Robertshaw Controls Company v. Actrol Industries Pty. Ltd.
[1986] APO 10
•25 March 1986
In the Matter of the Patents Act 1952
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In the Matter of Application No. 516290 for Letters Patent by ROBERTSHAW CONTROLS COMPANY
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In the Matter of a Request to Amend the Application under Section 77
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In the Matter of Opposition thereto under Section 82 by ACTROL INDUSTRIES PTY. LTD.
DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
This matter arises from the following circumstances:
(i)Application 516290 by Robertshaw Controls Company was advertised as accepted on 28 May, 1981;
(ii)Section 59 opposition thereto was lodged on 27 August, 1981 by Actrol Industries Pty. Ltd.; The opposition was heard and a decision issued 4 November, 1983 allowing the applicant 60 days in which to propose amendments with a view to removing grounds of opposition relating to Section 40 and Section 48;
(iii)A request to amend the complete specification under section 77 was lodged by the applicant on 7 December, 1983;
(iv)An examiner's clear report upon the section 77 request issued and the request was advertised on 27 September, 1984;
(v)Actrol Industries Pty. Ltd. lodged a section 82 opposition to the allowance of the section 77 request on 20 December, 1984;
(vi) A hearing in respect of this section 82 opposition took place in Melbourne on Thursday, 15 August, 1985 and that matter constitutes the subject matter of this decision.
At the hearing, the applicant was represented by Mr. R. Campbell of Counsel, instructed by Messrs. Callinan & Associates, Patent Attorneys, Melbourne, and the opponent was represented by Dr. J.McL. Emmerson of Counsel, instructed by Phillips, Ormonde & Fitzpatrick, Patent Attorneys, Melbourne.
The Specification
The specification as accepted describes the invention as relating to temperature and pressure responsive safety relief valves for water heaters. Typically, the valve is inserted in a port of a hot water tank and the pressure side of the valve mechanism is subject to pressure from stagnant or non‑
circulating water. The valve body is of an elbow construction having a side relief port. The body has an internal wall separating the relief port from the inlet port and has an orifice in the internal wall which is sealed by a resiliently biased closure member. A push rod which acts on the closure member extends to a thermostatic element that projects out of the inlet port, remotely from the body, into the liquid within the water heater.
The specification states that a common failing of this construction is that, after prolonged use, scale and deposits are formed within the pressure cavity side of the valve to an extent sufficient to obstruct the orifice and prevent the valve from relieving the heater contents when excessive temperature or pressure occurs.
The specification goes on to explain that:"some valves have been designed for positioning in the water circulation lines of a water heater and, to this end, have been provided with inlet and outlet ports for connection in the piping of the heater. Typical of these are shown in U.S. Patents 2,668,663 and 2,747,802. Unfortunately, the previous designs, including those of the aforementioned patents, have not located the relief orifice of the valve in unobstructed exposure to the inlet or outlet circulation ports and the relief orifice has not been thus located within a zone of high water flow or circulation. Instead, obstructions to flow such as spring operators, cages, spring retainers and the like have been positioned within the valve body cavity at a location which shields the relief orifice from exposure to circulating flow. Accordingly, the prior art valve structures which have been provided with circulation ports in the relief valve body are likewise not free of the scaling and deposit problems."
The specification describes two embodiments, one of which is designated "preferred", the other being designated as a "test" embodiment. Claims 1, 2 and 5 read as follows:
1.A temperature and pressure relief valve comprising:
(a)a valve body having an internal cavity and inlet, outlet and relief valve port means communicating therewith;
(b)internal wall means within said valve body subdividing said cavity into a circulation chamber in open unobstructed communication with said inlet and outlet port means and a relief chamber in open communication with said relief valve port means;
(c)aperture means in said internal wall means and valve seat means thereabout;
(d)movable valve closure means within said relief valve chamber and movable between closed and open relief valve positions, into and out of, respectively, sealing registration with said valve seat means;
(e)resilient means within said relief valve chamber urging said valve closure member into its closed relief valve position;
(f)temperature responsive actuator means mounted within said circulation chamber and projecting remotely of said valve body, through said inlet port;
(g)force transmitting means extending from said temperature responsive means to said valve closure means.
2.The relief valve of Claim 1 wherein said aperture is in unobstructed exposure to at least one of said inlet and outlet port means, thereby being located within a zone of high liquid circulation through said circulation cavity.
5.A temperature and pressure relief valve comprising:
(a)a valve body having an internal cavity and inlet, outlet and relief valve port means communicating therewith;
(b)internal wall means within said valve body subdividing said cavity into a circulation chamber in open unobstructed communication with said inlet and outlet port means and a relief chamber in open communication with said relief valve port means;
(c)aperture means in said internal wall means and valve seat means thereabout;
(d)movable valve closure means within said relief valve chamber and movable between closed and open relief valve positions, into and out of, respectively, sealing registration with said valve seat means;
(e)resilient means within said relief valve chamber urging said valve closure member into its closed relief valve position;
(f)temperature responsive actuator means mounted within said circulation chamber and projecting remotely of said valve body, through said inlet port;
(g)force transmitting means extending from said temperature responsive means to said valve closure means;
(h)finger means within said circulation chamber to support and guide said temperature responsive actuator means.
The Proposed Amendments
The applicant states the reason for the section 77 Request to be "To overcome objections raised by the Supervising Examiner of Patents in his decision dated November 4, 1983".
The proposed amendments have the effect of replacing pages 2 to 4 and 6 of the description, replacing the statement of claims, and making two minor changes to the text of the description at page 5. There are three claims in the new statement which read as follows:
1.A temperature and pressure relief valve, including: a valve body containing a pressure relief chamber separated from a liquid circulation chamber by an internal wall formed with an aperture having an associated closure which seals against a valve seat surrounding the aperture and is movable in the relief chamber from an aperture‑closured position, towards which it is biased by resilient means in the relief chamber, to an aperture‑
open position at which liquid from the circulation chamber can pass through the aperture to the pressure relief chamber and thence to a relief port extending through the valve body from the pressure relief chamber; inlet and outlet ports in the valve body in open communication with the circulation chamber and between which hot liquid circulates by way of the circulation chamber during normal operation of the valve; and a temperature‑
sensitive actuator mounted inside the valve body and including a push rod extending from the vicinity of the closure to the circulation chamber, and a temperature‑sensitive element positioned beyond the inlet port so as to respond to the temperature of hot liquid in its vicinity exceeding a threshold value by exerting, via the push rod, an opening thrust on the closure; the internal configuration of the circulation chamber and the position of the closure with respect to it are such that the aperture is exposed to at least one of said inlet or outlet ports whereby normal usage of said valve provides sufficient washing or circulation of hot liquid past said aperture to alleviate deposit of scale in the vicinity of said aperture.
2.The valve claimed in Claim 1, in which the aperture associated with the closure is substantially aligned with the inlet port but positioned on the opposite side of the circulation chamber.
3.A temperature and pressure relief valve, arranged and adapted to operate substantially as described herein with reference to either Figure 1 or Figure 2 of the accompanying drawings.
Grounds of Opposition
Dr. Emmerson, for the opponents, advised that the grounds under section 78 upon which the opposition was based were those specified in sub‑sections (1), (2)(a) and (4), i.e. as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as lodged; as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims before amendment, and as a result of the amendment the specification would not comply with the requirements of section 40 of the Act.
Sub‑section 78(1)
Dr. Emmerson referred to a number of passages in the amended claim 1 which he contended are not in substance disclosed within the specification as lodged. I cannot agree with his submissions in this respect, and where appropriate, I have dealt with these matters under the heading of sub‑section 78(4).
Sub‑section 78(2)(a)
It was submitted by Dr. Emmerson that there are several passages in the amended claim 1 as a result of which the claim does not in substance fall within the scope of the claims before amendment. Again, I do not agree with most of his submissions, some of which are more appropriate for consideration under the heading of sub‑section 78(4).
However, at lines 12‑14, the claim recites "inlet and outlet ports in the valve body in open communication with the circulation chamber ...". It was submitted that this expression is not in substance within the scope of the equivalent expression in claim 1 before amendment, which requires the circulation chamber to be "in open unobstructed communication with said inlet and outlet port means".
My attention was drawn to the decision which I issued with respect to the section 59 opposition, and in particular, to the passage bridging pages 4 and 5. Here, I referred to the Australian Standard 1357‑1972, which requires that the inlet port of such temperature‑pressure relief valves be unobstructed except for that portion of the thermostatic element within the inlet. I considered, therefore, that claim 1 as accepted incorrectly defined the inlet port as being in unobstructed communication with the circulation chamber, as it defined temperature responsive actuator means projecting through the inlet port (see feature (f)).
I would point out that, in accordance with sub‑section 78(3), sub‑
section 78(2)(a) does not apply if the applicant is attempting to correct an obvious mistake. In the present case, I am satisfied that the incorrect definition of the communication between the inlet port and the circulation chamber in claim 1 before amendment is an obvious mistake as it ought to be obvious to a skilled addressee familiar with the Australian standard where the definition was incorrect, and how it should be corrected. In my opinion, the applicant would be entitled to amend the claim to define the circulation chamber and outlet port as being in open unobstructed communication and the circulation chamber and inlet port as being in open unobstructed communication except for that portion of the temperature‑sensitive element (or temperature responsive actuator) within the inlet port.
However, as the claim has not been so amended, I agree with Dr. Emmerson that it does not presently meet the requirements of the sub‑section. Sub‑section 78(4)
Dr. Emmerson pointed out various expressions and passages in the amended claim 1 which, he contended, are ambiguous and/or lack clarity.
Again, I do not agree with all of Dr. Emmerson's points. However, I find that there are several passages in the claim as a result of which the specification does not comply with section 40.
At lines 18 and 19 of amended claim 1, the push rod is defined as "extending from the vicinity of the closure to the circulation chamber" (my underlining). However, this is not a correct definition of the location of the push rod which actually lies within the circulation chamber. This can be clearly seen in the two embodiments illustrated by Figures 1 and 2.
Similarly, at lines 19 and 20, the temperature‑sensitive element is defined as being "positioned beyond the inlet port" (my underlining). This is incorrect. Both described embodiments, as illustrated by Figures 1 and 2, disclose the temperature sensitive element as being positioned at least partly within the inlet port to extend beyond it, externally of the valve body.
I now refer to lines 23 to 25, a passage which was not specifically referred to by Dr. Emmerson, viz. "the internal configuration of the circulation chamber and the position of the closure with respect to it are such that the aperture is exposed ..." (my underlining). As I see it, this is not a clear definition of the internal construction of the valve as it is not the position of the closure with respect to the circulation chamber which is directly relevant but the position of the aperture with respect to the circulation chamber which is of importance.
Thus, I find that amended claim 1 is not clear and not fairly based and therefore does not meet the requirements of sub‑section 78(4).
Decision
I have found that the opposition has been successful to the extent that the amended claims are contrary to the requirements of sub‑sections 78(2)(a) and 78(4). Therefore items 5 and 6 relating to the proposed new claims are not allowable.
There have been no submissions regarding the other items of amendment relating to the description. However, these items substantially correspond to the rejected claims, consequently, I refuse the request in its entirety and award costs against the applicant.
Finally, I would comment that many of the objections raised by the opponents appear to have arisen as a consequence of the total redrafting of the format of claim 1, including some terminology changes. It seems to me that in the terms of the original decision under section 59, this was neither required nor desirable. While I do not wish to direct the format of any proposed amendments, I would have thought that it would be preferable for the applicant to follow the format of the accepted claim, using the original terminology (where appropriate) and propose changes in accordance with the terms of the section 59 decision.
However the complete specification is capable of amendment to overcome the deficiencies which I pointed out in my decision under section 59. Accordingly, I will afford the applicant a further opportunity of seeking leave to amend the complete specification within 30 days of the date of this decision, before finally resolving the main opposition under section 59.
(J.L. ROVETA)
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