Barry John McLean v Austoft Industries Limited

[1993] APO 62

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 575713 in the name of BARRY JOHN McLEAN

Title:  Improvements to Transport Vehicles

Action: Opposition under section 59 (Patents Act 1952) by AUSTOFT INDUSTRIES LIMITED; hearing.

Decision:  Issued            . 

Oral and documentary publication relied upon by the opponent;  claims 1 and 2 found prior published and claims 3 and 4 not novel;  prior use not established.

Applicant afforded an opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 575713 by BARRY JOHN McLEAN and opposition thereto under section 59 of the Patents Act 1952 by AUSTOFT INDUSTRIES LIMITED.

background

Patent application 575713 for an invention entitled "Improvements to Transport Vehicles" was filed by Barry John McLean ("McLean") on 18 February 1985 accompanied by a provisional specification.  A complete specification was filed on 18 February 1986.

Acceptance of the application and complete specification was advertised on 4 August 1988.  Austoft Industries Limited ("Austoft") filed notice of opposition on 24 February 1989.

Service of evidence-in-support was completed on 14 August 1989 and evidence-in-answer was served on 3 September 1990.  The opponent's evidence-in-reply was served on 17 April 1991.  On 29 April 1991, Austoft requested special leave to adduce further evidence: leave was granted and the further evidence was served and filed on 19 August 1991.  McLean had until 19 September 1991 to file any evidence-in-reply to the further evidence but did not do so.  On 25 September 1991 McLean foreshadowed an application for special leave to adduce further evidence, and on 23 December 1991 such an application was made.  Two declarations accompanied the special leave request and these declarations were said to be in rebuttal of the opponent's further evidence.

The matter was set down for hearing in Canberra on 12 May 1993.  The patent applicant, Mr McLean attended and Austoft was represented by Mr Crispin Marsh, patent attorney of F B Rice & Co.  Whilst Mr McLean was not professionally represented at the hearing, I note that his interests in the prosecution of the application and the opposition action 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 (b) through (i) of section 59 of the Patents Act 1952. At the hearing submissions were only directed to the grounds of prior publication, lack of novelty and obviousness i.e. grounds specified in paras (e), (g) and (h).

SPECIFICATION

The invention described in the specification concerns "improvements to transport vehicles of the type described in Australian Patent No 522770 and in particular to improvements to vehicles for transporting and discharging sugar cane billets which employ a discharge conveyor external of a main transporter bin".

The specification refers to a number of different types of wheeled cane transporters available prior to the invention.  One type, disclosed in patent 525839 to Newton, has a four-walled bin pivoted about the upper edge of its front wall.  When the bin is elevated to a raised position with the front wall inclined above the horizontal, its contents can flow uncontrolled by gravity over the pivot axis onto a transversely orientated conveyor which provides a discharge to the side of the machine.  Patent 291016 to International Harvester Co discloses a similar machine but the front wall of the bin is defined by a conveyor.  The bin and conveyor can be pivoted together to a discharge position where the conveyor is horizontal.  It is said that the conveyor enhances the discharge from the bin particularly when it is nearly empty, but in the early stages of discharge, it is said that the discharge from the bin can be uncontrolled.

A further cane transporter which is said to provide controlled discharge is that described in patent 522770 to McLean.  This machine has a fixed forward bin means with an inclined elevator at its forward end, and a larger rear bin means which is pivoted about a horizontal axis at the floor level of the rear bin means.  On pivoting the rear bin means, cane is deposited into the first bin means and onto the inclined conveyor.  This machine has a cross-conveyor adjacent the upper end of the elevator to discharge cane to the side of the machine.  Whilst the arrangement of this machine allows for control over the cane when discharging, a disadvantage resides in the need to tip the second bin means to a high angle thereby creating safety problems.

The aim of the invention in the opposed application is to provide an improved transporter which overcomes or alleviates disadvantages of the existing transporters.  The transporter of the invention described has a four-walled bin pivoted about the upper edge of its front wall.  In the bin and adjacent the front wall an elevator is positioned, the elevator pivoting with the bin to assume an inclined elevating position for discharge.  A cross-conveyor is mounted adjacent the upper end of the elevator to receive cane elevated from the bin and to discharge the cane to the side of the transporter.

The specification concludes with 4 claims worded as follows.

"1.A transporter vehicle for transporting and unloading cane or other agricultural products including a mobile frame assembly,  said mobile frame assembly supporting bin means, said bin means having opposed end walls and opposed side walls,  an upwardly extending elevator means located at one end of said bin means,  said elevator means and said bin means being pivotal about substantially transverse axes located adjacent the upper end of said elevator means to a discharge position such that said elevator means is located in an inclined elevating position and there being further provided conveyor means adjacent the upper end of said elevator means,  said conveyor means extending from said frame assembly  and said elevator means being adapted to elevate said cane from said bin and deposit said cane on said conveyor means,  said conveyor means being adapted to discharge said deposited cane into a storage container at the side of said transporter.

2.A transporter vehicle as defined in claim 1 wherein said mobile frame assembly includes support wheels on a support frame, said bin means being pivotal to said discharge position by lifting means located between the bin means and the support frame, said lifting means including an hydraulic cylinder assembly operable from a retracted position when said bin means is in a substantially horizontal transport position to an extended position to pivot said bin means to said discharge position.

3.A transporter (sic) as defined in claim 1 or claim 2 wherein each said side wall is generally rectangular, respective supporting strut members extending substantially diagonally across each side wall to support said bin means during its pivotal movement.

4.A transporter vehicle substantially as described with reference to the drawings."

EVIDENCE

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

Evidence-in-support

Malcolm John BAKER -  Exhibits MJB1 to 32
    Sydney William Donne BAXTER
    Donald Douglas HELMRICH
    Ann Mary ENDERBY  
    David Middleton HAWKINS              
    Peter Crispin MARSH - Exhibit PCM1   

Evidence-in-answer

Barry John McLEAN
    Roland Bruce NEWTON
    Henry David HARRIS
    Edwin Hugh SIM
    Thomas Gipps AHEARN - Exhibits TGA1 & 2

Evidence-in-reply

Malcolm John BAKER

Further evidence  (from the opponent)

Raymond FRY - Exhibits RF1 to 9
    Andrew RANKINE - Exhibits AR1 to 4
    Mark & Stephen ROSSI

On 23 December 1991 the applicant filed an application for special leave to adduce further evidence and provided a copy to the opponent.  The application was accompanied by declarations from Maxwell John WILKINS and Peter Bruce NEWTON which constituted the proposed further evidence.  At the time of the hearing it came to my attention that processing of this application for special leave had not been completed.  Mr Marsh indicated that Austoft did not object to this application -  Austoft took the evidence as being evidence-in-reply to its further evidence.  I therefore grant the application for special leave.  The further evidence of Wilkins and Newton can therefore be considered in these proceedings.

At this point I will briefly refer to some of the evidence.

Opponent's declarant Baker has had considerable experience with the design and manufacture of cane farming machinery in Australia.  The primary evidence of Baker, enumerates many developments in cane transporters in Australia before the priority date of the opposed application.  On side conveyor cane transporters, the subject of the opposed application, Baker indicates that one developed by the present applicant (here called the "McLean Mk1") and which is the subject of patent specification 522770, was first publicised in Producers' Review of October 1977 and attracted considerable attention in the industry.   Another machine released by Newton Engineering (the "Newton machine") and which is the subject of patent specification 525839, was publicised in an article in the November 1977 Producers' Review and in later editions.  Baker states that methods of metering cane from a bin are well known in the industry, conveyors being used for this purpose in for example cane planters apart from the McLean Mk1 transporter.

The further evidence filed by the opponent is very relevant to the opponent's case.   Fry, of Cairns, is the managing director of Northern Engine Reconditioning Co Pty Limited.  He declares that in the 1984 cane crushing season (around June to November 1984) he became involved with Mark and Stephen Rossi in the design of a cane transporter.  As a basis for their design they decided to look at the types of cane transporters being used at the time, and the McLean Mk1 and the Newton transporters were noted.  Fry says that after deciding on the features for the transporter to meet the Rossi's requirements they approached NQEA Australia Pty Limited to draw up plans and manufacture steelwork for the infield cane transporter.  They discussed their design and requirements with Andrew Rankine and others at NQEA.  NQEA produced general arrangement drawings of the transporter dated 15 and 20 November 1984, 25 January 1985 and 13 March 1985, copies of which are Exhibits RF1 to 4 to FRY's declaration.  Fry also declares that the Rossi brothers and he agreed "that NQEA would built the steelwork for the first transporter, that I would arrange purchase of componentry such as engines and assemble the transporter with the Rossis assistance.  It was further agreed that they would purchase that first machine for use on their farm."  Fry further declares that he disclosed the general nature of the transporter design to a number of people prior to 18 February 1985.  A prototype of the transporter was tested in June 1985.

The evidence of Rankine and the Rossi brothers collaborate that of FRY regarding the development of this infield transporter in 1984 and 1985.  The Rossi brothers declare that before 18 February 1985 they discussed details of their transporter design with other local cane growers to get their input into the design.  In the evidence this transporter is referred to as "BIG FOOT" and I understand it is commercially known by such name.

SUBMISSIONS

Mr Marsh for the opponent submitted that claims 1 and 2 were prior published and not novel, that claim 3 was obvious, and that omnibus claim 4 also lacked novelty.  In making this submission, Mr Marsh primarily relied on the further evidence which the opponent had filed and to which I have already referred.  In addressing the novelty of claims 1 and 2, Mr Marsh had three lines of attack.

Firstly, Mr Marsh submitted the further evidence established prior publication of the invention by way of oral disclosures of the BIG FOOT transporter design between, variously, the Rossi brothers, Fry, employees of NQEA including Rankine, and others including farmers.  He submitted that these disclosures were in circumstances whereby no fetter was placed on the parties on how to use the information, and particularly the Rossi brothers and Fry did not view their transporter development as being confidential.

Secondly, Mr Marsh said the opponent relied on documentary publication of the invention by way of the publication of the NQEA drawings concerning the BIG FOOT design to Fry and the Rossis, particularly the drawing dated 25 January 1985 forming Exhibit RF3 to FRY's declaration (also Exhibit AR3 to Rankine's declaration).

Thirdly, Mr Marsh said that by virtue of a contract of sale for a machine falling within the claims entered into prior to the priority date (ie. 18 February 1985), the opponent maintained there was prior publication of the invention by way of prior use.  This, he submitted, accorded with the law as discussed in Wheatley's Patent Application 2 IPR 450.

In his submissions, Mr Marsh referred to relevant patent law regarding when material can be considered "published" and thus available to be used for anticipation purposes.  He also provided submissions on the issue of confidentiality surrounding certain disclosures.

In his reply submissions, Mr McLean argued that the drawing of Exhibit RF3 did not clearly show the alleged elevator in the bin of the Rossi/Fry design.  Furthermore he suggested that Rankine's evidence was vague and that his discussions with Fry and the Rossi brothers could have concerned anything.  Mr McLean also submitted that the evidence did not make it clear when the features of having an elevator in the front of the bin and for it to move with the bin was decided upon for the BIG FOOT design.

Mr McLean also referred to the evidence of Wilkins, a cane farmer, and that of Peter Newton of Newton Engineering.  In his evidence, Wilkins declares that Mark Rossi and Ray Fry inspected a transporter (it seems a McLean Mk1 transporter) on his property in late 1984 and that they indicated to him that they intended to build an elevator bin of their own.  Mr McLean drew attention to the fact that Wilkins says that he was not aware that the Rossi/Fry transporter was to have an elevator which would tip with the bin.   Regarding Peter Newton's evidence, Mr McLean noted that Newton, although he was involved in the design and manufacture of cane transporters and abreast of developments in that field, did not know of the actual construction of the BIG FOOT transporter until he saw it.

DECISION

I have earlier referred to the evidence of Fry and others concerning the design and development of the BIG FOOT transporter.  I will elaborate on aspects of that evidence under the various headings which follow in considering the grounds of opposition argued.

Oral disclosure

From the evidence of Fry, Rankine and the Rossi brothers I am in no doubt that Fry and the Rossis were considering designing an elevator cane transporter during the second half of 1984.  The evidence of Wilkins, filed on behalf of the applicant, supports my conclusion on this point. 

Fry declares that transporters in use in 1984 were studied as part of the development of their transporter.  They knew that the McLean Mk1 transporter, which had a fixed inclined elevator at the front of the transporter bin to transfer cane from within the bin to a cross conveyor outside and adjacent to the front top of the bin, would regularly become jammed with cane at its lower end.  In clause 10, Fry gives two reasons for this jamming both stemming from the effect of tilting the bin to slide the cane to the elevator.  In clause 11, Fry declares:

"11. After discussing these problems amongst ourselves and other persons in the industry the Rossis and I decided that these problems would be overcome by building a cane transporter with the following features:-

(a) A tractor to transport cane.

(b) A mobile frame or chassis supporting a cane bin.

(c) The bin having two side walls and two end walls and designed to carry at least 12 tonne of cane.

(d) An elevator attached to the front end of the bin (not to the chassis of the transporter as previously proposed).

(e) The elevator/bin unit being pivotted about a transverse axis located at the upper end of the elevator.

(f) Transverse conveyors at the upper end of the elevator to transport cane from the elevator to a rail bin or truck."

In clause 12 of his declaration Fry says the features (d) and (e) were arrived at to overcome the problems of cane jamming between the tilting bin and fixed elevator as in the McLean Mk1 transporter. 

In clause 14 Fry says that he and the Rossis approached NQEA around October or November 1984 "to draw up, and manufacture steelwork for, the infield cane transporter with the features mentioned in paragraph 12".  He says in clause 13 that at a discussion with NQEA personnel including Rankine, he and the Rossis "instructed them to draw up a general arrangement for the infield cane transporter which we had designed".  A number of plans produced by NQEA are in evidence as Exhibits RF1 to 4.  Fry refers to the fact that the elevator is not shown in RF1 or 2 because it was not necessary for these drawings but that RF3 and 4 "clearly shows where the elevator was placed on the cane transporter".

In clauses 20 and 21 Fry declares:

"20.From the initial approach to me by the Rossis to the commissioning of the first transporter produced in early 1985, the idea of attaching the elevator to the front wall of the bin to make it tiltable with the bin had not changed.  The idea of the tipping elevator/bin unit, to overcome the previously mentioned deficiencies of other machines, was unchanged from mid 1984 to the present date.

21.  At no stage in the development of the infield cane transporter, shown in Exhibits RF1 to RF4 now known as "BIG FOOT" was there any attempt to conceal or preserve as secret any information.  In fact, the development, purpose and building of the "BIG FOOT" cane transporter was openly discussed amongst not only the people directly involved, namely myself, the Rossis and persons at NQEA, it was common to discuss the idea of the tilting elevator/bin unit with other farmers and harvesters to obtain their opinion ..... ".

Rankine of NQEA, who dealt with Fry and the Rossis on their transporter design, confirms Fry's evidence regarding the transporter development discussions with, and involvement of, NQEA in the project.  In clauses 6 and 7 he declares:

"6. The reason for the 12 tonne bin was so that row (sic) of cane of a given length could be harvested in one pass. ... The design proposed to us included the elevator extending substantially vertically up the front wall of the bin when the bin is in a horizontal, unelevated position.  No one knew at that time if the elevator in the vertical position would work.  After trying several alternative ideas to solve the bin volume problem, it was confirmed that the vertical elevator was needed on the front bin wall, to keep the overall size of the machine down.

7. NQEA agreed to draw up a general arrangement of the cane transporter and manufacture a chassis and other steelwork for the cane harvester (sic).  ....  The General Arrangement drawings were to obtain an overall size of the machine, ensure components such as engines would fit, to estimate the overall weight and to find the centre of gravity of the machine as well as pricing."

He further declares at clause 11:

"11.At no time did the Rossis or Mr Ray Fry indicate to me that the design and manufacture of the infield cane transporter, now known as "BIG FOOT" was to be regarded as confidential.  None of the meetings were held in secret and no written confidentiality agreements were signed.  Instead it was discussed with other persons in the industry as it was desired to sell these cane transporters to other farmers."

In their joint evidence at clause 6, Mark & Stephen Rossi declare:

"6.We confirm that at no time did we suggest to Mr Ray Fry, employees of NQEA Australia Pty Limited or any other persons with whom we discussed that matter that the design and development of the "BIG FOOT" cane transporter was to be treated as confidential."

There is no evidence before me which casts doubt on the overall design features proposed by the Rossis and Fry for their cane transporter and as discussed with NQEA and others, those features being listed by Fry in clause 11 of his declaration.  In fact the drawings by NQEA being Exhibits RF1 to 4, the first three of which are dated before the priority date, lend support to a transporter with such features being proposed at that time since, as discussed later in this decision, I consider the drawings illustrate a machine encompassing those features.  On comparing the features listed by Fry with the features of opposed claim 1, I find that all the claimed features are found. 

In this case there is no suggestion, and in fact there is evidence to the contrary, that the discussions concerning the BIG FOOT transporter in late 1984 and prior to 18 February 1985 were in confidence.  Furthermore there is no evidence to conclude that any information imparted by these discussions was imparted in circumstances importing an obligation of confidence (see Coco v. AN Clark (Engineers) Ltd [1969] RPC 41 at 47). There was thus no implicit or explicit fetter on persons involved in the discussions about the transporter, or who were told about the design proposal, on how they used the information gained. I agree with Mr Marsh's submission that they were free in law and equity to do what they liked with the information gained about the proposed transporter from those discussions (see Humpherson v. Syer (1887) 4 RPC 407 at 413).

I am thus satisfied that the details of the BIG FOOT transporter proposed by Fry and the Rossis and discussed by them constituted material published in Australia before the priority date.  Accordingly, given my earlier comments, I find that claim 1 is prior published by that material.  

Claim 2 characterises the mobile frame assembly, and specifies a hydraulic cylinder assembly as the means to lift the bin to the discharge position.  Whilst these features are not referred to by the declarants as being design features of the proposed BIG FOOT transporter which they discussed, the very nature of the transporter proposed implies the need for such features.  Such features for analogous purposes were not uncommon on cane transporters known at that time including several referred to by Fry which the Rossis and he viewed in considering their design, such as the McLean Mk1 or the Newton machine.  Moreover I believe the drawing of Exhibit RF3 discloses these features which suggests they were the subject of the design discussions.  Thus I conclude that the transporter of claim 2 was also in substance disclosed by the discussions.

Claim 3, which is appended to either claim 1 or claim 2, defines that the side walls of the bin means are generally rectangular and have substantially diagonally extending supporting strut members.  Whilst the declarants do not specifically state this, I believe the bin of the BIG FOOT transporter design the subject of discussions had generally rectangular sides, and the drawing of Exhibit RF3 supports this view.  The declarants make no mention of support struts for the side walls.  However in other evidence, declarant Baker, in referring to claim 3, states that the features identified concern "an extremely conventional piece of mechanical design", to which declarant Harris for the applicant comments at clause 8  "... but I see merit in Mr Baker's view that this is common".   Given this evidence, I fail to see that the feature of the support struts is one which alone can provide novelty to the invention over the BIG FOOT transporter design disclosed in discussions.  Hence claim 3 lacks novelty.

Claim 4, an omnibus claim, I interpret as being restricted to a transporter having its essential features in the form as shown in the drawings accompanying the description.  In view of my conclusions about the other claims and given the drawings which are rather unspecific as to details of the features, I conclude that claim 4 also lacks novelty given the discussions concerning the BIG FOOT transporter design.

Documentary publication

The opponent also relies on the drawings, copies of which comprise Exhibits RF1 to 3, as documentary publication of the invention of claims 1 and 2 and also 4.  For this to be upheld, it needs to be established that the drawings in question, firstly, were "published" in the sense as understood in patent law, and secondly, that they disclose the claimed invention.  I will address the second point first.

The drawings of Exhibits RF1 to 3 are a mixture of solid and dashed line general arrangement outlines for a project titled "Cane transporter  'Nerco'".   Each drawing shows in solid outline a representation of a vehicle having a wheeled frame, operator cabin and bin means, although there are some differences in overall layout between the drawings.  They all show in dashed outline elements which are clearly the power train and suspension arrangements.   The drawing of Exhibit RF3 includes additional dashed outline elements in association with the bin means.  Firstly, there is shown in the bin means adjacent its front wall an element which, from the representation, suggests an upright elevator.  Secondly, the bin means is also shown in an inclined attitude compared to the solid line horizontal position, and the elevator is shown inclined and still adjacent the front wall of the inclined bin means.  This inclined representation of the bin means and elevator suggest a common pivot point near the top of the front wall of the bin means.  Thirdly, under the bin means in both its horizontal and inclined representations there is shown an element which suggests an extendable hydraulic lifting ram for the bin means.  Each exhibit also shows an element in solid outline external to, and adjacent the upper front edge of, the bin means.  The representations of this element in the various plan and elevation figures suggest a cross conveyor to extend beyond the width of the bin means.

Mr McLean submitted that Exhibit RF3 did not clearly show the alleged elevator in the bin.  The point raised by Mr McLean draws attention to the requirements for ascertaining what photographs or drawings disclose.  In Van Der Lely v. Bamfords [1963] RPC 61 the court, in referring to photographs, said at page 71:

"The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence.  Where the evidence is contradictory the judge must decide.  But the judge ought not, in my opinion, to attempt to read or construe the photograph himself."

Strictly, this passage concerns only photographs but I see no reason why drawings should not be similarly treated, particularly where no description accompanies a drawing to provide reference to elements in the drawing.  Also, whilst the reference in the Van Der Lely case referred to the role of the judge, I do not think those remarks are directly applicable to a Tribunal such as this.  Hearing Officers are normally trained in a science or a technology and I see no reason why they should not bring their technical background to bear in appropriate situations.

In this case I am mindful that there is no independent evidence of what the Exhibit drawings would disclose to a typical addressee.  Fry in clause 18 of his evidence refers to the elevator and says Exhibit RF3 shows where the elevator was placed on the cane transporter.  To the extent that Mr McLean in his submissions disputes the presence of an elevator, I favour the evidence of Fry since Exhibit RF3 suggests to me an elevator in the bin means which inclines with the bin means when the latter is raised to an inclined position.  My conclusion is that the drawing of Exhibit RF3 discloses a transporter having all the features of the invention claimed in claim 1.

As to the first point to which I referred above, Mr Marsh submitted that the NQEA drawings were "published" in the sense as understood in patent law since they were provided to Fry and the Rossis by NQEA.  The evidence, particularly that of Fry and Rankine, refers to how and why NQEA came to produce these drawings.  There is, however, no mention in the evidence of who actually produced the drawings within NQEA, what happened to the drawings after their production and, most importantly, given Mr Marsh's submission, whether and when they were shown to Fry and the Rossis or any other persons outside NQEA.  Of crucial relevance here is when the drawing forming Exhibit RF3 was published, given my conclusions about its disclosure and bearing in mind that it bears a date just over 3 weeks before the priority date of the opposed application.  In the absence of any evidence about to whom this drawing was shown, and when, I unable to conclude that the drawing of Exhibit RF3 was published before the priority date. 

There is a further point concerning the possible publication issue.  Even were the drawings shown or given to Fry or the Rossis before the priority date, I am not convinced the drawings would have been "published" in the patent law sense.  The evidence indicates that the drawings were made as part of the design development of the BIG FOOT transporter following discussions between Fry and the Rossis with NQEA.  Furthermore they were made as part of the business arrangement whereby Fry and the Rossis engaged NQEA to manufacture the steelwork for the design.  It therefore seems to me that in the circumstances giving rise to the preparation of the drawings by NQEA, any publication of those drawings solely within NQEA or to Fry and the Rossis would not amount to publication in the patent law sense as it could not be viewed as placing the information generally in the possession of members of the public.  There is no evidence before me to indicate that persons other than those mentioned either had free access to inspect, or were otherwise provided with or shown, the drawings before the priority date.

In view of my preceding comments, I dismiss the opponent's allegation that the invention has been published by way of the NQEA drawings.

Prior use

The opponent also alleges that the invention is deprived of novelty because of prior use.  The prior use relied on relates to the BIG FOOT transporter development.  As I have already mentioned, Fry's evidence is that the Rossi brothers agreed to purchase the first BIG FOOT transporter built.  The evidence does not specifically indicate when the agreement to this effect was reached although given that discussions were held with NQEA in late 1984 and NQEA prepared drawings thereafter, it is likely that this was before the priority date of the opposed application.  If this were the case, I would agree with Mr Marsh that on the basis of Wheatley's Patent Application (supra), this would have constituted a prior use involving a machine with the features of the invention claimed.  However, as it is not clear that the stated agreement for sale was made before the priority date of the opposed application, I am unable to find that the invention was prior used.

Obviousness

A further argument of Mr Marsh was, as I understood it, that the opponent asserted that claims 3 and 4 were obvious since there was nothing in the evidence which indicated anything inventive in the matter claimed in claim 3 or in the preferred embodiment as covered by claim 4.  Insofar as this was an obviousness ground of attack on these claims, two points should be noted.  Firstly, obviousness must be considered against the proven common general knowledge in Australia at the relevant time (see Minnesota Mining and Manufacturing Co v. Beiersdorf (Aust) Ltd (1979-1980) 144 CLR 253). Secondly, a precursor to any consideration of obviousness regarding claims 3 and 4 essentially necessitates a consideration and finding of obviousness against claim 1. Thus I also need to consider claim 1 for obviousness.

As to the common general knowledge in the art at the priority date, the evidence of Baker in his first declaration at clause 6 is that the "transport systems and the products described in Exhibits MJB.1 to 17 are sufficiently well known to be common general knowledge to persons in the sugar industry and more particularly to those of us in the industry of designing, manufacturing and selling of sugar cane transport machinery."  The evidence for the applicant does not contest this statement.  The exhibits mentioned comprise copies of pages from various monthly editions of a magazine formerly titled "Producers' Review" but later titled "Australian Canegrower", the official magazine of the Australian Canegrowers' Association", and a magazine widely distributed throughout the sugar industry.  The exhibits show a range of cane transporters developed before the priority date and include tipping bins, which do not have any elevator to aid discharge, and various transporters with elevators or conveyors to assist discharge.  Exhibits MJB 8 to 16 essentially depict either the McLean Mk1 transporter or the Newton machine in editions dating from October 1977 to November 1983 with all but two being editions dated before 1979.  Given this evidence, I believe that, at least, cane tipping bins, and the McLean Mk1 transporter and the Newton machine transporter were common general knowledge in Australia at the priority date.
In his evidence, Baker also refers to other farm transport machines for harvested crop which use conveyors to assist discharge, and exhibits various US patent specifications disclosing these machines.  He also refers to feed devices or conveyors associated with cane planters.  There is insufficient evidence before me to conclude that these matters were part of the common general knowledge.  There is also no evidence to conclude that the BIG FOOT transporter was part of the common general knowledge at the priority date.

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."

When referring to claim 1, Baker concludes that nearly all the individual features defined are well known in the art of sugar cane transporters.  He adds that the alleged invention differs from what is well known only by the use of the front elevator well known in the McLean Mk1 transporter on the front edge of the well known Newton machine. 

Declarant Baxter has had a long involvement with the sugar cane industry including consultant work on harvesting, transporting and mill receipt of sugar cane, but no direct involvement in designing machines.  In clauses 7 and 8 of his declaration he says that many of the features of claim 1 have been utilised in known machines in the industry.  He adds that the transporter claimed is "quite a reasonable collection of well established assemblies that have contributed to the receipt, transport and discharge of chopped cane and numerous other agricultural crops .... and, while the amalgamation of these assemblies makes an interesting variant among such devices, it can hardly in my view be considered that each of these assemblies does other than the job for which it is well known."

Declarant Helmrich, an engineer, has had 26 years experience in engineering and manufacturing companies and has been with Austoft since 1976.  He agrees with Baker's comments about features of the claim being incorporated in a variety of machine designs.  He suggests that the development of a new transporter would follow several logical steps in that the designer/engineer would review both existing and previous designs, and can then develop an improved product by combining the desirable features while avoiding the undesirable features of those previous and current mechanisms.  Helmrich sees this to be what the present inventor has done to arrive at his transporter design.  He adds that he believes that "the nature of the combination of these components is conventional and does not produce a surprising effect."
McLean, in clause 8 of his evidence, suggests that the present invention is more than a simple workshop variation of his Mk1 transporter design given the changes between the two designs.  In clause 14 he makes the point that whilst the McLean Mk1 and Newton machine transporters had been publicly known of from late 1977, other elevator bins proposed prior to the priority date of February 1985 had not incorporated the combination of features of his design.  In clause 15 McLean refers to the Newton machine and observes that it is not an elevator bin - it does not have an elevator in its bins to aid the discharge.  He says the Newton machine includes what are effectively railbin-matched front and rear tipper bins each of which hold about 4 tonne of cane.  To discharge the load, the front bin is partially inverted over a receival hopper feeding a cross conveyor, then the rear bin has its contents tipped into the front bin which is then emptied by repeating the process.  And in clause 20 in answer to Baker's evidence he says "the McLean Mk1 teaches a transporter having a 12 tonne bin whereas the Newton machine teaches a transporter having a 4 tonne tipper bin and consequently, there would be no reason to equip the bin as taught by Newton with a conveyor of any kind as the Newton bin operates as a conventional tipper bin."  In clauses 18 and 28, answering Baker and Baxter respectively, McLean in effect makes the point that while conveyors may be well known to convey things in various applications, this does not preclude forming a combination of features including conveyors in a new and beneficial way to create a new invention.

Declarant Newton in effect says there would be no reason to include an elevator in the bin of a Newton machine when viewed either from an operational or cost position.   Harris, referring to Baker's evidence about the alleged invention essentially being the Newton machine with a front elevator known from a McLean Mk1 transporter, notes that the elevator on the McLean Mk1 was fixed in position, whereas the invention has the elevator moving with the front wall of the bin when the bin is inclined. 

In my view the evidence is generally unhelpful to me in considering whether the invention was obvious at the priority date.  Both Baker and McLean are inventors in the art, as is also Newton, and thus their evidence is not from the viewpoint of a "non-inventive worker in the trade" and therefore needs to be used with caution on this issue.  The evidence of Baxter and Helmrich gives me the impression of an ex post facto analysis of the invention which must be avoided in any obviousness consideration (see the Minnesota Mining case, supra, at p 294).

The evidence of McLean and Newton draws distinctions between the McLean Mk1 transporter and the Newton machine deriving from their nature and manner of operation.  I do not believe the evidence establishes that a non-inventive worker would have arrived at the present invention by using the McLean Mk1 elevator concept on a Newton machine, and in fact the nature of the Newton machine would, I believe, have directed them away from that idea.  Alternatively, if the McLean Mk1 transporter were a starting point, I do not believe that a non-inventive worker would have made the changes to the bin structure and its pivot point plus incorporate an elevator in the bin to move with the bin, as a matter of routine and without invention to thereby arrive at the claimed invention.  Furthermore, the claimed invention may well incorporate known elements found in other transporting equipment but that, of itself, does not suggest lack of invention of a combination including such elements. 

In summary, given the evidence before me, I am not satisfied that a non-inventive worker would, as a matter of routine, have arrived at the claimed invention.  Consequently I reject the allegation that the claims are obvious.

CONCLUSION

I have found that the claims are prior published and not novel and therefore the opposition succeeds.   Whilst I doubt whether there is any novel subject matter contained in the specification given my findings, I nevertheless afford the applicant an opportunity to review the specification with a view to amending and to thereby claim any novel matter.  Unless the applicant proposes amendments within 60 days of the date of this decision, or alternatively appeals this decision within the time permitted for such an appeal, I will refuse the application.

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 Austoft has successfully established grounds of 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 patent applicant Barry John McLean.

Trevor Bruhn
Delegate of the Commissioner of Patents

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

Patent attorneys for the opponent   :  Mr McLean represented himself at the hearing