Nelson Irrigation Corporation v. James Hardie Irrigation Pty Limited

[1991] APO 21

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application 577513 by NELSON IRRIGATION CORPORATION - Opposition by JAMES HARDIE IRRIGATION PTY LIMITED

Background
          Patent application No 577513 in the name of NELSON IRRIGATION CORPORATION was lodged under the provisions of the Patent Cooperation Treaty on 17 September 1986, claiming priority from a patent application lodged in the United States of America on 18 September 1985.  The earliest priority date that any claim could have is therefore 18 September 1985 and this has not been disputed.
          Following modified examination based on the granted US Patent No 4660766 the application was advertised as accepted in the Official Journal of 22 September 1988.  The grant of letters patent has been opposed by JAMES HARDIE IRRIGATION PTY LIMITED under section 59 of the Act.
          Following the service of evidence the matter was heard in Melbourne on 18 February 1991.  Mr P. Huntsman, patent attorney of Davies and Collison, assisted by Mr Iain Morrison, represented the applicant, and Mr C. Vinall, patent attorney of R.K. Maddern & Associates represented the opponent.
          Although the notice specified grounds of opposition as those listed in paragraphs (a) to (i) of sub-section 59(1) the submissions made at the hearing were limited to the grounds specified in paragraphs (e), (g), (h) and (i); i.e. prior publication, obviousness, lack of novelty and non-compliance with section 40.

The Specification
          The specification commences by stating that the invention "relates to sprinklers and sprinkler heads adapted to distribute a source of water under pressure to a predetermined ground pattern area".
          The specification goes on to assert that "the best and most efficient" sprinkler head is one which delivers a given source of water to the largest possible area.  The specification then goes on to describe two types of prior art sprinklers.
          The first is the so-called impact sprinkler which delivers a continuous stream of water, which is slowly rotated by a number of discreet steps caused by the impact of the stream onto an impact spoon.  This type requires high water pressure to ensure maximum throw of water and breakup of the stream into droplets to ensure coverage.  This high water pressure is said to be energy inefficient.  The other disadvantages are summarised in the specification as follows:

"In summary, it can be stated that conventional impact sprinkler heads serve to best achieve the end result of distributing a given source of water and pressure to the largest possible pattern area, they nevertheless have the following disadvantages (1) they require a relatively high pressure to operate properly (2) they are subject to possible self-inflicted damage due to the repeated impacts to which they are routinely subjected and (3) they are subject to seal failure due to the fact that they must include a dynamic seal assembly capable of remaining effective to seal against relatively high pressures over a period of repeated impact operation."

The other type of prior art device is the so-called low level fixed spray heads, which rotate at high speed and produce a mist.  This does not cover the same area as an impact sprinkler due to the water breaking up into a series of droplets rather than remaining as a continuous stream.  This type however does not need such high water pressures as the impact sprinkler, nor does it need a dynamic seal, the water jet merely impinging on a freely rotatable device which spins due to the action of the jet and breaks the water jet into a considerable number of fine droplets.
          The specification then goes on to state that:

"There quite clearly exists a need for a sprinkler head which can operate at pressures below conventional impacts with a full circle pattern to instantaneous pattern ratio significantly above one and at the same time eliminate the other two disadvantages of impact sprinkler heads enumerated above, namely (1) self-inflicted damage and wear due to repeated impacts and (2) operational dynamic seal failure due to wear and pressurized contamination by sand particles, etc."

The specification continues by describing some nine embodiments and ending in 39 claims, only the first of which is independent and reads as follows:

"1.A rotary sprinkler head comprising

a sprinkler body having an outlet and means devoid of any operative dynamic seals for communicating a source of water under pressure with said outlet,

said outlet being defined by surface means for directing water under pressure communicated therewith into an atmospheric condition in a primary stream having a generally vertically extending axis,

a rotary distributor mounted for rotational movement about a rotational axis with respect to said sprinkler body in engaging relation with respect to the primary steam directed from said outlet,

said rotary distributor having surface means for engaging the primary steam (1) to establish a reactionary force component acting on said distributor in a direction tangential to the rotational axis thereof so as to effect rotational movement thereof about said axis of rotation and (2) to direct the primary stream engaged thereby in the form of pattern forming stream means including at least one stream moving away from said distributor in a direction having a substantial component extending radially outwardly from the generally vertical axis of said primary stream,

speed reducing means operatively associated with said distributor for reducing the rotational speed of the distributor resulting from said reactionary force component from a relatively high whirling speed which would occur without said speed reducing means to a relatively slow speed so related to the distributor surface means forming the pattern forming stream means as to permit (1) said one stream to leave said distributor surface means with sufficient stream integrity to flow outwardly a distance substantially as great as the same said one stream would flow if the distributor were held stationary and (2) all of the pattern forming stream means including said one stream to be distributed within a generally circular pattern with a desired droplet size and with a desired water distribution within said generally circular pattern, the radius of said generally circular pattern being defined by the maximum extent of flow of said one stream."

In addition claim 9 specifies a narrower form of the speed reducing means.

"9.A rotary sprinkler head as defined in claim 1 wherein said speed reducing means comprises housing means fixed with respect to said sprinkler body having interior surfaces defining a chamber having a body of viscous fluid therein, said rotary distributor being fixedly mounted on a mounting shaft, said housing means carrying a bearing, said mounting shaft extending through said bearing in journaled relation therewith and into said chamber, a viscous fluid engaging member fixed on said shaft within said chamber and so related to the interior surfaces defining said chamber that viscous shearing of the viscous fluid takes place during rotaion of said rotary distributor sufficient to effect the desired speed reduction."

Section 40
          Mr Vinall submitted that the claims of the specification were unclear, and not fairly based.  In this respect he referred to the "pattern forming stream means" which he submitted meant one single stream and others.  He also argued that the form of the pattern forming stream means includes a primary stream and other streams such that only the primary stream extends the required distance and the other parts of the stream means are not so limited.
          Also in Mr Vinall's opinion it is not clear how the speed reducing means acts on the distributor to reduce rotational speed from a "relatively high whirling speed" to a "relatively low speed" and at the same line the "said one stream" leaves the distributor to flow outwardly a distance "substantially as great" as it would if the sprinkler did not rotate.
          In addition Mr Vinall submitted that the claims are not fairly based on the specification because they claim all speed reduction means and all types of stream pattern forming means.  He pointed out one of the objects of the invention is to avoid the use of an impact spoon for speed reduction.  But in his view the main claims at least do not exclude this means of speed reduction.  Mr Vinall also argued that the specification only discloses a fluid damping device as the speed reduction means.
          Mr Hunstman in rebuttal contended that his client was entitled to claim by result (as in Nofume Ltd v Frank Pitchfordand Co (1935) 52 RPC 231) and should not be limited to the fluid damper means of speed reduction. He also submitted that the sprinkler claimed had a feature not present in prior art impact sprinklers namely that it was devoid of any operative dynamic seals.
          In my view the problem with claim 1 is that it claims the sprinkler as a configuration of a number of different features each by result.  As a result the claim claims virtually any device that works to overcome the disadvantages of the prior art and is in my view speculative.  Merely defining a monopoly by result does not save an otherwise unsatisfactory claim from being speculative (see Esaus' application (1932) 49 RPC 85 which was followed in Pottiers' application, (1967) RPC 170). On consideration of the evidence and the specification as a whole I believe that an essential feature absent from the claims is the fact that the sprinkler rotates continuously at a slow speed (a range of such speeds being exemplified in the specification).

Claim 1 claims any speed reduction means capable of reducing from a high unknown speed to a low unknown speed and is not limited to continuous movement between a limited range of speeds.     
          It does not sufficiently specify the range of speeds to which the distributor must be slowed.  This clearly goes beyond the scope of the disclosure.
          I consider the phrase "the stream means including at least one stream" includes within its scope the kind of water discharge achieved by prior art low level spray devices including a continuous spray.  The description of the present invention appears to me to only contemplate one or two discrete streams, and I believe this limitation should be reflected in the claims.
         The phrases which further define the slow speed relative to the distance a single stream would flow if the distributor were not rotating do not in my mind sufficiently define the speed reduction range for which protection is sought.  In particular the term "outwardly a distance as great as the same stream would flow if the distributor was held stationary" is unclear (especially since more than one stream is contemplated).
          Consequently I find that the claims are neither clear nor fairly based on the description.
Anticipation
          Mr Vinall argued that since the claims were directed to a sprinkler having any speed reduction means and the possibility of many streams issuing from it, that it was anticipated.
          Mr Huntsman replied that on the contrary any speed reduction device was not included and the invention lay in providing a sprinkler with a speed reduction device to reduce the speed of a single stream, or at most a small number of streams, so that the sprinkler of the invention gave similar coverage to an impact sprinkler, without the mechanical disadvantages.  He further argued that none of the alleged anticipating documents in fact taught this.
          The grounds under this heading are based on a number of patent specifications which I shall deal with in turn.
          At this stage it is useful to consider the scope of the claims of the specification.
          Claim 1 claims a sprinkler having a rotary distributor engaging a stream of water and having any speed reduction means capable of doing the job, namely achieving a relatively slow speed and sufficient single stream integrity to reach the required distance (i.e. claiming by result as in Nofume v Pitchford, supra).  The sprinkler has no dynamic seals.
          The alleged anticipating documents are as follows. 
          GB 2019704 and AU 436809 both cover impact sprinklers and so I shall deal with them together.  Both specifications are directed to devices throwing a single stream with sufficient stream integrity to reach the required distance, both have speed reduction means (in the form of some kind of impact arm or spoon) but both have dynamic seals which the patent in suit does not and thus do not anticipate the specification in suit.  (See Flour Oxidising Co Ltd v Carr and Co Ltd (1908) RPC 438 where Parker J said that to anticipate a claim of an earlier patent the earlier publication must contain clear and unmistakable directions to do something falling within the later claim which these specifications do not).
          US 4498628 (the so-called RIS sprinkler) illustrates known high speed rotating sprays.  Although one embodiment illustrates the use of a tab on the rotating spray head to slow down the rotational speed, there is no indication that this results in a single stream or a small number of discrete streams.  In my view it clearly shows a prior art spray, which breaks up the water into a large number of droplets and give much reduced coverage compared to an impact sprinkler of the type disclosed in GB 2019704.  I thus find that the RIS specification does not anticipate any of the claims of the application in suit.
          My attention was also drawn to the May/June 1984 edition of the Irrigation Journal (exhibit STH1) which is discussed in the statutory declaration of Stephen Trevor Hemsley.  This shows a sprinkler called a Rain Bird which is a high speed rotating spray similar to the type disclosed in US 4498628, but with two tabs which I presume are intended to reduce the speed of rotation.  The journal was available in September 1984.  However the Rain Bird sprinkler does not in my view anticipate any of the claims for the reasons I have already outlined in respect of US 4498628. 
          I must also consider whether the feature of the sprinkler of the present application being slowed to a particular speed range, is sufficient to confer novelty over the disclosure in US 449628 (see Griffin v Isaacs [1942] AOJP 739 at 740).
          In my opinion the intention of the speed reduction device of the present application is to provide at least one stream of water to give a wide irrigation coverage similar to prior art impact sprinklers without the mechanical disadvantage.  I consider that this feature confers novelty over the indeterminate speed reduction caused by the two tabs of the earlier Rainbird sprinkler, because it meets Dixon J's (Griffin v Isaacs supra) criteria, in that it both contributes to the working of the invention AND the merit of the two sprinklers is not, in my view, the same.

US 2488234 to Perry discloses a butterfly sprinkler giving a spray using a high speed rotating device without any speed control means, as does US 2273401 to Ferrado and thus I do not consider either document anticipates the claims of the application in suit.
          US 4440345 discloses a single stream rotating type of sprinkler having a speed reducing means (the Salen sprinkler).  However since it does not have a rotary distributor engaging a stream of water, rather the stream issues from the rotating means directly into the atmosphere, I do not consider that it anticipates any of the claims of the application in suit.
Obviousness
          The determination of obviousness depends on common general knowledge in the field of the invention (my underlining) at the priority date of the invention.  (See the judgement of Aicken J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144CLR 253.)
          To ascertain what is the common general knowledge in the present situation I must rely on the evidence adduced in this opposition.
          Firstly the declaration made by Stephen Trevor Hemsley, who is employed by the opponent as their National Development Manager, outlines the state of known prior art sprinklers.  He asserts that two main types of sprinklers (namely microspray and impact) formed part of the common general knowledge in the sprinkler art.  Mr Hemsley's declaration (which is dated September 1989) states what he believes to be the state of knowledge at this time and does not really state what he believes was common general knowledge in the sprinkler art at the priority date of the present claims.
          The Hemsley declaration also makes reference to fluid dampers made by a company called NIFCO which he declares are generally available in Australia.  He states these dampers are the same type as those employed in the sprinkler claimed in the present application.  However the document STH1 attached to Mr Hemsley's declaration relates to information supplied by NIFCO in June 1989 well after the priority date of the claims.
          The only use shown by STH1 for the NIFCO dampers is in the automotive and electrical industry and then only to dampen the sliding movement in the opening of the lids of ash trays or cassette players, I can find no suggestion at all of damping high rotary speed to low rotary speed.
          In addition in his second declaration (evidence-in-reply) Hemsley states he believes it would be obvious to anyone looking at the earlier Rain Bird sprinkler to slow it down to get a single stream and greater water throw.  I can see no evidence to suggest this.  Especially in view of the fact that the only earlier use of dampers in sprinklers was in the Salen sprinkler which has a dynamic seal and no rotary distributor engaging a stream of water.  This seems to me to be a case of ex post facto analysis on Mr Hemsley's part.
          Declarations by Bitterli and Fitzmaurice coupled with Hemsley's first declaration only establish that some fluid filled dampers were imported into Australia before September 1985 (about 600).  These declarations do not even establish the dampers were part of the common general knowledge of the automotive industry prior to the priority date of the patent, let alone establish that they were part of the common general knowledge of the sprinkler industry.
          I conclude that the present evidence does not establish that it would be obvious to add a fluid damper known in the automotive and electrical art, to the prior art sprinklers which most closely resemble the present application, namely the Rain Bird and RIS sprinklers.  Therefore there is no evidence from which I can conclude the claimed invention is obvious
Conclusion
          I have found that the opposition succeeds on grounds on section 40.  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.

(R.A. MELVIN)
   Delegate of the Commissioner of Patents