ABB Power T&D Co Inc v Electrowatt Technology Innovation Corp

[2000] APO 75

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 688711 and No. 689059 in the name of ABB POWER T&D CO INC

Title:          Method and Apparatus for Electronic Meter Testing

Action:          Opposition under section 59 (Patents Act 1990) by ELECTROWATT TECHNOLOGY INNOVATION CORP

Decision:          Issued            .

Abstract

The applications are respectively for the method and apparatus forms of the invention, and are opposed on the grounds of lack of novelty (including prior use), obviousness and non-compliance with section 40.  Consideration of the standard of proof required in proceedings before the Commissioner; construction of words in claims; common general knowledge in  field.

Found that the claims are novel, but even if not novel the evidence would not have established prior use, and except for one minor matter in the claims of 689059, the specifications comply with section 40.

Found that all of the claims of both applications are obvious in view of a single non-patent document and common general knowledge.  Consideration of appropriate costs in all of the circumstances.  Opportunity to amend.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 688711 and No. 689059 by ABB POWER T&D CO INC and opposition thereto by ELECTROWATT TECHNOLOGY INNOVATION CORP

BACKGROUND

Patent applications 688711 ('711) and 689059 ('059) are respectively directed toward the method and apparatus forms of the invention.  As the grounds of opposition, the particulars and all of the evidence are identical in each case, it is convenient to deal with them in a single written decision.  Consequently the following should be read as applying to both applications, unless the contrary is indicated.

Both applications were filed on 25 March 1997 by ABB POWER T&D CO INC (the applicant), being divisionals of 675921, from which they claim an earliest priority date of 21 February 1992.  They were advertised accepted on 12 and 19 March 1998 respectively.  Consequently there is some difference between them in subsequent time limits, but nothing depends on this.

In due course notices of opposition were filed by ELECTROWATT TECHNOLOGY INNOVATION CORP (the opponent), followed by statements of grounds and particulars.  The grounds relied on (after an agreed amendment, see below) are sections 59(b) and (c), that is sections 18(1)(b)(i) and (ii) and 40(2) and (3).

After some unopposed extensions of time, filing of the evidence in support was completed on 3 March 1999.  On 22 February 1999 a request was made under regulation 5.9 to amend the statement of grounds and particulars, together with a request under regulation 5.10 for directions.  There was an objection to the proposed amendments, and in his decision dated 22 April 1999 the delegate refused to allow the amendments.  Essentially there was then no need to consider the request for directions.

Application was made to the Federal Court for a review of this decision under the AD(JR) Act 1977, and pursuant to this the Commissioner made an agreed direction that the time for filing evidence in answer would be three months from the time the outcome of the application for review was known, or three months from the time of withdrawal of that application, as the case may be.

In the event the application for review was withdrawn, and after several unopposed extensions of time the evidence in answer was completed on 16 May 2000, and the evidence in reply on         11 August 2000.  The basis for withdrawal of the Court action appears to be an agreed amendment to the statement of grounds and particulars, filed and allowed on 21 September 1999.  The agreed amendment is principally that previously opposed and rejected by the delegate.

'711 was amended under section 104 just prior to the hearing.

A hearing in the matter was held in Canberra on 9 November 2000.  The applicant was represented by Ms Julia Baird of Counsel, and Mr Michael Molins, patent attorney of Peter Maxwell and Associates.  The opponent was represented by Mr Robert Miller and Mr Gideon van Rensburg, patent attorney and technical assistant respectively, of Spruson & Ferguson.

THE SPECIFICATION

The invention relates to meters of the kind used for measuring the supply of electric power, and more specifically the (in situ) testing of such meters.  An extract from the introductory part of the description follows:

"Background of the Invention:

Techniques and devices for metering the various forms of electrical energy are well known.  Meters, such as utility power meters, can be of two types, namely, electro-mechanical based meters whose output is generated by a rotating disc and electronic based meters whose output component is generated electronically.  ……..

It will be appreciated that electronic meters have gained considerable acceptance due to their increasing reliability and extended ambient temperature ranges of operation.  Consequently, various forms of electronic based meters have been proposed which are virtually free of any moving parts.  In the last ten years several meters have been proposed which include a microprocessor.

Testing of electronic meters has always been a problem.  A special mode of register operation known in the industry as the test mode has been available to ease register testing, however little has been done to improve overall meter testing.  Electronic meters have the potential of providing faster test times, multiple metering functions and calibration of the meter through software adjustment.  However implementing such functions can be expensive and complicated.  ……..

Consequently, a need exists for an electronic meter having a relatively simple means of testing the meter."

Then follows consistory statements, and an extremely detailed description which it is neither practical nor necessary to go into, as the invention can be understood from the claims.  There are 23 claims in '059; the two independent claims are as follows:

"1.         An electronic energy meter that senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements, comprising:
              a processing system for selecting one of said various power measurements and defining the same as the selected power measurement and for generating a pulsed test signal related to the selected power measurement for testing the operation of the meter; and
              a bi-directional optical communications port coupled to the processing system for transmitting the pulsed test signal from the meter.

14.         An electronic energy meter that senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements including real power, reactive power, and apparent power and wherein said electronic energy meter comprises:
              a communications interface for receiving a data command identifying a selected one of the various power measurements from a source external to the meter;
              a processing system coupled to the communications interface for processing the data command and generating a pulsed test signal related to the selected power measurement; and
              a test interface coupled to the processing system for transmitting the pulsed test signal to a testing device external to the meter."

'711 concludes with 37 claims; the three independents are as follows:

"1.         A method of providing optical test signals for an electronic energy meter which senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements, and wherein said electronic energy meter comprises an optical communications port said method comprising the steps of:
              selecting one of said various power measurements and defining the same as the selected power measurement;
              generating a pulsed test signal related to the selected power measurement; and
              transmitting the pulsed test signal over said optical communications port so that standard calibration test equipment can be used to receive and process the transmitted pulsed test signal.

14.         A method of providing optical test signals for an electronic energy meter which senses input voltage and current signals and processes the input voltage and current signals to generate power measurements including real power, reactive power, and apparent power and wherein said electronic energy meter comprises a communications interface and a test interface, said method comprising the steps of:
   receiving a data command over the communications interface;
              selecting, in response to the data command, one of the various power measurements by selecting between real power, reactive power and apparent power to define a selected power measurement; and
              generating a pulsed test signal related to the selected power measurement; and
              transmitting the pulsed test signal over the test interface.

23.         A method of providing optical test signals for an electronic energy meter which senses input voltage and current signals and processes the input voltage and current signals to generate various power measurements, and wherein said electronic energy meter comprises an optical communications port, said method comprising the steps of:
              selecting one of said various power measurements and defining the same as the selected power measurement;
              generating a pulsed test signal related to the selected power measurement; and
              transmitting the pulsed test signal over said communications port."

EVIDENCE

From the opponent

· Two statutory declarations by Gideon van Rensburg, technical assistant at Spruson & Ferguson, with exhibits EW-1 to EW-9.  The exhibits include patent specifications and various technical documents.  The declarations go only to the identification of the exhibits and their link to the particulars cited.

· Statutory declaration by Victor Eric Church with exhibits C-1 to C-4.  Mr Church has many years engineering experience in the electrical industry, most recently as a consultant in the deregulated market.  The exhibits are several technical papers regarding metering, and manufacturer's literature ('the brochure' or 'the Nilsen meter brochure') for a specific meter, namely the Nilsen EMS 2100 Electricity Consumption Analyser ('the Nilsen meter').

· Statutory declaration by Andrew James Watters with single exhibit JW-1.  Mr Watters is general manager of the company engaged in the production of the Nilsen meter.  The exhibit is an extract from a trade journal.

· As evidence in reply, a second statutory declaration by Church in which he further comments on the exhibits in support of the opposition, and on the statements made by Lee and Hemminger (see below).

From the applicant

· Statutory declaration by Russell Frederick Lee with single exhibit RL-1, being his CV.  Mr Lee is an electrical and mechanical engineer with many years experience.  His declaration is principally a commentary on the statements by Church and the exhibits to Rensburg.

· Statutory declaration by Rodney C Hemminger.  Mr Hemminger is also an experienced electrical engineer, employed by the present applicant and joint inventor of the present invention.  In his declaration he comments on the statements of Church.

SUBMISSIONS

At the hearing it was indicated that the opponent now relied solely on the Nilsen meter and evidence relating to it.  In view of this, Ms Baird stated that she would seek costs, irrespective of the outcome of the hearing.  Ms Baird also took objection to a number of other matters, ie that hand-up submissions from Mr Miller were in the nature of further evidence, paragraphs 30-54 of the second Church declaration should be disallowed as they were not strictly evidence in reply, and section 40 matters which were not particularised should not be addressed.

Considering each in turn briefly, in my opinion the hand-up submissions were prima facie (and in fact are) just that and not further evidence, the Commissioner is not bound by court-applicable rules of evidence, and in any case I do not consider that the evidence in reply does include any further evidence, and it would be convenient to allow the non-particularised section 40 issues to be briefly addressed for completeness.  I then allowed the applicant 14 days from the date of the hearing in which to file written submissions in response to these matters, should they so wish, and several pages of submissions were filed on 23 November 2000.
In the following I briefly set out the main submissions of the parties.

From the opponent

· It is not contended that any of the features of claim 1 of' '059 are not essential.

· This claim is rendered not novel by the publication, sale and prior use in Australia of the Nilsen meter, which has all of the features claimed.

· The claim has means to generate "various power measurements", and the description and dependent claims show that this includes real, reactive and apparent power, while the Nilsen meter measures only kilowatt-hours (kWh, ie real power).  However this is only a reflection of the intended respective applications.  While the meter described and claimed is intended for use in industry with large and complex loads, the Nilsen meter is intended for domestic use where reactive loading is relatively minor, and not a factor taken into account for billing purposes.

· But in any case the Nilsen meter can be set to measure and test two separate circuits, the "main circuit" and the "controlled circuit".  The latter is activated by a user pressing the "boost button", which is primarily for the purpose of supplying power to an off-peak hot water heater at any time of day.  Both measurements are of kWhs, but being on different circuits fall within the claimed "various power measurements".

· For the same reason independent apparatus claim 14 and independent method claims 1, 14 and 23 are not novel, together with dependent apparatus claims 8 and 12, and dependent method claims 8, 12, 23, 30, 34 and 36.  The features can all be found in the Nilsen meter.

· In the alternative, so far as the submission regarding the meaning of "various power measurements" is concerned, the claims are obvious in view of the Nilsen meter and common general knowledge (cgk) in the art of electricity metering.

· The applicant's declarant, Hemminger, is a US resident and is not qualified to comment on the cgk in the art in Australia.

· In contrast to the opponent's declarant, Church, the CV of the applicant's other declarant, Lee, shows that he is a forensic electrical and mechanical engineer and not a person skilled in the art of power metering.

· In reply to some supposed vagueness in the statements of Church, they are in his own words, and matters stated and not otherwise countered should be considered as sufficiently established as is necessary in proceedings before the Commissioner.

· Similarly in relation to criticism of the proof of publication and prior use in Australia of the Nilsen meter.  Leave to file further evidence would be sought should that proof be found to be inadequate.

· Submissions regarding some section 40 matters which I will refer to in my decision.

From the applicant

· As a general statement, the burden of proof in this opposition lies with the opponent, and the benefit of any doubt must be given to the applicant.

· The delegate's decision must be based on material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined.  If it has any probative value, the weight to be attached to it is a matter for the delegate (Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666). In assessing the probative value of any material, any hearsay nature of the material, or lack of objective documentation or independent corroboration, are matters to be taken into account and weighed accordingly (McKay v Shirlow Pty Ltd (1985) 7 IPR 135).

· Distinction is made between the Nilsen meter and the brochure referring to the meter.  The meter is not in evidence, only the brochure.

· The evidence does not clearly establish that the meter described in the brochure was ever sold or otherwise made available to the public in Australia, or anywhere else.

· The evidence also does not establish that the brochure was published in Australia, or elsewhere.

· The declaration by Watters is seriously defective.  It does not say that he is general manager of the Australian branch of the Nilsen organisation rather than some other branch, that the sales declared made were made in Australia or where else they were made, nor does it establish that the sales were of the meter described in the brochure.  The exhibit is a murky copy of the front page of a trade journal from which it is impossible to conclude anything.

· The Church declarations are full of vague and generalised statements which are unsubstantiated.  His assertions that matters are commonly known or well known are not supported by any objectively assessable evidence.

· Exhibit EW-9 to van Rensburg is AU patent specification 597331, with a prima facie publication date of 13 August 1987.  This appears to have some correspondence with the meter described in the Nilsen brochure.  However it is impermissible to read the patent and the brochure together, as Church seems to do.  In addition, Church does not say that it is usual for meter engineers to consult patent specifications.

· The opponent's evidence has little probative value generally, and fails to establish the cgk in the relevant field as at the priority date.  Consequently the ground of obviousness is not made out.

· As far as the ground of novelty is concerned, the dictionary meaning of "various", as in "various power measurements", clearly distinguishes the invention from the Nilsen meter.  Church's attempts to argue around this in his second declaration are tortured and highly artificial, and even then he concedes that "the Nilsen meter is essentially two real power meters in the one enlosure,".

· As for section 40 and the single item particularised, the reference to "multiplexing" in the description is only an exemplification of the invention.  Matters not particularised but addressed at the hearing and in the hand-up will be responded to by written submissions within the allowed 14 days.
· Mr Miller's hand-up submissions at the hearing included diagrams which purport to be renditions of claim 1, and of the Nilsen meter.  It is submitted that they are inaccurate and incomplete, in a number of respects.

· With regard to the section 40 hand-up submissions, it is noted that the opponent's expert Church had no apparent difficulty in understanding the claims, and in any case the alleged lack of clarity and fair basis is rebutted for given reasons.

DECISION

Standard of Proof

The standard of proof required in proceedings before the Commissioner is the civil standard, ie on the balance of probabilities.  See Dunlop's Holdings Ltd's Application [1979] RPC 523 and Seiller's Application [1970] RPC 103. Functioning as a tribunal, the Commissioner is not bound by the rules of evidence or procedure applicable to a court of law, but nevertheless must reach a decision based on rationally probative material, ie material which tends rationally to show the existence or non-existence of facts relevant to the decision. The weight to be given to material of probative value is a matter for the Commissioner. See Minister for Immigration and Ethnic Affairs v Pochi (1980) 4 ALD 139 and R v War Pensions Entitlement Appeals Tribunal; Ex parte Bott (1933) 50 CLR 228.

In the present case the applicant argues that the evidence regarding the Nilsen meter is flawed, as a result of which the opposition has not made out its case.  Primarily the applicant argues:

· The Nilsen meter is not in evidence.

· The evidence does not establish that the Nilsen meter brochure was published in Australia, or anywhere.

· The evidence does not establish that the meter described in the brochure was ever actually sold or otherwise made available to the public in Australia, or anywhere.

· The Watters declaration fails to establish (i) his exact position in the Nilsen organisation, (ii) where the declared meter sales were made, (iii) that the sales were of the meter described in the brochure.

I will consider each of these in turn.  I do not believe the fact that the Nilsen meter is not in evidence is very relevant.  Oppositions usually rely on documentary evidence, and being electrical apparatus an actual meter is unlikely to be helpful, except perhaps in the case of alleged prior use, which is a matter I consider later.

The brochure is titled "EMS 2100 Electricity Consumption Analyser".  The first page of text includes the statement:

"The Industrial Design Council of Australia having critically assessed and tested the EMS2100 Analyser in over 43 aspects of design, bestowed the 1988 Australian Design Award on the EMS 2100 Analyser."

The cover sheet of the brochure includes a panel stating "Australian Design Award 1988" and carries the Design Award logo.  There is therefore no reason to think that the EMS 2100 Analyser (the Nilsen meter) described in the brochure did not receive an Australian Design Award in 1988.  Not including the cover sheet the brochure consists of 15 A4 pages, of detailed technical specification and description.

It is true there is no direct evidence of publication of the brochure, and certainly not of an exact date, but it is clearly a product guide; it even includes dimensions and a template for mounting holes.  It could be expected that it would have been published fairly shortly after the Award was granted on account of its potential commercial benefit, and that could be several years before the earliest priority date of 21 February 1992.  I note here that while the opponent does not concede this date, no submissions have been made, and I will proceed as if this is the correct date.

While better evidence of publication would be required if the date in question approached the priority date, I think that in all the circumstances here, and in the absence of controverting evidence, I am entitled to conclude the brochure was published before the priority date.

On the third point, while I am not familiar with the Design Award procedures, it seems unlikely to me that a product could be granted an Award without being made publicly available in the relevant sense, unless the disclosure to the body responsible for the granting of Awards is in confidence (Bristol-Meyers Co's Application [1969] RPC 146.). This is a matter which could be addressed by evidence, and there is none before me. Even if this were so, it seems to me that the announcement of the grant of an Award to a product may effectively be equivalent to the publication of the product. But I could be wrong in this and I do not rely on it.

However in his first declaration at paragraph 38 Church says "In the late 1980's Nilsen Industrial Electronics designed the EMS 2100 Electricity Consumption Analyser.  …..This meter was well known and was being trialed in Australia before 1992….."

At paragraph 43 he says "The EMS 2100 was marketed to the Australian electricity distributors from the late 1980s, and is still in use today.  Trials of the meter were carried out by most of the larger distributors in the late 1980s and early 1990s, with the operation and testing procedures well known throughout the industry from presentations made by Nilsen Industrial Electronics."

This certainly suggests that the meter was available and used in public before the priority date, though it is not entirely unambiguous; the trials and presentations could have been conducted in confidence.

I turn now to the Watters declaration and its exhibit.  In the declaration Watters states that he lives in the Victorian suburb of West Heidelberg, and since 1992 has held the position of General Manager of Nilsen Industrial Electronics Pty Ltd, though it is not clear where he was employed prior to this.  The brochure indicates that this company has its Australian Head Office, also in West Heidelberg Victoria, and a Sales office in the UK, with a different company name.  Obviously Watters is employed by the Nilsen company in Australia.

He then states that company records (not in evidence) show that the brochure entitled "EMS Electricity Consumption Analyser" was produced between May 1986 and June 1987.  I do not know what this means since, as I have said, the copy of the brochure in evidence bears a Design Award date of 1988.  However nothing follows from this as the dates given by Watters are earlier still, and I have already decided that the brochure in evidence has been published.

He then declares that company delivery dockets (not in evidence) show sales of the EMS Electricity Consumption Analyser to be 5200 units up to December 1988, and 47000 units up to January 1992.  There is no statement or evidence as to where or to whom these sales were made.

The single exhibit appears to be a (not very good) copy of the front page of a trade journal entitled "Electrical Engineer", dated December 1987.  Watters relies on this disclosure to support his statement that the "EMS 2100 Electricity Consumption Analyser itself was promoted to my company's customers, and the trade generally in 1987", but in my opinion it does nothing of the sort.  All it shows is a reproduction of a photo of what appears to be some sort of control panel, which has fitted to it a number of devices which look similar in external appearance to the picture of the EMS 2100 Analyser shown in the brochure.  It falls far short of showing that the respective devices are in fact the same.  It is also not clear where this trade journal was published, or where the photo was taken.

While I do not disregard the statements from Church referred to above, it seems to me that in the circumstances of this case a claim of 'prior use' could be convincingly established by evidence which should not be unduly difficult to obtain, in the form of names, dates, locations etc.  In my opinion the declaration and evidence of Watters fails in this regard.  However I accept that the Nilsen meter as described in the brochure (exhibit C-4 to Church), and the brochure itself, were publicly available within the meaning of section 7 of the Act.

Novelty

It is settled that the test for novelty is the reverse infringement test, in which, to establish want of novelty in a claim, each and every one of the essential features of the claim must be found in the allegedly infringing article.  See Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 and Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367.

I can see no reason to regard any of the features of the respective broadest claims as inessential, and this was conceded at the hearing.  Some diagrams said to represent claim 1 and the Nilsen meter were handed up by the opponent at the hearing for my assistance.  This can sometimes be helpful, but can also lead to error if the diagram is relied on in place of the words of the claim, read in context.  In subsequent written submissions the applicant complained of the accuracy of the diagrams, and in this decision I do not rely on them.

As is recognised by the parties, the critical factor in making a decision under this heading is the construction to be given to the words "various power measurements" used in each of the independent claims (except claim 14 in both applications which specifies measures of real, reactive and apparent power).

It is not in dispute that the Nilsen meter measures only real power.  However the opponent argues that the Nilsen meter can measure real power on two separate circuits (main and controlled), and this falls within the claimed "various power measurements".

The applicant referred me to the dictionary definition of "various".  Thus the entry (so far as is relevant) in The Macquarie Encyclopedic Dictionary (1990) is:

"various/ 1. differing from one another, or of different kinds, as two or more things.          2. divers, several, or many.  3. exhibiting or marked by variety or diversity.  4. differing in different parts, or presenting differing aspects."

It seems to me that this definition tends to support the view of the applicant that " various" power measurements does not include plural measures of a single power parameter.  This is particularly the case when the claim(s) are read in context, which is the metering of power consumption in large (eg 3 phase) reactive (eg motors, fluorescent lights) installations, in which utilities may use power measures other than real power for billing purposes.

A further difference between the apparatus claims and the Nilsen meter appears to be in the way the power measurements are chosen.  While the claims define "a processing system for selecting one of said various power measurements", the Nilsen meter requires the user to manually remove a sealed terminal cover and temporarily move a mode switch from a "normal" to a "set" position for measurement to be made on the controlled circuit.

In my opinion the Nilsen meter does not disclose the claimed "various power measurements" and consequently the lack of novelty ground of opposition fails.

Inventive Step

The question of inventive step or obviousness has to be decided against the background of the common general knowledge (cgk) in the art, in the patent area, at the priority date. Also cgk can be taken with a prior disclosure, so long as the person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant (section 7(2) and (3), Patents Act 1990).

Thus an essential step in establishing obviousness is to establish the cgk upon which that determination is to be grounded.  In Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 292 Aickin said:

"The notion of common general knowledge involves the use of that which is known or used by those in the relevant 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."

In this case there is no doubt that the relevant technical field is that of metering electricity consumption.  The applicant's declarant Hemminger is joint inventor and clearly experienced in the field, though by virtue of being joint inventor he is also an interested party.  As a resident of the United States he is prima facie not qualified to comment on the cgk in Australia, and in fact does not do so.

The applicant's second declarant Lee has wide-ranging experience in fields of electrical engineering over many years, but it seems from his declaration and CV that not much of it was in metering.  In more recent years he has worked as an independent Forensic Electrical Engineer investigating electrical accidents, in the course of which he has disassembled and studied the contents of a number power of meters which it was thought may have been responsible for causing a fire.  His declaration is mainly concerned with novelty and the "various power measurements" issue, which I have dealt with.  He makes no clear comment about cgk in Australia.

The opponent's declarant Church states that he is presently a consultant Metrology Systems Engineer, specialising in metering in the deregulated Australian market since 1998.  In the period 1981-1997 he worked for Energy Australia (formerly Sydney Electricity) as Senior Design Engineer (Testing and Certification), and in 1997 as Manager (Strategic Metering), with responsibility for the specification, procurement, testing, repair and supply of all metering equipment used within Energy Australia.

Based on these backgrounds I consider that Church stands out as being the declarant with the most experience in the relevant field in Australia, and in the event of disagreement about cgk I would be inclined to prefer Church over Hemminger or Lee, but as I have said, no comment is made by them.  Some extracts from Church's first declaration are as follows:

"7. The contents of this Statutory Declaration are based on my general knowledge of electricity metering and my experience in that field.  In this Declaration, unless I state to the contrary, when I speak of the meaning of terms or the state of electricity metering or other matters in relation to electricity metering, I am speaking of what I understood before February 1992.  In my opinion, other persons skilled in electricity metering in Australia would have had at least the same level of understanding and knowledge."

"9. Before dealing with the Specifications in detail, I shall describe below in paragraphs 10 to 43 the extent of metering expertise in Australia and commonly known metering principles and products.  These metering principles and products were well known to me before February 1992 and, in my opinion, would have been well known to, and formed part of, the basic knowledge and skills of metering engineers and technologists working in the electricity metering field in Australia before 1992."

These paragraphs (10-43) cover a range of matters; eg large Australian utilities that would have employed specialist metering engineers; companies designing meters in Australia; companies in Australia importing meters manufactured overseas; delegates from Australian utilities and manufacturers (including Church and someone from Nilsen) to the MATES (Metering and Tariffs for Electricity Supply) conference in Manchester during 1990; various consumption parameters that could be measured; background to the technical development of meters; and reference to his exhibits in evidence, of which the Nilsen meter is the only one now being pursued.

To reach a decision on this ground of opposition it is not necessary for me to accept that everything in paragraphs 10-43 is indeed cgk, though I do not dispute that it is.  This is another extract from his declaration:

"15. To determine a customer's usage of electricity, and therefore the amount to be billed, it is necessary to measure the energy quantity consumed.  In my experience, up until the late 1970's, the only economic metering available was the electromagnetic type.  This type of metering measured kWh and kW."

"16. The introduction of electronic metering that measured several parameters including, watthours, varhours, VAhours, watts, var, VA, volts, amps and time, enabled measurement to be made for almost any tariff structure.  By connecting a modem to the meter via a communication port……  The type of port used is normally an electrical connection, however the meters frequently have in addition an optical port for programming, reading and testing."

Referring to the Nilsen meter brochure, Church says:

"52. Had I wished to consider the field of the invention described in the Specifications I would, as a matter of course or routine, have considered looking to the published literature of manufacturers such as Nilsen."

"56. Further, in relation to the EMS 2100 document, I would have considered it obvious to output different pulses to the optical port in February 1992."

This last statement is not particularly clear, but presumably means that he thought it would be obvious to output pulses representing different power measurements to the optical port of the Nilsen meter.

The only substantial submission I have from the applicant on this ground is basically that Church's declaration fails to establish cgk because of its inadequacies, and consequently the ground of obviousness must fail.  The inadequacies alleged are primarily that statements are in the nature of hearsay, statements and opinions are not supported by corroborating evidence, recollections of circumstances or events seven and more years ago are unsupported, dates are vague, and so forth.

However I think this is to place an unwarranted burden on participants in proceedings of this kind, as I have said previously in regard to standard of proof.  Based on what is before me, Church is extremely experienced in metering, reputable, independent of the parties, and generally clear in his statements.  Given the probable timing in this case I do not think that great accuracy in dates is required, though of course it was open to the applicant to show me otherwise.  In the absence of controverting evidence, or even submissions, there is no reason for me not to accept the substance of what he says, and I do.

As Church says, if a person of ordinary skill in the field in Australia wanted to investigate recent developments in metering (ie relative to 1992), he or she would surely consider (at least) the publications of the small number of meter manufacturers in Australia, of which Nilsen is one.  In doing so, this person would come across the Nilsen brochure, which I have decided was publicly available at the relevant date.  In other words, in my opinion the Nilsen brochure is a document that the skilled person could "be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area." (section 7(3) of the Act).

This person would, as part of their cgk, be fully familiar with the various parameters by which electric power consumption can be measured, eg real power, reactive power and apparent power, among many others.  This person would also know of some prior art meters which are individually capable of measuring (and being tested on) several parameters, referred to by Church in his declaration.  Would it then be obvious to this skilled person to adapt the meter described in the Nilsen brochure, which measures only real power, so that it could measure and be tested for power measures other than real power?  In my opinion there can be no reasonable doubt that it would occur to a person of ordinary skill in the art, reading the Nilsen brochure at or before the priority date, to adapt that meter to read other commonly known power consumption parameters.  I think it is in the nature of a mere workshop improvement, as per Lochhart J in Werner RD & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 at 698:

" 'Workshop Improvement' is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity."

Of course the Nilsen brochure is not a "specification" but that is immaterial.  I conclude that each of the independent claims (1 and 14 of '059 and 1, 14 and 23 of '711) are obvious.  I must now consider the dependent claims.

In both applications the dependent claims go to features such as; (i) various combinations of different power measurements, the measurements themselves being well known; (ii) relating the pulsed test signal rate to the disc rotation period of an electro-mechanical meter; and (iii) the way in which data is sent/received over the communications port.  On the material before me, there is nothing here that would not be obvious to a person skilled in the art, and there are no supportive submissions from the applicant for me to consider.

I conclude that all of the claims of both applications are obvious.

Section 40

The single particularised item under this heading is that the claims lack fair basis, relying on a statement in the description that prior art limitations are overcome by multiplexing the various metering output signals.  However I consider that this is clearly a preferred feature, and the wording in the description perhaps a little careless.

Several clarity and fair basis matters were raised in a hand-up submission at the hearing, which the applicant responded to after the hearing, and I agree with the applicant's response.  I consider that the matters alleged could be resolved by the skilled addressee and/or a proper construction of the specification.

I have noticed that claims 3 and 5 of '059 are identical.

CONCLUSION

I have found that the claims are novel, but that all of the claims of both applications are obvious.  The specifications comply with section 40 except for a minor issue with the claims of 689059. 

The detailed description of the implementation of the invention claimed is quite complex, and there may be patentable subject matter disclosed.  In recognition of this I allow 60 days from the date of this decision in which amendments may be proposed directed at overcoming my findings, else I will refuse the applications.

COSTS

In these proceedings costs normally follow the event, and in this case the opposition has been wholly successful on one of the major grounds.  However at the hearing Ms Baird indicated that even so she would seek costs in recognition of the opponent's late decision to proceed with only one of the several particulars, namely the Nilsen meter brochure.  While the history of this particular in relation to this opposition is a little untidy, it is a particular which the applicant eventually agreed to admit.  It may have been helpful to the applicant (and the Commissioner) had the opponent advised its decision earlier than the day of the hearing, but I do not consider that any inconvenience is sufficient to depart from normal practice.

Accordingly I award costs against the applicant ABB Power T&D Co Inc.  I note that taxing of costs should reflect the fact that both oppositions were heard concurrently, and the evidence in support and in reply were the same in each case.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Peter Maxwell and Associates

Patent attorneys for the opponent   :  Spruson & Ferguson