Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd and John Maurice Fox

[1993] APO 40

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :    No. 585720 in the name of QUEENSLAND PLUMBING PTY LTD

Title             :    A TRADE WASTE DIVERSION VALVE ASSEMBLY

Action:    Opposition thereto by TRADE WASTE DIVERSION PTY LTD and JOHN MAURICE FOX. Decision following amendment of the specification.

Decision:    Issued            .  Amendments found to have overcome all grounds of objection. Application directed to sealing.

An opponent providing comments pursuant to reg. 10.2(6) is still entitled to be heard before a decision to seal an application is made.

Discussion of nature of hearing following amendment of a specification as a result of the decision in an opposition.

Discussion of false suggestion as an issue in opposition matters.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 585720 by QUEENSLAND PLUMBING PTY LTD and opposition thereto by TRADE WASTE DIVERSION PTY LTD and JOHN MAURICE FOX

BACKGROUND

I heard the opposition in this matter in Brisbane on 4 September 1991, following which I issued my decision on 6 December 1991. In that decision I found:

"... that the opposition succeeds on the grounds of prior publication, lack of novelty, and non-compliance with section 40.....

... that if claim 1 is amended such that the last clause of claim 1 is effective in delimiting the claim by its apparent functional requirement, claim 1 would not (on the evidence available to me) be anticipated by either the Clifford or Colyer Fehr valves."

and I gave the applicant 60 days in which to amend the specification.

On 23 December 1991, the applicant requested leave under section 104 to amend the specification.  The opponent was given an opportunity to comment on those amendments, pursuant to regulation 10.2(6).  On 20 March 1992, the applicant filed a second set of amendments, and the opponents were again given an opportunity to comment. The amendments were formally allowed on 7 October 1992.

On 9 June 1992, the opponents notified the Commissioner that, although they had no formal comments on the amendments, they wished to be heard when the amended application was considered prior to issue of a final decision. On 30 October 1992, the applicant made submissions arguing that the opponent had no right to be heard again before the application could proceed to sealing, as they had already had an opportunity to comment on the proposed amendments.

I note here that, following an amendment as a result of a decision in an opposition, it is the practice of the Commissioner to offer the parties an opportunity to be heard before making any decision to send an application to sealing. This practice arises from the differences in the grounds of objection under section 104 vis-a-vis section 59; specifically the criteria for allowance of an amendment, and for opposing that allowance, are different than the criteria for opposing under section 59. Thus an amendment under section 104 intended to overcome a ground of objection under section 59 may in fact not overcome that ground but nevertheless be unobjectionable under section 104.

The applicant has argued that the opportunity afforded the opponent under regulation 10.2(6) to comment on the proposed amendments negates the need to further hear the opponent. This is said to follow from the opportunity to comment under reg 10.2(6) not being restricted to the criteria for allowance under section 104.

I emphatically disagree with this proposition. The opponent is indeed able to make comments under regulation 10.2(6) that go beyond the criteria for allowance under section 104 - and the Commissioner encourages such comments, to assist the applicant with proposing amendments which fully overcome the grounds of objection specified in the decision of the opposition. However the Commissioner cannot raise objections to the allowance of amendments on the basis of such comments. Also the applicant may elect to ignore those comments, or consider them unjustified. In any event, the need to further consider the amended application before a decision to seal it is made, is not avoided.

Consequently, a hearing in the matter was set for 22 March 1993. Neither party appeared at the hearing, both relying on written submissions.

SUBMISSIONS

The submissions of the opponents fall into several categories, as follows:

1. The amendments are not fully responsive to my earlier decision - viz.

Claim 1 as amended is not clear in that "the functional interrelationship of the integers of the diversion valve can not be determined for the reasons outlined by the Hearing Officer"; and

Claim 1 is also unclear as the word flow appears to have been used instead of flow rate in defining the required difference in levels between the storm water and wash water outlets.

1. Claim 1 as amended is not novel, based on the Clifford valve.  The Clifford valve was not a "mere paper anticipation" and had in fact been manufactured widely.  They argue that in use the Clifford valve functioned in the same way as the valve claimed, with the closure over the stormwater outlet having no physical function and that the closure thus "makes no substantial contribution to the working of the thing and the merit of the two things considered as inventions is the same." (Griffin v Isaacs  AOJP (1942) 739).

They also argue that the closure was not an essential integer since both valves relied solely on the difference in level between the outlets, and "therefore a valve omitting the closure is mechanically equivalent to a valve including the closure.("Werner v Bailey (1989) AIPC 90-568).  They claimed that removal of the stormwater closure and various other possible changes were mere workshop variations of the type that would be produced by "routine trial and error within the skill of any person skilled in the art."

1. The opponents allege false suggestion in that the applicant, when distinguishing the present invention from the Clifford valve in a response to an examination report, allegedly made a false suggestion. As a result of this alleged false suggestion, they argue that the application should be barred from sealing, and referred to Prestige Group (Australia) Pty Ltd v DartIndustries Inc (1990) AIPC 90-715.

1. Contrary to my earlier findings, they allege the Colyer Fehr valve was in fact publicly available at the relevant time. The opponents filed several declarations as evidence to the publication of the Colyer Fehr valve (but did not seek to adduce that evidence under regulation 59 [Patents Act 1952)]. They also invite me to issue an order for production of certain documents (under section 210 of the Act) on the Brisbane City Council.

1. Claim 5 "is bad for inutility and/or is not fairly based".

The applicant made submissions supporting the adequacy of the amended claims in overcoming the deficiencies identified in my earlier decision.

With regard to the first of the above categories, the applicant argued that the functional definition for the height of the stormwater outlet above the wash water outlet was permissible, following No-Fume Ltd v Frank Pitchford and Co Ltd (1935) 52 R.P.C. 231; and could be easily determined for a particular installation "by experimentation without requiring any invention on the part of the addressee".

The applicant also argued that the invention as now defined in the amended claims was distinguished, in accordance with the rules for a "paper anticipation", from the Clifford valve as described in Australian Patent No 503588 by the described need, in the Clifford valve, for a valve to close the stormwater outlet when wash water is being discharged; and by the absence of any disclosure in the earlier document of the specific relationship of the level of the stormwater outlet relative to the wash water outlet as defined in the amended claims.

The applicant also provided submissions in respect of the Colyer Fehr valve, and the filing by the opponents of further evidence.

DECISION

Nature of this Decision

The nature of a hearing following a decision in an opposition, and subsequent amendments, is discussed in Perkin Elmer Corporation v Varian Techtron Pty Ltd 5 IPR 321. In that decision reference is made to the decision of the High Court in ex Parte Mole Engineering Pty Ltd 147 CLR 340.

In essence, the import of the decision in ex Parte Mole Engineering is that my earlier decision in the opposition is final insofar as it determined all issues capable of determination at that time. Furthermore, as Mason J said in that decision:

"The Commissioner can, not withstanding a delegation, hear and decide a case under s 60 (s.11(2)). But clearly once a decision has been made under s.60 the Commissioner cannot rehear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail."

As a result, I am estopped in a hearing such as the present from reconsidering any matter that was determined in my earlier decision. It also follows that this hearing is not an opportunity to rectify inadequacies of the case previously presented by a party. Neither is this hearing in any manner or form a de facto appeal or review of my earlier decision.

Thus it is not open for me:

-to reconsider the nature of anticipation by the Clifford valve;

-to consider the fair basis of claim 5 (which was decided, if only by default, in my decision), nor lack of utility of that claim (which is not in any case a ground of opposition available under s.59); or

-to consider the further evidence purporting to establish that the Colyer Fehr valve was available to the public before the priority date of the claims.

The only issues which I can now deal with are those arising out of the specific deficiencies which I found in the earlier decision, and anything arising consequentially upon amendments to correct those deficiencies.

False Suggestion

In the first examination report on the application, the Clifford valve was cited. In response, the applicant filed submissions in rebuttal, and the application was accepted. My earlier decision found the claims anticipated by the Clifford valve. The opponents now contend that the application was accepted on the basis of false suggestion; and despite false suggestion not being a ground of opposition, I should refuse to seal the application. For the meaning of false suggestion, they refer to Prestige Group (Australia) Pty Ltd v DartIndustries Inc (1990) AIPC 90-715.

There are several points that I should make on this submission.

1. As there is no ground of opposition based on false suggestion, I do not consider that the Commissioner can act to refuse to grant a patent on this ground.

1. The issue of false suggestion may be relevant to whether or not the Commissioner, when finding an opposition upheld, exercises a discretion to allow the applicant to amend the application. As was stated in Imperial Chemical Industries (Whyte's) Patent (1978) RPC 11, "the court will not assist a wrongdoer", and in my view that principle applies equally to the exercise of the Commissioner's discretionary powers. On the other hand, I would consider the Commissioner can justifiably act on this basis only in the clearest circumstances.

1. In the present case, I have already exercised my discretion to allow amendment. Following the principles of ex Parte Mole Engineering (supra), I am estopped from reconsidering that matter - and in any case the relevant amendments have been allowed.

As a result I give no further consideration as to whether the actions of the applicant constituted false suggestion.

Matters Arising from my Earlier Decision

Regarding the section 40 matters identified by the opponents, the amendments provide further definition of the parameters governing the level of the stormwater outlet above the wash water outlet, and provide that the storm water outlet also remains open when the wash water outlet is open.

In my view the claim provides adequate definition of the features of the invention required to achieve the defined result (that is no overflow of wash water into the storm water outlet). In particular, the reference in the last clause of claim 1 to

"... the flow rate of the wash water outlet being greater than the flow of wash water entering the sump from the source of wash water so that ..."

limits the parameters of the assembly to a particular source of wash water. Thus, for example, to establish infringement of the claim, the alleged infringing device would have to have the specified functional requirements with respect to its actual source of wash water - not any source.

In my view the amendments overcome the section 40 matters that I identified in my earlier decision. Consequently, and in accordance with my earlier decision, I am also satisfied that the claims are not anticipated by the Clifford valve.

The opponents also argue that the reference to "the flow rate of the wash water outlet" in the quote above is unclear - they say it "should apparently refer to the flow rate of the wash water through the outlet or something similar". I note this phrase was introduced by the amendments.

I agree that the wording used could have been a little clearer. However it seems that the opponents have no trouble identifying what was intended. In this regard, I note the following of the rules of interpretation summarised by Sheppard J in Decor Corp v Dart Industries 13 IPR 385

(6)A patent specification should be given a purposive construction rather than a purely literal one.

(7)In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

I do not believe the phrase used is reasonably capable of being misunderstood, and conclude that there is no objection to this matter under section 40.

Thus I am satisfied that the claims as amended overcome the deficiencies I identified in that decision.

Conclusion

I have found that all grounds of objection identified in my earlier decision have been overcome. I therefore direct the application proceed to sealing.

In respect of the extra material filed by the opponent with respect to the public availability of the Colyer Fehr valve, I note (assuming I am not estopped from considering that material in a 'bar-to-sealing' action) the material provided does not meet the high standard of proof required for the Commissioner to take a bar-to-sealing action - see re Gould Inc' Application 13 IPR 644.

D Herald
Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Grant Adams & Co, Brisbane

Patent attorneys for the opponent   :  Peter Maxwell & Associates, Brisbane