Murray Joseph Wright v Ajax Davey Pty Ltd

[1987] APO 9

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of an Application under Sub‑Section 68B(1) for an Extension of the Term of Petty Patent 541459 in the Name of MURRAY JOSEPH WRIGHT

‑ and ‑

In the Matter of a Notice under Sub‑

Section 68B(3) in the Name of AJAX DAVEY PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Petty patent application 30747/84 in the name of Murray Joseph Wright for an invention entitled "A PUMP/HEATER UNIT" was lodged on 16 July, 1984 as a divisional application of patent application 11270/83 which has now lapsed.  A petty patent numbered 541459 was sealed in respect of the application on 21 March, 1985.  On 21 February, 1986 the patentee applied under sub‑section 68B(1) for an extension of the term of the petty patent, and on the same day a notice under sub‑section 68B(3) was lodged on behalf of AJAX DAVEY PTY. LTD.
         Section 68B provides for the extension of the term of a petty patent.  The provisions are such that if the Commissioner is satisfied of the existence, in relation to a petty patent of any of the grounds set out in paragraphs 100(1)(b) to (g) of the Act, he may refuse to grant an extension of the term.  In the present case, the notice under sub‑section 68B(3) asserts that the facts establish

those grounds as set out in paragraphs 100(1)(d), (e) and (g).  Those grounds are:

(d)that the invention, so far as claimed ... in the claim of the petty patent specification ... is not an invention within the meaning of this Act;

(e)that the invention, so far as claimed ... in the claim of the petty patent specification ... was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim; and

(g)that the invention, so far as claimed ... in the claim of the petty patent specification ... was not novel in Australia on the priority date of that claim.

Following lodgement of the sub‑section 68B(3) notice, the Commissioner determined that the petty patentee be allowed an opportunity to lodge and serve evidence in answer to the notice.  The patentee subsequently filed such evidence within time so allowed.
         In accordance with practice dictated by sub‑section 68B(8) and regulation 85, both parties were offered a hearing and both indicated their desire to be heard.  The hearing was held in Canberra on 4 December, 1986.  Mr. R. Hind, patent attorney of Davies & Collison, appeared for the patentee, and Mr. B. Caine of Counsel advised by Mr. L. Dyson, patent attorney of Edwd. Waters & Sons appeared for the informant.
The Specification
         The specification includes 4 pages of description and a drawing sheet depicting an embodiment of the invention.  It commences thus:

"This invention relates to pumps and more particularly relates to a construction of pump for a spa or the like small pool, which pump is adapted to heat a fluid or liquid passing therethrough.

An object of the present invention is to provide a pump and heater unit for a spa or the like small pools."

Then follows a consistory statement in similar terms as claim 1.  Claim 1 reads as follows:

"A pump/heater unit usable with a spa or the like pool, the unit including a moulded, fabricated or cast plastics housing which has formed therein first and second chambers, the first chamber acting as a vacuum chamber and has formed therein an inlet or is connected to a casing member with an inlet formed therein, the first chamber having mounted therein an impeller, the second chamber which acts as a discharge chamber having formed therein an outlet of the housing, the housing having a communication port or ports between the first and second chambers so that the impeller which is driven by a drive means associated with the housing operates to create a flow of liquid from the inlet to the outlet past at least one spiral shaped electrically operated heating element situated in the discharge chamber, the element(s) is(are) controlled by a thermostat and/or a liquid pressure or liquid sensing means associated with the housing to thereby control and heat the liquid passing through the housing."

The specification includes a description of the invention by reference to a single figure.  This figure shows in cross section a pump and heater unit which includes a housing structure providing an inlet (suction) chamber 7 housing a driven impeller, and a discharge (pressure) chamber 15 to receive fluid from the impeller.  Arranged within the chamber 15 is "a spiral electrical heating element" which is connected via a connector on the housing and electrical wiring to "a power supply through appropriate protection and safety devices".  The description also refers to the attachment of ancilliary equipment on the unit in the following terms:

"The second chamber 15 has therein an outlet 16 from the housing which constitutes the outlet from the pump and to which, in use, appropriate pipes and ancilliary equipment are attached.  For example in a spa pool situation a conduit 17 is fixed to the outlet 16.  The conduit 17 has an extension 18 in which safety controls, for example, temperature controls, water sensitive activation switch and a pressure switch can be included."

I note that the specification provides no further discussion of the "safety controls" mentioned.  Consequently it is not apparent from the description itself whether the safety controls relate to control of the heater element, the impeller or both.  However I consider that an addressee of the specification would interpret the safety controls exemplified therein to relate to safety controls for the heater element such controls enabling, for example, suitable temperature control of the flowing liquid and avoidance of dry operation of the heater element.  Furthermore, I consider that in the art, "temperature controls" would be taken to include a thermostat control to enable control of the heater element output.
The Evidence
         The sub‑section 68B(3) notice filed by Ajax Davey was accompanied by:

(i)a Statement of Facts which addressed the three grounds referred to in the notice, and

(ii)a statutory declaration by Richard Grove an engineer who is manufacturing manager of Ajax Davey, a company manufacturing pumping equipment including pumps suitable for spas and pools.

The patentee's evidence in answer consisted of affidavits by:

(i)Murray Joseph Wright, the patentee and inventor, and

(ii)William Ian Wood, a consulting engineer.

Within days of the scheduled hearing, both parties lodged further declarations which they sought to be considered as additional relevant evidence in the proceedings.  These additional declarations comprised:

(a)a statutory declaration by Eric J. Wells, a chartered engineer and a person with experience in pump design (filed on behalf of Ajax Davey),

(b)a statutory declaration by Arnold Howard Hancock, Engineering and Design Manager of Finsbury Pumps, South Australia (filed on behalf of the patentee).  Hancock has had more than 30 years pump design experience including experience with pumps for swimming pools and spas.  Finsbury Pumps, through its parent company, has according to this declaration "recently completed negotiations ... to  acquire Petty Patent 541459".

Admissibility of Additional Evidence
         At the hearing both parties argued for the admissibility of these additional declarations.  Mr. Caine, for the informant, submitted that in a tribunal such as this and given the nature of the proceedings, the role of the informant is to provide all relevant information to the Commissioner so that the Commissioner is then able, in the public interest, to make an informed decision.  Mr. Hind, for the patentee, added that in his view the Commissioner was bound to consider all relevant material placed before him.  He also submitted that as his client had not had a chance to consider the Wells declaration, if the Commissioner considered this evidence was crucial to the decision, an opportunity should be provided for the patentee to fully consider it and provide further submissions thereon.
         In my view the Patents Act and the Regulations permit an informant to provide to the Commissioner within 11 months of the sealing of the petty patent the notice under sub‑section 68B(3) together with a statement of facts including any supporting evidence (see Vulcan Australia Limited v. Braemar Appliances Pty. Ltd. 6 IPR 143, (1986) AIPC 90‑269). The question of the admissibility of evidence provided by the informant after 11 months, or provided by the patentee beyond any time period allowed by the Commissioner, is a matter to be determined given the circumstances and merits of each case. In this case, the parties have pressed the admissibility of the additional evidence which was filed prior to the hearing subject only to Mr. Hind's qualification as mentioned. Also, the nature of the additional evidence relates to the issues of novelty and obviousness of the invention and hence, prima facie, is relevant to the matters to be decided.
         I am of the view that in this case the additional evidence ought to be admitted in the public interest and I do so formally admit it.  In view of my subsequent findings, I have found it unnecessary to invite the patentee to further respond to the informant's additional declaration.
The Petty Patent Claim
         At the hearing Mr. Caine identified a breakdown of the features of the pump/heater unit claimed and for convenience I will adopt the same breakdown.  Accordingly the pump/heater unit includes:

1.a plastics housing,

2.two chambers formed in the housing being ‑

(a)a first or vacuum chamber with an inlet or connected to a casing with an inlet,

(b)a second or discharge chamber with an outlet,

3.communication port(s) between the first and second chambers,

4.a driven impeller within the first chamber,

5.a spiral shaped electrically operated heating element mounted within the second chamber,

6.the impeller creating a flow of liquid from inlet to outlet past the heating element,

7.the element being controlled by a thermostat and/or a liquid pressure or liquid sensing means associated with the housing to control and heat the liquid passing through the housing.

The petty patent application was lodged as a divisional application to patent application 11270/83.  Consequently, as determined in accordance with sub‑section 45A(2), I take the priority date of the petty patent claim to be 10 February, 1982.
Manner of new manufacture
         The claim is directed to a pump/heater unit comprising a number of integers defined in association with a plastics housing.  It was argued that the claimed invention was not an invention within the meaning of the Act, it being submitted that the claim merely defined a set of known integers each of which performed its own function independently of the others.  It was thus submitted not to be a patentable combination as the integers had no working interrelation producing a new or improved result.
         It was common ground between the parties to this matter that "in‑line" heater arrangements were known prior to the priority date, such arrangements having a heater unit spaced separately from and located downstream from a pump unit, and that impeller‑type pumps were also known.   In the evidence and submissions there was a difference of views between the patentee and informant concerning whether the pump/heater unit claimed exhibited a new or improved result particularly with regard to the overall pump performance. Aside from that performance aspect, it seems to me that the overall unit construction exhibits an advantage and a new result over the prior "in‑line" heater arrangements by having the heater facility within the pump unit thus avoiding separate units and the associated connection components necessarily required therebetween.   In my view the claim defines a manner of manufacture and the question of its newness will follow from the following novelty and obviousness considerations.
Novelty
         The informant's statement of facts makes reference to a number of Australian and UK patent specifications in support of its contention that the claimed invention is not novel and obvious.  With reference to the novelty question, the statement asserts:

"The invention is not novel in the light of the well known hair dryer tangential heater or like air pump which incorporates an electric heating element integrally within the outlet chamber thereof embodying an impeller type pump.  Examples of this are disclosed in Australian patent specification No. 295478 and UK patent specification No. 1,561,066.

Air and water are fluids, and the application of the same machinery principle from air fluid to water fluid is not novel."

AU Specification 295478 relates to an air circulating apparatus whereby a conditioned air screen can be created at, for example, a room entrance.  The apparatus utilizes an axial intake‑
peripheral discharge fan wheel mounted within a casing, the air being discharged from the casing via two venturi‑like restricted outlet ports.  Cooling or heating coils can be arranged in the ducts leading to the outlet ports.  There is no disclosure that the casing is of plastics material or that the heating is by way of a spiral shaped electrically operated heating element.
         GB Specification 1561066 relates to an electric fan heater wherein a centrifugal flow fan is mounted in a plastics housing.  A helically wound heating element is arranged on the upstream side of the fan to heat air moved by the fan.  There are no identifiable first and second chambers disclosed.
         Clearly the devices disclosed in these two specifications do not possess all the features of the unit claimed.  There is the further distinction in that the prior specifications relate to devices to produce and heat air streams whereas the present invention is specifically directed to a device usable with liquid as encountered in a spa bath or pool.  I will comment further on these specifications later.
         Mr. Caine for the informant submitted that the present specification was addressed to a man skilled in the fluid pumping art and hence a person equipped with knowledge covering both air pumps and liquid pumps.  Consequently he further submitted that anyone who was skilled in the art of water pumps would have no difficulty, when confronted with prior publications or prior knowledge in relation to the heating of air, to adapt that information and utilize it in relation to water or liquid pumps.  While Mr. Caine was somewhat critical of statements made by both Wood and Wright in relation to the relevant addressee and whether persons developing equipment for spa pools would contemplate using technology from the air fan art, it is worth noting that Ajax Davey supplied no evidence on this issue.
         It seems to me that the relevant addressee of the present specification is not as general as Mr. Caine suggested.  Apart from the reference in the initial paragraph of the specification to a pump "to heat a fluid or liquid", the remainder of the specification including the claim is directed to a pump associable with spas or pools and for creating a flow of liquid.  Accordingly, in the absence of clear evidence to the contrary, I am of the view that the relevant addressee is a person experienced in the liquid pump technology.  I am not convinced that such a person would as a matter of course, utilize air fan/pump technology in providing developments to liquid pumps since the characteristic behaviour of liquid and air when subject to pressure are quite distinct.  On this latter point I accept the evidence of Mr. Wood who is an engineer with 39 years of experience including experience in pump technology.
         At the hearing Mr. Caine also submitted that in considering the question of novelty of the present invention, relevant prior specifications or prior use devices had to be viewed against the backdrop of the common general knowledge of those in the art at the priority date of the claim.  I agree that this is appropriate but one needs to first establish what was the relevant common general knowledge;  in my view this has not been clearly done in this case.  This is so because the common general knowledge must be determined from the evidence of persons skilled in the art ‑ but here, the declarants, even if considered relevant addressees, have not provided definite statements in this regard.
         Nevertheless from the evidence before me I consider that the utilization of an "in‑line" electric heater downstream of a pool pump was well known in the art and formed a part of the common general knowledge at the priority date of the claim.  Moreover such pool pumps being of the impeller or centrifugal type were well known.  That to me is the extent of the common general knowledge discernable from the evidence.  While Mr. Wood in his affidavit, in referring to the features of claim 1, states (in paragraph 12) "I acknowledge that the individual integers are well‑known ...", I am unable to accept that statement as constituting any further pronouncement with regard to matters of common general knowledge at the priority date, not even with regard to whether pool pumps, or for that matter water pumps generally, had plastics housings.
         Consequently a consideration of patent specification AU 295478 or GB 1561066 with the benefit of the mentioned common general knowledge does not in my opinion deprive the claimed invention of novelty since the prior disclosure of each specification relates to a device which exhibits significant differences from the pump/heater unit claimed.
         It was also submitted for the informant that the claimed invention lacked novelty on the basis of prior use devices.  The relevant prior use devices suggested included (a) liquid pump/heater assemblies where the heater unit is arranged downstream and separate from the pump unit, (b) water heaters or kettles containing electric heater elements, and (c) air heaters such as those represented by the previously mentioned patent specifications, these devices being suggested because of statements by the various declarants to the effect that such devices were well known.  It seems to me that much of the informant's argument concerning lack of novelty based on prior use is not well founded since it appears to be based on the creation of a mosaic of the elements of the present invention gleaned from distinctly different devices.
         It is well established in Patent Law that novelty of a claimed invention can only be considered against individual items of prior art be they prior specifications, other documents or prior devices since mosaicing is prohibited.  In this case, the prior use devices identified as (a) above are most pertinent to consider, these devices having been acknowledged as being in existence before the priority date of the present invention in evidence on behalf of the patentee.  However on considering such prior devices with the benefit of the common general knowledge previously mentioned, I believe the disclosure to be such that at least those features of the claim previously numbered 1, 5 and 7 are absent.  That being the case, the claimed invention exhibits significant differences from, and can not be deprived of novelty on the basis of, the said prior use devices.
Obviousness
         On the question of obviousness, the issue to be determined is whether, at the priority date of the claim, the invention as claimed would have been obvious to a notional person skilled in the art of pumps for liquid circulation.  Furthermore it is well accepted that in Australian Patent Law, the determination of obviousness is a matter dependent upon the common general knowledge in Australia in the field of the invention.

         The informant's statement of facts summarizes the basis for attack on the claimed invention under this heading thus:

"The claim of the petty patent No. 541459 was obvious and does not involve an inventive step.  Having regard to the well known use of electric heater elements in air pumps such as hair dryers, room heaters utilizing an outlet pump chamber an impeller type blower and an electrical element in the outlet chamber imparting heat to the air pumped into and through outlet chamber the adaptation of these integers for use with a liquid pump is merely a new idea which is obvious and does not involve an inventive step.

The well known principle of using an immersion heater element fitted into the outlet chamber of a well known impeller type pump constitutes the only difficulty overcome in the alleged new use.

Placing thermostatically controlled immersion element into sealing relation with a chamber is well known in water heating urns and kettles prior to the priority date.

The use of integral electrical elements in air pump chambers such as hair dryers, air curtains and room heaters was well known and common knowledge in Australia at the priority date.

The use of spirally round elements has been used on hair dryers at least since 1960 in Australia in the Morphy Richards hand held hair dryer which has a plastic casing and an impeller type air pump.

The use of sealed thermostatically controlled immersion heater elements was well known to the Australian public."

The statement of facts concludes by referring by number only to other "relevant prior patent specifications incorporated herein by cross reference".  These specifications are:

(a)GB 876612 (1957)  ‑  flow machine for inducing movement of fluids, i.e. fan or blower.

(b)GB 620252 (1946)   ‑  centrifugal pump associated with a vehicle coolant system.

(c)GB 322117 (1928)   ‑  catalytic heating device associated with a vehicle coolant system.

(d)AU 284551 (1984)   ‑  apparatus for supplying hot water.

(e)AU 25603/67       ‑  instantaneous electric water heater.

At the hearing, submissions on behalf of the informant placed considerable emphasis on the statements that certain devices (as mentioned in the statement) were well known.  It is worth noting however that most of the devices mentioned are not associable with the liquid pump art and, in the absence of clear evidence to the contrary, most of such devices cannot be considered to have formed part of the common general knowledge of the relevant addressee.  As previously discussed, I have only considered that the "in‑line" (centrifugal) pump and separate heater arrangement formed a part of such knowledge.
         In considering the obviousness question, I am conscious of the observations of Aicken J. in the case of Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd., 144 CLR 253 with respect to the legitimacy of mosaicing elements of public knowledge. At p.293 he observed:

"An allegation of want of inventive step is not made out by saying you may take one or two, or twenty‑one or twenty‑two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious.  So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness.  The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent.  If this were not so, there could never be a valid patent for a new combination of old integers.  The proper question is not whether it would have been obvious to the hypothetical addresses who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process.  It is rather whether it would have been obvious to a non‑inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.  In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers.  The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

The argument advanced by the informant in the present case is that the invention is obvious based on the prior existence of elements of the claimed invention.  However there is no evidence to establish that the prior specifications, which disclose certain elements of the invention in relation to particular environments, formed part of common general knowledge at the time, nor that the public availability of apparatus including elements of the claimed invention meant that the elements were part of that knowledge.  Even were all the integers part of the common general knowledge, there is no evidence before me to conclude that the non‑inventive skilled worker in the field would have arrived at the combination claimed.  Mr. Grove in paragraph 6 of his declaration suggests that "the move to supply a package pump and heater unit is a logical step" and mentions the various steps that "would be" done; but he fails to clearly indicate that the claimed combination was obvious to him at the priority date.  Mr. Hancock, who has had many years in the pump industry and who has designed pumps for swimming pools and who was familiar with the "in‑line" heater arrangement, declares that "I did not think of putting the heater inside the outlet chamber of the pump, and it would not have occurred to me to do so....".   The invention claimed, of course, not only has a heater element within the housing, but also requires a plastics housing and specific control means for the element.  Accordingly, I am unable to conclude that the claimed invention was obvious at the priority date.
Section 40
         While the informant's notice under sub‑section 68B(3) did not raise any matters under this heading, Mr Caine briefly referred to several matters at the hearing.  I think it is clear from sub‑sections 68B(5) and (6) that the Commissioner has a duty to consider any section 40 matters whether or not raised by the informant in determining whether to grant an extension of term. There are several matters that I have considered under this heading.
         The claim defines that the heating "element(s) is(are) controlled by a thermostat ... to thereby control and heat the liquid passing through the housing".   In view of my earlier finding in relation to the corresponding description, in general terms I consider that the description provides adequate support for this definition.   However there are several points of concern arising from this definition.  Firstly the reference, "to thereby control ... the liquid...." is, in my view, clearly incorrect since control of the heating element cannot effect general control of the liquid passing through the housing.   Secondly, in line with my interpretation concerning the "safety controls" described in the specification, the present claim definition is not clearly limited to the controls for the heating element being safety controls, whereby for instance not only can the proper regulation of heating of the passing liquid be effected but also heating element shut‑off can occur under certain adverse flow conditions.  For these reasons, I consider that the definition in the claim is unclear and is not fairly based on the matters described. 
         At the hearing it was submitted on behalf of the informant that the specification lacked description or teaching of advantages arising from the features of the claimed invention.  There is of course no requirement of the Patents Act for the specification to include an explanation or itemization of any such advantages other than in perhaps "selection" situations, and I agree with Mr Hind that any advantage arising from the present invention would be apparent to those skilled in the art.
Conclusion
         In summary I have decided that the grounds relied on by the informant as set out in paragraphs 100(1)(d), (e) and (g) of the Act have not been established.
         However I have found the claim offends against section 40 being unclear and not fairly based.  I therefore refuse to extend the term of the grant at this stage.  It does seem to me however that the deficiencies in the claim could be easily overcome by amendment:  given the allowance of an amendment for that purpose, it would seem to me that an extension of the grant would then be justified.  Accordingly I will allow the patentee 60 days from the date of this decision to apply for amendment of the specification.
         I have decided to refuse the extension of grant at this stage for reasons not advanced by the informant in its notice under sub‑section 68B(3), although it is a fact that the section 40 deficiency came to notice on a full consideration of the grounds in that notice.  Hence on the question of costs, having considered all circumstances related to this matter, I am of the view that each party should bear its own costs.

(T.R. Bruhn)

Patent Attorneys for the patentee:  Davies & Collison