KARL GUSTAF ROSEN

[1989] APO 30

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 52349/86 in the Name of KARL GUSTAF ROSEN

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

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         An International Application was filed on 4 December 1985 in the name of Karl Gustaf Rosen for patents for an invention entitled "Method and Device for Reducing the Risk of Disturbing Noise from Small Children".  On notice of receipt of the record copy of the International Application by the International Bureau, the Australian Patent Office designated the application as No. 52349/86.  After entering the National Phase the application was examined and a first report issued on 11 April 1988.  Subsequently, most of the examiner's objections were overcome by proposed amendments to the specification.  However, one amendment proposes a new set of claims and the examiner objects that three of these proposed claims include matter not in substance disclosed in the specification as lodged and that consequently the amendment is not allowable under section 49(4).  On 28 June 1989 the applicant lodged a request under regulation 19D for exercise of the Commissioner's discretionary powers.  The application entered a state‑of‑lapse on 11 July 1989

but was subsequently revived by applications under sub‑section 54(1B) for extension of the period of acceptance.
Specification
         The specification as lodged indicates that the invention relates to reducing the noise disturbance caused by crying infants.  The "background art" on page 1 of the specification refers to the pacifying effect of cradles and the frequency limits of motion thereof, vibrating motel beds and the discomforting low frequency vibrations transmitted thereby through buildings, the effect of vibrations on the human body and intestinal cramp in infants.  The first paragraph on page 2 reads as follows:

"The present invention is therefore directed to diverting the cause of irritating noise from small children.  Knowledge about cramp provides the solution where children should be subjected to types of vibrations which relieve the attacks of cramp.  It has been found particularly suitable in this context that the frequency used for treatment should be in the region of 800‑2000 vibrations per minute.  The purely technical problem is subjecting the child's intestines to a pulsating mechanical load while at the same time preventing this pulsating movement from being transmitted to the surroundings as an environmental inconvenience of a type other than a child's crying."

Under the heading "Disclosure of the Invention" the second paragraph on page 2 reads as follows:

"The concept according to this invention means that the child's place of rest, which may be a bed or a perambulator, is subjected to vibrations from some form of vibrator.  Since the child as such cannot be treated directly and the intention is to gain the greatest possible degree of efficiency without disturbing the environment, a small motor is used.  Despite this, vibrations still occur outside the area of rest.  The result of the invention must be that these vibrations are attenuated.  Thus the present invention includes the addition of attentuation with respect to the surroundings.  In purely mechanical terms this means that the place of rest is placed on an attenuating base."

A "Mode for Carrying Out the Invention" then describes an arrangement using a motor and eccentric disc attached to an infant's bed, with the "environmental inconvenience" of the noise caused by the vibrating bed attentuated by urethane foam placed under the legs of the bed.  A second arrangement involves attaching the motor to a perambulator with attenuation being achieved by polyurethane foam or soft wheels.
         Two sets of claims are included in the published PCT pamphlet which serves as the specification for the Australian application; viz. the claims as originally filed with the International Bureau and amended claims received on 10 April 1986 by the Internatonal Bureau.  The two independent method claims read as follows:

"1.A method of reducing the risk of interfering noise and particularly cries from small children characterised in that the child's place of rest such as its bed or perambulator, is subjected to mechanical vibrations in a known way and at the same time the child's place of rest, at all fixed positions of contact with the surroundings, is supported by soft vibration‑attenuating layers." (4.12.85)

"1.A method of reducing the risk of disturbing noise and particularly cries from small children characterised in that the child's place of rest such as its bed or perambulator is subjected to mechanical vibrations within the frequency range of 800‑2000 vibrations per minute in a known way and at the same time the child's place of rest at all fixed points of contact with the surroundings is supported by soft vibration attenuating layers." (10.4.86)

Amendment item No. 6 proposed the following claims, inter alia:

"1.A method of reducing the risk of small children crying comprising applying to a child's resting place mechanical vibrations having a substantially single frequency in the range from 800 to 2000 vibrations per minute.

2.A method according to claim 1, including the step of simultaneously attenuating the vibrations at all points of contact between the resting place and its surrounds.

3.A method according to claim 1 or claim 2, wherein the mechanical vibrations are generated by a motor with one or more imbalances on its axle or axle connected to the motor axle by mechanical means.

10.A method according to any one of claims 1 to 3, wherein the resting place is a bed or perambulator." (20.3.89)

Claims 4‑9 and 11 relate to apparatus and are now not the subject of the examiner's objections.
Objections and Submissions
         The examiner objects that claims 1, 3 and 10 include matter not in substance disclosed in the specification as lodged because the essential feature relating to attenuation has been deleted from claim 2.  The examiner argued that the specification as a whole indicates that attenuation is essential to the invention; he referred to the original claims, lines 18‑22 on page 2 referred to above, and the following parts of the specification where the importance of attenuation is emphasised:

Page 4, part of the third paragraph:

"Within the interwal [sic] tested for vibration frequencies there is a range of frequencies which is very easy to transmit throughout a building.  Even if the child's cry reaches the level of an environmental inconvenience it is inappropriate to remove one sorce [sic] of noise and then introduce another.  Thus the reduction of interfernce [sic] at the child's place of rest is therefore a necissity [sic] and a significant part of the invention.  The actual attenuating device's design is something that every person skilled in the art could produce."

Page 5, last paragraph:

"The present invention illustrates a method and a device for combatting children's cries by introducing vibrations, which in themselves have an interfering effect on the child's place of rest.  The invention means that even this interference is attenduated with urethane foam or similar device. [sic]  Thus the invention means that interference with a number of different interference frequencies is counteracted with a frequency where the latter's transmission through a building is carefully attenuated in the vicinity of the source."

The examiner indicated that "it is not permissible to exclude from a claim a feature which is construed to be essential to the invention" and referred to International Playtex Corporation's Application [1969] RPC 362 at 363, Garrod's Application [1968] RPC 314 at 317 and paragraphs 49.22 to 49.25 of the Patent Examiner's Manual.
         The applicant's attorney submits that the broader form of the invention, the subject of claim 1 as presently proposed to be amended, is disclosed in the specification as lodged.  He argues that the first paragraph on page 2 of the specification indicates that the invention in its broadest form is the discovery that the particular frequency range of vibrations relieve attacks of cramp in infants.  On the reference to the attenuation feature in paragraph 1 on page 2 he states:

"The words used to describe this feature clearly indicate that they do not form part of the primary discovery nor are they necessary for achieving the primary objective which is reducing the risk of small children crying."

He distinguishes Playtex's Application, supra, by suggesting that in the present case the applicant has not sought to amend the specification by excluding a statement relating to the object of the invention.  Also he submits that in the present case "there is a clear disclosure of the invention that the applicant now seeks to claim" which was not the case in Garrod's Application, supra.  In his more recent submissions he also argues that if a particular form of an invention is found to be not disclosed in the specification as lodged then it could be the subject of a patent of addition, but that in this case the broader form of the invention, as defined in proposed claim 1, would not be suitable subject matter for a patent of addition.
Decision
         From a reading of the specification as a whole, I deduce that the object of the invention is to reduce the environmental noise caused by an infant's crying.  This is achieved by a combination of the ideas of using specified low frequency vibrations to pacify the infant and attenuating the vibrations to avoid disturbing the environment.  The applicant's submissions have over‑
emphasised the first paragraph on page 2 of the specification as lodged; the whole specification leads the addressee to believe that attenuation is an essential feature of the invention. In the applicant's own words: "it is inappropriate to remove one sorce [sic] of noise and then introduce another". In B& R Relays Ltd.'s Application [1985] RPC 1 the UK Patents Court, in similar circumstances to those in the present case, held that:

"The question to be asked was whether the skilled person would find in the original description an indication that it was important to have the features now sought to be deleted."

Applying this test to the present case, I think that the addressee of the specification would clearly find indications that it is important to attenuate the vibrations in order to reduce environmental noise.
Having established that the proposed amendment to claim 1 would delete an essential feature of the invention, I will now consider the consequences of such an amendment. In this matter I am led by precedent; the judgements in Playtex's Application, Garrod's Application, B & R Relays' Application, supra, and the decision of the Australian Patent Office in A.B. Volvo's Application (1983) 1 IPR 554, clearly indicate that a specification can be construed as claiming matter not in substance disclosed where an amendment is proposed to delete an essential feature from the claims. Also, the law associated with fair basis can be considered in the present circumstances; since, if an amended claim is claiming matter in substance disclosed as lodged, then in effect that claim also has to be fairly based on the specification as lodged. An apposite case on fair basis is Mergenthaler Linotype Co.'s Application [1958] RPC 278 in which the claims of the specification were found to be not fairly based because they did not embody the inventive idea. The circumstances of the case are referred to in the Patent Examiner's Manual paragraph 40.66 thus:

"The invention lay in a photographic type‑composing machine in which a beam of light was directed through different parts of a font plate.  There were included claims to a font plate containing desired characters in a regular arrangement.  However, only when operating in combination with the other parts of the machine did the font plate embody the inventive idea and the functioning of the combination was essential for the invention."

In the present case the inventive idea lies in the combination of using specified low frequency vibrations to pacify the infant and attenuating the vibrations to avoid disturbing the environment.
Finally, I do not share the applicant's attorney's concern that claim 1, as proposed to be amended, would not be suitable subject matter for a patent of addition. It is known that the provisions of section 72 may be used to effectively broaden the main invention by omission of a feature, the omission thus constituting the modification required by section 72. In Hughes Tool Company v. Ingersoll‑Rand Co. Ltd. [1977] FSR 406, referring to section 26 of the UK Patents Act 1949, Graham J of the UK High Court stated at 419:

"There is, however, legally no reason why, though its name may suggest the contrary, a patent of addition should be more limited in scope than its parent.

The broadest aspect of an invention is not necessarily discovered until after the first application for the original invention, i.e. the parent application, has been made.  There is nothing in section 26, governing patents of addition, which imposes any such limitation.  The section, in fact, makes it clear that though a patent of addition must be in respect of a modification or improvement in an earlier invention, the main effects are to give the patent of addition the same expiry date as that of the main patent, to remit renewal fees in respect of it, and to protect it from being attacked for obviousness on the basis of the main patent."

Conclusion
         I find that proposed aclaims 1, 3 and 10 include matter not in substance disclosed in the specification as lodged and therefore proposed amendment item 6 is not allowable under sub‑section 49(4).

(J.I. WELSH)