MALKISS AIR CONDITIONING PTY. LIMITED

[1986] APO 29

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 24851/84 for Letters Patent in the Name of MALKISS AIR CONDITIONING PTY. LIMITED

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In the Matter of Examiner's Objection thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        This matter concerns an application for a patent entitled "HEAT RECOVERY PUMP" lodged on 29 April, 1983.  Following a request for examination, the Examiner issued a first adverse report on 11 March, 1985.  Despite proposed amendments and submissions in rebuttal, the examiner in the most recent report dated 26 March, 1986 has maintained objections raised in earlier reports, namely that the invention claimed is prior published and not novel.  The applicant requested a hearing which took place in Canberra on 6 June, 1986 with Mr. A. Tatlock, patent attorney, of A. Tatlock & Associates appearing on behalf of the applicant.
        The proposed amended specification commences by stating that:

"This invention relates to a heat pump which can be used to recover waste heat from a heating system or which can be used as an air conditioning system.

In particular, the invention relates to a heat pump which is adapted to be used with a ducted heating system to ensure maximum utilisation of waste heat from the combustion gasses and which, at the same time, can, under some circumstances, act as the whole heat source for the system.

In a second aspect the invention relates to a heat pump forming an air conditioning system for use with a ducted heating system and which may have associated therewith a heat recovery pump."

Then follows a brief discussion of heating and heat pump systems and mention of the fact that many consumers having heating systems using a ducted recirculation system also require an air conditioning system to be associated with that system.
        The specification continues:

"Hitherto it has been difficult to provide a satisfactory system as, normally, if air conditioning is to be associated with such a heating system, it has been necessary to split the duct system and to connect the air conditioning evaporator into the duct.

This is normally down stream from the furnace and can be difficult to fit and necessitates the plumbing to be done by skilled technicians.

It is an object of the present invention to provide a heat recovery pump for use with a ducted heating system whereby maximum utilisation of waste heat from the system can be achieved.

A second object is to provide an air conditioning system for use with the ducted heating system which overcomes or minimises the disadvantages hereintobefore described and a third object of the invention is to provide a system which can be directly connected to a ducted heating system whereby the physical appearance of the system is effectively maintained whilst, at the same time, providing the benefits of the invention."

Then follows a consistory statement in terms identical to claim 1 followed by a description of one embodiment of the invention.
        There are thirteen claims in all and apart from an omnibus claim, all others are appendant claims to independent claim 1.  Claim 1 is as folows:

"1.For use with a ducted heating system, a heat pump, comprising first and second heat exchangers, the first heat exchanger being adapted to be physically located within the furnace of the system between the inlet and outlet ducts thereof, said first heat exchanger extending outwardly from the remainder of the heat pump and being dimensioned such that when it is located within the furnace, it substantially occludes the passage between the inlet and outlet ducts whereby substantially all of the air passing therebetween must substantially pass through the first heat exchanger, whereby when the heat pump is in operation, there is a transferance of energy between the heat exchanger and air circulating in the system which passes thereover."

The specification describes with reference to drawings one embodiment of the invention which includes a heat pump having two heat exchangers, fan, compressor, etc., arranged in a unitary structure but with one of the heat exchangers projecting laterally from one side of the structure.  This one heat exchanger is shaped and designed so as to be capable of projecting (in use) into a gas furnace of a heating system and be located between the return air duct and the gas burners of the furnace.  This heat exchanger is also dimensioned such that when so located, it substantially spans the air flow passage through the furnace thus causing, in use, all return air to substantially pass through the heat exchanger.  There are two modes of operation of the heat pump when associated with a furnace:

(i)a cooling mode for when the furnace is not operated, and

(ii)a heating mode to supplement the heat obtained from the furnace.

In the first mode, the heat exchanger in the furnace absorbs heat and thereby cools the air passing from the return air duct via the gas burners (not operating) to the ducting system.  The heat absorbed by the heat exchanger is removed to the ambient air by the other heat exchanger.  In the second mode of operation, the other heat exchanger absorbs heat from the flue gases of the furnace and the ambient air.  This heat is removed by the heat exchanger in the furnace acting as a radiator and thus heats the air passing from the return air duct via the burners (either on or off) to the ducting system.
        Before considering the examiner's objections, some discussion is necessary on the scope of claim 1.  Leaving aside initially some of the functional requirements of the claim, the claim in essence defines a heat pump which comprises two heat exchangers.  (It should be noted that the term "comprises" implies that the heat pump is not limited to only these two features).  One of the heat exchangers, the "first", has the functional requirement of "being adapted to be physically located within the furnace of the system between the inlet and outlet ducts thereof".  Thus, the heat exchanger only has to have this capability and not necessarily be in the furnace in situ.  Furthermore, even though it is required that the heat exchanger be "adapted to be physically located within the furnace", there is nothing in this expression or the claim generally that suggests that the heat exchanger need have any special constructional requirements to be so adapted, e.g. to be able to withstand high temperatures.  Therefore I conclude that the first heat exchanger could be of the ordinary type commonly placed in ducts.
        This first heat exchanger is also defined as "extending outwardly from the remainder of the heat pump".  Mr. Tatlock has suggested that because of this requirement "we have at least by inference a unitary type device".  I do not however conclude that the arrangement is so restricted. As there is no constructional definition of "the remainder of the heat pump", that "remainder" may itself not constitute a unitary device.  In any event, the definition in my view includes the situation where the heat exchanger is quite separate from the remainder of the heat pump apart from the necessary interconnecting conduits.  The qualification "outwardly" merely suggests to me a positioning away from those components making up the remainder of the heat pump.  Claim 9, which specifies that "the heat pump is a complete unit", to me lends support for my above stated view since it leads to an interpretation wherein Claim 9 is not rendered redundant.
        Finally, a further requirement of this heat exchanger is that it be dimensioned such that when fitted in the furnace "it substantially occludes the passage between the inlet and outlet ducts whereby substantially all of the air passing therebetween must substantially pass through the first heat exchanger". As the furnace is not a limitation of the claim nor is its construction defined, this requirement cannot be given any specific meaning that would give a construction of any particular type to the heat exchanger.  In addition, the use of the term "occludes" is somewhat confusing given the context since it implies the stopping up of the passage to prevent, rather than to allow, the passage of air.
        The examiner has maintained an objection of prior publication and want of novelty to the application and complete specification based on known heat pump systems such as those disclosed in a number of patent specifications cited at the first report stage.  The examiner's objection in part reads as follows:

"... attention is drawn to specification 48840/79 (527267) which is merely an example of known heat pumps. ... the previous objections made under Section 48(3) remain pertinent. There is nothing new about the heat pump of at least claims 1‑2, these pumps exemplified by the previous citations can be seen in many homes and shops with one heat exchanger indoors and one heat exchanger outdoors, the outdoor heat exchanger could easily be installed in a furnace system if required and depending on the size of the duct could occlude this duct."

The examiner's report makes specific reference to AU specification 527267.  This specification discloses amongst other things, a heat pump which comprises two heat exchangers or coils, a compressor, a four way valve and a controller. One of the heat exchangers, called the indoor coil, is described as being located within a supply duct through which air passes from a furnace to an outlet, and the drawings schematically depict such an arrangement with the rest of the components of the heat pump located separately from the heat exchanger in the duct.
        Of the specifications cited by the Examiner in his reports, AU 527267 is, I believe, most significant in that it discloses not only a heat pump of well known arrangement but also the positioning of one of the heat exchangers in the duct system associated with a furnace thereby to either heat or cool air flowing in that duct.  As the heat exchanger of the illustrated heat pump is shown in a duct, it is clearly capable of being placed in another duct or passage irrespective of its location, such as in a furnace of a ducted heating system.  Mr. Tatlock submitted that AU 527267 does not show the heat exchanger in the furnace and he is correct in this regard, but this is not material since that feature is not a requirement of claim 1: the heat exchanger is only required to be adapted to be placed within a furnace, and in my view the heat exchanger of the citation is equally so adapted, depending on the furnace construction.  Furthermore it follows that as the heat pump of claim 1 is not limited to being associated with a furnace of any particular construction, the requirement concerning this heat exchanger being dimensioned to substantially occlude the inlet to outlet duct passage of the furnace, cannot constitute a feature material to the question of novelty of claim 1.
        Claim 1 does however require one heat exchanger of the heat pump to extend outwardly from the remainder of the heat pump, which requirement I have discussed earlier in this decision.  Specification AU 527267 does not illustrate in the drawings or disclose in the general description that the heat exchanger extends "outwardly from the remainder of the heat pump".  The question now arises whether this difference from the citation is sufficient to impart novelty to the claim.
        It seems to me that the difference mentioned represents nothing more than an arrangement which those skilled in the art would commonly employ.  Fig 1 of AU 527267, it is noted, is a schematic illustration of an air conditioning system including a representation of the various components of the heat pump with the indoor coil shown in the duct and connected by suitable conduits to other components shown exterior of the duct. In general, the very nature of a heat pump, bearing in mind the principles on which it operates, requires one heat exchanger to be separate from the other simply because the respective heat exchangers must work in different air spaces to enable the appropriate conditioning.  Many different arrangements of heat pumps are employed in the industry, a fact which is readily apparent from text books, literature from the industry, actual installations and to some extent disclosures in patent specifications.   For example one well known type of heat pump commonly employed has a constructional form wherein all the components are in a single unit but with one heat exchanger arranged to one side (or end) and separated by some barrier from the rest of the components in the unit (commonly used as window or wall mounted self‑contained units); alternatively another commonly employed arrangement locates the so‑called indoor heat exchanger in the space to be conditioned with the remainder of the heat pump components, apart from necessary connecting conduits, spaced somewhat remote therefrom (e.g. on the roof of, or otherwise outside, the building).  Since these common arrangements have by their construction one heat exchanger outwardly of the remainder of the other components of the heat pump, in my opinion the difference in question is merely a matter well known in the art and relates to a construction that a skilled addressee would naturally employ.
        For the reasons given, I have concluded that any differences between the invention claimed in claim 1 and the disclosure of AU 527267 are matters which do not confer novelty to that claim.  With regard to the appended claims, these introduce features which in my view appear to be normally employed in heat pump systems or which because of the application to which the heat pump is to be put, would be normally needed for optimum efficiency.  As such I do not consider that the features introduced by these claims are novelty conferring features.  With particular regard to claims 11 and 12, these arrangements lack novelty on the basis that fireplace waste heat is an acknowledged energy source, amongst others, for utilization in a heat pump.  Therefore in my view no presently proposed claim is novel.
Conclusion
        I am satisfied that lawful grounds of objection exist to the application and complete specification in its presently proposed form.  As the specification may contain novel subject matter, rather than refuse to accept the application outright at this stage, I shall afford the applicant an opportunity to propose further amendments in the time remaining for acceptance with a view to over‑coming the lawful grounds of objection and gaining acceptance.

(T.R. BRUHN)