Safety Equipment Sweden AB v Protector Safety Industries Pty Limited

[2000] APO 72

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 699492 in the name of Safety Equipment Sweden AB

Title:          Breathing Apparatus

Action: Opposition under s.59 by Protector Safety Industries Pty Limited; hearing.

Decision:          Issued            

Abstract

The invention relates to fan forced positive pressure breathing apparatus wherein filtered air is pumped to a face piece or mask carried by a wearer.  The mask is provided with an inlet valve to allow inhalation of the filtered air and an outlet valve which opens upon exhalation.  Claim 1 was interpreted to require the "air pressure of the pump unit" to maintain the outlet valve closed upon inhalation, not springs and not a combination of air pressure and springs.

The invention was found not to be fully described with respect to the "calibration phase" and "performance monitoring means" of the apparatus, these features being the subject of claims 5 and 12 respectively.

The claimed invention was found to be novel.  Material relied upon by the opponent, including patent specifications, did not disclose breathing apparatus with the outlet valve as claimed.

The invention defined by claims 1, 5 to 7, 9, 17 to 19 was however found to lack an inventive step given the prior art information of a number of patent specifications when considered separately with the common general knowledge established from the evidence.

Costs were awarded against the patent applicant Safety Equipment Sweden AB.

The applicant was afforded an opportunity to propose amendments to the application to overcome the grounds of opposition found to apply.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 699492 by Safety Equipment Sweden AB, and opposition thereto by Protector Safety Industries Pty Limited under section 59 of the Patents Act 1990.

BACKGROUND

Patent Application No. 699492 was filed on 1 August 1995 by Safety Equipment Australia Pty Limited being the designated Australian application and then numbered 31053/95 of an International application numbered PCT/AU95/00468.  The application claimed priority from four earlier Australian provisional specifications, the earliest having been filed on 1 August 1994.  Application 31053/95 was advertised accepted on 3 December 1998 and given the serial number 699492.  The application was subsequently assigned to Safety Equipment Sweden AB.

A notice of opposition to application 699492 was filed on 3 March 1999 by Protector Safety Industries Pty Limited, and a statement of grounds and particulars followed on 3 June 1999.  Evidence in support was filed and served on 7 December 1999.  No evidence in answer was served by the applicant.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40.

The matter was heard on 6 July 2000 in Sydney.  The applicant was represented by Mr C O'Sullivan, patent attorney of F B Rice & Co, Sydney and the opponent by Mr F Old, patent attorney of Hodgkinson Old McInnes, Sydney.

SPECIFICATION

The invention is entitled "breathing apparatus".  The specification under the heading "Field of the invention" states that:

"the invention relates to a fan forced positive pressure breathing apparatus of the kind in which filtered air is pumped to a face piece or mask covering at least the nose or mouth of the wearer, the air being pumped by means of a fan driven by an electric motor which is usually battery powered."

The specification acknowledges that breathing apparatus of the kind to which the invention relates "is well known" and that different constructions have previously been proposed and advantages and disadvantages discussed "in many patent specifications".  The description states that among desirable requirements for satisfactory apparatus of this kind, are that

• it can supply adequate quantities of air when the user takes a deep breath, necessitating a substantially higher flow rate than normally anticipated,

• it minimises power consumption by the motor driving the fan whilst giving necessary performance, and

• it provides that the air pressure within the face piece never falls below the ambient atmospheric pressure.

The present invention is said to be "directed to providing an alternative form of forced air breathing apparatus that, at least in preferred embodiments, allows these desired ends to be achieved."

The specification over pages 1 to 9 refers to no less than five different aspects of "the present invention" along with numerous embodiments of certain features.  Pages 10 to 18 contain description of the invention with reference to the drawings attached to the specification.

The specification ends with 20 claims, claim 1 being the only independent claim.  Claim 1 corresponds to the "first aspect" of the invention referred to in the description and reads as follows, the paragraphing being added to allow for ease of subsequent reference.

a)   "A forced air breathing apparatus comprising

b)   a face piece or mask covering at least the nose or mouth of a wearer,

c)   a pump unit arranged to supply air to a space within the face piece or mask,

d)   an electric motor within the pump unit arranged to drive a fan forming part of the pump unit,

e)   a filter to filter air entering the face piece or mask and

f)    a valve means controlling the flow of air from the pump unit to the face piece or mask during inhalation and from the face piece or mask during exhalation,

g)   the valve means including an air inlet valve and an air outlet valve,

h)   the air outlet valve being maintained in a closed position during inhalation through the air inlet valve by air pressure from the pump unit and being opened by exhaled air which also acts on the inlet valve to prevent the entry of exhaled air to the pump unit."

Of the dependent claims, seven directly append to claim 1.  Of these only claim 19 specifically characterises a relationship between three features of claim 1, whilst claims 17 and 18 characterise the apparatus "adapted" to achieve stated results regarding the air supplied.  The four other claims introduce new features to the apparatus defined in claim 1.

The specification states that the term "face piece or mask" is taken to include any device covering the nose or mouth or both of a wearer and engage with the wearer's body or clothing around its edges, and may comprise a helmet covering the wearer's head.  And the "filter" is taken to include any device for the removal of particulate and/or gaseous contaminants from the inhaled air.

EVIDENCE AND SUBMISSIONS

The evidence in support consists of the following:

• Statutory declaration by Michael William Harral with Exhibits A, B, and C.  Mr Harral is currently employed by an associate British company to the opponent.  In the period 1981 to 1991 he worked for another company Normalair Ltd in the United Kingdom and worked on aircraft oxygen systems.  He exhibits brochures disclosing aircrew-type oxygen masks and equipment.

• Statutory declaration by Gregory Robert Nicholas with Exhibits GRN-1 to GRN-17.  Mr Nicholas is the Product Specialist (Respiratory) for the opponent company.  He states that he has "had extensive experience over the past thirty nine years in the design, manufacture, sale and maintenance of personal safety equipment, and in particular protective respiratory equipment."  He exhibits to his declaration nine prior patent specifications, and various other publications relevant to safety equipment.  He also refers to features of the claims and discusses these in the context of the disclosures of various exhibits.

• Statutory declaration by Mark David Waterton with Exhibits MDW-1 to MDW-7.  Mr Waterton is a Flight Lieutenant working as an Engineer with the Life Support Logistics Management Flight at the Royal Australian Air Force Base in Edinburgh, South Australia, a position held since 1997.  Between 1993 and 1996 he was a Test Engineer for Life Support Systems at the Aerospace Engineering Test Establishment in Alberta, Canada.  He states that he has become well acquainted with a wide range of personal safety equipment including personal breathing apparatus.  He exhibits various publications relating to breathing apparatus to his declaration and discusses features of the claims with reference to disclosures in various exhibits.

• Statutory declaration by Barry O'Connor with Exhibits BO-1 to BO-10.  Mr O'Connor is a Flight Sergeant in the Royal Australian Air Force, Life Support Fitter II in the Maritime Patrol Logistics Management Squadron based at Edinburgh, South Australia.  He has had employment positions in Australia related to life support equipment for aircrew since 1983.  He comments on equipment exhibited by Harrall.  He, like the other declarants, exhibits various publications relating to breathing apparatus to his declaration and discusses features of the claims with reference to disclosures in various exhibits.

The declarations of Nicholas, Waterton and O'Connor have much in common, in fact many paragraphs across these declarations have identical or near identical wording save for different exhibit identifications.  One example of this is that they each discuss the Harral declaration and its exhibits over four paragraphs in identical or near identical terms. 

Both parties presented submissions at the hearing on issues of section 40, lack of novelty and lack of inventive step.  I will refer to these as necessary under the relevant headings in the decision section following.

DECISION

Section 40

Mr Old submitted that the specification exhibited various deficiencies thus causing non- compliance with section 40.  In particular he referred to the following matters.

• The introductory portion of the description which related to various "aspects" of the invention but which seemed to go to different inventions and the fact that some claims did not relate to combinations corresponding to these aspects.  He submitted that there was confusion between the body of the specification and the claims as to what constituted the invention.  This he said was accentuated because the claims were directed to a collection of old integers with no new result evident.

• He also submitted that portions of the description and drawings lacked detailed explanation or detail to enable them to be comprehended let alone be used to construct arrangements by someone skilled in the respiratory field.  For instance he said the electronics and control arrangements of figures 9 and 10 gave no detail to put the teaching into practice.

• The description provided no explanation or details of means to provide a "calibration phase" for the apparatus as claimed in claim 5.

Consequently he submitted the invention was not fully described and the claims lacked fair basis.

In reply Mr O'Sullivan submitted that the declarants for the opponent expressed no concerns regarding the description and possible utility problems, and in view of their references to the relevant Australian and British Standards for safety devices it must be assumed they understood the specification and how the arrangement would operate.  He also said that whilst the specification described various inventions deriving from the various provisional specifications priority documents, only figures 5 to 9 were relevant to the present invention.  He added that the statement of grounds and particulars identified no particulars directed to section 40 issues.

Viewing the specification generally, I think it fair to say that the description does not clearly convey to the reader the nature of the invention with which the present application is directed and advantages flowing from it.  The introductory section of the description and its reference to many aspects of the invention creates some uncertainty about the invention in this regard, not aided by the description of the drawings where many arrangements and elements are described.  However insofar as the invention defined by claim 1 is concerned, I believe that there is an adequate description of such an apparatus.  Mindful that the declarants for the opponent raised no concerns with the description of the invention, I am inclined to view the description in a benevolent fashion in favour of the applicant.  However I must agree with Mr Old that in some respects certain arrangements claimed are not fully described.  In particular there is no detailed disclosure of the means to effect the "calibration phase" as referred to in claim 5.  There is no suggestion that this is a procedure which would be readily understood and able to be practiced by those in the art thus requiring no further explanation.  The same I think applies to the "performance monitoring means" of claim 12 - there is at best only general reference to what this entails and no details how to put this into practice.  Thus to the extent mentioned I find that the specification offends against s.40 in not being fully described.

Field of invention

As stated in the portion of the specification quoted earlier, the invention relates to "a fan forced positive pressure breathing apparatus".  Mr O'Sullivan said this was a distinct technical field to one for respiratory equipment for aircrew and other applications where oxygen is delivered via a regulator to the subject.  He said the declarants Nicholas, Waterton and O'Connor all stated that the invention could be described as a "power assisted particle filtering device", the definition of which was covered in British Standard BS EN 147:1992 exhibited in evidence.  This standard specifically stated that it did "not cover devices designed for use in circumstances where there is or might be an oxygen deficiency.  He also said that it was covered by Australian Standard AS 1716-1982 "Respiratory Protective Devices", which was exhibited in evidence, which states that the standard does not apply "to respiratory protective devices for use in aircraft, or for operations underwater".

Mr Old replied that the applicant had provided no expert evidence to say that the situation of a pump supplying air to a respiratory mask was somehow different from the situation of a pressurised tank supplying gas via a regulator to a mask.  He said that both situations provided low levels of air or gas to a subject, and unless the applicant could point to some physical reason as to why these two means of supplying low level air or gas were different, it seems there is no grounds to assert they represent different fields of art.  He asserted that the claim language by reference to forced air breathing apparatus provided no restriction to the particular field of use.

Whilst the expression "forced air breathing apparatus" in claim 1 does not of itself confine the invention to a particular field, it is clear that the invention is concerned with apparatus using a fan to supply the air and in that sense is different from non-fan generated air or gas flow apparatus.  The Australian and British Standards suggest some distinction in respiratory apparatus standards depending on the use for the apparatus.  However while the invention may thus be concerned with a different field of art compared to what some prior art raised in evidence relates, I am not convinced that these arts are necessarily so distinct as to have exclusive addressees.  It seems unlikely to me that someone primarily concerned with respiratory equipment for firefighters or spray painters for example would have no knowledge of other applications for respiratory equipment, such as for aircrew or underwater.  The applicant relies on submissions at the hearing to suggest different fields of art are involved but chose not to advance any evidence in that regard during the evidence stages of the opposition.  Thus in the absence of any contrary evidence I will consider the relevant addressee to have familiarity with a wide range of respiratory apparatus and their applications.

Construction of claim 1

In submissions an issue arose as to the meaning and scope of claim 1 given the use of the word "comprising" in integer a).  Mr O'Sullivan submitted that:

"Being a combination patent the word comprising in claim 1 should be understood to mean that the invention has the following integers and no others and the integer of importance is the integer identified as integer 1I"  (integer h) in my listing).

He added that integer h) should thus be interpreted to require the outlet valve to be maintained closed by air pressure from the pump unit alone.  Mr Old however did not agree with these submissions, suggesting that "comprising" must mean "including" or "having", not merely "consisting" otherwise dependant claims like claim 2 could not be present.  He said the present situation should be distinguished from that in General Clutch Corp v Sbriggs Pty Ltd (1997) 38 IPR 359 where the term "comprising" had to be construed as "consisting only of" in the circumstances of that case.

Given recent court decisions, it seems clear that the term "comprising" when used in claims must be given an interpretation appropriate to the overall context of its use.  I see no basis for interpreting "comprising" in claim 1 as limiting the apparatus claimed to only having those integers defined.  In the present context it means "including" or "having".  However that does not mean that particular features in the claim can be interpreted without regard to their definition.  I agree with Mr O'Sullivan that integer h) should be interpreted as he has indicated - thus it is the "air pressure of the pump unit" maintaining the outlet valve closed, not springs and not a combination of air pressure and springs.

Novelty

The test for novelty is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; 1A IPR 181. For this test one asks oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement. Infringement of a claim occurs where each and every one of the essential features of that claim has been taken (see eg Rodi & Wienenberger Ag v Henry Showell Ltd (1969) RPC 367 at 391).

The opponent's attack upon the specification on lack of novelty grounds centred on a number of documents which I will discuss in turn.

(a) Exhibits to Harral's declaration

Although these exhibits were not relied on for novelty purposes, they provide background to other aspects of the evidence and opposition grounds so I will discuss them here.  Several pages of a catalogue entitled "British Defence Equipment Catalogue for 1989" were exhibited as exhibit C to the Harral declaration.  On page 976 there is reference to a "NBC protective ventilator for aircrew suits" with a picture and brief description.  The picture shows a person wearing a ventilator, there being a face mask with two flexible hoses leading to the mask from a fitting at chest level, and with what appears to be a pump unit hanging from the person's waist with a flexible hose leading to the fitting at chest level.  The text wording refers to "the tactical ventilator (illustrated), which is used, in conjunction with the Mk 5 aircrew respirator, to provide filtered air to aircrew operating under nuclear, biological or chemical (NBC) attack."  ML Aviation Company Ltd appears to be the manufacturer of this product.

There is no document showing or describing a "Mk 5 aircrew respirator".  However Harral states that the face mask in the exhibit "can clearly be identified as a 'PQ' mask".  He refers to his exhibits A and B for an identification and understanding of the type "PQ" face mask.  Exhibit A is a copy of several pages from a brochure from Normalair Ltd describing some "P" type "Oxygen masks" for use in military aircraft.  Exhibit B is a copy of a single page leaflet from Normalair-Garrett Limited referring to "Oxygen masks type 'P' & 'Q'".  These exhibits have pictures showing respiratory face masks which appear similar.  The face mask in exhibit C has a similarity to those in the other exhibits.  The other declarants all state "I note that the photograph on page 976 of Exhibit 'C' shows a person wearing a P or Q style mask … ."  Thus I accept that it shows that particular type of mask.

In exhibit A the components of a P mask are shown.  In particular it shows an "inspiratory valve" with "rubber mushroom valve" member, and an "expiratory valve".  Declarants Nicholas, Waterton and O'Connor all state that the latter valve "operates in the same way as the compensated, non-return exhalation valve described above".  What each has described earlier with reference to respective exhibits is an expiratory valve wherein a piston and springs act on a valve plate normally holding the valve plate against its valve seat.  The piston is attached to a diaphragm.  A compensating tube supplies mask tube pressure from a pump unit or other source of pressurised supply to the side of the diaphragm remote from the valve plate to thereby force the piston towards the valve plate.  When compensating pressure drops, such as when the wearer inhales, the piston will move away from the valve plate but a compression spring still acts to hold the valve closed.  When the pressure within the mask exceeds the compensating pressure and spring load combined, such as when the wearer exhales, the valve plate lifts allowing the passage of exhaled gases.

I note that the declarants do not suggest the exhibits of Harral disclose the claimed invention.  Furthermore Mr Old made no submission to this effect.  It is indeed clear that they do not disclose the invention since the type of expiratory valve said to be part of the P or Q type mask does not equate with the "air outlet valve" of claim 1 as I have interpreted it.

(b) GB patent specification 2045090

Declarants Nicholas, Waterton and O'Connor each state that they believe this document "discloses all the features of Claim 1 of the opposed patent application."  They discuss this document in near identical terms.

GB 2045090 (exhibited in one instance as GRN-8) is said to relate to "the supply of respirable gas to respirators, particularly respirators for use by aircrew".  The specification refers to co-pending UK Patent Application No. 20135/76 which "describes such a respirator" and mentions that the respirator "does not itself form part of the present invention".  Although the specification briefly refers to elements of the respirator it is primarily concerned with other elements which together provide apparatus to supply air and gas to the respirator and permit suitable disconnection in emergency situations, such as when used with aircraft ejection seats.  In the embodiment described, filtered air is supplied to the respirator from a blower unit as directed by a controller unit in the aircraft cabin.  The specification describes and shows a respirator in the form of a hood enveloping the head of the wearer with visor and breathing mask.  The "expiratory outlet" of the mask is described as being "controlled by a non-return valve 17 compensated by inlet pressure and by a final non-return valve 18 lightly biased closed".  These features of the expiratory outlet are only shown diagrammatically in the drawings and there is no other detail of their construction.

Supplied in evidence as exhibit GRN-9 is GB patent specification 1587121 which is the patent that matured from UK application 20135/76.  Given the references to UK Patent Application No. 20135/76 in GB 2045090, I believe it is appropriate to treat GB 2045090 with GB 1587121 as a single source of information regarding the form of respirator.  In GB 1587121 the "expiratory gas valve assembly 20" of the respirator is described as comprising "two non-return valves in series with a gap there-between, the first valve being urged closed by a light spring and by breathing gas pressure supplied via tube 21."  The drawings do not show details of, and there is no further description of the non-return valves.  I have no reason to interpret the compensated "non-return valve 17" of GB 2045090 to be other than of the arrangement of the "first valve" in GB 1587121.  As this includes spring biasing to urge the valve closed, there is no disclosure of the "air outlet valve" of claim 1 as I have interpreted it.  Thus GB 2045090 does not deprive the claimed invention of novelty.

(c)  EP patent specification 0130707

Nicholas and O'Connor each refer to this document in similar terms.  This specification (exhibit GRN-10) discloses breathing apparatus in the form of a power-assisted respirator wherein filtered air is pumped to a face mask of a wearer.  An electrically powered pump is described.  The face mask has a one-way inlet valve to receive air from the pump and an outlet or exhale valve through which air leaves the mask.  The exhale valve described "is biased to its closed position, for example by a helical compression spring".  Both Nicholas and O'Connor acknowledge that this specification does not disclose the outlet valve as defined in claim 1 (integer h).  There is no suggestion that air pressure from the pump maintains the exhale valve closed during inhalation.  Thus EP 0130707 does not deprive the claimed invention of novelty.

(d)  EP patent specification 0352938

Nicholas and O'Connor also each refer to this document in similar terms.  The disclosure of this specification (exhibit GRN-12) is similar to the previous document disclosing breathing apparatus in the form of a power-assisted respirator wherein filtered air is pumped to a face mask of a wearer.  The air outlet from the face mask is via a "one-way exhalation valve 8".  No other details of this valve are given.  Both Nicholas and O'Connor acknowledge that this specification does not disclose the outlet valve as defined in claim 1 (integer h).  Thus EP 0352938 does not deprive the claimed invention of novelty.

(e)  EP patent specification 0094757

Nicholas refers to this document (exhibit GRN-11).  Its disclosure is very similar to that of EP 0130707.  Nicholas acknowledges that this specification does not disclose the outlet valve as defined in claim 1 (integer h).  It does not deprive the claimed invention of novelty.

No other documents placed in evidence were relied on to assert lack of novelty of the claimed invention.  Consequently I am satisfied that the claimed invention is novel.

Inventive step

It follows from subsections 7(2) and 7(3) of the Patents Act 1990 that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:

(a)the common general knowledge existing in the art before the priority date considered alone; or

(b)the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information from the document or act as relevant to work in the relevant art in the patent area.

Schedule 1 to the Act provides a definition of "prior art base".

Crucial to any determination of whether a claimed invention lacks an inventive step is the common general knowledge in the art in the patent area before the priority date.  As to what constitutes common general knowledge, in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457, the court, in distinguishing common general knowledge from public knowledge, said this at 482:

"... common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life."

Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253 remarked about common general knowledge in these terms at 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge."

Mr O'Sullivan submitted that all of the opponent's declarants did not qualify as addressees or skilled persons in the relevant trade.  In part he suggested they were not involved in the particular field of the invention, an issue I have already discussed.  In line with my earlier comments I consider that they all have had involvement in the art of respiratory apparatus and I see no reason to doubt that they would have familiarity with a wide range of respiratory apparatus and their applications.  Apart from Harral, the others have varying periods of experience in Australia.  Nicholas indicates around 39 years of experience with personal safety equipment, and in particular protective respiratory equipment.  His employment history summary indicates various manager roles in different companies dealing with safety equipment.  Mr O'Sullivan suggested Nicholas had no technical qualifications relevant in the art and given the manager positions was not a man with practical experience in the technology.  I note that Nicholas provides little detailed evidence of his level of knowledge in the art and precise activities in relation to respiratory equipment.  It certainly seems that he promoted and sold a range of products and through those activities acquired knowledge of the products.  What is not clear is his level of knowledge acquired and whether his activities placed him as a person skilled in the art before the priority date.  I am however prepared to accept that he may be skilled in the art and view his evidence as representing that of such a skilled person.

Waterton's experience prior to at least sometime in 1996 was not in Australia.  Although he was involved with respiratory systems of some form prior to this time, as this experience was not in Australia I have no basis to conclude that he was skilled in the art in Australia at the priority date (1 August 1994).  Thus although Waterton makes various statements about devices in use, or matters which "would have been" common general knowledge, in Australia before the priority date, I must disregard that evidence.  O'Connor, however, has some 16 years experience in Australia with safety equipment and is particularly familiar with the breathing apparatus used by aircrew.  Of all the declarants I believe he is best qualified as being a person skilled in the art at the priority date.

The comments by Nicholas and O'Connor on matters of common general knowledge are essentially identical.  Since the comment are stated in near identical terms, this raises some doubt in my mind as to whether these declarants' respective views are truly independent and derived from their own knowledge and experience.  There is thus a question of the weight I place on their evidence.  However as there is no evidence before me from the applicant raising doubts against or contradicting this evidence, I believe I must give due consideration to it.  Their evidence goes to the following matters.

i)  P and Q type oxygen masks and their exhalation valves (as in Harral's evidence)

I have discussed this material earlier in this decision, noting that the exhalation valve is urged to the closed position by compensated pressure and a compression spring.  After referring to these masks and exhalations valves therein Nicholas and O'Connor state:

"I believe that the existence and operation of compensated, non-return exhalation valves described above would have been common general knowledge to persons skilled in the art of protective breathing apparatus design, manufacture and maintenance in Australia before" the priority date (Nicholas para 15) or 1 August 1994 (O'Connor para 18).

ii)Inhalation-exhalation valve (as described in exhibits GRN-6 and BO-3)

Exhibit GRN-6 is stated to be page 2 of chapter 1 from a document entitled "Australian Air Publication AAP 7222.005-3M".  O'Connor states this document "was publicly available in Australia prior to 1 August 1994" but provides no evidence to this effect.  The page exhibited appears to relate to features of a "Pressure Demand Breathing Oxygen Mask Type MBU-5/P" and in paragraph 13 and figure 1-2 indicates operation of the combination inhalation-exhalation valve.  The figure indicates flows of inhaled and exhaled air through different apertures of one valve unit, but the precise nature of the valve's construction is not evident.  The description states in part:

"Oxygen enters the facepiece through the valve ….  Exhaled air passes out through the same valve. The valve is so constructed that an exhalation pressure of 1 mmHg greater that the pressure of oxygen than the pressure being supplied by the regulator will force open the Valve and allow exhaled air to pass to the atmosphere."  (sic)

O'Connor states that these combination inhalation-exhalation valves have been used in MBU-5P type oxygen masks which the RAAF has been using since at least June 1978.  Of this described valve Nicholas and O'Connor state:

"I believe that the existence and operation of combination inhalation/exhalation valves described above would have been common general knowledge to persons skilled in the art of protective breathing apparatus design/manufacture and maintenance in Australia before" the priority date (Nicholas para 18) or 1 August 1994 (O'Connor para 24).

iii)  Compensated non return exhalation valve (as described in exhibit GRN-5 and BO-1)

Exhibit GRN-5 is stated to be two paragraphs and two figures from a document entitled "Australian Air Publication AAP 7222.006-3M".  (I note that the O'Connor exhibit appears to include an additional sheet to a different AAP publication.)  The exhalation valve described and shown appears equivalent to that shown in the Harral evidence.  Of this described valve Nicholas states:

"I believe that the existence and operation of compensated, non-return exhalation valves described above would have been common general knowledge to persons skilled in the art of protective breathing apparatus design, manufacture and maintenance in Australia before the priority date."  (Nicholas para 11.)

It is of note that these statements relating to the valves i) to iii) do not say that the matters "were" common general knowledge but only "would have been".  If Nicholas and O'Connor are persons skilled in the art these statements lack the definitive pronouncements expected of such persons.  Thus the way the statements have been made creates some doubt in my mind whether the matters mentioned formed part of the common general knowledge.  However as the evidence indicates that the valves the subject of the statements have all been in existence for some time before the priority date, I believe that they can be considered to form part of the common general knowledge, and will proceed on that basis.

On the basis of the common general knowledge alone there is no basis to conclude that a skilled but non-inventive person in the art would have arrived at the claimed invention.  The claimed invention is a combination of a number of integers.  From the common general knowledge, which only concerns valves, all the integers of the combination would not be revealed let alone the combination claimed.

Lack of inventive step can also be considered given the common general knowledge and prior art information from a single document.  In this regard I believe that each of the patent specifications discussed under the novelty heading qualify for consideration, since they provide information on breathing apparatus which a skilled person could reasonably be expected to have ascertained, understood and regarded as relevant to work concerning such equipment.  I have already discussed these documents and noted that they do not disclose feature h) of the claimed invention.  I also consider that the documents GB 2258094 (exhibit GRN-13) and GB 2221164 (exhibit GRN-16) fall into this category for consideration.  I however note that GB 2221164 is a family member specification to EP 0352938 and need not be considered separately.  Feature h) requires "the air outlet valve being maintained in a closed position during inhalation through the air inlet valve by air pressure from the pump unit and being opened by exhaled air which also acts on the inlet valve to prevent the entry of exhaled air to the pump unit".

The prior art information, such as in EP 0130707, has an exhalation valve held closed by a compression spring during inhalation but which is able to open upon exhalation.  The inlet valve is closed upon exhalation.  A combination inhalation-exhalation valve having an outlet valve normally closed by supply pressure but openable under exhalation pressure was part of the common general knowledge (see ii) above).  I believe that before the priority date a skilled person in the art would have recognised that such a valve achieves the same functionality for inhalation and exhalation as the valving arrangement in the prior art information and as such it provided a technically equivalent valving arrangement.  The skilled person would thus readily arrive at the claimed invention without the need for any exercise of inventive ingenuity.  There is no suggestion in the opposed specification that the provision of the valving requirement of feature h), or the overall combination including feature h), involved overcoming any problem or difficulties.  Consequently before the priority date, given the prior art information discussed and the common general knowledge, I find that the invention claimed in claim 1 would have been obvious to a person skilled in the art.  This finding applies individually to the prior art information in EP 0130707, GB 2045090, EP 0094757, EP 0352938 and GB 2258094.

At this point I should mention US 5303701 (exhibit GRN-15) which is in evidence and is referred to in relation to some appended claims.  This specification discloses breathing apparatus in the form of an integral pump unit, control unit and mask.  Few details are given of the mask component since the specification concentrates on the control unit.  The introduction to the description indicates that the mask and breathing equipment is of a certain type and refers to
EP 164946.  It can thus be argued that, in view of this reference, it is appropriate to treat US 5303701 and EP 164946 as a single source of information and to refer to the EP 164946 specification to enable an understanding of the mask to which US 5303701 refers.  This reveals that it has an inner mask enclosing a wearer's mouth within an outer mask, with air being supplied to the inner mask via an inlet valve from a region of the outer mask, and having an outlet valve from the inner mask opening to externally of the outer mask, the outlet valve being normally spring biased closed.  In my view the nature of the mask and valves does not suggest that it would be practicable to utilise the combination inhalation-exhalation valve of the common general knowledge discussed in relation to claim 1 with this mask arrangement.  Thus while information in US 5303701 may qualify for inventive step considerations, I do not believe that claim 1 can be considered to lack an inventive step based on that information.

The opponent's statement of grounds and particulars generally alleges claims 1-20 lack an inventive step. Declarant Nicholas refers to claims other than claim 1 discussing the features introduced and referring to exhibits in his evidence where he submits such features are disclosed. Submissions for the opponent at the hearing did not elaborate on the basis by which claims other than claim 1 may be obvious. I thus need to consider these appended claims given Nicholas' comments bearing in mind that information from any mosaicing of prior art documents, other than in accordance with s.7(3) of the Patents Act 1990, is not permitted.

Claim 2 (appended to claim 1) requires the apparatus to include "means for maintaining and controlling the speed of the motor so that the fan rotates at a substantially constant speed during its operation."  Nicholas asserts that GB 2045090 discloses means for maintaining and controlling the speed of the fan (see page 3 from line 94).  To me it discloses a pump supplying air to a respirator at a pressure above, but at a "substantially constant" difference to, aircraft cabin pressure, but it also indicates that the supplied pressure varies with the pressure in the cabin and that the supply can even be stopped under certain conditions.  This does not correspond to the feature of claim 2.  Nicholas also refers to GB 2258094 (exhibit GRN-13) as disclosing a motor control system for a respirator to "supply a constant airflow".  It is my understanding that this specification describes a control where a substantially constant flow is achieved but it does not appear to require the fan to rotate at a constant speed during operation (see for example page 7 from line 31).  Nicholas says a similar disclosure can be found in GB 2228418 (said to be exhibited as GRN-14, but this exhibit shows GB 2221164 which is also exhibited at GRN-16).  I have viewed a copy of GB 2228418 and do not believe it discloses the fan operating at a constant speed.  None of the specifications of exhibits GRN-8 to 12 appear to disclose that the fan is to rotate at a constant speed during operation.  Thus I am not satisfied on the material before me that the invention of claim 2 lacks an inventive step.  Claim 3 is appended to claim 2 and bears a similar conclusion.

Claim 4 is appended to claim 1 and requires a valve controlling the flow of air through the pump unit and being arranged to close under certain conditions.  Nicholas makes no comment about this claim.  Given the material before me I have no basis to consider claim 4 other than to involve an inventive step.

Claim 5 is appended to claim 1 and requires the apparatus to have "actuable control means adapted to cause the apparatus to undergo a calibration phase such that the speed of rotation of the fan is set at a predetermined optimum base value relative to the operating conditions then prevailing in the apparatus".  Nicholas asserts that the subject matter of claims 5 and 6 (appended to claim 5) are essentially described in GB 2258094 (exhibit GRN-13).  This specification describes a control system for an electric motor driving a fan such as used for powered respirators.  It is clear that the system monitors certain operating conditions of the apparatus and can adjust the motor to accord with predetermined operating requirements.  This to me is exactly the function of the actuable control means of claim 5.  Consequently the invention of claim 5 lacks an inventive step given the information in GB 2258094 together with the common general knowledge.  As GB 2258094 discloses a processing means to monitor and control the speed of the motor, claim 6 also lacks an inventive step.  In my view EP 0352938 (exhibit GRN-12) also discloses control means having features that meet the requirements of both claims 5 and 6, and thus these claims also lack an inventive step given the information in this specification.

In my view claim 7 (appended to claim 6) also lacks an inventive step based on the GB 2258094 since it discloses that the user can program certain parameters into the system related to air flow.  The invention of claim 7 would thus be obvious to a skilled person in the art.

Claim 8 is appended to claim 6 and requires the processing means to include "means adapted to automatically read from the filter in the apparatus parameters relating to that filter".  Nicholas refers to US 5303701 (exhibit GRN-15) in this regard stating that it "discloses the coding of a filter".  That may be so but it does not disclose the arrangement that claim 8 defines.  I have discussed this document earlier and considered that it does not render claim 1 lacking in an inventive step, and the same conclusion applies to dependent claims.  Thus I am not satisfied on the material before me that the invention of claim 8 lacks an inventive step.

Claim 9 is appended to claim 6 and requires the processing means to include "a pressure sensor and/or a flow measurement apparatus adapted to measure the pressure of air and the flow of air through the apparatus ….".  GB 2258094 which I discussed for claim 6 does not disclose such means.  Nicholas refers to EP 0130707 (exhibit GRN-10) as disclosing the use of a pressure sensor to control a fan.  This is indeed the case with the control seemingly providing only an on or off state for the motor driving the pump/fan.  But this document does not appear to provide the features as required by claims 5 and 6.  Thus EP 0130707 does not render these claims nor claim 9 lacking in an inventive step.  Nicholas also refers to GB 2221164 (exhibit GRN-16) to which
EP 0352938 (exhibit GRN-12) corresponds.  This specification discloses a pressure sensor downstream of the filter to generate an electrical signal reflective of a particular pressure differential across the fan in that apparatus and the flow of air through the apparatus.  The control circuit responds to such signals to control the motor driving the fan so that a desired flow rate is maintained.  Thus in my view claim 9 lacks an inventive step based on the information in
EP 0352938 together with the common general knowledge.

EP 0352938 provides no information of an arrangement using an ultrasonic transmitter and receiver to indicate pressure changes detected by the pressure sensor.  Thus I am not satisfied that claim 10, which is appended to claim 9, lacks an inventive step given EP 0352938.  The same conclusion applies to claim 11 which is appended to claim 10.

Claim 12 is appended to claim 1 and requires the apparatus to include "performance monitoring means for some or all of the parts of the apparatus" and to provide a signal of the condition of the parts to the wearer at the face piece or mask.  Nicholas refers to US 5303701 (exhibit GRN-15) in relation to this claim.  As discussed earlier, this specification does not render claim 1 lacking in an inventive step.  Accordingly the same conclusion follows for claim 12.  However if my conclusion regarding this document and claim 1 be wrong, then in the light of the control and signalling arrangements disclosed in US 5303701, I would be of the view that the invention of claim 12, and claims 13 to 15 which are appended to claim 12, would lack an inventive step.

Furthermore regarding claims 12 to 16, none of the other documents in evidence give rise to a lack of inventive step of these claims.  For instance GB 2258094 (exhibit GRN-13) discloses the provision of alarm signals to alert the user if such parts as the battery or air filter are not operating as desired.  There is however no suggestion to provide these signals at the user's mask.  In the case of the information in specifications GB 2045090, EP 0130707, EP 0094757 and EP 0352938 considered in relation to claim 1, none of these disclose any signalling means as claimed in claim 12.

Claim 17, appended to claim 1, specifies that the apparatus is adapted to deliver at least 150 litres of air per minute to a wearer.  Nicholas draws attention to the Australian Standard AS 1716-1984 which specifies for a Powered Particulate Respirator that the blower unit supply filtered air to the breathing zone of the wearer at a minimum rate of 120 litres per minute for hood or helmet respirators.  Appendix G of the standard refers to a testing condition requiring a "Continuous flow into test plastics bag: 250 L/min".  Thus the claimed supply parameter represents nothing more than that specified under the relevant standards available to those skilled in the art seeking to develop such equipment.  The claim identifies no particular form of the features of the apparatus to achieve the stated parameters.  As such the claim is not seen as involving an inventive step.  I also note that specification EP 0094757 (exhibit GRN-11) discloses a maximum pump delivery "of about 200 litres per minute" for the apparatus and thus claim 17 also lacks an inventive step in the light of the information in EP 0094757.

Claim 18, appended to claim 1, specifies that the apparatus is adapted to supply air to the inlet valve of the mask at a pressure of between zero and 10mBar, preferably no more than 6m Bar, above ambient reference pressure.  Nicholas again refers to the Australian Standard and the functioning pressure demand of the "demand valves" of masks.  In this regard paragraph 10.3.3.1, rather than 10.3.2.1 as indicated by Nicholas seems relevant.  That paragraph indicates "the pressure in the face-piece relative to the ambient pressure outside the face-piece shall be between zero and 60 mmH₂O (587 Pa)".  Thus the claimed supply parameter represents nothing more than that specified under the relevant standards available to those skilled in the art seeking to develop such equipment.  The claim identifies no particular form of the features of the apparatus to achieve the stated parameters.  As such the claim is not seen as involving an inventive step.  The invention of claim 18 is thus obvious.

Claim 19, appended to claim 1, specifies that the filter is positioned between the pump unit and the mask.  EP 0352938 (exhibit GRN-12), which was considered with regard to claim 1, discloses in one embodiment the filter positioned as required by claim 19.  Accordingly claim 19 lacks an inventive step given the information in EP 0352938 and the common general knowledge.

Claim 20, appended to claim 19, requires a valve controlling the flow of air through the pump unit which is arranged to close when the pressure in the apparatus between the filter and mask rises to a predetermined level.  Specification EP 0352938 does not disclose such a valve.  On the evidence before me I am not satisfied that claim 20 lacks an inventive step.

In summary I find that the invention defined by claims 1, 5 to 7, 9, 17 to 19 lack an inventive step.

Manner of manufacture

Although the statement of grounds and particulars allege lack of patentable invention under s.18(1)(a) of the Patents Act 1990, no submissions in support were raised by the opponent on this ground. I have no basis on which to conclude adversely against the application on this ground and dismiss this ground of opposition.

Costs

The usual practice is that costs should follow the event.  As the opponent has been successful in establishing the opposition ground of lack of invention step against many of the claims, I see no reason to depart from the usual practice on costs in this case.  Accordingly I award costs against the patent applicant Safety Equipment Sweden AB.

CONCLUSION

I have found that the invention is not fully described with respect to the "calibration phase" and "performance monitoring means", these features being the subject of claims 5 and 12 respectively.

I have found the claimed invention to be novel.  However I have also found that the invention defined by claims 1, 5 to 7, 9, 17 to 19 lacks an inventive step.

I have awarded costs against the patent applicant Safety Equipment Sweden AB.

As I consider that there is patentable subject matter in the application, I afford the applicant an opportunity to propose amendments to the application to overcome the grounds of opposition found to apply.  The applicant has a period of two months from the date of this decision to request amendment of the specification in this regard.  If an amendment request is not filed within that period, and in the absence of any appeal from this decision, I will direct that the application be refused.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : F B Rice & Co, Sydney

Patent attorneys for the opponent   : Hodgkinson Old McInnes, Sydney