Allan Noel Porter v Arbortech Investments Pty Ltd

[1994] APO 55

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 633978 in the name of ALLAN NOEL PORTER

Title             :    ROTARY CHISEL BLADE

Action: (i) Opposition under section 59 of the Patents Act 1952 by ARBORTECH INVESTMENTS PTY LTD and (ii) an objection to the allowance of a request to amend the Statement of Grounds and Particulars under regulation 5.9 (1) of the Patent Regulations 1991.

Decision           :    Issued            .

Abstract:    Amendment refused.  As the amendment was proposed after all evidentiary stages had been completed, it would result in the protraction of the case.  The case the applicant had to answer would also be changed.

Ground of non-compliance with section 40 established but grounds of prior publication, lack of novelty and obviousness not proven.

Costs in relation to the substantive oppostion awarded against opponent as section 40 defects were not particularised.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 633978 by ALLAN NOEL PORTER, opposition thereto by ARBORTECH INVESTMENTS PTY LTD, and an objection to the allowance of a request to amend the Statement of Grounds and Particulars.

background

Application 633978 was filed by Allan Noel Porter (Porter) on 11 September 1990 under the provisions of the Patent Cooperation Treaty as PCT/AU90/00411.  This application claimed priority from Australian provisional application PJ 6349 filed on 12 September 1989.  The application was advertised accepted on 11 February 1993.  A notice of opposition was filed by Arbortech Investments Pty Ltd (Arbortech) on 11 May 1993.

As the application was filed before, but accepted after, the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 applies to the opposition but Chapter 5 of the Patent Regulations 1991 applies in relation to the opposition proceedings.

Arbortech served its Statement of Grounds and Particulars on 11 June 1993.

The serving of all evidence was completed on 14 March 1994.

On 25 March 1994, Arbortech filed a request under regulation 5.9(1) to amend the Statement of Grounds and Particulars.  The applicant objected to the allowance of this request.  Both matters were heard in Perth on 16 June 1994.

At the hearing the applicant was represented by Mr. Tony Mizzi, patent attorney  of Griffith Hack & Co., Perth and Mr. Paul Roth, a solicitor. The applicant Mr. Allan Porter also attended.  The opponent was represented by Mr. Tom Barnes, patent attorney of Watermark, Perth, assisted by Mr. Richard Baddeley also of Watermark.  Messrs Ian Inkster and Kevin Inkster of the opponent company also attended.

PROPOSED AMENDMENT TO THE STATEMENT OF GROUNDS AND PARTICULARS

The amendment to the Statement of Grounds and Particulars sought by Arbortech is to include a further paragraph supporting the ground of lack of novelty and referring to a German patent document DE 3541077.  A copy of the German document and a partial English translation thereof are included as exhibits in the evidence in reply.
SUBMISSIONS IN RELATION TO THE PROPOSED AMENDMENT

Both parties referred me to Diamond Scientific Company v CSL Limited (1992) AIPC 90-927.

Mr. Mizzi, on behalf of the patent applicant, submitted that because the amendment proposes to introduce a new particular into the Statement of Particulars, this would certainly be disadvantageous to the applicant.  It would change the case the applicant has to answer.

Mr. Mizzi indicated that however it was not sufficient for him to show that the amendment would disadvantage the applicant.  The applicant needed to show that the degree of disadvantage is excessive as indicated in Diamond Scientific (supra).

To this end, Mr. Mizzi queried the delay between when the German document first came to the attention of the opponent and the filing of the request to amend the particulars.  Mr. Mizzi submitted that the opponent's agent was made aware of the document on 27 September 1993.  The document was cited in an international type search produced in relation to a provisional application in the name of the present opponent.  Thus the document was known to the opponent's agent after the present opposition had commenced and even after the evidence in support had been filed.  However it was not until six months later that the request to amend the particulars had been filed.  The opponent had provided no explanation of this delay even though the onus was on the opponent to do so.

Mr. Mizzi also submitted that, as the request to amend was filed after the evidence in answer had been completed, the applicant would need time to collect further evidence and presumably the opponent would also need time to comment on that further evidence.  This would result in a delay of the present proceedings.

There were submissions from both parties as to whether or not the German document in question was published before the priority date of the opposed claims.

Mr. Barnes submitted that although introducing new evidence would be prejudicial to the applicant's case such prejudice would not necessarily be undue.

Mr. Barnes indicated that although the German document was mentioned in a search report in relation to a provisional application in September 1993, it was considered in relation to the invention disclosed in the provisional specification and not in relation to the opposed claimed invention at that stage.  The significance of the German document to the present opposition was not realised until the evidence in reply was being prepared around about the 10 March 1994.  Mr. Barnes submitted that immediately the significance of the document was realised, a translation of the document was obtained.  The document was then included in the evidence in reply and a request to amend the particulars was filed soon after.  There was no undue delay between when the significance of the document was realised and the request to amend was filed.

Mr. Barnes referred me to Abundant Lawn Grass v Crancove (1993) AIPC 90-973. He conceded that the present facts were slightly different to those in the Abundant Lawn case in that the new document was included in the evidence in reply compared with the new document being referred to in the evidence in support.  However, Mr. Barnes submitted that this was only because the significance of the German document was not appreciated until this late stage.  Mr. Barnes argued that, as indicated in the Abundant Lawn case, the new document was in the same general field as other particularised material and so it did not change the case which the applicant had to answer.

DECISION IN RELATION TO THE PROPOSED AMENDMENT

The allowability of the present request to amend the statement of grounds and particulars is determined by regulation 5.9 of the Patent Regulations 1991, relevant portions of which are:

"5.9 (1) The Commissioner, on the written request of an  opponent, and subject to such terms as the  Commissioner may specify:

............
           (c) must amend particulars relating to a ground  referred to in subregulation 5.4(1).

(2) The Commissioner must not allow an amendment  requested under subregulation (1), if:

............
           (e) he or she reasonably believes that a person will  be unduly prejudiced by the amendment."

In Diamond Scientific Company v CSL Limited (supra), the delegate of the Commissioner held that "undue prejudice" would occur if:

.the amendment is detrimental or disadvantageous to the person; and

.the circumstances surrounding the amendment cause the     degree of that detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified.

The delegate noted that undue prejudice would not prima facie arise if extra particulars established incidental to the preparation of an opponent's case satisfied three criteria, that is they:

.do not result in any protraction of the preparation of the case; and

.are included by way of amendment of the statement of     grounds and particulars at the earliest reasonable     opportunity; and

.do not substantially change the case the applicant has to answer in the opposition.

The delegate also indicated that where:

.  the applicant objects to an amendment; and

.the amendment of the statement can reasonably be said to prejudice the applicant  (such as by the addition of extra particulars); and

.the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment.  In this event, for the Commissioner to allow the amendment the opponent has an onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant.

The delegate also indicated that any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant.  For example an amendment to replace a particularised document with an equivalent document may involve a change of the case to be answered. 

In the present case, both parties agree that the amendment would be detrimental to the applicant.  At issue is whether or not the degree of detriment is unwarranted, excessive, improper, inappropriate, or unjustified.

Although both parties provided submissions on whether or not the opponent had established the publication date of the German document, I do not believe that this point is relevant to the matter at hand which is concerned with whether or not the Statement of Particulars can be amended to include a reference to a further document.  The particulars do not have to establish the publication dates of any cited documents.  This is more properly a function of the evidence.

Both parties have provided argument in relation to the three criteria set down by the delegate in the Diamond Scientific case (supra) to establish whether or not the degree of detriment is excessive.

The initial requirement laid down by the delegate in Diamond Scientific before the three criteria can be applied however is that the extra particulars are established incidental to the preparation of the opponent's case.  In the present circumstances, the additional document came to the opponent's agent's attention as part of the results of an international type search conducted on a provisional application made by the opponent.  There is no evidence before me to suggest that the purpose of the search was to locate documents for the present opposition.  Therefore, I am satisfied that the location of the German document was incidental to the preparation of the present opposition case.

In relation to the first criterion, I agree with Mr. Mizzi that, if the amendment were allowed, it would result in some protraction of the preparation of the case as the applicant would be entitled to seek further evidence in relation to the German document.  This is especially so because the evidence in answer stage has already been completed.  I note that Mr. Barnes conceded that the facts of the present case differ from those in Abundant Lawn Grass v Crancove (supra) because in that case the amendment was filed before the evidence in support stage had been completed whereas in the present opposition the evidence in answer stage has been completed.  Whether or not the significance of the German document was not realised until after the evidence in answer stage was completed is irrelevant to the fact that the preparation of the applicant's case would be protracted as a result of the inclusion of the extra particulars.

In relation to the second criterion, Mr. Barnes referred me to the delegate's comments in Abundant Lawn Grass v Crancove (supra) about new documents in the same general field as other material in the particulars.  Mr. Barnes argued that the delegate found that such new documents would not change the case the applicant had to answer.  I note that the delegate's comments were made in the context of amendments which were filed before the evidence in support stage had been completed.  In such circumstances the applicant has a fair opportunity to respond to the extra particulars.  I believe that the delegate's comments should be considered in this light.  In the present circumstances, although the German document may be in the same general field of art as some of the other particularised material, the applicant does not have the same opportunity to respond to all the material together as the evidence in answer stage has been completed.  Once the applicant has served evidence in answer, the applicant has in effect answered the opponent's case.  Any extra material which has to be considered after this is bound to change or add to the case to be answered by the applicant.  Therefore, I do not believe that the delegate's comments in Abundant Lawn Grass v Crancove (supra) are helpful in the present circumstances.  I am of the opinion that the extra particulars are such that they do not satisfy this criterion.

In relation to the third criterion of whether or not the amendment was made at the earliest reasonable opportunity, the main issue is whether or not the request to amend should have been filed when the German document first came to the attention of the opponent's agent which was some six months before the request to amend was actually filed.  In this respect I find that I am in agreement with Mr. Barnes.  A patent attorney deals with many different matters during the course of his or her work.  In the present case, the German document came to Mr. Barnes' attention after the evidence in support had been completed in relation to the present opposition.  It seems to me not unreasonable that Mr. Barnes should not appreciate the significance of the German document to the present case when considering it in relation to another matter.  I believe that the proper issue to be considered is whether or not there was any delay in filing the request to amend once the significance of the document was realised.  Without any other evidence to the contrary, I am satisfied that this realisation of the significance of the document occurred in March 1994 when Mr. Barnes' attention again turned to the present case during preparation of the evidence in reply.  Under these circumstances, I do not believe that there has been undue delay in filing the request to amend the particulars.

I therefore conclude that, as two of the three criteria are not satisfied, the amendment would be unduly detrimental to the applicant.

I believe this finding is consistent with one of the main purposes of Chapter 5 of the Patent Regulations 1991 which is to ensure that the applicant is aware of what case it has to answer on the filing of the Statement of Grounds and Particulars.  In the present circumstances, the applicant is still unsure what is the complete case it has to answer even after all the evidentiary stages have been completed.  This is clearly contrary to the intent of Chapter 5.  In this respect, I do not think that the opponent has discharged its onus of demonstrating that its activities will not unduly prejudice the applicant as per Diamond Scientific v CSL (supra).

However, at this late stage of proceedings, I am conscious that, if I refuse to allow the amendment, I will be excluding from the opposition reference to the German document.  If such a document clearly anticipated the claimed invention, such an exclusion would be regrettable and to my mind contrary to the public interest.  In such a situation, it seems to me that the prejudice to the applicant would be outweighed by the public interest.  To this end, I have perused the German document.  I am satisfied that it does not clearly anticipate the claimed invention because there is no clear indication in this document that the blade can cut material in a direction perpendicular to the plane of rotation of the disc.  Consequently, I do not think that the disclosure of the German document affects my earlier conclusion that the applicant would be unduly prejudiced.

Therefore, I refuse to allow the amendment.

THE SPECIFICATION

The accepted specification begins by stating that the invention relates to a rotary chisel blade for chiselling, carving, shaping and cutting solid materials such as wood, plastic, aluminium and other non-ferrous metals, and soft stone.  The specification then describes the disadvantages of prior art tools and refers to a wood-working tool disclosed in US Patent No. 4850407.  This tool is described as having a disk with chainsaw-like teeth disposed about the periphery.  The disadvantage of such a tool is said to be that, because of the nature of the teeth, the tool may produce a "kick-back" action.  This can pull the rotary tool out of the hands of the operator thereby creating a danger for the user.  Additionally, the tool is costly to sharpen because it requires a special small round stone.
The specification states that the present invention was developed with a view to providing a rotary chisel blade for use with a hand power tool for quickly and conveniently chiselling, carving, shaping, and cutting solid material.  Then follows a consistory statement of the invention which uses the same wording as in claim 1.  After describing a number of preferred features of the blade, the specification includes a second consistory statement having the same wording as claim 5.  Next there is a description of a preferred embodiment of the invention where reference is made to the accompanying drawings.  Relevant portions of this description are as follows:

"The cutting edge 12 is arranged so that the chisel blade 2 can cut material in a direction perpendicular to the plane of rotation of the blade 2, by virtue of a portion of the cutting edge 12 which lies transversely of the disc 4 to extend parallel with disc 4.

...........

Each tooth 10 is provided with a first flat face 16 which lies in a plane perpendicular to the plane of rotation of the disc 4 and extends beyond the periphery 8.  The first flat face 16 is inclined relative to the direction of rotation of the blade 2.  The arcuate portion 14 of the cutting edge 12 forms a first corner 15 of the first flat face 16, (refer Figure 3) and extends radially and transversely beyond the periphery of the disc 4.  This allows the blade 2 to cut material in a direction ranging between substantially perpendicular to, and, substantially parallel to the plane of rotation of the disc 4."

The specification ends with 12 claims.  Claim 1 reads as follows:

"1.  A rotary chisel blade adapted for connection to a rotary power tool, said chisel blade comprising:
         a resilient disc;
         at least one gullet formed in the periphery of said disc for removal of waste; and,
         cutting means disposed in said gullet, said cutting means including a first flat face lying in a plane substantially perpendicular to the plane of said disc wherein an edge of said first flat face extends substantially parallel with the plane of the disc to form a cutting edge, said cutting edge further including an arcuate portion formed on a corner of said first flat face;
         whereby, in use, said chisel blade can cut material in a direction perpendicular to the plane of rotation of said disc."

Claims 2 to 4 are appended to claim 1.  Claim 5 defines the same features as claim 1 but also defines a plurality of gullets equally spaced about the disc and a plurality of cutting means disposed in respective ones of said gullets.  Claims 6, 7 and 8 are worded the same as claims 2, 3 and 4 except that they are appended to claim 5 instead of claim 1.  Claims 9 and 10 are also appended to claim 5.  Claims 11 and 12 are also appended to earlier claims.

STATEMENT OF GROUNDS AND PARTICULARS

The grounds relied on are listed as sections 18(1)(b)(i) and (ii) and section 40(2) or (3) of the Patents Act 1990. At the hearing, both parties agreed that the 1952 Patents Act and not the 1990 Act applied in relation to the grounds of opposition. There was no disagreement that section 40(2) or (3) and sections 18(1)(b)(i) and (ii) equate to section 59(1)(e), (g), (h) and (i) of the Patents Act 1952 viz. prior publication, lack of novelty, obviousness and non-compliance with section 40 of the 1952 Act. The particulars support such an interpretation. As I think that the purpose of the Statement of Grounds is to refer to such grounds, I am prepared to consider the opposition based on these grounds under section 59(1) of the Patents Act 1952.

In support of the grounds of prior publication and lack of novelty, the particulars identify Australian Patent No. 4850407 (sic).  As the number assigned by the Australian Patent Office to the most recently sealed patent would be in the six hundred thousands, this seven figure number is clearly in error.  Mr. Roth, on behalf of the applicant, was prepared to accept that this item of the particulars was intended to refer to US Patent No. 4850407.  As this US Patent specification has been the subject of argument in all the evidentiary stages of the opposition, including the evidence in answer, I am prepared to follow Mr. Roth's approach and assume that the incorrect reference is really referring to this US document.

In support of the grounds of lack of novelty and obviousness, the particulars refer to conventional rotary cutting tools including milling cutters such as those that have been marketed under the trade mark "P & N".  Another example of a known rotary cutting tool is given as that marketed under the trade mark "Arbortech".  The particulars refer to US Patent specifications 3878749 and 4604933 for disclosures of particular cutting teeth that could obviously be used in conjunction with the Arbortech cutter disc.  Also, the particulars refer to cutting inserts such as those marketed under the trade mark "Kennametals". 

In relation to the ground of lack of compliance with section 40, the particulars indicate that all of the claims are not fairly based on the disclosure in the specification and give as an example the lack of disclosure in the specification of the nature of the resilient disc.

THE EVIDENCE IN relation to the section 59 OPPOSITION

The evidence in support consists of a statutory declaration by Mr. Ian Inkster accompanied by nine exhibits and a statutory declaration by Mr. Malcolm Jones accompanied by two exhibits.  The main purpose of the Jones declaration is to confirm the subject matter of certain exhibited photographs in the Inkster declaration.  The Jones declaration includes actual samples of certain blades as exhibits.

Mr. Inkster declares that he is a licensed aircraft maintenance engineer and has been so since 1965.

The first half of the Inkster declaration sets out Mr. Inkster's thoughts on how the opposed specification should be interpreted and what defects he believes exist in the specification.

The second half of the Inkster declaration includes references to US Patent No. 4850487, a set of photographs, a number of extracts from various catalogues and a sample of a cutting insert.  Mr. Inkster indicates that all of these sources of information disclose rotary chisel blades or cutting inserts for such blades which fall within the scope of the opposed claims.

The evidence in answer consists solely of a declaration made by Mr. Allan Porter who is the applicant and inventor of the presently opposed invention.

Apart from raising an initial point that the Inkster declaration refers to an opposition by Arbortech Pty. Limited and not Arbortech Investments Pty. Ltd., the Porter declaration is directed at rebutting the various points raised in the Inkster declaration.

The evidence in reply consists of a further declaration by Mr. Inkster.  Apart from providing argument in rebuttal of the various arguments in the Porter declaration, the further Inkster declaration includes two exhibits.  One exhibit is a packaged Arbortech wood carver blade.  The other exhibit is a copy of German Patent document 3541077 together with an English translation of selected parts of the German document.

SUBMISSIONS IN RELATION TO THE SECTION 59 OPPOSITION

On behalf of the opponent, Mr. Barnes made a number of submissions at the hearing in relation to the opposition which I have summarised as follows:

.In claim 1, there is no definition of the cutting edge extending beyond the flat face of the disc.  However unless it does, the cutting edge will not be able to cut in a direction perpendicular to the plane of rotation of the disc.

.Paragraph 13 of the first Inkster declaration indicates a number of defects in the specification.

.As page 4 of the accepted specification contains new material which was not included in the specification as originally lodged, the claims are not based on the specification as originally lodged as they are based on this new material.

.There is nothing in the specification about the degree of resilience of the blade and thus there is not sufficient information to allow the invention to be properly practised.

.US Patent No. 4850487 discloses a rotary blade with a flat face immediately adjacent the cutting edges and with the upper portion of the flat face being arcuate.

.The various catalogues exhibited as part of the Inkster declaration show that it is well known to have cutting inserts with flat faces and cutting edges around the periphery of the flat faces extending parallel and transverse to the plane of the discs to which they are attached.  Some of the exhibited examples also disclose an arcuate portion connecting the cutting edges.  Thus, they anticipate the claimed invention.

On behalf of the applicant, Mr. Roth made a number of submissions at the hearing which I have summarised as follows:

.As the evidence in support was apparently provided by Arbortech Pty. Limited and not Arbortech Investments Pty. Ltd., it should be ignored.

.Paragraphs 1 to 8 of the first Inkster declaration and the corresponding submissions by Mr. Barnes were concerned with the inutility of the claimed invention and as such they went beyond the particulars as inutility was not part of the particulars.

.US Patent No. 4850487 does not specifically disclose a flat face which is an important feature of the presently claimed invention.

.Any extra material included in page 4 of the specification at acceptance was always included in the drawings even at original filing.

DEMONSTRATIONS AT THE HEARING

As the opponent had no objections to the applicant demonstrating the blade in action, I allowed Mr. Porter to set up a booth in the hearing room to demonstrate the operation of the blade.

However both parties agreed that the blade used in this demonstration was not the same as the claimed blade.  The demonstration blade merely had a gullet without the specific cutting means defined in the claims.

The opponent submitted that the demonstration blade was not the same as the applicant's commercially produced blade.

The demonstration showed that this particular blade cut in a direction perpendicular to the plane of rotation of the blade.

As the applicant had no objections to the opponent playing a video tape recording, I allowed Arbortech to play a video tape recording of a blade in operation.  It was submitted that the blade depicted in the video was the same as a blade made by Arbortech and exhibited as part of the opponent's evidence in reply.

DECISION IN RELATION TO THE SECTION 59 OPPOSITION

As a preliminary issue, I need to consider the effect, if any, that the incorrect name on the statutory declarations has on the allowability of the evidence in support.

Regulation 22.12 of the Patents Regulations 1991 requires that written evidence be presented in declaratory form. Regulation 22.13(2)(a) indicates that such a declaration should be headed with the title of the matter in respect of which the declaration is made.

While there is certainly no opposition to the present application in progress in the name of Arbortech Pty. Ltd., I don't believe that the omission of "Investments" from the name of the opponent has misled the applicant in any way.  Indeed when the evidence in support was served on the applicant, the applicant's attorney confirmed that the evidence in support from Arbortech Investments Pty. Ltd. had been received.  While the omission of "Investments" from the opponent's name was raised in the evidence in answer, the rest of the evidence in answer is directed exclusively at rebutting the evidence in support.  I believe that the applicant has not been disadvantaged in any way by this omission.

There have been a number of office decisions dealing with errors or omissions in written material in opposition proceedings.  The general approach has been to place a purposive construction on the form or material.  I have already used such an approach in relation to the Statement of Grounds and Particulars with respect to the relevant grounds of opposition and the identity of the supposedly Australian citation.  I see no reason not to use the same approach here.  I believe that the evidence in support is intended to be evidence served by the present opponent and I will treat it as such.

Section 40

The opponent has raised a number of issues under section 40 and I will deal with them in the order they have been presented.

The first issue is whether or not claim 1 needs to define that the flat face extends radially or laterally beyond the boundaries of the disc.  The opponent argues that, unless the flat face does so extend, there is no edge which could perform a cutting action.  This view is supported, according to the opponent, by the fact that claim 2, which is appended to claim 1, defines the arcuate portion as extending radially and transversely beyond the periphery of the disc so that the blade can cut in a direction ranging from substantially perpendicular to substantially parallel to the plane of rotation of the disc.

The applicant argues that this issue is more to do with the question of inutility rather than a lack of fair basis of the claim.

In Tetra Molectric Ltd.'s Application, (1977) RPC 290 at page 297, the Court of Appeal distinguished inutility and insufficiency, by saying that:

"If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is insufficiency.  But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility."

In the present case the question is rather one of lack of fair basis or inutility but I believe a similar distinction can be made.  If the specification indicates that a feature is essential to achieve the promise of the invention, that feature should be included in the claims and if it is not in the claims then that is a lack of fair basis.  However if the claims include all the features which are said to be essential to achieve the promise of the invention and the claimed invention does not achieve that promise then that is inutility.

The relevant passages of the description of the preferred embodiment of the invention which provide me with assistance on this matter are page 3A, lines 2 to 6, and page 4, lines 6 to 11.  They read as follows:

"The cutting edge 12 is arranged so that the chisel blade 2 can cut material in a direction perpendicular to the plane of rotation of the blade 2, by virtue of a portion of the cutting edge which lies transversely of disc 4 to extend parallel with disc 4."

"The arcuate portion 14 of the cutting edge 12 forms a first corner 15 of the first flat face 16, (refer Figure 3) and extends radially and transversely beyond the periphery of the disc 4.  This allows the blade 2 to cut material in a direction ranging between substantially perpendicular to, and, substantially parallel to the plane of rotation of the disc 4."

It seems to me that, in order to cut in a direction perpendicular to the disc, the cutting edge or a portion of it must lie transversely beyond the periphery of the disc and lie parallel with the plane of the disc.  This seems to me to be the only interpretation I can place on the words I have underlined which is not only consistent with the drawings provided with the specification but also with the second passage quoted above.  This second passage suggests that, if the blade is to cut in a direction parallel to the plane of the disc as well as being able to cut in a direction perpendicular to the plane of the disc, then a portion of the cutting edge (the arcuate portion) should extend radially beyond the periphery of the disc as well as extending transversely beyond the periphery of the disc.

In relation to the question of fair basis, I am guided by the principles enunciated in Mond Nickel Co. Ltd.'s Application (1956) RPC 189. These principles may be stated as follows:

a)   Is the alleged invention as claimed broadly described               in the specification?

b)Is there anything in the specification which is inconsistent with the alleged invention as claimed?

c)Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?

Claim 1 does not specifically define whether or not the cutting edge lies transversely beyond the periphery of the disc and therefore by implication includes a cutting edge which does not lie transversely beyond the periphery of the disc.  It seems to me that this is inconsistent with the passage I have referred to earlier in relation to the ability of the blade to cut in a direction substantially perpendicular to the plane of the disc.  Therefore I am of the opinion that the second, at least, of the above three questions has to be answered in the affirmative.

However, as Mr. Roth pointed out at the hearing, there is a further consideration that I should take into account in this matter.  The claim finishes by stating that "in use, said chisel blade can cut material in a direction perpendicular to the plane of rotation of said disc."  Mr. Roth suggested that the claim is therefore defining the invention by the desired result and referred me to No-Fume Ltd v. Frank Pitchford and Co. Ltd, (1935) 52 RPC 231.

Notwithstanding this, I am of the view that a person skilled in the art, on reading the specification would come to the view that the only way to construct the blade to achieve the result of cutting material in a direction perpendicular to the plane of rotation of the disc is to have a portion of the cutting edge lying transversely to the plane of the disc.  This is because the only indications of achieving such a result are given in the two passages to which I have referred.   There is certainly no suggestion in the specification that the result is achieved because of the use of the gullets.  On page 5, lines 4 to 19, the gullets are described as merely assisting in removing waste.  Therefore I do not think that the applicant is entitled to claim other constructions of achieving the same result.

Consequently, I am of the opinion that claim 1 and the corresponding claim 5 are not fairly based on the matter described in the specification.

I note that, in the demonstration provided by the applicant at the hearing, the blade used in the demonstration did not have a cutting edge lying transversely beyond the periphery of the disc and yet the blade was still able to cut in a direction perpendicular to the plane of rotation of the disc.  The demonstration blade was not the same as the claimed blade however, as pointed out to me by the opponent.  In any case, I believe that I should not ignore what has been stated in the specification in favour of the results of a demonstration which used a blade which is not the same as the claimed blade.

In paragraphs 3 to 11 of his declaration, Mr. Inkster has raised a number of other issues in relation to the subsequent claims.  However, I am of the opinion that they do not indicate any serious defects other than one in claim 4 which is consequential to the defect I have just discussed in relation to claim 1.  Claim 4 refers to a second flat face with the cutting edge extending also along an edge of this second face.  The lack of definition of the location of the cutting edge to which I have referred in claim 1 would also apply to the cutting edge in claim 4 and the corresponding claim 8.

Both in Mr. Inkster's declaration and at the hearing, some argument centred around the question of whether or not there is new material included via amended page 4.  However I do not believe that this is a matter to which section 40 applies. The claims need only be fairly based on the matter described in the specification as accepted not as originally lodged.  This is more an issue when determining the priority dates of the claims and it is something that I may need to take into account subsequently in relation to the question of anticipation.

In paragraph 13 of Mr. Inkster's declaration, a number of apparent ambiguities are discussed in relation to the description.  However it seems to me that all but the last one of these in no way affect the description of the inventive concept or the best method of performing the invention.  In any case, I believe that a person skilled in the art could easily resolve such ambiguities.

The last point in paragraph 13 relates to the question of the resilience of the disc and the assertion that there is little information in the specification in regard to the resilience of the disc.  The Inkster declaration also indicates that the commercial produced version of the presently claimed blade could not be readily deflected and the resilience of the commercially produced product would not assist in reducing the likelihood of damage to the blade during use.

I agree with Mr. Roth's submissions that the nature of the commercially produced product is irrelevant to the present matter.  However the applicant chooses to market his product is irrelevant to the sufficiency or otherwise of the present specification.

I note Mr. Inkster has come to some conclusion on the degree of resilience of the disc required by the opposed specification as he has indicated that the commercially produced product would not have sufficient resilience to assist in reducing the likelihood of damage to the blade during use.  The specification, at page 6, lines 15 to 23, indicates this and other requirements of the resilient disc and I am of the opinion that a person skilled in the art would be able to determine the degree of resilience required to meet these requirements without exercising any inventive faculty.  Therefore I believe that the specification sufficiently describes the resilient nature of the blade.

There is one further issue in relation to section 40 which I invited submissions on at the hearing but which was not addressed by either party.  It is clear to me from the description that the described invention is aimed at overcoming the disadvantages of prior art hand-held rotary power tools.  One of the main disadvantages of the prior art is that hand held rotary power tools can produce a "kick-back" action which can pull the rotary tool out of the hands of the operator.  However, the claimed invention is not restricted to hand-held rotary power tools.  I do not believe that the description supports any other type of tool than a hand-held one and therefore without this qualification in the claims I believe that the claims are not fairly based on the matter described.

As a consequence, the term "resilient" in relation to the disc does not have a clear meaning in the claim in relation to the degree of resilience.  The only assistance in the description for this term is given in relation to hand-held rotary power tools.  There is no indication of what degree of resilience is required for power tools other than those which are hand-held.

I have found that claims 1, 4, 5 and 8 lack fair basis in relation to the cutting edge and all of the claims lack fair basis in relation to the matter of hand-held rotary power tools.

Prior Publication and Lack of Novelty

As I have refused to allow the amendment to alter the particulars to include a reference to German patent document DE 3541077, this document cannot play a part in the present opposition.  Even though the document forms part of the evidence in reply, such evidence is not strictly in reply and as such should not form part of the opposition.

In relation to the various catalogues, there is no clear evidence of their publication dates in Australia.  While the first Inkster declaration asserts that some of the catalogues have been in Arbortech's possession for a number of years, there is no assertion that they were published before the priority date of the present claims.  Mr. Inkster does assert that cutting blades similar to some of the examples shown in the catalogues have been in use in Australia for over 50 years.  However there is no corroborating evidence.  I am inclined to disregard these publications.

The other main document relied on to establish lack of novelty is US Patent No. 4850487.  There is no evidence on file to establish the publication date in Australia of this document.  The publication date was not questioned at the hearing.  While the US Patent lists the date of the patent as 25 July 1989, I am of the opinion that it would have been published in Australia some months later.  To confirm this, I enquired of the Patent Services Sub-section in the Australian Industrial Property Organisation when the document was published in Australia. I was informed that this publication date was 27 February 1990.  I believe that I am entitled to make such an enquiry to get to the truth of the matter even though no evidence was provided by either party and no submissions put forward in relation to this publication date.

Sub-sections 59(1)(e) and 59(1)(h) of the Patents Act 1952 require that the invention claimed be prior published and not novel in Australia before the priority date of the claim in question.  In the present case, the prima facie priority date of the claims is 12 September 1989 i.e. before the publication date in Australia of the US Patent.  While there was no debate at the hearing specifically about the priority date of the opposed claims, there were some submissions on whether or not the claims are fairly based on the specification as originally lodged.

In order to resolve the questions of prior publication and lack of novelty, I may therefore have to determine the priority date of the opposed claims.  However I find it more convenient to decide firstly whether or not the US document discloses the claimed invention if the document were published before the priority date of the claims.

In relation to prior publication, I do not believe that the US Patent specification 4850407 specifically discloses a cutting means in a gullet with a first flat face lying in a plane substantially perpendicular to the plane of the disc.  While Mr. Barnes presented some ingenious interpretations of the drawings of the US documents, I do not believe that there are clear and unmistakable directions to do what the present applicant has claimed and provide such a flat face as per General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at page 486. The flat face that Mr. Barnes referred to is unlabelled in one drawing and in the other drawings appears to be neither clearly flat nor lying in a plane substantially perpendicular to the plane of the disc. I note also that the blade in the US document is dish-shaped whereas the presently claimed blade is a flat disc because the presently opposed claims refer to the plane of the disc. Also, the US document does not disclose a resilient disc.

Thus I am of the opinion that US Patent No. 4850407 does not prior publish any of the opposed claims.

The test for novelty was stated by Aicken J. in Meyers Taylor v. Vicarr Industries 13 ALR 605 at page 611:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

As to what constitutes infringement, guidance is obtained from the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd. 1969 RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co. Pty. Ltd. and Another 14 ALR 149 at 157. The relevant words of Lord Upjohn are:

"To constitute infringement the article must take each and every one of the essential integers of the claim.  Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

Thus I must determine if all of the essential integers of the claimed invention are included in the US document.

As I indicated earlier in relation to prior publication, the US document does not clearly disclose a number of integers of the opposed claims.  I believe that at least some of these integers are essential integers of the claims.  For example, I believe that the face of the cutting means should be flat and lie in a plane substantially perpendicular to the plane of the disc.  This is clearly essential to the invention described in the specification to allow the blade to cut in a direction perpendicular to the plane of rotation of the disc.  It seems to me that the resilient nature of the disc is also an essential integer of the claim.  It is this resilience which allows a reduction in damage to the blade, for example. (Page 6, lines 21 to 23)

Therefore, as US Patent No. 4850407 does not include all the essential integers of the claimed invention, it does not support the ground of lack of novelty against the opposed claims.

As a consequence, I do not have to determine the priority date of the claims.

Although I have indicated that there is no evidence to establish the publication dates of the various catalogue extracts referred to as part of the opponent's evidence, nevertheless I believe that, had these documents been published before the priority date of the claims, they would not prior publish or render the claims not novel.

The two Kennametal catalogue extracts disclose various types of milling cutters with various shaped inserts.  While it is possible that the inserts when attached to the blades form flat faces lying in a plane substantially perpendicular to the plane of the blades, there is no disclosure that these blades are resilient or that they can cut in a direction perpendicular to the plane of rotation of the blades.

Similarly, the P & N catalogue extract which discloses side and face milling cutters and slotting cutters does not disclose various integers included in the claims.  For example there is no disclosure of a resilient disc or an arcuate portion formed on a corner of the flat face.

Consequently, as these integers are essential to the claimed invention, I believe that these documents would not prior publish the claims nor render them not novel even had they been published before the priority date of the opposed claims.

There is a further exhibit filed with the opponent's evidence.  This exhibit (exhibit 5) consists of photographs of a blade exhibited to the first Inkster declaration and an actual blade exhibited to the Jones declaration.  Again there is no corroborated evidence as to when this blade was generally available.  The first Inkster declaration asserts that these types of blades have been in use for at least the last fifty years.  The blade has some gullets, each of which incorporates a flat face.  However I cannot agree that the face is substantially perpendicualr to the plane of the blade.  Each face is quite clearly at a distinct angle to the perpendicular.  Thus whether or not these blades have been in use for at least the last fifty years, they do not include all the essential features of the claimed invention and thus do not support the grounds of prior publication and lack of novelty.

I have found that the claimed invention is not prior published by or lacks novelty in the light of the various documents and exhibits.

Obviousness

The question I have to ask is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art in Australia at the relevant date.  See Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253 and The Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd 148 CLR 262.

In answering this question, I am not entitled to consider any documents unless they have been proven to be part of the common general knowledge.

There is not sufficient evidence before me to establish that the documents themselves (including the US Patent document and the catalogue extracts) were part of the common general knowledge in the art before the priority date of the claims.  What I have to consider is whether or not the assertions in Mr. Inkster's declarations are true in relation to the state of common general knowledge in the art at the relevant time.

Mr. Inkster declares in his statutory declaration that:

.forming a cutting edge around  the periphery of a flat face is conventional engineering practice;

.it is common knowledge in the metal machining industry to use cutters such as shown in exhibit 5 (which I have referred to in relation to the grounds of prior publication and lack of novelty); and

.tungsten carbide inserts for milling cutters have been in use for well in excess of 50 years.

There is some debate about whether or not Mr. Inkster can be classified as a person skilled in the relevant art.  However whether or not Mr. Inkster is a person skilled in the relevant art and whether or not there is sufficient evidence provided to establish the above three pieces of information as being part of the common general knowledge in the relevant arts, it seems to me that at least the latter two points are not relevant to the presently claimed blade.  There is nothing before me to establish that common general knowledge in the metal machining industry or common general knowledge associated with milling cutters is necessarily relevant to the art of hand held rotary power tools.

In any case, even if the various pieces of common general knowledge could be said to be known in the relevant art before the priority date of the present claims, I am not convinced that the person skilled in the art would come up with the combination of features as presently claimed to solve the problems of the prior art as described on page 1 of the presently opposed specification to which I have referred earlier.  There is no evidence to suggest what the person skilled in the art would do when faced with these problems of the prior art.

Consequently I do not believe that the ground of lack of obviousness has been established.

CONCLUSION

I have found that the opposition has been successful in relation to the ground of lack of compliance with section 40 but unsuccessful in relation to the grounds of prior publication, lack of novelty and obviousness.  As I believe that the specificaton could be amended to overcome the successful ground of opposition, I will allow the applicant a period 60 days from the date of this decision within which to propose amendments to overcome the section 40 defects.

COSTS

In line with the convention that costs follow the event, I award costs against the opponent, Arbortech, in relation to the objection to the request to amend the Statement of Particulars.

In relation to the substantive opposition, Arbortech has been successful only in the ground of lack of compliance with section 40 and only one of the two defects I have found in the claims was raised by the opponent.  However, although it is one of some substance, it had no bearing on the my findings in relation to the other unsuccessful grounds of the opposition.

This section 40 defect was not particularised in the statement of particulars although its inclusion in the submissions at the hearing was not objected to by the applicant.

Because it was not particularised and because, although it is one of some substance, it had no bearing on the my findings in relation to the other unsuccessful grounds of the opposition, I award costs against the opponent as the only grounds which were particularised were not succesful.

R.W. HALLETT

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Perth

Patent attorneys for the opponent   :  Watermark, Perth