The Commonwealth Industrial Gases Limited v. Liquid Air Australia Limited

[1986] APO 20

In the Matter of the Patents Act 1952

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In the Matter of Application No. 523942 for Letters Patent by THE COMMONWEALTH INDUSTRIAL GASES LIMITED

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In the Matter of Opposition thereto Under Section 59 by LIQUID AIR AUSTRALIA LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 523942 was lodged on 11 September, 1978 under the provisions of Part XVI of the Act in respect of an invention disclosed in a U.K. basic application thus acquiring a priority date of 12 September, 1977.  Advertisement of acceptance appeared in the Official Journal of 26 August, 1982 and notice of opposition was lodged by LIQUID AIR AUSTRALIA LIMITED on 25 November, 1982.
         The matter was heard in Canberra on Monday, 28 April, 1986, the applicant being represented by Mr. R. Shelston, patent attorney of Shelston Waters, Sydney, and the opponent being represented by Mr. B. Caine of Counsel, instructed by Mr. P. Jones, patent attorney of Phillips, Ormonde & Fitzpatrick, Melbourne.
         Although the grounds of opposition stated on the notice are those specified in paragraphs (c) to (i) of sub‑section 59(1) the submissions made at the hearing were limited to the grounds specified in paragraphs (e), (f), (g), (h) and (i), i.e. prior publication, manner of manufacture, obviousness, lack of novelty and non‑compliance with section 40.

The Specification
         The specification commences by stating that the invention "relates to method and apparatus for deflashing and debonding".
         It then goes on to relate that:

"It is current commercial practice to remove the flash from, for example, moulded articles of elastomeric material such as rubber or of plastic material, or from die‑cast articles in a rotary drum by introducing liquid nitrogen in the drum and rotating the drum.  The liquid nitrogen has the effect of rendering the flash brittle.  The tumbling action caused by rotating the drum causes the articles to endure repeated impacts.  The effect of the impacts is to cause the flash to be broken off from the articles.  After the drum has been rotated for a chosen period of time, it may be brought to a halt and the articles and separated flash may then be unloaded from the drum.  It is also known to debond pieces or articles of composite material, for example, composite rubber‑metal articles, by analogous methods."

Immediately following are descriptions of a deflashing and a debonding process, in terms equivalent respectively to claims 1 and 2.
         The description then stresses that both processes are capable of  continuous operation thus:

"The method of deflashing according to the present invention is capable of being operated continuously.  So is the method of debonding according to the present invention.  In this respect the methods according to the present invention are an improve‑

ment over the hitherto described known processes which are capable only of being operated discontinuously as batch processes."

Immediately following is a description of apparatus in terms corresponding to claim 19.
         The specification continues by describing further embodiments of the invention ending with twenty claims, three of which are independent, namely 1, 2 and 19, which read as follows:

"1.A method of deflashing articles of material which is rendered relatively brittle by a reduction in its temperature to below ambient temperature, which method comprises continuously introducing articles to be deflashed through an inlet into an elongate rotary member defining a downwardly inclined passage, having an outlet remote from said inlet, rotating said member so as to cause the articles to tumble and pass along the passage through the outlet, and introducing into the passage and into heat exchange relationship with the articles a coolant having a temperature sufficiently below ambient to render the articles sufficiently brittle that the impacts caused by the tumbling action of the articles as they pass along the passage effect or assist in effecting deflashing of the articles.

2.A method of debonding pieces or articles of composite material, one component of the material being rendered brittle by a reduction in its temperature to below ambient temperature which method comprises continuously introducing articles or pieces of the composite material to be debonded through an inlet into an elongate rotary member defining a downwardly inclined passage having an outlet remote from said inlet rotating said member so as to cause the articles or pieces to tumble and to pass along the passage through the outlet, and introducing into the passage and into heat exchange relation‑

ship with the articles or pieces a coolant having a temperature sufficiently below ambient to render the said one component of the articles or pieces sufficiently brittle that the impacts caused by the tumbling action of the articles or pieces as they pass along the passage effect or assist in effecting debonding of the articles or pieces.

19.Apparatus arranged to perform continuously the method of deflashing or the method of debonding as claimed in any one of the preceding claims said apparatus comprising an elongate rotary member defining a downwardly inclined passage having an inlet remote from an outlet for articles to be debonded or articles to be deflashed or for pieces of composite material to be debonded, means for rotating the elongate member and means for introducing a coolant into the passage."

The Evidence
         The evidence adduced shows that before the priority date of the specification in suit cryogenic deflashing machines were common general knowledge in Australia.  This was conceded by Mr. Shelston at the hearing.
         These prior art machines used liquid nitrogen, were sealed in use and had a tumbling action, but could be operated in a batch mode only.  The  evidence also shows that various tumbling machines such as rotary kilns and dryers are operated in a continuous mode, by arranging for them to consist of a rotating cylinder, inclined from inlet to outlet.
         In addition the evidence includes a number of patent documents which allegedly anticipate the patent in suit.  Of these only one is relevant, namely US 3992899.
Section 40
         The opponent alleged that claim 19 was not clear and succinct.  This is a minor matter which I include for the sake of completeness.  The phrase objected to reads:

"an inlet remote from an outlet for articles to be debonded or articles to be deflashed or for pieces of composite material to be debonded."  (my underlining)

I agree with counsel that the reference underlined should be to articles of composite material, and not to unqualified articles.
         There is a further matter to be considered here.  Claims 1 and 2 are respectively directed to "A method of deflashing" and "A method of debonding" yet in their final lines include the expression "effect or assist in effecting" deflashing or debonding.  The specification is directed to methods which actually effect the deflashing or debonding and these methods consist of the steps defined in claims 1 and 2.  If then, these methods only "assist" in effecting the desired end, the specification is remiss in not describing the complete processes.  It seems to me therefore that the references in the claims (and the equivalent statements of invention) to "assist in effecting" should be deleted.
Section 35(1)
         Counsel alleged that the application was not directed to "a manner of new manufacture" but the evidence and the submissions made relate to "newness" in a general sense and are better considered under the following headings.
Anticipation
         Mr. Caine on behalf of the opponent suggested that claim 1 can be distilled into 6 components namely:

(a)continuously introducing articles to be deflashed through an inlet;

(b)employment of an elongate rotary member defining a downwardly inclined passage;

(c)the passage having an outlet remote from the inlet;

(d)rotating the member so as to cause the articles to tumble and pass along the passage through the outlet;

(e)introducing into the passage and into heat exchange relation‑

ship with the articles a coolant having a temperature sufficiently below ambient to render the articles brittle so that the impacts caused by tumbling the articles as they pass along the passage effect or assist in effecting deflashing thereof.

He then submitted that the evidence shows the following features were known at the priority date:

(a)cryogenic deflashing,

(b)rotary drum member rotated at 10‑40rpm,*

(c)coolant (LIN) introduced by injection with a spray,

(d)rotary drum member having an octagonal cross‑section,*

the alleged novelty he said, being the feature of continuous feeding with the downward inclination of the drum being from the inlet to outlet so that articles to be deflashed moved through the process.
         He argued that turning a batch operation into a continuous one by means of well known engineering techniques was common general knowledge. This may be true, but it has not been shown that the idea of turning this particular batch operation into a continuous one lacks novelty in the light of the admitted common general knowledge, and I cannot agree with Mr. Caine's submission in the absence of appropriate evidence, that in general engineering practice batch and continuous operations are completely interchangeable.  However, I will have more to say about this under the heading of Obviousness.

*features falling within the description of the preferred embodiment of the opposed application.

I turn now to a consideration of the documentary evidence in support of the ground of anticipation.  The only document of real relevance is the specification of US Patent 3992899.  This specification relates to "a device for the cooling of bulk material by low‑boiling, liquefied gas in a precooling zone and in a spray zone".  Various bulk materials are disclosed amongst which are included scrap tyres.  The device for embrittling of scrap tyres is described as consisting of a rotary cylinder having its axis inclined slightly to the horizontal.  At the higher end the admission of the scrap tyres takes place by means of a stationary charging device which consists of an input shaft, a flap acting as a gas closure, and an exhaust channel for the vaporized liquid gas.  In the lower end of the cylinder a spray pipe protrudes into the discharge opening.  Liquefied gas is supplied to the spray pipe ‑ nitrogen is the gas used.  It is noteworthy that the rotary cylinder is illustrated as being of elongate form.  Clearly, this document prior publishes claim 19.

The question now arises as to whether the document also publishes claims 1 and 2.  Claim 1 is directed to a method of deflashing articles.  The US patent specification makes no reference whatever to deflashing, though it discloses the same treatment steps as recited in claim 1; however in the US document the treatment steps are applied to various bulk materials to break them up, the examples given being scrap tyres, scrap metal, and spices, whereas in the claim the treatment steps are applied to articles having flashings with the end result of effecting deflashing.  Consequently I find that claim 1 defines a method very different from the US disclosure and there is no prior publication of the claim.  Claim 2 however, comes into a different category.  It defines a method of debonding pieces or articles of composite material one component of which is rendered brittle by reduction in its temperature to below ambient temperature.  I have already indicated that the US specification discloses the same treatment steps as claim 1; the same is, of course, true respecting claim 2.  What remains for consideration is whether it discloses a method of debonding composite material into its components.  The US specification includes the following paragraphs:

"A further area with which this invention is concerned is scrap tires.  The disposal of the many millions of old tires accumulating each year presents an increasingly more difficult problem.  Earlier, the old tires were stored in mill deposits.  Because of the large quantity, this is possible only to a small extent.  Furthermore tires have a very long decomposition time.  The hollow spaces resulting in storage have many disadvantages.  These may be avoided if scrap tires are rendered into small pieces, the disintegration of the elastic material, however, already presenting considerable difficulties.

The burning of old tires is also difficult; however in specially constructed installations, old tires may be burned satisfactorily.  However, it is disadvantageous that the valuable tire material is completely destroyed.

A further possibility of destroying old tires consists of embrittling the old tires by a liquefied, low‑boiling gas and subsequently to disintegrate them.  For reasons of cost, nitrogen is considered above all as the low‑boiling gas.  The embrittled tires may relatively easily be rendered into small fragments or grains.

The steel inserts may then subsequently easily be removed.  The valuable raw products are retained and may be further employed for various purposes."

A tyre is an article of composite material being steel and/or fabric reinforced.  Obviously the tyres concerned are steel reinforced.  Clearly one component (at least) of the tyres is embrittled by exposure to liquid nitrogen. It seems that the other components (including the steel reinforcing) are also embrittled, hence the reference to "embrittling the old tires ... to disintegrate them".  It also seems that whilst the term "debonding" is not used, debonding does occur, for if this were not the case, the reference to "The steel inserts may then subsequently easily be removed.  The valuable raw products are returned and may be further employed ..." would be meaningless.  I note particularly the disclosure that after the embrittled tyres are rendered into "small fragments or grains", the steel inserts are "easily" removable.  (One ready way of separating steel parts from non‑magnetic material like tyre rubber is by the use of magnetic separator means).  If the steel and the rubber were not "debonded" by the liquid nitrogen and rotary cylinder treatment, it could hardly be said that the steel inserts were easily removable especially in view of the sizings, i.e. small fragments or grains.  In my view therefore, US specification 3992899 prior publishes claim 2.
Obviousness
         The evidence* on file relating to this ground of opposition includes the following:

1.That the rotary tumbler machines for batch deflashing and debonding using liquid nitrogen were common knowledge in Australia before the priority date of the opposed application;

2.Tha continuous flow rotary driers and coolers of inclined cylinder form were common knowledge in Australia before the priority date of the opposed application; and

3.Evidence from an expert witness to the effect that it would have been obvious to convert the batch type equipment referred to in item 1 to the continuous flow type equipment referred to in item 2, before the priority date of the opposed application.

The evidence to substantiate item 1 appears in a number of exhibits to the evidence‑in‑support; the evidence to substantiate item 2 appears in exhibit DLJ2 to the evidence‑in‑reply and comprises extensive extracts from the "Chemical Engineers Handbook" edited by Robert H. Perry and Cecil H. Chilton, Fifth Edition.  Mr. Shelston for the applicant conceded that items 1 and 2 were correct.
         The evidence to substantiate item 3 comprises a declaration by one David Lawrence Jitts, a consulting mechanical engineer and accompanying exhibits, of which DLJ2 is one.  Mr. Jitts deposes that he has had 30 years

*Note that US Patent Specification No. 3992899 is not part of the obviousness evidence as it has not been shown to be part of the common knowledge in Australia.

post‑graduate engineering experience, of which about half has been as the principal of his own consulting practice.  During the latter period he was involved with project management of diverse types of processing plant including cryogenic gas manufacturing and storage facilities.  He further deposes that he has read the present application and understands its difference from the prior art to reside in the use of an inclined rotating drum allowing continuous process operation.  His declaration includes the following paragraphs:

"4.The technique of utilising an inclined and rotating drum to continuously effect heat transfer between solids and gases is one which has been widely practiced and was part of the common general knowledge of engineers long prior to 12th September, 1977.  Equipment utilising this technique which was known and used in Australia prior to 12th September, 1977 are generally described as rotating drum coolers, driers or kilns depending upon the actual process operation for which the equipment was employed.  Examples of the use of this technique in Australia prior to 12th September, 1977 are as follows:

...................

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5.Now shown to me and annexed hereto as Exhibit DLJ 2 is an extract from the "Chemical Engineers Handbook" edited by Robert H. Perry and Cecil H. Chilton, Fifth Edition ("The Handbook extract).  The Handbook extract illustrates an inclined rotary cement kiln which is of the same format as the cement kilns that I inspected in 1964‑1965 at Kandos, New South Wales and Waurm (sic) Springs in Victoria.

6.Even without the prior knowledge which I have outlined above, I believe that given the task of converting a batch type operation involving a rotating drum to a continuous operation, I would have chosen from my general mechanical engineering training and experience to incline the drum, feed it at one end and take the discharge from the other end."

Paragraphs 4 and 5 of Mr. Jitts' declaration relate to the matters of common knowledge referred to in item 2 above ‑ there is no dispute concerning the contents thereof. What has to be decided is whether as a result of the statement in paragraph 6 of the declaration, the process of the present invention, at least as claimed, is obvious. The law on obviousness has been expressed in the judgement of Aickin J. in Minnesota Mining and Manufacturing Co. and the 3M Company v. Beiersdorf (Australia) Ltd. 144 CLR 253 ‑ see for example pages 292‑3 wherein the following quotes appear:

"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 it must be treated as being used by an individual as a general body of knowledge.  I do not with respect think that it is correct to describe that process as the making of a mosaic although it has often been so described, a usage which however may be misleading.  The process of applying such common general knowledge to the solution of a problem is not a process of picking out individual pieces of information and combining them, including inferences from known facts and known principles, as well as the application of such principles. ..........

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The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent.  If this were not so, there could never be a valid patent for a new combination of old integers.  The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process.  It is rather whether it would have been obvious to a non‑inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications."

Having regard to these principles and upon consideration of Mr. Jitts' paragraph 6, one point is manifestly evident.  That is, Mr. Jitts has considered the patent invention in the light of hindsight.  He deposes that "... given the task of converting a batch type operation involving a rotating drum to a continuous operation, I would have chosen ...".
The point is, it could be inventive to conceive the idea expressed in the underlined portion above; in the present case, apparently the applicant was the first to conceive that idea. As I understand the law, a person does not have to make two inventions, thus if there is invention in the conception of an idea, it is not a requirement for patentability that there also be invention in the way of carrying it out. (See Hickton's Patent Syndicate v. Patents and Machine Improvements Co. Ltd. 26 RPC 339). Consequently even if I accept the said paragraph 6 in whole, the patentability of the invention as claimed in claims 1, 2 et al is not destroyed on the ground of obviousness. Even so, I cannot see that Mr. Jitts' blunt assertion in paragraph 6, that he would have chosen from his general engineering experience and training to incline the drum, feed it at one end and discharge from the other end, would render the process claimed, obvious. In my view something more is required. The inclined drums of the prior art are used for process work at very much higher temperatures than the operating temperatures of the instant process, e.g. in rotary kiln work, the production of cement, drying, roasting etc. It is true that the extract from the Chemical Engineers Handbook does refer to cooling, but it appears from the examples in the text that the reference is concerned with cooling from above ambient temperature rather than with cryogenic cooling. In any case, I see no evidence detailing the "obvious" approach from the prior art cryogenic rotary tumblers proceeding by way of the common knowledge as set out in the Chemical Engineers Handbook leading to the process presently claimed.
         Consequently I dismiss this ground of opposition.
Conclusion
         I have found that the specification has section 40 defects and that claims 2 and 19 are prior published.  Therefore the opposition succeeds, and I award costs against the applicant.  Clearly, however, there is patentable subject matter disclosed in the application, and I allow the applicant 60 days in which to propose amendments to avoid the defects to which I have referred.

(J.L. ROVETA)