Ian Archie Gunn

[1990] APO 12

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 68185/87 in the Name of IAN ARCHIE GUNN

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In the Matter of Examiner's Objections thereto and a Request under Reg. 19D.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         Application No. 68185/87 was lodged on 29 January 1987 by Ian Archie Gunn for a patent entitled "Aerodynamic Vehicle Systems".  The application claims priority from a provisional specification lodged on 29 January 1986. Following a request for examination, the examiner's first report issued on 15 April 1988.  Several sets of amendments to the specification were proposed by the applicant but the examiner maintained objections of prior publication and novelty.  On 2 March 1990 the applicant lodged a request under Regulation 19D for exercise of the Commissioner's discretionary powers.
Specification
         The specification indicates that the invention

"relates to an aerodynamic system for motor vehicles, and in particular relates to skirts to be mounted around the periphery of the underside of the vehicle in order to reduce the effective body ground clearance and thus improve the aerodynamic efficiency of the vehicle."

Prior art referred to includes air dams, which direct a portion of the air which would have passed under the vehicle around the vehicle, thus reducing the air pressure under the vehicle.  However the effect of an air dam is supposedly diminished by the ingress of

air from the sides of the vehicle.  The prior art also includes skirts for formula 1 racing cars which produce a substantial pressure reduction under the car and a resultant downward force.  These devices have a blade‑like construction, are set very close to the ground and thus "prone to both vibration and damage", and if "the firm vacuum under the car is suddenly broken under conditions where the downforce is needed, the vehicle is immediately unstable and disaster is inevitable."
         The present invention is stated to be safe and suitable for use on road cars and other vehicles.  The "system" of the invention includes, along with the skirt, other known aerodynamic aids such as air dams, wings, spoilers, fairings, spats, wheel arch eyebrows, headlight covers and kamm tails.
         Claim 1 as proposed to be amended on 6 February 1990 reads as follows:

"An aerodynamic efficiency enhancing system for motor vehicles, which system comprises at least one substantially rigid skirt member to be disposed around at least part of the periphery of the underside of a motor vehicle, said skirt members when so installed extending downwardly to reduce the effective ground clearance of the motor vehicle, said skirt members each being characterized by having an upper longitudinally extending portion adapted to extend along and attach to the underside of a motor vehicle, an integral longitudinally extending middle web portion forming the aerodynamic surface of the skirt and an integral longitudinal lower portion adapted to extend under the motor vehicle from said middle web portion to impart rigidity thereto, said upper, middle and lower portions forming a one piece rigid construction."

The specification indicates that the skirt member may be attached directly to the underside of a vehicle or may be attached to "a sill extension or air dam, thus lowering the line of the vehicle yet further".  For maximum effect the skirt members should be attached to the front and sides of the vehicle but "it is possible to attach the skirt to any part of the periphery of the underside of the vehicle, with varying degrees of efficiency obtainable".  The upper portion is "shaped to conform with the undersurface of the vehicle", the exposed middle portion is for the aerodynamic effect and the lower portion acts "as a stiffener for the skirt member".

Prior publication and novelty
         The examiner objected that claim 1 and other claims are prior published by United States Patent No. 4131308 to Holka et al. published in 1978.  This patent discloses a "chin spoiler' mounted below a vehicle front bumper bar.  The chin spoiler comprises a movable airfoil hinged at the top to a support leaf which is fixed to the bottom of the bumper bar.  At slower speeds the airfoil is biassed by a torsion element upwardly towards the support leaf but at higher speeds the airfoil moves downward to adopt, at maximum deployment, a near‑vertical position.  The leading edge of the airfoil has a curved lip which at maximum deployment extends in a rearward direction.  The applicant's attorney submitted that because the chin spoiler includes a hinged arrangement "it is not rigid as the applicant's claimed construction" and that the lip does not extend under the vehicle.
         The last line of claim 1 of the applicant's specification refers to a rigid construction, but I note that line 3 of the claim refers to a substantially rigid skirt member and that the description on page 6 states:

"It is particularly preferred to make the skirt members from a resilient material capable of shape recovery after a deforming impact ..."

In this light I think that the claim is not limited to an absolutely rigid construction and that the skirt, whilst not being flexible, nevertheless may be subject to resilient movement.  In my view claim 1 does include within its scope the resiliently hinged arrangement of the US patent.
         Also, as pointed out by the examiner, the arrangement in the US patent is such that the airfoil per se (i.e. without the support leaf) may be construed as the integrated "upper portion" and "middle portion" of the skirt member referred to in claim 1 of the applicant's specification; the "upper portion" of the airfoil being the part that is hinged to the support leaf.
         Furthermore, I do not agree with the attorney's comment that the lip portion of the airfoil does not extend under the vehicle; this is clearly the case when the airfoil is fully deployed as shown in broken lines in figure 1 of the US patent.
         The examiner objected that claim 1 and other claims are prior published and not novel in the light of Registered Design No. 81982, registered 17 March 1983 in respect of "An Automobile Spoiler".  This design shows a spoiler or air dam device which ostensibly fits onto the front of a vehicle and extends partially around the sides thereof; it appears to be characterized by a concave discontinuity in its front face and by slots which I assume allow light to emanate from vehicle lights fitted underneath.  The attorney comments on this citation as follows:

"The design citation, viz No. 81,982, is not believed to corroborate the Examiner's allegation of lack of novelty in any manner whatsoever.  The design does not illustrate an aerodynamic efficiency enhancing system having a portion which can truly be said to be adapted to attach to the underside of a motor vehicle.  The fitting of the article in the design to a motor vehicle appears to be more by way of a clip‑on method to the bumper bar.  However, like the Examiner's allegation, this is only conjecture as there is no clear and unmistakable disclosure in the representations of the applicant's invention."

The design is somewhat limited in its disclosure because there is no textual description, as would be the case if it were a patent specification, but it may be viewed in the light of common general knowledge which existed at its date of publication.  The article shown is called a "spoiler" and I think that the addressee would see the spoiler as being located below the bumper bar at the front of the vehicle extending around to the side sills, since this is the usual place for such spoilers.  Such a position I think can be described as the "underside" of the vehicle.
         The design shows an inwardly directed flange at the bottom of the spoiler which can be construed as a "lower portion" according to claim 1 of the applicant's specification.  On the top edge of the spoiler on each of the side portions is shown another inwardly directed flange with a wider inwardly directed portion in each of the front corners of the spoiler.  It is not clear from the representation whether this top flange extends all the way across the central front portion of the spoiler.  Thus there is some doubt whether the design clearly discloses "an upper longitudinally extending portion adapted to extend along and attach to the underside ...", so in this respect I do not think that claim 1 is prior published by the design.  However, I do think that a skilled tradesman could attach the spoiler to the underside of the side sills of the vehicle by inserting self‑tapping screws through the flanged side portions along the top edge, in a manner similar to that described in the applicant's specification.  Alternatively, the wider inwardly directed portions of the flanged top edge could be utilized as attaching lugs, fitting into slots between the bumper bar and sill.  Thus the design representation discloses an upper portion of the spoiler which is adapted to attach to the underside of a motor vehicle, the only difference between this and claim 1 being that this upper portion may not be "longitudinally extending".
Considering this difference between claim 1 of the applicant's specification and the design representation, I cannot see any merit therein. Clearly, the spoiler in the design has an upper portion which allows it to be attached to the underside of a motor vehicle and no particular advantage is apparent in additionally having a "longitudinally extending" attaching portion between the side portions. Also, in the light of the fact that it is generally known that parts of motor vehicles and other machines can be attached together by fastening one part to a longitudinally extending flanged portion on another, this difference can be construed as merely a matter of common general knowledge. Thus I consider this difference to be a mere workshop improvement and claim 1 is not novel in the light of the registered design. See Dennison Manufacturing Co. v. Monarch Marketing Systems Inc. (1983 1 IPR 431.
         The examiner also objected that claim 1 and other claims are prior published and not novel in the light of the disclosure in the Australian motoring journal Wheels dated March 1984 at pages 19 and 106.  These pages include advertisements for car accessories which show photographs of cars fitted with inter alia, "front spoilers" and "side skirts".  This citation indicates that such "aerodynamic" devices were well‑known before the priority date of the applicant's claims; but I will not consider this citation in any further detail since I already have decided that claim 1 of the applicant's specification is prior published and not novel.
There are 13 other claims in the applicant's specification. Claim 2 specifies various materials for the skirt member; this feature has not been emphasised in the specification, the materials presumably are being used for their well‑known properties, so I see no inventive ingenuity inherent in this claim. The matter of lack of emphasis of inessential features was discussed by Wilcox J. of the Federal Court in Coopers Animal Health Australia Ltd. v. Western Stock Distributors Pty. Ltd. & Ors. (1986) 67 ALR 390 at 417 thus:

In relation to the question whether the selection of DGBE represented an inventive step it is, I think, instructive to consider the contemporaneous reaction of the inventors themselves, and their employer.  As previously pointed out, neither the provisional specification nor the complete specification, in either its original or amended form, claimed the use of DGBE as an essential integer of the alleged invention. The compound received only passing mention.  This is so notwithstanding the concession made in this case by counsel for the applicant that all of the invention, the subject of the petty patent claim, was done before 21 November 1980.  It is difficult to resist the inference that the failure of the inventors to emphasise their choice of DGBE in the applications submitted in 1980, 1981 and 1982 reflected their acceptance that there was nothing inventive about that choice."

Claim 3 specifies that the skirt member is manufactured of resilient material.  This feature, whilst having some merit, cannot be considered as being inventive since it is well known that machine parts subject to impact may be made of resilient material.  Claim 4 refers to perforations in the upper portion of the skirt and attachment means such as self tapping screws.  This feature also is a matter of common general knowledge or a mere workshop improvement and thus cannot be considered as conferring novelty.  Claim 5 specifies that the skirt "is provided in continuous lengths of constant cross‑section".  No inventive ingenuity is apparent in this feature; it is not given any emphasis in the specification, in fact the specification states on page 7 that the skirt may alternatively "be produced in set lengths and profiles for particular vehicles".  Claim 6 refers to "cosmetic terminii" on the skirt members.  No functional advantage is apparent in this feature.
          Claim 7 refers to the middle web portion being "provided with longitudinal grooves on its outer surface, which grooves promote the creation of a thin turbulent air layer in use and thus reduce drag".  The description on page 6 refers to this feature as an "air bearing" which permits "laminar airflow along the skirt".  This feature however is shown in several photographs of cars with skirt members in the 31 October 1984 edition of Motor magazine, Vol 166 No. 4277, on the front cover thereof and on pages 5, 10, 11 and 22.  This magazine was available to the public in the Patent Office library on 10 January 1985.  The skirts shown on the BMW in the photograph on the front cover and on pages 10 and 11 also clearly show the other features of the invention claimed in claim 1 as well as that claimed in claim 7.  Prima facie claims 1 and 7 are not novel in the light of the said edition of Motor.  However, this citation was found by the examiner after the applicant's request under Reg. 19D and the applicant has not yet had an opportunity to comment thereon.  Consequently I reserve my decision in this matter.
         Claim 8 refers to the upper portion of the skirt being "shaped to conform to the shape of the said underside, with or without a resilient, shock absorbing layer or spacer ...".  I do not see any inventive ingenuity in this feature and consider it to be a mere workshop improvement.  Claim 9 specifies that the "skirt members are attached to the sides and front of the motor vehicle".  This feature is disclosed in Registered Design No. 81982 referred to above, and the claim is thus not novel.  Claim 10 refers to the skirts being "used in conjunction with other cosmetic or aerodynamic efficiency promoting aids", such as those devices referred to above.  This claim I consider to be a mere collocation of the skirt members and well known devices and thus not a patentable combination per se.  Claim 11 specifies that the "skirt members are attached to said underside via air dams or sill extensions".  This feature I also consider to be a mere workshop improvement and the claim therefore is not novel.  Claim 12 is directed to a method which merely involves the use of the "system" previously claimed.  I see no inventive ingenuity in such a use: by analogy, if a claim to a hat was found to be not novel, it would be difficult to find novelty in a method of wearing such a hat on one's head.  Claims 13 and 14 are omnibus claims referring to the figures in the specification.  I see no particular advantages of the features shown in the figures which have not already been discussed with regard to the other claims; so I think that claims 13 and 14 are also not novel.

Conclusion
         I find that claims 1‑6 and 8‑14 as proposed to be amended are prior published and/or not novel.  I also have serious doubts about the novelty of the feature in claim 7; however, because the applicant has not had an opportunity to comment on the citation brought against claim 7, in the interests of natural justice I think that he should be given an opportunity to make comments or to propose amendments before the application is finally accepted or refused.  The applicant was informed by the Acting Assistant Commissioner PE1, in a letter dated 27 March 1990 that, because the Wheels citation was brought up at a late stage in the examination procedure, the Commissioner would extend the time for acceptance, under sub‑section 160(1), to 15 June 1990 if necessary.  Since the Motor citation has only now been brought up, I think that a further extension under sub‑section 160(1) is appropriate.  Consequently, I extend the time for acceptance to 15 July 1990.

(J.I. WELSH)