Bombardier Transportation GmbH v Siemens Aktiengesellschaft - [2013] APO 17

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bombardier Transportation GmbH v Siemens Aktiengesellschaft [2013] APO 17

Patent Application: 2004281875

Title:Large-capacity vehicle for transporting people, especially a rail vehicle, comprising carriages that are connected in an articulated manner

Patent Applicant:  Siemens Aktiengesellschaft
Opponent:  Bombardier Transportation GmbH
Delegate:  R Subbarayan
Decision Date:  13 February 2013
Hearing Date:  21 November 2012, in Canberra
Catchwords:  PATENTS - section 59 – opposition to grant of a patent on the grounds of novelty, inventive step, manner of manufacture, full description and clarity – specification found to not fully describe the invention – claims lack clarity – other grounds not made out - opposition successful – applicant afforded opportunity to amend – costs awarded against applicant

Representation: Patent applicant: Spruson and Ferguson, Sydney
Opponent:Griffith Hack, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004281875

Title:Large-capacity vehicle for transporting people, especially a rail vehicle, comprising carriages that are connected in an articulated manner

Patent Applicant: Siemens Aktiengesellschaft
Date of Decision: 13 February 2013
DECISION

The opposition is successful on the grounds of full description and clarity. The applicant is allowed 60 days from the date of this decision to propose suitable amendments to overcome the deficiencies. Costs according to Schedule 8 are awarded against the applicant.
REASONS FOR DECISION
BACKGROUND
Patent application AU2004281875 in the name of Siemens Aktiengesellschaft was filed on
6 August 2004 as a PCT application and claims priority from a German priority document filed on 19 September 2003. The specification was advertised as accepted on 20 May 2010. Bombardier Transportation GmbH filed a Notice of Opposition on 20 August 2010.
The matter was heard on 21 November 2012 with both parties appearing over the telephone. The applicant was represented by Mr Ryan Curnick from Spruson and Ferguson. The opponent was represented by Mr Craig Smith of Counsel assisted by Ms Nadia Odorico and Ms Kate Hay of Griffith Hack.
SPECIFICATION
The specification states that the invention relates to a large capacity vehicle for transporting people, in particular a rail vehicle, having car bodies which are coupled to each other through articulated connections.
It then briefly discusses a couple of prior art large capacity multi-joint vehicles. In these prior art vehicles, all of the articulated connections permit turning movements of the car bodies about the vertical axis when cornering. At least one of the articulated connections also permits adjoining car bodies to carry out pitching movement about the transverse axis when the vehicle travels over a raised area or through a depression.
In certain track situations, such as in particular elevations in the track on bends or twists in the tracks, torsion may occur in the car bodies as the articulated connections only permit either pivoting of the car bodies about a vertical axis or pivoting and pitching of the car bodies about the vertical axis and the transverse axis. This torsion can cause high stresses in the structure of the car bodies and has potential to cause damage to the car body structure.
The object of the invention is to therefore develop an articulated vehicle in which high stresses and damage to the car bodies is reliably avoided in all track situations.
The present invention solves the problem by providing upper and lower articulated connections between adjoining car bodies and incorporating in one of the upper articulated connections, a connecting element embodied and connected to the two adjoining car bodies in such a way as to permit not only pivoting movements about a vertical axis but also rolling movements about a longitudinal axis of the vehicle.
The specification then very briefly describes two embodiments to achieve this rolling movement. In the first embodiment the connecting element is a rigid connector rod which is connected to the adjoining car bodies by ball and socket joints. In the second embodiment, the connector is embodied as a twistable connector rod which is connected to the car bodies by single-axle joints.
The specification ends with ten claims of which the three independent claims read as follows:
1. A large-capacity vehicle for transporting people, comprising:
car bodies coupled by lower articulated connections and by upper articulated connections, at least two car bodies being respectively supported on a bogie or set of running gear, both the lower articulated connections and the upper articulated connections permitting turning movements of the car bodies about a vertical axis when cornering, the large-capacity vehicle including more than three car bodies,
wherein at least one upper articulated connection is embodied in such a way that the large-capacity vehicle can carry out pitching movements about a transverse axis when travelling through a depression or over an elevation, one of the upper articulated connections including a connecting element embodied and connected to the at least two car bodies in such a way as to permit pivoting and rolling movements about a longitudinal axis of the large-capacity vehicle, and
wherein the connecting element of the upper articulated connection is embodied as a rigid connector rod and is connected to the two car bodies via ball and socket joints.
2. A large-capacity vehicle for transporting people, comprising:
car bodies coupled by lower articulated connections and by upper articulated connections, at least two car bodies being respectively supported on a bogie or set of running gear, both the lower articulated connections and the upper articulated connections permitting turning movements of the car bodies about a vertical axis when cornering, the large-capacity vehicle including more than three car bodies,
wherein at least one upper articulated connection is embodied in such a way that the large-capacity vehicle can carry out pitching movements about a transverse axis when travelling through a depression or over an elevation, one of the upper articulated connections including a connecting element embodied and connected to the at least two car bodies in such a way as to permit pivoting and rolling movements about a longitudinal axis of the large-capacity vehicle, and
wherein the connecting element of the upper articulated connection is embodied as a twistable connector rod and is connected to the two car bodies via single-axle joints.
10.The large-capacity vehicle substantially as hereinbefore described with reference to any one of the embodiments as that embodiment is shown in the accompanying drawings.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars was filed on 19 November 2010 and states the grounds of opposition as manner of manufacture, novelty, inventive step, full description and clarity.
EVIDENCE
The evidence in support includes the following statutory declarations:
·Declaration dated 16 September 2011 from Robert Kaul, a Traction and Rolling Stock Engineer
·Declaration dated 19 September 2011 from Nadia Odorico, a Patent Attorney.
Mr Kaul is a Traction and Rolling Stock Engineer with over 20 years experience in the rolling stock industry. He is currently Group Leader Traction and Rolling Stock at Halcrow Group Limited UK. He has also worked from 2001 until January 2004 as a senior consultant with Halcrow in Australia. During that time he was Project Manager and Independent Certifier for Bayside Trains and Swanston Trams in Melbourne.
Evidence in answer includes the following statutory declaration:
·Declaration dated 17 May 2012 from Colin Butcher, a Mechanical Engineer.
Mr Butcher is a Mechanical Engineer with 50 years experience in the rolling stock industry as an engineer, manager and more recently as a consultant. His work experience includes employment with British Rail, Clyde Engineering, Comeng, ACB Consulting Services and Industrious Design Pty Ltd.
Evidence in reply includes the following statutory declaration:
·Declaration dated 20 August 2012 from Nadia Odorico.
FULL DESCRIPTION
The opponent has argued that the specification does not describe the invention fully for the following reasons:
·The description and the claims suggest that it is possible to have an arrangement in which one upper articulated connection between the car bodies is capable of permitting all three movements of pivoting about a vertical axis, rolling about a longitudinal axis and pitching about a transverse axis, however none of the embodiments shown describe how this can be achieved in the one upper articulated connection.
·None of the embodiments of the description show an articulated connection that permits pitching movement of the car bodies about the transverse axis.
·The lower articulated connector is described as a spherical joint but there is no disclosure of it being able to change its length. Hence if both the upper and lower articulated connections are of fixed length, then it follows that a pitching movement will not be permitted.
·There is no disclosure of how the axes of the single-axis joints of the second embodiment are to be orientated.
·The specification is very generic/conceptual and would need some “serious engineering” and a lot of design hours to develop a working design/prototype.
The applicant’s counter arguments can be summarised as follows:
·The description and claims clearly state that the vehicle has more than three car bodies and therefore there are at least two upper articulated connections. Although the drawings only show an articulated connection between two car bodies 6, 7, the description clearly describes that the vehicle includes a further car body 6 which is arranged at the other end of the car body 7.
·The upper articulated connection shown in the drawings only permits pivoting about a vertical axis and rolling about a longitudinal axis, but does not permit pitching about a transverse axis.
·The pitching movement is provided by the other upper articulated connection which is not shown and can be any well known articulated connection that permits such pitching movement.
·There is no disclosure or example of an upper articulated connection that can accommodate pivoting/rolling movement and also pitching movement and a skilled addressee would clearly reject such an absurd construction.
·Despite the schematic nature of the drawings, a skilled addressee would have been able to develop a detailed design for manufacture. While engineering work would be required to develop a working prototype, invention would not be required as the concept of the upper articulated connectors is clearly described.
The invention defined in claims 1 and 2 is described in the specification with reference to figures 1-4. The description of this preferred embodiment is extremely brief and reads as follows:
“The car bodies 6, 7 are preferably components of a rail vehicle which is of modular design and has, for example, a total of three, five or more car bodies. The car body 6 can be supported on a bogie or set of running gear, while the car body 7 is embodied in the manner of a bridge and is borne by the supported car body 6 and a further supported car body (6) which is arranged to the right of the bridge-like car body 7 in the plane of the drawing in Figs 1 to 7. However it is also conceivable to support all the car bodies on bogies or sets of running gear.
All the car bodies of the multi-part rail vehicle are coupled by means of articulated connections which permit turning movements of the car bodies about the vertical axis when the vehicle travels through a bend. In a rail vehicle which has more than three parts, at least one articulated connection is embodied in such a way that the vehicle can carry out pitching movements about the transversal axis when travelling through a depression or over an elevation. So that rolling movements of the car bodies 6, 7 about the longitudinal axis of the vehicle are also permitted, the articulated connection shown has a connecting element 2 which, according to Figs 1 to 3 and 4 to 7, is embodied as a rigid connector rod and is connected to the two car bodies 6, 7 by means of ball and socket joints 3, 4. In the alternative embodiment which is shown in Fig. 4, the connecting element 2 is embodied as a twistable connector rod and is connected to the two car bodies 6, 7 by means of single-axle joints 8, 9. In the lower region, the car bodies 6, 7 are coupled by means of a vehicle joint 1 which can move in a spherical fashion. One of the rotational axes which is formed by the ball and socket joints 3, 4 or by the single-axle joints 8, 9 and the rotational axis of the vehicle joint 1 preferably lie on the same vertical axis 10. As a result of this, satisfactory pivoting about the vertical axis is possible.” (my underlining)
There is hardly any more detail in these two paragraphs than what is in claims 1 and 2. It merely adds the disclosure that there is this further supported car body 6 which is arranged at the other end of the car body 7. This further supported car body is not shown in any of the figures. While there is another paragraph of text, this is all about the additional component to damp the rolling movement and is not relevant to claims 1 and 2.
Given that the vehicle has at least three car bodies it follows that there are at least two upper articulated connections in the vehicle, a first one between the first and second car bodies and a second one between the second and third car bodies. However as pointed out by the opponent, the above passages do not place any limitation on the location of the two articulations that respectively permit pitching and rolling. When I read the description, the impression that I get is that at least one of the upper articulations is embodied in such a manner that it permits both pitching and rolling in addition to pivoting/turning. I am unable to find any disclosure or even an indication in the description to support the applicant’s submission that the upper connection that provides the pivoting/rolling movement is different to the upper connection that provides the pitching movement.
I am not convinced by the applicant’s submissions that as neither of the two embodiments described would permit the movements of both pitching and rolling, a skilled addressee would realise that each of these movements will have to be provided by different ones of the upper articulated connections. As the first embodiment uses ball and socket joints for the upper connector that provides the pivoting/rolling movement it is possible that the ball and socket joints can also permit some degree of pitching movement provided the lower connection is of variable length. However in relation to the second embodiment which uses the twistable connector rod and single axle joints, I agree with the applicant’s arguments that this upper connector would appear to not permit pitching movement about a transverse axis.
The description highlights that the object of the invention is to provide articulated connections between car bodies that permit rolling movements in addition to pivoting and pitching movements but then fails to provide clear instructions as to the location and arrangement of the connectors that permit the pitching movement. There is clearly uncertainty as to whether the upper articulation that permits the pivoting and rolling movement is the same as or different to the upper articulation that permits the pitching movement. If they are the same not all embodiments would appear to permit all three movements in the one upper articulation. If they are different as argued by the applicant, then it is unclear how the object of reliably avoiding high stresses and damage due to rolling will be achieved for those car bodies that are connected by an upper articulation that only permits pitching.
In determining whether the invention is full described, I am guided by the statements of the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 :
“The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”[44]
For the reasons stated above, in my view the disclosure does not give the addressee sufficient detail to produce the invention without prolonged study of matters presenting initial difficulty. I therefore find that the specification does not fully describe the invention.
CLARITY
The opponent submitted that claim 1 lacks clarity because of the definitions “at least one upper articulated connection is embodied in such a way that the large-capacity vehicle can carry out pitching movements about a transverse axis” and “one of the upper articulated connections including a connecting element embodied and connected to the at least two car bodies in such a way as to permit pivoting and rolling movements about a longitudinal axis” leave it open as to what each upper articulated connection is expected to do. It could be that one of the upper articulation connection that permits pivoting and rolling movements is the same as or different to the articulated connection that permits pitching movements.
I agree and as discussed under full description, there is clearly ambiguity in the claim as to whether the articulated connection that permits pivoting and rolling is the same or different to the articulated connection that permits pitching.
Claims 1 and 2 therefore lack clarity.
NOVELTY
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
In applying this test regard must be given to the level of disclosure in the prior publication. As stated in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR at 517:
“It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication.”
For the purposes of determining whether the claimed invention is novel and inventive, I will proceed on the basis that the upper articulated connection that permits pivoting and rolling movements can either be the same as or different to the upper articulated connection that can carry out pitching movements.
At the hearing the opponent did not make any submissions in relation to Novelty although they said that this ground was still formally pressed.
The opponent’s case in relation to Novelty according to their evidence in support is based on document (D1) US 5953997 A. Their expert declarant Mr Kaul has provided in his declaration a table listing all the feature of the claims and where each of these features can be found in D1. This has further been supplemented by another table from Ms Odorico.
Mr Butcher for the applicant on the other hand has disputed this and has identified some of the features of the claims that are not disclosed or suggested by D1.

The key differences highlighted by Mr Butcher in relation to the independent claims are as follows:
·In D1 the two car bodies are not supported on bogies or running gear and are not coupled to each other but are instead connected to and supported by an intermediate module which in turn is supported on a bogie.
·D1 does not disclose a connecting element in the form of a rigid connector rod that is connected to the two car bodies via ball and socket joints as required in claim 1.
·D1 does not disclose a connecting element in the form of a twistable connector rod that is connected to the two car bodies via single axle joints as required in claim 2.
D1 states that it relates to a composite articulated connection between two successive cars of a self guiding large-capacity vehicle. This connection is constituted by an intermediate module which is supported on a bogie and each of the two adjacent car bodies are connected to this intermediate module by articulated connections. There is no disclosure of the car bodies themselves being supported on respective bogies.
D1 describes a number of embodiments with reference to figures 1-13. In all these embodiments the connection between successive car bodies is not a direct connection but only through the intermediate module. Of these, the embodiment shown in figures 9-13 appears to the one most relevant to the claimed invention and this is the embodiment relied on by the opponent, at least in respect of claim 1.
Although disputed by the applicant I am satisfied that the embodiment shown in figs 9-13 of D1 discloses upper and lower articulated connections between the intermediate module and a front car body 8 and between the intermediate module and a rear car body 9. It is clear that all of the lower and upper connections permit turning movement about a vertical axis.
The front upper articulated connections in this embodiment comprises a pair of oblique rods 108, 109 of constant length that are each connected between a front car and the intermediate module 10 by articulated joints and the rear upper articulated connections comprise a pair of oblique shock absorbers 112, 113 that are each connected between the intermediate module and the rear car 8 by ball joints. These upper articulated connections are described as connections which are not vertically constrained. I interpret this to mean that the upper connectors permit pitching or articulation in a vertical plane in addition to articulation in a horizontal plane. Also while not explicitly disclosed in relation to this embodiment, elsewhere in the specification including claim 1, it is stated that the front upper articulated connection transmits (which I interpret as permits) rolling and pitching motions. I am therefore satisfied that the vehicle of D1 includes at least one upper articulated connection that can carry out pitching movements and at least one upper articulated connection that permits pivoting and rolling movements.
While the rods 108, 109 and shock absorbers 112, 113 constitute connecting elements, rigid rods 108, 109 are not explicitly disclosed as being connected to the car bodies by ball and socket joints and shock absorbers 112, 113 although connected to the car bodies by ball and socket joints are clearly not rigid rods.
Therefore in my view D1 does not clearly and unmistakeably disclose all of the integers of claim 1 which is therefore novel.
In relation to claim 2, there is no disclosure of either the rods 108, 109 or the shock absorbers 112, 113 as being twistable. The opponent referred me to integer 73 in figure 8 and submitted that this integer is twistable and is connected to the car bodies by single axle joints.
I am not convinced. While integer 73 is a stated to be a rectilinear element that can flex and twist, it is connected to one of the car bodies in a manner that it can be longitudinally displaced. This end at least is not connected by single axle joints as required by claim 2. It also appears that in the embodiment of figure 8 the lower articulated connections are only provided between some of the car bodies.
Claim 2 is also therefore novel.
It follows that dependent claims 3-9 and omnibus claim 10 are also novel.
INVENTIVE STEP
The opponent argued that the claimed invention lacks inventive step based on common general knowledge (CGK) alone or on a combination of prior art document D1 and CGK.
Common general knowledge alone
The opponent submitted that Mr Kaul in his expert declaration has stated that all the integers of the claimed invention were CGK in the art and that a person skilled in the art would have been able to come up with everything disclosed in the patent.
When I consider the submissions and declarations from both parties, it is clear that there is no dispute that the following integers of the claims were CGK in the art:
·multi-car large capacity vehicles including more than three car bodies
·car bodies coupled by lower articulated connections that permit turning movements about a vertical axis when cornering
·car bodies supported on a bogie or set of running gear
·dampers to damp inter body movements.
However in relation to the key integer of the upper articulated connections, there is some divergence of opinions between the parties.
My Butcher for the applicant has stated that it was not well known or CGK in Australia at the priority date for vehicles having bodies accommodating pivoting/pitching/rolling movements to have a lower and also an upper connection.
The opponent has argued that Mr Kaul has stated that upper articulated connections were also CGK in the art and that Mr Kaul’s view is to be preferred to that of Mr Butcher.
However when I read the declaration of Mr Kaul, I am not convinced that he clearly states that upper articulated connections that permit pivoting and rolling were indeed CGK. He states that the information in paragraphs 14-24 of his declaration was well known and CGK to persons skilled in the art, but nowhere in these paragraphs does he explicitly state that the use of upper articulated connections that permit pivoting and rolling in combination with lower articulated connections that permit pivoting were CGK in Australia. While he does make some mention that the Alstom Citadis trams in use in Melbourne uses upper articulated linkages as illustrated in figure 1 of prior art US 5197392, it is clear from a reading of this document that the upper articulated linkage is between a car and an intercommunication tunnel and not between two cars that are each supported on a bogie.
Even when posed with the initial problem, Mr Kaul only states that it would have been obvious to him that the carriages would need to be connected with lower and possibly (my underlining) upper connections. While he goes on to state that the upper connection may be a rigid structure such as a lower coupler and may need to be pivotally connected, he does not state that it would have been obvious to provide an upper articulated connection that permits pivoting and rolling movements.
Hence I am not satisfied that the evidence clearly establishes that the use of upper articulated connectors that permit pivoting and rolling in combination with lower articulated connectors between adjacent car bodies of an articulated vehicle was CGK in the art.
In relation to the feature of the rigid connector rod connected to the car bodies by ball and socket joints, while Mr Kaul does state that the use of pivotally connected rigid connector rods would have been obvious to the skilled person, he does not state that the use of a rigid connector rod connected to the car bodies by ball and socket joints as required by claim 1 would have been obvious. At the hearing the opponent argued that ball and socket joints were an obvious option for the skilled addressee. While I accept that ball and socket joints per se are CGK in the art, I am not satisfied that the evidence clearly establishes that the use of a rigid connector rod that is connected to the car bodies by ball and socket joints in the upper articulation as required in claim 1 was CGK in the art.
Similarly the opponent’s evidence does not clearly establish that the alternative of the use of a twistable connector rod connected to the car bodies by single-axle joints was CGK or would have been obvious to the skilled addressee.
In assessing inventive step I am guided by the approach taken by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286:
"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 discussed above, some integers of the claimed invention are CGK while others are not and the evidence does not clearly establish that a skilled addressee would have as a matter of routine combined all of these features to arrive at the claimed invention.
The invention defined in the claims involves an inventive step over what was CGK in the art at the priority date.
D1 and CGK
D1 is a document that relates to articulated connections between car bodies of a large capacity vehicle and describes and claims connections that permit turning, rolling and pitching movements. In my view D1 is therefore a document that would have been ascertained, understood and regarded as relevant.
As discussed under novelty, the claimed invention differs from D1 in that the articulated connections are provided between car bodies that are each supported on a respective bogie and that the connecting element comprises either a rigid connector rod that is connected to the two car bodies by ball and socket joints (claim 1) or a twistable connector rod that is connected to the car bodies by single-axle joints (claim 2).
As mentioned earlier, Mr Kaul for the opponent has stated that supporting car bodies on bogies and the use of ball joints in rolling stock couplers were CGK in the art.
Whilst I accept that these integers were individually known, there is nothing in his evidence that clearly establishes that having ascertained D1, it would have been obvious for a person skilled in the art to directly connect the car bodies together without the intermediate module, provide each of the car bodies with its own bogie and then provide the connecting element in the upper articulated connector either as a rigid rod with ball joints or as a twistable rod with single-axle joints.
The claimed invention is therefore inventive over D1.
MANNER OF MANUFACTURE
While the statement of grounds and particulars mention manner of manufacture as a ground of opposition, this ground was not pressed at the hearing. Also there is no evidence from the opponent in relation to this ground.
In the statement of grounds and particulars, the particulars for this ground state that the alleged invention is a mere collocation of known features and does not have the necessary quality of inventiveness.
The High Court in Philips v Mirabella [1995] HCA 15 stated that manner of manufacture can be a threshold question:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316, the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non- inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
I am unable to find any lack of inventiveness on the face of the specification alone. Hence I am not satisfied that this ground has been made out.
CONCLUSION
The specification does not fully describe the invention and the claims also lack clarity. The opposition therefore succeeds on these grounds. The other grounds of opposition have not been made out.
It may be possible to overcome the deficiencies by amendment. I therefore allow the applicant 60 days from the date of this decision to propose suitable amendments.
COSTS
Costs normally follow the event and I see no reason to vary that practice. As the opposition has been successful I award costs according to Schedule 8 against Siemens Aktiengesellschaft.
R Subbarayan
Delegate of the Commissioner of Patents