Austoft Industries Ltd v Cameco Industries Inc

[1996] APO 26

official notice

decision of the commissioner of patents

Application  :          No. 639579 in the name of AUSTOFT INDUSTRIES LTD

Title:          Base Cutter Assembly

Action:          Opposition by Cameco Industries, Inc. Decision in the opposition following an invitation to provide further evidence.

Decision:          Issued            .

Abstract:          Decision dated 23 November 1995 found there was anticipation by prior use, but gave the parties an opportunity to provide further evidence to definitively establish what was incorporated on the machine of the prior use.

Further evidence considered. Discussion of the principles of benefit of doubt, of the standard of proof required, and of shifting the burden of proof from the opponent to the applicant.

The evidentiary burden of proof of the shape of the drive shaft present in the machine of the prior use lay, in the present circumstances, with the applicant.

Majority of claims found to have been anticipated by the prior use. Applicant given an opportunity to amend.

patents act 1990

decision of the commissioner of patents

Re:Patent Application No. 639579 in the name of AUSTOFT INDUSTRIES LTD, opposition thereto by CAMECO INDUSTRIES INC, and consideration of evidence filed as a result of an invitation.

background

In my decision dated 23 November 1995 [reported in (1996) AIPC ¶91-206] I made a number of findings, including a finding that there had been a prior use of the invention before the priority date of the claims. However, there were difficulties with the evidence available. In brief:

• the applicant argued its case on the basis that prior use had occurred (arguing that the use should be excluded by way of it being a reasonable trial) without addressing the detail of what in fact was used; and

• the opponent’s evidence did not establish what was used at the admitted prior use.

As a result, my decision concluded:

“However, the evidence of exactly what was used on 8 July is far from satisfactory; but given the implicit admission that the use involved some form of the present invention, the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3. However, before making that conclusion I think it is appropriate in all the circumstances to provide both parties an opportunity to provide me with definitive evidence (such as engineering drawings, verifiable photographs) of what was in fact incorporated on the machine for the 8 July use.”

and the parties had until 23 December 1995 to provide any such material. Following a request for further time to provide material, the applicant filed a statutory declaration by their patent attorney accompanied by six exhibits. The opponent considered the material supplied by the applicant to be insufficient, and requested that I make an order for the production of certain documents. In a decision dated 15 February 1996 I refused to make such an order for production. I also gave both parties 14 days to advise whether they wished to be heard on the effect of the further evidence. In response the applicant provided some written submissions; otherwise neither party wished to be heard.

Submissions

The submissions of the applicant may be summarised as:

• my decision of 23 November made no finding of what was on the machine trialed on 8 July 1990 - only a suggestion of what was on the machine. I am not bound by that suggestion;

• the onus is on the opponent to establish its case of prior use;

• the opponent has failed to establish what was on the machine trialed;

• the further evidence shows that the cleaning means was in the form of a disk – as depicted in fig. 3 of the specification;

• the further evidence does not show whether the lower end of the legs had a cone, paddles, or nothing present; and

• benefit of any doubt must be given to the patent applicant.

The applicant argues that for some or all of these reasons, the opponent has not establish its case and the patent should proceed to grant. In the alternative that I find there was relevant prior use, the applicant requested that they be afforded an opportunity to amend.

onus of proof

As I understand the main line of submission by the applicant, in my earlier decision I was ‘unable to determine exactly what arrangement was used’; the evidence now available to me still leaves open what exactly was used; the opponent has failed to establish what was used; following McGlashan v Rabbett (1909) 9 CLR 223 and Commissioner of Patents v Microcell (1959) 102 CLR 232 I ought not refuse to grant a patent unless it is quite clear that the patent would be invalid; that any benefit of doubt must be afforded to the patent applicant; and that therefore the opposition must fail and the patent be granted on the specification in its present form.

There are a number of decisions of the High Court which state the general principle that the Commissioner ought not refuse acceptance of an application and specification unless it appears practically certain that the patent would be invalid - see for example Commissioner of Patents v Microcell (supra). Some of these cases, such as Microcell and McDonald v Commissioner (1913) 15 CLR 717 involved ex parte proceedings before the Commissioner. However McGlashan v Rabett was an inter parte proceeding like the present, and I think the comments of O’Connor J are particularly relevant:

‘A certain amount of evidence has been given as to whether the applicant’s invention differs substantially from them. But the evidence is not sufficient to satisfy me one way or the other upon that point. The onus on such an issue is clearly upon the objector. As he has failed altogether to satisfy the Court on that question of fact, he must fail altogether. In determining the principle upon which a doubtful condition of facts is to be dealt with we must have regard to what the proceeding really is. The objection, and the proceedings in connection with it under s.56 of the Patents Act 1903, are merely to enable the patent office to come to a determination for the purposes of registration so that only patents prima facie valid shall be upon the register. It is no doubt a good thing to have some process by which patents obviously invalid shall not be allowed to encumber the register. Under these circumstances it is very important that the Registrar should have the full powers of inquiry as to certain matters, for the purpose of ensuring that patents which are obviously bad shall not acquire by registration even a prima facie recognition by the Commonwealth. The machinery provided by the section does not go beyond that. It certainly appears to me that under those circumstances it is not the duty of the Court to give a decision which will shut out the applicant altogether, but in cases where the objector has not discharged the onus cast on him, to allow the patent to be registered, leaving the question of insufficient invention to be fought out by the parties, if they think fit, in a suit for infringement, where the whole question may be thoroughly gone into.’

As to the standard of proof that is required, I observe that there is nothing to suggest that it is the standard required in criminal matters. Thus the comments of Buckley LJ in Dunlop Holdings Ltd [1979] RPC523 at 542:

‘As to the standard of proof, there is nothing in the statute to suggest that any standard different from the normal standard of proof required in civil litigation – that is to say, the balance of probability – should be adopted. But that standard is not an absolute standard. The nature of the issue may affect the kind and the cogency of the evidence necessary to bring the scales down on one side or the other. If something is inherently improbable, more weighty evidence is required to establish that it probably occurred than if it were inherently probable.’

Buckley LJ also discussed on page 542 the issue of who bore the onus of proof, and (of particular relevance to the present circumstances) a situation where the evidential burden of proof may shift from the opponent to the applicant:

‘In another case, Technic Incorporated’s Aplication [1973] RPC 383, the court appears to have assumed that the onus of proving that the prior use was not a secret use rested with the opponents. There appears, however, to be no positive authority on the question of where the legal burden of proof lies. It seems to me that in principle that burden should lie on the opponents to prove all the necessary elements of a valid ground of opposition and that accordingly, in the case of an opposition under section 14(1)(d) the opponents must establish that there has been previous use which was not secret. It should be appreciated that that use may have been use by the opponents themselves, or use by the applicants themselves, or use by some third party or indeed some co-operative use by more than one user. Knowledge of the relevant facts may lie mainly, or exclusively, with either the opponents or the applicants, or be to a greater or lesser degree available to either of them. Notwithstanding that the legal burden may lie upon the opponents, the evidential burden may shift according to the state of the evidence from time to time. The ease with which it may do so may depend upon the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. Thus, if the relevant facts are likely to be within the exclusive knowledge of the applicants – if, for instance, the alleged prior use is a use by the applicants themselves – very little evidence on the opponent’s side might be sufficient to shift the evidential burden on the issue of secrecy to the applicants. Failure to produce convincing evidence of secret or non-secret use at any stage at which the evidential burden rests on the party who fails to do so, may prove fatal to that party’s case; ...’

and later, on page 544:

‘Where the relevant facts are peculiarly within the knowledge of one party, it is perhaps relevant to have in mind the rule as stated in Stephen’s Digest, which is stated at page 86 of Cross on Evidence:

“In considering the amount of evidence necessary to shift the burden of proof, the court has regard to the opportunities of knowledge with respect to the facts to be proved which may be possessed by the parties respectively.”

“This does not mean”, Sir Rupert continues, “that the peculiar means of knowledge of one of the parties relieves the other of the burden of adducing some evidence with regard to the facts in question, although very slight evidence will often suffice”.’

Decision

Applying these principles to the present case I have no doubt, for the reasons given in my decision of 23 November 1995, that the ‘trial’ that occurred on 8 July 1990 constituted a prior use of the claimed invention. The prior use is effectively admitted by the applicant – as is readily apparent from its defence being solely the ‘reasonable trial’ provisions of the Act. Additionally, nothing that has occurred since my decision of 23 November 1995 suggests that the prior use was outside the scope of the claims. Accordingly I consider the opponent has succeeded in establishing this ground of opposition.

The peculiar difficulty that arises in this case is the poor evidence of what was actually present on the machine that day. This difficulty does not relate to whether or not there was in fact a prior use falling within the scope of the invention claimed. Rather it relates to which claims are anticipated by that prior use – and whether the finding of prior user can be overcome by an appropriate amendment of the specification. To resolve this difficulty there are certain evidentiary issues that require resolution.

The evidence

In my first decision I concluded “given the implicit admission that the use involved some form of the present invention, the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3”, but gave the parties an opportunity to provide further evidence. In the event, there are three critical issues that I need to determine from the evidence – the form of the cleaning means, the shape of the drive shaft, and the location of the cleaning means.

Form of the cleaning means.

In the further evidence the applicant admits that “it is reasonable to assume” that the machine had cleaning disks as shown in figures 2 and 3 of the specification. That corresponds to the view I formed in my earlier decision, and I now find that the machine contained such disks as the cleaning means.

Shape of the drive shaft

Neither party has provided definitive evidence of the shape of the drive shaft that was present on the machine. I note that figures 2 and 3 of the specification show a drive shaft having an hour-glass shape. However the most relevant evidence is some photographs (MJB12 to 17) of three machines. (See the declaration of Baker re related opposition to 635438, which is incorporated in the present proceedings by way of cross-reference.) Baker declares that these photographs were taken in 1990 – that is, in the same year as the priority date.

The cleaning means shown in the machine of MJB17 is apparently the edge of a deflection plate; in any event, it does not appear to be in the form of a disk. Consequently (given my finding on the form of the cleaning means) I do not think this photograph is relevant.

The machine shown in MJB12 and 13, and that shown in MJB14 to 16, both clearly have a cleaning means in the form of a disk – and are therefore prima facie relevant vis-a-vis the form of the cleaning means. Additionally they are relevant through being somewhat contemporary to the time of the prior use. These photographs show:

• in MJB12 and 13, a drive shaft having an ‘hour-glass’ configuration – the bottom portion being formed by a continuous conical surface, the upper portion being formed by four ‘paddles’.

• in MJB14 to 16, a drive shaft which does not have an ‘hour-glass’ configuration. Although it has the top half of the hour glass (formed in the same manner as MJB12 & 13), it does not have the bottom half - the drive shaft is linear to the base plate, with no conical surface. However given the location of the cleaning disk in the middle of the drive shaft (and adjacent the top part of the shaft) I have no doubt that in use the trash was in fact urged (for example, by the build up of trash) to the middle of the shaft where the cleaning means is located. That is, the shape of the drive shaft is indeed such that in use trash is urged towards the middle.

By itself I consider this evidence establishes that the drive shaft used in the machine at the ‘trial’ was at least as likely to have had an ‘hour-glass’ configuration as not. I also consider that the applicant is in a special position with regard to establishing what was used on the machine that day – the ‘trial’ having been conducted by the applicant, using equipment made and supplied by the applicant. I consider [following Dunlop Holdings Ltd (supra)] that the evidence is sufficient to move the evidentiary burden of proof of what was used on the machine that day from the opponent to the applicant. That is, given the available evidence and the applicant’s special position with respect to the ‘trial’, the applicant carries the burden of proof that the drive shaft used that day was not of an ‘hour-glass’ configuration – rather than the opponent carrying the burden of proof that the drive shaft used that day definitely was of an ‘hour-glass’ configuration. This the applicant has not done. I accordingly conclude, on the balance of probabilities, that the machine used at the ‘trial’ had a drive shaft having an ‘hour-glass’ configuration.

Location of the cleaning means

The photographs MJB12 to 17 all show the cleaning means located around the middle of the drive shaft, as do figures 2 and 3. There is no suggestion that the cleaning means was located elsewhere on the machine trialed. I therefore find that the cleaning means was located adjacent an intermediate portion of the drive shaft.

Novelty

Claim 1 was set out in my first decision in this matter, and I shall not repeat it here. Suffice it to say that it has two principle features: a drive shaft shaped such that trash is urged towards the middle, and a cleaning means adjacent the intermediate portion of the drive shaft to remove trash. Given my findings above on what was present on the machine trialed, I find claim 1 lacks novelty on the basis of the prior use.

Claim 2 specifies that the drive shaft is in the shape of an hour-glass. Given my findings above on what was present on the machine trialed, I find claim 2 lacks novelty on the basis of the prior use.

Claim 3 specifies that the drive shaft has ‘shape’ means at the top and bottom of the shaft which converge towards the centre of the shaft. That is, the claim defines generic features which provide an ‘hour-glass’ shape on the drive shaft. Given my findings above on what was present on the machine trialed, I am satisfied that claim 3 also lacks novelty on the basis of the prior use.

Claim 4 qualifies the shape means as being conical. That is the shape of the shape means shown in the photographs referred to above. Given my findings above on what was present on the machine trialed, I am satisfied that claim 4 lacks novelty on the basis of the prior use.

Claims 5 and 6 provides for ‘paddle members’ to provide the hour-glass shape. The above mentioned photographs show such paddle members. Accordingly I am satisfied that claims 5 and 6 are not novel on the basis of the prior use.

Claim 7 specifies  “the cleaning means includes a deflector plate having an edge immediately adjacent the intermediate portion”. I take this claim as meaning the deflector plate also acts as the cleaning means by reason of close proximity of the edge of the deflector plate to the drive shaft. That arrangement was not disclosed by the prior use, and the claim is therefore novel.

As noted in my first decision, claim 8 presents some difficulties. It is appended to claim 7, and specifies that the ‘deflector plate is a circular wheel ...’. This seems incongruous. The specification states (page 3) that the cleaning means could comprise a stationary deflector plate, and in a further embodiment the cleaning means comprises a wheel. That is, the specification describes the wheel as an alternative cleaning means viz-a-viz a stationary deflector plate. The wheel is not described as being a modified deflector plate. Consequently claim 8 in its present form and appendancy is not fairly based on the specification, and is not clear. I would however observe that the feature added by claim 8 (ie a cleaning means in the form of a wheel) was disclosed in the prior user.

Claims 9 to 11 add further features in relation to the wheel. The features added by these claims are in accordance with the arrangement illustrated in figures 2 and 3, and in exhibits MJB12 to 16. I am therefore satisfied that the features added by these claims were disclosed in the prior user.

Claim 12 is an omnibus claim. In the circumstances I shall not elaborate its scope. I merely observe that prima facie it also lacks novelty on the basis of the prior use.

Conclusion

In summary, I find claims 1 to 6 are not novel on the basis of prior use. If claim 8 were to be dependant upon claim 1 (which I consider to be the likely intention), I would also find claims 8 to 11 lacking in novelty. However in its current form I merely find claim 8 not clear and not fairly based on the specification.

Whilst the machine trialed on 8 July 1990 anticipates most of the claims, I believe there is subject matter suitable for the grant of a patent. For example, a cleaning means in the form of a stationary plate is disclosed in the specification – but I have no reason to believe that such cleaning means was disclosed by the prior use, and prima facie such cleaning means is not obvious having regard to that prior use. As I believe that the applicant may be able to amend to claim patentable subject matter not disclosed by the prior user, I allow the applicant 60 days from the date of this decision to propose suitable amendments.

Costs

As neither party attended a hearing in respect of this decision, I make no award of costs.

The opponent paid security against costs, which is currently held by the Commissioner. I see no reason for that security to be further retained. Accordingly I direct the security to be returned to the opponent upon their request.

D Herald
Acting Commissioner of Patents

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

Patent attorneys for the opponent    :  Spruson & Ferguson, Sydney