Thetford Corporation v. Sanitation Equipment Limited

[1986] APO 17

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 525850 by THETFORD CORPORATION

‑ and ‑

In the Matter of Opposition thereto by SANITATION EQUIPMENT LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Patent application 525850 in the name of Thetford Corporation ("Thetford") was advertised accepted on 2 December, 1982, and on 28 February, 1983 a notice of opposition was lodged by Sanitation Equipment Limited ("Sanitation").  That opposition was the subject of a hearing in Melbourne on 15 August 1985 when the applicant was represented by Mr. A.R. Smeeton, Patent Attorney, of Davies & Collison, and the opponent was represented by Mr. L.J. Dyson, Patent Attorney, of Edwd. Waters & Sons.  The notice of opposition lists the grounds set out in paragraphs 59(1)(a) and 59(1)(c) to (i) of the Patents Act, although at the hearing Mr. Dyson relied only on the grounds of paragraphs 59(1)(a) (obtaining), (e) (prior publication), (g) (obviousness), (h) (not novel) and (i) (non‑compliance with section 40).
         The specification is entitled "Improvements in Portable Toilets", and states that:

"The present invention relates to self‑contained portable toilets .....

Portable toilets of this character have holding tanks on which are removably mounted upper units which contain among other items, the toilet bowl, a flush water storage tank and flush apparatus for flushing waste material from the bowl into the holding tank.  It is the conventional practice in each of these toilets to provide a valve assembly on the holding tank for opening and closing the tank inlet part that is in communic‑

ation with the outlet from the toilet bowl. .....

It is also conventional practice to provide clasp mechanisms for locking the upper units securely in place on top of the holding tanks, and these clasp mechanisms are usually located on the opposite side walls of the associated holding tanks and upper units, although U.S. Patent No. 3,949,430 discloses an improved clasp mechanism located between the top wall of the holding tank and the bottom wall of the upper unit and actuated by a handle located in a cavity in the front walls of the tank and upper unit ....."

After setting out further relatively minor features of the prior art, the specification includes a consistory clause in the same terms as claim 1.  That claim is as follows:

"A portable toilet comprising a portable lower holding tank section and a portable upper seat section removably supported thereon, said seat section having top, side and bottom walls with an outlet port in its bottom wall and defining a bowl extending between said top and bottom walls and opening at the bottom to said outlet port, said seat section having a flush water storage chamber, said holding tank section having a top wall and side and bottom walls forming a closed receptacle with an inlet port in its top wall in registry with said outlet port, and a valve assembly mounted on said holding tank section for opening and closing said inlet port, said holding tank section and said seat section having disengageable interlocking means integrally formed with and in their respective top and bottom walls adjacent to one of the sides of the sections, the seat section being disengageable from the holding tank section by pivotal movement of the seat section relative to the holding tank section and the holding tank section and the seat section having releasable clasp means adjacent to another of the sides of the sections opposite from said one side for releasing or securing the sections respectively for or against said movement relative to one another."

The specification goes on to describe some preferred features of the invention and describes a preferred embodiment.   There are 14 claims, claims 2 to 13 are appended, directly or indirectly, to claim 1, and claim 14 is an omnibus claim.  According to Mr. Smeeton, the specification discloses and claims a new arrangement for retaining the upper and lower portions of a portable toilet together; the essence of the invention residing in the provision of means for securing those portions together in which there is one clasp mechanism and a disengageable interlocking means which together provide for engagement and disengagement of upper and lower portions of the toilet by a pivotal action.  Mr. Smeeton submitted that this new arrangement has a number of advantages over the prior art.  First, this arrangement eliminates one of the two clasps of the prior art.  Unlike the clasps of the prior art, the clasp and interlocking means of this invention may be formed integrally with the upper and lower portions of the toilet, simplifying construction and lowering costs.  The pivotal action enables the two sections to be readily located with respect to one and other.  The pivotal action also provides leverage ensuring a firm closure between upper and lower sections and so ensuring a satisfactory seal between these sections.
Obtaining
         The first ground of opposition is:

"that the invention, so far as claimed in any claim, was obtained from the opponent ..."

The evidence on which the opponent relies to establish this ground is set out in an affidavit by Mr. Lanny Baer, the General Manager and Acting Chief Executive Officer of the opponent company.  That affidavit establishes that on 4 March, 1981 the applicant wrote to the opponent alleging infringement of the applicant's Canadian patent No. 1,094,254 (which corresponds to the present Australian application and to U.S. patent 4,180,876).  After various meetings and correspondence between the applicant and the opponent the opponent agreed, without admitting either infringement or validity of Canadian patent 1,094,254 and U.S. patent 4,180,876, that it would redesign its two piece portable toilet of which the applicant had complained and would submit the redesigned portable toilet to the applicant so that the applicant could confirm that the redesigned unit did not infringe these patents.  On 22 October, 1981 the opponent sent a sample of part of its redesigned unit to the applicant.  This sample was the two mating halves of the seat and holding tank sections of the toilet.  In response to a request from the applicant's U.S. patent attorneys the opponent forwarded a complete sample of its redesigned two piece portable toilet to the applicant on or soon after 3 February, 1982.  Receipt of that sample was acknowledged by the applicant's patent attorneys in a letter dated 18 February, 1982.
         The two piece portable toilet, a sample of which was sent by the opponent to the applicant on 22 October, 1981, is also the subject of a Canadian patent application filed by the opponent on 11 September, 1981.  That toilet is, in Mr. Baer's affidavit, described in the following terms:

"In the portable toilet which was sent to the applicant on October 22, 1981 ... there were two mating halves, namely a lower holding tank and an upper bowl unit.  These halves were secured together as follows.  At one end of the holding tank there were located two vertical posts 39 which project upwardly into a slot 45 in the lower surface of the bowl unit and had a frictional engagement with a wall of the slot.  At the other end of the toilet there was a movable latch 36 which engaged a keeper 48 on the holding tank.  In addition posts 35 on the holding tank projected into recesses 37 in the bowl unit to help align two sections.  To disengage the two sections the latch 36 is moved outwardly and the bowl unit is then lifted straight upwardly from the holding tank."

Mr. Baer continues in his affidavit as follows:

"9.After the Applicant reviewed the Opponent's redesigned portable toilet, the Applicant took the position that such redesigned toilet still infringed the Applicant's Canadian and U.S. patents.  Now produced and shown to me and marked as Exhibit K to this my affidavit is a copy of a letter dated May 7, 1982 sent by Mr. Boller the applicant's attorney to our Canadian lawyers to this effect.  In such letter Mr. Boller takes the position that the post and socket structure at one end of the Opponent's portable toilet constitutes a hinge‑like mechanism, and alternatively that the clasp and keeper at the other end of the Opponent's portable toilet also constitutes a hinge‑like mechanism.

10.On May 28, 1982 our Canadian lawyers replied to Mr. Boller attempting to convince him that the redesigned Sanitation portable toilet did not infringe the applicant's Canadian and U.S. patents in question.  A copy of such letter is now produced and shown to me and marked as Exhibit L to this my affidavit.  Unfortunately the matter was not resolved and is now in litigation in the U.S.

11.I am informed and verily believe that when the Applicant filed the above identified Australian patent application, such application had claims generally similar to those which issued in the corresponding Canadian and U.S. patent applications.  In particular the original Australian claims dealing with the hinging arrangement stated that the toilet was "characterized in that the holding tank section and the seat section have disengageable interlocking means in their respective top and bottom walls adjacent to one of the sides of the sections, the seat section being disengageable from the holding tank section when the seat section has been pivoted about an axis of the interlocking means a preselected number of angular degrees relative to the holding tank section, and the holding tank section and the seat section having releasable clasp means adjacent to another of the sections opposite from said one side ..."

12.I am informed and verily believe that after the Applicant inspected the Opponent's new two piece portable toilet, it filed substantially broader claims in Australia.  In the new claim 1 the feature of disengagement only after pivoting of the seat section about the holding tank section by a preselected number of angular degrees appears to have been abandoned.  The information for broadening this claim and also claims 2 through 5 and 7 through 9 insofar as they depend on claims 1 to 5 appears to have been derived from the Opponent's two piece portable toilet which was given to the Applicant.  Claims 8 and 9 in particular refer to a leg and socket arrangement, the idea for which was contained in the two piece portable toilet given by the Opponent to the Applicant."

Mr. Baer's declaration established that a sample of the opponent's redesigned unit was provided to the applicant on or soon after 22 October, 1981.  The broadened set of claims was lodged at the Patent Office on 19 July, 1982.  I must determine whether the invention, so far as claimed in any of the claims lodged on 19 July, 1982 (as further amended on 16 September, 1982) was obtained from the opponent by the applicant's examination of the opponent's redesigned unit.
         There are close parallels between the facts of this opposition and the facts in Formulast Corporation's Application, (1970) RPC 243 (Whitford J. sitting as the Patent Appeal Tribunal). In Formulast, during the prosecution of a parent application (which claimed priority from a U.S. application) the applicant lodged a divisional application with broader claims than the parent. The Appeal Tribunal stated:

"The only difference between these claims material for present purposes is that No. 933,184 (the divisional) no longer contains the limitation which is to be found in the claims of No. 933,183 (the parent) that the upper should be moistened before the lasting takes place ... (page 253) ... (the opponent) ... is suspicious of the applicant because (the applicant's patent agent), having considered the position and decided that the claims were too narrow, came to the conclusion that the original disclosure upon which No. 933,183 was based (i.e. the disclosure in the U.S. basic) was a wide one and that (the applicant) would have been entitled to a broader claim ... (p254) ... The most important and perhaps the most acute question that arises in relation to the issue of obtaining is the question of the extent to which an applicant may be entitled during the course of prosecution of his application to amend the claims of his application and to broaden the claims of his application because of information which comes to him from outside, if in fact the information which comes to him from outside can be said to be information which has come to him in some sense in confidence and if it can also be said to have communicated to him some feature which he was not previously possessed of ... (p256) ... The first question which merits attention is the question as to whether or not the invention in the form in which it appears in claims 1, 2 and 3 (of the divisional application) was in the original document (i.e. the U.S. basic) ... If one in fact can find that there was fair basis for the claims of No. 933,184 in the disclosure upon which this divisional and the parent from which it was divided was based, then my view is that obtaining cannot successfully be alleged.  The most that can be said to have happened in such circumstances is that, because of the action of some third party, the applicant has been alerted to the fact that the claims of his application have not been drafted as fully to comprehend the invention which, on the hypothesis I have advanced, he has already fully made.  I think that the objection of obtaining, which in the words of the statute, consists in the applicant obtaining the invention or any part thereof from the complainant, cannot be made out, if the invention has always been there, albeit unnecessarily narrowly claimed ... (p257) ... I at any rate base my decision upon the view that the disclosure in the documents which formed the starting point for the parent and the divisional was sufficient to provide a fair basis for the claims of No. 933,184, so that ... these applicants would have been perfectly entitled prior to acceptance to put in claims in the form of claims 1, 2 and 3 of the document as it now stands.  If that is the case, then, in my view, the objection of obtaining cannot be made out ... (p259)."

Applying the principles set out in the passages of the decision quoted above to the present case I am of the opinion that:

1.If the amended claims of the present application claim only matter in substance disclosed in the specification as lodged (Patents Act, sub‑section 49(4)) or matter in substance disclosed in the basic application as lodged, then there has not been obtaining.

2.If the amended specification claims matter which was not in substance disclosed in the specification as lodged or in the basic application as lodged, it is not conclusive that there has been obtaining.

3.To prove obtaining, it is necessary for the opponent to show that the claimed matter is not only not in substance disclosed in the specification or basic application as lodged, but also that that matter was communicated by the opponent to the applicant in confidence.

The primary dispute as to obtaining in the present case turns on the wording to be found in lines 26 to 33 of page 2 in the specification as lodged; which wording is identical to the corresponding passage of the specification of the basic application.  That wording is as follows:

"One of the features of this form of the invention is that the holding tank section and the seat section have disengageable interlocking means in their respective top and bottom walls adjacent to one of the sides of the section, the seat section being disengageable from the holding tank section when the seat section has been pivoted about an axis of the interlocking means a preselected number of angular degrees relative to the holding tank section."  (My emphasis added).

Claim 1 as accepted defines, and the corresponding consistory clause describes:

"A portable toilet comprising a portable lower holding tank section and a portable upper seat section removably supported thereon ... said holding tank section and said seat section having disengageable interlocking means integrally formed with and in their respective top and bottom walls adjacent to one of the sides of the sections, the seat section being disengageable from the holding tank section by pivotal movement of the seat section relative to the holding tank section ..."

I must accordingly decide whether a claim to a seat section "being disengageable ... by pivotal movement ..." is in substance disclosed by a description of a seat section "being disengageable when the seat section has been pivoted ... a preselected number of angular degrees"; and I am of the opinion that such a claim is not in substance disclosed by such a description.  I am of this opinion on three grounds, as follows:

1.The description in the specification as lodged is of a seat section which is disengageable (i.e. which is capable of being disengaged) only after pivoting has taken place; the claim is to an arrangement in which it is the pivoting movement which causes the disengagement.  That is, the description describes the pivoting movement and the disengagement as taking place sequentially; the claim includes arrangements in which the pivoting movement and the disengagement take place simultaneously.

2.The description in the specification as lodged describes the disengagement as taking place only after a preselected degree of rotation has taken place, which degree of rotation would be invariant between successive operations of the mechanism; the claim is not limited to an arrangement in which disengagement is possible only after a preselected (and hence invariant) degree of rotation has taken place.

3.The specification as lodged describes the pivoting as being about an axis of the interlocking means; the claim contains no limitation as to the location of the pivotal axis.

I am accordingly of the opinion that the amended claim claims matter not in substance disclosed in the specification as lodged, and must next consider whether that matter was communicated by the opponent to the applicant.
         The opponent's redesigned unit, as described and claimed in its Canadian patent application, included:

"... securing means for releasably securing the bowl unit to the holding tank, including a bowl unit portion located generally at the bottom of the bowl unit having a first generally vertical, friction surface and a holding tank portion located generally at the top of the bowl unit having a second generally vertical, friction surface, the bowl unit and holding tank portions being so positioned that the first friction surface is pressed horizontally against the second friction surface in overlapping frictional engagement as the bowl unit is seated in the predetermined position atop the holding tank, whereby, the frictional engagement of the surfaces resists vertical removal of the bowl unit from the holding tank." (My emphasis)

As explained in the description, "... The frictional forces created by this (horizontal) pressing of the friction surfaces against one another tend to resist vertical removal of the bowl unit from the holding tank".  In a letter of 28 May, 1982 the Canadian attorney for the opponent described the opponent's redesigned unit in the following terms:

"... there is nothing corresponding to a disengageable hinge which provides a positive retention of the pivotal axis when the seat section and holding tank section are connected together and which disengages only when the seat section has been pivotal a preselected number of degrees about the holding tank section.  In (the opponent's) unit disengagement is effected by releasing the clasp and lifting the seat section straight upwardly.  If one attempts to pivot the seat section about the projection and socket structure, then these items bind together and it becomes extremely difficult to disengage the sections.  There is certainly no structure whereby disengagement cannot occur until the seat section has been pivoted a preselected number of degrees.  In fact, the structure has the opposite result, since disengagement occurs when no pivoting is performed, and disengagement becomes extremely difficult if there is any pivoting."  (My emphasis)

I am satisfied that the amendment to claim 1 of the opposed specification did not result in the incorporation therein of any matter disclosed to the applicant by way of the opponent's "redesigned unit".  The opposed specific‑
ation, both in the amended and unamended form, describes and claims a portable toilet in which pivotal movement is essential to the disengagement of two portions of the toilet.  In contrast in the opponent's redesigned unit the separation of the two parts of the toilet is effected by linear movement; disengagement would be extremely difficult, if not impossible, if there is any pivoting.
         It was also suggested at the hearing that the amended claims 8 and 9 of the opposed specification include matter obtained from the opponent.  Claim 8 defines the "interlocking means" of claim 1 as comprising:

"... respective legs and sockets in respective ones of said respective top and bottom walls, said legs engaging with said sockets when the two sections are secured together."

Claim 9 is as follows:

"The portable toilet that is defined in claim 8 wherein said legs are in said seat section and said sockets are in said holding tank section."

I think there is sufficient disclosure of the features claimed by claims 8 and 9 at lines 27 to 30 of page 8 of the specification as lodged.  Those lines are as follows:

"... the leg 86 and the socket 88 form hinge‑like elements located in the top and bottom walls 50 and 20 to provide a hinge axis 90 for privotal movement of the seat section 14 relative to the lower holding tank section 12."

Accordingly, the objection of obtaining has not been established although the claims do now define matter which was incorporated into the specification as the result of amendment and which was not in substance disclosed in the specification as lodged.  The claims claiming that new matter must, under sub‑section 159A(1), take as their priority date the date of lodging of the relevant statement of amendments.  That statement of amendments was lodged on 19 July, 1982.
Prior Publication
         Mr. Dyson submitted that the invention as defined in at least claim 1 of the accepted specification is prior published by:

‑the disclosure in US patent specification 3,570,018, and by

‑the opponent's "Carefree" and "VIP" models of portable flushing toilets.

United States patent specification 3,570,018 claims:

"1.A portable toilet comprising a portable lower holding‑tank section and an upper seat section removably supported thereon, said seat section having top, side and bottom walls with an outlet port in its bottom wall and defining a bowl extending between said top and bottom walls and opening at the bottom to said outlet port ...

13.... wherein clamp means are connected to the side walls of said sections for clamping said bottom wall of the seat section to the top wall of the holding‑tank section ..."

Column 4 of the specification, at lines 2 to 6, states that:

"Also the upper section 14 has a pair of latching mechanisms 56 on opposite sides thereof, which are adapted to be engaged with elements on the lower section 12 for clamping the two sections together, as will be described."

Lines 32 to 37 of the same column of the specification then state that:

"The lower section 12 also has molded on two opposite sides the lugs 82 which are adapted to receive the wire loop portion 84 of the clamping mechanism 56 for securely clamping the upper section 14 to the lower section 12 in a conventional manner."

The drawings illustrate latch mechanisms on opposite sides of the seat section, each of which latches carries a wire loop which can loop around a lug integrally moulded on the lower holding tank section.  The opponent's "Carefree" and "VIP" models which are illustrated in Exhibit FD1, are of generally similar construction, except that in the "Carefree" model the latches are on the holding tank section and the lugs are on the seat section, that is, the arrangement is the reverse of that in the U.S. patent.  In addition, in both the "Carefree" and "VIP" models, and in U.S. Patent 3,570,018, each latch is a separate attachment and not an integral part of the moulding.
         Mr. Dyson submitted for the opponent that the disengageable latching mechanisms at each side of the prior art units are constructed in such a way that if one of those latches is released the other latch may function as a hinge so that the seat section can be pivoted about the holding tank section and then released, as defined in claim 1 of the opposed specification.  Mr. Smeeton replied that the prior art does not disclose the latch mechanism as being an integral part of the moulding (as required by claim 1 of the opposed specification) and that the prior art does not contain "clear and unmistakable directions" to use the prior art in such a way that one of the latch mechanisms functions as a hinge.  Mr. Smeeton was, of course, quoting Flour Oxidizing Company Ltd. v. Carr & Co. Ltd. (1908) 25 RPC 428 at page 457, lines 34 to 38. That decision is not, however, material to the present case in which the claim is a claim to apparatus per se, rather than a claim to use of apparatus.  That decision is authority for the proposition that:

"A claim for a method of using certain apparatus is not lacking novelty merely because the apparatus itself is old; in addition the method of use must be old.  That is to say, either the old apparatus must actually have been made and used within the claim, or there must have been publication of 'clear and unmistakable instructions so to use it'."

(See Blanco White, Patents for Inventions, third edition, page 100).  I do however think that Mr. Smeeton is correct on the first point.  In the invention as claimed the "interlocking means" are "integrally formed with" each of the lower holding tank and upper seat sections.  In the closest prior art, the "interlocking means" consists of:

‑a latch which is a separate component which has been attached to the upper section of the toilet, and

‑a lug which is integrally moulded with the lower section.

The claim differs from the closest prior art in that a prior art component which is provided as a separate part appears as an integral part in the claim. In the light of this difference the prior art does not prior publish the claims.
Novelty
         It must be decided whether the provision of a latch as an integral part of the moulding confers novelty over the prior art in which the latch is a separate component.
         The "Griffin v. Isaacs test for novelty" states that:

"When variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty."   (1942) AOJP 739.

I do not think it has been proved that the difference between claim 1 and the closest prior art ‑ i.e. the provision of a component of the "interlocking means" as an integral part rather than as a separate component ‑ either fails to make a substantial contribution to the working of the thing claimed or fails to confer merit on the thing claimed, considered as an invention.  It may well be that the provision of an interlocking part simplifies construction or lowers the cost of construction, and as no evidence to the contrary has been produced the doubt on this point must be resolved in favour of the applicant.
Obviousness
         It has not been shown that the invention as defined in claim 1 is obvious in the light of the disclosure in U.S. patent 3,570,018 or in the light of the opponent's "Carefree" or "VIP" models.  As demonstrated in my consider‑
ation of novelty, the claim differs from the most relevant of this prior art in the provision of a component of the "interlocking means" as an integral part of the construction rather than as a separate part.  In the absence of evidence going to the common general knowledge of a man skilled in the art as to the possibility of incorporating components as integral parts I cannot conclude that it would be obvious to do so.
         Mr. Dyson submitted that the invention as defined in claim 1 was obvious in the light of a number of specifications disclosing a "partial hinge" and in the light of the use in Australia of a barbecue which incorporates a "partial hinge".  A "partial hinge" is a hinge which can be separated into its two component parts after those parts have been pivoted relative to each other through a pre‑determined arc.  Claim 1 in its unamended form in effect defined the holding tank section and the seat section as being connected together by a partial hinge.  Claim 1 in its amended form can be interpreted as including the construction in which the two sections of the toilet are connected together by a two‑piece partial hinge, with each piece of the partial hinge being formed integrally with a section of the toilet.
         The opponent has put in evidence a number of US and UK specifications which were open to public inspection in Australia before the priority dates of both versions of claim 1 and each of which discloses the use of a partial hinge.
         As there is no evidence that the contents of those specifications were part of the common general knowledge in the relevant field in Australia before the relevant priority date they cannot be relied on to establish that the invention as defined in either version of claim 1 is obvious.
         The barbecue which incorporates a partial hinge is known as the "EL PATIO" barbecue.  That barbecue is illustrated in exhibits FD4 and FD5; which show a lower stove section and an upper lid enclosing section with the sections connected by an integral partial hinge.  The evidence shows that 119 of these barbecues were sold in Australia before November 1978, it is not clear from the evidence whether those sales are wholesale or retail.  (The priority date of the unamended version of claim 1 is 6 November, 1978).  I do not think that these sales can be relied on to establish common general knowledge in the relevant art in Australia.  Evidence of sales to retailers or to consumers does not establish that there were any sales to persons who could be described as "skilled addressees" in either of the fields of manufacture of barbecues or of manufacture of portable toilets.  Even if the evidence established that these sales had brought the existence of this type of construction to the attention of persons who were "skilled addressees" in the relevant art, it would not be sufficient to establish that this type of construction had become common general knowledge in that art.
Section 40
         Mr. Dyson submitted that a number of the claims were not fairly based on the matter described in the specification, in that a number of features described in the specification, and which would confer particular merit on the invention, were not included in claim 1.  In particular, the feature of a "partial hinge" is not included in all the claims.  I think it fair to say that the features to which Mr. Dyson referred are, in the specification as accepted, described as being preferred features rather than essential features which must be included in all the claims, and the objection on the ground of lack of fair basis has not been made out.
         The opposition has failed on all grounds and is dismissed.  I award costs in favour of the applicant.

(ALLEN EVANS)