Laurence Clifford Scott - [2014] APO 29

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Laurence Clifford Scott [2014] APO 29

Patent:2013101256

Title:Air Duct

Patentee: Laurence Clifford Scott

Hearing Officer: Dr N. R. Madsen

Decision Date: 20 May 2014

Hearing Date: 14 March 2014, in Melbourne

Catchwords: PATENTS – examiner’s objection – examination of an innovation patent – novelty – innovative step – amendment proposed after hearing – whether there is a clear and unmistakable direction to the claimed features – claims lack novelty and lack innovative step – opportunity to amend to overcome grounds of objection

Representation: Patentee: Tom Cordiner of counsel instructed by Virginia Beniac-Brooks of Arcadia Lawyers and Michael Kraemer of Sandercock & Cowie

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent:2013101256

Title:Air Duct

Patentee: Laurence Clifford Scott

Date of Decision: 20 May 2014

DECISION

Claims 1-3 lack novelty and innovative step

The patentee has three (3) months to gain certification.

REASONS FOR DECISION

This matter concerns examiner’s objections in respect of the examination of patent 2013101256 under s101B of the Patents Act 1990.

Background

Innovation patent 2013101256 (the patent) in the name of Laurence Clifford Scott was filed as a divisional application of innovation patent 2012100795 (the first patent) on 23 September 2013. The patent has an earliest priority date of 11 May 2005.

The first patent was originally filed as a standard application claiming divisional status from 2006246325 (the grandparent) on 3 May 2012. On 30 May 2012 the patentee filed a request to convert this standard application to an innovation patent which was subsequently processed. The first patent was the subject of five examination reports under s101B before ceasing due to failure to gain certification within six months of the first examination report.

After complying with formalities the patent was accepted and granted shortly after acceptance on 10 October 2013. The patentee requested examination of the patent on 21 October 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to examination of the patent. A first examination report was issued on 19 November 2013. Following this first report, on 3 February 2014 the patentee filed a request to be heard in regard to the objections in the report.

At the hearing issues were discussed in addition to the objections raised by the examiner in the first examination report. These included the construction of claim 4 and whether the patent was entitled to divisional status under s79C(1). As these issues had not been previously raised, I provided fourteen calendar days from the hearing which was held on 14 March 2014 for the patentee to file further written submissions. The patentee filed written submissions and proposed an amendment to claim 4. I have therefore based my decision on claims 1-3 and 5 of the patent as filed and claim 4 as proposed to be amended.

The patent specification

The specification relates generally to moulded polymer air ducts. According to the specification there are a number of problems in the art, particularly in multi-storey dwellings such as apartment blocks, where air must be ducted across ceilings to reach wall vents. In these situations air ducting systems such as range hoods and bathroom extractors send air through ducts installed between floors. The specification at [0002] points out that ducts of this type are often made of sheet steel which present problems such as: a need to be taped or otherwise sealed; acoustic resonations; and high thermal conductivity which leads to condensation. The invention seeks to overcome these problems by providing a moulded air duct of elongate cross section which can be installed in wall or ceiling spaces, wherein the duct comprises flame retardant.

The specification ends with five claims as follows:

1. A moulded air duct of elongated cross-section capable of installation in a wall or ceiling space which duct comprises an effective quantity of flame retardant, having male and/or female joins at the ends.
2. A moulded air duct as claimed in Claim 1, wherein the joins at the ends are male/male or female/female.
3. A moulded air duct as claimed in any one of Claims 1-2, when made by injection moulding.
4. An air duct system comprising multiple ducts as claimed in any one of Claims 1-3, joined end to end arranged to conduct air from a heating or cooling appliance in one part of a building to outlets in rooms in another part of the building with adaptors at the inlet for connecting the duct to hoses of circular section.
5. An air duct system comprising multiple ducts as claimed in any one of Claims 1-3, joined end to end to conduct air from a ventilating apparatus in one part of a building to the outside of the building.

With the further written submissions provided after the hearing, the patentee also provided a proposed amendment to dependent claim 4 as follows:

4. An air duct system comprising multiple ducts as claimed in any one of Claims 1-3, joined end to end arranged to conduct air from a heating or cooling appliance in one part of a building to outlets in rooms in another part of the building with adapters which connect the system to one or more hoses of circular section.

The Examiner’s objection

The examiner’s objection to which this decision relates is that the invention defined in claims 1-5 is not novel (and does not involve an innovative step) when compared with the following prior art document:

WO 2003/025472 A1 (JUNGERS, JON W.) 27 March 2003, (Jungers)

Novelty

For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of prior art information within the prior art base. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited (the General Tire case) [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:

"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated…
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee…”

Further, if a skilled addressee is "clearly and unmistakably" directed to an invention from the prior art, there must still be sufficient disclosure in that art to enable the skilled addressee to put the invention into practice, i.e. the disclosure must be an “enabling” disclosure. As discussed in Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at page 549.
"The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication."

Claims 1 and 2

In regard to claims 1 and 2, the patentee accepts that a moulded air duct of elongated cross-section, capable of installation in a wall space and having two male ends, is disclosed in the Jungers patent at figures 1 and 7 and page 13 lines 1 to 7. I am also satisfied that other duct elements of Jungers constitute a disclosure of claim 1. In this regard items denoted 14 (items 14a and 14b) are moulded air ducts of elongate cross-section capable of installation in a wall or ceiling space, as Jungers discusses such ducts of 8 x 16 inch cross section with length of 5 feet (page 13 lines 15-18). Such a size is capable of installation in a ceiling space. The ducts denoted 14 have male and/or female joints at the ends (figure 2C, item 14, page 9 lines 23-24).
The patentee submits that Jungers does not provide a clear and unmistakable direction to the feature “comprises an effective quantity of flame retardant”. At the hearing the patentee agreed that the issue for determination was not whether Jungers disclosed an “effective amount” of flame retardant, but whether there was a clear and unmistakable direction to the inclusion of a flame retardant. If Jungers provided such a disclosure it was accepted by the patentee that said disclosure would necessarily be effective. The relevant disclosure in Jungers at page 9 lines 4 to 22 is as follows:
“Formulation of the molding compound can further include other additives that enhance certain characteristics of the resulting ductwork component. For example, the plastic and foaming agent components are preferably selected to provide the foam interior layer 16 with an elevated R value for enhanced insulative effects and thus be highly useful for extreme temperature applications (e.g., attic or crawl space). For example, in one preferred embodiment, the duct 14 can have an R value of eighteen or greater. Conversely, for air handling applications where an elevated R value is not a critical factor, the selected materials and/or resulting wall thickness can result in a lower R value. Additionally, a flame retardant additive can be employed. (my emphasis)
Also, a desired colorant or pigment additive can be used to produce a desired exterior color for the duct 14. Any heat stable and unreactive colorants known and available for use with the selected plastic resin (and foaming agent with the preferred rotational molding technique) can be employed. Illustrative examples of useful colorants include carbon black, quinaeridone red, anthraquinone, and perinone dyes to name but a few. The resulting ductwork component (such as the duct 14) can thus be virtually any color, such as black, red, yellow, brown, etc. Other optional additives include fillers, tackifying agents, dispersing agents, UV stabilizers, and/or antioxidants.”
As pointed out by the patentee, the sole reference to a flame retardant is as emphasised above. A flame retardant does not appear in the claims, nor is it exemplified in Jungers. If follows that there is no explanation as to how a flame retardant might be employed. Further, the patentee points out that a range of potential additives are identified which include plastic and foaming agent components, colorants or pigments, fillers, tackifying agents, dispersing agents, UV stabilizers and/or antioxidants.
In this regard the patentee generally submits that while Jungers literally disclosed a flame retardant, this amounts to a mere suggestion that it is one of a range of potential additives that may be added in forming the moulded ductwork. The patentee added that some experimentation would be involved in determining a flame retardant that could be employed. The submissions of the patentee can be summarised in that a flame retardant is discussed in Jungers such that:
“… it is identified as one of a number of potential additives which might be used, without providing any specific example of such use or claiming such use. Therefore there is no inevitability that a flame retardant would have been used…”.
While a flame retardant is discussed as one of a number of potential additives I note that the particular additives referred to serve purposes unrelated to that of a flame retardant. Thus it does not appear that additives such plastic and foaming agent components, colorants or pigments, fillers, tackifying agents, dispersing agents, UV stabilizers and/or antioxidants are discussed as true alternatives to a flame retardant. I consider that the presence of the disclosed range of alternative additives is of no effect to determination of whether the relevant phrase is a clear and unmistakable direction to a flame retardant.
The broad direction that a flame retardant “can” be employed does not contain within it a direction to carry out the invention in a manner that would not include a flame retardant. In this regard the presence of the word “can” appears to merely identify addition of a flame retardant as a “preferred” or “advantageous” embodiment of Jungers. The document clearly discloses that a flame retardant can be used and if the skilled addressee carries out this direction I am satisfied that they will arrive at the claimed invention.
Further, there appears to be no need for an exemplified use of a flame retardant within the disclosure. I consider that a skilled addressee would possess working knowledge of flame retardants in moulded plastics, there being no evidence to suggest otherwise. Thus I consider the disclosure enabling as there would be no necessity for the skilled addressee to make further experiments to put the disclosure of a flame retardant into practice.
Therefore I find that claims 1 and 2 lack novelty in light of Jungers.
Claim 3
Claim 3 adds the feature to previous claims that the duct is made by injection moulding. The patentee discusses that Jungers focusses upon rotational moulding and includes detailed examples discussing formation of ductwork using rotational moulding. Reference to injection moulding in Jungers is limited to page 8 lines 20-23, and claims 14 and 27 as follows:
“Even further, assembly techniques other than rotational molding can be employed, such as laminating the outer layer 18 to a pre-formed foam interior layer 16, injection molding the layers 16, 18, etc…
14. The ductwork component of claim 12, wherein the interior and outer layers are injection molded to one another…
27. The method of claim 17, wherein the step of molding includes: forming the plastic material as an outer layer; and injection molding the foam-related material to an interior of the outer layer.”
The patentee submits that:
“Unlike the flame retardant feature, injection moulding is also claimed in Jungers (claim 27) but only in respect of the inner foam material. However, that claim and the reference to injection moulding at page 8 is peripheral at best. There is no explicit example of a duct made by injection moulding and certainly none which include injection moulding.”
The ductwork of Jungers is generally constructed from inner and outer layers (16 and 18 respectively). I am satisfied that Jungers provides a clear and unmistakable direction to use injection moulding to create both layers which form 16 and 18. The disclosure of page 8 clearly indicates that the technique of injection moulding can be employed to assemble both the inner and outer layers.
The patentee’s submissions appear to rely on the lack of an exemplified use of the technique of injection moulding amounting to an assertion that the disclosure is not enabling. Similarly to the discussion above in relation to claims 1 and 2, I consider that a skilled addressee would possess working knowledge of the different ways to construct moulded plastic structures, there being no evidence to suggest otherwise. Thus, I consider the disclosure enabling as there would be no necessity for the skilled addressee to make further experiments to perform the invention by way of injection moulding.
Therefore I find that claim 3 lacks novelty in light of Jungers.
Claim 4 as proposed to be amended
Claim 4 as proposed to be amended is dependent upon claim 1. I have already found that claim 1 lacks novelty in light of Jungers as the claimed duct is disclosed with reference to items 14 and 120.
The patentee’s submissions in regard to previous claim 4 are relevant to proposed claim 4 as they are directed towards an assertion that the only disclosure of a duct as defined in claim 1 is the wall stack (item 120). It follows that the patentee asserts that figure 1 does not show multiple wall stacks joined end to end. However it appears that this point is moot given that I am satisfied that the items 14a and 14b, as depicted in figure 1, are ducts comprising all the features of claim 1 which are joined end to end.

Thus Jungers discloses an air duct system comprising multiple ducts (items 14a and 14b) as defined in claim 1 joined end to end, arranged to conduct air from a heating or cooling appliance in one part of a building (figure 1 item 24, page 10 lines 16-19) to outlets in another part of the building (figure 1 items 134, 132). However, Jungers fails to disclose the feature of adapters which connect the system to one or more hoses of circular cross section.
Therefore I find that claim 4 as proposed to be amended is novel in light of Jungers.
Claim 5
In regard to claim 5, for the reasons discussed in relation to claim 4, Jungers discloses an air duct system comprising multiple ducts as claimed in claim 1 joined end to end to conduct air. The patentee submits in regard to the use of a ventilating apparatus that:
“… there is no clear disclosure in Jungers of the use of such a system to conduct air from one part of the building to outside of the building.
Jungers at page 1 line 14 mentions “ventilating” system but does not provide any specific example of such. At best there is described a “filtering system” at page 1 line 21 but it is not all plain that such a system involves conducting air to the outside of the building rather than filtering circulated air. The preferred embodiment is plainly concerned with a reticulated system, not one which ventilates air outside the building.”
I note that Jungers does not contain any further reference to ventilation.
The patentee also pointed out that different types of ventilation exist involving both exhausting out of a building, and internal ventilation within a building. I accept the submissions of the patentee which demonstrate that Jungers does not provide a clear and unmistakable disclosure of ventilation from one part of the building to outside of the building.

Therefore I find that claim 5 is novel in light of Jungers.

Innovative Step

The claims of an innovation patent must involve an innovative step. Subsection 7(4) of the Patents Act provides that:
“An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.”
The decision of the full Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 confirmed the approach of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [52]- [53], who at first instance made a clear distinction between an innovative step and an inventive step:

“There is no need to search for some particular advantage in the art to be described as an innovative step which governs consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date and ask whether the invention as claimed varies from the kinds of information set out in s7(5) in ways that make no substantial contribution to the working of the invention ...

The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgement from that involved in determining whether there is an inventive step. Obviousness does not come into the issue ... Indeed the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.”

Gyles J at [61] also provided an indication as to what is encompassed by the requirement of a ‘substantial’ contribution:
“In my view the provenance of the phrase “make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without real difference”.

Questions which may assist in considering the requirement for a ‘substantial’ contribution include (Richbury Pty Ltd v D&I Klein Investments Pty Ltd [2013] APO 13):

·    Does the difference identified between the invention and the prior art convey an advantage to the invention?
·    Does the difference provide a technical or functional contribution to the invention?
·    Is the difference a significant aspect of the operation of the invention?

Claims 1-3 lack novelty in light of Jungers and consequently also lack innovative step in light of this document.
Claim 4 as proposed to be amended
Under consideration of novelty I found that Jungers did not disclose the feature of proposed claim 4 being adapters which connect the system to one or more hoses of circular cross section. Connecting the air duct system to hoses provides a degree of mechanical flexibility to the air duct system which is clearly advantageous to the invention.
Therefore I find that claim 4 as proposed to be amended involves an innovative step in light of Jungers.

Claim 5

Under consideration of novelty I found that Jungers did not disclose the feature of claim 5 wherein the air duct system with multiple ducts of claim 1 joined end to end conducts air from a ventilating apparatus in one part of a building to the outside of the building. Such a feature contributes to the working of the invention by providing the significant functional contribution of ventilation out of a building.
Therefore I find that claim 5 involves an innovative step in light of Jungers.

CONCLUSION

I have found that claims 1-3 lack novelty and innovative step in light of Jungers. I have found claim 4 as proposed to be amended and claim 5 are novel and innovative in light of Jungers. Thus the patent appears to contain patentable subject matter.

The request for examination was filed after 15 April 2013. As a result, Regulation 9A.4(f) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 applies. This regulation relevantly provides that in the event that the Commissioner gives the applicant an opportunity to be heard in relation to a report under section 101B by conduct of an oral hearing, then examination of the complete specification must be completed within 3 months from the date the Commissioner makes a decision in writing in relation to the report. As such, the patentee has three (3) months from the date of this decision to gain certification.

Dr N. R. Madsen
Delegate of the Commissioner of Patents