ACO Polycrete Pty Ltd v Gowland Pty Ltd
[2012] APO 54
•11 May 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ACO Polycrete Pty Ltd v Gowland Pty Ltd [2012] APO 54
Patent Application: 2003235054
Title:A collar for a pit
Patent Applicant: Gowland Pty Ltd
Opponent: ACO Polycrete Pty Ltd
Delegate: Xavier Gisz
Decision Date: 11 May 2012
Hearing Date: 27 February 2012, in Canberra
Catchwords: PATENTS - opposition to the grant of a patent under section 59 – all claimed features are considered essential – prior art fails to disclose one of the claimed features – claims are novel – insufficient evidence to establish that claims lack inventive step in light of common general knowledge and prior art– opposition unsuccessful on all grounds – patent application only considered valid from when last amendments were advertised as allowed – costs awarded against the opponent from when last amendments were advertised as allowed
Representation: Patent applicant: Andrew Fox counsel for Griffith Hack
Opponent:Sam Park attorney of Sampark & Co
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003235054
Title:A collar for a pit
Patent Applicant: Gowland Pty Ltd
Date of Decision: 11 May 2012
DECISION
The invention is a collar which overlies the opening of a pit. The characterising feature of the invention is that the collar has a portion that extends outwardly from the upper edge of the pit.
The application was opposed under section 59 on the grounds of novelty and inventive step.
The claims are found to be novel and inventive and thus the opposition fails on all grounds.
Costs are awarded against the Opponent from the day after the amendments to the specification were advertised as allowed (7 October 2011). Costs are awarded against the Applicant up to and including the day the amendments were advertised as allowed (6 October 2011).
REASONS FOR DECISION
Background
Patent application 2003235054 in the name of Gowland Pty Ltd (the Applicant) was advertised as accepted on 3 December 2009. An opposition to the grant of the patent was filed by ACO Polycrete Pty Ltd (the Opponent) on 2 March 2010 and a statement of grounds and particulars was served on 2 June 2010. Evidence in Support was served on 31 August 2010. The Applicant requested to amend the specification on 4 November 2010, and these amendments were advertised as allowed on 6 October 2011. The Applicant did not provide Evidence in Answer. The hearing was held in Canberra on 27 February 2012.
Evidence
Evidence in Support
Evidence in Support comprises a statutory declaration by David Eisenhuth, managing director of ACO Australia, and ten accompanying exhibits:
DE-1 ASIC Historical Extract – ACO POLYCRETE PTY LTD
DE-2 Polycrete Australia Pty Ltd Drwaing # R-9, R-8, S-11, L-14, Q1
DE-3 ACO CABLEMATE CATALOGUE 1995
DE-4 ACO CABLEMATE PRICE LIST 1996
DE-5 ACO CABLEMATE CATALOGUE 1999
DE-6 v 2907000
DE-7 v 12022003
DE-8 AU 2003235054 B2 (GOWLAND)
DE-9 v 11042003
DE-10 c 25032003
Exhibits DE-3, DE-4, DE-5, DE-6, DE-7, DE-9 and DE-10 are presented as evidence of prior art. Exhibit DE-2 is not purported to be prior art in itself, but technical drawings that provide the detail of dimensions of a product shown in DE-3. Exhibit DE-1 is a history of the names of the entity currently known as ACO Polycrete Pty Ltd. Exhibit DE-8 is copy of the accepted patent application currently being considered.
Further Evidence
The day before the hearing the Opponent requested to serve further evidence. The further evidence comprised a further statutory declaration by David Eisenhuth dated 23 March 2012, accompanied by two exhibits: DE-11 which is a technical drawing, and DE-12 which is the most recently amended version of the patent.
Presenting evidence at such a late stage in the opposition process is undesirable since it disadvantages the other party by not allowing them a reasonable opportunity to assess the evidence and, if necessary, prepare evidence in response. The Opponent argued that the further evidence was merely to serve the purpose of correcting and clarifying the previous evidence and did not add any significant new information.
At the hearing the Applicant accepted these new documents being considered as evidence in the opposition, with the exception of the dimensions on the technical drawings of DE-11. The hearing proceeded on this basis.
Grounds of opposition
The grant of the patent application was opposed under section 59(b) on the grounds of novelty and inventive step.
Claim construction
Claim 1 is as follows:
A collar for a pit having an opening at an upper end and a first shoulder extending about said opening for receiving a lid, said collar comprising:
a body of substantially incompressible material and defining an aperture which overlies said opening, said body further shaped to seat in said first shoulder and having a second shoulder surrounding said aperture, said second shoulder of substantially the same shape and dimensions as said first shoulder, for receiving the lid, wherein an upper surface of the collar and upper surface of a lid seated on the second shoulder lie substantially flush with a surface of ground in which the pit is installed; and,
wherein said body extends outwardly of said aperture and said pit in a plane parallel to that containing said aperture.
The terms ‘shoulder’ and ‘seat in’ are considered below.
Shoulder
10. There are two instances of ‘shoulder’ in the claim. The ‘first shoulder’ forms part of the pit, and is shaped to allow the collar to sit therein. The ‘second shoulder’ forms part of the collar and is shaped to allow the lid to sit therein. The first and second shoulders are substantially the same shape and dimension.
11. The Collins World English Dictionary defines a shoulder in the present context as:
“a substantial projection or abrupt change in shape or diameter designed to withstand thrust”
12. This ordinary meaning of the word ‘shoulder’ is consistent with the description which states:
“The pit is in the form of a box made from plastics material having an upper end defining an opening which is surrounded by an internal shoulder or recess.”
13. In light of the ordinary meaning of the word and the description, I find that the term ‘first shoulder’ is essentially a recess formed in the internal wall of the pit; the term ‘second shoulder’ is a recess formed in the internal wall of the collar.
Seat in
14. The Applicant argued that the term “seat in” should be construed narrowly requiring the collar to abut the shoulder. The Applicant supported this interpretation with reference to the preferred embodiment of the invention wherein the collar abuts the shoulder. The Opponent argued that the term “seat in” should be construed more broadly to define a close, but not necessarily abutting, relationship between pit and collar.
15. The term “seat” on its own suggests a resting or abutting relationship between the collar and the shoulder, while the term “in” suggests the seating occurs within, rather than above, the shoulder. However, as noted by the Opponent during the hearing, if the term “seat in” was construed as an abutting relationship this would be inconsistent with claim 3 which requires a collar ‘skirt’ depending from said bottom surface no greater than the depth of said first shoulder. The phrase “no greater than” immediately suggests that the collar skirt depth could be less than the depth of the first shoulder. In other words, claim 3 encompasses within its scope a collar skirt which does not abut the horizontal portion of the shoulder.
16. In my opinion the broader interpretation of the term “seat in” is preferable since it avoids the inconsistency in the claim set which the narrow interpretation would cause. Consequently I find that the term “seat in” is not limited to an abutting relationship; instead a portion of the collar must merely be housed closely within, but not necessarily touching, the shoulder of the pit.
Prior art
17. The Opponent relied on the prior art of the product known as the PSC96 ACO COLLAR (hereinafter referred to as PSC96). The documentary evidence of the PSC96 was the ACO CABLEMATE catalogue (provided in the Evidence as exhibit DE-3).
18. The Opponent had evidence of sales figures of the PSC96 to demonstrate its public availability before the priority date (Schedule 4 of the David Eisenhuth statutory declaration). The Applicant argued that the evidence was not sufficient to show that the PSC96 had actually been publicly available before the priority date. I have reviewed the evidence and am satisfied that the PSC96 was publicly available before the priority date and thus constitutes prior art.
19. The Opponent also relied on technical drawings ostensibly of the PSC96 which were provided in the Evidence as exhibit DE-2. The Opponent’s evidence suggests, and submissions were made, that the technical drawings of DE-2 accurately reflect the dimensions of the PSC96. It is noted that the technical drawings of DE-2 themselves were not publicly available and are not considered prior art.
Novelty
20. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”
21. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). It is well established that to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486). Information is part of the prior art base for the purposes of novelty if it was made publicly available before the priority date of the claim (see definition of "prior art base" in Schedule 1 of the Act).
Features of the claim
22. The independent claim can be subdivided into six features:
(a) a collar for a pit having an opening at an upper end and a first shoulder extending about said opening for receiving a lid, said collar comprising:
(b) a body of substantially incompressible material and defining an aperture which overlies said opening,
(c) said body further shaped to seat in said first shoulder and having a second shoulder surrounding said aperture,
(d) said second shoulder of substantially the same shape and dimensions as said first shoulder for receiving the lid,
(e) wherein an upper surface of the collar and an upper surface of a lid seated on the second shoulder lies substantially flush with a surface of the ground in which the pit is installed, and
(f) wherein said body extends outwardly of said aperture and said pit in a plane parallel to that containing said aperture.
23. The Applicant argued that the prior art fails to disclose the two features: 1) a collar shaped to “seat in” the pit, and 2) a collar that “extends outwardly” of the pit.
24. The Opponent argued that the claims lack novelty on the basis that either: each and every feature of claimed invention was disclosed, or each and every essential feature of the claimed invention was disclosed.
Essential features
25. The Opponent argued that the feature of the outwardly extending portion of the body is not an essential feature of the claims. For example in the Opponent’s submissions at paragraph 162:
“It is further noted that there is nothing in [the patent specification] which explains why it is essential for the solution to work that the body (32) must extend outwardly of said pit in a plane parallel to that containing said aperture. On that basis it is contended that this feature is not an essential feature of the invention and claim 1.”
26. The Applicant argued in their submissions at paragraph 41:
“The Applicant submits that the Opponent's exercise in asserting inessentiality in respect of various features runs counter to the well-accepted principles of claim construction in the context of determining novelty: see the discussion regarding essentiality in Bodkin [Patent Law in Australia (2008)] at [3760]. The Opponent's exercise is also undertaken in the absence of any evidence from a person skilled in the art as to the proper construction of the claims of the Opposed Application, which is a critical omission.”
27. The Applicant cited Catnic Components v Hill & Smith Ltd, (1982) RPC 183 at 243 as giving appropriate guidance on the consideration of essential and inessential features; the relevant excerpt of Catnic is as follows:
“The question in each case is: whether persons with practical knowledge … would understand … a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention ...
The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked.”
28. In other words, a feature can only be considered non-essential if it does not materially affect the way the invention works. It follows that if a feature materially affects the way the invention works, then that feature is essential.
29. The background of the invention is given in the patent specification where it states:
“A common difficulty with this type of pit is that the surrounding ground can apply compressive force to the pit and in particular to its upper end effectively clamping the lid in place preventing its removal without the aid of tools or levers. However even when tools and levers are used to assist in removing the lid, the removal of the lid often causes damage either to the pit or to the lid itself.”
30. The invention provides a solution to the problem of clamping lids. From paragraph of page 8 of the description:
“It will also be apparent from Figure 2, that the body extends laterally in a direction outward of the aperture and beyond the pit.
…
Compressive force is applied by the ground of a magnitude which would cause the pit to clamp onto the lid are easily resisted by the collar, thus avoiding the abovementioned problems in the prior art.”
31. It is clear from the description that increasing the size of the collar increases the collar’s resistance to compressive forces. Since the feature of the collar extending outwardly of the pit materially affects the working of the invention this feature is considered to be essential.
Novelty analysis of features
Seat in
32. In construing the claims I have found the term “seat in” is not necessarily restricted to the collar abutting the first shoulder, but instead positioned inwardly and in close proximity. It is clear from the image of the PSC96 in exhibit DE-3 that a portion of the collar fits inside and in close proximity of the shoulder of the pit. Thus this feature is disclosed in the PSC96.
Extends outwardly
33. In their submissions the Opponent provided a diagram (designated figure 7) that summarised the information contained in exhibit DE-2 of the evidence. The Opponent argued at paragraph 156 of their submissions that feature of the collar extending outwardly from the pit is disclosed in PSC96:
“As can be seen from the ACO COLLAR in figure 7, body (32) of the ACO COLLAR extends outwardly of aperture (34) and pit (12) in a plane parallel to that containing said aperture by 5mm.”
34. The Applicant submitted that an extension of 5mm in the present context is simply too small to be considered a portion that extends outwardly.
35. In my opinion the disclosure of an ‘extending portion’ in the PSC96 collar is marginal at best. The decision of General Tire (supra) at pages 485 and 486 gives guidance on the level of disclosure necessary for anticipation to be found:
“If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claims if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not infringe the patentee's claim, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented...” (Emphasis added)
36. I will now apply the ‘reverse infringement test’ as per General Tire, thus determining whether following the directions provided in the prior art would necessarily lead to an infringement of the claims.
37. Unlike documentary forms of prior art, the disclosure of the PSC96 is a physical object and thus the only ‘directions’ to follow are simply for its replication. In my opinion, the minute overhang of the collar could be quite easily overlooked in forming a replica of the PSC96. Indeed the overhang is small enough that it could fall within the engineering tolerances of the manufacture of such an object. In light of this, I conclude that a person skilled in the art would be at least as likely to make a collar that does not extend laterally beyond the pit as they would make a collar that does. Consequently, I find that the PSC96 collar does not provide clear and unmistakeable directions of a collar that extends outwardly of the pit.
Novelty Summary
38. I have found that all features claimed are essential features. I have found the prior art (the PSC96 collar) anticipates all but one of the essential features – that of the outwardly extending collar. Consequently, the claims are novel in light of the prior art.
39. It is noted that the feature of the collar extending outwardly of the pit was only added by amendment during the evidentiary stages of the opposition. Since this is the sole feature of the broadest claim distinguishing it from the prior art, it follows that prior to the amendment this claim would have lacked novelty.
Inventive step
40. I have found in the analysis of novelty that the PSC96 discloses all but one of the features of the claimed invention – that of the collar extending outwardly of the pit.
41. There are two stages for assessing inventiveness. Firstly, to determine whether a person skilled in the art would, in seeking a solution to an identified problem, have ascertained, understood and regarded as relevant a prior art document. Secondly, if the first criterion is fulfilled, determine what a person skilled in the art would have done with the information contained in the prior art document as a matter of routine.
Who is the person skilled in the art?
42. Although no evidence or submissions were made on the notional person skilled in the art, it is readily apparent that a person skilled in the art would be a civil engineer involved with the construction and maintenance of access pits and manholes.
What problem was the person skilled in the art was attempting to solve?
43. The specification states:
“The present invention relates to a collar for a pit of the type typically located in the ground for housing or providing access to various utilities or associated control equipment.
…
A common difficulty with this type of pit is that the surrounding ground can apply compressive force to the pit and in particular to its upper end effectively clamping the lid in place preventing its removal without the aid of tools or levers. However even when tools and levers are used to assist in removing the lid, the removal of the lid often causes damage either to the pit or to the lid itself.”
44. Put simply, the problem is pit lids being jammed in pit openings.
Ascertained, understood and regarded as relevant
45. According to section 7(3), a document is prior art for the purposes of considering inventive step if “a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant …”
46. The Opponent’s evidence (specifically, the statutory declaration by David Eisenhuth of 31 August 2010) shows that the PSC96 collar was available throughout Australia since 1995. On the basis of this evidence I am satisfied that the PSC96 collar was widely known to exist before the priority date, and thus would have been ascertained, understood and regarded as relevant to a person skilled in the art.
Obviousness
47. A person skilled in the art when presented with the problem of lids jamming in pit collars could be reasonably expected to make a stronger pit collar, since the primary reason the lids jam is because of the weakness of pit collars. Having found the disclosure of PSC96 a person skilled in the art could be expected to make changes such as constructing the collar of a stronger material.
48. However, there is no obvious reason why the person skilled in the art would make the collar extend outwardly of the pit. Indeed, such a variation may be considered counter-intuitive since it could increase the vulnerability to tensile stresses on, and thus the potential breakage of, the collar. Furthermore there is no evidence to suggest a person skilled in the art would have made such a variation to the PSC96 as a matter of routine.
49. On the whole I am not satisfied that a person skilled in the art would make such a modification as a matter of routine. Consequently, the claims are considered inventive in light of the prior art.
Conclusion
50. I have found that none of the prior art in evidence establishes a lack of novelty or a lack of inventive step.
Costs
51. Costs usually follow the event. However, since the Applicant amended the specification during the opposition, it is appropriate that the costs are varied. I have found that the application was not valid before that amendment and thus the Opponent was right to oppose the application up until the point in time when they were made aware of the amendments being allowed, i.e. when the last amendments were advertised as allowed.
52. Thus, I awards costs against the Applicant, Gowland Pty Ltd, up to and including the day when the last amendments to the specification were advertised as allowed (6 October 2011) and I award costs against the Opponent, ACO Polycrete Pty Ltd, from the day after the amendments were advertised as allowed (7 October 2011).
Xavier Gisz
Delegate of the Commissioner of Patents
0
3
0