Trevor Michael Endres v RJ & LG Lister
[1991] APO 25
•12 July 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Petty Patent No. 590505 in the name of TREVOR MICHAEL ENDRES and
Notice under Section 68B(3) of the Patents Act 1952 by RJ & LG LISTER.
Background.
Application No. PH 5369 accompanied by a provisional specification was lodged on 28 April 1986. Complete-after-provisional application
No. 71988/87 was lodged on 24 April 1987 , accepted as application
No. 590705 on 13 June 1989 and sealed on 24 April 1990. Petty patent application No. 36355/89 which is a divisional application of application No. 71988/87 was lodged on 26 May 1989 and sealed on 16 October 1989 as petty patent No.590505. Petty patent No. 590505 therefore has the earliest priority date of 28 April 1986.
The patentee lodged an application under Section 68B of the Patents Act 1952 for an extension of term on 14 September 1990. On the same day R J & L G LISTER lodged a Notice of Information pursuant to Section 68B(3) accompanied by a statutory declaration by Robert James Lister pursuant to Regulation 19C.
The Notice asserts that the facts establish grounds in accordance with paragraphs (b) to (g) of Section 100 (1) of the Patents Act 1952.
This matter is now proceeding under corresponding provisions of the Patents Act 1990 (namely S.28 and S.69) by virtue of S.235.
The matter was set down for hearing but prior to the Hearing both the informant, through his Patent Attorneys, Pizzey & Company and the patentee, through his Patent Attorneys, Peter Maxwell & Associates, advised that they would not be represented at the hearing and would rely instead on the declaration and a written submission respectively.
The Specification
The specification indicates that the invention relates to a hydraulic lift and in particular to a hydraulic lift for domestic application for transporting disabled persons between levels in multistorey accommodation.
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The specification acknowledges that hydraulic rams have been used in hydraulic circuits to perform work and that one application of the hydraulic ram has been in elevating persons or materials between different levels by using mains water as the hydraulic driving fluid applied to the ram. In particular, one prior art patent application describes a system where a single hydraulic ram is driven by mains pressure to elevate a platform from a floor to counter height.
The problem with the prior art is the inherent instability of the single ram arrangement when heavy weights have to be raised over substantially greater distances and as such is totally unsuitable for moving persons, particularly disabled persons, who may fall from the platform.
The principal object of the invention is to provide a hydraulic lift having a stable platform over the total distance of travel while a further object is to provide a hydraulic lift that is safe for transportation of disabled persons between levels of multistorey accommodation.
The invention is described in broad terms by way of a consistory statement which corresponds to the accepted claim.
The claim reads as follows:
A hydraulic lift assembly including a frame assembly
having two vertically spaced stations, a lift carriage
moveable between the stations, carriage guide means on which
the carriage can travel, two hydraulic rams coupled adjacent
respective sides of the carriage and being adapted to drive
the carriage along the guide means, a hydraulic circuit
adapted to be connected to a source of hydraulic fluid and
to regulate flow of hydraulic fluid into and out of said
rams, each said station having a door, each said door having
a lock which can be activated to lock its associated door
closed or deactivated to allow its associated door to be
opened, all said locks being activated automatically when
the carriage is in transit between the stations, and one
said lock being deactivated automatically on arrival of said
carriage at the station associated with said one lock, and
hydraulic circuit control means operable from within said
carriage to selectively introduce or drain hydraulic fluid
from said rams only when said doors are closed and said
locks are activated.
Statutory Declaration by Robert James Lister.
Mr.Lister declares among other things:
(a) that he is a fitter & turner and that he has been employed in the
lift industry since 1974,
(b) that during the period 1974 to 1987 he was employed as a lift
installation supervisor for E P L KONE PTY LTD,
(c) that since 1987 he has been self-employed and with his wife has been
trading as Lister Engineering in the field of lift maintenance and
construction,
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(d) that he is aware that in 1985 a lift was installed in the Sheraton
Hotel, Darwin, in accordance with ELEVATORS PTY LTD drawing no. 237/84
dated 21 January 1985 and is personally aware that the lift was
installed in accordance with Australian Standard AS 1735/3 PASSENGER
AND GOODS LIFTS - ELECTRO HYDRAULIC, published 7 April 1986,
(e) that the claim is neither clear or succinct,
(f) that the invention claimed is obvious and does not involve an
inventive step having regard to what was known in Australia on
or before the priority date of the claim and,
(g) that the invention claimed was not novel in Australia on the priority
date of the claim.
Accompanying the declaration were two copies of drawing 237/84 and copies of the title page of Australian Standard AS 1735.2 showing the publication
date of 7 April 1986 and pages 34 to 40 plus copies of the title page of
Australian Standard AS 1735.3 showing the same publication date and page 20.
The declaration also identified which features of the claim were considered to be disclosed by drawing 237/84 making reference to one of the drawings which was marked-up to show the relevant features and, which features of the claim were disclosed in the Australian standards.
The declaration also explained why it was considered the claim was not clear or succinct.
Written Submission by Peter Maxwell and Associates.
The main points in rebuttal of the Statutory Declaration which I consider
relevant are as follows:
(a) the declarant has nowhere said that he has ever seen the Darwin lift
or witnessed its operation,
(b) it is not believed there is any lack of clarity or succinctness in
the claim and,
(c) it has not been established that the information relied upon to
supplement the exhibited drawing in relation to the claim is part of
the common general knowledge in relation to hydraulic lifts.
The submission also detailed why it was not believed there was any lack of
clarity or succinctness in the claim and discusses at length why it is considered the information provided by the alleged anticipation is not equal to that provided by the patentee.
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Decision
Although the Notice asserts the facts to establish grounds in accordance with paragraphs (b) to (g) of Section 100 (1) [1952 Act], only grounds (c), (e) and (g) have been addressed in the declaration, i.e. non-compliance with S.40, lack of novelty and obviousness.
As to the question of whether the specification fails to comply with S.40 I refer to what the parties have submitted.
In his declaration Mr. Lister states:
'(9) The expression "a lock which can be activated to lock its
associated door closed or deactivated to allow its associated door
to be opened" is not a limiting feature of the claim in any sense
as this is a description of all locks.
(10) The expression " all said locks being activated automatically when
the carriage is in transit between stations" is not a limiting
feature of the claim in any sense in that this feature is implicit
in the expression "to selectively introduce or drain hydraulic
fluid from said rams only when said doors are closed and said
locks are activated." I state this because it follows from the
latter expression, which means that the carriage moves only when
the doors are closed and locked, that the doors are locked when
the carriage is moving.
(11) It is my opinion that it follows from the reasoning in paragraphs
(9) and (10) above that the claim of Petty patent 590505 is
neither clear nor succinct.'
In their submission on behalf of the patentee, Peter Maxwell & Associates
state:
'The claim defines the operation of the locks and the associated doors
in the words chosen for good reason and goes to the essence of what
the inventor was trying to achieve in arriving at his invention. The
claim defines the operation of the doors and locks using the following
words:-
"Each said door having a lock which can be activated to lock its
associated door closed or deactivated to allow its associated door to
be opened (emphasis added), all said locks being activated
automatically when the carriage is in transit between stations,
and one said lock being deactivated automatically on arrival of said
carriage at the station associated with said one lock" (emphasis
added).
It is our firm view clear, [which presumably is meant to read firm
clear view] that the claim defines a lift assembly where the doors
are closed during transit of the carriage and that at arrival at a
station, the lock at that station is deactivated but the door remains
closed until it is opened.'
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If I understand Mr. Lister correctly, what he is saying in his declaration is that the first expression "a lock which can be activated to lock its associated door closed or deactivated to allow its associated door to be opened" adds nothing to the claim since this is a feature of all locks, while the second expression "all said locks being activated automatically when the carriage is in transit" similarly adds nothing to the claim since this feature is implicit in the later third expression " to selectively introduce or drain hydraulic fluid from the rams only when said doors are closed and said locks are activated"
I do not agree with the proposition that the expressions add nothing to the claim. Just because a door has a lock it does not necessarily follow that the particular lock can be activated to lock its associated door closed or deactivated to allow its associated door to be opened and therefore I do not agree that the words used in the first expression are superfluous. Neither do I agree it follows that, because hydraulic fluid is introduced or drained from the rams only when the doors are closed and the locks activated, all the locks must as a consequence be activated automatically when the carriage is in transit. The second expression therefore is similarly not superfluous. I am satisfied that the first and second expressions are necessary to augment the defined arrangement of the locks and their activation and deactivation relative to the position of the carriage. I therefore find that the informant has not established that the claim does not meet the requirements of S.40 (1952 Act) because it is neither clear nor succinct.
There is however one observation I would make about the specification. Lines 1 to 5 of page 8 of the specification read "-- pivot bar 47, pivots about a pivot 48 and is actuated by tab 49 on lift car 17 as lift car 17 reaches the station 12 to lift pawl 44 away from teeth 45. Hence barrel bolt 40 may be slid back through hole 23 thereby closing valve 27 and opening door 19.--". This I take to describe a two stage locking mechanism. Lines 8 to 10 of page 6 on the other hand read " -- On reaching the first level station, the carriage 17 enables lock 21 of station 13 to be deactivated thereby unlocking door 20. --". In my interpretation this suggests a single stage lock. Thus there is some apparent conflict and, as a result, the addressee may be left confused as to the best method of performance.
I now turn to the questions of lack of novelty and obviousness. In his declaration, Mr. Lister states he is aware that in 1985 a lift was installed in Darwin in accordance with Elevators Pty. Ltd. drawing no. 237/84, dated 21 January 1985, and is personally aware that the lift was installed in accordance with Australian Standard AS 1735/3, published 7 April, 1986. I do not fully understand what the difference is between "aware" and "personally aware" and can only presume that Mr. Lister is saying that he himself is in a position to state that the lift was installed in accordance with Australian Standard AS 1735/3 but had to rely on some other party or medium to obtain the facts about the actual lift.
Certainly Mr. Lister does not say that he has seen the lift nor does he provide any corroborating evidence to the effect that the lift was installed when he says it was or that it was installed in accordance with 6
Drawing no. 237/84 and Australian Standard AS 1735/3. In this I agree with the submission on behalf of the patentee. Just how a lift can be installed in 1985 in accordance with an Australian standard not published until April 1986 has not been explained and I therefore conclude that the evidence provided by Mr. Lister does not establish that the lift was installed in 1985 in accordance with Elevators Pty. Ltd. drawing no. 237/84 dated 21 January 1985 and Australian Standard AS 1735/3, "published 7 April, 1986".
I now have to consider whether the Elevators drawing 237/84 when read in the light of Australian Standard AS 1735/3 constitutes grounds for revoking petty patent 590505 under Section 100 (1) [1952 Act] paragraphs (e) and (g). Regulation 19C(1) [1952 Act] requires that a Notice under sub-section 68B(3) based on a document published in Australia shall be accompanied by a declaration establishing when and where the document was so published. One of the effects of this is that the Commissioner is provided with the necessary evidence on which to make an informed decision. It is also worth noting that in matters such as this, the onus is on the informant to make out the case against the patent and to supply relevant evidence to support that case.
No information has been provided as to when or where Elevators Pty. Ltd. drawing no. 237/84 was made available to the public and while the title page of Australian Standard AS 1735/3 states that the standard was "published on 7 April, 1986", here again no information has been provided as to when or where the standard was made available to the public. In this regard the Notice does not conform to Regulation 19C(1).
I can therefore only make a decision based on the incomplete evidence
before me. With particular reference to drawing no. 237/84 the one sure fact is that it was known to the person in Elevators Pty. Ltd. who drew it. I note that while there are initials in the "Drawn" box there are no initials in the "Checked" box and without evidence to the contrary it is possible that the only person who knew about the drawing was indeed the person who drew it. There is no evidence that, before the priority date of the claim, the drawing was ever communicated to another person or body and there are no stamps on the drawing for example indicating that it was submitted to an outside regulatory authority.
I next have to consider whether a drawing produced by a person in the employ of Elevators Pty. Ltd. and with no evidence that it was communicated further constitutes public knowledge i.e. is available to the public. In Bristol-Myers Co's Application [1968] RPC 12, the Court of Appeal held that where a document is made available to one person without restraint on its subsequent use then it is available to the public and the contents are published for the purpose of the Act.
I have no evidence before me as to whether the person who produced drawing
no. 237/84 was without restraint on its subsequent use. Usually people employed in Design Departments of firms are in sensitive positions and any
discoveries or inventions they make in the course of their employment is the property of their employer and it is hardly likely therefore that they are free to pass on information to members of the public regarding projects they are working on. Further it is convention if not law that "servants their masters' secrets shall keep". In the absence of evidence 7
to the contrary I conclude that the person who produced drawing no. 237/84 was not without restraint on its subsequent use and hence it has not been established that the drawing was published before the priority date of the claim.
Given my conclusion that drawing no. 237/84 was not published before the
priority date of the claim I do not need to consider whether it, when read in conjunction with Australian Standard AS 1735/3, constitutes grounds for revoking Petty Patent 590505 under Section 100 (1) paragraphs (e) and (g) of the Patents Act 1952. It follows that the informant has not establised the grounds of lack of novelty and obviousness against the patent.
Conclusion.
I have decided that the invention, the subject of the claim of petty patent specification no. 590505, does not lack novelty or fail due to obviousness. While I have referred to a S.40 deficiency with respect to the best method of performance of the invention, I do not consider that it affects the validity of the patent.
Accordingly, I extend the term of petty patent no. 590505.
(MIKE SELLARS)
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Peter Maxwell & Associates.
Patent attorneys for the informant : Pizzey & Company.
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