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

[1991] APO 58

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application no. 585720 in the name of QUEENSLAND PLUMBING PTY LTD, and opposition thereto by TRADE WASTE DIVERSION PTY LTD & JOHN MAURICE FOX.

BACKGROUND

Application No. 585720 was lodged with a provisional specification as application no. PH7173 on 29-7-86 (which is thus the earliest priority date that any of the claims of the application can have). The application was completed on 27-5-87, under application no. 73471/87, and on 22-6-89 was advertised as accepted. On 22-9-89, TRADE WASTE DIVERSION PTY LTD and JOHN MAURICE FOX (the managing director of TRADE WASTE DIVERSION PTY LTD) jointly lodged a notice of opposition.

Evidence in support of the opposition was completed on 22-5-90; it consists of declarations by John Maurice Fox, Douglas Ellersmere Lane, and Trevor James Dredge. Evidence in answer, which consists of a declaration by Donald Hardie Smith (the managing director of the applicant, and the inventor) was completed on 21-12-90. Evidence in reply, consisting of declarations by Mssrs Lane and Fox, was completed on 5-7-91. The opposition was heard in Brisbane on 4-9-91; the applicant was represented by Mr. Grant Adams of Grant Adams & Co, and the opponent was represented by Mr. Trevor Dredge of Peter Maxwell and Associates.

The notice of opposition lists those grounds of opposition as specified in paragraphs (a) - (i) of Section 59 (1952 Act); however the evidence and submissions on behalf of the opponent were confined to the opposition grounds of prior publication, obviousness, lack of novelty, and lack of compliance with section 40.

THE SPECIFICATION

The specification relates to a valve assembly for selectively directing water to either a storm-water drainage system or to a sewerage system. The specification states:

In certain areas it is required to collect run-off of rain water for direction to a stormwater drain system, and also to collect trade waste water which, having been polluted by use, for example, in cleaning vehicles, should therefore not be directed to the stormwater drain. This wash or trade waste water may be required to be fed to a sewerage or other separate waste disposal system which, however, could be overloaded if rain water also were to be fed through the same outlet.

The present invention has been devised with the general object of providing, for such an area, a diversion valve assembly which will automatically direct water being used for washing and subject to pollution to one outlet, which may lead to a waste disposal system, and which will otherwise direct run-off of normal rain water through a separate outlet leading to a stormwater drainage system.

The description describes an arrangement involving two vertically disposed pipes located in the bottom of a sump. The pipes are of different height. The taller pipe is intended to be connected to a stormwater drainage system, and has its upper end open. The shorter pipe is intended to be connected to a sewerage system; its upper end includes a valve which is operated by way of water pressure in a line connecting a water supply to a user facility such as a hose. When the hose is in use, the water pressure opens the valve and the waste water is directed through the lower pipe to a sewerage system. Alternatively, if it is raining the hose would not be in use, the valve remains closed, and the stormwater run-off escapes through the taller pipe after sufficient water has collected in the sump.

The specification ends with six claims. Claim 1 is as follows:

1.A diversion valve assembly including:

a sump for receiving storm water and trade waste wash water from an area,

a stormwater outlet from the sump for connection to a stormwater drainage system,

a wash water outlet from the sump for connection to a sewerage or other waste disposal system,

a valve for closing the wash water outlet,

loading means for urging the valve to its closed position, and

actuating means for operative connection to a source of wash water under pressure, for automatically moving the valve to its open position when the flow of wash water from its source is commenced and for permitting the valve to return to its closed position when the flow of wash water from its source is discontinued,

the stormwater outlet being at a level in the sump above that of the wash water outlet and above that reached by wash water entering the sump while the wash water outlet valve is open.

Claim 2 provides a specific construction of the actuating means. Claim 3 qualifies the loading means as including a spring. Claim 4 provides that both outlets are upright tubular members, and the valve is vertically movable. Claim 5 specifies a detailed construction of the assembly. Claim 6 is an omnibus claim.

There are some points about claim 1 that require comment.

Firstly, the second-last clause of claim 1 provides an actuating means FOR operative connection to a source of wash water - that is, the source of wash water is not part of the claimed assembly; it follows that there is no indication in the claim of the quantity of wash water that the assembly is to handle.

Secondly, the assembly has a wash-water outlet FOR connection to a sewerage or other waste disposal system - but is not in fact connected to any such system; it follows that there is no indication in the claim of the rate of removal of waste water from the assembly.

Thirdly, the last clause provides a functional restriction on the claim, of the type described in Nofume Ltd v Frank Pitchford and Co (1935) 52 RPC 231. It is clear that the apparent intended effect of this clause is to restrict the assembly to a configuration whereby, when the waste water outlet is open, water cannot escape via the stormwater outlet. From basic principles of fluid flow I note that this functional restriction must have a major dependency upon two factors - the quantity of wash water that must be handled by the assembly, and the rate at which that wash water can drain away from the assembly via the waste disposal system. Clearly, an assembly connected to a low-flow-rate source of wash water would require a different separation of the outlets to one connected to a high-flow- rate source of wash water. Likewise, an assembly connected to a low-flow-rate waste disposal system would require a different separation of the outlets to one connected to a high flow-rate waste disposal system. However as the source of wash water and the waste disposal system are not part of the assembly claimed (and there is no equivalent restriction, such as the assembly being claimed in an installed environment), the structural requirement imposed by the last clause of claim 1 is indeterminate (beyond requiring the wash water outlet to be spaced some indeterminate distance above the waste water outlet). It follows that claim 1 does not comply with section 40 of the Act.
Finally, I note that although the claim makes no reference to a valve on the stormwater outlet, the claim does not exclude constructions which have such a valve.

SUBMISSIONS

The essence of the opponents' argument is that the invention claimed is anticipated by patent no. 503588, and by a prior use involving an valve of the type described in patent 503588 which was incorrectly installed. The opponent also argued that the meaning of the last clause of claim 1 was not clear.

The essence of the applicant's submissions are that claim 1 is distinguished from the citation because it does not require the use of a valving member which closes the stormwater outlet, and that the valve of the alleged prior use should be disregarded because it does not work.

PATENT NO 503588

The opponents argue that the invention claimed is disclosed in Australian patent no. 503588, which I will refer to as the Clifford valve (after the inventor). This patent became OPI in Australia in 1977.  The Clifford valve has as its purpose the selective discharge of fluids emanating from different sources; in particular for a car wash-down area, where the wash water is to be sent to the sewerage system, whilst stormwater is to be sent to the stormwater system.

The Clifford valve is shown in two different embodiments:

In the figure 2 embodiment, the valve involves a sump for collecting water, an outlet in the bottom and another in the side, located some distance up the wall from the bottom. A valve member is located on the bottom of the sump which is pivotable between two positions. In one position, the bottom outlet is closed while the side outlet is open. In the other position, the side outlet is closed and the bottom outlet open. The valve member is moved between the two positions by reason of water pressure; the water supply line to the wash water outlet passes through a bladder adjacent the valve. When wash water is connected, the bladder inflates, opening the bottom (sewerage) outlet and closing the side (stormwater) outlet. The valve member is biased to closing the sewerage outlet by reason of the weight of the valve member.

In the figure 4 embodiment, the outlets are both located on the side wall of the sump, and independent piston-operated valves open and close the respective outlets. Each valve member is biased towards a position with the storm water outlet open, and the sewerage outlet closed. The storm water outlet is apparently located higher on the side wall of the sump; page 6 line 26 and 27 refer to the 'upper storm water outlet 12a and the lower sewerage outlet 13a'.

There are two alleged differences between the Clifford valve and the valve of claim 1. Firstly, the Clifford valve provides (in all its embodiments) a valve on the storm water outlet, whereas no such valve is specified in claim 1. The applicant has argued that their assembly does not need such a valve, and therefore claim 1 is distinguished from the Clifford valve. I do not agree; as I noted previously, although claim 1 does not mention a valve on the storm water outlet, neither does it EXCLUDE such a valve.

Secondly, although the Clifford valve shows the stormwater outlet to be located higher than the wash-water outlet, the specification gives no indication of how much higher the outlet should be. One inference that can be made about the Clifford valve is that the only reason for the valve on the storm water outlet is because the waste water could rise up to the level of that outlet, and the valve is required to prevent waste water flowing out the storm water outlet in such circumstances. However, as discussed above, claim 1 as presently worded does not provide an effective functional definition of the spacing of the stormwater outlet above the washwater outlet and is thus not distinguished from the citation in respect of this feature.

As a result I find all the features of claim 1 present in this citation, and consequently claim 1 is prior published and not novel.

Claim 2 goes some way to overcoming the problem with the functional restriction in the last clause of claim 1, by providing that the actuating means (in the form of a hydraulic cylinder) is connected to the source of wash water. However the claim does not incorporate a connection to a waste disposal system, and thus it is still not possible to determine the nature of the functional restriction incorporated in claim 1. Otherwise, I note that all the features of claims 2 and 3 are fully disclosed in the citation, and these claims are thus prior published and not novel.

Claim 4 specifies that both the storm water outlet and wash water outlets are upright tubular members, and the valve is vertically movable to or from the wash water outlet. The citation differs from this construction only by having the storm water outlet horizontal. In considering the question of novelty there are several authorities which are apposite.  The Full High Court of Australia in Griffin v. Isaacs [AOJP (1942) 739] per Dixon J. at page 740 stated the test for novelty as follows:

Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty.

In my view, this difference from the citation does not contribute to the working of the invention and the merit of the two things considered as invention is the same, as the invention is dependant upon the spacing of the outlets and not their orientation.

In summary, I find claims 1 to 3 are prior published, and claims 1 to 4 are not novel, having regard to Australian Patent 503588.

PRIOR USER

The opponents argued that the invention claimed was prior published by prior use, based on an installation of the Clifford valve at Colyer Fehr Tallow Pty Ltd, tallow merchants of MacArthur Avenue, Hamilton, Brisbane, in 1978 (which I will refer to as the Colyer Fehr valve). The Colyer Fehr valve differs from the Clifford valve in several important respects, because it was installed 'back-to-front'. The differences, as shown in photographs supplied by both parties, are:

the actual storm water outlet is located opposite to the side where it would normally be located. As a result, the valve member was non-operative with respect to that outlet.

the aperture that should have been the storm water outlet is in fact connected as an input from tank farm bunds.

the valve member has been modified, so that the part that would have closed the designed outlet (which is in fact an inlet from the bunds) could not close that outlet.

Concerning proof of prior use in an opposition case, in Seiller's Application [1970] RPC 103, Graham, J said this at 106:

In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case.

To this I add that in opposition proceedings the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523), and the opponent carries the onus of establishing the opposition grounds alleged.

There is no dispute between the parties that the Colyer Fehr valve was installed before the priority date of the specification. There is also no dispute as to the current form of the valve - that is, its form circa 1990 (although the applicant made particular point of the fact that when they inspected the valve it was jammed open with a piece of wood which, they asserted, showed that the valve was ineffective). There is also no dispute that the valve was structurally modified upon its installation.

A first issue I must determine is the form of the Colyer Fehr valve at the priority date of the claims. Much of the evidence relating to the valve describes it in its present (circa 1990) form. None of the declarants have explicitly stated that all the structural modifications now present in the Colyer Fehr valve were done at the time of installation. However Fox, in his declaration in the evidence in reply, states that there were only two modifications, both of which were done around the time of installation. Also, Lane declares that he was intimately involved with the installation of the Colyer Fehr valve after the original error was made, and negotiated the modifications with the Trade Waste inspector at the time the valve was installed. He also declares that the valve's operation is correctly described in the declaration by Fox. I conclude from this that the structural modifications presently incorporated into the Colyer Fehr valve were all made circa 1978, and pre-date the priority date of any of the claims of the present application.

A further issue that I must consider with respect to the Colyer Fehr valve is whether that valve was publicly available before the priority date; if the valve was not publicly available before the priority date, it cannot form the basis of prior use. The photographs provided with the evidence suggest that it was publicly available at the time the evidence was prepared. Although the evidence refers to council inspection and approval in 1978, I have no basis for finding that the council inspection and approval process resulted in (or were dependant upon) the Colyer Fehr valve being publicly available. Clearly the parties to this opposition had ready access to the valve when preparing their evidence. However there is no evidence to establish that the valve was publicly available before the priority date. Therefore the ground of prior publication by prior user has not been made out.

If it could be demonstrated that the Colyer Fehr valve was publicly available before the priority date, I am of the view that the Colyer Fehr valve anticipates the invention claimed, at least to the extent of Australian Patent 503588.

In summary, I find that

1. the structural form of the Colyer Fehr valve at the priority date is the same as the form of that valve shown in the evidence,

1. the opponents have not discharged their onus of establishing that the Colyer Fehr valve was available to the public before the priority date of any of the claims, and

1. if the evidence did establish that the Colyer Fehr valve was publicly available before the priority date, claims 1 to 3 would be prior published, and claims 1 to 4 would be not novel.

OBVIOUSNESS

The determination of obviousness depends on common general knowledge in the field of the invention at the priority date of the invention.  (See the judgement of Aicken J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253.)

Although the declaration by Fox makes several references to items of common general knowledge, none of the evidence establishes that diversion valve assemblies of or similar to the Clifford valve were common general knowledge in Australia at the priority date of the claims. There is therefore no basis for determining that the invention claimed is obvious.

CONCLUSION

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

In deciding whether the applicant should be given an opportunity to amend, and having regard to the basis of this opposition and the nature of the submissions made at the hearing, I consider that I should provisionally indicate my view of claim 1 if it is amended solely to give effect to the intended functional requirement for the location of the stormwater outlet above the washwater outlet.

The applicant has argued that the Clifford valve required two closures to operate (one being a valve on the storm water outlet), as the level difference between the storm water outlet and the waste water outlet was not sufficient to prevent waste water from passing into the storm water outlet when the waste water outlet was open.

The opponents argue that

the Clifford valve was originally designed with the storm water closure being used merely as "insurance" and to impress local authorities that there could be no possibility of waste water passing down the storm water drain. In designing the Clifford valve, it was always known that the omission of the storm water closure would not prevent the Clifford valve from operating adequately simply on the basis of their being a difference in levels between the storm water outlet and the waste water outlet.

In this situation, the rules of "paper anticipation" apply, e.g. see Canadian General Electric Co Ltd v Fada Radio Ltd [1930] 47 RPC 69, wherein it was stated:

Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent.  The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation.  Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the specification contains clear and unmistakable directions so to use it. It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own.

In my view, a person skilled in the art reading the citation was told that a valve on the storm water outlet was essential to the operation of that assembly; the only inference that can be drawn from that specification is that the valve is needed because the water level obtained when wash water was being discharged might be sufficiently high as to otherwise drain out via the stormwater outlet. The specification does not, in my view, contain clear and unmistakable directions to locate the stormwater outlet sufficiently high that wash water will not enter in the absence of a valve.

In respect of the Colyer Fehr valve, I note that there is no evidence of how the valve operated; rather the evidence provided assertions that it had been operating satisfactorily for 12 years; assertions of how the valve would likely operate, and assertions of it being presently rendered inoperative. Most importantly, none of the evidence shows whether or not wash water flows out the stormwater outlet in the actual use of the assembly. Neither (as discussed previously) is there evidence to establish that the valve was publicly available before the priority date.

I therefore express the provisional view 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.

I thus conclude that the specification discloses patentable subject matter, and that the applicant should be given an opportunity to amend the specification. I therefore allow the applicant 60 days from the date of this decision to propose amendments.

COSTS

In actions of this kind, costs normally follow the event. I see no reason for varying this practice in the present case. As I have found that the opposition has succeeded on the grounds of prior publication, novelty, and section 40, I award costs against the applicant.

(D. Herald)
Assistant Commissioner of Patents

Attorney for the applicant : Grant Adams & Co, Brisbane
Attorney for the opponents : Peter Maxwell & Associates, Brisbane

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 under section 59

Decision:    Issued            .  Opposition upheld on grounds of prior publication, lack of novelty, and failure to comply with section 40. Applicant given an opportunity to amend.