Ilona Komesaroff v Grace Mizzi and Jack Mendleson

[1987] APO 24

In the Matter of the Patents Act 1952

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In the Matter of Petty Patent No. 551006 in the name of ILONA KOMESAROFF

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In the Matter of an Application under Sub‑Section 68B(1) for an Extension of the Term of the Petty Patent and a Notice under Sub‑Section 68B(3) by GRACE MIZZI and JACK MENDLESON

DECISION OF THE A/ DEPUTY COMMISSIONER OF PATENTS:

Background

Application No. 46980/85 was lodged on 2 September 1985 by Ilona Komesaroff for a petty patent for an invention entitled "Shifting Sands".  Petty patent No. 551006 was sealed on the application on 22 May 1986; on 2 April 1987 the patentee applied for extension of term and on 9 April 1987 Ms Grace Mizzi and Mr Jack Mendleson (hereinafter referred to as the objectors) lodged notice under sub‑s. 68B(3) accompanied by various evidence.  In matters of this sort where the Act does not provide standard procedures to be followed, the provisions of reg. 72 become applicable. In this case, because of the nature of the evidence lodged with the sub‑s. 68B(3) notice, the delegate of the Commissioner determined that the patentee was entitled to a period of three months from 28 April 1987 in which to lodge evidence at the Office on her own behalf.  Such evidence, in the form of a statutory declaration by the patentee, was lodged on 28 July 1987.

Further evidence was lodged by one of the objectors on 17 June 1987, and because this date is later than the eleven month period provided by sub‑s 68B(3) it was considered as not having been lodged under that sub‑section, and due to the reasons discussed below, was given less weight than the evidence lodged earlier by the objectors.  This late lodged evidence was considered under sub‑ss 68B(5), (6) and (7) which requires that the Commissioner shall consider all material which has been brought to his attention.
         Subsequently the matter came to a hearing in Melbourne on 14 August 1987.  Mr P. Hayes of Counsel, for Clement Hack & Co. represented the patentee and Mr B. Caine of counsel, for Callinan & Associates represented the objectors.
The Specification
         The description begins by indicating that the invention relates to a display device "and more particularly to an ever changing three‑dimensional‑like display created by the interaction of a mixture of two or more mineral sands".  A consistory statement in terms identical to those used in the claim is followed by:  "Typically the sealed container comprises two planar sheets of transparent material arranged in face to face relationship but spaced apart to define a gap or cavity between the two sheets, and the two sheets being sealed to each other so as to contain the liquid and particulate material.  The display may be viewed through the transparent sheets".
         A detailed description accompanied by a single‑figure drawing then discloses an embodiment of the device which includes details on the types and ratios of mineral sands that may be used as the particulate materials and how they may be cleaned to prevent congealing, the amount and type of detergent (containing fabric softener) used in the liquid to produce a layer of bubbles,  how the device is constructed and sealed and how "In operation, the device is inverted (so) that the previously settled sand is now at the top of the device and the layer of bubbles at the bottom, so that the bubbles and sand flow towards and ultimately past each other.  It is the interactions of the flowing sands with each other, and optionally together with the effect of the bubbles flowing past them that causes the sands to flow at different rates that produces the pleasing three‑dimensional‑like effect".
The claim defining the invention is as follows:

1. "A device for displaying a changeable display of particulate materials, comprising a substantially sealed container means having a display portion, said container containing at least two particulate materials having different densities, colours and particle size ranges and a liquid partially filling the container; said liquid having surface active and viscosity characteristics such that it can form and maintain a layer of bubbles with gas trapped in the container; said particulate materials being selected, or being treated, so as to have surface properties such that when the device is moved to effect agitation of the materials and formation of the bubble layer and then allowed to rest, the particulate materials interact with the bubble layer and the liquid so that the particulate materials flow at different rates through the bubble layer and/or the liquid and settle to create a stratified pattern of layers of the particulate materials, thereby producing a three‑dimensional‑like effect".

The claim defines the display device by means of the result it is to attain.  A claim of this sort is quite common in patent specifications and is permissible if the specification discloses sufficient information to obtain the result and if it can be determined whether or not that result has been attained.  In this case I think there can be no doubt that the result to be attained is clearly apparent, but Mr Caine has argued that the specification does not satisfy the first requirement.  I discuss the issue below.
         I can see no difficulty in interpreting the scope of the claim insofar as it is claiming by result.  The liquid used does not have to be the water, detergent and fabric softener mixture described, as long as it allows the materials to flow at different rates according to the claim; similarly the materials may be treated by washing as described but it is not beyond the consideration of the inventor that other treatments may be used or other materials selected so that the desired effect could be achieved.
         A question of some importance which is required to be answered is the meaning of the phrase "... said liquid having surface active and viscosity characteristics such that it can form and maintain a layer of bubbles with gas trapped in the container".  The relevant meaning given in the Shorter Oxford English Dictionary for "maintain" is:‑

"To continue in, preserve, retain (a condition ...).  To keep in being; to preserve unimpaired (a state of things ...)".

The description discusses the production of an ever changing three ‑ dimensional ‑ like display by continued inversion of the device.  From the plain dictionary meaning of the word "maintain", the expected continued repetitive use of the display and the absence of any instruction in the specification for the production of bubbles other than the treatment of the liquid to produce surface active and viscosity characteristics which form the bubbles, I must conclude that the bubble layer which is formed in the display is to be used in the production of at least a very large number of stratified patterns over a considerable period of time.  Therefore I believe that what is described and claimed is not a display which ceases to produce the bubbles, which are essential for the three‑dimensional effect, during the course of very many repetitive uses of the display.  Furthermore as the bubbles are formed and maintained by virtue of the characteristics inherent in the liquid I deduce that bubbles are formed along the entire liquid/air interface.  This is in accord with the reference to the particulate materials (and I take this to mean all the materials) interacting with the bubble layer.  Also it is convenient for me to state here that I would not interpret a large continuous air pocket as a bubble.The Evidence
         The evidence lodged with the sub‑s. 68B(3) notice, on 9 April 1987 consists of:

1A.A copy of a letter to Callinan & Associates from the St. Kilda City Council relating to the granting of permits for the patentee to sell her moving sand pictures on the St. Kilda Sunday Art Bank.  These permits dated from 24 February 1985 to October 1986.

1B.A copy of pages 37,122 to 37,129 of the 1986 AIPC, Australian Industrial & Intellectual Property Reporter, No. 90‑335, being a report of a judgement of the Supreme Court of Victoria involving the patentee, viz:  "Komesaroff v. Mickle & Ors.", delivered 24 November 1986, involving copyright and trade practices, inter alia.

1C.A page of the record of proceedings of the above case, according to the objectors' notice; the document is unsworn and untitled.

2."Attachments" 1‑21, which consist of copies of affidavits and other documents entitled "In the Matter of the Supreme Court of Victoria, Komesaroff v. Mickle & Ors." presumably the original documents were presented as evidence in those procedings.

Attachments 1‑21 of the evidence in support of the notice are relied on by the objectors to prove an argument that "the product (i.e. sand pictures) was invented in Europe over 10 years ago" and "that Ms. Komesaroff was not the inventor of the subject of the petty patent".  The content of these documents however does not establish any grounds which may be considered relevant to section 68B.  The evidence relating to sand pictures being known overseas does not constitute publication in Australia.  A French patent application was referred to in the evidence, an Office investigation was made to locate such a patent, but none was found.  In the matter of whether the patentee was the inventor, or otherwise, I am not convinced that the evidence shows that the patentee was not the inventor or was not entitled to apply for the petty patent.  Furthermore the grounds of revocation available under paragraph (a) of sub‑s100(1) cannot be considered by the Commissioner under sub‑ss.68B(6) and (7).
         The further evidence lodged on 17 June 1987 by one of the objectors, Jack Mendleson, considered under Sub‑ss 68B (5), (6) and (7), comprised the following documents.

3A.A copy of a letter from Mr. Mendleson to a Mr. Chris O'Donoghue in England whose name Mr. Mendleson had obtained from the British Consulate.

3B.A copy of a reply from Mr O'Donoghue accompanied by some literature in the form of sales brochures for devices called "Dunes".  Photographs of the devices show that they are similar to the device of the petty patent.

3C.A copy of another letter from the St. Kilda City Council, dated 5 May 1987.

3D.A copy of another affidavit entitled In the Matter of the Supreme Court of Victoria, Komesaroff v Mickle & Ors., in the same form as the "attachments" lodged on 9 April 1987.

Documents 3B and 3D suggest that devices similar to that of the petty patent may have been available in Europe, and document 3C merely confirms the facts in previously referred to document 1A, lodged on 9 April 1987.  None of this further evidence lodged on 17 June 1987 is of any more relevance to establish the grounds under section 68B than the first batch of evidence lodged with the notice under sub‑s. 68B(3).
         The evidence‑in‑answer, a statutory declaration from the patentee, inter alia, relates to details of how the device was developed and refined over a period of approximately a year beginning in May 1984.  She seeks to make a distinction between her "original devices" which were offered for sale at the St. Kilda Art Bank Market and withdrawn from sale in May 1985, and her "improved device" which she declares is the subject of the petty patent.
         Referring to her "original devices" in paragraphs 3 and 6 of the statutory declaration she states:

"3...... I found that by the time "my original devices" were ready for sale at the market the bubbles in the device formed by the detergent chosen has disintegrated, and formed a substantially continuous air space through which the sands in the device fell quickly, producing quite a different effect from that which I had intended.  I also discovered in many cases that the sands after a short while congealed completely, thereby destroying the effect originally sought to be achieved" .....

"As a result, I withdrew "my original device" from sale in May 1985 and discarded all stock.  From time to time during the ensuing months I returned to the St. Kilda market for the purpose of making myself available to accept back any of "my original devices" which had been previously sold and were being returned as unsatisfactory",

and

"6 ....... it is true that I sold devices for producing "sand pictures" at a stall at the market on The Esplanade, St. Kilda from February 1985 (see permit from St. Kilda Counsel, [Ref. A attached to "the Objectors'" Notice], and to which I admitted in the case before the Supreme Court of Victoria [Ref. B attached to "the Objectors'" Notice]).  However, those devices for producing "sand pictures" were "my original device", which I abandoned, in which the detergent was not capable of forming and maintaining a layer of bubbles, and in which the sands were not selected or treated to achieve the result as defined in the claim of Petty Patent No. 551,006".

Referring to her "improved device" in paragraph 3 she states:

"After a considerable degree of such further experimentation, in consultation with experts, I observed that some detergents which produce a large number of small bubbles resulted in a bubble layer which would not disintegrate.  I further found that by using sands selected or treated to ensure particularly high purity, the congealing problem was overcome. The result was the formation of high quality, aesthetically pleasing, patterns of pyramids and mountains, the production of which was sustainable with prolonged use of the device (the device containing such improvements hereafter being referred to as "my improved device"). 

Accompanying the patentee's declaration were two exhibits. Exhibit IK1 comprised two shifting sands display devices which the patentee described as examples of her original devices.  The first unit had no bubbles or air space at all and the sands quickly resettled after inverting the unit.  The second unit had an air space which, when the unit was vigorously shaken, would form a mixture of bubbles and large air pockets; the small bubbles however tended to dissipate relatively quickly.  Although some of the sands passed through the air spaces and bubbles, large portions tended to congeal and stick to the sides of the display.  This prevented the formation of the desired three‑dimensional effect.  Exhibit IK2 was another shifting sands display device which the patentee described as an example of her improved device, the subject of the petty patent.  The bubbles in this unit tended to remain small and numerous and assisted in the production of the desired effect.
 Section 40
         Mr Caine submitted arguments that the specification does not comply with section 40 of the Act and that therefore paragraph (c) of sub‑s. 100(1) is a ground which may be considered under section 68B.  I note here that the notice of objection to the extension of term lodged on 9 April 1987 only referred to paragraphs (g) and (d) of sub‑s 100(1) and not to paragaraph (c), but I assume that this was merely a clerical error and I am prepared to consider argument under this paragraph.
         His main submission was that "maintain" means "to preserve or to preserve from decline or to keep in a specified state" but that it does not mean "maintain indefinitely".  My interpretation differs from Mr Caine's in the length of time the bubbles are maintained.  As I have stated above, I construe the bubbles to be maintained for at at least as long as required for very many viewing sessions of the device, with one viewing session being at least the time taken for all the sands to settle.  I can see no basis for the interpretation that the bubbles are maintained for a relatively short time.
         Mr Caine also argued that the claim is too broad and does not include all the essential features of the invention.  He made the following points:‑

.The claim is too broad as it is not limited to the disclosures in the embodiment eg. all liquids are claimed but only water is disclosed.

.The claim does not include the essential features of the invention inherent in the part of the specification which states "the cavity should be half to three quarters full of the sand mixture.  A type of detergent containing what is known as conditioner or fabric softener is used to achieve the required viscosity of the water.  The amount is also vital to maintain the bubbles".

I cannot accept either of these points. There is no requirement for the claim to be limited to the embodiment described.  Also the part of the specification quoted above is contained in, and directed to, the preferred embodiment and should not be interpreted as limiting the inventive concept.  I regard the inventive concept as including a liquid having surface active and viscosity characteristics to maintain bubbles rather than the particular liquid described in the passage quoted above.
         Mr Caine also argued that the specification is not fully described as there is no discussion of either the prior art or the problem the inventor faced, and that insufficient details are supplied concerning the performance of the invention.  It is true that probably only a minimum amount of information is given in the specification but nevertheless the type and amounts of detergent, methylated spirits and sands are disclosed together with the method and ingredients necessary to clean the sands. If any experimentation is still required to carry out the invention the simple technical nature of the invention should enable this to be achieved successfully.  Therefore I am not convinced that the specification is insufficient.  I also take into account the fact that the objectors have supplied no evidence to support their assertion that insufficient details prevent the invention disclosed from being carried out.
         I am of the opinion that the specification does comply with the requirements of section 40. 
Novelty and Obviousness    
At the hearing Mr Caine made no reference to any of the documentary evidence lodged by the objectors; the central issue was whether the patentee's original devices as exemplified by the second unit of exhibit IK1 were within the scope of the claim. The fact that such devices had been available to the public before the priority date of the claim was not in dispute by the parties. It has been determined in law that evidence of prior use can be considered as establishing lack of novelty. Griffin v Isaacs (1942) 12 AOJP 739, Stahlwerk Becker Aktiengesellschaft's application (1919) 36 RPC 13, and Carpenter v
Smith (1841)  1WPC 530, 9 M&W 300.  These are grounds which when considered under paragraph (g) of sub‑s 100(1) can be taken into account under Section 68B.
         Firstly, Mr Caine submitted that all the features of the claim were disclosed in the IK 1 exhibit, and that a layer of bubbles was maintained therein. I find that there are substantial differences between the claim and the original devices.  Some bubbles were apparent in one of the original devices (but not in the other) when the exhibits came into this Office's possession and at the time of the hearing, but soon afterwards the liquid seemed to become incapable of maintaining any bubbles for more than a few minutes even after vigorous shaking of the device and they disintegrated before a picture could be formed.  This is quite different from the device claimed, and also from exhibit 1K2 which has constantly maintained a layer of small bubbles across the whole width of the device.  Also the original device when it did display bubbles did not form them across the whole width of the device but instead formed a mixture of bubbles and large air pockets.  A further difference is that a large proportion of the sands of the original devices congealed and adhered to the sides of the display and did not produce the three‑dimensional effect. 
         Mr Caine also suggested that in paragraph 3 of the patentee's declaration, where she discussed the original device being returned over a period of several months, together with the common knowledge that detergents are bio‑degradable over time, that it was likely that the original devices would have maintained their bubbles to different degrees.  This may have been the case, but there is no evidence in the patentee's declaration or elsewhere to indicate that the liquid in the original devices could maintain the layer of bubbles for the length of time envisaged in the specification.

Secondly Mr Caine submitted that even if the claim is not wholly anticipated by the patentee's original devices, it is still not novel. Overcoming difficulties such as bubble distintegration and congealing sand he suggested was merely a matter of workshop or trade variants, or a matter of common general knowledge. More specifically with regard to the bubble distintegration problem he said that any worker in the field could easily overcome the problem, that the use of the improved liquid was a case of mere substitution or analogous use and that the later device is merely commercially attractive and aesthetically pleasing. Acme Bedsteads (1929) 58 CLR 589, Griffin v Isaacs (1942) AOJP 739, Windsurfing International v Ors. (1983) 3 IPR 449.
         Thirdly Mr Caine suggested that the patentee's evidence is deficient, that there are no details given of the "further experimentation in consultation with experts" referred to in her declaration, that because no information was given as to who the experts were then the objectors could not call upon those experts, and that this "silence in the evidence" should therefore count against the patentee.  Earle v Castlemaine District Community Hospital (1974) Report of the Supreme Court of Victoria 722.
         On these matters while I agree that expert evidence seems to be lacking, I find it difficult to accept that the objectors could not call upon experts merely because the patentee has failed to refer to the names of such persons.  Mr Hayes suggested that the onus of truth should be on the objectors to the extension of term and not the patentee, that the objectors at the hearing at least have used no "positive" evidence of their own.  I agree with these submissions, it is true that the patentee has provided no expert evidence apart from her own, but the objectors have provided no more.
         In this light it is difficult to determine the state of the art and what may be matters of common general knowledge, and thus difficult to say that the differences between the patentee's original and improved devices do not involve the exercise of inventive ingenuity.  Mr Hayes submitted that there are material differences between the original and improved devices, essentially "one works and the other doesn't", and that these differences are inherent in the claim referring to the bubble layer being maintained and the interaction of the bubble layer with the particulate materials.  In my opinion the original devices do not maintain the bubble layer as is required in the claim, and do not produce the result as defined in the claim.  I consider this to be a major difference between the features of the claim and the patentee's prior devices which certainly contributes to the working of the invention resulting in a far superior product.  Accordingly the display device defined in the claim is novel and not obvious in the light of the patentee's  prior art.
         At the end of the hearing Mr Caine asked if I would defer issuing my decision for 7 days while he lodged further very relevant evidence.  I agreed to such a deferment but I told him that in these circumstances I could not agree to his adducing this further evidence in the context of this sec. 68B(3) action.  Accordingly I told him that I would consider his evidence only under the provisions of Sub‑ss 68B, (5) (6) and (7).  I also informed Mr Hayes that if I found the evidence relevant I would hear him on the matter if he so desired.
         The further evidence was lodged within the 7 days and consists of a declaration by Diana Ruth Seale who is the owner and operator of an art and crafts gallery in Queensland.  She has declared that she retured to Australia from a visit to U.K. with a sand picture she had purchased there. She states that she displayed the device in her gallery on 20 August 1985 where it was able to be viewed and handled by the visiting public.  Unfortunately this device was lost and the one tended as evidence is "one identical in all material aspects" to the earlier one.  This exhibit, DRS2, purports to be a sand picture which uses bubbles in the same manner as the patentee's but it has an instruction "to shake well to form small air bubbles".  Although I have followed the instruction I have not been successful in obtaining bubbles to last the duration of the formation of one picture.  Consequently I do not consider this device to be any more relevant than the patentee's earlier devices.
Decision  
         On consideration of the documents lodged with the notice, submissions made before me at the hearing and evidence lodged subsequent to the hearing, I am not satisfied that grounds have been established for refusing to extend the term of the petty patent.  Accordingly, under sub‑s 68B(5) of the Act I grant an extension of the term of petty patent no. 551006.
         I award costs in the matter against the objectors Grace Mizzi and Jack Mendleson.

G. Baker
A/ Deputy Commissioner of Patents

Patent Attorneys for the patentee:  Mr R. Strictland of Clement Hack & Co.