Kevin George Schulz v Kenneth Frank Hunter

[1990] APO 7

In the Matter of the Patents Act 1952

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In the Matter of Application No. 555565 for a Patent by KEVIN GEORGE SCHULZ

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In the Matter of Opposition thereto under Section 59 by KENNETH FRANK HUNTER

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 555565, entitled "Apparatus for Cleaning Roofs, Floors and Other Surfaces", was advertised accepted on 2 October 1986 and was opposed by Kenneth Frank Hunter.
         The matter was heard, and a decision issued on 10 November 1988, upholding the opposition on the grounds that the claimed invention was prior published and not novel.  The decision allowed the applicant 60 days in which to propose amendments to remove those grounds.
         Subsequently amendments which had been proposed by the applicant under section 77 were allowed and incorporated into the specification; this fact was advertised in the Official Journal of Patents of 24 August 1989.  The request to amend was not opposed under section 82.
         At this time, the Office offered the opponent an opportunity to be heard on the amended specification in relation to those grounds of opposition which had been upheld in the decision of

10 November 1988.  The opponent accepted, but chose instead to rely on written submissions.
         A copy of those submissions was served upon the Attorneys for the applicant, and the applicant then also chose to rely on written submissions rather than attend a further hearing in this matter.  Mr P.C. Fisher, patent attorney of G.R. Cullen & Co, Brisbane prepared the submissions on behalf of the opponent and Mr J.G. Adams, patent attorney of Grant Adams & Company, Brisbane prepared the submissions on behalf of the applicant.
The Specification as Amended
         The chief effect of the amendments allowed under sub‑section 83(2) was to replace the claims on file and make consequential amendments to the initial pages of the description.  The claims now read as follows:

"1.Cleaning apparatus for roofs including:

a mobile body closed at its top, and mounted on front and rear rollers extending across the body;

means for propelling the body over a roof to be cleaned;

an open spray jet housing in the body surrounded by a substantially vertical peripheral side wall or skirt;

a rotor assembly in the spray jet housing rotatable about an axis substantially perpendicular to the roof;

a plurality of spray yet nozzles on the rotor assembly spaced from the peripheral side wall or skirt and directed towards the roof;

supply means for directing cleaning fluid under pressure to the spray jet nozzles; and

means for rotating the rotor assembly comprising the spray jet nozzles, which are so inclined relative to the axis of rotation of the rotor that when cleaning fluid is ejected under pressure from the nozzles, the rotor is rotated;

the peripheral side wall or skirt and the front and rear rollers being so arranged that the cleaning fluid ejected from the nozzles is initially constrained within the area of the roof beneath the body before the cleaning fluid flows down the roof from beneath the body.

2.Cleaning apparatus according to Claim 1 wherein:

means are provided for raising and lowering the body in parallelism relative to the rollers.

3.Cleaning apparatus according to Claim 1 or Claim 2 wherein the rotor assembly includes:

an intake chamber fixed in the body,

a feed pipe leading downwardly from the intake chamber,

a rotor hub rotatable on the feed pipe, tubular spray‑jet arms radiating from the rotor hub and communicating, within the rotor hub, with the feed pipe,

the spray jet nozzles being connected to the distal end portions of the spray jet arms and the supply means including a supply line for connection to a hose and leading, by way of a control valve, to the intake chamber.

4.Cleaning apparatus according to Claim 3 wherein:

a pressure gauge above the body is connected to the intake chamber.

5.Cleaning apparatus according to any one of the preceding claims wherein:

the rotor assembly includes a sole plate below the spray jet nozzles and formed with apertures to permit cleaning fluid ejected from the nozzles to pass therethrough.

6.Cleaning apparatus substantially as herein described with reference to the accompanying drawings."

Present claim 1 incorporates in its definition accepted claims 1, 2 and 7 along with further definition in relation to the mobile body, the spray jet housing and the spray‑jet nozzles.  It is noted that the specification is now limited to apparatus for cleaning roofs.
Submissions
         The submissions lodged on behalf of the opponent address three main matters.  Firstly, attention is directed to the definitions in claim 1 concerning the spray jet housing being "surrounded by a substantially vertical peripheral side wall or skirt" and the spacing of the jet nozzles from the peripheral wall, and it is submitted that these features had no fair basis in "the specification as filed with the application".  Secondly, it is submitted that the specification also provided no basis for the final claiming clause of claim 1, the functional statement in relation to the peripheral side wall.  Thirdly, the opponent submits that the apparatus defined by the claims still lacks novelty in view of the Poppitz and Hart specifications which were considered in the earlier decision to deprive the then claimed invention of novelty.
         Applicant submits that in relation to the first matter the features mentioned can be identified in the description and drawings as filed.  The only other comment made by the applicant is to the effect that the cited prior art documents do not disclose a rotor assembly spaced from the side wall or skirt and hence do not disclose apparatus which can initially constrain fluid beneath the body before it slows down the roof.
Allowability of Amendments/Section 40
         It is not open at this stage to review the allowability of the amendments made pursuant to the section 77 request ‑ a section 82 opposition provides the appropriate forum for such matters to be considered before allowance action.  In any event there are several provisions in the Patents Act relevant to amended specifications and amended claims (see sections 159 and 159A).
         In my initial decision in this matter there was no adverse finding regarding compliance with section 40 requirements.  It seems to me that only in those situations where, following an initial decision, the amendments are shown to have created a serious section 40 deficiency where none existed before should such deficiency, irrespective of the section 83 allowance and in the absence of other existing opposition grounds, be a bar to the application proceeding to sealing.
         In this case, the opponent contends that certain features of amended claim 1 characterising the apparatus have no basis given the original description.  I would agree tht if the only disclosure of the housing were the portion on page 3 at line 10 which suggests that the housing terminates in the curved sides between parallel ends, then there would be no disclosure of a further peripheral side wall surrounding the housing.  However the drawings can also be taken to disclose an open bottom spray jet housing comprising the circular portion overlying the rotor assembly (see Figures 2 and 3) and in that case a substantially vertical peripheral side wall does surround the housing as the drawings show.  Furthermore the spray jet nozzles are shown spaced some distance from that wall.  I have no doubt that a skilled addressee would so interpret the specification and find a basis for the definition in claim 1 concerning the housing and side wall, and to recognise the functional effect the side wall and rollers are likely to achieve as is stated in the final clause of the claim.  In my view there is no serious section 40 defect apparend in the amended claims.
Prior Publication and Novelty
         In my initial decision I found that all claims as accepted had been anticipated by US Patent specifications Nos. 3748050 (Poppitz) and 4047666 (Hart) submitted in evidence.  The disclosure of each of those specifications was summarised in that decision and I see no need to repeat the exercise here.
         Having reviewed the disclosure of the Hart specification I am of the view that the amended claims do not lack novelty given that disclosure.  The Hart specification does not disclose a mobile body closed at its top ‑ in fact it discloses quite the opposite in order to provide an air intake and thus produce an annular jet of air to support the apparatus above the surface to be cleaned.  Additionally it does not clearly disclose the provision of front and rear rollers extending across the body to enable movement and to act to constrain ejected fluid.
         A comprison of the disclosure of the Poppitz specification with the invention claimed in claim 1 reveals that nearly all features of the apparatus as claimed are found on the Poppitz cleaning devices.  Poppitz discloses a mobile apparatus having an open bottom spray housing within which a spray rotor assembly is positioned, the housing being surrounded by a peripheral side wall (see brush assemblies 225 (Fig 15) or 426 (Fig 21)), and wherein the jet nozzles of the rotor assembly are "spaced" from the peripheral side wall.  Poppitz further discloses that the arrangement of the apparatus is such that spray from the nozzles is confined and concentrated at the open end of the housing either due to the spacing of the nozzles from the lower edge of the housing when no brush assembly is fitted (see e.g. col 7 line 19ff, col 8 line ff) or due to the presence of the brush assemblies (see e.g. col 9 line 25ff, col 10 line 44ff).  In my assessment of Poppitz the only feature claimed in claim 1 not disclosed is that of "front and rear rollers extending across the body" ‑ these rollers are the means to give the apparatus mobility, and given the functional statement at the end of claim 1, with the peripheral side wall are so arranged to initially constrain the fluid ejected from the jet nozzles.  Poppitz provides four wheels on the apparatus for mobility purposes.
         In my view the apparatus of claim 1 lacks novelty in the light of the disclosure of the Poppitz specification.  Firstly I consider that the provision of a pair of rollers as the means to enable mobility of the claimed apparatus merely replaces one known transport means (four wheels) with mechanical equivalents.  Secondly, regarding the functional statement at the end of claim 1, this need only require the rollers to be arranged in a manner enabling adjustment of the distance between the side wall and the surface to be cleaned.  As such the functional arrangement of the rollers provides no advantage over the wheels of the Poppitz apparatus which are also stated to be capable of adjustment to vary the distance between the housing and the floor.
         In relation to amended claims 2 to 5, these claims define features of the apparatus which either are disclosed in the Poppitz specification or concern variations from the cited apparatus which, in my view, do not confer novelty to the apparatus claimed.
         Claim 6 is an omnibus claim which claims cleaning apparatus "substantially as herein described with reference to the accompanying drawings".  This claim is therefore restricted to the specific disclosure of the essential features of the cleaning apparatus as described in the preferred embodiment and shown in the drawings.  It seems to me that the only features of the apparatus claimed in this claim which can possibly provide novelty are the spray housing and associated side wall or skirt.
         The Poppitz specification does not disclose exactly an arrangementof spray jet housing and surrounding side wall as described and shown in the opposed specification.  In my view however, any differences between the apparatus the subject of claim 6 and the specific disclosures of Poppitz constitute immaterial variations, the respective features being mechanical equivalents, and as such claim 6 is not considered to define novel apparatus over the Poppitz disclosure.
Decision
         I find that the amended claims of the opposed specification lack novelty in view of the Poppitz patent specification US 3748050.  As that finding goes to all claims including the omnibus claim, I am unable to identify any patentable subject matter disclosed that could form the subject of valid claims to the specification.  Consequently further amendment actionis unlikely to avoid the opposition ground as found above.  In those circumstances, I refuse the application.
         I award any costs against the applicant.

(T.R. BRUHN)

Patent Attorneys for the Applicant: Grant Adams & Co., Brisbane