ATF Mining Electrics Pty Ltd v Bramco Electronics - [2003] APO 47

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 704930 in the name of ATF Mining Electrics Pty Ltd

Title: Load Control Module

Action: Opposition under Section 59 of the Patents Act 1990 by Bramco Electronics

Decision: Issued 31 October 2003.
Abstract

The present invention relates to a load control module and finds particular use in underground mining environments. The module of the invention includes a sensor unit associated with the load for providing a first signal indicative of predetermined operating parameters of the load and a controller which receives the first signal and which also provides a second signal to the switch gear to isolate the load from the power source when the load does not comply with the operating parameters.
Claim 1 is unclear in its production of a signal that is "indicative" of the "predetermined operating conditions" rather than a signal that transmits the "predetermined operating conditions" to the controller. Furthermore, the expression "predetermined operating conditions" was unclear, as it is uncertain whether it was "operating envelope" of the load (i.e. load data) that was uploaded to the controller at startup or mere operating data. Consequently, claim 1 lacks fair basis. As a result of this lack of clarity and fair basis, claim 1 was found to include within its scope the uploading of mere machine recognition data. As none of the dependent claims, apart from the omnibus claim, add any further matter that would delimit the expression "predetermined operating parameters of the load" or term "indicative", it follows that claims 2 to 7 are similarly deficient.

While it was common ground between the parties that mere machine recognition is known, this was insufficient to demonstrate that the claims lacked either novelty or an inventive step.
An award of costs above the schedule fees was considered appropriate, such costs including the actual cost of attendance at the re-convened hearing but excluding the preparation of costs for the hearing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 704930 by ATF Mining Electronics Pty Ltd and Section 59 opposition thereto by Bramco Electronics.
BACKGROUND

Patent application 704930 in the name of ATF Mining Electrics Pty Ltd was filed as a PCT application PCT/AU94/00492 by Metal Manufacturers Limited and was accorded AU74853/94. The PCT application claimed priority from an earlier Australian provisional PM0808 filed on 24 August 1993. The application proceeded to acceptance and was subsequently advertised as accepted on 6 May 1999. On 6 August 1999, Bramco Electronics filed a notice of opposition. On 22 November 1999, ATF Mining Electrics Pty Ltd requested recordal of an assignment dated 17 June 1999 from Metal Manufacturers Limited to itself. The statement of grounds and particulars was served on 8 November 1999 with a subsequent amendment of the particulars being allowed on 24 May 2002. Evidence in support was completed on 7 August 2000, evidence in answer on 7 November 2001, and evidence in reply on 23 April 2002.
A hearing on the matter was set down for Sydney on 27 September 2002. Mr John Walsh, patent attorney of Walsh & Associates, represented the applicant, ATF Mining Electrics Pty Ltd. Mr Chris O'Sullivan, patent attorney of FB Rice & Co, represented the opponent, Bramco Electronics. However, at this hearing Mr Walsh for the applicant raised some preliminary issues. A decision has subsequently issued on these matters: ATF Mining Electrics Pty Ltd v Bramco Electronics [2003] APO 14 (28 March 2003).
A re-convened hearing on the substantive matter was set down in Sydney on 18 June 2003. Mr Walsh, patent attorney of Walsh & Associates, again represented the applicant, ATF Mining Electrics Pty Ltd. Mr Chris O'Sullivan, patent attorney of FB Rice & Co, again represented the opponent, Bramco Electronics.
Patent history
Petty Patent 657460 (71416/94) was filed on 23 August 1994 in the name of Metal Manufacturers Limited. This patent claims priority from the same provisional document as the current application. Ampcontrol Pty Ltd and Bramco Electronics filed a Section 28 notice on 9 February 1996 under Section 223. On 23 March 1997, the patentee sought leave to amend, which was opposed by Ampcontrol Pty Ltd on 13 November 1997. Overlapping with these processes was an offer to surrender the petty patent and a request to withdraw that offer. Bramco Electronics agreed to withdraw their Section 28 action if surrender occurred. Following a joint hearing on the S104 opposition on 657460 and further petty patent 676986 that occurred on 17 November 1998, the patentee offered to surrender petty patent 657460 while the opponent Ampcontrol Pty Ltd offered to withdraw its opposition. These actions occurred and the petty patent 657460 was subsequently advertised as revoked in the Official Journal dated 27 May 1999.
Further petty patent 676986 (43302/1996) was filed 1 February 1996 as a divisional of 74853/94, the current opposed application. On 27 February 1998, Ampcontrol Pty Limited filed a Section 28 notice under Section 223. Following a joint hearing with petty patent 657460 that occurred on 17 November 1998, the patentee offered to surrender petty patent 676986 while the opponent offered to withdraw its opposition. The petty patent was subsequently advertised as revoked in the Official Journal dated 27 May 1999.
Metal Manufacturers Ltd filed another petty patent application 14245/99 on 28 January 1999. However, this application was allowed to lapse under section 143.
Statement of Grounds and particulars
The grounds as filed related to matters of manner of manufacture, novelty, inventive step, and S40 issues. However, the hearing proceeded on the footing that only novelty and S40 issues were relevant.
Evidence
Evidence-in-support
Chris O'Sullivan, patent attorney for the opponent Bramco Electronics filed a statutory declaration dated 25 January 2000. Exhibits CSO1 to CSO22 accompanied this declaration. Exhibits CSO1 to CSO6 are copies of the evidence filed in the S28 notice in respect of petty patent 657460, exhibits CSO7 to 10 are copies of a Mining Technology article, letter and sales brochure for CPM2 respectively, while the remaining exhibits CSO10 to CSO22 are copies of patent specifications.
Mr O'Sullivan filed a second declaration dated 4 August 2000. Exhibits CS1 to CS10 accompanied this declaration. Exhibit CS1 is a copy of the Australian Standard 2081.1-1988 "Electrical equipment for Coal and Shale Mines- Electrical protection Devices", Part 1 General Requirements (1988). Exhibits CS1 to CS11 are copies of patent specifications.
Gil Leishman, managing director of Bramco Electronics, filed a statutory declaration dated 3 August 2000. Exhibits GIL1 to GIL11 accompanied this declaration. Exhibit GIL1 is a copy of Mr Leishmann's resume, exhibits GIL2 to GIL4 are copies of evidence filed in the S28 notice in respect of petty patent 657460, exhibits GIL5 and 6 are copies of patent specifications, GIL7 is a copy of the Mining Technology article, GIL8 and 9 relate to a sales brochure for CPM2 and delivery dockets respectively, GIL10 is a copy of the Australian Standard 2081.1-1988 and GIL11 is a copy of the current specification under opposition.
Gregory Mark Griffiths, co-inventor, filed a statutory declaration dated 4 May 2000.
Denis Edwards who was a supervising engineer at Invincible Colliery filed a statutory declaration dated 26 January 2000.
Chris O'Sullivan filed a certificate dated 5 February 1996 from the Australian Patent Office that indicated when a number of foreign patent specifications became open to publication inspection.
Evidence-in-answer
John Richard Walsh, patent attorney, filed a statutory declaration 6 August 2001 with annexures JRW1 to JRW3. Exhibit JRW1is a copy of granted family member patent US 5721657, while the remaining exhibits relate to the power of attorney and recordal matters associated with the US granted patent.
Peter Douglas Stewartson Cockbain, filed a statutory declaration dated 31 October 2001 with exhibits PC-1 to PC-4. Exhibit PC-1 is a copy of Mr Cockbain's resume, PC-2 is a copy of the opposed patent specification, PC-3 is a copy of Mr Cockbain's declaration in respect of the S28 matter on Petty patent 657460 and PC-4 is a copy of Ian Burrell's declaration from the same S28 matter.
Darryl Bruce Peacock, an Electronics Development Engineer employed by Ampcontrol Pty Ltd, filed a statutory declaration dated 2 November 2001 with exhibits DBP.1 to DBP.4. DBP1 is a copy of Mr Peacock's curriculum vitae, DBP.2 is a copy of the currently opposed specification, DBP.3 is a copy of a paper, and DBP.4 is a copy of the sales brochure for CPM2.
Evidence-in-reply
Bob McConnell of McConnell Mining Consultancy Pty Ltd filed a statutory declaration dated 19 April 2003.
The invention
The present invention relates to a load control module and finds particular use in underground mining environments. The invention connects a power source to a remotely located electrical load. In the prior art, switch gear was inter disposed between the power source and the load and the switch gear was set up for the particular load. Due to the fact that the environment in which the load was located may be hazardous, the switch gear was provided in a protective housing. This meant that an operator must access the switch gear via the protective housing every time the load was to be changed.
The purpose of the invention is to overcome these deficiencies. In an embodiment of the invention a sensor is mounted on the load, or within the load housing, and provides a signal indicative of the predetermined operating parameters of the load, when instructed to do so by the switch gear. In other words the sensor contains the specific data (operating parameters) for the load, which data is then uploaded by the first signal to the control module when the power source is connected to the load via the switch gear. Once this is done the switch gear can then isolate the load if these operating parameters are not met. Thus there are two aspects described. The first aspect relates to load data, while the second aspect relates to operating data. In the first aspect the sensor tells the controller what the parameters of the load should be. In the second aspect the controller monitors the load via the sensor for any indication of deviation from the load parameters. The first and second aspects correspond to the first and third signals.
In an embodiment described, the main circuit board (that part of the controller that includes the switch) requests predetermined signals from the sensor unit. Once obtained these signals are used to provide information to other circuit boards.
There are 8 claims defining the invention. Claim 1 is the only independent claim.
" 1. A load control module for controlling switch gear which, in use, connects a power source to a remotely located electrical load, the module including:
a sensor unit associated with the load for providing a first signal indicative of predetermined operating parameters of the load: and
a controller for receiving said first signal and for selectively providing a second signal to the switch gear to isolate the load from the power source when said load does not comply with said parameters.
2. A load control module according to claim 1 wherein the switch gear and the controller are located within a protective housing and the sensor unit and load are disposed outside the housing.
3. A load control module according to claim 1 or claim 2 wherein the sensor unit periodically provides a third signal indicative of predetermined load conditions.
4. A load control module according to claim 3 wherein the sensor unit provides the third signal when requested by the controller.
5. A load control module according to any one of the preceding claims wherein the controller and sensor unit communicate through a single wire communication link which also supplies power to the sensor unit.
6. A load control module according to any one of the preceding claims wherein the switch gear selectively connects the power source to the load via a power cable, the cable including the communication link.
7. A load control module according to any one of the preceding claims wherein the controller includes means for detecting earth leakage faults.
8. A load control module substantially as hereinbefore described with reference to the accompanying drawing."
DECISION
At the onset it became clear that both parties were prepared to accept that mere machine recognition technology was well known in the art.
Section 40 matters
Clarity
Mr O'Sullivan submitted that the claims were not clear. His submissions a) to d) are as follows.
a) Mr O'Sullivan submitted that while in claim 1 the load control module is said to include: "a sensor unit associated with the load for providing a first signal indicative of predetermined operating parameters of the load", the sensor unit is exemplified as remote from the controller in Figure 1, and although the word "associated" may include that possibility of remote location, this is not consistent with the requirement that the sensor unit is included in the module.
b) Mr O'Sullivan stated that in claim 1 the "sensor unit" is said to provide "first signal indicative of predetermined operating parameters of the load" and the last paragraph of the claim is said to indicate that the load may vary over time from those parameters. From this Mr O'Sullivan deduced that the parameters may relate to "load data" but this is "far from clear".
Mr O'Sullivan explained the difference between "load data" and "operating data" using the principle of redundancy:
"Since Claim 3 concerns the provision of operating data, to avoid redundancy Claim 1 is required only to provide load data.
Note: we use the term 'load data' in the same sense as it is used in Cockbain (in Answer) in paragraph 28. 'Load data' can refer to initial conditions, eg current range required at start up, and conditions during normal operation, eg an operational temperature range. Leishman uses the phrase 'operational characteristics' in paragraph 4 of his declaration to mean the same thing.
Note: 'load data' is contrasted with 'operating data' which concerns how the load is performing in use eg instantaneous current consumption at any given time. Leishman in paragraph 5 of his declaration uses 'parameters of the load' to refer to the same thing."
From these quotes it is apparent that Mr O'Sullivan is well aware of the difference between load data and operating data which he further expands upon by reference to the evidence.
"Both Cockbain (in Answer) in paragraph 28 and Peacock in paragraph 15 propose (in identical terms!) that the claim is restricted to the sensor unit holding data concerning the type and operating parameters of the load to which it is connected and that this load data is uploaded to the controller at startup so that the controller can set itself for the load without having any data pre-programmed into it."
Nevertheless Mr O'Sullivan held that the words in claim 1 as they related to "predetermined operating parameters” did not support the contention that "load data" was being defined.

He further submitted that the term "indicative" is unclear and could be merely referring to machine recognition data.
"If we were to accept that 'predetermined operating parameters of the load' is intended to refer only to 'load data', then something 'indicative' of load data is merely the identity of the load, which would be enough for the controller to obtain the correct settings. In fact the presence of the word 'indicative' requires that it is not the load data itself that is transmitted. The co-inventor Griffiths in his declaration indicates that this is precisely what the patent intended, see 'nomenclature to the load'".
c) In the last paragraph of the claim, the controller is said to selectively isolate the load from the power source when the load does not comply with parameters received from the sensor. There is no indication how the controller is able to determine when the load will not comply with the parameters.
d) There is an unstated implication in claim 1 that the first signal is received before power is supplied to the load, that the sensor then monitors the load and sends operating data to the controller as claimed in claim 3 in order for the controller to operate to disconnect power from the load. Claim 1 is also defective in so far as it does not include these limitations.
Mr Walsh, in his submissions, argued that the terms of the claim were clear and did not need to be restricted.
In Mr Walsh's view, the opponent is confused about the terminology. In his view, the opponent's position is that the sensor includes operating data about the load (i.e. how the load is performing) while the applicant's position is that the sensor means includes the load conditions and predetermined operating parameters of the load. Mr Walsh submitted that:
a)at the time of start up there is no operating data. The term "predetermined operating parameters" refers to the operating envelope.
b)the use of the term sensor in the claim does not mean that anything has to be sensed at the time of upload of the "predetermined operating parameters".
c)the use of "predetermined" distinguishes operating parameters from load data or load conditions as actual load conditions are not predetermined.
d)claim 3 specifically refers to (predetermined) load conditions which are distinguishable from "predetermined operating parameters".
Mr Walsh continued with his submission and articulated how the specification should be interpreted. He stated:
"If one works on the basis that the invention is about set up (of the controller) rather than the actual operation phase of the loads or load recognition, it can be understood how there is a clear distinction between 'predetermined operating parameters' (of claim 1) and predetermined load conditions (claim 3)."
The question is whether this is the view that can be brought to bear on the specification. Mr Walsh responded to the opponent's submissions:
(a) Mr Walsh submitted that a broad interpretation was justified for the term "associated".
"Considering the nature of the invention it is reasonable not to limit this term to one narrower than 'association'. This is because the prior art does not teach a device such as the sensor claimed, connected with, in communication with, adjacent to or integral with the load. The nearest prior art is a machine identification code received by the controller so there is no basis to limit the relationship between the sensor and the load to one narrower that association because the prior art does not teach a sensor or load 'smarts' at the load end. The word 'association' allows for each of the above possible interpretations and provides a monopoly to which the applicant is entitled."
(b) Mr Walsh also submitted that it was purely a semantic argument that the term "indicative" suggests only an indication rather than an actual transmission (of data).
"This is a purely pedantic semantic argument and ignores the claim requirement that the signal indicates the predetermined operating parameters. The load data may be digitally transmitted in which case the digital information will indicate predetermined load parameters. The term "indicates" allows for digital or other forms of signals which indicate predetermined operating parameters. All that is required is that a signal enables the controller to determine the predetermined operating parameters from the first signal. It is therefore reasonable to describe the signal as indicating those parameters. Machine identification is acknowledged prior art but the signal in the claim in suit is indicative of a feature which excludes mere machine recognition, namely predetermined (machine) operating parameters. An identification code for machine recognition (prior art) is not the predetermined operating parameter envelope for a particular machine."

Mr Walsh also submitted that while the opponent has looked to the applicant's experts' evidence as a basis on which to argue for a limitation of the claim and to suggest that in its present form the claim is unclear, it is the words of the claim that must be interpreted.
Mr Walsh submitted that the claim is open to a narrow construction that includes a communication between the sensor and the load and a broader construction in which the sensor is associated with the load.
"The Peacock and Cockbain evidence uses slightly different terminology in the explanation of the claimed features but their evidence is clear in the core differentiation between a predetermined operating envelope for a machine (claim l) and the actual load conditions or actual machine performance (claim 3). Data for machine recognition per se is not within the scope of the claims as the codes previously used for machine recognition did not load either predetermined operating parameters into the controller or represent any kind of performance data. Machine recognition per se which is acknowledged prior art, is therefore not inherent in the claim."
Mr Walsh submitted that the distinction between the invention and mere machine recognition is fundamental to the invention and that the words of claim 1 clearly express this difference.
"Claim 1 makes the necessary fundamental distinction with its terminology between an allowable operating envelope (predetermined operating parameters) for a particular load (machine) and a mere machine code (prior art). Machine recognition code says: in simple terms, I am a crusher, whereas the present invention says, here is my working parameter envelope and therefore allows upload of predetermined operating parameters from the sensor associated with the load, which eliminates the step of manual input of those parameters at the controller end. Machine recognition merely enabled an operator to determine which set of parameters should be manually inserted into the controller (the very step the invention eliminates)."

Mr Walsh draws on the contribution the invention makes to the art in support of his submission that the claims are clear.
"Persons skilled in the art took at least 8 years to arrive at the solution to a vexing, well recognised problem associated with and consequential upon manual input of the machine operating envelope. The prior art taught away from putting smarts at the load end as this was according to conventional wisdom always done manually directly at the controller end. The invention automatically transfers the smarts to the controller from the load end. This advance was non obvious, satisfied a long felt want in the industry and solved the problems of prior art errors, associated down time and economic losses."
Mr Walsh suggested that the opponent concentrated more on the meaning of terms used in evidence rather than focussing on the terms as used in the claims.
"The Opponent's submissions spend much time interpreting the meaning of terms made by Deponents in their Evidence instead of concentrating on the meaning of the precise terminology of the claims of the specification in suit. It is the claim terminology only which requires interpretation. The interpretation of the claim terminology is properly carried out with reference to the specification as the dictionary of the claims."
In my view, a lot of the difficulty with the construction of the claims comes from the fact that the claim defines a load control module consisting of two distinct devices, a sensor unit and a controller that are, in use, remotely located from each other: The controller is associated with the power supply and the switch while the sensor is associated with the load. Once this fact is grasped then the difficulties that this presents are resolvable. It is also clear that the sensor unit provides the "predetermined operating parameters" to the controller.
However, in terms of the ambit of the words "associated" and "indicative", the issues are not so easily resolvable. Both parties, in my mind, agree that in the context of the claim "association" does not limit the sensor being located "adjacent to or integral with the load" (to use Mr Walsh's words). I am in agreement with the parties on this point. While the preferred embodiment locates the sensor "adjacent or integral with the load", there does not seem to be any reason for limiting the term "associated" in the claim to the preferred embodiment.
However, the term "indicative" finds no agreement. Mr O'Sullivan interpreted the word as merely providing an indication whereas Mr Walsh interpreted the word as providing an actual transmission of data that allows the controller to know what the "predetermined operating parameters" are intended to be for that particular load. Mr Walsh submitted that the signal "indicative" of the "predetermined operating parameters" is not mere machine recognition data. However, I believe that Mr Walsh is reading too much into this word. The word "indicative" does not necessarily include the actual transmission of operating parameters; it merely gives an indication of what that data represents. This may, in fact, be machine recognition data. Consequently, I am of the view that the claim includes within its scope the possibility of mere machine recognition data being transmitted by the sensor to the controller.
It is important to read the reads the words "associated" and "indicative" in the context of the predetermined operating conditions. Both parties have an understanding of what is intended to be defined by the claim. The applicant in its submissions uses various words to describe the term. It refers to "load data", "the smarts", and the "operating envelope" none of which are used in the specification. The opponent in its submissions refers to load data and operating data. While all this is understood, it is the claim that needs to be interpreted and the expression "predetermined operating parameters of the load" that needs to be considered. Mr Walsh submitted that the expression related to the desired operating conditions of the load (i.e. initial load data) while Mr O'Sullivan submitted that it included operating data. In my view, Mr Walsh is reading too much into the words of the claim and I prefer the reasoning of Mr O'Sullivan in this matter. In other words, the expression "predetermined operating parameters" does not distinguish between load data or operating data and is thus unclear.
In coming to my conclusion, I need to acknowledge the submission of the parties in relation to the presumption against redundancy of claim 3 with regard to claim 1. Both parties have referred to the presence of claim 3 which relates to the provision of a third signal indicative of predetermined load conditions and both have made reference to this principle of construction. While Mr O'Sullivan acknowledged the inference he maintained that the plain meaning of the expression "predetermined operating parameters" is broad enough to include mere machine recognition. On the other hand, Mr Walsh's argument is that as claim 3 related to operational data, claim 1 must by force of argument relate to load data. In my view, the relationship between claims 1 and 3 is not one that can be simply decided on the basis of the presumption. In my view, the words of claim 1 cannot be read down in this manner and that the expression "predetermined operating parameters of the load" should be given a broad interpretation and is thus not limited to the parties' understanding of the concept of the invention which lies in the uploading "smarts" or "operating envelope" at startup. It is also relevant to mention that the term "predetermined", which appears in both claims 1 and 3 does not provide any distinction between the use of the relevant terms in these claims.
As none of the dependent claims, apart from the omnibus claim, add any further matter that would delimit the expression "predetermined operating parameters of the load" or term "indicative", it follows that claims 2 to 7 are similarly deficient.
In summary I find that the term "predetermined operating parameters" is unclear and that the use of the term "indicative" forces a construction in which the claims include "mere machine recognition" data. All claims apart from the omnibus claim are similarly deficient.
Fair Basis
Mr O'Sullivan referred me to his handed up submissions in which the claims were represented by flow charts showing the interconnection between the various devices as articulated in the evidence. His submission was that these sheets which are entitled "signals provided by the sensor" indicate that there is a lack of consistency in the use of terminology throughout the specification which, coupled with difficulty in determining the scope of Claim 1, makes it difficult to scope the invention described by the specification. He expressed the view that "a failure to identify any invention in the specification with any clarity is fatal to the fair basis of the claims whatever their scope." Mr O'Sullivan cited the Chain Bar Mill Co. Ltd's Application, (1941) 58 RPC 200 for his proposition that the specification cannot be amended as it would claim matter not is substance disclosed in the specification as filed. I do not agree with this submission. The case supports the proposition that existing ambiguity may be overcome by amendments, as long as it is not resolved in such a manner as to result in a larger monopoly which was not in substance disclosed in the specification as lodged. On the facts of the case before me, there is support for the proposition that the invention incorporates the uploading of "load data" from the sensor at startup. Hence, it would be possible to amend the specification to define the invention.
The opponent in its submissions construed the claim; the inventive step of which it seeks to define involves the provision of load identity data from the sensor to the controller at the time of set up.
Mr O'Sullivan explained that the specification mentions the setting up of the controller on three occasions:
"Page 11, lines 2 to 5, explains that the sensor unit is only optionally involved in providing load data to the controller.
Page 12 lines 15 to 17 which does not concern the primary embodiment, states the message from the sensor unit to the controller, relays information about the load, which could be mere identification information. The following example in lines 18-20 serves to point out that set up includes provision of start up conditions and normal operating conditions of the load.
Page 15 lines 12/13 states that the central control function (the important function of the controller) is merely complemented by the controller communicating with the sensor unit to obtain information about the load, and lines 16 to 27 reinforce the optional involvement of the sensor unit."
In his submissions, Mr O'Sullivan submitted that none of the above referred passages provides fair basis for the invention of Claim 1, which resides in the use of the sensor to provide the predetermined operating parameters of the load at startup.
From the evidence, Mr O'Sullivan refers to the various declarants' and analyses their views on the invention. As previously mentioned flow charts indicative of the claim construction were presented.
"Peacock in paragraph 14 states that the key feature of the invention is the provision of "load data" from the sensor to the controller to configure its protection settings.
Cockbain (in Answer) in paragraph 25 lists eight advantages of the invention disclosed.
Cockbain (in Answer) in paragraph 26 lists four advantages of such an arrangement.
Cockbain (in Answer) in paragraph 27 states the invention disclosed resides in the provision of "load data" and "operating data" (claim 3) precluding the need to preload load data before connection of the load. Again, no support for this proposition can be found in the specification."
Mr O'Sullivan concludes that even "if it is suggested as a possibility that 'load data' could be passed from the sensor unit to the controller, nowhere does the specification clearly state that the invention for which protection is sought is the 'load data' being stored at the sensor unit and uploaded at startup to the control unit.
A sheet entitled "signals provided by the sensor" formed part of the opponent's handed up submissions. This submission suggested that the specification is unclear as to what the essential features of the invention are intended to be, in particular whether the first signal was indicative of load data or operating data i.e. the specification was unclear because it does not clearly differentiate between load data and operating data. Mr Walsh in response invited me to read the specification and see for myself what the various terms meant.
In reading the specification, I note in particular the following references to the operation of the load control module.
"Sensor unit … includes a number of inputs which receive signals which are indicative of predetermined load parameters such as temperature, earth continuity and the like." [Page 10 lines 16 to 19]
"Initially, operating parameters of the load such as maximum current capacity, starting characteristics or the like, are obtained by the controller. Thereafter the controller gathers data about the load behaviour and conditions. [Page 15 lines 21 to 25].
These references indicate to me that it is the operating parameters themselves that are uploaded at startup.
Mr Walsh further responded that the invention related to the provision of data at the load end and stated that the provision of a signal indicative of operating conditions, while advantageous, was not where the invention lay.
"Since the inventive step is in simple terms placing the 'smarts' at the machine (load) end (the direct opposite of the prior art manual input of trip settings into the controller) there is no need for the Applicant to restrict claim 1 to transmission of both predetermined operating parameters and load condition (the latter now in claim 3)."
Mr Walsh also submitted that the opponent appears to be suggesting that (factory) pre -programming the sensor is tantamount to, or somehow analogous to manually programming the controller (on site) with trip parameters, as was done in the prior art.
"This is an inappropriate analogy and the respective methods are at opposite ends of the spectrum because in the former (factory pre programming) correct operating parameters are accurately uploaded to the controller each time the load is connected whereas with manual input direct into the controller there is always the opportunity for human error. Error can also arise in inadvertent connection of a particular load cable to its controller. This cannot happen with the smarts associated with the load."
I would comment that the specification has placed a very heavy burden on the reader and that as the opponent has suggested the specification is difficult to construe. However, in my view, the difficulties are resolvable and the only rational conclusion that could be drawn was that the invention lay with the pre-loading of operating envelope data from the sensor to the controller.
In relation to Mr O'Sullivan's submissions c) and d) above, I believe that these are easily resolvable in the context that persons skilled in the art would easily understand how the device would operate in practice. See Glaverbel SA v British Coal Corp, [1994] RPC 443 at 495 where the court stated:
"The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent."
Summary of S40 issues
In summary, on analysis of the words of the claims, I have found that they include the uploading of mere machine recognition data. The invention of the application does not relate to the production of a signal that is merely "indicative" of the "predetermined operating conditions" but rather a signal that transmits the "predetermined operating conditions" to the controller. I have also found that the expression "predetermined operating conditions" is unclear, as it is uncertain whether it was "operating envelope" of the load (i.e. load data) that was uploaded to the controller at startup or mere operating data. Consequently, claim 1 lacks fair basis. As a result of this lack of clarity and fair basis, claim 1 was found to include within its scope the uploading of mere machine recognition data. All claims apart from the omnibus claim were found to be similarly deficient.
Novelty/Inventive Step
Mr O'Sullivan submitted that the invention as defined by the claims lacked novelty as it included the known prior art of machine recognition, which he submitted had become common general knowledge in the art in Australia. However, it is clear that this is an inventive step argument as it involves common general knowledge.
The law on inventive step was articulated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 292, where Aickin J. stated:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
Mr O'Sullivan identified the following as indicating that machine recognition was part of the common general knowledge (CGK) in Australia prior to the priority date of the application.
"(a).     The Bramco product identified as CPM-1 (Control and Protection Module) which was widely sold in Australia before 24 August 1993.
(b).      The long known and widely discussed desiderata to incorporate machine recognition into products such as the CPM-1, see the declarations of Burrell paras 3 and 5, Cockbain, Hammond, Bignell, Blayden and Leishman.
(c).      The use of protective housings as mentioned in claim 2, see for instance the admission on Page 2, second paragraph, of the specification, and the declarations of Cockbain para 1 and 2, Hammond, Bignell, Blayden and Leishman.
(d).      The use of a power cable to a load which incorporates a communications link (pilot line) as claimed in claim 6, see for instance the declarations of Burrell para 4, Cockbain, Hammond, Bignell, Blayden and Leishman.
(e).      Electrical Equipment for Coal and Shale Mines - Electrical Protection Devices" (1988) (STANDARD).
(f).       The Journal of the Institute of Mining Electrical and Mining Mechanical Engineers entitled "Mining Technology" ie (temperature sensor).
(g).      The subject matter disclosed under the headings "Technical Field" and "Background Art" of Patent No. 704930 from the beginning of the specification until page 3, line 7.
(h).      The idea of remote changes to relay settings as indicated in Exhibit DBP3 to the declaration of Darryl Bruce Peacock dated 2 November 2001.
(i).       The concept that once appropriate data is received by the controller is it common general knowledge how to process that data in order to make the settings.
(j).       The use of a sensor unit associated with the load for providing a signal to the switch gear to isolate the load from the power source when there is an earth continuity fault in the cable supplying equipment.
(k).      It is common general knowledge to use a sensor unit associated with the load for providing operational data concerning the load.
(L)      IPA unit" (a protection relay manufactured by Ampcontrol Pty Ltd).
Mr Walsh, in response argued that generally the evidence does not satisfy the tests for CGK and he drew my attention to the case of Robb Farm Industries v Yazaki Australia Pty Ltd [1994] 65 AIPO (17 October 1994) citing General Electric Co's Application (1936) 53 RPC at page 250.
"A piece of particular knowledge as disclosed in a scientific paper does not become part of the common general knowledge merely because it is widely read and still less because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and generally regarded as a novel basis for further action by the bulk of those engaged in the particular art; in other words when it becomes part of their common stock of knowledge relating to the art."

Specifically, Mr Walsh submitted that the opponent has failed to show that it would have been obvious to arrive at the invention and particularly the claimed combination of features of at least claim 1. Rather, in his view the opponent has merely isolated features of the combination and proceeded to show that each feature is obvious.
Mr Walsh submitted that the evidence of common general knowledge supplied by the opponent did not show that the alleged CKG has been widely read and widely circulated. Mr Walsh then specifically responded to the submissions made by the opponent.
"(a)      CPM-1. The evidence shows how many units were sold but not how widely known the CPM was by persons skilled in the art.
(b)       The applicant accepts that machine recognition was known before the priority date in fact at least 6 years before but the Opponent has failed to show why it took six years to arrive at the invention once machine recognition was known.
(c)       Claim 2 relating to protective housings is read in conjunction with claims l which itself is submitted is a novel and inventive claim and not in isolation from that claim. Again the Opponent is not reading the claim as a combination but selectively identifying features and attempting to show that the isolated feature is obvious rather than the combination.
(d)       The applicant accepts that use of a pilot line was known but this does not signpost the invention.
(e)       There is no evidence to show that this standard was widely circulated and used it the industry.
(f)        There is no evidence that this document was widely read and widely circulated in the industry and that it would have been known to all skilled practitioners in the art: see Robb Farm test (supra).
(g)       Passages in the specification are accepted as common general knowledge.
(h)       Not necessarily CGK.
(i)        There is no supporting evidence to suggest that this is CGK
(j)        There is no evidence to show that the CKG tests have been satisfied.
(k)       It is common general knowledge to provide communication between a controller and a load which is periodically interrogated by the controller."
Mr Walsh concluded that the opponent appears to have concluded on an interpretation which suits its objectives and set about fitting that interpretation to the claim by trawling through the specification to find evidence to support the incorrect interpretation. Mr Walsh again rejected the view that claim 1 includes machine recognition (or load data) because in his view the specific wording of "predetermined operating parameters" read in the context of the invention excludes this possibility.
Mr Walsh again submitted that the solution was non-obvious.
"…that as none of the declaratory or prior art evidence teaches uploading of predetermined operating parameters from a sensor at the load the invention is no obvious in light of the common general knowledge. It took about 6 years from initial discussions of the problems of the prior art to arrive at the invention suggesting that it was not an easy solution to the well recognised problem and non obvious to a person skilled in the art. "
Mr Walsh for the applicant indicated what he considered the invention to be and he distinguished the contribution that the invention made over the prior art.
"The claimed invention can be well understood with reference to the statements in the Declaration of John William Weaver (a co-inventor) cross referenced with the S27 Application against (74853/94) filed by the present Applicant's parent company Ampcontrol Pty Ltd and the Declaration by Christopher David Cook lodged in respect of Application under S28 against divisional petty patent 676986 by the Applicant's parent Ampcontrol Pty Ltd.
Put simply, the invention resides in a load control module characterised by the inclusion of a sensor associated with a load and which transmits a first signal indicative of predetermined operating parameters to a controller.
The invention is concerned primarily with the start up or set up phase to be distinguished from the operation phase - the latter involving prior art technology in which a controller monitors load conditions during operation of the load. The invention is concerned with the initialisation phase in which a pilot wire is connected between controller and a load whereupon when the sensor detects connection and before the load is fully energised, it transmits via a first signal predetermined operating parameters of the load (i.e. the permissible operating envelope in which the load can operate or trip settings) before the controller will trip the switch (second signal) to isolate the load from its power source when the load conditions move outside the predetermined operating envelope. This eliminates the prior art step of manual input by an operator of the predetermined operating parameters and thus eliminates the possibility of human error as occurred with the prior methods."
While it was common ground that mere machine recognition was known and there is sufficient support in the evidence to suggest as per items b) and d) in the parties' submissions (reproduced above), this does not show that the claim lacks an inventive step. Claim 1 is a combination claim and there is no evidence to suggest that elements of common general knowledge can be put together to arrive at the claimed invention. Nor can I find any evidence to suggest that common general knowledge could be added to any one of the documents that were referred to me.
The further argument presented by Mr O'Sullivan was that a trial of a remote load monitoring device at Invincible Colliery in 1986 anticipated the invention. In response to this allegation, Mr Walsh submitted that the evidence was insufficient to demonstrate that the invention was anticipated. In particular, he submitted the following:
a) the evidence did not conclusively establish what tests were carried out at Invincible Colliery,
b) none of the declarations by the opponent's witnesses contain any documentary evidence of the precise nature of alleged tests, who was present at those tests, how the testing regime was set up and precisely when they occurred,
c) there is no corroboration of the witnesses' statements. For example, the declarations by Gil Leishman, Ian Burrell (in-support) and Bob McConnell (in-reply), do not provide any insight into any anticipation or prior use of the claimed invention and are nothing more than mere recollections of events,
d) there are no documents which support the deponents' Leishman and Burrell recollections of events.
Mr Walsh pointed out that mere recollections of events are insufficient to establish prior use: Compri Technic Pty Ltd v Pneumatic Systems International Pty Ltd [1999] APO 39 (29 June 1999) citing Windsurfing International Inc V Petit; Windsurfing International Inc v Borsimex PtyLtd (1984) AIPC 90 - 135;
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."
and Seiller's Application [1970] RPC 103 per Graham J. at p106,
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
Mr Walsh also submitted that the opponent has a heavy onus of proof to prove prior use on the balance of probabilities; Dunlop Holdings Ltd's Application [1979] RPC 523 but that in this case that onus has not been discharged. In Mr Walsh's view the only weight that could be given to this evidence relates to machine recognition and in fact Mr Walsh concedes that if something took place at Invincible Colliery it was mere machine recognition. In my view, the evidence of the trial at Invincible is not of high probative value and in any case it would not demonstrate that the combination defined by claim 1 lacked novelty.
Summary of novelty / inventive step issues
While it was common ground between the parties' that mere machine recognition was known and while there is sufficient support in the evidence to hold that mere machine recognition was common general knowledge in Australia, there is insufficient evidence to show that it would be obvious to combine different elements of common general together in arriving at the invention defined by claim 1.
In relation to the trial at Invincible Colliery, I am in agreement with Mr Walsh and conclude that the evidence is not of high probative value and adds no more to the case than was conceded and thus does not deprive the claims of novelty.
OTHER MATTERS
Mr Walsh made a number of detailed comments about the adequacy of the opponent's statement of grounds and particulars. While I have not specifically included these submissions in my decision, I have nevertheless included any relevant matter in my decision, if it were appropriate to do so.
CONCLUSION
I have found that all of the claims apart from the omnibus claims lacked clarity and fair basis. In my opinion, there is clearly patentable subject matter and subject to any appeal, I give the applicant 60 days from the date of this decision to propose suitable amendments.
In relation to the possible amendments, it seems to me that both parties have an understanding that invention relates to the "operating envelope" (or "smarts") of the load that is uploaded at startup from the sensor to the controller. Hence, any proposed amendments should be directed to encompassing this concept. Mr Walsh, in his handed up submissions, indicated that the expression "predetermined operating parameters of the load" related to the "permissible operating envelope in which the load can operate or trip settings". This seems to me to encapsulate what the parties understand as the novelty-conferring feature of the invention. However, this should not be taken as a direction as to what amendment would be acceptable: Any allowability issue would have to wait for a subsequent S104 amendment action.
As I have earlier stated in relation to fair basis, the opponent made the submission that specification cannot be amended, as it would claim matter not is substance disclosed in the specification as filed. I had replied that I believe that it would be possible to amend the specification to define the invention. While I acknowledge that it may be difficult to amend the specification to comply with S104, it is my opinion that it is possible and that the applicant should be given an opportunity to propose suitable amendments.
COSTS
Mr O'Sullivan submitted that the opponent was entitled to all the costs associated with the re-convened hearing and all of the costs associated with the actions of the petty patents. In particular, Mr O'Sullivan requested that full costs as per client/solicitor basis be awarded. Mr Walsh commented that as co-pending applications were permissible under the Patent legislation, no award could be made in the current action for cost associated with the petty patents. Mr Walsh submitted that costs should follow the event.
Regulation 22.8 states as follows:
"(1) The Commissioner must not award costs in proceedings to which this Division applies, other than costs specified in Schedule 8 unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in Schedule 8; or
(b) in respect of the expenses or allowances of a person in relation to proceedings to which this Division applies."
As both parties have an opportunity to be heard, I can consider the application to award costs above the schedule. In Impact Post Anchors v Vincent Charles Carsburg [1999] APO 15 (24 February 1999) the delegate believed that an award of costs above the schedule was warranted. In his decision, the delegate referred to a number of authorities for justification of a variance in the award.
"The Commissioner's discretion in this regard has been discussed in a number of Office decisions including for example Sterling Drug Inc v Boots Company PLC, 35 IPR 630 and Viskase v W.R. Grace (1998) PTO 47 (26 August 1998). It is clear from these and the principles stated by Sheppard, J in Colgate-Palmolive Co and another v Cussons Pty Ltd, 28 IPR 561, that the Commissioner should not normally depart from an award of costs on a party and party basis unless the circumstances clearly warrant doing so. According to Cooper and Merkel JJ in Re Wilcox; Ex parte Venture Industries Pty Ltd and Others, 141 ALR 727, such circumstances arise 'when the justice of the case so requires or where there may be some special or unusual feature in the case.'
Here it can be said that the Section 36 requestor has unreasonably allowed the patent applicant to incur the cost of attending the hearing under the expectation that the substantive issues would be addressed. In the circumstances I believe an award above the schedule is justified and I award costs in favour of Impact to include the hearing fee plus Mr Flanagan's substantiated travel costs."
In the current case, the substantive issues could have been addressed at the hearing of 27 September 2002. I believe that actual cost for attendance at the re-convened hearing are appropriate in the circumstances, such costs are to exclude preparation cost as it would be assumed that this had already been done. However, the issue of the costs associated with the petty patents is different and I believe they cannot be include within the award as they are independent matters which could have led to an award of costs if they had been pursued. Similarly, with respect to the preparation for the S210 notice and associated issues, it is my view that these are not matters directly that are related to this hearing and hence cannot be included within the award.
As such, I award costs for the hearing held on 18 June 2003 against the applicant, ATF Mining Electronics Pty Ltd, such costs including the actual cost of attendance at the re-convened hearing but excluding the preparation costs for the hearing.
G.M.Cox
Delegate of the Commissioner of Patents
31 October 2003
Patent attorneys for the applicant :Walsh & Associates, Sydney
Patent attorneys for the opponent :F B Rice & Co, Sydney