Secton Pty Ltd v Newman-Tonks Pty Ltd

[1991] APO 15

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 537963 in the Name of SECTON PTY. LTD. and Opposition thereto by NEWMAN-TONKS PTY. LTD.

Background
          On 30 August 1989 I issued a decision in this matter finding that the opposition succeeded on the ground of s.40, and allowing the applicant 60 days from that date to propose suitable amendments.
          Secton did propose amendments which the Office allowed (unopposed) on 23 January 1991.
          In accordance with Office practice, Newman-Tonks were invited to be heard in relation to the application as amended, but declined the invitation.
          I have now to decide whether the amended application complies with the terms of my decision of 30 August 1989.
Decision
          The invention relates to transom members for sliding doors.  The track and carriage carrying the door is conventional and is supported by the transom which is fastened to the building in which the door is installed.  The door is arranged to open and close automatically by means of an operating mechanism initiated by the approach of a person causing the reflection of radiation (coming from a generator within the transom member) to a sensor, also located within the transom member.  A perceived problem relates to vandalism of the generator and sensor mechanisms.  The invention purports to avoid this problem by having the radiation generator and sensor within the transom member and providing an opaque cover construction, whereby the precise position of the generator/sensor

cannot be ascertained (readily) and therefor the structure is less likely to be damaged.
          In my earlier decision I commented that:

"whilst the present specification does not set out "objects of the invention", it would be clear to a skilled reader that the purpose of the invention was to minimise potential vandalisation of the sensor mechanism.  This conclusion would be strengthened upon reading of the last paragraph on page 10, to which I have referred earlier in this decision.  It is clear that the specification achieves this purpose by placing the sensor mechanism within the transom member, and providing it with a visually opaque cover member.  Unfortunately the claims omit the limitation that the cover member should be visually opaque, and are therefore not fairly based."

The amendments substituted a new claim 1 which includes the feature:

"Said detector and said generator being positioned within the transom member behind a visually opaque cover member through which said radiation passes outwardly from said generator and inwardly to said detector ..."

In my view, this amendment removes the defect which I had found in the claims as accepted.  Consequently, I direct that the application shall proceed to sealing, subject to any appeal which may be lodged.

(J.L. ROVETA)
  Assistant Commissioner of Patents