Robertshaw Controls Company v G.S.A Industries Limited

[1990] APO 44

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re: Australian Patent Application No. 516290 in the Name of          ROBERTSHAW CONTROLS COMPANY and Section 82 Opposition by         G.S.A. INDUSTRIES LIMITED

Background

The history of this action is set out below:

.The Office advertised the acceptance of 516290 on 28 May 1981;

.Actrol Industries Pty Ltd lodged notice of opposition under s.59 on 27 August 1981 : I heard the opposition and issued a decision on 4 November 1983 allowing the applicant 60 days in which to propose amendments to remove the grounds of objection under s.40 and s.48, which I had found;

.Robertshaw filed a s.77 request on 7 December 1983;

.The Office advertised acceptance of that request on 27 September 1984;

.Actrol filed notice of opposition under s.82 on 20 December 1984;  I heard this opposition and issued a decision on 25 March 1986 refusing the s.77 in its entirety, but allowing Robertshaw 30 days to seek leave to amend the complete specification;

.Robertshaw lodged a second s.77 request on 17 April 1986;

.The Office advertised acceptance of this second request on 19 June 1986;

.G.S.A. Industries Limited filed notice of opposition under s.82 on 17 September 1986;

.I heard this second s.82 opposition in Canberra on 26 June 1990 and issue this decision as a result.

At the hearing, Mr J.C. Campbell QC, assisted by Mr M.R.J. Ellicott of counsel, and Mr C. Macauley, patent attorney of Callinans, represented the applicant.  Dr J.McL. Emmerson QC assisted by Mr C.A. Spence of counsel, and Mr T.J. Collins, patent attorney of Phillips, Ormonde & Fitzpatrick, represented the opponent.

The Specification as Accepted

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.

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;

(h)finger means within said circulation chamber to support and guide said temperature responsive actuator means.

The Proposed Amendments
          There is a proposed new statement of claims (reproduced in full below), and there are consequential changes proposed to the description:

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 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,

said circulation chamber and outlet port means being in open unobstructed communication and said circulation chamber and inlet port means being in open unobstructed communication except for that portion of the temperature responsible actuator means within said inlet port means, the internal configuration of said circulation chamber and the position of said aperture means with respect to it are such that the aperture means is exposed to at least one of said inlet or outlet port means whereby normal usage of said temperature and pressure relief valve provides sufficient washing or circulation of hot liquid past said aperture means to alleviate deposit of scale in the vicinity of said aperture means.

1. The temperature and pressure relief valve claimed in Claim 1, in which the aperture means associated with the closure means is substantially aligned with the inlet port means but positioned on the opposite side of the circulation chamber.

1. 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."

The Evidence and Submissions

The evidence in support consists of a statutory declaration made by William S. Watson.  Mr Watson deposes that he is a science graduate from the University of Sydney.  He majored in Inorganic and Organic Chemistry.  Subsequently, he gained diplomas in Chemical Engineering and Industrial Chemistry.  Relevant to the subject matter of this action, he has had quite a deal of experience relating to hot water systems, and generation of hot water using gas as the energy source.  Mr Watson has made almost a word by word analysis of proposed amended claim 1 and compares it to certain known valves in the Australian Standards and in the evidence in support of the s.59 opposition.  He concludes that the amended claim 1 seeks to qualify a known valve arrangement by placing certain requirements on the internal arrangement of the circulation chamber, such as to achieve a washing effect: however, as he reads the claim it has no requirements which distinguish the prior art.
         Dr Emmerson, in taking Mr Watson's declaration further, submitted that the specification causes difficulties regarding what it is that has been invented: the proposed amendments, he said, leave matters unclear, and it is arguable what is the width of the claims.  More specifically, he detailed five major problems, which I set out below in the order presented by Dr Emmerson, but in briefer form:

(i)  Claim 1 is partly limited by result -

"whereby normal usage of said temperature and pressure relief valve provides sufficient washing or circulation of hot liquid past said aperture means to alleviate deposit of scale in the vicinity of said aperture means".

However, the claim does not require no deposit of scale, only an "alleviation".  The point is, how do you tell whether this feature is or is not present?  The term "alleviate" means in the context, to make better, but with respect to something else which is not defined.  The test could be to compare the valve as presently defined with a structure
     .    without an outlet port;
    .    with or without bits of extra machinery; or
     .    with aperture means positioned somewhere else.
         There is reference to "normal usage" but this is Qunclear because valves form part of larger machinery and running conditions vary widely.
         In principle it is possible to have an apparatus limited by result but it is not in the permissible range of claims as outlined in Blanco White 4th Edition, paragraph 2-221 which reads:

"It is permissible to limit the claims of a patent to that which gives a particular useful result if, and only if, those engaged in the art concerned can determine whether or not they have attained that result either by employing a proper criterion set out in the specification or by conducting simple experiments.

It follows from the rule that claims must be as clear as the subject admits of, that particular care must be taken when claims of this sort are adopted to give in the specification all possible assistance in determining what does, and what does not, give the useful result concerned: clarity of claim and sufficiency of description go together here."

Here, there are no criteria set out, and there are no simple experiments.  The result may well be alleviation , but it is unclear what tests need to be performed to determine precisely what this means.

(ii)Claim 1 includes the expression - "the aperture means is exposed to at least one of said inlet or outlet port means".

What does the phrase "exposed to" mean?  It could mean that the aperture means is exposed to both inlet and outlet port means as the aperture means is in the circulation chamber and the circulation chamber is connected to both the inlet and outlet port means.  This cannot be correct because the phrase would be totally redundant.
(Dr Emmerson discussed what he viewed as other possible meanings for this phrase; however, I need not repeat those meanings here).

1. Claim 1 includes the expression -

"sufficient washing or circulation of hot liquid past said aperture means to alleviate deposit of scale in the vicinity of said aperture means"

This could mean either -

(a)the liquid adjacent the aperture means is not stagnant, e.g. turbulent; or

(b)  the liquid washes up against the aperture means to
         remove deposits.

That is, "past said aperture means" could mean that the aperture means is actually in the liquid stream or could mean that it is located in a region at some distance from the stream, but the latter causes some departure from stagnancy of the liquid at the aperture means.
         The claim should indicate which of the two meanings is applicable, in this functional statement.

1. Up to the present amendments, it appeared that the inventive concept was achieved by reason of the configuration of the circulation chamber and its connection to inlet and outlet ports, and the absence of too much machinery in the circulation chamber.  But claim 1 now includes the expression -

"the internal configuration of said circulation chamber and the position of said aperture means with respect to it are such that ...".

The applicant could be claiming anything which produces the desired result or claiming something particular about the configuration.  Which, is unclear.  Thus detailed shaping or new positioning could now be critical.
         There are two grounds of objection.  The first is under s.78(1), as the new matter is not in substance disclosed in the specification as originally lodged.  The second is under section 40, as the critical thing to distinguish from the prior art is the shape and positioning and there is no fair basis for this in the specification.  The specification does not deal with any outlet port or give any importance to detailed shaping.  As a result, claims 1 and 2 are not allowable.
         Claim 3 is also not allowable because it includes the expression

"arranged and adapted to operate substantially as described herein with reference to either Figure 1 or Figure 2 of the accompanying drawings.",

and "substantially as described herein" now includes new matter. The consistory statement before amendment in the specification on page 2 line 9 to page 3 line 4 is proposed to be amended and replaced by the new claim 1.  Therefore the expression "to maintain this aperture free of deposits and scale" is removed and the requirement is only that there is an alleviation of scale deposits.
         The previous omnibus claim had no reference (explicit or implicit) to deposits, but the new omnibus claim does.  This broadening therefore causes new claim 3 to fail under s.78(2)(a).
         Further, the previous omnibus claim uses the expression "with reference to the drawings" and figure 1 is detailed, but the amended omnibus claim recites "with reference to figure 1 or figure 2", and figure 2 is only a schematic.  Again, claim 3 is not an allowable amendment under s.78(2)(a) for this reason.
     (v)  Claim 1 before amendment had open and unobstructed communication to both the inlet and outlet ports, but now there is the exception of the possibility of the temperature actuator means being able to cover the inlet port.  The size of the temperature actuating means is not defined.  This broadening of the claim by amendment is not permissible.
         The evidence in answer consists of two statutory declarations, respectively made by Donald James Fakes and Brian Cotterell.  Mr Fakes deposes that he is a qualified tradesman in toolmaking and in fitting and machining.  He obtained diplomas in Production Engineering studies and, inter alia, is a Chartered Member of the Council of Engineering Institutions UK, and a Member of the Institution of Production Engineers.  From 1959 to 1975 he served the Standards Association of Australia as a member of the Water Standards Executive Board.  He also served on the Water Standards Metric Panel and a number of sub-committees, all as part of the Standards Association.  In addition, Mr Fakes has had several decades of engineering experience, most of which appears relevant insofar as the present invention is concerned.  Mr Fakes declares that, in his view, the intention of claim 1 is clear, and that anyone skilled in valve manufacture would find this so.  He agrees that while some calculation or experimentation might be necessary to work out what precise internal shape of the circulation chamber will achieve the required purging of the valve opening, he believes this to be easily within the capacity of a skilled workman.  He makes similar comments about the other criticisms raised in the Watson declaration.
         Mr Cotterell deposes that he commenced his technical education as an apprentice, and as such gained experience in a wide range of engineering including fabrication, fitting, machining toolmaking, welding and forging.  Subsequently he gained qualifications in mechanical engineering up to the Ph.D. level (Cambridge).  He has had substantial engineering experience, and is the author of a large number of technical papers.  At the time of making the declaration, Mr Cotterell was a Reader in Mechanical Engineering at the University of Sydney.  Mr Cotterell makes similar criticisms to those of Mr Fakes about the Watson declaration.  I can best demonstrate his approach by quoting paragraph 4 of his declaration:

"In summary Mr Watson's objections to the said patent application is that the "added part"* of the amended claim 1 does not define the physical features of the invention.  Mr Watson seeks to show the defects in claim 1 by examining the claim in detail almost word by word applying not the criterion of a person skilled

*substantially, paragraph (g) of the proposed amended claim

in the art, but that of someone who has little knowledge of relief valves and their workings.  When

read as a whole the amended claim 1 clearly teaches a

person skilled in the art how to construct a relief             valve so that substantial scale deposits, that might            cause the valve to seize and be inoperative, will not           form within the body of the valve in close proximity            to the relief orifice.  The said patent application           seeks to teach the person skilled in the art the                   principle of the invention and the means by which it              can be achieved.  It is not necessary for the physical        dimensions of the relief valve to be defined for a             person skilled in the art to be able to design a                 relief valve so that there is no substantial scale            build up in close proximity to the relief orifice.  A             person skilled in the art can determine the optimum            dimensions of the relief valve for any particular              application.  In general, it seems to me that Mr               Watson's declaration makes points more concerned with           linguistics than engineering difficulties.  My                  detailed comments are as follows amd are renerenced to          the paragraphs of Mr Watson's declaration."

Mr Campbell in his submissions elaborated on the contents of both declarations.  He rebutted Dr Emmerson's five "problems" point by point, referring to court authorities for support.  I will not repeat Mr Campbell's submissions here as I find myself in general agreement with his viewpoints.

Decision

Section 82 opposition can only be mounted on the grounds that the amendment is not allowable under section 78.  As the specification in suit is open to public inspection, three grounds of non-allowability apply:

S78(1):"if, as a result of the amendment, the specification

would claim matter not in substance disclosed in the

specification as lodged";

S78(2)(a):if, as a result of the amendment ... a claim of the

specification would not in substance fall within the

scope of the claims of the specification before

amendment"; and

S78(4)"if, as a result of the amendment, the specification would not comply with the requirements of section 40."

The Act also provides the qualification (s78(3)) that "Sub-sections (1) and (2) do not apply in respect of an amendment for the purpose of correcting a clerical error or an obvious mistake."
Sub-Section 78(1)
         There are two matters to be considered under this heading:

(a)that up to the present amendments, it appeared the invention was to achieve the required result by reason of the configuration of the circulation chamber and its connection to the inlet and outlet ports, and the "absence of too much machinery" in the circulation chamber : it appears now that the invention could be carried out by any means including detailed shaping or repositioning of the various parts;

(b)that the original disclosure used the expression "... to maintain this aperture free of deposits and scale" whereas claim 1 presently refers only to "alleviate deposit of scale" (my underlining).

In AMP Incorporated v The Commissioner of Patents (1974) AOJP (Vol 44 No. 29) 3224 at p.3227, the High Court, in dealing with the expression "in substance fall within the scope" stated that:

"The substance must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claim relates."

Under s.78(1) the question of allowance is related to matter in substance disclosed.  In my view, the comments of the High Court are equally pertinent to the meaning of the word "substance" in this context.
         In this respect I take account of the declarations of Messrs Fakes and Cotterell.  It follows that as far as the matter (a) is concerned, this is quite incorrect, and I dismiss this submission from further consideration.  Matter (b), however, requires comment.  The original disclosure refers to maintaining the aperture of the relief valve free of deposits and scale.  If by "free", is meant 100% free, then Dr Emmerson might have a point.  It is clear from the evidence, however, that the skilled person, aware of the state of the prior art would realise that in the practical situation of valve operation "free" could not possibly imply 100% absence of scale deposit but rather would imply sufficient absence to enable the relief valve to operate freely if the pressure or temperature of the water heater exceeds the set limits.  As to "alleviate", Mr Cotterell states that a person skilled in the art would understand "alleviate" to refer to a sufficient alleviation of the scale deposit to enable the valve to open freely.  I accept this view, and on this basis I find no contravention of s.78(1) by the proposed amendments.
Sub-section 78(2)(a)
         Dr Emmerson made several points about allowability under this sub-section summarised as follows:

.Claim 1 before amendment specified open and unobstructed communication to both the inlet and outlet ports, but this is not so in the amended claim 1.

.Claim 3 is not allowable in its alternative construction by reference to Figure 2 only; the original omnibus claim was limited by reference to the drawings i.e. figures 1 and 2, and whereas figure 1 is quite detailed, figure 2 is not.

.The previous omnibus claim defined a structure which supposedly produced no deposits of scale, whereas the new claim 3 defines a structure concerned only with alleviation of such deposits.

In dealing with the first point, I refer to my decision on the previous section 82 opposition which states, on page 6:

"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) 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 the outlet 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."

Claim 1 as presently proposed to be amended includes the passage:

"... said circulation chamber and outlet port means being in open unobstructed communication and said circulation chamber and inlet port means being in open unobstructed communication except for that portion of the temperature responsive actuator means within said inlet port means ..."

This passage includes material clearly in response to the earlier decision and is, in my view, allowable.  No definition of the size of the temperature responsive actuator is required, as suggested by Dr Emmerson, because there is no indication that the standard inclusion of an actuator is capable of altering the characteristics of the invention as a whole.  Surely, a skilled addressee would see this definition as merely explicitly including the standard that was implicit in the disclosure before amendment.
         Dr Emmerson's next two points concern the allowability of the omnibus claim, claim 3.  I have already answered the latter of these two points sufficiently in my comments respecting s.78(1).  As to the remaining point, the expression "substantially as described herein with reference to the accompanying drawings", insofar as it qualifies the expression "A temperature and pressure relief valve" in the omnibus claim before amendment, incorporates into that claim the essential features of the valve as described, with these features being specifically construed in the light of the drawings.  Concerning the proposed amended claim 3 in its alternative form of referring only to figure 2, I note the comments of Blanco White (Patents for Inventions, 5th Ed., para. 2-113):

"Where only some of the features of the invention are illustrated, it would seem that the claim should be treated as a claim to the invention "as described" so

far as the features not illustrated are concerned, rather than as one for the illustrated features only: Chapman v Deltavis (1930) 47 RPC 163."

There is also the fact that the Act does not require amended claim 3 to fall within the scope of the omnibus claim before amendment, but only within the scope of the claims.  Putting these two matters together, while it may be that new claim 3 does not fall within the scope of the previous omnibus claim (a matter which I do not have to decide), it certainly falls within the scope of claim 1 before amendment, and consequently does not contravene the provisons of s.78(2)(a).
Sub-Section 78(4)
         I will set out the major points of difficulty raised under this sub-section, and relate them to the several problems as presented by Dr Emmerson (set out earlier in this decision):
     .    problem (i)     -   "alleviate"; "normal usage";
     .    problem (ii)   -   "exposed to";
     .    problem (iii)   -   "past said aperture means";

.problem (iv)    -   internal configuration of the valve chamber and positioning of the aperture means.

All the above points are concerned with clarity, i.e. the meaning of the expressions quoted in the context of amended claim 1.  The points from the fourth problem are concerned also with the fair basis of the claim.  As far as the meaning of "alleviate" is concerned, I have dealt with this sufficiently in my comments under s.78(1).  As to the clarity of the other expressions above in quotes, each of Mr Fakes and Mr Cotterell are adamant that a person skilled in the art would not have the difficulties set out by Mr Watson, and put forward in submissions by Dr Emmerson.  In stating this, each of these declarants has made the point that Mr Watson's declaration is rather a word by word dissection of the specification than the view of a person skilled in the art looking at the invention in a way which could be described as "wishing and willing".  Whilst I do not suggest that Mr Watson is not a person skilled in the art in question, I note the lesser relevance of his qualifications in Chemistry as compared to the engineering qualifications and training of Messrs Fakes and Cotterell.  Hence I accept the views of the latter declarants, and I suggest that the opponent would do well to consider the import of the words of the High Court in Welch Perrin & Co Pty Ltd v Worrel 106 CLR 588 at page 617, that "... the specification is addressed to hay rakers, not to drill masters;". Regarding the final point set out above (re problem (iv), I quote directly from the declaration of Mr Fakes:

"In my view, the intention of the claim is clear; to have a temperature pressure relief valve designed for installation in a hot water heater in communication with the hot water service lines but having the additional feature of a means to prevent or at least minimise the accumulation of scale or other deposits that could affect the operation of the relief mechanism ...

... I say that anyone skilled in valve manufacture would find the claims clear.  While some calculation or experiment might be necessary to work out what precise internal shape of the circulation chamber will achieve purging of the valve opening, that calculation or experiment is easily within the capacity of a skilled workman ...

... To a person skilled in the art, it is quite clear that the relief valve aperture will be positioned to ensure adequate hot water flow across the face of the aperture during the normal operation of the hot water service to which the valve is attached, assuming the relief mechanism is not operating due to over pressure or excess temperature ...

... The patent application gives adequate detail for a person skilled in the art to design a valve having a circulation chamber that ensures sufficient washing effect at the relief aperture and the surrounding area.

Valves of the prior art did not circulate water at the relief aperture.  Water remained stagnant in the valve body and at the relief aperture.  There could be considerable scale and sediment build up over a period of time which could prevent the operation of the relief mechanism."

Mr Cotterell, in his declaration, makes statements similar to those quoted above.  I agree with both declarants, and consequently, find the amendments do not contravene s.78(4).  In coming to this conclusion, I do not intend to suggest that the proposed amended specification is a linguistically perfect example of a technical document.  Rather, I believe that having regard to the tenets of patent law, in particular that the document is addressed to a person skilled in the particular art and in possession of the common knowledge attributable to that skill, the document complies with the requirements of s.40, at least insofar as it has been affected by the proposed amendments.
Conclusion
         I have decided that the amendments are allowable, and therefore the opposition fails on all counts.  I award costs against G.S.A. Industries Ltd.

(J.L. ROVETA)
   Delegate of the Commissioner of Patents

Attorneys for the Applicant:  Callinans
Attorneys for the Opponent :  Phillips Ormonde & Fitzpatrick