Innovative Environmental Solutions Pty Ltd v Water Miser (Aust) Pty Ltd
[2012] APO 93
•12 September 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovative Environmental Solutions Pty Ltd v Water Miser (Aust) Pty Ltd APO 93
Patent Application: 2005262197
Title:A liquid conservation device and a liquid apparatus incorporating the liquid conservation device
Patent Applicant: Water Miser (Aust) Pty Ltd
Opponent: Innovative Environmental Solutions Pty Ltd
Delegate: R Subbarayan
Decision Date: 12 September 2012 (Corrected Version)
Hearing Date: Written submissions only
Catchwords: PATENTS – opposition to the grant of a patent under section 59 – certain claims not entitled to priority of provisional application – certain claims lack novelty and inventive step – objection to sufficiency of Statement of Grounds and Particulars not entertained – costs awarded against applicant
Representation: Patent applicant: Chris Goodhew, Patent and Trade Mark Attorney
Opponent:Daniel Fox of Ahern Fox, Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005262197
Title:A liquid conservation device and a liquid apparatus incorporating the liquid conservation device
Patent Applicant: Water Miser (Aust) Pty Ltd
Date of Decision: 12 September 2012
DECISION
The invention defined in claims 1, 5 and 16-21 is not novel and claims 6 and 7 lack an inventive step. Costs awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
Patent application AU2005262197 in the name of Water Miser (Aust) Pty Ltd was filed on
15 July 2005 as a PCT application and claims priority from Australian provisional application 2004903888 filed on 15 July 2004. The specification was advertised as accepted on 1 July 2010. Innovative Environmental Solutions Pty Ltd filed a Notice of Opposition on 1 October 2010 and followed it up with a Statement of Grounds and Particulars on 23 December 2010.
Both parties agreed to the Hearing being conducted only on the basis of written submissions. The opponent’s Submissions in Chief was filed on 30 March 2012, the applicant’s Submissions in Answer was filed on 20 April 2012 and the opponent’s Final Submissions was filed on 3 May 2012.
The applicant is represented by Chris Goodhew, Patent and Trade Mark Attorney and the opponent is represented by Ahern Fox, Patent and Trade Mark Attorneys.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars (SGP) lists the Grounds of Opposition as follows:
a)The nominated person is not entitled to the grant of a patent for the invention.
b)The invention claimed in the accepted application is not a patentable invention because it does not comply with subsection 18(l)(a), 18(l)(b), 18(l)c and 18(l)(d).
c)The specification filed in respect of the complete application does not comply with subsections 40(2) and 40(3).
EVIDENCE
The opponent’s Evidence in Support was completed on 14 April 2011 and consists of a brief Statutory Declaration by Mr Daniel Fox, their attorney and copies of the documents referred to in their SGP.
The applicant did not to file any Evidence in Answer.
SPECIFICATION
The invention relates to a liquid conservation device which is primarily for use as a water conservation device for fitting to a domestic hot water tap. Water that is held in the hot water lines between a hot water supply and a hot water tap is generally not heated and therefore cools over time. As a result when the hot water tap is turned on, the initial water flowing from the hot water tap tends to be cold. Typically a user would cause this water to flow down the drain and only commence using the water once it has warmed up sufficiently.
The device of the invention overcomes this wastage of water by diverting water that is below a specified design temperature away from the hot water tap and allows water through the hot water tap only once the water reaches the design temperature.
It comprises a housing with a primary flow passage for the passage of water from the hot water supply to the tap. The primary passage has a temperature controlled valve which closes the primary passage when the water is below a design temperature and diverts the water through a secondary passage back to the water supply and only opens the primary passage when the water is above the design temperature.
The specification describes two embodiments of the invention having slightly different arrangements of the primary and secondary passages and the temperature controlled valve.
It ends with 21 claims of which three are independent claims and the rest are dependent claims. The independent claims are as follows:
1. A water conservation device comprising:
a housing defining a primary flow passage between an inlet at one end and a hot water outlet at an opposed end, the housing also defining a secondary flow passage extending from said inlet to a secondary outlet;
a primary valve in said primary flow passage and axially movable between sealably closed engagement with a primary annular seat in said housing to permit flow through the primary flow passage from the inlet to the hot water outlet and a diverting position in which the primary valve opens to direct flow from said inlet into the secondary flow passage, the primary valve being biased to open the secondary flow passage by a spring acting between the housing and the primary valve;
a control element operable in response to increasing temperature of the flow through said inlet to close said valve against the bias of said spring; and
a secondary valve operable by the pressure differential between the secondary outlet and the hot water outlet and serving to close the secondary flow passage in response to closure of flow downstream of the hot water outlet.
8.A water saving device for use in a hot water system to recover an initial volume of cold water when a hot water tap is turned on, the device comprising:
a housing defining a primary flow passage having a primary inlet at one end and a primary outlet at an opposed end, the housing also defining a secondary flow passage extending from a secondary inlet that opens into and communicates with the primary flow passage intermediate the primary inlet and primary outlet to a secondary outlet, the primary flow passage thereby comprising an upstream portion that is upstream of the secondary inlet of the secondary flow passage and a downstream portion that is downstream of the secondary inlet of the secondary flow passage;
a shuttle valve in said primary flow passage movable in a reversible fashion between a normal operating position in which it permits flow through the primary flow passage from the inlet to the primary outlet and a diverting position in which the valve closes off the primary flow passage downstream of the secondary flow passage and directs water into the secondary flow passage, the valve including a thermal actuator for moving the valve from the diverted position to the normal operating position when the temperature of water within the valve reaches or exceeds a set temperature and moving the valve back again when the temperature drops below the set temperature;
a secondary valve for closing off the secondary flow passage, at least when the flow of water through the primary outlet out of the housing is stopped, and opening the secondary flow passage when flow out of the primary outlet and the housing is recommenced, the secondary valve including a valve closure movable between a closed position in which it resists flow through said secondary flow passage and an open position in which it permits flow through the secondary passage, and the secondary valve also including a valve head operatively coupled to the valve closure the valve head being received in a slidable fashion within a chamber formed by the housing which opens into the downstream portion of the primary flow passage, wherein the secondary valve is responsive to the pressure of water in the downstream portion of the primary flow passage to move from the open to the closed position;
whereby when water flows through the device and the temperature is below the set temperature the primary valve means is in the diverting position and directs water into the secondary flow passage and the secondary valve means is open to permit water to flow out of the secondary outlet, and when the temperature exceeds the set temperature the primary valve means will move to the normal operating position closing off the secondary flow passage and directing water down the full length of the primary flow passage and out through the primary outlet, and further when the flow of water out of the primary outlet of the housing has ceased the secondary valve means is in the closed position shutting off flow through the secondary conduit.
16Apparatus for use in a hot water system to recover an initial volume of cold water when a hot water tap is turned on, the apparatus comprising;
a water conduit;
a device as defined above in anyone of claims 1 to 15, coupled in line with the water conduit with the conduit entering at the primary inlet and exiting at the primary outlet; and
means for opening and shutting off the water conduit located downstream of the primary outlet.
DISCUSSION
Statement of Grounds and Particulars
Surprisingly most of the applicant’s submissions in answer are not directed to a rebuttal of the opponent’s submissions on the substantive grounds of Novelty, Inventive Step and Clarity but are instead directed to the sufficiency of the SGP. They have argued that the various grounds of opposition are not particularised sufficiently for the applicant to clearly understand the case they have to answer and that as a consequence it is open to me to dismiss the opposition under Regulation 5.5(3). They also referred me to the prior patent office decision ICI v Irenco & Ors 26 IPR 154 in support of its submissions that further and better particulars were necessary.
As pointed out by the opponent in their final submissions, the SGP was served on the applicant on 23 December 2010, almost 18 months ago. Also the opponent completed their evidence in support on 14 December 2011 and hence the applicant has been aware of the evidence to be used against them for at least one year. I am therefore at a loss to understand why it has taken the applicant so long to object if they considered that the SGP does not provide them with sufficient information to determine the case it has to defend.
While the applicant is entitled to ask for better particulars if they consider that the grounds are not sufficiently particularised, in my view they have should have done this within a reasonable period after the SGP was served on them. Any deficiencies of the SGP are formality issues that should have been raised early in the opposition proceedings. The hearing into the substantive matters of the section 59 opposition is not the forum to raise objections to the sufficiency of the SGP. I therefore do not intend to make any findings on the merits of the applicant’s submissions in relation to the SGP.
Entitlement to Priority
The opponent filed detailed submissions in relation to whether the claimed invention is entitled to the claimed priority date of 15 July 2004, being the filing date of the provisional application. They argued that the resolution of this issue hinges on the interpretation of the term “end” of the housing.
As I mentioned earlier the complete specification describes two embodiments, a first one as shown in figures 1-5 and a second one as shown in figures 6-13.
In relation to the first embodiment the description discloses that the housing is in the form of a rectangular block with the inlet and outlet at opposed sides or faces of the housing. It includes a primary valve in the form of a shuttle valve that is longitudinally movable in a bore of the primary passage to either cover or uncover two apertures in the wall of the bore, one of the apertures leading to the downstream side of the primary passage and the other of the apertures leading to the secondary passage. The figures of this embodiment are very similar to the figures of the provisional application and therefore this embodiment is clearly entitled to the priority of the provisional application.
In relation to the second embodiment it is clear from the figures that the housing is cylindrical with the inlet and outlet at opposed ends of the housing. The shuttle valve of this embodiment is also longitudinally movable within a bore and sealingly cooperates with seats 118 and 119 at either end of the bore to direct water either to the primary passage or to the secondary passage. Although not explicitly mentioned in the description it is clear from figures 6-13 that the seats 118 and 119 are annular seats. The provisional application does not disclose this embodiment either in the figures or the description and therefore in my view this embodiment is not entitled to the priority of the provisional application.
The issue that I need to decide upon is whether each of independent claims 1 and 8 are fairly based on the disclosure of the provisional application and therefore entitled to the claimed priority.
Both independent claims 1 and 8 define the housing as having a water inlet at one end and a hot water outlet at an opposed end but neither of the claims define the shape of the housing..
The opponent submitted that the term “end” in claims 1 and 8 could be given two interpretations. A narrower interpretation would limit the term to refer to an end of an elongate housing as opposed to the sides of the housing while a broader interpretation would allow the term to encompass the sides of the housing. However it was their view that the broader interpretation should be given as the claims do not define the housing as being “elongate”.
The applicant was also of the same view and agreed that the opposed sides of the housing in which the inlet and outlet are located as shown in the provisional application could be considered as ends of the housing and therefore was of the view that claims 1 and 8 are fairly based on the provisional specification.
I can see no reason to adopt the narrower interpretation. Clearly neither claim defines the shape of the housing or that it is elongate and therefore it is in my view quite legitimate to consider the opposed sides or faces of a rectangular housing as being opposed “ends” of the housing. I am therefore of the view that the feature of the inlet and outlet being disposed on opposed ends of the housing is fairly based on the provisional specification.
Although not raised by the opponent, in my view there is a another feature in claim 1 that requires scrutiny in relation to determining whether claim 1 is fairly based on the provisional specification. This feature is that of the “primary annular seat”. Claim 1 includes the limitation that the axially movable primary valve cooperates with a primary annular seat to direct flow of water into the primary flow passage or the secondary flow passage. As discussed earlier, the second embodiment described in figures 6-12 of the complete specification clearly includes annular seats but this embodiment is not disclosed in the provisional specification. So the question that I need to answer is whether the first embodiment which is fairly based on the provisional specification discloses an “annular seat” in the housing against which the primary valve can be brought into sealably closed engagement.
As I have briefly discussed earlier, in the first embodiment the opening leading to the downstream portion of the primary passage and the opening leading to the secondary passage are located in the cylindrical wall of the shuttle valve chamber and the shuttle valve member 16 is longitudinally movable in this chamber between a diverting position where it closes off the opening to the downstream portion 13 of the primary flow passage and uncovers the opening to the secondary flow passage 9 and a normal operating position where it closes off the opening to the secondary flow passage and uncovers the opening to the downstream portion of the primary flow passage. There is absolutely no reference to any annular seat in this embodiment. Also in my view the cylindrical inner surfaces of the shuttle valve chamber adjacent the openings leading to the downstream portion of the primary passage and to the secondary flow passage cannot be considered as “annular” seats as would be understood in the art.
Therefore I conclude that claim 1 is fairly based on the second embodiment and not on the first embodiment and this is further supported by dependent claims 3 and 4 which define the annular seats as being tapered seats and the closure members as having O-ring seals to seal against the seats. Clearly there is no support for these additional features in the first embodiment of the provisional specification.
I therefore find that claim 1 is not entitled to the priority date of the provisional application and the priority date of claims 1-7 is the filing date of the complete application, namely 15 July 2005.
In relation to claims 8-21, they are not limited to having an annular seat and are therefore in my view fairly based on the provisional specification and are therefore entitled to the earlier priority date of 15 July 2004.
Novelty
Claim 1:
The opponent has argued that claim 1 is not novel over document (D1) WO 2004/088051 A1 (WIILSFORD et al) 14 October 2004 and provided the following written submissions in support.
“1.8Referring to Claim 1 of the accepted specification, it can be seen that Fig. 10 illustrates a valve assembly (118) comprising a housing (142) having an inlet (148) and an opposite hot water outlet (149), the housing defining a primary flow passage (shown in blue dots and marked “A”) between the inlet and the hot water outlet and a secondary flow passage extending from the inlet (148) to a secondary outlet (150).
1.9A primary valve assembly comprising valve members (152 and 153) which move together up and down as a “primary valve” in the primary flow passage “A” within the hot water inlet chamber (156) can also be seen. That is to say, the valve members (152 and 153) together form a “primary valve in said primary flow passage and axially movable between sealably closed engagement with a primary annular seat (shown as item C in marked up drawing Fig 10A) at the upper face of valve member (182) thereby permitting flow through the primary flow passage from the inlet to the hot water outlet by coincidentally aligning apertures (167) with complementary apertures (166). The primary valve (152 and 153 combined) are biased away from the primary annular seat “C” thereby being biased to open the secondary flow passage B by spring (162) which acts between the housing via valve member (182) and the primary valve member (152).
1.10A control element (being a linear actuator (173)) is operable in response to increasing temperature of the flow through the inlet to close the primary valve against the bias of spring (162).
1.11A secondary valve incorporating diaphragm (189) is operable by the pressure differential between the secondary outlet (the cold water outlet 150) and the hot water outlet (149) to close the secondary flow passage at the bottom end of valve member (188) in response to closure of flow downstream of the hot water outlet (149). That closure is achieved by pressure building up in passage 191 and forcing the diaphragm (189) upwards into closing engagement with the rim (187) of the skirt (188) of valve member (181).
1.12We envisage that the applicant may argue that the Opponent’s PCT specification does not disclose an inlet and an outlet on opposite ends. However, we refer to the PCT specification at page 16 from line 31 to page 17 line 6 wherein it states that “in other embodiments of the invention, the hot water inlet opening and the hot water outlet opening are on opposed end walls (42b and 43b respectively). In still other embodiments…”.
1.13Moreover, there is nothing in Claim 1 to define the assembly as being “elongate” (or similar) so an “end” must be taken to encompass the “sides” of the valve shown in Fig. 10 of the Opponent’s specification.”
The applicant in their written submission in response has not disputed any of the opponent’s abovementioned submissions in relation to the disclosure of the embodiment of Fig 10. Their only argument in response to the lack of novelty of claim 1 was to state that as the case for the denial of the priority date had not been made out, the opponent’s submissions in relation to novelty and inventive step are moot.
I find this approach very puzzling, to say the least. Even if the applicant thought that they had a strong case as to why the denial of the earlier priority had not been made out, I would have expected that they would have provided written submissions to counter the opponent’s attack on the grounds of novelty and inventive step, especially given that it is still possible for claim 1 to lack “whole of contents” novelty over D1 as D1 is a published Australian patent specification (AU2004225904) that has a priority date earlier than the priority date of claim 1.
I find the Opponent’s submissions regarding the disclosure of Fig 10 of D1 persuasive. In my view the embodiment of Fig 10 clearly discloses all of the features of claim 1 including that of the annular seat.
In relation to the requirement in claim 1 that the inlet and outlet to be located on opposed “ends” of the housing, I have earlier found that the term “end” in the claims would encompass the “side” of a rectangular housing. The housing of Fig 10 has a cylindrical main housing part 142 and an appended housing part 143 that abuts the cylindrical wall of the main housing part, with the water inlet being located in the cylindrical housing part and the hot water outlet being located in the appended housing part. While the housing of Fig. 10 is not rectangular, in my view the cylindrical wall of the main housing part and the flat walls of the appending housing part can be considered as side walls of the housing. As discussed earlier I am in agreement with the parties that the term “end” should be given a fairly broad interpretation to include the sides or faces of a housing. I am of the view that the inlet and outlet in Fig 10 of D1 can also be considered to be located on “ends” of the housing. Clearly they are also opposed to each other. Therefore I consider that the Fig 10 also discloses this requirement of claim 1.
In the alternative, as pointed out by the opponent, D1 discloses that in other embodiments, the hot water inlet and hot water outlet can be located in the opposed end walls 42b and 43b. While not specifically mentioned for the embodiment of Fig 10, it is clear that a similar arrangement could be employed for this embodiment as well and with such an arrangement this limitation of claim 1 would be clearly met.
Document D1 was published on 14 October 2004. As I have found that the priority date of
claim 1 is the filing date of the complete application i.e. 15 July 2005, clearly document D1 was published before this priority date. As it discloses all of the features of claim 1, I find that the invention defined in claim 1 is not novel in the light of D1.
Claim 2:
I do not find the opponent’s submissions in relation to claim 2 persuasive. Even if I accept that the diaphragm 189 forms the working face of the valve head 181 that is held at the hot water outlet pressure, Fig. 10 does not disclose a secondary annular seat in the housing and adjacent to the primary annular seat as required in claim 2. Even though the annular rim 187 is an annular seat it is not formed on the housing and is not adjacent to the primary annular seat. Claim 2 is therefore novel over D1.
Claims 3, 4:
These claims are dependent on claim 2 and are also therefore novel.
Claim 5:
Fig. 10 clearly includes a thermal actuator 173. Claim 5 is therefore not novel.
Claim 6:
The feature of non-return valves is not disclosed in Fig. 10 and therefore this claim is novel.
Claim 7:
In Fig. 10, the secondary outlet 150 is not perpendicular to the primary outlet 149. Therefore claim 7 is novel.
Claim 8:
The opponent has submitted that independent claim 8 also lacks novelty as the embodiment of Fig. 10 discloses all the features of this claim. Their reasoning in the written submissions is as follows:
“1.30We attach a marked up copy of Fig. 10 relabelled as Fig.10b and we would ask you to note that Fig. 10B which shows flow passage D marked up in a line of circles.
1.31. It can be seen in Fig. 10B that part of the secondary flow passage which was recited in
Claim 1 as extending from the inlet to the secondary outlet is now referred to as extending from a secondary inlet to a secondary outlet, the secondary inlet being "intermediate the primary inlet and the primary outlet", Thus, the secondary inlet can be seen in Fig. 10B as Item (185). The primary flow passage comprises an upstream portion that is upstream of the secondary inlet and a downstream portion that is downstream of the secondary inlet. In that respect, the upstream portion in Fig. 10B extends from the inlet (148) to the secondary inlet located at item (185) and the downstream portion extends from inlet (185) through apertures (167 and 147) to the hot water outlet.
1.32.Fig. 10 also shows a shuttle valve (as can be best understood) in the primary flow passage which is movable in a reversible fashion between a normal operating position in which it permits flow through the primary flow passage from the inlet (148) to the hot water outlet (149) while the valve is in the "down position" closing the secondary inlet at (185) to a diverting position in which it closes the apertures (167) and opens the opening (185) to the secondary flow passage so that it thereby directs water into the secondary flow passage.
1.33. The valve assembly also includes a thermal actuator (173) for moving the shuttle valve
(152 and 153) from the diverted position to the normal operating position upon the temperature of water within the inlet chamber reaching or exceeding a set temperature and moving the valve back again when the temperature drops below the set temperature.
1.34. The valve assembly also includes a secondary valve for closing off the secondary flow passage when the flow of water through the primary outlet (149) is stopped. In that regard, when a tap downstream of the hot water outlet is closed, pressure builds up in the chamber (161) and pressurises the underside of the diaphragm (189) thereby closing the downstream portion of the secondary flow passage by engagement with the rim (187) of the cylindrical skirt (188). The secondary valve opens the secondary flow passage when flow out of the primary outlet (149) recommences by virtue of the pressure on the underside of the diaphragm valve dropping. The secondary valve and includes a valve head (182, 183, 187) which is operatively connected to the valve closure (diaphragm 189) the valve head being received in a slidable fashion within the chamber (156) formed by the housing which opens into the downstream portion of the primary flow passage. The secondary valve includes the diaphragm (189) which is responsive to the pressure of water in the outlet chamber (161) to move from the open to the closed position via pressure building up in the passage (191) which therefore pushes the diaphragm against the rim (187).
1.35. The actions of the valve results in flow occurring as recited in the final paragraph of
Claim 8. Thus, the Opponent's PCT specification discloses all the features of the invention defined by Claim 8 and therefore anticipates Claim 8.”
Again the applicant has not disputed the opponent’s reasoning.
While I agree with the reasoning in paragraphs 1.30 – 1.33, I am not convinced with the reasoning in relation to the secondary valve in paragraph 1.34.
The claim requires that the secondary valve includes a movable valve closure and a valve head operatively coupled to the valve closure, the valve head being slidable in a chamber which opens into the downstream portion of the primary flow passage. In my view the valve member (183, 187) in Fig 10 cannot be considered a valve head that is operatively coupled to the valve closure (diaphragm 189). Also the chamber within which it is received in a slidable fashion clearly does not open into the downstream portion of the primary flow passage.
Claim 8 is therefore novel over document D1.
Claims 9-15
These claims are dependent on claim 8 and these claims are also therefore novel.
Claims 16-21:
These claims are directed to the application of the device of any one of claims 1-15 in a domestic hot water system. Clearly the device of D1 is used in an identical manner and therefore as I have found claim 1 to be not novel, it follows that claims 16-21 are also not novel over D1.
Inventive step
Claims 2-4:
As discussed earlier claim 2 is distinguished from D1 in that it has a secondary annular seat in the housing which is adjacent to the primary annular seat. I have been provided with no evidence on common general knowledge from the opponent that would suggest that it would have been obvious to a person skilled in the art to have modified the embodiment of Fig. 10 of D1 whereby the valve closure interacts with a secondary annular seat in the housing to close the secondary passage. Claim 2 and its dependent claims 3 and 4 are therefore inventive.
Claim 6:
This claim requires that either or both the upstream portion and the downstream portion of the primary flow passage includes an inline non-return valve. The description states that the purpose of the non-return valve is to permit the flow of water through the water saving device in a forward direction but not in a reverse direction. As pointed out by the opponent, it further states “as the structure and function of non-return valves would be well known in the art and does not form part of this invention it will not be described in further detail in the specification.”
The use of non-return valves to prevent reverse flow is certainly common general knowledge in the art. In my view, where there was felt a need to prevent reverse flow in the claimed device, it would have been obvious to a person skilled in the art that this could be achieved by the use of a non-return valve. The incorporation of such a valve in the device of D1 would be nothing more than a routine workshop improvement. Claim 6 therefore lacks an inventive step over D1.
Claim 7:
In D1, the secondary outlet faces in a direction that is opposite to the primary outlet. However as discussed earlier, D1 clearly discusses the possibility of placing the inlet and outlets in the ends of the housing instead of the sides of the housing. If one of the primary or secondary outlet was arranged in the side of the housing and the other of the primary or secondary housing was arranged in the end of the housing, they would be in mutually perpendicular directions. The applicant’s specification does not mention any specific advantage in arranging the secondary outlet in a direction perpendicular to the primary outlet. It is therefore my view that placing the secondary outlet in a perpendicular direction is no more than a design choice that does not involve any inventive ingenuity. Claim 7 therefore lacks an inventive step.
Claims 8-15:
I have earlier found that these claims are entitled to the earlier priority which means that D1 was published after the priority date of these claims. Therefore D1 does not constitute prior art information for the purposes of determining whether the claims involve an inventive step. As the opponent has not argued a lack of inventive step of these claims using any other document, I find that claims 8-15 are inventive.
Clarity
The opponent has submitted that there are a number of terms in independent claims 1 and 8 that are not clear and therefore render the scope of these claims indeterminate.
The applicant in their written submissions has countered this by merely stating that the clarity issues raised are a verbatim restatement of the relevant particulars in the Statement of Grounds and Particulars and that no substantive expert interpretative evidence supports these particulars.
Claim 1
The opponent’s main submissions in relation to the clarity of claim 1 are as follows.
(a)The term “operable in response to increasing temperature of the flow through said inlet to close said valve” is not clear as to whether it is to be capable of such operation or actually does so operate.
(b)The secondary valve is not capable of operation by the stated differential as a “differential” cannot and does not apply a force.
(c)It is not clear as to how the secondary valve is “serving” to close the secondary flow passage nor what is meant by “closure of flow”.
(d)It is not clear how the primary valve can sealably close with a primary seat to permit flow through the primary flow passage and to open to direct flow to the secondary flow passage.
(e)It is not clear what direction is “axially”, as in whether the primary passage is an elongate passage with an axis or whether the primary valve is elongate with an axis.
In relation to (a) it is clear that the term “operable” is used in the sense of “operates” and not just a mere capability.
In relation to (b) I do not understand the opponent’s argument regarding the “pressure differential”. It is clear from the specification that the secondary valve 131 is subject to the pressure of the hot water outlet on one face and to the pressure of the cold water outlet on an opposite face and that this difference in pressure determines the position of the secondary valve and in one position it does close off the secondary flow passage. Regarding (c) and (d), it is also clear that closure of flow downstream of the hot water outlet refers to the closing or shutting off of the flow in the hot water circuit by means such as a hot water tap.
In relation to (e) it is again clear from the specification that the primary valve is an elongate shuttle valve with an axis and that it slides in a bore of the housing in a direction of its axis.
It is therefore my view that there are no clarity issues in claim 1 that would cause any difficulty in understanding the scope of this claim.
Claim 8
The opponent has made the following submissions in relation to the clarity of claim 8.
(a)It is not clear whether the secondary inlet opens into the housing or out of the housing or interconnects other passages within the housing.
(b)It is not clear what is meant by the shuttle valve movable in a “reversible fashion”.
(c)It is not clear what constitutes “closing off the secondary flow passage” and what is meant by “when flow through the primary outlet is stopped”.
Again I am not convinced that there are any significant clarity issues in claim 8 which would render the scope of the claim indeterminate. The purpose of the device is to divert water flowing through the primary passage into a secondary passage when the water is below a specified temperature and to do this the secondary passage originates or opens into the primary flow passage. The term “reversible fashion” defines that the shuttle valve can move in opposite directions. In relation to (c) I have no difficulty in understanding the scope of the terms in question. Claim 8 is therefore clear.
Subsections 18(1)(a), 18(1)(c) and 18(1)(d)
Although the opening remarks in the opponent’s submissions indicate that they intend to press the grounds that the invention claimed is not a patentable invention because it does not comply with each of subsections 18(1)(a), 18(1)(b), 18(1)(c) and 18(1)(d), the submissions that follow do not include even a single reason as to why the application does not comply with subsections 18(1)(a), 18(1)(c) and 18(1)(d). I have also been presented with no evidence to suggest that the claimed invention is not a manner of manufacture or is not useful or was secretly used in the patent area. I therefore find that the opposition fails on these three grounds.
Subsection 40(2)
Again the opponent has failed to provide any evidence or submissions to support the ground that the complete specification of the accepted application does not fully describe the invention, including the best method of performing the invention. In my view the specification does fully describe the invention including the best method of performing it. The opposition therefore fails on this ground.
Entitlement to the Invention
Although the opponent has stated in the SGP that they intend to show that important aspects of the invention were obtained from the opponent, they have filed no evidence or submissions in support of this ground. I therefore find that the opposition under this ground has not been made out.
CONCLUSION
Innovative Environmental Solutions Pty Ltd has been successful in its opposition. The invention defined in claims 1, 5 and 16-21 is not novel and claims 6 and 7 lack an inventive step for the reasons detailed above.
As the specification clearly contains patentable subject matter, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
I see no valid reason to defer the issue of costs until after this decision has been issued, as has been requested by the opponent. The opponent has been successful in its opposition and I therefore award costs according to Schedule 8 against the applicant Water Miser (Aust) Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents
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