International Edge, Inc v Blue Gentian, LLC
[2017] APO 50
•11 October 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
International Edge, Inc v Blue Gentian, LLC [2017] APO 50
Patent Application: 2013201639
Title:Expandable and Contractible Hose
Patent Applicant: Blue Gentian, LLC
Opponent: International Edge, Inc
Delegate: R Subbarayan
Decision Date: 11 October 2017
Hearing Date: Written submissions filed on 18 July 2017
Catchwords: PATENTS – section 59 – opposition to grant of patent – garden hose that can expand and contract in length based on water pressure inside the hose -whether claims are clear – whether claims are fairly based – whether claims are inventive – none of the grounds made out
Representation: Patent attorney for the applicant: Fisher Adams Kelly Callinans
Patent attorney for the opponent: Allens Patent & Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013201639
Title:Expandable and Contractible Hose
Patent Applicant: Blue Gentian, LLC
Date of Decision: 11 October 2017
DECISION
The opposition is unsuccessful. The claimed invention is clear, fairly based and inventive. Costs awarded against the opponent.
REASONS FOR DECISION
BACKGROUND
Patent application 2013201639 in the name of Blue Gentian, LLC (the applicant)was filed on 19 March 2013 as a divisional application of 2012214277. Through this divisional parent, the present application claims an earlier priority date of 4 November 2011. Following examination, the application was advertised as accepted on 15 October 2015. A notice of opposition to the grant of the patent was filed on 15 January 2016 by International Edge, Inc. (the opponent). This was then followed by a Statement of Grounds and Particulars on 15 April 2016. The opponent’s evidence in support was filed on 15 July 2016. It was subsequently discovered that the claims that were advertised as accepted were not the correct set of claims and the correct claim set was therefore re-advertised on 20 April 2017. The Hearing was also postponed to give the opponent an opportunity to file additional evidence and/or further submissions. The opponent chose to appear through written submissions which were filed on 18 July 2017. The applicant chose not to be heard in this matter.
The present application has a divisional sibling in certified innovation patent 2012101797 and a related family member in certified innovation patent 2013100354. Both of these innovation patents relate to the same invention as the application in suit with their respective claim 1 being quite similar to claim 1 of the application in suit apart from minor differences in the integers of the claims. These innovation patents were the subject of both a Federal Court decision (Blue Gentian LLC v Product Management Group Pty Ltd [2014] FCA 1331) and a Full Federal Court decision (Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179). Some of the claim construction issues raised by the opponent in the present proceedings were also considered by the Federal Court in these decisions and while not binding, I would need to find strong reasons if I were to come to a different conclusion in regards to these same issues.
GROUNDS OF OPPOSITION
While the Statement of Grounds and Particulars states that the application is being opposed on the grounds of Novelty, Inventive Step, Full Description, Clarity and Fair Basis, in the written submissions for the hearing, the opponent has not pressed the grounds of Novelty and Full Description.
ONUS OF PROOF
The examination request for this patent application was filed on 19 March 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
EVIDENCE
The opponent’s evidence in support comprises a first declaration by Dr Steven Armfield dated 15 July 2016 with exhibits SWA-1 to SWA-5 and a second declaration by Dr Steven Armfield dated 7 July 2017 with exhibits SWA-6 to SWA-7.
Dr Armfield has a PhD in Mechanical Engineering and is currently the Professor of Computational Fluid Dynamics at the University of Sydney. It is clear from his resume, that he has researched and lectured extensively in the areas of Computational Fluid Dynamics and Fluid Mechanics and is therefore well qualified to provide evidence in relation to the flow and behaviour of fluids within pipes and hoses.
SPECIFICATION
The present invention relates to a hose for conveying fluids, in particular a garden hose, “that automatically contracts to a contracted state when there is no pressurized fluid within the hose and automatically expands to an extended state when a pressurized fluid is introduced into the hose” [0001].
The specification states that problems with existing hoses is that the length and width of the hose cannot be reduced for storage and this can cause difficulties in storage and that they also tend to kink when uncoiled from a storage reel. There is therefore a need for a hose “that can be automatically contracted and reduced in length when not in use, automatically expanded and extended to a length which is practical for use, and automatically returned to the reduced length when not in use. Also, a hose which is relatively light in weight and will not kink when taken from storage and filled with fluid for use” [0004].
The specification then briefly describes various prior art flexible hoses including some which can expand and contract in length.
It then provides a summary of the present invention. The invention comprises a garden hose having an elastic expandable inner tube that is located within a flexible non-expandable outer tube, both of which are connected to each other at the ends through inlet and outlet couplers. A water flow restrictor in the form of a nozzle coupled to the outlet coupler can create an increase in water pressure within the inner tube which consequently expands in length and when the water pressure decreases the inner tube reduces in length to its unpressurised state. This invention is then described in detail with reference to a number of drawings of which figures 1-4 are reproduced below:
These figures show a hose 10 which has an elastic inner tube 14 that can expand up to 4 to 6 times its relaxed length when a pressurised fluid is introduced into the tube. It is surrounded by an outer tube 12 that is formed from a non-elastic flexible material such as braided or woven nylon, polyester or polypropylene. A female coupler 18 is secured to a first end of the inner and outer tubes and is adapted to be coupled to a tap or other water outlet. A male coupler 16 is secured to a second end of the inner and outer tubes and is adapted to be coupled to a nozzle or other fluid distributor device. The outer tube 12 is unattached to the inner tube along the entire length of the inner tube between the first and second ends. It is also significantly longer (as much as 5 times longer) than the inner tube and in the relaxed condition is folded and gathered around the outside of the inner tube to assume the shorter length of the inner tube as seen in figure 1.
When the female coupler is coupled to a water outlet and water is introduced into the hose, the water pressure inside the inner tube causes the inner tube to expand radially and longitudinally due to its elasticity. However the radial expansion is constrained by the non-elastic outer tube and therefore the inner tube continues to expand only longitudinally thereby increasing in length. The gathering in the outer tube unfolds to accommodate the increase in length with the maximum extension of the inner tube being limited by the length of the outer tube. When the water pressure in the inner tube is reduced, the inner tube contracts and regains its relaxed length with the outer tube again folding and gathering around the inner tube.
The shorter length of the hose in it relaxed condition enables easy storage of the hose. Furthermore the tightly gathered condition of the outer tube is stated to prevent kinking of the hose.
The specification ends with 22 claims of which the three independent claims are as follows:
1. A garden hose including:
a flexible elongated outer tube member constructed from a soft non-elastic material having a first end and a second end, an interior of said outer tube member being substantially hollow;
a flexible elongated inner tube member constructed from an elastic material having a first end and a second end, an interior of said inner tube member being substantially hollow;
an inlet coupler secured to said first end of said inner and said outer tube members, said inlet coupler defined by a female coupling having an inlet tubular extension section extending into a first open end of said inner tube member, and a first sleeve over said inlet tubular extension section for securing a first open end of said outer tube member to said inlet coupler, said inlet tubular extension section allowing water to flow through said female coupling into said inner tube member; and
an outlet coupler secured to said second end of said inner and said outer tube members, said outlet coupler defined by an outlet tubular extension section extending into a second open end of said inner tube member, said outlet tubular extension section being connected to an outlet coupling section, said outlet coupler having a sleeve over said outlet tubular extension section for securing a second open end of said outer tube member to said outlet coupler, said outlet tubular extension section allowing water to flow through said outlet coupler;
a water flow restrictor coupled to said outlet coupling section, said water flow restrictor including a means for restricting the flow of all water through said inner tube member;
whereby said water flow restrictor creates an increase in water pressure between said inlet coupler and said outlet coupler within said hose upon the introduction of pressurized water to expand said elongated inner tube member longitudinally along a length of said inner tube member and laterally across a width of said inner tube member thereby increasing a length of said hose to an expanded condition causing a smooth surface shape to said outer tube member wherein said hose contracting to a decreased or relaxed length when there is a decrease in water pressure between said inlet coupler and said outlet coupler causing said outer tube member to be irregularly wrangled in its contracted state.
8. A method of transporting water including:
introducing water in a hose constructed from a soft non elastic outer tube member having a first end and a second end and an expandable, elastic elongated inner tube member having a first end and a second end, said interior of said inner tube member being substantially hollow;
securing a female inlet coupler to said first end of said inner and said outer tube members;
securing an outlet coupler to said second end of said inner and said outertube members, said inner and said outer tube members being secured to each other only at said first and said second ends;
attaching a water flow restrictor to said outlet coupler;
connecting said female inlet coupler to a conventional water spigot having pressurized water;
creating an increase in water pressure between said first inlet coupler and said second outlet coupler within said hose by use of said water flow restrictor, said increase in water pressure automatically expanding said inner tube member longitudinally along a length of said inner tube member and laterally across a width of said inner tube member thereby increasing a length and width of said hose to an extended condition and automatically contracting said hose to a decreased or relaxed length and width by removing said water pressure differential between said first coupler and said water flow restrictor, whereby said inner tube member moves with respect to said outer tube member when there is no water pressure differential between said first coupler and said water flow restrictor.
12. A garden hose comprising:
a flexible non-elastic elongated outer tube having a first end and a second end, an interior of said outer tube being substantially hollow;
a flexible elastic elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow;
a first coupler secured to said first end of said inner and said outer tubes;
a second coupler secured to said second end of said inner and said outer
said first coupler coupling said hose to a source of pressurized water, said second coupler coupling said hose to a water flow restrictor, wherein the water flow restrictor includes a nozzle and an internal valve that permits, limits, and stops a flow of water through the nozzle;
whereby, when water under pressure is introduced into the first end of the hose, said elongated inner tube expands longitudinally along a length of said inner tube, and expands laterally across a width of said inner tube, and decreases in wall thickness, thereby increasing a length of said hose to an expanded condition; and
wherein the water flow restrictor is configured to vary the amount of restriction of the water under pressure that is released from the water flow restrictor while maintaining the length of the hose in the expanded condition.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59
at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
The Problem to be Solved
The opponent has identified the problem to be solved as the following statement in paragraph [0004] of the specification:
“Therefore, what is needed in the art is a hose that can be automatically contracted and reduced in length when not in use, automatically expanded and extended to a length which is practical for use, and automatically returned to the reduced length when not in use. Also, a hose which is relatively light in weight and will not kink when taken from storage and filled with fluid for use”.
In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the Full Federal Court held at [203] that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
While the opponent has not established that this problem was common general knowledge, a similar problem is being addressed in document D1, which is one of the documents being relied upon by the opponent for establishing that the claimed invention is lacking in inventive step. In the absence of any submissions from the applicant, I am satisfied that paragraph [0004] is a statement of the problem to be solved.
Lack of Inventive Step in light of Common General Knowledge (CGK) only
The opponent has submitted that the claimed invention lacks an inventive step in light of the CGK in the art and relies on Professor Armfield’s evidence to support this submission.
Professor Armfield has set out in his declaration what he considers would have been CGK to persons skilled in the art as at the asserted priority date of the opposed application and how he would have gone about solving the problem of designing a garden hose that can automatically expand and extend in length when in use and automatically returned to a reduced length when not in use.
Some of the CGK he has identified include the following:
·Garden hoses are usually about 13 mm in internal diameter and have a wall thickness of 2-3 mm.
·They are generally fitted with couplers for coupling to standard hose fittings on garden taps and also to a water discharge nozzle.
·The nozzles can vary the quantity of water discharged and even totally stop the discharge.
·The hose will be subjected to pressure forces as a result of the water flowing through it
·Such pressure forces can make the hose expand both axially and radially if the material use to construct the hose are sufficiently elastic to allow such expansion.
·The hose should be constructed of a material that is waterproof.
·It should also be sufficiently resistant to photo-degradation
·It should be able to resist the internal pressure forces without bursting.
·Elastic polymers are waterproof, flexible, elastic and robust but it is not resistant to photo-degradation. It will also expand both radially and axially when made into a hose.
·An anisotropically elastic material will expand more in one direction than the other and can be made to expand primarily axially when made into a hose.
Professor Armfield then states how he would have solved the problem of making a garden hose that is self-elongating under pressure.
He states he initially considered constructing the hose from a flexible waterproof material incorporating an embedded coil spring such that in the relaxed state the waterproof material would be gathered into folds by the spring. However he says that such a hose would not be sufficiently robust as a strong spring would be too stiff to achieve any significant elongation.
He further states that while it would be ideal to make the hose using an anisotropically elastic material, he was not aware of any such anisotropically elastic material that would also possess the other properties for a garden hose and that it would require significant research to identify such a material.
He then states that for these reasons he would chose elastic polymer as the material for the hose. However as such a polymer would expand both axially and radially when made into a tubular hose, its radial expansion would need to be constrained. He says he would do this by encasing the elastic polymer tube in a loose fitting outer hose made of a synthetic canvas or similar material that is flexible, light, resistant to photo-degradation and abrasion and is able to be folded and gathered into a shorter length. He states that he would fit couplers to both ends of the hose by using a hose clamp to fasten both the inner and outer hoses to a solid tube with inner diameter approximately the same as the desired inner diameter for the expanded hose. He would also then provide a nozzle at one end of the hose to control the flow of water through the hose.
The opponent has submitted that such a hose that Professor Armfield states he would have designed would have all of the features of the claimed invention which therefore lacks an inventive step.
While Professor Armfield’s evidence is uncontested and on the face of it would strongly suggest that the claimed invention is not inventive, there are things that bother me in relation to his evidence.
Firstly, Professor Armfield gave evidence in the Federal Court proceedings in relation to the innovation patents that I have referred to earlier and hence he was very much aware of the present invention even if he did not have knowledge of how the claims had been drafted in the application in suit. A quick perusal of these innovation patents clearly reveals that the drawings and the description of the preferred embodiments are identical to that of the application in suit. So it is clear that Professor Armfield knew what the invention is even before he was asked to state how he would have solved the problem of the application in suit.
Secondly, as he admits there are a number of other approaches that could be taken to solve the stated problem, including using a coiled spring or using an anisotropically elastic material. While he does state why he rejected those other approaches, in my mind there is still a doubt whether the knowledge of the present invention could have played a role in rejecting these other approaches. For example he has stated that it would be ideal to use an anisotropically elastic material but only rejects it on the basis that it could involve significant additional research to identify and make such a material. Design of a new product can often involve significant research and development and I am not entirely convinced that this would be a reason for rejecting this approach.
The High Court in Alphapharm (supra) has warned against the misuse of hindsight noting that the danger of such misuse will be "particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known". In that regard, the court referred with approval to Lord Diplock's comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362):
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398 Beach J noted:
“An egregious form of impermissible hindsight has been the situation where a witness has been shown the patent specification in suit at a stage prior to that witness giving evidence that there was no inventive step involved.”
In view of these lingering doubts, I am not satisfied that it is clear or practically certain that the claimed invention lacks an inventive step in light of the common general knowledge in the art.
D2: US 6523539 (McDonald) in light of the CGK
The opponent has also submitted that the claimed invention is lacking in inventive step in the light of prior art document D2 and the CGK.
Document D2 relates to a stowable self-elongating hose for use with oxygen masks in aircrafts and its disclosure can be easily understood through figures 2 and 3 which are reproduced below:
Hose assembly 14 is provided at one end with a threaded hose fitting 32 that is coupled to an oxygen mask 12 which is adapted to be fitted over the nose and mouth of a wearer and at the other end with another threaded hose fitting 34 that may be coupled to an oxygen supply. Hose assembly includes an inner, resilient, expandable tube 30 and an outer sheath 36 of woven or braided material that is two to three times the length of the inner tube 30. The sheath is secured to the ends of the hose through crimp ferrules 38. The self-elongating hose works in a similar manner to the claimed invention in that pressurised oxygen expands the tube 30 in both radial and axial directions but as the radial expansion is restricted by the outer sheath, the tube expands mainly in the axial direction thereby increasing in length.
The opponent submitted that the hose assembly described in D2 can also be applied successfully to other fluids including water and the person skilled in the art would be motivated to use the self-elongating hose described in D2 for a garden hose and armed with the design and manufacture common general knowledge would make necessary modifications as required to be directly led as a matter of course to a garden hose that will automatically elongate and contract in length.
Subsection 7(3) of the Act requires that for D2 to be relied on for establishing lack of inventive step, it must be a document that the person skilled in the art would have ascertained, understood and regarded as relevant.
In relation to this requirement, the opponent has stated as follows at [78] and [79]:
As already described above, the relevant technology is one in which it could be reasonably expected that a person skilled in the art would consult patent literature (Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26).
The opponent’s expert, Professor Armfield, indicates in his evidence that in addition to consulting mainstream marketing literature and on-line databases and conference attendance, he would have also obtained his knowledge from patents because of the commercial relevance of patents to fluid flow devices. Accordingly, each one of the prior art documents could have been readily ascertained by the person skilled in the art.
While in Emperor Sports the Full Court generally accepted the correctness of the practice of the Patent Office that “Examiners should generally proceed on the basis that it would be reasonably expected that the person skilled in the art would conduct a search of patent literature, including the patent specifications of major countries, and that [subject to certain exceptions not relevant for present purposes] any patent document located in a patentability search would reasonably be expected to be ascertained by the person skilled in the art.”, the Court also held that “...when identification of the relevant prior art is in dispute it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office.”
Further as noted by the delegate in NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited [2017] APO 29, the practice in the Patent Office Manual of Practice and Procedure simply reflects the reality that sometimes during examination an examiner will have neither of those resources available to them whereas in opposition proceedings that should not normally be the case, especially where the opponent is relying on expert evidence.
Although the opponent has stated in their written submissions that Professor Armfield has indicated that he consults patent literature, they have not provided any reference as to where in his evidence he has stated this and I was unable find any such statement in Professor Armfield’s evidence.
I am not satisfied that the opponent’s evidence clearly establishes that the non-inventive skilled worker in the art of garden hoses would look at patent documents when trying to design a new garden hose. Even if I am wrong on this point and they would, it is only logical that they would restrict their search of patent documents to the art of garden hoses.
D2 relates to a hose for carrying oxygen to a face mask in aircrafts. There is absolutely nothing in this document to suggest that the disclosure of this document could be applied to hoses for carrying water. The requirements for a garden hose would be substantially different to that of an oxygen hose. Therefore even if the skilled worker would have consulted patent documents it is unlikely they would have ascertained document D2, and even if they did they would not have considered it relevant to designing a garden hose.
The opponent has failed to discharge the onus of proof upon it to establish that D2 is a document that would have been ascertained, understood and regarded as relevant. Therefore document D2 does not constitute prior art information for consideration of inventive step. There is therefore no basis upon which to conclude that the claimed invention lacks an inventive step over D2.
D2 in combination with D1 (US 7549448) in light of the CGK
The opponent has also submitted that the claimed invention lacks an inventive step over the combined disclosures of D2 and D1 in light of the common general knowledge. While D1 relates to a self-extending garden hose it does not include inner and outer tubes like the claimed invention instead relying on a coiled spring that is either internal or external to the body of the elastic hose for providing the biasing force for retracting the hose in its relaxed state. Even if this document had been ascertained, the opponent has only relied upon its disclosure in combination with that of D2 which I have already found would not been ascertained or regarded as relevant. It follows that the opponent’s case for lack of inventive step based on the combination of these two documents also fails.
CLARITY
Before I discuss the clarity issues raised by the opponent, it is useful to note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
The opponent submitted the definitions “said water flow restrictor creates an increase in water pressure between said inlet coupler and said outlet coupler" in claim 1, “creating an increase in water pressure between said first inlet coupler and said second outlet coupler within said hose by use of said water flow restrictor” in claim 8 and “the water flow restrictor creates 35 psi excess water pressure in the hose” in claim 14 are not clear because a flow restrictor cannot create an increase in water pressure between an upstream coupler and a downstream coupler.
The same construction issue was also considered by the Federal Court (which was reaffirmed by the Full Court) where Middleton J having considered the evidence of the expert witnesses Professor Armfield and Mr Hunter found that by taking a common sense approach in the context of a garden hose, the corresponding integer 1.7 in the innovation patents would be properly interpreted to require that the water flow restrictor causes an increase in water pressure between the two couplers and it was this overall water pressure increase from the hose’s original condition (prior to attachment to the faucet) to its pressurised condition that led to the expansion of the inner tube member.
I can see no reason to not adopt this construction of the Federal Court. These phrases in the claims are clear.
The opponent has also submitted that the definition of “by removing said water pressure differential between said first coupler and said water flow restrictor" in claim 8 is unclear because firstly there is no antecedent for “said water pressure differential” and secondly as stated by Professor Armfield “In the case when there is no flow because the nozzle is closed, the pressure at the first coupler is the same as that at the restrictor, and will be at the pressure of the mains water supply, so the hose will remain expanded. The pressure differential is not the feature of the fluid that expands the hose, rather it is the pressure itself”.
Claim 8 first defines that an increase in water pressure between the inlet coupler and the outlet coupler causes the inner tube member to automatically expand in length but then goes on to define that the removal of the water pressure differential between the inlet coupler and the water restrictor automatically contracts the hose. Clearly as pointed out by the opponent, there is no earlier reference in this claim to creating a water pressure differential between the inlet coupler and the water restrictor, only a reference to increasing the water pressure between the inlet and outlet couplers. Hence when read in isolation there is certainly some ambiguity as to whether the definition “by removing said water pressure differential between said first coupler and said water flow restrictor" is indeed a reference to the water pressure differential or a reference to removing or decreasing the water pressure between the inlet and outlet couplers. However this ambiguity can be readily resolved by referring to the body of the specification where it discloses that it is the reduction of the pressure within the hose that leads to the contraction of the inner tube (paragraph [0053] for example). This is also clear from claim 1 which defines that the hose contracts to a decreased length when there is a decrease in water pressure between the inlet and outlet couplers. Claim 8 would therefore be clear to the skilled addressee.
It has also been submitted that claim 15 lacks clarity as there is no antecedent for the term “the outer sleeve”. In my view, it would be readily understood by the skilled addressee that the reference to “sleeve” is intended to be a reference to “tube”. This claim is clear.
It has also been argued that claim 18 is not clear as there is no antecedent for "the unattached, unbonded, unconnected and unsecured non-elastic outer tube…". While I accept there is no antecedent, when the claims are read in the context of the specification as a whole, it clear that this claim is also defining that the outer tube is unattached, unbonded, unconnected and unsecured to the inner tube. This claim is clear.
FAIR BASIS
Subsection 40(3) requires that the claims be fairly based. A claim will lack fair basis if it is not consistent with what the specification as a whole describes as the invention. The general principle for fair basis is set out in Kimberly-Clark Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at 15 as:
“where the issue is one under a 40(3) of ‘fair basing’ of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”.
The assessment requires a consideration of whether there is a “real and reasonable disclosure” of the invention as defined by the claim, or whether the claims “travel beyond the subject matter of the invention”.
The opponent has submitted that claim 1 is not fairly based as the features "a first sleeve over said outlet tubular extension section for securing a first open end of said outer tube member to said inlet coupler" and "said outlet coupler having a sleeve over said outlet tubular extension section for securing a second open end of said outer tube member to said outlet coupler" have no basis in the specification. They have argued that the sleeves, 26 and 27 are expansion restrictor sleeves and do not secure the open ends of the outer tube to the couplers.
The relevant part of the specification where it describes how the male coupler 16 is secured to the hose reads as follows.
In Fig. 7 the male coupler 16 includes a plurality of threads 20. The male coupler 16 also includes a tubular extension 32 which extends into the interiors of the inner tube 14, the outer tube 12 and the expansion restrictor sleeve 26. The tubular extension 32 has a hollow interior 34 through which fluids can flow. A securing device 34 encompasses the outer sleeve 26, the outer tube 12, and the inner tube 14 and secures these elements to the tubular extension 34. [0054]
From this paragraph and figures 7 and 8, it is clear that the end of the inner tube sits over the tubular extension 32, the end of the outer tube sits over the inner tube, the sleeve 26 sits over the outer tube 12 and finally the securing device 34 sits over the sleeve to secure the sleeve, outer tube and inner tube to the tubular extension of the coupler. While it is the securing device sitting on the sleeve that secures all these elements together, it is clear that the sleeve sits over the end of the outer tube and in that respect it also contributes to securing the outer tube to the coupler. On that basis I do not think that this feature in the claims travels beyond the matter disclosed in the specification.
The description of the female coupler is similar and therefore this feature in the claim also does not travel beyond the matter disclosed in the specification.
The opponent has also submitted that there is no basis in the description for the feature "the outer tube member be irregularly wrangled in its contracted state" in claim 1.
While the body of the specification does not specifically use the term “irregularly wrangled”, it does state that “As can be seen in Fig. 8, the soft fabric outer tube 12 is not smooth, but folded, compressed and tightly gathered around the circumference of the inner tube 14,…..” [0055]. Furthermore when one looks at figure 6 that is reproduced below, it is clear that the outer tube is irregularly wrangled.
Claim 1 is fairly based.
CONCLUSION
None of the grounds of opposition have been made out. The claimed invention is clear, fairly based and inventive.
COSTS
Costs generally follow the event and as the opposition is unsuccessful, the applicant should be entitled to costs. Although the applicant has chosen not to file any evidence of its own or to participate in the hearing, they would still be entitled to certain costs under Schedule 8. I therefore award costs according to Schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents
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