Hitachi Ltd v Byrne & Davidson Industries Limited

[1986] APO 13

In the Matter of the Patents Act 1952

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In the Matter of Application No. 521725 for Letters Patent by HITACHI LTD.

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In the Matter of Opposition thereto under Section 59 of the Act by BYRNE & DAVIDSON INDUSTRIES LIMITED.

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
Preamble
         Patent application No. 521725 was lodged 20 February, 1980, as a Convention application deriving its priority from three Japanese basic applications, each lodged on 23 February, 1979.  Application 521725 was advertised as accepted on 29 April, 1982, and Notice of Opposition to the application was lodged by Byrne & Davidson Industries Limited on 27 July, 1982. Upon all evidence being served the matter was set down for hearing in Sydney on 21 October, 1985.
         Present at the Hearing was Mr. Fred Schilling, patent attorney of the firm of F.B. Rice & Co., Sydney, representing the applicant Hitachi Ltd., and Dr. Ian T. Ernst, patent attorney of the firm of Shelston Waters, Sydney, representing the opponent Byrne & Davidson Industries Limited.
The Notice of Opposition relied upon those grounds specified under paragraphs (c) to (i) inclusive, of sub‑section (1) of section 59 of the Patents Act 1952. Of these, only (g), (h) and (i), i.e. obviousness, lack of novelty and non‑compliance with section 40 were the subject of submission and argument at the Hearing.

The Specification
         The complete specification is entitled "Door Operation Control Apparatus", and the specification commences by stating:

"The present invention relates to a door operation control apparatus or more in particular to a door operation control apparatus suiable for controlling a garage door operating device."

The specification then gives a brief outline of the prior art in this field.  Motor driven doors in which the motor is connected to a power supply via a relay circuit controlled by a radio control command switch or a command  push button switch are said to be known but to have disadvantages in that:

"the conditions for door operation control are set mechanically, thereby leading to the disadvantages that they cannot meet a multiplicity of door operating conditions or they require a complicated relay circuit in order to meet a multiplicity of control conditions.  Another disadvantage of these prior art control apparatuses is that when control apparatus designed for a specific door is to be used for another form of door, the control apparatus are required to be changed in design in many parts."

The specification goes on to state the object of the invention as being:

"to provide a door operation control apparatus which meets a multiplicity of control conditions and is versatile in its use at the same time."

Then follows a consistory statement in these terms:

"According to the present invention, there is provided a door operation control apparatus comprising a program memory circuit for storing programmed data on the conditions for door control as a combination of command codes, means for detecting the modes or conditions of the door operating device, door operation command means, and an operational processing circuit, wherein the command codes are sequentially read out from the program memory circuit, so that a door condition detection signal, a door operation command signal and the program being executed are logically judged, thereby sequentially controlling the door operating device."

The detailed description of the best method of performing the invention refers to mechanical features of the door operating mechanism on pages 4‑10 in relation to Figures 1‑5, and to the control sequence and processes on pages 10‑53 in relation to Figures 6‑37.  The specification concludes with 35 claims, three of which ‑ 1, 23 and 35 ‑ are independant.
         Upon reading the consistory statement in conjunction with the best method of performance, I conclude that the present invention proposes to use what is agreed between the parties can be described as a microcomputer or microprocessor in an operation control system for doors, having particular applicability to garage doors of the roller type.  The doors may be operated either by a wall mounted switch or remotely, for instance by a radio control receiver.
         The description of the preferred embodiment begins with a description  of a driving mechanism for a roller door.  This comprises a motor which can be controlled to move the door in an upward direction and in a downward direction, and incorporates automatic switching means causing the door to cease its travel when an upper limit is reached, when a lower limit is reached, or when an obstruction is encountered.  In the situation where an obstruction is met during downward travel, the door not only ceases its downward movement, but also commences upward travel.  There is also described what is essentially a microcomputer, appropriately programmed, as the controlling means in place of the so‑called "hard‑wired" logic circuitry of the prior art, and it is with this that the remainder of the description of the preferred embodiment is concerned, i.e. the elements of the microcomputer and their functional characteristics.
         The essence of the invention is possibly best summed up by the concluding paragraph of the description:

"It will thus be understood that according to the present invention the manner of control is set in accordance with the data stored in the program memory circuit which make up a processing program for the door operating device, thereby making possible a versatile control apparatus provided with an additional function only by changing the stored data."

The Claims
         The specification has thirty‑five claims, of which three ‑ claims 1, 23 and 35 are independent.  They read as follows:

"1.A door operation control system comprising means for driving a door between open and closed positions in response to successively received door operation command signals; first memory circuit means for storing door control data in the form of a combination of command codes, program counter means for designating and updating the addresses of command codes in said first memory circuit means, control means for reading out command codes from said first memory circuit means in accordance with the state of said program counter means, command register means for temporarily storing command codes read out of said first memory circuit means, command decoder means for decoding the command code data stored in said command register means, operational processing circuit means for performing logical operations according to said command codes, second memory circuit means for temporarily storing the operating state and the direction of movement of said door in accordance with the output of said operational processing circuit means, input‑output circuit means connected to said command decoder means and responsible to various conditions of said door as indicated by said second memory circuit means and a door operation command signal for controlling said door driving means.

23.A control system comprising drive means for driving a member between first and second positions; control means for selectively connecting said drive means to a source of electrical power to effect operation thereof; and limit detector means responsive to arrival of the member at said second position for applying a signal to said control means to effect deactivation of said drive means; wherein said control means includes timing means responsive to the start of operation of said drive means to move the member in a direction from said first position to said second position for controlling said drive means to drive the member in a direction from said second position toward said first position after a predetermined period of time subsequent to said start in the absence of an electrical signal from said limit detector means.

35.A door control system comprising drive means for driving a door between upper and lower positions; control means for selectively connecting said drive means to a source of electrical power to effect operation thereof; manual input means for initiating the generation of a manual input signal to control said control means; upper position detector means responsive to arrival of the door at said upper position for generating an upper position signal; lower position detector means responsive to arrival of the door at said lower position for generating a lower position signal; and obstruction detection means for detecting interception of the door by an obstruction between said upper and lower positions to generate an obstruction signal; wherein said control means include timing means responsive to the start of operation of said drive means for generating a timing signal after a predetermined period of time subsequent to said start in the absence of said manual input signal, said lower position signal, said upper position signal and said obstruction signal; and wherein said control means controls said drive means in a manner that:

(a)the door is moved in a direction from said lower position toward said upper position when the generation of one of said obstruction signal and said timing signal occurs during operation to move the door in a direction from said upper position toward said lower position;

(b)the operation to move the door is stopped when the generation of one of said obstruction signal and said timing signal occurs during operation to move the door in direction from said lower position toward said upper position."

Claim 1 defines "A door operation control system" that is comprised of a numbers of integers the first of which is:

."Means for driving a door between open and closed positions in response to successively renewed door operation command signals"

The remaining integers are components of microprocessor computing systems and are defined in terms of functional interrelationships.  These integers are as follows:

.first memory circuit means

.program computer means

.control means

.command register means

.command decoder means

.operational processing circuit means

.second memory circuit means

.input‑output circuit means.

In the opponent's submission such integers are standard and collectively define a standard microprocessor computing system.  Mr. Schilling, for the applicant, indicated general agreement with this interpretation.
         I construe claim 1 as including within its scope a door driving arrangement controlled by a computer device, specifically of the microcomputer or microprocessor genre.
         Claim 23 is directed to "A Control System" comprising:

.drive means

.control means (including timing means) and

.limit detector means.

Although the claim is limited by defined functional interrelationships between these integers, it is not limited to being a door or garage door control system, nor are the control means limited to being computer (microcomputer or microprocessor) controlled.  The claim offends against section 40 in not having these limitations.
         Claim 35 defines "a Door Control System" having:
     .  drive means
     .  control means (including timing means)
     .  manual input means
     .  upper and lower position detector means, and
     .  obstruction detector means.
Like claim 23, claim 35 is also limited by functional interrelationships defined between its integers but not limited in respect of the control means. Claim 35 therefore also offends against the provisions of section 40 in not defining the invention.
         The claims appended to claims 1 and 23 are mainly concerned with defining further operational characteristics of the control apparatus and introducing specific integers such as a timing means, a radio receiver and counter means.
The Evidence
         The evidence‑in‑support consists of six statutory declarations. Incorporated in these as exhibits are the following: United States Patent specifications 2,558,032; 3,178,627; 3,539,894; and 3,906,348; a book entitled "An introduction to Microcomputers" by Adam Osborne; and circuit diagrams for two garage door controllers manufactured by the opponent.
         Of the six declarations, that by a Mr. Otto Eigner would seem to have most bearing on this matter.  Mr. Eigner is the owner and managing director of a company which specializes in the design and manufacture of radio control operations, and which supplies the present opponent with circuit designs.  I am satisfied that Mr. Eigner's background enables him to declare with authority as to the state of common general knowledge in the relevant art at the priority date of the claims in suit (i.e. 23 February, 1979).
         Mr. Eigner's declaration incorporates as exhibits two further statutory declarations, by Richard Evan Jones and Cnute Benscher.  These declarations establish the availability in Australia of certain garage door controllers before the priority date of the present claims.
         Two other declarants are Christopher Ernest Peterson and David Harold Mee, Senior Lecturers in Electrical Engineering at the New South Wales Institute of Technology and the University of New South Wales, respectively. The declarations make general observations about the state of common general knowledge, particularly as applied to microprocessors, and to the content of various courses in microprocessors known to the declarants prior to 1979.
         The only evidence‑in‑answer is a single declaration by an employee of the applicant and contains mainly background to the invention and argument against the evidence‑in‑support.  However no indication is given that the declarant is familiar with the situation prevailing in Australia at the priority date of the claims, and the evidence is of little value in determining this matter.
         Two declarations by Peterson and Jones constitute the evidence‑in‑
reply.  These purport to establish that in February 1979 the use of microprocessors for the purpose envisaged by application 521725 was not an economic proposition.
The Hearing
         Dr. Ernst commenced for the applicant by submitting that garage doors controlled by hard‑wired logic circuits were known and common general knowledge before the earliest priority date of the claims.  He further submitted that software controlled computer circuits were also matters of common general knowledge.  In his submission, if one then accepts the interpretation of claim 1 as being a claim to a garage door controlled by a software controlled computer circuit ‑ as distinct from a hard‑wired logic circuit ‑ then the invention defined is obvious. 
The second string to Dr. Ernst's attack on claim 1 was based on the decision in the case of British United Shoe Machinery Company Limited v. Simon Collier Limited, 26 RPC 21. In that case the patentee, having invented a particular means for doing automatically what previously had been done by the exercise of skill on the part of a workman, sought unsuccessfully to obtain protection for all automatic means of achieving the particular desired result.
         Dr. Ernst's final point of issue with claim 1 was that it was not a manner of new manufacture following the same general principles applied in situations involving a new use of a known substance, i.e. there comes a stage when "new" technologies become sufficiently well known, that their application to a different operation ceases to be a manner of new manufacture.
         So far as claims 23 and 25 are concerned, Dr. Ernst relied mainly on the disclosure in United States Patent Specification 2,558,032 in establishing  anticipation of the matter defined by claim 23, and the disclosure of the two Byrne & Davidson circuit diagrams in establishing anticipation of claim 35.  In the case of claim 23, the only difference over the prior art resided in the feature of the member being driven in a direction from the second member to the first member, rather than merely being made stationary, after the elapsing of a pre‑determined period of time without there being an electrical signal from the limit detector means.  In the case of claim 35, the Byrne & Davidson arrange‑
ment has all the features of claim 35, other than the provision of a timing means.
         In response Mr. Schilling for the applicant did not dispute Dr. Ernst's assertions regarding the common general knowledge but did not agree with the conclusion as to obviousness drawn therefrom.  He argued that patentable subject matter lay in:

"the recognition of the step of applicability of such a (microprocessor) control system to the particular (garage door) environment as claimed.  That had not previously been appreciated." 

Mr. Schilling also acknowledged Mr. Eigner's qualification to speak upon the common general knowledge, in the art of garage door controllers, but disputed Dr. Peterson's and Dr. Mee's ability to do so. 
Obviousness

There must come a time when the application of known computer technology in controlling known industrial and domestic operations of a general nature ceases to be inventive, and I rather suspect that this time may have already passed for current applications of this sort.  However every case must be considered on its own merits, and as the opponent here has conceded, not all new applications of microcomputer control will necessarily be non‑inventive.  Nevertheless I am very conscious that the question here critically depends on the extent to which microprocessor technology formed a part of common general knowledge some seven years ago.  Whether claim 1 is obvious must be considered in the light of knowledge existing at the priority date of the claims in suit and demands an enquiry as to the state of common general knowledge in the relevant art at that date.  This is not an easy task at the best of times, but is made far more difficult in the present instance by the fact that the art of microcomputer technology was evolving rapidly at that time.
In determining the extent of the common general knowledge in this matter, I will be guided by the judgement of Aickin J. in the case of Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited, 144 CLR 253 at 292, in the High Court of Australia, in which he stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in the considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The question is then, does the evidence before me establish that in February 1979 the use of microcomputers in control applications formed part of this "background knowledge and experience" of those in the trade of doors driven by some means?  That is, had the knowledge about this rapidly evolving technology been disseminated widely enough at that date to constitute this "background knowledge and experience"?
         Turning now to the evidence, and firstly to Mr. Eigner's statutory declaration, I am unable to conclude that any of the documentary evidence provided by Mr. Eigner was common general knowledge, i.e. the Byrne & Davidson circuit diagrams, the four United States patent specifications and the book "An Introduction to Microcomputers".  So far as the last is concerned it appears that the book in evidence was published in 1980.  At the hearing Dr. Ernst produced a book of the same title, but which differed in content to the one in evidence.  This presumably was the version referred to by Dorothy Anne Basili, Librarian of the University of New South Wales, in her statutory declaration in which she states that two volumes of a book of that title were received by the library in January 1977.  Notwithstanding that Mr. Eigner and Dr. Peterson both declare this work to be widely read "by those of ordinary skill in the art prior to 1979" and "among those interested in control electronics, and microcomputers as well as hobbyists", this is not sufficient to justify a conclusion that this document itself is common general knowledge in the relevant art, although it would contribute to the weight of any other evidence in that direction.

         Mr. Eigner has stated in evidence:

"My company had considered the possibility of changing from relay/transistor/IC circuits to microprocessor circuits prior to 1979 but believed that the sales volume in Australia at that time did not justify the cost and did not proceed in that direction ... we were aware that such a circuit could be designed and that to do so was within the ordinary skill of those in the art."

I do not consider this to be particularly conclusive.  Mr. Eigner does not offer any substantiation for this evidence and he does not say who  "considered the possibility".  In any case, the fact that another has thought of doing the same thing does not necessarily mean that the thing is not inventive as such, and could indicate merely that the other person has not sought to take advantage of what was invented.
         The other two main declarants for the opponent are Dr. Peterson and Dr. Mee.  Each is a senior lecturer at a tertiary edUcation institution, and their field of expertise appears to be in microelectronics and the like.  There is no indication that either person is able to speak with any authority on the particular art of motor driven doors, in particular on the common general knowledge in that field.  Both declarants make occasional references to other areas in which microcomputer controllers may be applied, but generally they appear to confine their remarks to electrical engineering.
         Their evidence relates to the dissemination of information concerning control applications of microcomputers.  However it seems to me as reasonable to argue that this shows that a need existed for such dissemination (in which case it may not yet have been in the realms of common general knowledge in 1978), as it does to take the opponents' view that such information had been widely spread.
         The evidence‑in‑reply goes into considerable detail about the comparative economics of microcomputer controllers compared with relay circuits and suggests that while microcomputers were a perfectly obvious alternative prior to 1979, they were not an economic proposition and no attention was given to them.  Whilst this shows that microcomputers were being considered as a design alternative, I do not think it indicates a perfectly obvious solution any more that it should be seen as indicating, as was argued by the applicant, that the inventive step may have been more difficult than first appeared to be the case.
         Having regard to the state of common general knowledge in 1979 as I perceive it on the basis of the evidence, and for the reasons outlined in the foregoing, I have concluded that the evidence before me is not such to allow of a decision that the invention defined by claim 1 is obvious.
         Turning to the opponents' second argument I do not see the decision in BUSM v. Collier as being particularly relevant in the present circumstances because claim 1 is not claiming any automatic controlling means, but rather is claiming very specific means as the controller ‑ albeit ones acknowledged as commonplace today.  It is also instructive to look at a portion of the decision where Parker J. says that even if the claim in issue had sought protection only for the use of a cam, rather than any automatic means:

"The validity of such a claim would, I think, depend upon whether the principle of using a cam to vary the relative positions of parts of a machine were a new principle or an old principle.  If new, a claim would undoubtedly be good; if old, the claim might be bad on the principle of the cases already quoted.  At the date of the Plaintiff's Patent, the employment of a cam to vary the relative position of parts of the machine was well known."

The question of whether the use of microprocessors or microcomputers was "well known" in respect of controllers in the particular art at the priority date of the claims is a matter which has been canvassed in full above, and in my view the decision in BUSM v. Collier does not warrant consideration over and above the analysis of obviousness as has already carried out.
         I agree with Dr. Ernst's final contention that there comes a stage when the application of very well known technology in new areas may well cease to be inventive.  However for the reasons given above, the opponent has not established to my satisfaction that such a stage had been reached in early 1979.
 35
         Because the applicant has conceded that there are significant Section 40 deficiencies with these claims, and that amendments are required, it seems pointless to give detailed consideration to these claims on the ground of obviousness.  However, it is appropriate that I record my opinion that the matter defined by claims 23 and 35, certainly in their present form, is lacking in novelty.  The opponent has cited United States patent specification 2,558,032 as the closest anticipating document of claim 23, and Byrne and Davidson's garage door controllers Models 70ST and 70DL as being the closest anticipation of claim 35. Moreover I think it probable that other documents in evidence could reasonably be said to anticipate claims 23 and 35.

At the hearing, Mr. Schilling for the applicant conceded that if either of claims 1 and 23 were were held to be invalid then their appended claims would also fall.  This does not absolve me of responsibility to form my own opinion, but in light of other objections to the appended claims it is unnecessary to reach a concluded view at this stage.  I merely observe that prima facie I tend to agree with Mr. Schilling.  Moreover I think it probable that the documents in evidence could reasonably be said to anticipate some of the claims appended to claim 23.
Section 40
         I have referred earlier to significant Section 40 deficiencies in  claims 23 to 35 which do not define the invention and lack fair basis.
         In addition, claims 2 to 22 exhibit numerous instances of non‑clarity. For example claim 2 states:

"the door in operation being stopped in response to the door operating input signal, the door in stationery (sic) stage being urged in the direction reverse to the immediately preceding direction in response to said door operation signal."

The exact scope and meaning of this is uncertain.  Similar examples occur in other claims appended to claim 1.
Conclusion
I have found that there is a significant extent of non‑compliance with Section 40 throughout the claims, and that claims 23 to 35 are anticipated. Accordingly I uphold the opposition in respect of the grounds set down in paragraphs (h) and (i) of sub‑section (1) of Section 59 of the Patents Act. However I am also of the opinion that it would be possible with appropriate amendment to eliminate the defects I have found to exist in this application. With this object in view I allow the applicant sixty days from the date of this decision in which to propose satisfactory amendments.
         I award costs against the applicant.

(D.A. RAINEY)