John Stanley Melbourne v Terry Fluid Controls Pty Ltd

[1994] APO 78

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 617512 in the name of JOHN STANLEY

MELBOURNE

Title:    VALVE DEVICE

Action            :    Opposition by TERRY FLUID CONTROLS PTY
  LTD under sub-section 104(4).

Decision:    Issued            .  Opposition fails,

amendments allowed.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 617512 by JOHN STANLEY MELBOURNE and opposition by TERRY FLUID CONTROLS PTY LTD under Section 104(4) of the Patents Act 1990.

background

Patent application 617512 by John Stanley Melbourne for an invention entitled "Valve Device" was filed on 24 August 1989 as Application 40204/89.  The application was advertised accepted on 28 November 1991 and a notice of opposition was filed by Terry Fluid Controls Pty Ltd on 28 February 1992.

A request under Section 104 to amend the accepted specification was filed on 9 July 1992 and the granting of leave to amend was advertised on 5 November 1992. An opposition under Section 104 to these amendments was filed on 3 February 1993 and the matter was set down for hearing in Melbourne on 17 February 1994. The applicant was represented by Mr Robert Cross Patent Attorney of
PHILLIPS ORMONDE & FITZPATRICK and the opponent was represented by Mr Greg Noonan Patent Attorney of DAVIES COLLISON CAVE.

Further regarding the opposition under Section 59 the Delegate by a direction dated 13 October 1992 has directed that the time for serving evidence in support will expire 2 months and 2 weeks from the date of allowance, withdrawal or refusal of the amendments proposed under Section 104.

the specification as filed

The specification as filed is directed to a valve stem in which there exists a transition from the main surface of the stem to an undercut portion of lesser diameter. The prior art is described as making an abrupt transition from the main surface to the undercut portion and has slightly rounded shoulders adjacent the main surface. The specification is directed to the merging and smooth transition of the main surface and the undercut portion by use of extended shoulders whereby bushes of harder material can be used giving, it is said, a ten fold increase in the rating of the valve device using this stem. In a preferment the shoulders have a radially outer convex portion and a radially inner concave portion. A further preferment provides for a line of inflection between these two portions. Preferred radii for the line of inflection are specified.

The specification as filed ends with 12 claims. Claim 1 of which reads as follows:

"1. A valve stem for a fluid control valve, said valve stem comprising a main surface and at least one undercut portion, the undercut portion merging with the main surface of the stem by means of respective shoulders which, over the radial extent thereof, provide a smooth transition from the main surface to the undercut portion."

the specification as accepted

The specification as accepted also ends with 12 claims. Claim 1 of which read as follows:

"1. A valve stem for a fluid control, soft-seated spool valve, said valve stem comprising a main peripheral surface and at least one undercut portion, the undercut portion at each end thereof being axially spaced from, and merging with, the main surface of the stem by means of respective shoulder which provides a smooth transition from the main surface to the undercut portion; wherein each shoulder curves smoothly from the main surface such that, viewed in an axial section of the stem, the shoulder has a convex radially outer portion; and wherein each shoulder has an extent axially of the stem, from the main surface to the undercut portion, along which its radius decreases smoothly and without a step-wise reduction in radius."

The specification as proposed to be amended

The amendments proposed to the specification seek to replace the claims as accepted with a new set of claims and to make corresponding changes to the description.

Proposed claims 1 to 9 read as follows:

"1. A valve stem for a fluid control, soft-seated spool valve, said valve stem comprising a main peripheral surface at which the stem has a transverse cross-section of radius R and at least one undercut portion at which the stem has a transverse cross-section of radius R', the undercut portion at each end thereof being axially spaced from, and merging with, the main surface of the stem by means of respective shoulder which provides a smooth transition from the main surface to the undercut portion; wherein each shoulder curves smoothly from the main surface such that, viewed in longitudinal axial sections of the stem, the shoulder has a convex radially outer portion; wherein each shoulder has an extent axially of the stem, from the main surface to the undercut portion, along which its radius decreases smoothly and without a step-wise reduction in radius; and wherein each radially outer portion has a radius of curvature Rc in the axial sections of the stem such that the ratio of Rc to R is in the range of from 0.75:1 to 3:1; each radially outer portion having an arcuate extent from the main surface such as to terminate on a transverse circle having a radius not greater than the average of R and R'.

2.  A valve stem according to claim 1, wherein each shoulder is such that, viewed in said axial sections, the shoulder has a concave, radially inner portion.

3.  A valve stem according to claim 1 or claim 2, wherein the ratio of Rc to R is in the range of from 1:1 to 2:1.

4.  A valve stem according to any one of claims 1 to 3, wherein a change in curvature from a radially outer portion to a respective radially inner portion occurs around a circumferential line of inflection.

5.  A valve stem according to claim 4, wherein the line of inflection is on a circle having a radius approximately equal to the average of R and R'.

6.  A valve stem according to claim 4, wherein the line of inflection is on a circle having a radius which is less than the average R and R' by not more than 30% of the difference between R and R'.

7.  A fluid control device, comprising a soft-seated spool valve having a valve stem in accordance with any one of claims 1 to 6.

8.  A valve stem according to claim 1, substantially as herein described with reference to the accompanying drawings.

9.  A fluid control valve device according to claim 7 substantially as herein described with reference to Figure 1."

the grounds and particulars of the opposition

The ground of opposition to the amendments given in the statement filed by the opponent was that the amendments were not allowable for the reasons set out in section 102 of the Patents Act 1990. The opponent set out several particulars, these were:

1. The feature of the last four lines of claim 1 as proposed to be amended ("each radially outer portion... and R'") results in the complete specification claiming matter which was not in substance disclosed in the specification as filed.

2. The aforesaid feature, by referring to termination of the arcuate extent on a transverse circle having a radius not greater than the average of R and R', allows for a flat intermediate zone between the radially outer and radially inner portions. The complete specification as filed and as accepted specifically disclosed and claimed only a line of inflection between the two portions.

3. The requirement in Claim 1, as proposed to be amended, that the radius of the "transverse circle" be "not greater than" the average of R and R', comprises a feature which was not disclosed in the complete specification as filed or as accepted. Furthermore, this feature contradicts Claim 8 as filed and as accepted, and is not a combination of Claims 7 and 9.

4. The feature of the last four lines of claim 1 as proposed to be amended ("each radially outer portion ... and R'") results in Claim 1 being not fairly based on the complete specification as filed or as accepted, and not entitled to the date of filing  of the complete specification as its priority date.

5. The feature of the last four lines of claim 1 as proposed to be amended ("each radially outer portion ... and R'") results in Claim 1 not complying with sub-sections 40(2) and 40(3) of the Patents Act 1990, because Claim 1 is then not fairly based on the matter described in the complete specification, and because Claim 1 does not then define the invention.

decision

In considering what in fact is disclosed in the specification it normally is necessary to consider what interpretation a skilled addressee would place upon the specification and claims and consequently what latitude is placed upon that disclosed. Here however no evidence has been filed in regard to the interpretation of a skilled addressee and consequently I must follow the general rules of construction for example as set out by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385. Accordingly in arriving at my decision I have relied primarily on the ordinary meaning of the language used in conjunction with the disclosure of the specification.

In the present case it is the last four lines of proposed claim 1 that are in contention. This reads as follows:

"each radially outer portion having an arcuate extent from the main surface such as to terminate on a transverse circle having a radius not greater than the average of R and R'."

In substance disclosed

The first point made by the opponent is that the amendments are not allowable under section 102(1), ie that the matter claimed is not in substance disclosed.

In his judgement in United-Carr Incorporated's Application [1971] RPC 23 Whitford J. held that it was not unreasonable to adopt the principles of Mond Nickel Company Ltd's Application [1956] RPC 189 in comparing the proposed claim with the specification as lodged to determine whether the matter was "in substance disclosed". If the proposed claims are fairly based then the amendments should be allowed.

The Mond Nickel Rules give guidance here in determining fair basis. They are;

1. Is the alleged invention as claimed broadly described in the specification?

2. Is there anything in the specification which is inconsistent with the alleged invention as claimed?

3. Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?

The specification as filed discloses,

"[A] valve stem comprising a main surface and at least one undercut portion, the undercut portion merging with the main surface of the stem by means of respective shoulders which, over the radial extent thereof, provide a smooth transition from the main surface to the undercut portion. The shoulders preferably curve smoothly from the main surface such that, viewed in axial section, the shoulder has a convex, radially outer portion and a concave, radially inner portion."

"The shoulder may curve smoothly from the radially outer to the radially inner portions thereof such that, when viewed in section, there is a point of inflection between those portions. However, the shoulders of course are of annular form when viewed axially and the change in curvature occurs around a circumferential line of inflection."

"The line of inflection preferably is on a circle having a radius approximately equal to the average of the transverse cross-sectional radii of the main surface and the undercut portion. However, the radius of the circle may exceed such average by up to about 10% of the difference in radius between the main surface and the undercut portion. Such variation most preferably is not more than 5% of that difference. However, the line of inflection may have a radius substantially less than the average of the radii of the main surface and the undercut portion; the line of inflection having a radius of, for example, up to 30% less than such difference."

Part of the argument put forward by the opponent is that the original specification specifically disclosed and claimed only a line of inflection rather than the termination on a transverse circle as now claimed. This for example allows a flat intermediate zone between the radially inner and radially outer portions.

It is however not true that the original claim and description are limited to a line of inflection. The original claim was in fact very broad, defining only "respective shoulders which, over the radial extent thereof, provide a smooth transition from the main surface to the undercut portion". A line of inflection was clearly only a preferred feature and I believe it would be apparent to a skilled addressee that it was an example of how a "smooth transition" could be achieved and that other arrangements could be used to achieve the desired result as broadly stated.

The situation is I believe one of a permissible "intermediate generalisation" as discussed in Matbro Ltd v Michigan (GB) Ltd (1973) RPC 823. In my view the original disclosure, while having specific embodiments including a line of inflection, comprehends other arrangements within its broad disclosure and I therefore find that the amendment now proposed in relation to the circle of termination is in substance disclosed. In this regard the feature can be said to be broadly described, presents no inconsistency with the original disclosure and does not reflect a characteristic on which the original disclosure was wholly silent. The circular line of inflection is merely a specific example of the terminating transverse circle.

The same I believe can be said of the limitation of the radius of the terminating circle to being not greater than the average of R and R'. Original claim 1 allows a radius anywhere between R and R' so long as the main requirement of a smooth transition is maintained. The limitation of the radius being below the average by up to 30% of the difference between R and R' would clearly have been seen by a skilled addressee as a preferred option; one that may produce better results but which did not characterise the invention.

Thus I find that the proposed amendments comply with the requirements of Section 102(1).

Fall within the scope of the claims before amendment

I do not believe it was the opponent's contention that the amendments breached section 102(2)(a). No particulars were provided in relation to this point and it is in any case plain that the claims as proposed to be amended are a further limitation on the claims as accepted.

Compliance with subsection 40(2) or (3)

The opponent also contends that the amendments contravene section 102(2)(b) in that the amendments are not fairly based on the matter described in the complete specification.

Since the issue of fair basis is related to the matter of substantial disclosure as discussed above, I find that the opposition fails on this ground.

conclusion

I have decided that the opposition fails on all grounds. I therefore allow the amendments proposed in the statement of 9 July 1992.

Following the direction of the Delegate referred to above, the time for filing evidence in support will expire 2 months and 2 weeks from the date of this decision.

costs

The normal rule for the award of costs before the Commissioner is that costs follow the event. I therefore award costs against Terry Fluid Controls Pty Ltd.

Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  PHILLIPS ORMONDE & FITZPATRICK

Patent attorneys for the opponent   :  DAVIES COLLISON CAVE