Morwood Holdings Pty. Ltd. v. Devilbiss (Australasia) Pty. Ltd. and Robert J. Gray and Frederick G. Coucher

[1986] APO 19

In the Matter of the Patents Act 1952

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In the Matter of Application No. 524427 for a Patent by MORWOOD HOLDINGS PTY. LTD.

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In the Matter of Oppositions thereto by DEVILBISS (AUSTRALASIA) PTY. LTD. and ROBERT J. GRAY and FREDERICK G. COUCHER.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        Application No. 524427 entitled "Spray Booth" is based on a provisional specification lodged 29 March, 1978.  The complete specification was lodged on 26 March, 1979 and was advertised accepted in the Official Journal of 16 September, 1982.  On 15 December, 1982 two notices of opposition were lodged respectively by DeVilbiss (Australasia) Pty. Ltd. and by Robert J. Gray and Frederick G. Coucher.  The lodgement and service of the evidence was completed on 13 April, 1984 and the matter came to hearing in the Canberra session of November 1984.
        The applicant was represented by Mr. A. Tatlock of A. Tatlock & Associates, patent attorneys, Melbourne, and the opponents were represented by Mr. D. Shavin of Counsel instructed by Mr. S.H. Wilson of Clement Hack & Co., patent attorneys, Melbourne.
        Whilst the notices of opposition specify 7 and 8 grounds respectively the only grounds argued at the hearing related to prior publication and novelty, obviousness and Section 40.
        A decision issued on 17 December, 1984, finding that all claims were either prior published or lacked novelty having regard to the Dynaclean booth

of the opponents.  That decision concluded with the following paragraph:

"As I have found that all claims are either prior published or lacking in novelty, the opposition succeeds, and I award costs against the applicant.  However, in my opinion there is novel, non‑obvious subject matter described in the specific‑

ation, and therefore I allow the applicant 60 days in which to lodge amendments which would cause the specification to claim this subject matter."

Subsequently, amendments were proposed by the applicant and were allowed, unopposed, on 15 November, 1985.
        Before the fate of the application was to be finally determined, the opponents requested to be heard again, asserting that the amended specification did not remove the grounds of objection set out in the decision of 17 December, 1984.  This matter was heard in the February 1986 sessions in Melbourne, with Mr. Tatlock of A. Tatlock & Associates, patent attorneys, representing the applicant and Mr. S. Wilson of Clement Hack & Co., patent attorneys, representing the opponents.
The Specification as Accepted
        The specification commences by stating that the invention relates to an improved spray booth and in particular to an improved spray booth of the water wall type.  It goes on to explain that water wall spray booths per se are known and are one of two types.  In the first type the ventilating fan which draws the over‑spray into the rear of the booth causes the air in which the over‑spray is entrained to move upwardly to exhaust and the water is pumped from a lower reservoir to a tank above the water wall, flows over the water wall down its face and returns to the reservoir.  In the second type of water wall spray booth the water in the lower reservoir is entrained in the air passing upwardly through ducts, strikes a deflector plate which lies basically transverse to the wall, the water being delivered to the upper surface of the booth and runs into an upper tank and from there over the water wall.  The description exemplifies this latter type of booth by reference to British Patent No. 1283202 to Etablissements Vandercleyen S.A., the specification of which is exhibited in the evidence in support.  The description continues that it is an object of the invention to provide a water wall spray booth of the second type which has advantages over and beyond those spray booths presently known.
        There follows a consistory statement in similar terms to those of claim 1, and description of the preferred embodiment with respect to two figures of drawings.  Significantly, the description includes the following matter:

"Extending upwardly from a position in the reservoir 15 to the intermediate plate 19 there is a plurality of ducts 30 which are circular in cross section and which increase in diameter from their lower end to their upper end, although the actual ends 31 are flared outwardly and are of larger diameter than the adjacent duct portion.  These ducts may be located by being moved rearwardly into slots formed in the intermediate plate 19 with the slots later being covered. Directly above the open upper mouths of the ducts there is a deflector 32 which extends the full width of the booth, the deflector comprising a downwardly directed portion 33 which is connected to the back 11 and, as illustrated in transverse section, as can be seen from Fig. 2, is substantially arcuate away from the downwardly directed portion, although the deflector could, in transverse section, be triangular or some other shape.  If required, this deflector can, in fact, be formed integrally with the floor 25 of the exhaust duct previously described."

The specification terminates with a statement of fourteen claims of which claims 1 and 7 read as follows:

"1.A water wall spray booth being an enclosure having an open front, a water reservoir at the floor of the booth, an intermediate plate extending substantially across the width of the booth and above the water reservoir to divide the booth into two volumes, the lower volume having the open front and the upper volume being closed and comprising an expansion chamber, at least one duct extending from a position above the operating water level in the reservoir to and through the intermediate plate into the expansion chamber, a tank adapted to receive water from the expansion chamber being located below the intermediate plate and extending substantially across the width of the booth, a water wall located in association with the tank and extending downwardly in front of the duct(s) to a position adjacent the operating water level in the reservoir, an exhaust fan located so as to withdraw air from the expansion chamber, means in the expansion chamber and extending substantially across the width thereof to alter the direction of air flow as it passes from the duct(s) to the exhaust fan, means to control the water level in the reservoir, the arrangement being such that on the exhaust fan being operated air is drawn into the lower volume through the open front, from the lower volume through the duct(s) to the expansion chamber, through the means extending substantially across the width of the expansion chamber and thus to exhaust, the air entering the duct(s) entraining a volume of water from the reservoir which water is released from the air whilst in the expansion chamber and when the direction of airflow therein is altered, the water being delivered to the tank which, when full, passes water over the water wall.

7.A spray booth as claimed in any preceding claim having a deflector located above the top of the duct(s) and extending substantially across the width of the booth, the deflector causing the air and entrained water to move towards the front of the expansion chamber."

The Amended Specification
        The amendments altered the claims, and made equivalent changes in the description.  Claims 1 and 7 as amended read as follows:

"1.A water wall spray booth being an enclosure having an open front, a water reservoir at the floor of the booth, an intermediate plate extending substantially cross the width of the booth and above the water reservoir to divide the booth into two volumes, the lower volume having the open front and the upper volume being closed and comprising an expansion chamber, at least one duct extending from a position above the operating water level in the reservoir to and through the intermediate plate into the expansion chamber, a tank adapted to receive water from the expansion chamber being located below the intermediate plate and extending substantially across the width of the booth, a water wall located in association with the tank and extending downwardly in front of the duct(s) to a position adjacent the operating water level in the reservoir, an exhaust fan located so as to withdraw air from the expansion chamber, means in the expansion chamber and extending substantially across the width thereof to alter the direction of air flow as it passes from the duct(s) to the exhaust fan, means to control the water level in the reservoir, the arrangement being such that on the exhaust fan being operated air is drawn into the lower volume through the open front, from the lower volume through the duct(s) to the expansion chamber, through the means extending substantially across the width of the expansion chamber and thus to exhaust, the direction of movement of the air flow being altered, other than by the air striking the confines of the expansion chamber, only by the air striking the means extending substantially across the width of the expansion chamber the air entering the duct(s) entraining a volume of water from the reservoir which water is released from the air whilst in the expansion chamber and when the direction of airflow therein is altered, the water being delivered to the tank which, when full, passes water over the water wall.

7.A spray booth as claimed in any preceding claim wherein the means extending substantially across the width of the expansion chamber is a deflector located above the top of the duct(s) and extending substantially across the width of the booth, the deflector causing the air and entrained water to move towards the front of the expansion chamber.

The Submissions
        Mr. Wilson, for the opponents, submitted that the amended claims did not satisfy the requirements of the decision in that they still lacked novelty over UK Patent Specification No. 785498, and in view of the Dynaclean spray booth as sold on the Australian market : further, he raised the issue of obviousness.
Mr. Tatlock, for the applicant, drew my attention to the judgement of the High Court of Australia in R. V. Smith : ex Parte Mole Engineering (1981) 35 ALR 119 and to my own decision in Perkin‑Elmer Corporation v. Varian Techtron Pty. Ltd. (1985) AIPC 90‑247. He said that whereas it was fine for Mr. Wilson to make submissions concerning the novelty of the amended claims with respect to the use of the Dynaclean spray booth, he was not entitled to reopen that question with respect to the UK specification or to reopen the matter of obviousness; both these matters had been considered as part of the first hearing under section 60 and the resulting decision had not criticised the application in suit as a result thereof.
        Mr. Tatlock is clearly correct in his view, and in following the law set out in the judgement and decision referred to above, I may not reconsider matters which were finally decided pursuant to the first decision issued in the instant matter.  This does not include the question of novelty respecting the Dynaclean booth, nor does it include matters which may have arisen as a result of the Section 77 amendment.
Novelty
        On this point the earlier decision recites:

"Firstly, claim 1 does not specifically exclude such splitters by disclaimer; secondly the claim does not define a construction which by its nature would exclude splitters. Consequently I find that claim 1 is prior published, as are many of the appended claims, including claim 7.  There is, as far as I can see, no novelty in any of the claims.  Mr. Tatlock put forward the argument at the hearing that claim 7 was specifically directed to the deflector 32, and therefore involved the novel concept of the invention.  In my view however claim 7 includes a deflector not differing in construction from the inclined eliminator panel of the Dynaclean booth."

Mr. Wilson has put forward two arguments, each contingent on a particular construction of claim 1.  The relevant portion of the claims reads:

"..... means in the expansion chamber and extending substantially across the width thereof to alter the direction of air flow ..... the direction of movement of the air flow being altered, other than by the air striking the confines of the expansion chamber, only by the air striking the means extending substantially across the width of the expansion chamber ....." (my underlining).

In support of his first argument Mr. Wilson adopts the construction that the underlined expression causes the claim to comply with the requirements of the first decision virtually by a form of disclaimer, i.e. the splitters have been excluded, and thus the claim defines a spray booth identical to the Dynaclean, less its splitters.  He then points out that as most of the suspended water in the airflow is eliminated by the "means ... extending substantially across the width ..." of the expansion chambers, i.e. the so‑called "Christmas tree" panels and the louvres, the booth claimed is not functionally different from the Dynaclean booth, and therefore lacks novelty.
        I cannot agree with Mr. Wilson's conclusions, though I agree with his construction of the claim.  Even assuming that the two booths are functionally identical, the one would be simpler and cheaper to construct than the other, as it has less parts.  If the applicant was the first to appreciate the utility of the simpler construction, then it is entitled to the consequential benefits under the Patents Act.  In any case, it seems to me that Mr. Wilson's conclusions depend on hindsight, for there is no evidence to show that it would have been manifestly plain to a skiller worker (i.e. not involving invention) in possession of the Dynaclean booth on the eve of the priority of the present application that the omission of the splitters from that booth would result in forming a booth construction of equal, or at least, useful, functionality.
        Mr. Wilson's second argument relies on an interpretion of the expression:

"means in the expansion chamber and extending substantially across the width thereof"

such that it includes the splitters of the prior art, therefore causing claim 1 to precisely define the Dynaclean booth.
        I do not agree with this construction, which, incidentally, Mr. Tatlock termed "ludicrous".  Both the Dynaclean and the instant booth have separator panels (louvre type constructions) extending across the width of their expansion chambers, through which the water laden air must pass before proceeding to exhaust.  The water laden air rises through a plurality of vertical ducts arranged to be located at spaced positions across the width.  The Dynaclean booth has a splitter located at the top of each duct.  Each splitter comprises a plurality of curved sheets of a fairly flat Vee‑shape in cross‑section, apices facing to the open top of the duct, and extending linearly transverse to the width of the expansion chamber of the booth whereby to deflect the air emerging from that duct in either direction along said width.  In my view it is not proper to say that the splitters, as a group, extend substantially across the width of the expansion chamber.  In fact, they are well spaced from each other, and it would be more correct to say that the splitters are located at spaced positions extending across the width of the expansion chamber.
Section 40
        As a result of the amendments made pursuant to the earlier decision, a problem has arisen with respect to the claims.
        Claim 1 recites that:

"..... air is drawn ..... through the means extending substantially across the width of the expansion chamber ....."

whereas claim 7 recites:

"wherein the means ..... is a deflector ....."

Presumably the deflector is the item 32 of the preferred embodiment and consequently is not capable of having air pass through itself, as required by claim 1.
        Claim 7 is also contradictory to the invention described in that it limits the "means" to being only the deflector and not to include the louvre panel constructions (cf. claim 8 which requires that the "means" "comprises louvres").
        This is a defect which could be readily remedied if claim 7 were amended to read (for example):

"A spray booth as claimed in any preceding claim including a deflector ....."

(Note that claim 7 before amendment referred to "having a deflector", so that the above problem did not then exist).
Conclusion
        In my view, the action by the opponents fails on the basis of the contended grounds.  I have found however a section 40 defect in the claims which, as it concerns those aspects of the invention pertinent to the novelty thereof, ought be remedied before the application proceeds to sealing.  (I would think that the applicant might also choose to amend claim 2, which is somewhat tautological in the second line). I allow the applicant 30 days from the date of this decision to propose amendments accordingly.
        As to the matter of costs, the opponents have been unsuccessful in their action : nevertheless, as a result of that action a defect which must be remedied has been drawn to my attention.  Consequently I determine that each of the parties should bear their own costs in relation to this action.

(J.L. ROVETA)