Ronald Arthur Dunn v Peter Denis Ward

[1983] APO 38

IN THE MATTER of the Patents Act 1952
  ‑ and ‑
  IN THE MATTER of Application No. 514320
  in the name of RONALD ARTHUR DUNN
  ‑ and ‑
  IN THE MATTER of Opposition thereto by
  PETER DENIS WARD

INTERIM DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS

This matter concerns an application for a patent entitled "Data Transmission System".  The application, accompanied by a provisional specification, was lodged 15 December 1976 and the complete specification was lodged 14 December 1977.  The application was advertised accepted on 5 February 1981 and notice of opposition was lodged 16 April 1981.

After several extensions of time in which to lodge evidence‑in‑support, the opponent notified the applicant on 18 October 1982 under regulation 57A that no evidence‑in‑support would be served.

The matter was set down for hearing in Melbourne on 2 August 1983.  The applicant was represented by Mr A. Tatlock, patent attorney of A. Tatlock and Associates and the opponent was represented by Mr P.R. Smith, patent attorney of Sandercock, Smith and Beadle.

The notice of opposition detailed all the grounds available under sub‑section 59(1) of the Act, however the opponent in his notice under

regulation 57A indicated he would only be relying on grounds (c) and (i) of sub‑section 59(1), namely prior claiming and non‑compliance with section 40.

It was agreed at the hearing that I must determine the preliminary matter of the priority dates of the claims of the complete specification in suit before the substantive grounds of opposition could be considered.  The hearing proceeded on this basis with argument confined to this preliminary matter.

I was referred to several authorities on the matter of fair basis. These included Mond Nickel Co. Ltd.'s Application (1956) RPC 189 wherein Lloyd‑Jacob, J. stated at page 194:

"It seems to me that there is a three‑fold investigation which is called for.  Firstly, one has to enquire whether the alleged invention as claimed can be said to have been broadly described in the provisional specification, and only if an affirmative answer is given to that question does one proceed to the second question, which is:  Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?  If it is found upon examination, that the invention as characterised in the claim includes something which is inconsistent with that which is described in the provisional specification, as at present advised I should think that it would be right to conclude that that claim could not have been fairly based upon the disclosure:  but, assuming that those two burdens are satisfactorily surmounted, there is, I think, a third matter for enquiry:  Does the claim include as a characteristic of the invention a feature as to which the provisional specification is wholly silent?  It is with those approaches which I have indicated that I have to consider the submissions which have been made to me in the present case."

Lloyd‑Jacob, J. further clarified the meaning of "broadly described" in Imperial Chemical Industries Ltd's Patent (1960) RPC 223 at page 228:

"Because of the use of the words "broad" and "narrow" to designate types of claim, it appears that the language in which the first of these steps was expressed has given rise to some doubt of its content.  The word "broadly", it should be noted, was used in respect of the description and carried the meaning of "in a general sense", such as would be exemplified by a statement in the provisional that reaction products were dissolved in hot water, where the complete specification introduced a specific temperature range."

Gibbs, J. in Hoffman‑La Roche & Co. A.G. v. Commissioner of Patents (1973) RPC 34 affirmed the tests laid down by Lloyd‑Jacob, J. at page 41:

"Lloyd‑Jacob, J. did not attempt to define all that is meant by the phrase "fairly based" but he gave a guide to the approach that should be made in deciding a question of this kind."

Graham, J in Letraset Ltd. v. Rexel Ltd. (1974) RPC 175 at page 197 commented on Lloyd‑Jacob, J.'s third test as follows:

".... I think that third test of Lloyd‑Jacob, J in the Mond case must be read as prohibitive only where the feature in question  as to which the provisional is silent is one which does not necessarily result from the embodiment of the other features which it does mention".

Fullagar, J. in Socie_{_)_'te_{_)_' des Usines Chimiques Rhone‑Poulenc v. Commissioner of Patents (1958) 100 CLR 5 at page 11 held in respect of sub‑section 45(5) of the Act:

"Again, the claim in the later specification must be "a claim fairly based on matter disclosed" in the earlier specification.  This requirement would be senseless if the sub‑section really meant that the subject matter of the later claim must have been actually claimed in the earlier specification.  Finally, reference may be made to s.51, which is referred to in sub‑s. (4) of s. 45, and which speaks not of claiming, but of "disclosure".  There must, of course, be a real and reasonably clear disclosure".

The only other authority to which I need refer is Glaxo Group Ltd.'s Application (1968) RPC 473 where Lloyd‑Jacob, J. said at page 480:

"The interval of time between the filing of the two specifications is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional ...." (emphasis is mine).

In the present case the provisional specification lodged in respect of application 514320 reads in its entirety, as follows:

DATA TRANSMISSION SYSTEM

A system by means of which information relating to the condition of various installations can be monitored at remote locations by means of coded radio signals and which incorporates a frequency swithing (sic) system to prevent radio jamming or interference from defeating the effectiveness of the system as a whole.
The DATA TRANSMISSION SYSTEM includes a device to detect the imformation (sic)to be monitored and to report such imformation (sic) to a remote base station upon a computer controlled instruction from the base station.

Claim 1 of application 514320 as accepted reads:

A computer controlled radio activated security and safety system for interrogating a plurality of locations sequentially and obtaining replies to indicate the condition of a required parameter at each of the locations and which system relies solely on radio transmission for interrogation and reply messages comprising:
a computer centre,
at least one main transmitting and main receiving station and a remote alarm unit at each location and physically independent of said main transmitting and said main receiving station and adapted to monitor the required parameter,
said remote alrm (sic) unit also including at least one receiver and transmitter,
said computer centre being adapted by way of the main transmitting and main receiving station to interrogate said alarm unit with a predetermined digital signal and on such interrogation said alarm unit will transmit a signal indicating normal or alarm conditions and to monitor its reply, the reply being considered normal by the computer if the predetermined parameter has its normal value and alarm condition on any variation in the parameter and means whereby the computer centre can change the frequency of operation of the main transmitter, each remote alarm unit being capable of being interrogated on the changed frequency.

In considering the fair basis of claim 1 on the provisional specification I was referred by both Mr Tatlock and Mr Smith to several features of the claim, however, I consider that only the following features warrant detailed discussion.

Claim 1 defines a system for interrogating a plurality of locations sequentially.  It was contended by Mr Smith that this feature was not broadly described in the provisional specification and the provisional was also wholly silent in respect of this feature.  Thus the tests laid down in Mond Nickel Co. Ltd.'s Application (supra) were failed and the claim was not fairly based on the provisional specification.

The provisional specification describes a device to detect information to be monitored and report such information in response to a computer controlled instruction.  Thus a system of interrogation is broadly described.  This leaves the question whether sequential interrogation is disclosed?  The Shorter Oxford English Dictionary defines "sequence" as:  "The fact of following after or succeeding;  the following of one thing after another in succession".  In my opinion the term "sequentially" implies the following of a predetermined order of events.  I consider the provisional specification to be wholly silent in respect of this feature.  Thus the claim in respect of this feature fails the third test stated by Lloyd‑Jacob, J. in Mond Nickel Co. Ltd.'s Application (supra).

Claim 1 also defines "means whereby the computer centre can change the frequency of operation of the main transmitter".  The provisional specification describes a frequency switching system which implies the frequency of the main transmitter can be changed, however, no description is given of computer centre control of such switching.  A computer is inferred in the provisional by the description of a computer controlled instruction being used to interrogate a monitoring device.  There is no inference however that this computer is used to control the switching or changing of the frequency of the main transmitter.  Thus, I am again of the opinion that the provisional specification is wholly silent in respect of this feature of claim 1.

Mr Smith referred me to the feature of claim 1 which defines the system as relying solely on radio transmission for interrogation and reply messages.  He submitted that this feature was not disclosed in the provisional specification.  He contended that the reference at the beginning of the provisional to monitoring at remote locations by means of coded radio signals could not be read onto the statement in the second paragraph of the provisional specification which refers to a single device monitoring and reporting monitored information to a base station.  Mr Smith submitted that this data transmission system did not necessarily use radio signals and could be considered to be describing a hard‑wired arrangement.

I am unable to accept with this argument, as the provisional specification describes a device for detecting information to be monitored and reporting said information to a remote base station and further describes this monitoring at remote locations as being done by means of coded radio signals.  It therefore appears on a logical interpretation of these features that the link between the monitoring device and the base station is a radio transmission system provided one assumes that the single monitoring device referred to in the provisional specification is present at each installation which is to be monitored.

This assumption was the subject of further argument by Mr Smith in relation to the fair basis of claim 1 with respect to the provisional specification.  Claim 1 defines a remote alarm unit at each location and Mr Smith submitted such a feature was not disclosed in the provisional specification.  He contended that the provisional specification did not disclose an alarm unit and only described a singular monitoring device whereas Claim 1 defined an alarm unit at each location to be monitored.

I agree that the provisional specification makes no specific reference to an alarm unit, however, it describes a monitoring device and a system for monitoring the condition of various installations.  The description of condition monitoring clearly, in my opinion, infers a system which ascertains whether an installation is functioning normally or abnormally.  Further, I consider a skilled addressee would construe an abnormal condition as being synonymous to an alarm condition.  Thus in respect of the feature of an alarm unit I am satisfied that there is sufficient disclosure in the provisional specification.

In considering whether a plurality of condition monitoring devices are disclosed in the provisional specification it is necessary in my opinion to consider the provisional document as a whole.  I agree with Mr Smith's submission that only a singular device to detect information to be monitored is described in the second paragraph of the provisional specification.  However, when this paragraph is read in conjunction with the initial description of the system, it is, in my opinion, a logical interpretation of the disclosure that such a device must be present at each installation in order to enable the condition of various installations to be monitored at remote locations.  The initial description of the provisional specification clearly describes the monitoring function as taking place at the remote locations and the second paragraph describes a device to detect the information to be monitored.  It would seem to me the only consistent interpretation of these two statements is that the device to detect information must be located at each of the remote locations and thus it follows there must be more than one device.  Thus in respect of this feature I am of the opinion claim 1 is fairly based on the provisional specification.

In the course of his submission on the above point, Mr Smith referred to an apparent inconsistency between the provisional specification and the complete specification.  The complete specification describes both a computer centre having a main transmitter/receiver and a further separate base station which is linked to the computer centre by a radio transmission system.  If the base station described in the provisional specification is considered to be the same as the computer centre then there is an inconsistency with the description of the complete specification, however, I do not consider that this inconsistency extends to claim 1 and thus does not affect the present considerations of fair basis.

A further feature in Claim 1 considered to be of importance by Mr Smith in determining the fair basis of the claim was the feature of "a predetermined digital signal" being used to interrogate the alarm units.  The provisional describes the use of "coded radio signals" and Mr Smith conceded that such a term included within its scope digital signals, however, he submitted that this term did not broadly describe a digital signal.  In considering this argument I believe it is necessary to consider a further feature of the provisional specification, that is, that the interrogation is done by means of a computer controlled instruction.  In my opinion, a computer controlled instruction would normally suggest to a skilled addressee some form of digital information.  Though this digital information could be transmitted using signals other than a digital signal I believe that such a statement would normally infer to the skilled addressee that some form of digital signal was used by the computer to interrogate the monitoring device.  Thus I consider this feature to be fairly based on the disclosure in the provisional specification.

Mr Tatlock conceded that all the claims of the complete specification apart from Claims 1 and 3 were not fairly based on the provisional specification.  Thus, as I consider Claim 1 contains two features on which the provisional specification is wholly silent and thus fails Lloyd‑Jacob, J.'s third test of fair basis, I find Claim 1 to be not fairly based on the provisional specification.  It follows, as Claim 3 is appended to Claim 1, that it also is not fairly based on the provisional specification.

Accordingly, in my opinion, the claims of the complete specification accompanying application no. 514,320 are not entitled to the priority date of the provisional specification lodged with above application and must proceed with a priority date of the date of lodgement of the complete specification, that is, 14 December 1977.

On the matter of prior claiming, it was agreed by the parties that the hearing in respect of this ground and the ground of non‑compliance with section 40 be adjourned pending finalization of the claims of Patent application No. 36125/78 which form the basis of the prior claiming allegation.  Mr Smith who represents the applicant for Patent application No. 36125/78 indicated he intends to seek amendment of the claims of this specification.

I shall determine the matter of costs in my final decision on this matter.

(G.J. BAKER)
Assistant Commissioner of Patents