Applied Explosives Technology P/L v Robin T Kelly
[1993] APO 67
•25 November 1993
official notice
decision of a delegate of the commissioner of patents
Petty patent : No. 620784 in the name of APPLIED EXPLOSIVES TECHNOLOGY PTY LTD
Title: Shock Focussing Explosives Enclosure Apparatus
Action: Application under s.69 for an extension of term of the petty patent; notice by ROBIN T KELLY under s.28.
Decision: Issued . Petty patent invalid. Patentee given opportunity to amend.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Petty Patent No. 620784 by APPLIED EXPLOSIVES TECHNOLOGY PTY LTD, application under section 69 of the Patents Act 1990 for an extension of term of the petty patent, and notice by ROBIN T KELLY under section 28 regarding the petty patent.
background
Petty patent no 620784 in the name of Applied Explosives Technology Pty Ltd was lodged on 25 February 1991 as 71384/91. The petty patent was sealed on 9 January 1992 and the informant Robin T Kelly notified the Commissioner of matters pursuant to section 28 of the Patents Act 1990 on 1 May 1992.
The patentee applied under section 69 of the Act for extension of the term of the petty patent on 9 December 1992 and on 10 March 1993 provided evidence-in-answer to the section 28 notice in the form of a statutory declaration by Mr C Murray. On 30 August 1993 the patentee filed a request to amend the petty patent specification under section 104 together with a request that in the circumstances the hearing set down for 7 September 1993 should be deferred. However the hearing proceeded on that date and was attended by the informant (Mr Kelly) who is a patent attorney of the firm Fisher and Kelly, Brisbane.
On 1 September 1993 and again at the hearing Mr Kelly provided further material in relation to the petty patent. As this was filed outside the time permitted by regulation 2.6, it was not strictly available for him to argue. However, I was of the view that this new material may affect the validity of the patent and I therefore informed the patentee of that fact under section 28(3) of the Act. The patentee subsequently provided written submissions in relation to this material through its patent attorneys, Pizzey and Co, Brisbane. This included a statutory declaration by Mr John Pizzey and a further declaration by Mr Murray.
section 28 notice
By notice under section 28 a person (the informant) can assert that a petty patent is invalid on various grounds. The provisions of the Act are such that if the Commissioner is satisfied that a ground mentioned in subsection 28(1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent. If not so satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).
In his section 28 notice Mr Kelly draws the attention of the Commissioner to United States patents 3,176,613 and 4,646,641 and states "It is our submission that the claim of the petty patent is clearly invalidated by the above-mentioned prior art". From this it is apparent that ground of invalidity asserted is that of section 28(1)(b), that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b).
The matters raised outside the time permitted by regulation 2.6 were patent specifications EP 0 252 385 and US 3,759,182 and a journal article, "The Shaped Charge for Cheaper Mine Blasting", Engineering and Mining Journal, Vol. 147, No. 5, May 1946, which was accompanied by a statutory declaration by Anthony Ey dated 6 September 1993.
SPECIFICATION
The specification commences by indicating that the invention relates to enclosure apparatus for the enclosure of explosives. Then follows a description of the prior art which includes shaped charges utilising the "Monroe Effect" in which a cavity is formed in one side of the charge to focus the explosive energy into material adjacent the cavity. This arrangement is said to be of limited use underwater as the water filled cavity fails to focus satisfactorily. It is also said that shaped charges using a conical cavity are only effective using explosives with a detonation velocity exceeding 7,000 meters per second. There follows a consistory statement corresponding to the claim which reads as follows
"1.A blasting enclosure assembly for selectively directing an explosive blast into a blast surface, said blasting enclosure assembly including a housing and a closure assembly for enclosing explosive within said housing and adapted for seating against the blast surface, said assembly including:-
an exterior closure wall;
an interior focussing wall extending into said housing, and
a gas filled cavity above said exterior closure wall and divided from said explosive containing portion of said housing by said focussing wall."
The specification as proposed to be amended by the statement filed on 30 August 1993 is in similar terms and includes an amended claim which reads:
"1.A blasting enclosure assembly for selectively directing an explosive blast into a blast surface, said blasting enclosure assembly including an upwardly tapering explosives housing which is symmetrical about an axis normal to its base, a base wall closure assembly for closing the base of said housing and adapted for seating against the blast surface, wherein:
said base wall closure assembly includes a base wall which closes said housing and supports a centrally disposed substantially hemispherical focussing wall extending into said housing and forming a gas-filled focussing cavity above said base wall and acting principally to prevent ingress of explosives material within said housing into said gas-filled focussing cavity which in use, focusses the explosive shockwave into the blast surface whereby the material to be excavated is penetrated and eroded by high pressure shocked gas, and
said housing including an upper frusto-conical portion extending above said focussing wall and an axially disposed locating means for locating a detonator within said housing."
submissions
At the hearing Mr Kelly submitted that the claim of the petty patent was anticipated by the disclosure of patent specifications US 3,176,613, US 4,646,641, US 3,759,182 and EP 0 252 385 and by the disclosure of the Mining Journal reference as referred to previously. He further asserted that the claim was not fairly based because the invention claimed did not achieve its stated objective in solving the problems of the prior art, particularly water ingress to the focussing cavity. He also referred to a number of other section 40 issues.
The patentee's submissions in relation to the patent documents listed in the original section 28 notice is found in the evidence-in-response. The declarant is Mr Christopher Murray, one of the two inventors, who states among other things that:
US 3,176,613 is concerned with the formation of a metal jet or slug for projection into a target while the present invention relies on the penetration of high pressure shocked gas. Furthermore one difference between the invention of the petty patent and the US patent is the incorporation of a sealed, gas or cellular-foam filled cavity.
US 4,646,641 discloses a distinct explosive device. Principally it relies on intimate contact between the explosive and the substrate to be blasted, it is not suitable for underwater use and it also does not have an enclosure with a gas filled or foam-filled, sealed cavity.
In relation to the further material the patentee submits:
US 3,759,182 makes no specific disclosure for providing a sealed focussing cavity and while the base "closes the front part of the cover" there is no indication that it performs a sealing function. In this regard the disclosure does not provide clear and unmistakable directions which result in the invention claimed.
EP 0 252 385 does not teach the use of a sealed focussing hemispherical cavity enclosed by a liner.
In relation to the article "The Shaped Charge For Cheaper Mine Blasting", the declaration by Mr Ey fails to positively establish that the article was published in Australia before the priority date. It also does not disclose a housing having a sealed hemispherical chamber.
decision
As a preliminary matter I note that the Petty patent application was lodged under the Patents Act 1952 but was sealed under the 1990 Act. The Petty patent is therefore subject to subsection 234(5) which reads:
"(5) Objection cannot be taken to:
(a)an application mentioned in subsection (2); or
(b)a patent granted on such an application;
and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the application or patent, as the case may be, under the 1952 Act."
It follows that I should consider the validity of the petty patent under the 1952 Act. The patent will be invalid under the 1990 Act only if it is invalid under the 1952 Act. (See the un-published Patent Office decision Yamazaki Mazak Corp. v Others issued on 21 January 1993 in relation to petty patents 601140 and 601669).
This decision is necessarily restricted to the consideration of the specification of the petty patent as granted. The section 104 request was filed only a few days prior to the hearing and while Mr Kelly urged me to take into account his submissions in relation to the amendments, I believe that the consideration of the request to amend should proceed separately following normal Patent Office procedures. Nevertheless, I also believe that a preliminary assessment of the request to amend may be beneficial to the parties and I will consider the proposed amendments in that light.
Section 40
In considering the question of fair basis I note that in AMP Inc. v. Utilux Pty. Ltd., (1971) 45 ALJR 123 at page 131, the following comments were made by Justice McTiernan:
"... if a claim is not limited by its terms to what the patentee has stated in the body of his specification to be the embodiment of the invention, then the requirement of s.40(2) has not been complied with."
and
"... If as in this case the patentee chooses or is compelled to state advantages of the invention, failure of a claim to embody any of the advantages claimed must result in failure of the claim."
In the present case I am in no doubt that a sealed gas filled cavity is essential to the inventive concept or "embodiment of the invention" described. This is because:
it is the only feature by which the invention overcomes the prior art difficulty of the focussing cavity containing water, and
it is the interpretation offered by Mr C Murray who is one of the inventors.
The claim on the other hand can not be said to define this feature. It refers to a closure assembly for enclosing explosive within a housing which includes "an exterior closure wall", "an interior focussing wall extending into said housing", and "a gas filled cavity above said exterior closure wall and divided from said explosive containing portion of said housing by said focussing wall". From this it is not clear that a sealed gas filled cavity is formed between the closure wall and said focussing wall or indeed that the cavity is even closed at its base by the closure wall.
I do not find that the other matters raised by Mr Kelly are sufficient in themselves to support this ground of invalidity (Section 40). They are matters which are easily resolved and understood by an appropriately skilled addressee.
Novelty and Inventive Step
I find the patentee's submissions in relation to novelty of little assistance when considering the claim of the petty patent. This is because much of the discussion of the distinction between the present invention and the citations relates to features which are not defined in the claim. In particular, the sealed gas filled enclosure as discussed above. I do however agree that the publication date in Australia of the Mining Journal article has not been established positively and I will therefore give it no further consideration.
The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Limited (1972) RPC 457 and Meyers Taylor Pty. Ltd. v. Vicarr Industries Ltd. (1977) 137 CLR. 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention are provided by the prior disclosure (Rodi Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428). In the present case I find that all the essential features of the claimed invention have been prior published in US 3,176,613 and US 3,759,182 in that both describe shaped charges with explosive filled housings, closure walls, interior focussing walls and gas filled cavities as defined. In relation to US 3,176,613 while the closing wall does not extend across the mouth of the focussing cavity it nevertheless is below the cavity and hence falls within the scope of the claim. The disclosures of US 4,646,641 and EP 0 252 385 I believe are insufficient to anticipate the claim particularly in relation to a closure assembly "adapted for seating against the blast surface" and having the features subsequently defined.
While I do not believe that Mr Kelly was asserting lack of inventive step (or obviousness) I nevertheless observe that there is no evidence before me as to what at the priority date constituted common general knowledge in the field of the invention in Australia. That being the case I am not in a position to conclude that the claimed invention is obvious (Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253).
Based on the above considerations I am satisfied that the petty patent is invalid on grounds (b) and (c) specified in section 28(1). I will now consider the description and claims as proposed to be amended.
Proposed Amendments
Claim 1 as proposed to be amended differs from the accepted claim in a number of respects. It includes a base wall which "closes said housing and supports a centrally disposed substantially hemispherical focussing wall extending into said housing", the focussing wall is defined as "acting principally to prevent ingress of explosives material" and the result is claimed of the blast surface being "penetrated and eroded by high pressure shocked gas". Furthermore the housing, now "upwardly tapered", includes "an upper frusto-conical portion extending above said focussing wall and an axially disposed locating means for locating a detonator within said housing"
As indicated above, it is not appropriate for me at this stage to come to any final conclusion concerning the section 104 request and proposed amendments. However, I make the following preliminary observations:
The claim as proposed to be amended defines "a base wall assembly for closing the base of said housing" and "said base wall closure assembly includes a base wall which closes said housing and supports a centrally disposed substantially hemispherical focussing wall extending into said housing and forming a gas-filled focussing cavity above said base wall". It is not apparent however that this necessarily means that the gas filled cavity is sealed. Indeed the attorney for the patentee in his submission dated 24 September 1993 expends some effort in pointing out that to "close" something does not always mean that it is "sealed". It follows that there is nothing in the claim to suggest that the invention defined would perform any better underwater than the prior art.
It is not apparent that the original specification indicates that the explosive shock wave is focussed into the blast surface "whereby the material to be evacuated is penetrated and eroded by high pressure shocked gas". All that is said is that (at page 8 of the specification as originally filed) the shock waves of the explosion are focussed "providing much greater penetration and shattering effect than an unfocussed charge of the same explosive power. A secondary, but no less important effect, is the focussing of the flow of the high pressure gas into the initial cracks, further enhancing the rock-breaking effect". This suggests a significantly different result.
In the amended claim the relationship between the "upper frusto-conical portion" and the "upwardly tapering explosives housing" is apparently not clear.
conclusion
I find that the petty patent is invalid on the grounds that it does not comply with section 40 and that the invention claimed is not novel. However, I consider that there may be patentable subject matter disclosed in the specification and, notwithstanding the section 104 request already on file, I allow the patentee 60 days from the date of this decision to propose amendments to overcome the defects to my satisfaction.
costs
Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner. Action under section 69 which involves a person who gives a notice to the Commissioner under section 28 is, in my view, one such proceeding.
Costs normally follow the event. As I have found that the informant has been successful, I award costs against Applied Explosives Technology Pty Ltd.
PHILIP SPANN
Delegate of the Commissioner of Patents
Patent attorneys for the Patentee : Pizzey and Co, Brisbane
Patent attorneys for the Informant : Fisher & Kelly, Brisbane
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