Kenneth Stanley Cougan v PHB Concepts Pty Limited

[1994] APO 30

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 613859 in the name of KENNETH STANLEY COUGAN

Title:  METHOD OF INSTALLATION OF REMOTE CONTROLLED DOORS

Action            :  Application under s. 69 for an
  extension of term of the petty patent;
  notice by PHB CONCEPTS PTY LIMITED
  under s. 28;  hearing.

Decision           :  Issued            . 

Invalidity ground based on s.40
  established.   Lack of novelty not
  established.  Patentee given an
  opportunity to amend the specification
  to remove the s.40 deficiency.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 613859 in the name of KENNETH STANLEY COUGAN, an application under section 69 for an extension of the term of the petty patent, and notice by PHB CONCEPTS PTY LIMITED under section 28.

background

Petty patent 613859 was sealed on 25 June 1991. The petty patent was granted on an application which was filed on 15 April 1991 as a divisional application from patent application PK1536 and its provisional specification pursuant to section 51 of the Patents Act 1952 ("the 1952 Act"). Application PK1536 was filed on 2 August 1990, which date prima facie constitutes the priority date of the claim of the petty patent.

The patentee KENNETH STANLEY COUGAN ("Cougan") applied for an extension of the term of the petty patent on 25 May 1992.  On
7 July 1992, material was filed by PHB CONCEPTS PTY LIMITED ("PHB Concepts") allegedly against the extension of term of the petty patent.  As this material was filed after the prescribed time, PHB Concepts applied for, and was subsequently granted, an extension of time in which to file the material, thus bringing it within the provisions of section 28(1) of the Act.

It is worth noting at this point that on various dates after
7 July 1992, PHB Concepts filed additional material in relation to the possible validity of the petty patent without seeking any extension of time in which to bring that material within the provisions of section 28(1).

A hearing on the extension of term was set for 12 October 1993 in Sydney.  Cougan chose to rely on written submissions filed in respect of various materials filed by PHB Concepts.  PHB Concepts was represented at the hearing by Mr Fraser Old, patent attorney of Spruson & Ferguson and Mr B J Roberts of PHB Concepts also attended.

THE SPECIFICATION

The invention of petty patent 613859 relates to "a method of installation of remote controlled doors".  The specification refers to and describes the method in relation to garage doors and particularly those which are moved to or from an overhead door-open position.  It is evident from the description that it applies to doors which are either one piece and planar or comprise a plurality of planar panels connected horizontally and in a pivotal manner.
The specification refers to a "conventional method" of operating a door in these terms:

"A conventional method of mounting remote control apparatus or a remote control operator in regard to controlling movement of an overhead garage door is to install such remote control operator above the door and approximately in the centre of the doorway.  Usually an anchor plate is fixed to a centrepoint of a top edge or leading edge portion of the garage door and a link arm at one end is pivotally attached to the anchor plate and at the other end is pivotally attached to a carriage mounted in an overhead track which is located above the doorway and which extends lengthwise of the garage interior coinciding with the centre of the doorway.  The overhead track is normally rigidly mounted to a plate located above the doorway at one end and is attached to an electric motor or power head at its other end.  The motor may be rigidly mounted to a bracket depending from a top wall or ceiling of the garage.  There also may be a pair of side tracks which each may retain a plurality of support rollers which are each attached to an associated side edge of the garage door."

Actuation of the electric motor will cause the carriage to move in one direction along the "centre overhead track" and pull the door in order to open the doorway.  Alternatively it can move the door in the opposite direction to close the doorway.

The specification lists six disadvantages with this conventional mounting apparatus.  One disadvantage is said to be that in some cases there is insufficient headroom above the doorway to mount the apparatus - another is said to be that mounting the power head and support apparatus to the ceiling is cumbersome and expensive and also detracts from the aesthetics of the garage.

The specification then, at pages 4 and 5, refers by number to numerous foreign patent specifications along with reference to three AU specifications one of which is 20711/88. 

The specification indicates that the object of the invention is to provide a method of installation of mounting apparatus for remote controlled doors which may alleviate at least some of the disadvantages described.

The claim defining the invention is as follows.

"A method of installation of remote controlled doors including the following steps:

(i)mounting a track member to a doorway on one side of the doorway and adjacent a top part of the doorway wherein said track member extends into a building such as a garage which incorporates the doorway substantially parallel with and spaced from a path defined by movement of a door installed in said doorway, said track member incorporating a control member movable along the track member  and wherein there is also provided drive means for actuating movement of the control member; and

(ii)connecting said door to said track member by providing link means and pivotally attaching the link means to said door and also to said movable control member whereby said door may open or close said doorway by movement of the control member upon remote controlled operation of said drive means."

The specification in general terms refers to preferred placements of the drive means (eg. at, or laterally of, one end of the track member) and to the type of connections between the drive means and the control member.  Preferred ways and means for linking the control member and the door are also mentioned.  The specification describes some of these features of the apparatus with reference to six drawings, concentrating on the elements linking the control member and the door.  In Fig 4, a track member is shown to the side of a door, the door being of a type having a plurality of panels horizontally interconnected.  The door is further equipped with a series of support rollers which can move in guide tracks which extend along each side of the doorway, turn through 90 degrees at the top of the doorway and then extend perpendicular to the plane of the doorway into the interior of the building containing the doorway.  The track member also extends perpendicular to the plane of the doorway and is below but adjacent to the top portion of a guide track.  Nowhere does the description mention to what the track member and any associated drive means is mounted, ie. it seems that it could be affixed to the wall at the side of the doorway, a side wall of the building, or the ceiling of the building.  The emphasis is on installing the track member at a side of the doorway.

The description concludes with a listing of advantages attributable to the invention.

SECTION 28(1) NOTICE

The Section 28(1) notice was filed by PHB Concepts on 7 July 1992.  It appears to have been prepared by officers of the company and filed without the assistance of professional advice.  The material of the notice comprises a statutory declaration by Barham John ROBERTS with certain attached copies of documents bearing reference markings, and this accompanied a letter by Mr Roberts.  Mr Roberts, of Sydney, is a director of PHB Concepts.

The declaration of Mr Roberts says that PHB Concepts is the owner of Australian patent application 69330/91.  Three grounds are given for the "opposition" to the extension of term of petty patent 613859, namely:

"1.It is our opinion that the petty patent infringes the patent application No 69330/91 referred to above, and owned by PHB Concepts Pty Ltd.

2.The petty patent specifically refers to our patent application No 69330/91 and in doing so, makes a number of incorrect statements and claims.  These are
..... [there follows 6 subparagraphs].

3.The several design features described by the petty patent have been in use in Australia now since 1989, prior to the issue of the petty patent, and hence the subject matter covered in the petty patent is not novel."

In Mr Roberts' covering letter, I note he refers to "application No 69330/91 (International Application No PCT/AU88/00240)" and, as one of the attachments, has annotated a copy of the abstract of the PCT application with "No 69330/91".  Mr Roberts is obviously confused about these applications.   The facts are that

a)PCT/AU88/00240 was filed on 6 July 1988 and became AU application 20711/88.  This application derives priority from PI 2897 (6 July 1987), and had an International publication date of 12 January 1989.

b)AU 69330/91 was filed on 11 January 1991 and derives priority from PJ 8151 (11 January 1990).  Application 69330/91 became open to public inspection on 18 July 1991.

These applications were filed by Insight One Pty Limited but were subsequently acquired by PHB Concepts.

Contrary to what Mr Roberts says, the petty patent specification does not refer to 69330/91.  It does however refer to 20711/88 but only briefly.  I note there are similarities between these two specifications, eg. figures 1 to 7 are the same in each, but there is far more description and many more figures in specification 69330/91.

The subparagraphs to para 2 of Mr Roberts' declaration refer to certain aspects of the apparatus described and claimed in the petty patent specification and makes comparisons with the specification of 69300/91.  As specification 69300/91 was not published before the priority date of the petty patent claim, nor has a patent been sealed on the application, its disclosure can not bring the validity of the petty patent into question.  Thus I do not need to consider application 69300/91 further.

OTHER MATERIAL FILED

On 22 October 1992 Mr Roberts, on behalf of PHB Concepts, filed a further letter claiming certain grounds affecting the validity of the petty patent, the letter being accompanied by a statutory declaration by Mr Roberts.  On 5 November 1992 copies of 3 declarations from persons involved with installing garage doors and remote control apparatus therefor were filed by PHB Concepts: the original declarations were provided at the hearing.  All these documents were filed after the prescribed time for filing a notice under s.28(1) and additionally after 7 July 1992, the date to which PHB Concepts was granted an extension of time to file material under that section.  No extension of time was sought by PHB Concepts to bring this later material within the provisions of s.28(1).

Briefly stated, firstly, this later material asserts that Mr Cougan, the named inventor of the invention of the petty patent, had business dealings before August 1990 with the inventors of the two Insight patent applications identified earlier, which dealings allegedly concerned the "Insight Remote Control Unit".  It is also asserted that Cougan "would have been aware of the Insight Patent application (prior disclosure) as a result of the negotiations," etc.  It is further asserted that the subject of the Insight applications had been disclosed to others before August 1990.   Secondly, the declarations by the 3 installers assert certain knowledge about garage doors and remote control units, two of whom declare that before August 1990 they either fitted or realised remote control units could be fitted at the side of the doors.

SUBMISSIONS

Patentee's submissions

Two submissions on which the patentee relies were filed on his behalf by Cullen & Co, patent attorneys.  The submission dated 28 August 1992 refers to the material of the notice filed on 7 July 1992.  It rejects specification 20711/88 as disclosing "mounting a track member to a doorway on one side of the doorway and adjacent a top part of the doorway".  It also contends that it does not disclose "the track member being substantially parallel to and spaced from a path defined by movement of the door".  The submission also rejects specification 69330/91 as being a relevant prior disclosure in view of its publication date and furthermore rejects some comments by Mr Roberts as irrelevant to the issue of novelty of the petty patent.

A further submission was provided on 2 March 1993.  This repeats most of the previous submissions.  With reference to the material provided by PHB Concepts on 22 October 1992, the submission says this should not be considered as part of the s.28 notice.  The submission further states that "the proprietor of the Petty Patent denies the allegations made in this additional material.  The allegations are unsupported and add nothing further which would support any of the grounds referred to in Section 28 of the Act."

Informant's submissions

At the hearing Mr Old said the informant relied on the grounds of lack of novelty, lack of an inventive step and non-compliance with s.40 requirements as relevant invalidity grounds against the petty patent.

Mr Old submitted that while the material filed by PHB Concepts on 22 October and 5 November 1992 may not fall within the requirements of s.28(1), nevertheless the Commissioner could treat the material within the terms of s.28(3) being "matter that may affect the validity of a petty patent" and consider it in deciding whether to grant an extension of term.  I note here that reg. 6.6 requires the Commissioner to consider any matter of which the Commissioner has informed the patentee under s.28(3).

Regarding the issue of novelty, Mr Old said the informant relied on the PCT specification AU88/00240 or the AU equivalent 20711/88.  He compared the various disclosures of figures 1, 3 to 6 of 20711/88 with the petty patent claim and submitted that the claim lacked novelty.  Whilst the claim defined a method and the earlier specification only described apparatus, he submitted that the apparatus of the citation as described in relation to a doorway and a building was the result of an installation procedure having been carried out.  He argued that the method claimed was not limited to a method whereby the "track member" was mounted to a sidewall of the building or projected normal to the plane of the doorway and was to the side of the door, and did not exclude, as I understood his submissions, a method which resulted in the track member being located above the doorway and attached to the ceiling of a building.

On the issue of whether the invention lacked an inventive step, Mr Old's submission was basically from the position of considering whether a method giving rise to apparatus as shown in figure 4 of the petty patent specification was obvious.  Figure 4 shows a track member parallel with and to the side of a door when in an open position, the track member extending normal to the doorway.  He submitted that if there was a difference between that arrangement and that in 20711/88, ie. a side mounting compared to a centre of the door mounting of the track member, it did not appear to be a difference giving rise to an inventive step.  He submitted that from the evidence filed on 5 November 1992, installers had installed apparatus of the type disclosed in the 20711/88 specification before the priority date of the petty patent and that they had recognised that the apparatus could be installed to the side of the door such as on a side wall of the building adjacent the door when in an open attitude.

As to s.40 requirements, Mr Old submitted that the claim was not fairly based since it extended to methods not contemplated by the specification.  He said the description made it clear that the invention concerned mounting a track member normal to a doorway opening, and in a horizontal position to the side of the door when in its open attitude.

He further submitted that the entire track member could not be mounted "adjacent a top part of the doorway" irrespective of whether the track member was arranged vertically or horizontally, and so the relevant definition in the claim was unclear.  He also submitted that the definition that the track member "extends into a building" lacked clarity - he said it seemed that the invention envisaged the track member extending into the interior of a building and not merely "into a building" which could simply mean into a wall of the building.

DECISION

Admissibility of the Other Material Filed

As previously mentioned, PHB Concepts filed certain material on 22 October 1992 and 5 November 1992.  All these documents were filed after the prescribed time for filing a notice under s.28(1) and additionally after 7 July 1992, the date to which PHB Concepts was granted an extension of time to file material under that section.  As no extension of time was sought by PHB Concepts to bring this later material within the provisions of s.28(1), I cannot consider this material as part of the s.28(1) notice.  If appropriate, this matter may however be considered within the terms of s.28(3).  

A copy of the material filed on 22 October was sent by the Commissioner to the patentee on 28 October 1992.  In preparing to decide this matter, I became aware that the material filed on 5 November 1992 had not been given to the patentee.  The normal practice of the Commissioner is to provide the patentee with copies of any matter of which he becomes aware during the extension of term proceedings even if it is filed by an informant outside the time provided for filing a s.28(1) notice.  In my opinion, for reasons I will give later, the material filed on 5 November 1992 (and also for that matter on 22 October 1992) does not establish or assist an adverse validity finding against the petty patent.  Consequently I have not treated the Other Material as matter within the terms of s.28(3).

Section 40

Crucial to the issues of section 40 and novelty matters is the construction and meaning of the claim.  The method is defined in relation to the environment of a building which has a doorway and a door that can close the doorway.  I take the doorway to mean an opening or passageway in a wall of the building which has a width and a height to match a door which closes the opening.   A doorway has sides, being the lateral boundaries of the opening, and a top and a bottom, being respectively the upper and lower boundaries to the opening, properties defined by the adjacent walls, roof or floor of the building.  Such properties are conventional for a doorway in a building such as a garage, as the claim refers. 

The claim defines

"mounting a track member to a doorway on one side of the doorway and adjacent a top part of the doorway".

Clearly the track member cannot be mounted to the doorway, ie. an opening, and so I take this definition to simply require 'mounting a track member on one side of the doorway'.  In the context defined, I construe "on one side of the doorway" to require the track member to be mounted laterally to one side of the doorway (or opening).  In view of the further requirement that the track member be "adjacent a top part of the doorway", I construe the definition to require the track member to be mounted laterally to one side of the doorway (or opening) and in a region between just above and just below the horizontal line containing the top of the doorway. 

The definition also states, "wherein said track member extends into a building such as a garage .... substantially parallel with and spaced from a path defined by movement of a door installed in said doorway".  Mr Old suggested this could be interpreted as meaning extending into a wall of the building, eg. by having the track member partly embedded in the wall adjacent the doorway.  He also suggested the claim covered methods of mounting the track member not contemplated by the description.  In my view, partly because of this definition, the claim does not clearly define the invention described and is not fairly based.  The claim defines the method in relation to a door which can open or close a doorway.  Insofar as the type of door and nature of doorway involved is not specified, what constitutes "a path defined by movement of a door installed in said doorway" is not apparent and hence the method defined is indeterminate as to the positioning of the track member relative to such path and for that matter the open or closed position of the door.  I note that the description relates to a method concerning overhead type garage doors, and wherein the track member extends normal or substantially normal to the doorway opening or to the door when in a position closing the doorway.  Also from the description it is evident that the invention is limited to mounting the track member to extend into the interior of the building.  I agree with Mr Old that the claim includes methods related to door installations not contemplated by the specification.  Accordingly I consider that the claim is deficient on s.40 grounds.

I believe the deficiency just mentioned can be easily overcome by amendment.  For the purposes of deciding other validity issues concerning the petty patent I will consider the claimed invention as if the claim related to overhead type doors and specified the orientation of the track member as extending into the interior of the building normal or substantially normal to the doorway opening.

Novelty

At issue is whether the petty patent invention lacks novelty given the disclosures in AU specification 20711/88.  This specification was published before the priority date of the petty patent.  Described with reference to 7 figures are various arrangements of drive systems for different garage door installations.  I will briefly summarise these arrangements.

a)Figure 1 shows a roller door with a track member mounted vertically at one side of the doorway and extending the height of the doorway.  A "lifting arm" is attached to the door and this arm mates with a worm drive located in the track member and powered by a drive means. 

b)  Figure 2 shows the drive means and worm drive.

c)Figures 3 to 6 show in side elevation arrangements of drive systems with overhead type doors, ie. where the doors move from a position closing the doorway to a position adjacent the ceiling or overhead within the garage when the doorway is open.  Three different types of overhead type doors are shown in Figures 4 to 6.  In each case the track member of the system is mounted at one end to the wall of the garage above the doorway and mounted to, or suspended from, the ceiling of the garage near its other end.  The track member extends substantially normal to the doorway opening and a link means interconnects the door with the worm drive within the track member.  The figures suggest that the track member is located above the level of the door whether the door be in open or closed position.  The description of specification 20711/88, which I note is rather brief and not completely in accord with the actual number of figures present in the specification, does not mention whether the track member is positioned laterally to a side of the doorway. 

d)Figure 7 shows a track member arranged above a sliding door and extending parallel to the top of the door and doorway.

In considering the question of anticipation, the court in General Tire & Rubber Company v. Firestone Tyre & Rubber Company (1972) RPC 457 said at page 485:

"The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events.

There is no evidence before me from a skilled addressee which assists me in interpreting the disclosure of 20711/88 as of its publication date.  Consequently my summary above is based solely on what the description says and my understanding of what arrangements the figures suggest.

Submissions on behalf of the patentee point to the fact that specification 20711/88 is acknowledged as prior art in the petty patent.  The submission claims that 20711/88 does not anticipate claim 1 "since there is no disclosure of mounting a track member to a doorway on one side of the doorway and adjacent a top part of the doorway".  The submission also suggests that Figure 4 of 20711/88 shows a track member which is "normally located in the centre of the doorway and above the doorway as indicated in conventional overhead sectional doors" (as discussed at the start of the petty patent specification). 

With regard to the disclosure of 20711/88, firstly, so far as the disclosure of Figure 1 is concerned, I am satisfied that no lack of novelty of the petty patent claim arises as there is no disclosure of a "link means" pivotally attached to the door and to the control member (ie. the worm drive).  Secondly, with regard to Figures 3 to 6, the disclosure is not such as to establish that the track member is mounted "on one side of the doorway and adjacent a top part of the doorway", which I have interpreted to require the mounting of the track member to be in a region laterally to one side of the doorway (or opening) and in a region between just above and just below the horizontal line containing the top of the doorway.  In my view, specification 20711/88 does not "contain clear and unmistakeable directions to do what the patentee claims to have invented": General Tire v. Firestone Tyre, (supra), at page 486.  Accordingly, the claim does not lack novelty given the disclosure of specification 20711/88.

Inventive Step

The s.28(1) material contains no evidence as to what was common general knowledge in the art at the priority date of the claim. It is clear from s.7(2) of the Patents Act 1990 that the question whether an invention involves an inventive step has to be considered against the background of the common general knowledge in the art. In the absence of such knowledge I am unable to consider the claim invalid due to a lack of an inventive step.

Observations regarding the Other Material

At this point, for completeness, I will make some observations regarding the Other Material filed by the informant and to which I have referred earlier in this decision.  The declaration of Mr Roberts filed on 22 October 1992 suggests that Cougan had knowledge of developments and patent applications by Insight One Pty Limited before the priority date.  Even if that be so, it does not directly follow that the present invention lacks novelty or lacks an inventive step given Cougan's knowledge of the prior art at the time.  With regard to the three declarations from persons involved with installing garage doors and remote control apparatus therefor, this evidence generally relates to novelty and inventive step validity issues.  These declarations are each short single sheet documents.  The statements therein generally comprise a number of short paragraphs which indicate the declarant's work and experience background and certain knowledge about garage doors and remote control units therefor.

Each declarant refers, by using somewhat similar wording, to "the Insight Remote Control Unit" or "the Insight Unit" for garage doors.  Declarant Denyer says he was familiar with this unit over a period which is before the priority date (ie. 2 August 1990), while the other declarants say that they have been aware of this unit "since 1991" or "since 22.10.1990".  However, none of the declarants explain or describe the features of the unit which they have labelled the "Insight" unit, and so it is not apparent whether they are all referring to the same apparatus.  Also, the nature and construction of the units to which they refer is not apparent from their evidence.  Furthermore, none of the declarants refer to any patents or patent applications and so no link can be established between the units they mention and any patent material.  Declarants Denyer and Hocker declare that before August 1990 they either fitted or realised remote control units could be fitted at the side of garage doors but their evidence does not identify the nature of such units nor any specifics about the positioning of such units in relation to the doorway.  In my view these declarations, because they lack detail as to the units and apparatus mentioned within the various statements, are incapable of clearly establishing any facts as to prior use, common general knowledge or otherwise which could bring the validity of the petty patent claim into question.  It is for these reasons that I did not treat the Other Material as matter within the terms of s.28(3).

CONCLUSION

I have decided that the petty patent specification does not comply with the requirements of s. 40 and so the invalidity ground of s. 28(1)(c) is made out.  Other invalidity grounds advanced by the informant have not been established.  I believe that the s.40 deficiency can be easily overcome by amendment.  Given the provisions of s.69(4), I allow the patentee 60 days from the date of this decision to request an amendment to the specification of the petty patent for the purpose of removing the ground of invalidity.  If a request to amend is not made within the period allowed I will formally refuse to grant an extension of the term of the petty patent.

COSTS

Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.  In this proceeding, I see no reason why costs should not follow the event.  Accordingly, as the informant has established an invalidity ground, I award cost against the patentee Kenneth Stanley Cougan.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the patentee   :  Cullen & Co, Brisbane

Patent attorneys for the informant  :  Spruson & Ferguson, Sydney