Bateman Engineering Inc v Martin Gerard Earley

[1999] APO 26

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent:  No. 678749 in the name of Bateman Engineering Inc

Subject:Apparatus for separating a heterogeneous mixture.

Action:Objection to Extension of Term under S.28. Hearing.

Decision:Issued            .

Abstract:Claims novel, term extended.

Informant had no evidence from independent experts.

One feature found to be essential because it was included in claim 1 and because the specification did not indicate it was optional.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 678749 in the name of Bateman Engineering Inc, application for Extension of Term under S.69, and notice under S.28 filed by Martin Gerard Earley.

BACKGROUND

Application No.27028/95 was filed as an International application on 9 June 1995 and sealed as Petty Patent 678749 on 5 June 1997. The patentee applied for extension of the initial term on 23 June 1997.  Martin Gerard Earley, patent attorney, filed a S.28 notice and accompanying evidence on 4 May 1998, and on 28 September 1998 the patentee filed its evidence-in-response, after having been granted an extension of time.

The matter was heard in Canberra on 18 February 1999; the patentee was represented by Mr Chris O'Sullivan, patent attorney, accompanied by Mr Will Monks, and the informant represented himself.

THE SPECIFICATION

The specification indicates that the invention relates to apparatus for separating heterogeneous mixtures of at least two components, eg. separating oil from water or solid waste from sewage water. Factors such as recycling solvents, waste disposal, environmental concerns were considered in the development of the invention. In the prior art, turbulence in separation tanks was minimised by injection of waste fluid into one end of the tank and removed at an opposite end, with the waste fluid moving through the tank in either a laminar flow upon a separation field or in a slow moving bulk flow through baffles.

Page 4 of the specification discusses how the present invention reduces flow turbulence and promotes laminar flow by effecting some separation of the waste solution prior to the formal entrance to the separator tank. Also, by having the waste solution influent and effluent on the same side of the separator tank, maintenance is made easier and construction costs are reduced.

The invention is defined by three claims; claim 1 reads as follows:

"An apparatus for separating a heterogeneous mixture comprising:

(a) a separator tank having opposite first and second ends;

(b) means for an influent flow and means for withdrawal of an effluent both located at the first end of said separator tank; and

(c) a coalescence enhancement channel located along a side of the separator tank connecting the means for an effluent flow to the second ends of the separator tank thereby enabling the influent flow to be transferred along a length of the separator tank from the first end of the separator tank to the second end of the separator tank wherein the coalescence enhancement channel is in planar longitudinal alignment with a bottom of the separator tank along substantially an entire length of the separator tank."

EVIDENCE

The informant’s filed evidence consists of a declaration by Mr Earley, a copy of a notice of OPI (publication) dates from IP Australia, a copy of an Australian Patent specification, and a declaration by Delys Leone Shiers, which encloses a copy of an article from the May 1994 edition of Mining magazine and a copy of an accession register.

The evidence-in-response comprises a declaration by Professor John Reizes, with exhibits JAR-1 and JAR-2.  Prof Reizes declares that he is at the School of Mechanical Engineering, University of Technology, Sydney, and that he has an interest in the separation of heterogeneous mixtures, which includes solid/liquid mixtures. I note from his CV that he has done some research in slurry flows mechanisms.

The informant's notice cites many documents which allegedly invalidate the present claims, but at the hearing only four documents were discussed in some detail. I refer to those documents below. Copies of other cited documents were not adduced as evidence. (Copies of two citations had to be obtained during a break in the hearing). Both parties gave me copies of written submissions at the hearing.

DECISION

US Patent 5,122,280, Russell et al.

This patent discloses an oil/water separation tank, similar in operation to the present invention. A baffle is positioned in the tank which divides the flow into a main upstream portion and a narrower downstream channel. Along the side of the tank liquid is withdrawn into a collection tank.  The informant submitted that the narrower channel was equivalent to feature (c) in present claim 1. The patentee submitted that in the citation the inlet is not at the same end as the outlet and that the narrower channel is not a separator tank, but "to provide a smoother more channelled outflow".

In my view, the Russell tank is devoid of feature (b) in the present claims because the withdrawal point is about one-third the way along one side of the tank, not at the influent end. The present specification indicates that there is some significance in this feature, so I conclude that it is an essential feature. Mr Earley suggested that the arrangement in the Russell apparatus would "still allow maintenance" and therefore is a mechanical equivalent to the arrangement in the present invention. However, I was not directed to any disclosure in the citation concerning ease of maintenance, so I assume Mr Earley's submission is speculation on his part. I think this is insufficient proof; in my view, the citation does not disclose feature (b) in claim 1, so the present claims are novel in the light of this citation.

US Patent 5,266,191, Greene et al.

This patent specification discloses an underground oil/water separation tank. Flow is controlled by a series of vertical baffles, and the embodiment shown has inlet and outlets at different ends of the tank. Mr Earley referred me to col.19 of the patent specification which refers to how the embodiment shown could be varied, but I note there is no reference to having the inlets and outlets at the same end. Therefore I conclude that this patent also does not disclose feature (b) in present claim 1.

AU 36,867/78 (515,750), Metallurgie Hoboken-Overpelt.

This specification discloses a multi-stage liquid-liquid extraction apparatus in the form of a cylindrical tank divided into a series of sectors, each sector providing a separate separation stage. Each sector contains a baffle which the informant argued divides the sector into a main tank and a "coalescence enhancement channel". The liquids are input and withdrawn at positions along the outer arcuate wall of each sector.

The patentee's submissions are as follows:

"Apparatus is triangular and does not have two ends. Mixed influent enters over weir 27, exits at 80, under weir 89, over weir 90 and into 76 in bottom 13 (see figure 5) …. Therefore the inlet and outlets are not in the same end. Also, the bottom 13 is conical and not flat so there is no coplanarity. The system relies upon change in depth to achieve separation, see bottom of page 7."

I am sympathetic to the patentee's submissions. In my view there are a number of differences in the shapes of the tanks in the citation and in the present invention to conclude that they operate in a different manner. It is especially difficult to decide what features in the citation comprise the "first and second ends" of the tank. I conclude therefore that feature (a) at least, in present claim 1, is not disclosed in the citation and the present claims are novel in the light of this citation.

Mining magazine article

The article, beginning on page 256, is entitled "SX/EW" and is generally about solvent extraction (SX) or liquid ion exchange of metals in the technology of recovery of metals from solution. Electrowinning (EW) of copper is discussed. A "Reverse Flow Mixer Settler" is discussed on p.261 and a drawing thereof is shown in fig.1 in the article.

Prima facie, most of the features in present claim 1 are disclosed in the citation: there is a rectangular separation tank with a feeding launder and outlet weir at one end, with the launder directly feeding into a channel along one side, and with the channel extending to the opposite end.  The main point of contention was whether the channel "is in planar longitudinal alignment with a bottom of the separator tank along substantially an entire length of the separator tank".

Firstly I think it is important to determine whether this is an essential feature of claim 1.

The embodiment of the invention shown in the drawings in the specification shows the "first bottom 1" of the separator tank extending to also be the bottom of the channel; this is also discussed in paragraph 2 on page 7. The specification does not specifically state why the channel is in planar longitudinal alignment with the bottom of the separator tank, but on the other hand the specification does not suggest that this feature is optional. I think an addressee of the specification would construe this feature to be significant because it has been included in the claim, and there is nothing to suggest it is an optional feature; therefore, on balance, it is likely that it is an essential feature of the invention.  I assume this feature somehow contributes to laminar flow in the whole apparatus, which is the main object of the invention. I conclude that this feature is an essential feature of claim 1.

Returning to the disclosure in the magazine article, the plan and elevation views in the drawing of the Reverse Flow Mixer Settler do not immediately make it clear whether the side channel is in planar alignment with the bottom of the tank. A close analysis of the drawing is needed. The drawing is fairly small and I had to produce an enlarged photocopy to clearly see the relevant features.

In paragraph 8 of his declaration Prof Reizes states:

"Figure 1 of the article is not explicitly clear to me. I am, however, able to surmise that the ‘feeding launder’ appears to be above the ‘settling tank’, but it is not possible to tell either the height or the depth of the "settling tank" from the drawing."

Mr Earley discusses the drawing in some depth in his declaration and he is of the opinion that the side channel is in planar alignment with the bottom of the tank. He also refers to a part (on p.261) of the text in the magazine article which states:

" Dispersion leaving a conventional mixer box train is delivered into one side of a settler which is formed into a channel by a longitudinal wall."

He suggested that this implies that the channel and the tank must have a common bottom.
Mr Earley also

• alleged that there are two parts to the feeding launder in the citation: one part shown in the plan and the other shown in the elevation,

• referred me to the law on disclosure in drawings,

• suggested that if a feature in a citation was somewhat vague, it may still be relevant if  it was being compared to an equally vague feature in a claim under consideration, and

• suggested that Prof Reizes' background is too theoretical and he is not a person skilled in the art.

In my view, the citation is insufficient to comply with the requirements of the law on disclosure, see General Tire & Rubber Co. v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at 485, 486 for example. Whilst I agree that a claim can be anticipated by a drawing of prior art apparatus, in the present case too much is left to the imagination. Also, I have conflicting evidence on the matter, the patentee's evidence is from a prima facie independent party, so I am inclined to resolve this conflict in the patentee's favour.

Taking all these matters into account, I conclude that the disclosure in the citation is insufficient to show the claimed feature of "the coalescence enhancement channel is in planar longitudinal alignment with a bottom of the separator tank along substantially an entire length of the separator tank." The claims are therefore novel in the light of the article in Mining magazine.

Some allegations of lack of inventive step were included in the informant's Notice and Declaration, but there is no evidence before me from experts in the art on either the state of the art or on the alleged lack of inventive step, so I conclude that there is no valid objection on this ground.

Some S.40 matters were also referred to in the informant's Notice and Declaration.

The informant referred to the last page of the description of the invention which refers to "varying the pitch of the bottom 1" (of the separator tank) and suggested that the invention was not fully described with regard to this feature. I do not agree that a S.40 objection is applicable. Conceivably, a tank with a different pitch bottom to the one shown in the drawings is possible within the scope of the claims, as long as the side channel also follows the different pitch. Such modifications are fairly within the scope of the invention.

The informant also suggested that the claims are not fairly based because they are not limited to laminar flow. Page 4 of the description emphasises the importance of this feature. Again I think there is no objection here; the claims do not specifically refer to laminar flow, but I am satisfied that the features of the claimed invention, when read in the light of the description, do in fact combine to form an apparatus with improved laminar flow.

CONCLUSION

I find that the claims of Petty Patent No.678,749 are valid, and accordingly I extend the term under S.69(2). Applying the usual practice of costs following the event, I award costs against Martin Gerard Earley.

John Welsh
Delegate of the Commissioner of Patents

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

Patent attorneys for the informant:  Patent Attorney Services,  Box Hill,  Vic