Maidstone Pty Ltd v Jaques Ltd

[1985] APO 30

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 508170 for Letters Patent by MAIDSTONE PTY. LTD. and In the Matter of Opposition thereto under Section 59 by JAQUES LTD.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application No. 508170 for an invention entitled "Particulate Material Discharge Device" is based on a provisional specification lodged on 30 April, 1976 by Maidstone Pty. Ltd. The complete specification was lodged on 2 May, 1977 and the application was advertised accepted on 13 March, 1980. Notice of Opposition under s.59 was lodged on 27 June, 1980 by Jaques Ltd. The opponent asked for, and was granted unopposed, a series of extensions of time for lodging evidence-in-support of this opposition until 27 August, 1981.

The applicant, also after a series of extensions of time for lodging evidence-in-answer, had not served any such evidence in the time allowed.

Meanwhile the applicant on 27 January, 1981 lodged a request under s.77 to amend the complete specification. The request was advertised on 21 May, 1981 and was opposed under s.82 by Jaques Ltd. This matter was heard in Melbourne on 9 February, 1982 and a decision issued dismissing the opposition. On 26 August, 1982 allowance of the request-under s.77 was advertised.

The opposition under s.59 was heard in Melbourne on 12 A4gust, 1985, the applicant being represented by Mr R.J. Strickland, patent attorney of. Clement Hack & Co., Melbourne, and the opponent being represented by Mr. T.J. Collins, patent attorney, of Phillips, Ormonde & Fitzpatrick, Melbourne.

Although the grounds of opposition stated on the notice are those specified in paragraphs (c) to (i) of sub-section 59(1), the submissions made at the hearing were limited to the grounds specified in paragraphs (e), (h) and (i); i.e. prior publication, lack of novelty and non-compliance with section 40.

The Specification

The specification, after amendment under s.77, commences by stating that the invention "relates to a particulate material discharge device, and in particular relates to a device for attachment to a vehicle having a particulate material storage and discharge capability". It then lists certain "disadvantages" in relation to known vehicles used for transporting and discharging particulate material as follows:

"At tie present time, it is known to transport and discharge particulate material, such as screenings, by means of tip trucks, which have a normally horizontal storage bin, which way be raised by hydraulic means to allow the particulate material in the bin to be discharged from the rear of the vehicle under the influence of gravity. With this type of discharge, the rate of discharge is difficult to control, and it is virtually impossible to discharge material directly into excavations, or in narrow lanes. It is customary to discharge the entire load to form a heap on the ground, and to use mechanical loaders or manual methods to transport the material from the heap.

Another type of vehicle body is one where a hopper having downwardly converging sides is mounted on the vehicle. Along the base of the hopper an auger or belt conveyor acts to carry particulate material from the hopper and discharge it at the rear of the vehicle. While it is possible to adjust the speed of the auger or conveyor, and thus limit the amount of material discharged in a particular time, it is again not possible with this type of unit to discharge directly into excavations or in narrow lanes."

There is a consistory statement (equivalent to claim 1) and the specification continues by describing two different embodiments of the invention, ending with eighteen claims only one of which is an independant claim, namely claim 1 which reads as follows:

"l. The combination of a mobile storage for particulate material and a device for discharging the particulate material therefrom, said mobile storage including a container for said material and conveyor means within said container to convey material to a discharge point adjacent the bottom of said container, said device including a frame, an endless conveyor belt supported by said frame, control means for controlling the belt speed of said conveyor belt, and support means to enable said frame to be permanently carried by said mobile storage and outside said container, whereby, in use, the upper run of said conveyor will move past said discharge point, in a direction substantially at a right angle to the direction in which said material is conveyed by said conveyor means within said container, and so as to receive material discharging from said container, and wherein said support means also enables movement of said frame relative to said mobile storage in a direction substantially at right angles to the direction in which the said material is conveyed by the conveyor means within said conveyor."

Section 40

Mr. Collins submitted that the claims of the specification were not clear, as follows:

(a) in claim 1, the definition in line 10 of the frame being permanently carried by the support means conflicts with tie description at lines 4 to 12 of page 4 which describe the supports as being wire cables and quick action levers. These could not be considered to constitute a permanent attachment. Similarly, the expression, at lines 2-3 of page 2, "for attachment" reinforces the existence of conflict between claim 1 and the description regarding the permanency of the connection;

(b) the definition in claim 1 of a 'discharge point" is not supported by the description, and it is unclear whether the "discharge point" is a part of the container or is that part of the conveyor the material is to be discharged from. Further, the claim does not define the discharge device discharging material from the combination only from the mobile storage;

(c) in claim 1, it is not defined what the "control means" controls in the absence of any definition of a belt drive means as, for example, defined in claims 10 to 13. In particular only claim 13 associates the drive means with the speed control means;

(d) the reference to "said conveyor" in the last line of claim 1 is incorrect. The reference should be to "said container";

e) the "directions" variously referred to in claim 1 have not been related to the longitudinal axis of the container which appears essential to correctly define the inventive concept of discharging material to the side of the mobile storage. Similarly, the definitions in claim 17 of "transversely" and one or both sides" are not related to other features or data to allow a clear construction of the claim;

(f) the definition in claim 2 is incorrect as the rails and roller assemblies are part of the frame defined in claim 1, not the support means; and

(g) various terms in the appended claims - detailed by Mr. Collins - lack antecedents.

Mr. Strickland did not make any submissions in rebuttal of these s.40 deficiencies apart from that set out in paragraph (a) and, as I am generally in agreement with Mr. Collins in this matter, I find that the claims do not satisfy the requirements of s.40. Nevertheless, some of Mr. Collins' points require comment.

I do not agree with Mr. Collins' point (a). Firstly, the word "permanently" is only a relative term in any given circumstance. For example, were one to compare a welded joint with a bolted joint, the question of permanency resolves itself to one of ease or difficulty of separation of the components of the respective joints. Secondly, the claim resites

"Support means to enable said frame to be permanently carried by said mobile storage."

This is not a requirement that the frame and the storage be permanently" joined, but rather that the support means are such as to enable the one to carry the other permanently. It seems to me that provided the quick action levers had a "hold" position - an obviously inherent feature - the support means of the preferred embodiment would satisfy this requirement. Whether or not the storage actually carried the frame permanently would depend on whether it was connected to or disconnected from the frame by the support means.

With respect to point (b) I do not see any problem with the discharge point or its positioning. The conveyor means must have a discharge point and the claim requires that it discharges onto the conveyor belt. Whether that discharge point is within or without the mobile storage is irrelevant. Mr. Collins' further comment in point (b), should, in my view be read with his point (e). In this respect I would agree that the inventive concept of a lateral discharge beyond the lateral limits of the mobile storage is not adequately defined. As to Mr. Collins' references to the longitudinal axis of the container and other directions, I note that there is at present no datum defined in claim 1 which could give meaning to those references.

Anticipation

Mr. Collins submitted that the claims in suit were not entitled to a priority date of 30 April, 1976 (the date of lodgement of the provisional specification) as the claims were not fairly based on the disclosures in the provisional specification; however, since all of the documents cited as anticipations of the claims have a publication date earlier than that date, I do not have to consider this matter.

The evidence in support includes seven declarations together with a number of exhibits comprising pamphlets and patent specifications. In his submissions, Mr. Collins referred in several of the exhibits as being anticipations of claim 1, these being:

(a) Exhibits TJC4 and TJC5 to the first declaration of Mr. T.J. Collins of 24 June, 1981 and comprising U.S. Patent Specifications Nos. 2430282 and 2779508, respectively, both in the name of E.H. ENSIGNER;

(b) Exhibit TJC15 to the second declaration of Mr. T.J. Collins of 24 August, 1981 and comprising U.S. Patent Specification No. 2609115 in the name of E. OKLEJAS;

(c) Exhibit KNM7 to the declaration of Mr. K.N. McDONALD of 7 July, 1981 and comprising a pamphlet of J.H. Holland Co. products and in particular their "Flow Boy" Model S-200 spreader, Exhibit KNM4 to the same declarant comprising a pamphlet of Blaw-Knox Construction Equipment Inc. of their Model RW-195 Road Widener and Exhibit KHM8 to the same declarant comprising a pamphlet of a GEHL 910 self-unloading box trailer;

(d) Exhibit JEK1 to the declaration of Mr. J.K. KENT of 3 July, 1981 comprising a pamphlet of a J.F. spreader trailer; and

(e) Exhibit JGC to the declaration of Mr. J.G. COLLETT comprising a pamphlet of a Power-Pack Model 605 spreader and trenchfiller.

Although exhibits JGC, JEK1, KNM7, KNM8, TJC4 and TJC5 disclose similar apparatus to that defined by claim 1, none disclose the lateral movement capability of the frame supporting the "transverse" conveyor. This is clearly an essential feature of the claim, and in fact is the very essence of the present invention. Consequently, I need not consider the above documents further, as they could not possibly anticipate the claims of the application in suit. (See Meyers Taylor v. Vicarr Industries 13 ALR 605).

There are, however, two exhibits disclosing a laterally moving conveyor arrangement. The first is the Blaw-Knox road widener (exhibit KNM4) consisting of a self propelled device which has a storage hopper for receiving particulate material from a tip truck. The material is discharged, (by gravitational action), from the rear of the hopper onto a "transverse" conveyor which is capable of being moved laterally relative to the hopper. Thus, the only feature defined in claim 1 which is not present in the Blaw-Knox device is the longitudinal conveyor in the hopper to discharge material therefrom. I consider that this deficiency is sufficient to distinguish the invention as claimed in claim 1 from the Blaw-Knox device having regard to the tests for novelty laid down in Griffin v. Isaacs (1942) AOJP 739.

The second of these exhibits is United States Patent Specification No. 2609115 (exhibit TJC15) in the name of E. Oklejas, which describes a mobile storage container having a longitudinal conveyor arranged to discharge material from the container to the rear thereof onto an "intermediate" conveyor mounted at the rear of the container. The intermediate conveyor discharges material thereon onto a conveyor which is movable collinearly relative to the intermediate conveyor, both these conveyors, as a unit, being capable of pivotting in a semi-circle relative to the container. Thus, in either extreme pivotted position the movable conveyor is able to discharge material laterally to, and at variable distances from, the side of the container. The conveyor system is driven, via a power take-off shaft from the engine of the vehicle upon which the container is mounted, thus providing a power source to drive the conveyors and control the belt speed. It is clear from the foregoing that all of the features of claim 1 have been disclosed in the OKLEJAS patent, and claim 1 is therefore prior published; it follows that many of the appended claims also fail before this document, for example claims 16 and 17 are also prior published and several of the others which I do not find it necessary to detail certainly lack novelty.

Conclusion

I have found that the opposition succeeds on grounds under section 40, prior publication and lack of novelty. However, there is clearly patentable subject matter disclosed in the specification; consequently I allow the applicant 60 days in which to propose amendments with a view to claiming that matter. I award costs against the applicant.

(J L Roveta)

Supervising Examiner of Patents

18 0CT 1985