Stewart Kenneth McKay v Shirlow Pty Limited

[1985] APO 32

In the Matter of the Patents Act 1952 and - In the Matter of Application No. 535635 in the Name of STEWART KENNETH McKAY for the Grant of Letters Patent - and In the Matter of Opposition thereto by SHIRLOW PTY. LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application 535635 is for a standard patent and is based on provisional specification PF3156 lodged 16 March, 1982. The-complete specification was lodged 8 February, 1983 and was advertised accepted in the Official Journal of 29 March, 1984. Shirlow Pty. Limited lodged notice of opposition under section 59 on 28 June, 1984. The grounds specified were as set out in sub-section 59(e) to 59(i) of the Act. Locus was claimed on the basis of a statement that:

"We manufacture and market plastics articles using a process similar to that covered by Patent Application 535,635 (11250/83)."

The service of the evidence-in-support of the opposition was completed on 10 May, 1984, and on 24 June, 1985 the applicant lodged a notice under regulation 57A that he did not intend to file any evidence-in-answer : he also requested a hearing and paid a hearing fee at that time. With the agreement of the opponent, the matter was set down for the September 1985 hearing sessions in Brisbane.

At the hearing, the applicant was represented by Mr. R.T. Kelly, Patent Attorney of G.R. Cullen & Co., Brisbane, and the opponent was represented by Mr. J.G. Adams, Patent Attorney, of Grant Adams & Company, Brisbane.

At the hearing neither the priority date of the claims (16 March, 1982, PF3156) nor the locus of the opponent was disputed.

At the hearing, Mr. Kelly handed me a copy of two paragraphs of description comprising part of page 3 of the complete specification. He stated that these paragraphs were inadvertently omitted by amendment to the specification when it was under examination and that he intended lodging a voluntary amendment shortly to incorporate these paragraphs into the complete specification.

Subsequent to the hearing, I received a telex message from Mr. Kelly advising me that he was lodging the voluntary amendment referred to the above. The telex also contained a submission that: "in regard to evidence regarding prior publication or user in opposition matters that the same standards should be applicable that are relevant under s.166(2) of the Act". Section 166(2) of the Act relates to certain requirements of the particulars of objections pertaining to previous publication or user in revocation proceedings and is not applicable, in my opinion, to s.59 opposition matters.

The Specification

In the form in which it was accepted, the specification is entitled "Pipe Shaping Process and Apparatus for Use in Process".

The description commences:

"THIS INVENTION relates to a process for shaping a pipe member formed from plastics material.

Hitherto bending or shaping of pipe and in particular bending of pipe formed from plastics material such as polyvinyl chloride (PVC) has not been entirely successful in carrying out the bending process without kinks or other deformations occurring in the tube. Often opposed parts of the continuous side wall of the tube (which was of circular cross section) were flattened and the bent portions of the tube usually did not have a uniform cross section. Usually such deformities were unwelcome in furniture formed from the bent tube as they detracted from the appearance and aesthetic appeal of such furniture.

It is therefore an object of the invention to provide a pipe shaping process which alleviates the above-mentioned difficulties associated with the prior art."

A consistory statement in terms identical to those of claim 1 follows.

There are references to some preferred features and the description continues:

"The purpose of the end caps of "wet ends" is to keep the ends of the pipe member cool and thus inhibit thermal stress relief in the region of the pipe member accompanied by diametrical shrinkage during the heating process. This is a desirable feature in that when the shaped pipe member is being fitted with preformed standard elbow joints, T-joints or other suitable joint members for use in the manufacture of furniture for example there would be relatively sloppy or loose fit if the ends of the pipe member were reduced in diameter after the heating step.

The heating means used for the heating step may be of any suitable type and suitably incorporates a heating oven which is preferably fully insulated. The oven may be of any suitable size and in one form may measure approximately lm diameter x 3m long using three standard infra red strip heaters. Thus the heating ovens are suitably tubular or of round cross section."

The description highlights other aspects of the invention in the following terms:

"The pipe members with end caps attached are placed in the oven and heated until the pipe members are pliable. A suit- able temperature is between 340 and 450OF and more preferably the temperature is between 370 and 4200F. It will be noted that the flexible inserts are also suitably heated to a similar range of temperatures before being placed within an associated pipe member. This enables the pipe members while being heated externally by the oven to be also heated internally by the flexible inserts."

and

"Suitably pipe members which are shaped in the process of the invention are suitably (sic) such as to have an ability to be bent wherein the internal radius of the bend portion (i.e. the radius of the inside bend) of the pipe member is at least equal to the diameter of the tube without the pipe member cracking or being deformed."

The preferred embodiment is described with respect to six figures of drawings relating to the process of the invention, and apparatus for performing it. While the complete specification as lodged included claims directed to apparatus, as accepted, it includes only process claims. Claim 1 reads:

"1. A process for shaping a pipe member formed from plastics material including the steps of:

(i) heating a flexible insert to a temperature in the region of the softening point of the pipe member;

(ii) inserting said flexible insert into an internal bore of said pipe member;

(iii) applying to each free end of the pipe member means to maintain dimensional stability during a subsequent heating process.

(iv) heating the resulting assembly to a temperature in the region of the softening point of the pipe member rendering said pipe member deformable; and

(v) arranging said softened assembly in a shaping device to shape the pipe member to a predetermined shape.

Evidence-in-Support

The evidence in support comprises four declarations. The first two are by James Grant Adams accompanied by five exhibits in total. The second declaration is supplementary to the first and is directed towards rectifying a defect appearing in an exhibit to his first declaration. Mr. Adams' declarations and exhibits are noteworthy for producing a copy of German Patent Specification No. 2458978 to Robintech Incorporated together with a certified translation thereof. He compares the disclosures of the German document to the claims of the opposed application making certain conclusions as to lack of novelty and obviousness.

The remaining declarations are in the names of Joseph Pino Filipovich and Wilbert Douglas Archibald respectively. These declarations are almost identical in substance. It seems that Messrs. Filipovich and Archibald are directors of the opponent Shirlow Pty. Limited, a firm trading as Polypipe Furniture (PPF).

According to the declarations, PPF commenced manufacturing furniture from polyvinyl chloride tubing in September 1981. Up to January 1982 the furniture was assembled using conventional plumbing T-pieces and elbows; in January 1982, PPF approached a Mr. Jenkins, then proprietor of M.E. Christensen & Co. Pty. Ltd. Plastic Fabricators (Buranda, Queensland), to arrange for him to bend the PVC tubing to the required shapes: at this stage Messrs. Filipovich and Archibald were advised by Mr. Jenkins that he had been bending plastic pipes and tubing by his current methods "for about 30 years", and that he had previously supplied bent tubing of PVC to the applicant, Stewart Kenneth McKay. The declarations continued that both directors of PPF visited the premises of M.E. Christensen & Co. Pty. Ltd. a number of times between January 1982 and 16 March, 1982 and that Mr. Jenkins "readily described and showed us his technique for bending the PVC tubing". The declarations then set out the steps included in the Jenkins' process in the terms set out hereunder:

"(a) a length of solid cylindrical rubber was heated to soften it to make it easier to bend and was placed within the internal bore of the length of PVC tubing to be bent;

(b) rag or similar material was pressed into the ends of the PVC tubing to prevent the ends from deforming while the PVC tubing was heated;

(c) the resultant assembly was placed in an oven and heated to a temperature at which the PVC tubing could be easily bent or deformed, this temperature being above the softening point of the PVC material;

(d) the heated (and softened assembly) was placed within a jig or template to shape the PVC to the desired shape; and

(e) the PVC tubing was allowed to cool to retain the desired shape.

When the PVC tubing was cool, the length of rubber and the rag material was removed.

The length of rubber was used as a mandrel to prevent the formation of ripples and creases on the inner side of the curves or deformations of the PVC when the PVC pipe was being shaped to fit into the jig or template and the rag maintained the ends of the PVC tubing circular to ensure that the tubing would interfit with other tubing components."

In summary, the opponent's case rests on prior publication in a document (German Patent Specification 2458978), and prior use (the Jenkins' process). There is no evidence to support Mr. Adams' depositions concerning obviousness, as there is no evidence from any relevant persons about the state of common general knowledge in Australia prior to 16 March, 1982.

At the hearing, Mr. Kelly objected to several sections of the evidence-in-support. Firstly, he objected to the declarations by Messrs. Filipovich and Archibald as being hearsay, and therefore inadmissible - in support of this objection he referred me to Cross on Evidence, Chapter 17 at page 463. Secondly he pointed out that Mr. Adams was not a man skilled in the relevant art, and therefore his conclusions on obviousness were not valid; also he said, it was the prerogative of the Hearing Officer to determine matters of novelty and obviousness, and therefore I should not admit the particular portions of Mr. Adams' declarations concerned.

I referred Mr. Kelly to the judgement of the Court of Appeal in T.A. Miller v. the Minister of Housing and Local Government (1969) RPC 91,concerning the admissability of hearsay evidence. Clearly, hearsay evidence is admissable before a tribunal such as this, however, as pointed out by the Court of Appeal that type of evidence will be weighted accordingly. As to Mr. Kelly's second objection, Mr. Adams conceded the correctness of the view that novelty and obviousness were matters to be determined by myself, and he withdrew the statements relating thereto.

Prior Publication

German Patent Specification 2458978 was available to the public at the Patent Office Library, Canberra on 14 October, 1975. According to the submissions node by Mr. Kelly at the hearing, it does not disclose features (i), (iii) and (iv) as set out in claim 1 of the McKay specification, and further, actually leads a reader away from feature (i).

Upon reading the German patent specification, I did not find any disclosures of the features (i), (iii) and (iv) as set out in claim 1 and accordingly, I find that claim 1 and its appendant claims are not anticipated by that specification.

Prior Use

Mr. Adams submitted that, as Mr. Jenkins had been bending PVC tubing using the process of claim 1 for "about 30 years", then it was clear that claim 1 is published by use. The only evidence before me to establish the ground of prior use, comprises the declarations of Joseph Pino Filipovich and Wilbert Douglas Archibald. In clauses 7 and 8 of each declaration, the declarants depose that, together, they visited the premises of M.E. Christensen Pty. Ltd. a number of times from January 1982 where Mr. Jenkins readily described and showed them his technique for bending PVC tubing. They further depose that the method disclosed to them by Mr. Jenkins included the steps (a) to (e) as set out under the heading of Evidence-in-Support in this decision.

Whilst these steps are closely similar to the steps defined in claim 1, there are two important differences. Firstly, step (i) of claim 1 requires the flexible insert to be heated to a temperature in the region of the softening point of the pipe member whereas step (a) of the Jenkins' process requires the length of solid rubber to be heated to a temperature sufficient to soften the rubber insert to make it easier to bend; it is not evident that the latter temperature is in the region of that required to soften the pipe member. Secondly, it is apparent, from their declarations, that Messrs Filipovich and Archibald do not have quantitative knowledge of the temperatures used by Mr. Jenkins during the demonstrations of his process to them, or, in fact, at any other times during operation of his process.

In the absence of corroboration by Mr. Jenkins, I am of the opinion that the evidence in the declarations of Messrs Filipovich and Archibald is largely hearsay and must be weighted accordingly.

The question of the degree to which an opponent has an onus to establish a ground of opposition was considered in Montecatini Edison SpA v. Eastman Kodak Co. (1971) 45 ALJR 593 at 595. On this question Gibbs J. said:

"I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I were satisfied that the appellant's case had been clearly made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted: see Commissioner of Patents v. Microcell Ltd. (1959) 102 CLR 232 at 236, 244-5."

In the present situation I am satisfied that the opponent has not discharged the onus laid upon it, and the evidence before me is insufficient to establish the ground of prior use.

Conclusion

The opponent has not succeeded on any of the grounds relied upon, accordingly I dismiss the opposition and subject to lodgment of any appeal, I shall direct that the application proceed to sealing. I award costs against the opponent.

(J L Roveta)Supervising Examiner of Patents

7 NOV 1985