Kidde Fire Protection Limited v I.E.I. Australia Pty Ltd

[1995] APO 34

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 642745 in the name of Kidde Fire Protection Limited

Title:          Particle Detection

Action:          Opposition by I.E.I. Australia Pty Ltd under section 59 of the Patents Act 1990.

Decision:          Issued            .

Abstract:          Obviousness and Section 40 matters considered.

Grounds of opposition not established and opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 642745 by Kidde Fire Protection Limited and opposition by I.E.I. Australia Pty Ltd under section 59 of the Patents Act 1990.

background

Kidde-Graviner Limited filed patent application 642745 (79246/91) on 21 June 1991 claiming priority from application 9014015.3 made in the United Kingdom on 23 June 1990. Acceptance was advertised on 28 October 1993. The application was assigned to Kidde Fire Protection Limited by an instrument dated 19 January 1994.

A notice of opposition was filed by I.E.I. Australia Pty Ltd on 28 January 1994.  A Statement of Grounds and Particulars was served on the applicant on 28 April 1994 and evidence-in-support completed on 28 July 1994. The applicant did not file evidence-in-answer and the opposition came to hearing in Canberra on 16 June 1995.  The applicant was represented by Mr G Noonan, patent attorney of Davies Collison Cave, Melbourne and the opponent by Mr L J Dyson, patent attorney of Watermark Patent & Trademark Attorneys, Sydney. 

As the application was filed after the commencement of the Patents Act 1990, the opposition proceeds under section 59 of the Patents Act 1990 and Chapter 5 of the Patent Regulations 1991.

STATEMENTS OF GROUNDS AND PARTICULARS

The statement indicates that the grounds relied upon by the opponent are those specified in section 59(b) and (c). However from the particulars and the opponent's submissions at the hearing it is clear that the opponent relies specifically on the grounds of lack of inventive step and non-compliance with section 40(2) and (3).

The particulars refer to certain features of the claimed invention being part of common general knowledge and indicate that this is based on smoke detection apparatus originally disclosed in Australian specifications 31841/84, 31842/84, and 31843/84.  It is said also that other features of the claimed invention are disclosed in the publication WO 89/09392 to which I note AU 34130/89 is associated.

The particulars also list a number of issues in relation to non-compliance with section 40.  I will refer to these as necessary later in my decision.

THE SPECIFICATION

The specification commences by stating that the invention relates to particle detection and particularly to apparatus for detecting particles such as smoke.  It then states that it is known to detect the presence of smoke in air by detecting the light scattered from the smoke particles in a sampling chamber.

Then follows a consistory statement which is worded the same as claim 1 followed by a detailed description of the preferred embodiment.

The specification ends with 9 claims of which claim 1 reads as follows:

"1.       A high sensitivity detector of suspended particles in a gaseous medium and capable of detecting the presence of a concentration of particles in the medium which attenuate light by less than one per cent per metre of the medium, comprising: an elongate hollow chamber; means for forcing a sample of the gaseous medium along a predetermined flow path extending through the interior of the chamber between an entrance and an exit in the chamber wall and transverse to the elongation of the chamber, a portion of the flow path constituting a sampling region; light source means fixedly mounted in relation to the chamber and operative when energised to direct a light beam along an input path which extends across the interior of the chamber in a direction transverse to the elongation of the chamber and also transverse to the said flow path and passing to and through the sampling region, such that light in the beam is scattered by particles in the medium in the region; light sensor means fixedly mounted in relation to the chamber and producing an output signal dependent on the light received and positioned to receive the scattered light along a predetermined output path from the said sampling region; the light source means including beam confining means for defining the cross-sectional area and direction of the input path such that the beam passes from the sampling region and into beam receiving means which receives the beam and prevents its light from travelling back to the said sampling region; the input path being offset from the output path by an angle between 15 and 50 angular degrees; the beam receiving means comprising beam dump means fixedly mounted in relation to the chamber and positioned in rectilinear alignment with the light source and the sampling region and outside the said flow path to receive unscattered light directly from the light source means and arranged to prevent substantially any reflection of such received light into the said flow path; modulating means for modulating the intensity of the light in the light beam in a predetermined manner; output means responsive only to corresponding modulation in the output signal of the sensor means, whereby to indicate detection of the said particles; and aperture defining means extending across the interior of the chamber transverse to its elongation and defining a plurality of apertures spaced apart along the length of the output path and each for defining the cross-sectional shape of the output path."

EVIDENCE

The evidence-in-support is in the form of two statutory declarations as follows:

1. A statutory declaration by John Petersen who indicates that he is currently employed as a fire detection consultant and that he worked from 1981 to 1985 for I.E.I Australia Pty Ltd as a technical representative in relation to the opponent's VESDA smoke detection equipment.  His declaration relates particularly to the nature of the VESDA E700 device and the provision of technical details to customers in Australia.

1. A statutory declaration by Martin T. Cole who is President of the I.E.I. group of companies including the present opponent and is also the actual inventor in relation to the patent documents referred to in the particulars.  His declaration includes a list of features (paragraph 14) which he says were familiar to his customers through sales of the VESDA equipment.

DECISION

Inventive Step

In HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437, Williams J said:

"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem."

Furthermore in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331, the question was posed:

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

As the present invention is a combination I am also guided by the judgement in Olin Mathieson v Biorex, (1970) RPC 157 at page 187

"In the case of a combination patent the invention will lie in  the selection of integers, a process which will necessarily involve rejection of other possible integers.  The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

As to what constitutes common general knowledge, in his judgement in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited, 144 CLR 253 at 292, Aickin J. stated:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

Much of the hearing was in fact taken up by submissions on which features of the claimed invention should or should not be considered part of the common general knowledge.  At best, the opponent's case as put by Mr Dyson is that all the features of the claims are known in the prior art either being common general knowledge or having been disclosed in WO 89/09392.  This document in particular is relied on for disclosure of a beam dump means in rectilinear alignment with the light source and the modulation arrangement as claimed.  However, even if what is said in relation to common general knowledge were to be proven by the opponent's evidence, it is insufficient in itself to show that the combination claimed was obvious to a person skilled in the relevant art as required by Section 7(2).  From the cases referred to above, what the opponent is required to do is show that it was obvious to select the various features from the prior art and combine them to produce a device equal to that which the applicant now claims. As there is nothing in the expert evidence which addresses this issue I have no option but to find that the opposition fails under this ground. 

Section 40

Mr Dyson raised a number of issues in relation to Section 40. The first relates to the limitation in the claims to the input path being offset from the output path by an angle between 15 and 50 angular degrees. The Opponent asserts that it is unclear whether this is meant to define the angular arrangement of linear light paths or alternatively could it be an angular limitation on a divergent light source as known for example in the prior art.  Furthermore it is said that the selection of this range is arbitrary without any basis in the description.

I note that the specification does not give reasons for the angular range specified in the consistory statement and claims and there is no stated object of the invention or problem to be overcome.  Indeed Mr Noonan had to quote the opponent's publication WO 89/09392 in stating that, in common with the prior art, the invention was about detecting "the equivalent of faint starlight in the presence of sunlight" and that what was claimed was a specific arrangement and alignment of components to capture more of the "starlight".  However the invention here is not a selection or improvement of an old combination.  It lies in a new combination and there is nothing to compel the applicant to distinguish what is old or new in that combination or where the improvement lies - British United Shoe Machinery Co. Ltd v. A. Fussel and Sons Ltd, (1908) 25 RPC 631. Nor must the applicant necessarily explain why the limits of a particular angular range are chosen to define the scope of the invention assuming those limits are reasonable given the nature of the invention. In this case it is apparent from the prior art that the angular range specified is within the region one would expect for the detection of light scattered from smoke particles and the addressee is very likely to assume that it is a region in which the device works without undue interference from light in the input beam. What is most important is that the specification contains a clear statement of what the invention is and how it is to be put into practice and I can only conclude that this is the case in the absence of any evidence from Mr Cole or Mr Petersen to the contrary.

In the claim I do not believe the angle reference is unclear giving the words their plain meaning.  It is in any case apparent that the question primarily arises for the opponent because of its wish to read the prior art onto the claim.

In the Statement of Grounds and Particulars it is alleged also that the phrases "output means responsive only to corresponding modulation in the output signal of the sensor means whereby to indicate detection of said particles" and "between an entrance and an exit of the chamber walls and transverse to the elongation of the chamber" are not clear.  However these appear clear to me in the context of the claims and there is no evidence that they would present any difficulty to a skilled addressee.

CONCLUSION

I find that the opposition fails on all the grounds relied upon and accordingly I dismiss the opposition. I further direct, subject to any appeal of this decision, that the application proceed to sealing.

COSTS

The power of the Commissioner to award costs is based on Section 210 and Regulation 22.8. In light of my decision above I award costs against the opponent, I.E.I. Australia Pty Ltd

P M Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:  Davies Collison Cave, Melbourne

Patent attorneys for the opponents:  Watermark Patent & Trademark Attorneys, Sydney