Secton Pty Ltd v Newman Tonks Pty Ltd

[1989] APO 22

In the Matter of the Patents Act 1952

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In the Matter of Application No. 537963 for a Patent by SECTON PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by NEWMAN‑TONKS PTY. LTD.

DECISION OF AN ACTING ASSISTANT COMMISSIONER OF PATENTS:
Background
         Patent application 537963 for an invention entitled "Transom member for sliding doors" was lodged by SECTON PTY. LTD. (SECTON) on 2 December 1981.  The application is a section 51 divisional of provisional application PF0592 (1981) lodged 4 September 1981.  Acceptance of the application was advertised on 19 July 1984, and on 19 October following, NEWMAN‑TONKS PTY. LTD. (N‑T) lodged notice of opposition under section 59.
         The matter came to hearing in Melbourne on 16 February 1989.  Mr. Keith Leslie and Davies and Collison appeared for SECTON, and Mr. Keith Callinan of Callinans appeared for N‑T.
         The grounds listed on the notice of opposition are those specified in paragraphs (c) to (i) of sub‑section 59(1) of the Act.
The Specification
         The invention as stated in the title 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.  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, back to a sensor, also located in the transom member.
         The specification ends with four claims; claims 2, 3, and 4 are appended to claim 1, and add details of the transom member construction.
         Claim 1 is as follows:

1.A transom member for a sliding door having an elongate support member which supports a carriage for movement lengthwise of the transom member, such that a door panel when attached to the carriage is movable lengthwise of the transom member, means effecting movement of the carriage under control of sensing means including a generator for generating radiation and directing the radiation outwardly from the transom member and a detector sensitive to detected radiation from said generator reflected back to said detector from a person approaching towards the transom member, whereby in use the carriage and attached door panel are moved along the support member in response to such approach; said detector and said generator being positioned within the transom member behind a cover member through which said radiation passes outwardly from said generator and inwardly to said detector for detection thereof by said detector; said cover member being supported from said support member.

A perceived problem relating to vandalism which the invention purports to overcome is referred to in the last paragraph of the specification on page 10.  By having the radiation generator and sensor within the transom member and providing it with an opaque cover, the precise position of the generator/sensor cannot be ascertained; thereby it is less likely that vandals will be able to cause damage to the sensing devices.
The Evidence in Support
         The evidence presented in support of the opposition consists of four declarations:
(a)  Declaration by Mr. Michael Wood
         Mr. Wood has worked in the art since 1973 and gives a history of the art which has not been contested by SECTON.  He explains that automatic sliding doors controlled by switch means under floor mats were marketed about 1969, and that microwave controllers were introduced about 1975, replacing the use of the floor mat devices.  The controllers were mounted outside the door and were often vandalised.  As a result, owners requested suppliers that the controllers should be concealed.  Silverwood and Beck, for whom Mr. Wood worked, developed a concealed sensor arrangement whereby the microwave unit was located in the roof or verandah in front of the door (the date is not recorded).  Clearly the problem was perceived, but a different solution tried.  The only knowledge Mr. Wood had of a sensor concealed in the door operating mechanism (presumably within a transom or similar member) was in Sydney in about 1983, after the priority date of the current application.  He mentions use with revolving doors before 1981 but could give no corroborating details.
         This declaration gives useful background but is of little assistance in proving the opponent's case.
(b)  Declaration by Mr. Ian McConnachie
         Mr. McConnachie has worked in the art since 1976 and he substantially confirms the contents of Mr. Wood's declaration.  He adds that the request to conceal the sensors was made in the late 1970's and that attempts to conceal the sensors in or near the operating mechanism were not successful.  The sensors were then located in the roof or verandah as specified by Mr. Wood.
         Again, whilst this declaration supplies useful background material, it is of little assistance in proving the opponent's case.
(c)  Declaration by Mr. Keith Callinan
         The attorney representing N‑T was informed by a director of N‑T that COMALCO had installed automatic doors in its Melbourne building.  The doors were fitted with a concealed sonar sensor device and predated the applicant's invention.  Attached as Exhibit KWC1 is a copy of the plan entitled "Ceiling and sonic sensor details".
(d)  Declaration by Mr. Laslo Sabo
         Mr. Sabo has worked in the art for four years and is works manager of N‑T.  He refers to the prior art as mentioned in the declarations of Messrs. Wood and McConnachie but he himself had no direct involvement until subsequent to the priority date of the applicant's invention, whereafter he worked on the development of a concealed sensor.  Referring to the plan, Exhibit KWC1, he notes that the sonic sensor was behind a perspex cover, which confirms the remarks of Mr. Callinan concluding that the sensors were hidden in the door pelmet.
Evidence in Answer
     Declaration by Mr. Noel Carroll
         Mr. Carrol is the inventor of the invention the subject of the present application.  He is a director of SECTON.  His remarks about the declarations of Messrs. Wood and McConnachie do not require consideration here as I have already stated that these declarations are of use only as background material.  He comments also on the COMALCO building doors.  He agrees that the plan shows a sonic sensor and a perspex screen but sees a lack of clarity in the arrangement of the screen.  He draws attention to the attachment of the pelmet assembly to the building which is shown to be separate from the door gear; he also points out that Section 1 of the plan shows the pelmet to be attached to the base of the precast panel and the door gear to be attached to the back of the panel at a point above the section.  In other words, the plan does not show the construction claimed in the application under opposition.
Decision
         The question of obviousness was not discussed in detail by the opponent's attorney who appeared to rely on the statements made by Messrs. Wood, McConnachie and Sabo.  Only Messrs. Wood and McConnachie were working in the art before the priority date of the application.  Their evidence shows that attempts were made to overcome vandalisation of the sensors by fitting the sensors in the verandah ceiling or fittings.  There is no evidence of attempts to fit the sensors in the transom or pelmet until after the priority date.  Mr. Wood's declaration suggests a reason for this; that is, when the radar devices were first developed they were too large to fit into a transom.  However there is no clear statement of the position as it was before the priority date of the application.  Clearly there was a need for a better solution and the applicant achieved this in 1981.
         Concerning this, Mr. Sabo comments in paragraph 11 of his declaration as follows:

"I have read the specification of the opposed application.  I believe there is an invention described in that specification.  I believe the invention relates to the provision of the further componentary to enable the easy mounting of the detector behind the pelmet.  I believe the invention as claimed is not proper as all they have done is place a known radar or infra red detector behind the pelmet in a known manner for a known purpose and in a known way.  The provision of the opening is essential and would be readily known to those having any knowledge of radar ‑ such as those involved in the automatic door industry.  To close that opening with an insert of plastics is again well‑known to those in the trade".

Whilst I am pleased to see that one of the opponent's witnesses believes the specification in suit to describe an invention, I find myself in disagreement with the rest of his conclusions.  Firstly, there is insufficient hard evidence on file to clearly establish the state of the common knowledge in the art before the priority date of the claim.  Secondly, there is contradiction even to this, in the applicant's declaration.  Finally, it may be that as the vandalism problem was known, once the sensor components were reduced in size as a result of technological advances, it would have been obvious to locate the sensor in the manner presently claimed; however it is an established tenet in patent law that the opponent in an opposition action must prove its case ‑ and on the basis of the evidence before me, it is far from clear that a person skilled in the art could have ‑ without invention ‑ arrived at the construction presently claimed.  Having regard to the nature of that evidence, I would consider it highly improper to make any other conclusion.
         On the question of novelty, I dismiss entirely any assertions of prior use: the only relevant evidence here is the document constituted by the plan, exhibit KWC1.  On the basis of Mr. Callinan's evidence, I would conclude that on the balance of probability, the plan was published earlier than the priority date of the application in suit.  Because of my following determination, I do not find it necessary to present my reasons for making that conclusion.  I have set out earlier (in brief) some of Mr. Carrol's comments about the plan.  I find myself in total agreement with his viewpoint, and I find that the plan simply does not disclose an automatic sliding door construction in which the sensor mechanism is within the transom member, as defined in claim 1 of the application.
         On the question of section 40, Mr. Callinan made a number of assertions about perceived deficiencies in the specification.  There is only one such assertion with which I am in agreement.  I have pointed out earlier in this decision that the problem of vandalism of (visible) sensor mechanisms was known, and that various solutions had been proposed.  Thus, 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.
Conclusion
         I have found that the opposition fails in all of its aspects apart from the one relatively simple point under section 40 referred to above.  On this basis I allow the applicant 60 days from the date of this decision to propose suitable amendments.  On the matter of costs, I have stated above that the evidence of the opponent was generally not of much assistance.  However, the opposition has caused the section 40 defect to be drawn to my attention, and this serves the public interest.  Consequently, I determine that there shall be no award of costs favourable or unfavourable to the opponent, and each party shall bear its own costs.

(J.L. ROVETA)

Attorneys for the Applicant:   Davies & Collison

Attorneys for the Opponent:    Callinans

AOJP ENTRY

DECISION OF THE COMMISSIONER OF PATENTS

Application           No 537963 ‑ Secton Pty. Ltd.

ActionS. 59 opposition by Newman‑Tonks Pty. Ltd.

SubjectConcealed sensor mechanism in transom for automatic sliding door

DecisionIssued                ; grounds of lack novelty by reason of prior use and prior documentation dismissed for lack of evidence; ground of obviousness dismissed on basis of inadequate information or common knowledge; S. 40 defect ‑ opportunity to amend given.

Davies and Collison

Sir,Patent Application 537963 in the name of Secton Pty. Ltd. and Opposition thereto by Newman ‑ Tonks Pty. Ltd.

Herewith the decision of the Acting Assistant Commissioner of Patents in the above matter.

Yours Faithfully

Callinans

Sir,Patent Application 537963 in the name of Secton Pty. Ltd. and Opposition thereto by Newman ‑ Tonks Pty. Ltd.

Herewith the decision of the Acting Assistant Commissioner of Patents in the above matter.

Yours Faithfully

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