Vanitone Pty Limited v. Formica Technology Inc.

[1991] APO 17

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application No. 578172 for a Patent by VANITONE PTY LIMITED and Opposition thereto under S.59 of the Patents Act 1952 by FORMICA TECHNOLOGY INC.

Background

Vanitone lodged this application on 6 December 1985, accompanied by a provisional specification, and lodged the complete specification on 14 November 1986. The Office advertised acceptance on 13 October 1988. On 13 January 1989 Formica lodged notice of opposition under s.59 of the Patents Act 1952. The matter came to hearing in the 1991 March Sydney sessions at 10 am on 15th instant.
          Mr Heathcote, patent attorney of Shelston Waters represented the applicant, and Mr Turner, patent attorney of Spruson & Ferguson, represented the opponent.
          Shortly before the hearing Mr Heathcote lodged an application under s.77 (Patents Act 1952) proposing a new statement of claims and consequential amendments to the description.  The s.77 request states the reason for the proposed amendment to be:
          "To more clearly define the invention described."
However, in a letter accompanying a copy of the request given to me at the time of the hearing he states that the "applicant has decided to amend his application with a view to settling the matter".  At this point my only comment is that the opponent, a US company, did not have sufficient time before the hearing to properly consider the proposed statement of claim.

The Specification
          The description in the specification as accepted commences:

"This invention relates to the production of moulded plastics articles, particularly slabs or sheets and rods of heavily filled, thermo-setting synthetic resinous material having the appearance of marble or other fine grained stone.

Typically articles of the kind in question are used as bench or table tops, as bathroom wash basin or vanity unit draining boards and the like.

Hitherto, small thermo-setting resin articles have been injection moulded from resin based compositions utilising heated dies and this has proved satisfactory; but when extensive sheets are required the mould costs associated with conventional injection moulding techniques become prohibitive.  This is primarily due to the high temperatures and pressures involved (at least several hundreds of degrees centrigrade and several thousands of pounds per square inch) and the need to maintain dimensional accuracy in the thickness of the finished sheet throughout its entire longitudinal and transverse extent.  When long rods are required a similar difficulty arises.  Indeed the problems are such that injection moulding is avoided and such articles are either not used or are fabricated by other techniques.

One widely adopted expedient for the production of sheets is to utilise a chemically reactive two part resin base and to float a layer of the uncured composition onto a moving conveyor for its support until it sets.  The conveyor is usually vibrated to settle the layer and hasten the migration of air bubbles in the composition to the upper surface.  Two major disabilities arise.  Firstly, the long setting time requires either a long, and therefore expensive, conveyor or a very slowly moving conveyor with a consequent low production rate and secondly a finish machining operation is required to obtain dimensional accuracy and to eliminate air bubbles in the surface layer of the sheet.  The latter is particularly objectionable because it is inherently wasteful of a very expensive raw material."

Having discussed the prior art and the associated problems, the description then explains the purpose of the invention in the following terms:

"With the foregoing in mind the invention was devised to provide for the moulding of sheets and rods of reaction-setting compositions utilising relatively cheap and lightly constructed moulding equipment and with very little waste."

There is a specific description of the invention in terms corresponding to those of claim 1.  The claims (as accepted) are divided into two sections respectively defining processes and apparati.  Claims 1 and 9, appearing below, are the broadest claims in their respective sections:

"1.A process for the moulding of articles of reaction setting compositions comprising:

de-aerating the main or predominating ingredient of a composition, mixing the main ingredient with a minor ingredient,

flowing said mixture under air-less conditions into the bottom of a vented but essentially closed mould cavity defined by a mould assembly,

allowing the composition to set in the mould cavity and then stripping said mould assembly from the finished article."

"9.Apparatus for moulding of articles from a reaction setting composition comprising:

means for de-aerating a main or predominating ingredient of said composition,

means for mixing said main ingredient with a minor ingredient to form a mixture,

means for flowing said mixture under air-less conditions into the bottom of a vented but essentially closed mould cavity defined by a mould assembly,

said mould assembly being adapted to be stripped away from the finished article once setting of said composition has finished."

The proposed amended Claim 1 is somewhat narrower than the claim as accepted.  The step of flowing the mixture under airless conditions has been redefined as;

"intermittently flowing said mixture under air-less conditions into the bottom of a vented but essentially closed mould cavity defined by a mould assembly and allowing for pressure equalisation within said mould cavity during each pause in flow"

I have underlined the new material.
          Proposed amended claim 8 corresponds to claim 9 as accepted, and it incorporates changes corresponding to those made in Claim 1.  Thus the means for flowing has been redefined as;

"means for intermittently flowing said mixture under air-less conditions into the bottom of a vented but essentially closed mould cavity defined by a mould asembly, said means for flowing providing intermittent flowing of said mixture to allow for pressure equalization within said mould cavity."

Again I have underlined the new material.
The Evidence
          The evidence in support consists of a statutory declaration by Graham Brett accompanied by various exhibits.  Basically, Mr Brett deposes to quite extensive experience in the relevant art, and contends that most of what is claimed is common knowledge in that art : the exhibits from various texts, papers, and patent documents are to support his contention.  He suggests that the only novelty in the opposed application resides in the specific construction of the delivery pump of the apparatus.
          The evidence in answer consists of a statutory declaration by Andrew Barry, the actual inventor of the subject matter under opposition.  Mr Barry also deposes to extensive experience in the relevant art, he rebuts Mr Brett's contentions point by point, and suggests that his declaration is attacking the claimed invention by reason of dissecting it into various features rather than considering it as a whole combination.
          There is a further declaration by Mr Brett in reply.
Decision
          Having considered the evidence - in particular the exhibits provided by Mr Brett, I conclude that claims 1 and 9 as accepted lack novelty.
          I will now consider the equivalent proposed amended claims 1 and 8.  The process claim is now limited in that the step of flowing the mixture into the mould cavity is done intermittently, and a consequential step has been included viz. "allowing for pressure equalisation within said mould cavity during each pause in flow".  Mr Turner submitted that it was common before the priority date of the application - as could be seen from the evidence - to use reciprocating type pumps in the class of moulding apparatus involved.  He suggested that, accordingly, because of the manner in which a reciprocating pump operates, the flow would have to be intermittent.  He pointed to paragraph 22 of Mr Brett's declaration, which relates to claim 3 as accepted, the features of which have been inserted into proposed claim 1.  Mr Brett declares:

"Intermittent or pulsing of the mixture flow into a mould cavity relates directly to the type of pump which is selected to flow the mixture.  A high internal or bursting pressure is developed in the delivery cycle of the pump and lowering or equalisation of pressure is a natural occurring condition in the pump's performance between each delivery cycle.  This condition is naturally transferred to the mould cavity.  Pressure in the mould cavity can be readily adjusted by either, varying the delivery volume of the pump or its delivery cycle, or causing a variation in the duration of pulse between each delivery cycle.  These are characteristics of the pumps employed in moulding techniques prior to the date of application 578172."

What Mr Brett deposes is technically correct in my view.  However, proposed claim 1 is limited by a positive feature which associates with the intermittent flow a pause sufficient for equalization to take place.
          There is no evidence that the prior art processes operated in that way.  The proposed apparatus claim 8 is not in the same situation.  This claim is characterised by the additional feature and wording (compared to accepted claim 9) of

"means for intermittently flowing said mixture ... said means for flowing providing intermittent flowing of said mixture to allow for pressure equalization within said mould cavity ..."

It seems to me that the only feature of apparatus added by these words relates to the qualification "intermittently".  It may well be that the intermittent flowing produced by the flow means is to allow for pressure equalization, but it must be remembered that this claim is defining apparatus, and not a process : there are in fact no means defined to provide for that pressure equalization in synchronism with the intermittent flow means.  Consequently, in my opinion, Mr Brett's comments in paragraph 22 of his declaration (quoted above) are applicable to proposed claim 8.
          In this respect, I draw attention to paragraph 22 of Mr Barry's declaration in the evidence in answer in which he deposes:

The opponent is missing the point.  Of course the venting of any mould is necessary in any injection moulding.  It is correct that 'If you cannot get air out of the mould, you cannot get the mixture in', however with our method, vents are opened and closed and opened again to allow the internal pressure to come to atmospheric pressure before hardening of the molding takes place."

It may be also that this statement has some bearing on the way the process claim should be drafted.
Conclusion
          I have found that the opposition succeeds on the ground of lack of novelty and that the proposed new statement of claim does not remove that ground.  Clearly, there is patentable subject matter disclosed in the specification, and I allow the applicant 60 days from the date of this decision to propose amendments accordingly.
          I award costs against the applicant.

(J.L. ROVETA)
  Assistant Commissioner of Patents

Attorneys for the Applicant: Shelston Waters
Attorneys for the Opponent : Spruson & Ferguson