Austoft Industries Limited v McLean Manufacturing Pty Ltd and Barry John McLean

[1993] APO 63

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 599244 in the name of AUSTOFT INDUSTRIES LIMITED

Title:  Crop transporter

Action: Opposition under section 59 (Patents Act 1952) by McLEAN MANUFACTURING PTY LTD and BARRY JOHN McLEAN; hearing.

Decision:  Issued            . 

Opposition dismissed; opposition grounds
  of lack of novelty and obviousness not
  established.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 599244 by AUSTOFT INDUSTRIES LIMITED and opposition thereto under section 59 of the Patents Act 1952 by McLEAN MANUFACTURING PTY LTD and BARRY JOHN McLEAN.

background

Patent application 599244 for an invention entitled "Crop Transporter" was filed by Austoft Industries Limited ("Austoft") on 22 June 1987 accompanied by a provisional specification.  A complete specification was filed on 21 June 1988.

Acceptance of the application and complete specification was advertised on 12 July 1990.   McLean Manufacturing Pty Ltd and Barry John McLean (hereafter referred to as "McLean") filed notice of opposition on 8 October 1990.

Service of evidence-in-support was completed on 8 January 1992 and evidence-in-answer was served on 6 July 1992.  The opponents, after being granted one extension of time, had until 6 January 1993 in which to serve any evidence-in-reply, but no evidence  was served nor was a further extension of time sought in which to complete and serve any such evidence. 

The matter was set down for hearing in Canberra on 12 May 1993.  Austoft was represented by Mr Crispin Marsh, patent attorney of
F B Rice & Co whilst the opponents were represented by Mr McLean.  Whilst the opponents were not professionally represented at the hearing, I note that their interests in the prosecution of the opposition up until late 1992 or at latest early 1993 had been through registered patent attorneys.

As the application was advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable.

The notice of opposition states the grounds of opposition as those specified in paragraphs (a) through (i) of section 59 of the Patents Act 1952. At the hearing the submissions for the parties concerned only the grounds of lack of novelty and obviousness i.e. grounds specified in paras (g) and (h).

SPECIFICATION

The invention described in the specification concerns a crop transporter particularly for receiving sugarcane billets harvested by cane harvesters and for transporting the cane load to a location where it is unloaded into a loading bin (eg. a railway bin) for subsequent transporting to a cane mill. 

The specification mentions some shortcomings with existing transporters.  It says that articulated transporter vehicles are inherently less stable than vehicles using a rigid frame.  There is reference to another transporter which uses an elevator to raise the cane billets from the bin to a cross conveyor which in turn conveys the cane to a loading bin at the side of the vehicle.  The specification implies that difficulties can arise in discharging the load if the top of the loading bin is higher than the discharge exit of the cross conveyor, necessitating raising the entire vehicle to raise the discharge height.  A further problem mentioned relates to the shape of the transporter bin causing possible jamming leading to the elevator.  

Specific existing transporters are not identified in the specification.  However the discussion about transporters having an elevator to raise cane from the bin to deposit it on a cross conveyor describes transporters typical of which are those described in the specifications of Australian Patent Nos 522770 to McLean and 525839 to Newton, both of which form part of the evidence.

The specification includes a "Summary of the Invention" in terms similar to claim 1.  There are 8 claims to the specification, claims 2 to 7 being dependant claims and claim 8 is a typical omnibus claim.   Claim 1 is as follows:

"1.A crop transporter comprising,

a)  a main frame,

b)  a bin having a forward end and a rearward end,

c)  an elevator with an entrance area located adjacent the forward end of the bin, said elevator extending forwardly and upwardly from the entrance area to a discharge area,

d)  a cross conveyor located substantially normal to the direction of movement of the elevator and being located below and adjacent to the discharge area of the elevator, the cross conveyor being directly or indirectly connected to the bin and being moveable therewith,

e)  first elevating means to raise and lower the forward end of the bin and the cross conveyor connected therewith, relative to the frame, and

f)  second elevating means to raise and lower the rearward end of the bin relative to the frame and to pivot the bin about an axis normal to the direction of movement of the elevator and adjacent the discharge area of the elevator."

The embodiment of the invention described with reference to the drawings concerns a transporter wherein the elevator is mounted within the bin adjacent its front wall.  The cross conveyor assembly is external of the bin and pivotally connected to its front wall and is arranged below the discharge area of the elevator.   On actuating the first elevating means, which is mounted between the transporter frame and the front of the bin, the front of the bin is raised and the desired discharge height of the conveyor means can be attained.   Second elevating means mounted between the transporter frame and a rearward part of the bin enable the rear of the bin to be raised and tilted about a pivot axis near the discharge area of the elevator at the front of the bin.

EVIDENCE

The evidence filed in this matter comprises declarations by the following persons.

Evidence-in-support

Barry John McLEAN -  Exhibits BJM01 to 04
    Henry David HARRIS
    Trevor George FUELLING
    Trevor James DREDGE - Exhibit TJD01   

Evidence-in-answer

Malcolm John BAKER - Exhibits MJB1 to 3

The invention of the opposed application concerns a crop transporter, and that is also the subject matter of Mr McLean's patent application 575713 which has been opposed by Austoft.  Some of the evidence in this opposition includes copies of evidence filed in the opposition to the McLean application, including two declarations by Malcolm John Baker.  Those declarations include numerous exhibits which illustrate many developments in cane transporters of various types prior to the McLean application of February 1985.  Generally speaking, most transporters shown in those exhibits had provision to lift or tip the bins and some had means to lift or extend discharge conveyors used with the bin.

In his declaration Mr McLean refers to his application 575713 and says that "This transporter has been widely documented and is known throughout the cane transport industry, and was part of the common general knowledge in the industry at the priority date of the opposed application".  For easy reference I will refer to the transporter described in application 575713 as the "McLean Mk2" transporter.  He further indicates that the only material difference between the McLean Mk2 transporter and that claimed concerns the feature of paragraph (e) in the claim.  About this difference Mr McLean concludes thus in clause 14:

"It is my firm view that raising and lowering discharge conveyors in order to vary the discharge height thereof, is common practice and the inclusion of feature (e) in claim 1 adds matters of common general knowledge to the other features which in themselves read on the McLean transporter and as a consequence, I believe claim 1 is prior published by my earlier Patent Application No 575713 when read in conjunction with the common general knowledge."

Declarant Harris, a senior university lecturer involved in the field of cane transport since 1976, says in clause 7 that feature (e) of the claim "is not disclosed in the McLean specification", ie. application 575713.  Later in clauses 14 and 15 he refers to matters which "illustrate common usage of variable discharge height" in tipping bins, and that "variable (discharge) height gives a more flexible transporter which can cater for a number of different mill areas".  In clause 15 he concludes:

"... the McLean transporter described in the McLean specification is a very well known type of transporter, it employs the elevator formed as the front wall of the bin in conjunction with a cross conveyor for discharge, and bearing in mind what I have stated above as being commonly known concerning variable discharge heights, I believe that for the added convenience, the McLean transporter could be modified to include the features defined at paragraph (e) in claim 1 of the Austoft specification using what I believe to be common knowledge."

Declarant Fuelling has qualifications in Agricultural Engineering and has 10 years experience in cane transport.  In his evidence he says feature (e) of claim 1 "appears to be absent in the McLean specification" 575713.  He also says, in clause 11, that "Most elevating transporters now have variable discharge height", and in clause 12 states:

"I do not believe there is any particular or significant advantage in adjusting the height of the bin and discharge conveyor together."

Baker, the declarant for the applicant, is listed as co-inventor of the opposed application.  In clause 2 of his declaration he denies the evidence of McLean which was that the McLean Mk2 transporter was common general knowledge in the industry at the priority date, and in clause 12 denies similar evidence by Harris about the McLean transporter.  He says that to his knowledge, "the McLean transporter was not built until 1987 and prior to that had only been publicized in one small advertisement in the Cane Grower magazine late in 1986 as a line drawing."

In clause 3 Baker counters comments in the McLean evidence about an Austoft machine described in patent application 49214/85, namely a transporter which had a variable discharge height.  McLean suggests that that machine employs an analogous arrangement to adjust the conveyor discharge height.  Baker says that "it was a machine of an entirely different nature and incorporated a different operating concept in that it did not employ a cross conveyor".

In answer to evidence of Harris in clause 14 that "Variable discharge height was common in side tipping bins prior to 1976", Baker in clause 11 refers to the type of constructions found in "tipping bins" and states that the "constructions used in these tippers would be in no way applicable to a cane transporter as claimed in the present specification. ....  I fail to see any natural progression from a side tipper to an elevator unloading transporter".

SUBMISSIONS

Mr McLean submitted in effect that the main issue to be considered was whether the feature of the discharge height adjustment conferred novelty on the machine claimed.  Mr McLean referred to the evidence and those parts which discussed, or those exhibits which illustrated, arrangements for lifting bins or discharge conveyors to enable or assist the action of discharging cane from bins to a loading bin.  In referring to such arrangements shown in exhibits to a Baker declaration filed in the opposition to application 575713, he summarised the position thus:

"Nearly everyone of these exhibits ... show that elevating a bin to discharge cane out of it was not only common but it was absolutely necessary, because the height of the cane bin for transport purposes had to be able to get under the harvester, had to be of a low enough height to operate effectively in the paddock underneath the harvester, and at the same time it had to be able to discharge into a higher profile bin which was provided by the mill, and to achieve this almost all cane bins built have had some means of height adjustment to do that." 

Mr Marsh submitted that there was a clear distinction between the invention claimed and any of the prior art.  He conceded that transporters with some of the features claimed were known, referring to the McLean Mk2 transporter and a transporter known as "BIG FOOT" developed by the Rossi brothers in 1985 and referred to in evidence.  The discernible differences, he submitted, concerned the connection of the cross conveyor to the bin and the inclusion of first elevating means to raise the forward end of the bin, features defined in paragraphs d) and e) of claim 1.  He further submitted that there was no evidence to establish that in a transporter of the type to which the invention relates anyone has sought to raise the front of the bin and cross conveyor moveable therewith as claimed. 

Insofar as the opponents suggest the invention is obvious, Mr Marsh submitted that evidence on behalf of the opponents that the McLean Mk2 transporter was common general knowledge was disputed.  Consequently, as such knowledge seemed to form the basis of any obviousness allegation, he submitted that an obviousness finding against the invention could not be made out.
At the hearing Mr McLean disputed the evidence of Baker where he said the McLean Mk2 transporter, to his knowledge, had only been publicized once in a magazine in 1986.  Mr McLean contended that  various advertisements had been published before the priority date of the opposed application, ie. 22 June 1987, and that he could provide details.  Mr Marsh objected to these submissions saying there was no evidence to support the statements made, and drew attention to the fact that any additional evidence in the proceedings could only be by way of the special leave provisions.  I agreed with Mr Marsh, and I indicated to Mr McLean that if he chose to advance further evidence by way of special leave, he would need to address that matter promptly after the hearing.  No application for special leave has been received from the opponents.

DECISION

From the evidence and submissions, I believe the opponents' main grounds of opposition are those concerning lack of novelty and obviousness of the invention claimed.  At the hearing Mr Marsh approached his submissions against the opposition on that basis.

On the question of novelty, in my view the most relevant prior art is the McLean Mk2 transporter disclosed in specification 575713 and the transporter known as "BIG FOOT" developed by the Rossi brothers of North Queensland in 1985.  Information about these transporters was made public before the priority date of the opposed application.  These known transporters are of the same type to which the invention relates in that they have an elevator adjacent the front wall of the bin to raise cane from the bin, have a cross conveyor to receive cane from the elevator, and wherein the bin can be pivoted about an axis near the front top of the bin by means of a lifting or elevating device.  However I agree with Mr Marsh in that these prior transporters do not include the features within paragraphs d) and e) of claim 1 namely:

d).... the cross conveyor being directly or indirectly connected to the bin and being moveable therewith,  and

e)  first elevating means to raise and lower the forward end of the bin and the cross conveyor connected therewith, relative to the frame.

In my view it is clear from the specification that it is these features of the invention which together provide an arrangement which enables the discharge height of the conveyor to be varied, and thus are essential features of the invention.  In applying the reverse infringement test for novelty (see Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1977) CLR 228), I conclude that neither prior transporter mentioned would, if present claim 1 were in a patent, constitute an infringement thereof, since they do not include the essential features d) and e) referred to above. On the basis of that test, claim 1 does not lack novelty.

The opponents, both in evidence and in submissions, relied on what was said as being the common practice of providing means to lift cane bins to effect discharge at different heights and that this rendered the invention not novel.  I do not agree with this rather simplistic line of attack against claim 1 because, firstly, it overlooks the specific requirements of features d) and e) mentioned, particularly that the front of the bin and conveyor are together raised and lowered, secondly, it disregards the other features claimed which effectively characterise the type of transporter to which the invention relates, and thirdly, is an argument which seems more relevant to the question of whether the invention involves an inventive step.  In my view the claimed invention does not lack novelty.

I turn now to the question of obviousness.  The test for obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date: see eg. The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270. It was also stated in The Wellcome case, supra, at 286 that:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

As to what constitutes common general knowledge, in Minnesota Mining and Manufacturing Co v. Beiersdorf (Aust) Ltd (1979-1980) 144 CLR 253, Aickin J said at 292:

"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."

It is also clear from reported cases that documents in existence, or other matters of public knowledge available, at the priority date but not forming part of the common general knowledge amongst those in the trade at that time can not be considered in the determination of the obviousness question.  Thus the inventiveness or otherwise of the alleged invention must only be judged against the background of proved common general knowledge in Australia at the relevant time: see eg. The Wellcome case, supra, at 284, and Minnesota Mining case, supra, at 295.

In this opposition, the opponents claim that the McLean Mk2 transporter was common general knowledge at the priority date of the opposed application.  Mr McLean, who was the inventor of that transporter, says it was "part of the common general knowledge in the industry" while Harris says it "is a very well known type of transporter".  Evidence on behalf of the patent applicant, whilst acknowledging that the McLean Mk2 transporter was known at the date of the opposed application, denies that it was part of the common general knowledge.  In my view the evidence before me is inconclusive on this issue.  The opinions of McLean and Baker, both inventors in the art, are at odds.  The only other evidence is that of Harris who merely refers to the McLean transporter as "a very well known type", and in my view that statement falls short of indicating anything about what was common general knowledge at the priority date of the claims.  Apart from those points, several factors tend to suggest that the McLean transporter may not have been common general knowledge at 22 June 1987.  They are that patent specification 575713 (for the McLean transporter) only became open to public inspection on 14 May 1987, and that, according to Baker, a McLean machine "was not built until 1987".  Consequently, given the evidence before me, I am not satisfied that the McLean Mk2 transporter was common general knowledge at the priority date of the application.

There are suggestions in the evidence that in the industry for many years prior to 1987 cane transporters had arrangements which provided a variable discharge height.  Some of these arrangements concerned tipping bins, where cane is discharged from a bin without the use of any elevators, while others had means to raise or lower a discharge conveyor relative to the bin.  Transporters falling into the latter category could, I believe, include the "McLean Mk1" transporter (the subject of patent specification 522770) and the "Newton machine" transporter (the subject of patent specification 525839), which have been referred to in evidence by Baker being included in Exhibit MJB1.  (Exhibit MJB1 is a copy of a declaration by Baker filed in Austoft's opposition to McLean's patent application 575713.)  There is no evidence by the opponents that these various arrangements constituted matters of common general knowledge in the art, although my conclusions in the opposition to application 575713 was that cane tipping bins, and the "McLean Mk1" and "Newton machine" transporter were common general knowledge before February 1985.  Even assuming that these arrangements were common general knowledge, the evidence otherwise does not suggest to me that the hypothetical addressee would have arrived at the invention claimed.  These prior arrangements had different feature combinations to allow variations to the discharge height from particular transporters.  It seems to me that to arrive at a transporter having the claimed combination of features, which particularly includes provision to lift the front of the bin and with it the discharge conveyor, would have involved more than the taking of routine steps by a non-inventive worker. 

On this obviousness question, the evidence of Harris in clause 15 is unhelpful since it suggests an ex post facto analysis of the invention.  In any event, Mr Marsh submitted that the evidence did not establish that Harris was an expert or an appropriate addressee in the art, and with that I tend to agree since in his evidence Harris does not indicate the nature or extent of his involvement in the cane transport industry.

Thus, on the question of obviousness, given the evidence before me I am not able to conclude that to arrive at the invention claimed would have lacked an inventive step.  Consequently the opposition ground of obviousness has not been made out.

CONCLUSION

I have found that the grounds of opposition as alleged have not been established.  Accordingly I dismiss the opposition.  I direct that the application proceed to sealing, subject of course to any appeal to this decision.

COSTS

Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.  An opposition such as this is one such proceeding.

The general principle is that costs follow the event, that is, a successful party in a proceeding is entitled to its costs in the matter.  Consequently as the opponents have not been successful in their opposition to the grant of a patent on the application, I award costs in accordance with Schedule 8 of the Patent Regulations in favour of Austoft and against the opponents McLean Manufacturing Pty Ltd and Barry John McLean.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  F B Rice & Co, Sydney

Patent attorneys for the opponents  :  Mr McLean represented
  himself and the other
  opponent