The specification discloses a direct drive reversing electric motor for this task - unfortunately, such motors have been used in washing machines for some time in Australia and have become part of the common knowledge. Mr. Schilling was obliged to concede this at the hearing. Passing over this latter point for the moment, the specification having set out the faults of the two machines, proceeds to the solution via the object. Thus the problem basically is this: the pulsator machines wash well but cause entanglement and damage to the clothes; the agitator machines have less entanglement and damage problems but do not wash as well as the pulsator types. The object follows from this, i.e. to produce a machine having less entanglement and damage problems than the pulsator types but greater washing power than the agitator types. This is exactly what Hitachi have succeeded in doing - in my view their machine is a simple compromise between the characteristics of the two types, and it operates accordingly, completely as would be expected.

It is true that the combination claimed does not appear anywhere in the prior art. This is not relevant to the determination of obviousness of an invention, however, for if the invention did appear in the prior art there would be prior publication and the question of obviousness need never be considered. Also, I cannot accept Mr. Schilling's suggestion that the Hoover and Simpson engineers to which he referred ought not be considered as unimaginative non-inventive workers. These engineers are in fact the workers in the relevant art - the common general knowledge is therefore what they say it is. Mr. Schilling himself conceded that the two main declarants Messrs. Vicary and Prendergrast were proper addressees of the Hitachi specification. None of this necessarily means that I accept the assertions made in the opponent's evidence about what is or is not obvious - this is a matter to be determined. Nevertheless, I make the point strongly that it was open to the applicant to lodge evidence-in-answer, and in so doing, it could have obtained expert evidence and contradicted the opponents' evidence where necessary. The applicant chose not to do this, and must bear the consequences accordingly.

Finally, I turn again to the specification to consider the basis for the amendments proposed to claim 1. The description at pages 25-26 makes it clear that provided the rotary blade unit is set to between 100 rpm and 250 rpm, and d/D is 0.6 to 0.8, the entanglement and twining of the clothes is suppressed greatly or completely avoided provided

"the time length of rotation of the washing machine motor 15 in each direction is less than 1 second."

This particular statement appears twice. Where then does the lower limit of that time range (i.e. 0.8 second) as specified in proposed amended claim 1 come from? The answer is that there is only one such reference. It appears in a table setting out some dimensions of what is described as a practical example of the washing machine of the present invention. The particular parameters of relevance here concern the rotary blade unit, as follows:

outside dia   320om

revolution speed (no load)   180 to 190 rpm

switching period   0.8 sec (on)-   0.5 sec (off).

In effect, then, the applicant has taken from this table the parameters of time and blended it with the less than I second of claim 1 as accepted to make the range 0.8 to 1 second, and taken the speed parameter of 180 to 190 RPM to form the basis of proposed amended claim 2.

In summary, the situation is as follows (referring to the proposed amended claims):

(i) Every feature of claim 1 is common knowledge save the speed range above 100 rpm and the time range of 0.8 to 1 second; however, the specification is ambiguous as to the basis of the invention respecting the time range and clearly states that it is only necessary to be below I second;

(ii) The speeds and the time range are above those for known agitator machines but below those for known pulsator machines;

(iii)The evidence strongly points toward the invention being no more than an obvious choice amongst known alternatives which choice would achieve predictable and totally expected results;

(iv) The specification itself concedes that the invention is a choice intermediate the parameters of the 2 known types of machine for the purpose of achieving intermediate (compromise) washing/damage properties;

(v) The applicant hy its failure to obtain its own expert evidence leaves uncontradicted most of the opponents' evidence.

I conclude that it would have been obvious before the priority date of claim 1 for the hypothetical person skilled in the relevant art to produce the Hitachi invention as claimed.

At the hearing it became clear that much of the matter defined in the subsidiary claims would also be obvious if claim 1 was found to be obvious. However there is clearly matter disclosed which is non-obvious and otherwise patentable.

Section 40

I refer here to the specification as proposed to be amended. I have already mentioned that the specification is somewhat ambiguous concerning the time limits of rotation. To amplify this, I would say that claim 1 and the equivalent consistory statement conflict with the description at pages 25 and 26. Additionally, the description at page 27 which relates to claim 20 as accepted conflicts with both the first mentioned references, in that it is concerned with the prolongation of the agitator rotation period up to 3 seconds, in the absence of the cylindrical member on the upper surface of the agitator. This cylindrical member is in fact, an essential feature of the claims as proposed to be amended : indeed it is a feature essential to the inventive concept - the object of the invention categorically states provide an automatic washing machine ... eliminating the twining of the clothes around the cylindrical member".

Conclusion

I have found that claims 1, 20 et al as accepted are anticipated and claims I et al as proposed to be amended are obvious. In addition there are section 40 defects in the specification both as accepted and as proposed to be amended. Consequently I uphold the oppositions of Hoover and Simpson and award costs for both opponents against Hitachi. As I believe there is subject matter disclosed in the specification which could form the basis of a valid patent, I allow Hitachi 60 days from the date of this decision in which to propose amendments accordingly.

(J L Roveta)
Supervising Examiner of Patents
9 SEP 1985