Applied Explosives Technology Pty Ltd v Robin T Kelly

[1995] APO 64

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            .

Abstract:       Final determination; Further evidence supplied by the Informant outside the time permitted by Regulation 2.6 brought to the attention of the Patentee under Section 28(3); The Informant was not entitled to be heard in relation to this material or to rebut the Patentee’s submissions.

Novelty considered in light of amended claim; Hemispherical focussing wall added by the amendment found to be essential and reverse infringement test applied; Citations held not to teach all of the essential features to the extent that the Commissioner could be satisfied that the patent was invalid.

Extension of term granted.

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

In a decision in relation to this matter dated 25 November 1993, I found that Petty Patent No 620784 in the name of Applied Explosives Technology Pty Ltd was invalid on the grounds that it did not comply with Section 40 and that the invention claimed was not novel. I consequently allowed the Patentee the opportunity to propose amendments to overcome these deficiencies and proposed amendments were filed on 21 January 1994. The Informant filed comments on 5 April 1994. Leave to amend was granted by a delegate of the Commissioner and details advertised on 16 June 1994. The amendments were not opposed and the delegate allowed the amendments on 27 October 1994.

On 9 December 1994 the parties were notified that the matter was due for final determination and the Informant then indicated that he wished to be heard in relation to the matter. The matter was finally set for hearing on 28 August 1995 but in the event the parties relied on written submissions. H R Hodgkinson & Co filed submissions on behalf of the Informant together with new evidence. While it is not open to the Informant to reargue the case on the basis of this evidence it is prima facie pertinent to the validity of the patent and consequently I believed that I was obliged under Section 28(3) to bring it to the attention of the Patentee.  Pizzey & Co. for the Patentee then requested time in which to respond to this material and filed written submissions and declarations by Christopher Murray and Robert Dawes on 2 October 1995.

Specification as amended

The amendments made to the specification include a new 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 an 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, said gas filled focussing cavity being sealed with respect to the exterior of said housing against the ingress of liquid from the exterior of said housing, said focussing wall acting to prevent ingress of explosives material within said housing into said gas-filled focussing cavity, and

said explosives housing including an upper frustoconical portion extending above said focussing wall and axially disposed locating means adjacent the upper end of said housing for locating a detonator within said housing"

This when compared with the original claim includes significant changes particularly:

The base wall closes the housing and supports a hemispherical focussing wall which extends into the housing and forms a gas filled cavity above the base wall.

The cavity is "sealed with respect to the exterior of said housing against the ingress of liquid from the exterior of said housing".

The focussing wall acts to prevent ingress of explosives material into the cavity.

The housing has an "upper frustoconical portion extending above said focussing wall".

There is detonator locating mean adjacent the upper end of the housing.

further evidence and submissions

The new material before me comprises:

1. US Patent 2,494,256 (Muskat)

2. US Patent 3,613,582 (Levamaki). US Patent 3,759,182 already considered in this matter is related to this document and effectively discloses the same features.

3. A statutory declaration made by Ngaire Ann Pettit-Young on 15 March 1994 indicating that the article "The Shaped Charge for Cheaper Mine Blasting", Engineering and Mining Journal, Vol. 147, No. 5, May 1946, became available to the public on or shortly after 27 February 1973. This article was not considered in my earlier decision because its publication date had not been established.

The Informant maintains that the petty patent after amendment is not novel in light of a number of documents all of which were filed outside of the time permitted by Regulation 2.6, which expired on 9 January 1992. This being the case it is not proper for me to consider the Informant's submissions and the matter is to proceed ex parte (Re Application by Thomas & Stohr (1991) 21 IPR 55). For the same reasons I have not allowed the Informant’s request to reply or be heard in relation to the Patentee’s response to this new material. In the circumstances I do not see any grounds for the Informant’s claim that he has been denied natural justice and I believe the public interest is best served in having the status of the patent resolved at the earliest opportunity.

The Patentee has made a number of submissions to which I will refer at appropriate points in my decision.

decision

Regulation 6.6 provides that unless the Commissioner is satisfied that a petty patent is invalid on one of the grounds specified in Section 28(1) then an extension of the term of the patent must be granted. In the present case the only relevant ground is non-compliance with Section 18(1)(b)(ii), ie that the claim is not novel, bearing in mind that the provisions of Section 234(5) apply as discussed in my earlier decision.

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 my view the following are the features essential to the blasting enclosure assembly as claimed:

1. a housing which is symmetrical about an axis normal to its base;

2. a base wall closure assembly for closing the base of said housing and adapted for seating against the blast surface;

3. a base wall which closes the housing and supports a centrally disposed hemispherical focussing wall extending into said housing;

4. a gas-filled focussing cavity formed above the base wall, being sealed against the ingress of liquid from the exterior of said housing;

5. the focussing wall acting to prevent ingress of explosives material into the gas-filled focussing cavity;

6. an upper frustoconical portion extending above said focussing wall; and

7. means adjacent the upper end of the housing for locating a detonator.

Although a number of these features, such as the focussing wall being hemispherical, have been included by amendment they are still in my view essential. The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, (1982) RPC 183 at page 228, as follows:

"... I think that one can venture upon the following generalisations on the question of essentiality.  (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim.  (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature.  If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim.  But (3), all claims are not perfectly framed.  Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly.  In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it.  (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one.  If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger all assume that a claim may include an inessential feature."

Here there is every indication that the hemispherical focussing wall materially affects the way the invention works and that in the amended claims it is clearly a feature that the Patentee intends to be an essential part of the monopoly provided. Thus I am satisfied that the focussing wall should be treated as an essential feature.

I will now turn to the published prior art bearing in mind that unless I am satisfied that the petty patent is invalid then I should grant an extension of the term. US patents 3,176,613 and 3,759,182 referred to in my previous decision do not disclose a number of the essential features indicated above. In particular, US 3,176,613 does not disclose a focussing cavity sealed against the ingress of liquid and US 3,759,182 does not have a hemispherical wall. In my view US 3,759,182, and US 3,613,582 which is related, also do not contain “clear and unmistakable directions” to provide a gas filled cavity sealed against the ingress of liquid. They disclose inner and outer cones which fit into the U-shaped rim of a base closure but nowhere is a sealing function specified nor have I been provided with any evidence to suggest that a person skilled in the art would understand that a sealing arrangement against liquid ingress was intended or implied.

The Petit-Young declaration indicates that the article "The Shaped Charge for Cheaper Mine Blasting", Engineering and Mining Journal, Vol. 147, No. 5, May 1946, became available to the public on or shortly after 27 February 1973.  It includes a diagram of a charge with a hemispherical wall and a layer defined as “Sticky face layer, adheres to rock”. In response the Patentee has filed declarations, for example that by Mr Dawes, indicating that what is shown in the diagram is a adhesive annulus rather than a layer that closes the cavity below the hemisphere. In the event I do not believe the interpretation of the drawing is important because nothing in the article suggests sealing against ingress of liquid into the cavity.

The final document that I must consider is US patent 2,494,256. This document discloses apparatus for perforating well casings using a number of shaped charges with cavities sealed against the ingress of liquid. Mr Pizzey argues for the Patentee that features 2, 3, 4 and 7 above are not disclosed in that while some of these features are described they are not all included in a single embodiment. I however do not place such a restrictive interpretation on the disclosure and consider, for example, that the option of a hemispherical cavity would be taken by the addressee to apply to all the embodiments discussed.

In my view the citation clearly discloses a device having all of the above essential features except for a base wall closure assembly “adapted for seating against the blast surface”. Mr Pizzey and the declarant Christopher Murray assert that the citation teaches placing the charge at a distance from the target rather than seating it against the target. I accept this but note that the claim of the petty patent does not specify the absence of a standoff but rather that the base assembly is “adapted for seating against the blast surface” which means that some effective standoff may exist in the dimensions of the base wall closure assembly. I also note that the citation at column 5 says that the cover that seals the focussing cavity “may have extensions so as to exclude well fluid from between the end of the cavity and the wall of the borehole”. The question then is whether this amounts to directions that "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" (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at pages 485, 486), that is, to provide a base assembly “adapted for seating against the blast surface”. Having considered the citation as a whole, I do not believe I can safely come to the conclusion that this claimed invention has been disclosed and certainly I can not say that I am satisfied that the patent is invalid.

In light of my findings above, I must grant an extension of the term of the petty patent.

conclusion

I am not satisfied that the petty patent lacks novelty over the documents considered in my previous decision and those that the Informant has subsequently brought to my attention. That being the case I grant an extension of term of petty patent 620784.

costs

As I have discussed above, this decision is in relation to ex parte proceedings before the Commissioner. As a consequence an award of costs is not appropriate.

PHILIP SPANN
Delegate of the Commissioner of Patents

Patent attorneys for the Patentee  :  Pizzey and Co, Brisbane

Patent attorneys for the Informant :  H R Hodgkinson & Co