Mason & Porter Ltd v Coonara Heaters Pty Ltd

[1991] APO 50

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No 578430 by MASON & PORTER LTD and Opposition by COONARA HEATERS PTY LTD under S59 of the 1952 Act

Background

On 31 October 1984 Mason & Porter Ltd lodged application 34858/84 for an invention relating to stoves.  The application claims priority from two earlier applications filed in New Zealand on 1 November 1983 and 14 August 1984, respectively.  The application was advertised as accepted on 27 October 1988 and given the serial number 578430.  Notice of opposition under section 59 of the 1952 Act was lodged on 22 February 1989 by Coonara Heaters Pty Ltd and the matter was heard in Canberra on 21 August 1991.
         At the hearing, Mr J.G. Hinde, patent attorney of Spruson & Ferguson represented the applicant.  The opponent informed the Patent Office that they would not be attending the hearing and instead relied upon written submissions by their patent attorney, Mr L.J. Dyson of Watermark.
The Specification
         The specification commences with a statement that

"the invention relates to stoves and has been designed principally thogh not solely as a wood burning space heating stove.

It is an object of the invention to provide a stove which will at least provide the public with a useful device."

Then follows a consistory statement which corresponds to accepted claim 1.  Claim 1 reads as follows:

1.A stove including a combustion chamber, an exit for combustion gases leading from said combusting chamber, a fuel loading opening in said combustion chamber, a closure for said opening, said closure including a transparent

panel, an air admitting means through which air is supplied to the combustion chamber, a flue connection through which products of combustion are conveyed from the stove to a flue, a combustion chamber exit from the combustion chamber, a passageway between said combustion chamber exit and said flue connection, said air admitting means comprising an air inlet in a lower part of said stove leading to a duct means, the duct means including an upper duct passing along an upper part of said combustion chamber adjacent said loading opening and including air transfer opening or openings arrnaged so that air from said duct is passed into said combustion chamber through said air transfer opening or openings to pass downwardly over the transparent portion of said door to the combustion zone of said combustion chamber, said air inlet means being disposed in a lower tube and said duct means include two side tubes at least parts of which are exposed to a fire in the combustion chamber connection said lower tube to said upper duct.

Following the consistory statement is a detailed description of one preferred embodiment of the invention described with reference to the accompanying drawings.
         In this embodiment the duct and air admitting means is in the form of a rectangular ducting arrangement having upper, lower and two side limbs.  The ducting surrounds the fuel loading opening and transparent door panel.  Air is fed into the ducting arrangement through openings provided in a wall of the lower limb.  The air then flows upwardly along the two side limbs into the upper limb.  During its upwards passage the air is heated due to the side limbs being adjacent the combustion chamber.  Finally, the heated air exits downwardly through small openings provided in a wall of the upper limb, over the transparent panel and towards the combustion region.
         The specification ends in nine claims.  Apart from claim 9 which is an omnibus claim, the other claims are appended either directly or indirectly to claim 1.
Grounds of opposition and evidence
         The opponent's notice of opposition refers to grounds (c), (d), (e), (f), (g), (h) and (i) of section 59(1).  However, the written submissions lodged by Mr Dyson dated 16 August 1991 on behalf of the opponent state that the opponent relies upon the grounds of prior publication (e), manner of manufacture (f), obviousness (g) and novelty (h).  NEither the evidence nor the submissions includes any reasoning to support an allegation that the invention is not a manner of manufacture.
         The opponent's evidence comprises a declaration and an exhibit by John E. Searle who is employed by the opponent company as the Engineering Development Manager.  Mr Searle states that he has fifteen years experience in relation to heat transfer equipment, has received intensive training in the development of combustion heaters and has attended the performance and clearance testing of Coonara Heaters at Amdel laboratories.  In his declaration he refers to two US patent specifications and one Australian patent specification.
         The applicant's evidence comprises a declaration by William Victor Yeo who is the Manager of the Materials Services Section of Amdel Ltd, an independent contracting company engaged in research, development, consulting and services in the fields of materials and minerals.  Mr Yeo states that he has spent the last twn years testing and assessing solid fuel combustion heaters.  He is currently acting Chairman of the Standards Association of Australia for solid fuel combustion heaters and a member of the International Standards Organisation Committee for solid fuel combustion heaters.  He is also a signatory of the National Association of Testing Authorities in the field of solid fuel combustion heater assessment.  In his declaration he refers to the three patent specifications mentioned in the opponent's evidence.

Proposed amendments
         On the day of the hearing the applicant lodged a request to amend pursuant to section 104 of the 1990 Act.  The purpose of the amendments is stated to be to clarify claim 1 and the consistory statement by cancelling the words "an exit for combustion gases leading from said combusting chamber" from both claim 1 and the Consistory Statement.  Because the applicants were not represented at the hearing and therefore not able to make submissions on the proposed amendments, and also because the proposed amendments are not directly concerned with the grounds of opposition relied upon by the opponent, I have not considered the proposed amended specification.  In accordance with the 1990 Act, if the Commissioner grants leave to amend, a notice of that fact will be published in the Official Journal and it will remain open to a person to oppose the request.
Decision
Before discussing the issues of prior publication, novelty and obviousness raised by the opponent I will first address a section 40 deficiency which has been brought to my attention by the applicant's previously mentioned proposed amendments to clarify claim 1 and the consistory statement. Sub-section 60(2) permits me to also consider this ground of opposition.
Claim 1 at lines 1 and 2 includes the feature "an exit for combustion gases leading from said combusting chamber". At lines 7 and 8 reference is made to "a combustion chamber exist from the combustion chanber". There is no support in the body of the specification for two such exits and therefore the claim does not satisfy section 40.

Prior publication and novelty
         To support its opposition on the grounds that the invention as claimed is prior published or lacks novelty, the opponent has directed attention to three patent specifications forming the exhibit JHS1 referred to in Mr Searle's declaration.  These specifications are AU 525662, US 4362146 and US 4169458, all of which were published before the priority date of the present claims.  I will consider each of these specifications in turn:
AU 525662
         This specification discloses a stove provided with a combustion chamber having a door with a transparent window.  Incoming air enters through an air admitting means located above the door.  The air is deflected downwardly over the transparent door and into the combustion zone.  The differences between the citation AU 525662 and present claim 1 are as follows:

(i)The citation discloses air admitting means provided above the door, whereas claim 1 is restrictged to air admitting means provided in a lower part of the stove.

(ii)The citation does not disclose the two side tubes at least parts of which are exposed to a fire in the combustion chamber and which communicate between this lower tube air intake and the upper duct located above the door.

The opponent has not provided any evidence or submissions relating to these differences.  The applicant's evidence identifies the above differences and Mr Yeo states that the citation relates to a different construction.  It seems to me that the path and treatment of the air prior to being passed downwardly over the window as disclosed in the citation, is clearly difference to that of the air flow and duct/tube arrangement of claim 1.  On the evidence before me I am not satisfied that these differences, which are essential features of claim 1, can be considered to be merely 'mechanical equivalents' or 'workshop variations'.  Therefore, I find that prior publication of specification AU 525662 does not deprive claim 1 of novelty.  As all the other claims are restricted to the features of claim 1, thereby limiting them to the above differences (i) and (ii), the citation does not deprive them of novelty.
US 4362146
         This specification discloses a stove provided with a combustion chamber having a door with a transparent window.  Incoming air enters through an air admitting means located in a lower part of the stove.  A portion of this air is pre-heated at the base of the stove and passed upwardly over the window and into the upper part of the combustion chamber to form a secondary combustion air supply.  The differences between the citation US 4362146; and present claim 1 are as follows:

(i)The citation discloses a flow of air upwardly over the window, whereas claim 1 is restricted to a flow of air downwardly over the window.

(ii)The citation does not disclose the two side tubes at least parts of which are exposed to a fire in the combustion chamber and which communicate between the lower tube air intake and the upper duct located above the door.

The opponent has acknowledged these differences in its submissions but has not provided any discussion as to why these differences should not confer novelty.  The applicant's evidence identifies the above differences and Mr Yeo states that the citation relates to a different construction from that claimed and, as such, does not lead to the present invention.
         On the evidence before me I am not satisfied that these differences, which are essential features of claim 1, can be considered to be merely 'mechanical equivalents' or 'workshop variations'.  Therefore, I find that prior publication of specification US 4362146 does not deprive claim 1 of novelty.  As all the other claims are restricted to the features of claim 1, thereby limiting them to the above differences, the citation does not deprive them of novelty.
US 4169458
         This specification discloses a stove aprovided with a combustion chamber having a door with a transparent window.  There are two air inlets.  One for room air and one for outside air.  Both inlets are located in a lower part of a stove.  The room air is heated on its upward passage through an inner chamber locatged around the combustion chamber into the room in hot convection currents.  The outside air (combustion air) is fed upwardly through an outer chamber to an upper chamber located above the door.  Air from this upper chamber passes through side vents which direct a stream of air across the interior surface of the doors in a sideways downward movement into the combujstion chamber to serve as combustion air.  The outside air in the outer chamber acts as an insulator to enable the exterior surface of the cover of the stove to remain cool enough to be mounted abutting combustible structural members.
         Mr Searle in his evidence for the opponent states that the ditation discloses

"ducting to connect the lower inlet for carrying combustion air to the upper chamber and preheated air is dispersed from the upper chamber to side vents or tubes and over the glass door and into the firebox ... thus I say that all features of any substance in claims 1 and 2 of the herein opposed patent application are published in US patent 4149458."

Mr Dyson in his written submission on behalf of the opponent states that the citation

"discloses a spacing between the upper surface of the firebox casing and the combustion chamber from wghere pre-heated air is dispersed from the upper chamber to side vents and over the glass door and into the firebox to assist subsequently in the burning of the fuel in the combustion zone.  This is considered to be equivalent to the duct means including an upper duct passing along an upper part of the said combustion chamber adjacent said loading opening and including air transfer opening or openings arranged to that air from said duct is passed into said combustion chamber through said air transfer opening or openings to pass downwardly over the transparent portion of said door to the combustion zone of said combustion chamber, as specified in claim 1 of the opposed application.  Furthermore, the citation discloses an air inlet means disposed in a lower tube and duct means inclujding two side tubes at least parts of which are exposed to the fire in the combustion chamber connecting said lower tube to said upper duct."

Mr Yeo, in hnis evidence for the applicant states that:

"There is no mention in the citation of air transfer opening or openings in the upper duct 46 of the citation.  There is no reference to air passing downwardly over glass doors 20.  In Specification 4,169,158 the air is stated to circulate downwardly through side vents 48 and across the interior surface of doors 20 and the arrows showing air flow in Figures 1 and 2 of that specification show such downward sideways movement.  The dynamic effect of the downward sideways movement from side vents 48 is substantially different from the direct downward movement from the air transfer openings of the upper duct of Claim 1 of the opposed invention is very important in assisting in keeping the products of combustion away from the upper part of the door by the flow of air from the transfer opening or openings.  In my view the side opening arrangement of the citation would not be effective in keeping at least the upper central part of the doors clean."

Mr Yeo also states;

"there is no exposure to a fire in the combustion chamber of the side tubes or any equivalent of the side tubes because the chamber 42 is separated from the combustion chamber by the chamber 36.  Thus the U.S. citation relates to a different construction from that claimed in Claim 1 of the opposed Patent Application 578,430, because the U.S. citation relates to a zero clearnace fireplace unit in which incoming combustion air is arranged to cool the chambers through which it passes and consequently there is no direct heating of the upwardly rising combustion air by a fire in the combustion chamber."

Mr Yeo continues:

Mr Searle in his paragraph 11, by saying "I say all features of any substance in Claim 1 and 2 of the herein opposed Patent Application are published in U.S. Patent 4,169,458", is glossing over the importance of the air transfer openings arranged so that air passes downwardly over the transparent portion of the door to the combustion zone of the combustion chamber and Mr Searle is saying that there is no substance in the differneces between the citation and the claimed construction.  He gives no reasons for making this statement and I disagree with this statement."

In my view there are two differences between the US citation 4169458 and present claim 1:

(i)the citation does not disclose exposure of the side tubes carrying the combustion air to a fire in the combustion chamber.  The combustion air (outside air) of the citation is separated from the combustion chamber by an inner chamber (36) during its upward travel.  The citation teaches the use of the combustion air, during its upward travel.  sThe citation teaches the use of the combustion air, during its upward travel, to cool the outer wall of a chamber (42) so that the stove can be mounted abutting combustible structural members.  The combustion air is not heated until it reaches the top of the combustion chamber where it is heated in a further chamber (46).

(ii)the citation does not disclose air transfer openings in the upper duct arranges so that air is passed downwardly over the transparent portion of the door.  The air of the citation is passed through side vents (48) in a downward sideways movement.

The question now arises as to whether these two differences are sufficient to confer novelty on claim 1 of the present invention.  On the evidence before me I am not satisfied that these differences, which are essential features of claim 1, can be considered to be merely 'mechanical equivalents' or 'workshop variations'.  The citation US 4169458 teaches against the idea of urging using heat from the combustion chamber to heat the outside (combustion) air during its travel up to the upper duct.  Also, I have no reason not to agree with Mr Yeo's evidence that the side opening arrangement of the citation would not be as effective as, and in a substantially different arrangement to, the direct downward air movement f claim 1 of the present application.  Therefore I find that prior publication of specification US 4169458 does not deprive claim 1 of novelty.  As all the other claims are restricted to the features of claim 1, thereby limiting them to the above differences, the citation does not deprive them of novelty.
Obviousness
         On the question of obviousness, there is no evidence before me to clearly establish the common general knowledge in the art in Australia at the priority date.  Accordingly, I am unable to consider the obviusness ground further.
Conclusion
I have decided that the specification does not comply with section 40 of the Patents Act. I allow the applicant 60 days from the date of this decision to ask for leave to amend the specification to overcome these defects. (If the applicant so chooses, reliance may be made on the proposed amendments referred to earlier in this decision.)

Although I have upheld Coonara Heaters opposition to application 478430 I have not done so on the basis of any grounds or submissions raised by the opponent.  In fact the defects were brought to my attention by the applicant upon lodgement of the proposed amendments.  Consequently, I award costs against the opponent.

(N. YOUNG)
  Supervising Examiner of Patents