Taylex Industries Pty Ltd v Aranooc Pty Ltd - [2019] APO 38

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Taylex Industries Pty Ltd v Aranooc Pty Ltd [2019] APO 38

Patent Application: 2010286347

Title:Liquid Reservoir Connection System

Patent Applicant:                   Aranooc Pty Ltd
Opponent:  Taylex Industries Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  13 August 2019
Hearing Date:  Written submissions completed on 11 July 2019

Catchwords: PATENTS – section 59 – final determination – whether amendments overcome defects identified in previous decision – amendments do not overcome deficiencies – further opportunity to amend allowed.

Representation: Patent attorney for the applicant: Pini IP
Patent attorney for the opponent: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010286347

Title:Liquid Reservoir Connection System

Patent Applicant: Aranooc Pty Ltd
Date of Decision: 13 August 2019
DECISION
The amendments do not overcome the deficiencies identified in the previous decision.
The applicant is allowed one (1) month from the date of this decision to propose further amendments to overcome this finding.
REASONS FOR DECISION
BACKGROUND

This is a final determination matter from the decision, Taylex Industries Pty Ltd v Aranooc Pty Ltd, [2018] APO 48 (“the previous decision”). In that decision, I found that claims 1-9 did not have an inventive step. As a consequence, I allowed the applicant an opportunity to propose suitable amendments to overcome this finding.
The applicant filed a request to amend under section 104 on 27 September 2018. That amendment was allowed on 7 May 2019, unopposed. Prior to final determination, the applicant requested to be heard. The hearing was conducted by way of written submissions. The opponent did not file any submissions. The applicant filed its submissions on 11 July 2019.
APPLICABLE LAW
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd (“R v Smith”), [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision.
THE AMENDMENTS
Under section 104, the applicant proposed amendments to claims 1 and 8 of the specification. The applicant also proposed substantially equivalent amendments to the consistory clauses in the descriptive part of the specification. Claims 1 and 8, with the amendments as indicated, are recited below.
1.A connection system adapted to equalise the flow of liquid between a liquid reservoir and its exterior, the system comprising:
at least one port located within a wall of the liquid reservoir for providing a connection between the interior and exterior of the reservoir;
a conduit for enabling the passage of liquid via the at least one port;
a sealing means operatively connected to the at least one port for providing a liquid tight seal to an exterior surface of the conduit so that liquid flow is restricted to an internal passage of the conduit;
a barrier between the conduit and the wall of the liquid reservoir in the form of a moulding of resilient material which accommodates the sealing means and comprises at least one flange adapted to engage with and extend across the internal walls of the at least one port;
wherein the sealing means is symmetric in cross section and adapted to retain the liquid tight seal under longitudinal movement of the conduit with respect thereto and, in combination, the at least one port, the barrier and the sealing means form an arrangement when installed and in use in the liquid reservoir for accommodating pivotal and longitudinal movement of the conduit in more than one direction with respect thereto so as to restrict contact between the conduit and the wall of the liquid reservoir and maintain the liquid tight seal.
8. A system for an outdoor structure, the system comprising:
at least one liquid reservoir tank adapted to function as one or a combination of a retaining wall, a partition and a supporting structure, the at least one liquid reservoir tank in operative connection with a subsidiary apparatus;
the subsidiary apparatus comprising one of a garden bed, a water feature, a pool or a spa and said subsidiary apparatus adapted to receive liquid from the at least one liquid reservoir tank;
~~a fluid connector intermediate~~ the at least one liquid reservoir tank comprising a fluid connector adapted to equalise the flow of liquid between the liquid reservoir tank and ~~the subsidiary apparatus~~ another structure comprising another liquid reservoir tank, the connector comprising:
one or more resilient seals seated at the periphery of a port in the at least one liquid reservoir tank, and
a conduit which is adapted to be encircled and sealingly engaged by the one or more seals to form a liquid tight seal around the conduit and wherein the ~~conduit can move relative~~ one or more seals are symmetric in cross section and, when in use with the liquid reservoir tank, are adapted to ~~the port either pivotally or longitudinally such that~~ retain the liquid tight seal ~~is maintained through~~ under longitudinal movement of the conduit with respect thereto and, in combination, the at least one port and the one or more seals form an arrangement, when installed and in use in the liquid reservoir tank, for accommodating pivotal and longitudinal movement of the conduit in ~~at least a longitudinal~~ more than one direction ~~into or out of the port~~ with respect thereto so as to maintain the liquid tight seal.
On the face of the above recitation of claims 1 and 8, there are two substantive changes with the amendments as follows.
(1)The sealing means is further defined to be symmetric in cross section and adapted to retain the liquid tight seal under longitudinal movement of the conduit with respect thereto; and
(2)the claimed arrangement, when installed and in use in the liquid reservoir, is for accommodating pivotal and longitudinal movement of the conduit. (my emphasis)
It may thus be noted that the above amendments more clearly define the sealing means, on the one hand, being adapted to retain the liquid tight seal under longitudinal movement of the conduit while, on the other hand, at least the one port and the sealing means in combination form an arrangement for accommodating both pivotal and longitudinal movement of the conduit and maintaining the liquid tight seal.
NEW EVIDENCE
Together with its submissions for the final determination, the applicant filed evidence from an expert in the present field, Mr Jorge Rodriguez. The relevant expertise of Mr Rodriguez, at the relevant time, related to work involving the casting of concrete reservoirs such as troughs, pits, storm-water tanks and septic tanks, and pre-cast concrete products. He was also involved in extensive sealing development and application.
The filing of evidence at this late stage is unusual. The evidentiary period is closed and a substantive decision has issued. Nonetheless, there are some provisions for dealing with information brought to the attention of the Commissioner. One way is through re-examination under section 97 which is available before or after grant. Another way is through regulation 5.23 which can only operate while an opposition is proceeding. Although not specifically requested by the applicant in the present case, the latter approach would appear to be the preference of the applicant in having filed Mr Rodriguez’s evidence. Moreover, in Merial Limited v Bayer Intellectual Property GmbH (“Merial”), [2015] APO 16, the delegate stated of the two approaches, at [22], that it is in the public interest for highly significant information to be considered within an existing opposition and not wait for re-examination after the opposition is concluded.
Sub-regulation 5.23(1) provides that, for the purposes of deciding an opposition, the Commissioner may consult a document that:
(a)is relevant to the opposition; and
(b)has not been filed under this Chapter; and
(c)is available in the Patent Office.
If the present evidence were to be relied on, then the opponent would also need to be given an opportunity to give evidence or make representations of its own (sub-regulation 5.23(2).
In Merial, the delegate considered the operation of regulation 5.23 in the context of the Patents Act and the Regulations. The delegate concluded at [24] that a decision under regulation 5.23 must have regard to the nature of the information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way. At [25], the delegate further stated that, if the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition. While that discussion was in the context of the opponent in that case seeking to bring in more evidence rendering the claims invalid, it would appear the same considerations apply in considering new evidence from the present applicant seeking to further defend its application.
Mr Rodriguez’s evidence generally follows two approaches. The first, at [5] – [20] of the evidence, discusses the background to the alleged invention, and principally the problems relating to the independent movement of connected tanks, and the problems with connectors and seals for such tanks, and the consequent approaches by the applicant that led to the alleged invention. There is nothing of substance in this part of the evidence that is not already essentially available from the specification or from the evidence previously filed in this opposition.
The second approach, at [21] – [40] of the evidence, comments on the differences between the prior disclosures D1 – D3 and the product the subject of the present, alleged invention. Aside from this evidence apparently seeking to re-open matters already determined in the previous decision, and thus contrary to the principles from R v Smith, I will nonetheless comment on this part of the evidence as follows.
A recurring theme in Mr Rodriguez’s evidence is the failings of the seals of D1 and D2, in time in use, compared to the commercial product of the present, alleged invention, and their unsuitability for use with the commercial product. On the other hand, this is irrelevant. Firstly, this is an attack of comparative lack of utility of the prior art rather than addressing the inventiveness of the present invention. Secondly, in correspondingly also discussing the virtues of the present product, Mr Rodriguez has deviated from what is claimed. For example, Mr Rodriguez commented on the inability of the prior art seals to deal with two adjacent tanks. He stated that the prior art seals are only useful for fitting pipes, or connectors, to one tank because, once installed in the first tank, installation in the second connecting tank will uninstall the pipe from the seal of the first tank, or at least compromise the seal of the first tank. On the other hand, at least claims 1-7 of the application define no connection of multiple, similar structures.
I conclude Mr Rodriguez’s evidence is unlikely to change the outcome of the opposition in a significant way. Consequently, I do not invoke regulation 5.23 and I will have no further regard to this evidence in the present case.
As an aside, I note that, in its submissions, the applicant suggested the evidence was hitherto unavailable. Mr Rodriguez’s discussion though of the background and of D1 – D3 simply addresses matter that has been available to the applicant since at least the time of the completion of the opponent’s evidence in support.
SUBMISSIONS ON THE AMENDMENTS
In terms of the amendments, the applicant submitted the person skilled in the art would not by routine steps have adapted the arrangement of D1 to accommodate pivotal and longitudinal movement of the conduit after installation and in use, as now claimed. Moreover, in respect to D2, the applicant submitted that the pressure pocket function, to force the ring more tightly into engagement with the outer periphery of the pipe, taught away from the claimed invention, which defines a sealing means that retains a liquid tight seal with a conduit, even under longitudinal movement of the conduit when installed and in use.
DISCUSSION
As mentioned above, the amendments re-define the claimed invention principally in two ways. The first relates to the sealing means being symmetric in cross-section and adapted to retain the liquid tight seal under longitudinal movement of the conduit with respect thereto. The second relates to the claimed arrangement, when installed and in use, accommodating pivotal and longitudinal movement of the conduit.
US 4103901 (“D1”)
For convenience, I have copied below the relevant drawings of D1 from the previous decision.
In D1 there is at least a portion of the gasket that is symmetric in cross-section. That is the T-shaped flange 10 in the outer end of the circumferential gasket. In any case, the provision of seals that are symmetric in cross-section could not be said to have provided an inventive step at the relevant time. The use of O-rings, as discussed at [67] of the previous decision, as seals around pipes are one example.
Moreover, at [81] of the previous decision, I discussed the capacity of the gasket of D1 to retain the liquid tight seal under longitudinal movement of the conduit. Specifically, D1 discloses the gasket affording a substantial measure of flexibility and resilience, and being protected more effectively against shear stress. From this, I deduced that the relevant person skilled in the art, as determined at [59], would have understood the capacity of the gasket of D1 to accommodate some longitudinal movement of the pipe in more than one direction while maintaining a liquid tight seal. The “installed and in use” definition in the present claims does not differentiate this understanding of the capacity of the D1 gasket.
In respect to pivotal movement, I noted, at [80] of the previous decision, that the flares of the fibre-reinforced plastic 37 would clearly accommodate pivotal movement of the pipe in more than one direction, whilst maintaining a liquid tight seal. Again, the “installed and in use” definition in the present claims does not circumvent that understanding.
I conclude that claims 1 and 8, as amended, lack an inventive step over D1.
US 4333662 (D2”)
I have copied below the relevant drawing of D2 from the previous decision.
Prior to use, the gasket of D2 is symmetric in cross section. After installation of a pipe 11, there remains at least a portion of the gasket of D2 that is symmetric in cross-section. That is the bottom portion of seal 15.
From [96] of the previous decision, I also noted that the seal 15 comprises hollow annular ring 20 which is integrally connected to annular base 21 by means of narrow, flexible, continuous neck 22. The seal is preferably fabricated of relatively soft rubber or other resilient material. Furthermore, at [106] of the previous decision, I thus noted, with reference to Figure 3, that longitudinal movement of the pipe 11 is within the arrangement’s capacity in use. Consequently, I deduced the capacity of the gasket of D2, as understood by the relevant person skilled in the art, to accommodate some longitudinal movement of the pipe in more than one direction while maintaining a liquid tight seal. As for D1, the “installed and in use” definition in the present claims does not differentiate this understanding of the capacity of the D2 gasket.
In respect to pivotal movement, I noted, at [105] of the previous decision, that flexure of the neck 22 and compressibility of the ring 20 would clearly accommodate pivotal movement of the pipe on installation or in use in more than one direction while maintaining a liquid tight seal. Figure 5 of D2, reproduced below, conveniently illustrates this capability.
Again, the “installed and in use” definition in the present claims does not circumvent that understanding.
I conclude that claims 1 and 8, as amended, lack an inventive step over D2.
General Comments
The applicant further submitted that maintaining a liquid tight seal under some longitudinal movement at installation in D1 or D2 did not equate to the context of the claimed invention that recited a seal capable of maintaining substantial longitudinal movement in more than one direction. The applicant suggested there was no prior teaching or disclosure of accommodating longitudinal movement in more than one direction at installation or in use of the magnitude clearly envisaged by the amended claim 1 or claim 8. On the other hand, firstly, discussion of the lack of equivalence, or the prior teaching or disclosure of the prior art, would appear to address the novelty of the alleged invention, not the inventiveness the subject of the previous decision. Secondly, the claims do not specify sealing retention under substantial longitudinal movement or any quantifiable magnitude of longitudinal movement of the conduit in more than one direction in use.
Additionally, in both of D1 and D2, it may be that the longevity of the gasket is compromised with pivotal and longitudinal movement over time. On the other hand, as indicated earlier, that is an issue of utility of the prior art, not the inventiveness of the alleged invention as presently claimed.
In the previous decision, I also found that all the claims did not have an inventive step. The present amendments do not alter that position.
CONCLUSION
I conclude the amendments do not overcome the deficiencies identified in the previous decision.
This raises the question of whether the applicant should be given a further opportunity to amend. A similar situation arose in Merial Limited v Zoetis Services LLC, [2017] APO 20. In that case, the delegate allowed a further short period of time for the applicant to file further amendments.
In the present case, I consider there is subject matter in the specification that could overcome the deficiencies. For example, there may be suitable subject matter in the ease and the degree of longitudinal movement of the conduit in more than one direction in use whilst maintaining the liquid tight seal. I will allow the applicant a further opportunity to propose further amendments to overcome the adverse finding.
M. G. Kraefft
Delegate of the Commissioner of Patents