Bradken Resources Pty Limited v Lynx Engineering Consultants Pty Ltd
[2007] APO 11
•13 March 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 749848 in the name of LYNX ENGINEERING CONSULTANTS PTY LTD
Title: Side Reinforced Bulk Material Transport Container
Action: Opposition under Section 59 of the Patents Act by BRADKEN RESOURCES PTY LIMITED
Decision: Issued 13 March 2007 .
Abstract
Amendment to the statement of grounds and particulars allowed.
The opposition does not succeed under the grounds of entitlement, manner of manufacture, section 40 (clarity and fair basis) and inventive step.
Although not entitled to the earlier priority date claimed, the claims were nevertheless found to be novel in the light of the prior art documents on which the opponent had placed reliance. However, claim 1 and claims 6, 9, 14 and 30 (when each appended to claim 1) were found to be deprived of novelty by the prior use of a commercial product referred to in evidence as the Dial A Dump waste bin.
Costs awarded against the applicant in respect of the hearing on the substantive opposition and a preceding extension of time hearing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 749848 in the name of Lynx Engineering Consultants Pty Ltd and opposition under section 59 by Bradken Resources Pty Limited
BACKGROUND
Patent application 749848 (the application) was filed on 30 March 1999 by Lynx Engineering Consultants Pty Ltd (Lynx) under the provisions of the Patent Cooperation Treaty claiming
priority from provisional application PP2677 filed on 30 March 1998. The application was advertised accepted on 4 July 2002.
Bradken Resources Pty Limited (Bradken) filed a notice of opposition to the application on 4 October 2002 and a statement of grounds and particulars on 7 January 2003. On 10 February 2004 Bradken filed a request under regulation 5.9 to amend the statement of grounds and particulars. The amendment was allowed on 2 March 2004.
Bradken completed the service of its evidence in support of the opposition on 4 May 2004 after having been granted numerous extensions of time unopposed. The time in which to serve evidence in answer was in turn extended on a number of occasions without objection. On 4 March 2005 Lynx requested a further extension of time to 4 April 2005. Bradken objected to the further extension and the matter was heard on 29 March 2005. The hearing was, however, adjourned when Lynx agreed to provide a written undertaking to complete the service of its evidence in answer by 22 April 2005 absent any force majeure. The service of evidence in answer was duly completed in accordance with that undertaking.
On 27 April 2005 Bradken filed a notice of intention to serve evidence in reply. On 6 May 2005 Lynx applied under regulation 5.10(4) to serve further evidence on the grounds that the material sought to be admitted as further evidence had been foreshadowed in the evidence in answer. After an exchange of correspondence, the parties were advised on 21 July 2005 that the application to serve further evidence had been allowed subject to an extension of the time in which to serve evidence in reply. Bradken was granted two additional extensions of time prior to completing the service of its evidence in reply on 23 November 2005.
Meanwhile, on 31 October 2005, Bradken applied under regulation 5.10(4) to serve further evidence. The application to serve further evidence was allowed on 8 December 2005, but not before Bradken had requested another amendment to the statement of grounds and particulars. This precipitated a request by Lynx under regulation 5.10(1) that Bradken be directed to file further and better particulars. On 23 December 2005 the parties were advised that the Commissioner was not satisfied of the appropriateness of the directions requested. Lynx did not pursue the matter further, and the amendment to the statement of grounds and particulars was allowed on 6 January 2006.
On 3 January 2006 Lynx applied for an extension of three months in which to serve evidence in response to the further evidence. The parties were advised on 19 January 2006 that an extension of only one month would be granted in the circumstances. Lynx was granted another one month extension before completing the service of its evidence in response on 22 February 2006.
The opposition to the present application was eventually set for hearing in Canberra on 10 and 11 August 2006. However, on 8 August, Bradken again requested an amendment to the statement of grounds and particulars.
To avoid a further protraction of proceedings, the request to amend the statement of grounds and particulars was heard jointly with the opposition. Lynx was represented by Mr Richard McCormack of counsel instructed by Mr Mark Pullen of the patent attorney firm Watermark Patent and Trade Mark Attorneys. Bradken was represented by Mr Stephen Burley and Mr Andrew Fox of counsel instructed by Dr Malcolm Engel of the patent attorney firm Griffith Hack. Mr Chris Kilian of Lynx, accompanied by his wife, was also in attendance as an observer.
THE SPECIFICATION
The specification filed in respect of the application is relatively brief and indicates that the invention relates to bulk transport containers, and in particular to containers used in road and rail transportation.
The specification states that bulk transport containers presently in use are unable to carry more payload than they are designed for without damaging the container, or without the likelihood of unexpected structural failures with an increased risk of derailment in the case of rail transportation. The invention seeks to address the drawbacks inherent in the design of existing containers by providing a container for bulk material transportation which is constructed with at least one internal ridge.
The specification ends with thirty-one claims which are in the following terms:
“1. A container for transporting bulk material including two side walls, two end walls and a base, wherein at least one said side wall includes at least one internal ridge running along said at least one side wall between said end walls, and wherein said ridge is integrally formed within said at least one side wall and the distance from which said ridge projects from said side wall is greater than the thickness of said side wall.
2. A container for transporting bulk material including two side walls, two end walls, and a base; said side walls including a plurality of vertical reinforcing members spaced along the length of said side wall, wherein said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween, wherein said ridge is integrally formed within said side wall and the distance from which said ridge projects from said side wall is greater than the thickness of said side wall.
3. A container as claimed in claim 2 further including at least one internal ridge between each of said reinforcing members.
4. A container as claimed in claim 2 or 3 including additional reinforcement aligned along said internal ridge between each of said reinforcing members.
5. A container as claimed in any one of claims 2 to 4, further including at least one internal ridge between one said end wall and a first reinforcing member.
6. A container as claimed in any preceding claim wherein said ridge includes a first wall portion angled from said wall towards the interior of said container, and a second wall portion rejoining said first wall portion to said wall.
7. A container as claimed in any one of claims 1 to 5, adapted for unloading of material through the base of the container, wherein said ridge includes a first wall portion angled from said wall away from the interior of said container, and a second wall portion rejoining said first wall portion to said wall.
8. A container as claimed in claim 6 or claim 7 wherein the angle of said first wall portion is in the direction of flow during unloading of the material to be transported.
9. A container as claimed in any one of claims 1 to 5, wherein said internal ridge includes a first wall portion deflected inwardly a progressively increased degree relative to the intersection of said side wall and said base, and a second wall portion extending from said first wall portion and being deflected outwardly a progressively decreased degree relative to the intersection of said side wall and said base.
10. A container as claimed in any one of claims 1 to 9 wherein said first wall portion extends from said side wall at an angle Ø1, wherein:
Ø1 ≤ Ø2 – Ø3 – 90o
where:
Ø1 – is the angle between said side wall and said first wall portion,
Ø2 – is the angle said container is rotated during unloading of said container, and
Ø3 – is the natural angle of repose of material to be transported in said container.11. A container as claimed in any one of claims 1 to 9 wherein said first wall portion extends from said side wall at an angle Ø1, wherein:
Ø1 ≤ Ø2 – Ø3 – Ø4 – 90o
where:
Ø1 – is the angle between said side wall and said first portion,
Ø2 – is the angle said container is rotated during unloading of said container,
Ø3 – is the natural angle of repose of material to be transported in said container, and
Ø4 – is the cohesion of said material to be transported when wet.12. A container as claimed in any one of claims 1 to 9 adapted for unloading of material through the base of the container, and wherein said first wall portion extends from said side wall at an angle Ø1, wherein:
Ø1 ≤ 90o – Ø3
where:
Ø1 – is the angle between said side wall and said first wall portion, and
Ø3 – is the natural angle of repose of material to be transported in said container.13. A container as claimed in any one of claims 1 to 9 adapted for unloading of material through the base of the container, and wherein said first wall portion extends from said side wall at an angle Ø1, wherein:
Ø1 ≤ 90o – Ø3 – Ø4
where:
Ø1 – is the angle between said side wall and said first wall portion,
Ø3 – is the natural angle of repose of material to be transported in said container, and
Ø4 – is the cohesion of said material to be transported when wet.14. A container as claimed in any preceding claim wherein said first and second wall portions are symmetrical.
15. A container as claimed in any preceding claim wherein said second wall portion is convex or concave.
16. A container as claimed in one of claims 6 to 15, wherein said first wall portion is aligned with the flow of material during unloading of said container.
17. A container as claimed in any one of claims 6 to 16, wherein said ridge further includes a third wall portion between said first wall portion and said second wall portion.
18. A container as claimed in claim 17 wherein said third wall portion is concave.
19. A container as claimed in claim 17 wherein said third wall portion is flat or straight.
20. A container as claimed in claim 19 wherein said third wall portion is parallel to said side wall.
21. A container as claimed in claim 19 wherein said third wall portion is angled relative to said side wall.
22. A container as claimed in any one of claims 17 to 21 wherein said first wall portion is equal to or longer than said third wall portion.
23. A container as claimed in any one of claims 6 to 22, wherein at least one said side wall further includes a partial ridge along the top or rim of said at least one side wall, said partial ridge being formed by a fourth wall portion, said fourth wall portion being equivalent to said first wall portion.
24. A container as claimed in claim 23, wherein said fourth wall portion is of equal length to said first wall portion.
25. A container as claimed in claim 23 or 24 wherein said partial ridge further includes a strengthening member along the periphery of said fourth wall portion, said strengthening member forming the rim of said container.26. A container as claimed in claim 25, wherein said strengthening member is integrally formed within said at least one side wall.
27. A container as claimed in any preceding claim wherein said base of said container includes at least one ridge extending substantially along the length of said base.
28. A container as claimed in claim 27 wherein said at least one ridge along said base is located about wheel or track positions of a support for said container.
29. A container substantially as hereinbefore described with reference to Figures 2a, 2b, 3a, 3b, 4b, 6 or 8.
30. A container as claimed in any preceding claim for use in transportation of bulk material by road.
31. A container as claimed in any preceding claim for use in transportation of bulk material by rail.”
The specification indicates that the provision of at least one internal ridge in the side wall of the container enhances the structural strength of the side wall thereby reducing the need for reinforcing members that are located externally of the side wall in conventionally designed containers, as well as increasing the payload capacity of the container.
GROUNDS OF OPPOSITION
The statement of grounds and particulars sets out the following grounds of opposition:
- The nominated person is not entitled to a grant of a patent for the invention;
- The invention, so far as claimed in claims 1 to 31:
a)is not a manner of new manufacture within the meaning of section 6 of the Statute of Monopolies;
b)is not novel when compared with the prior art base as it existed before the priority date of the claims; and
c)does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims;
- The specification does not comply with subsection 40(2) or (3).
The statement also disputes the entitlement of the claims to a priority date based on the filing date of provisional application PP2677.
EVIDENCE IN SUPPORT
The evidence in support of the opposition filed by Bradken consists of:
- A statutory declaration made by Julie Mather on 20 March 2003;
- A statutory declaration made by Ngaire Ann Petit-Young on 18 July 2003;
- A statutory declaration made by Warren Williams on 31 October 2003 together with exhibits A to E;
- A further six statutory declarations made by Ngaire Ann Petit-Young on 8 January 2004;
- A statutory declaration made by Ian Raymond Malouf on 1 March 2004 together with exhibits IRM1 to IRM 4; and
- A statutory declaration made by David James Ferris on 4 May 2004 together with exhibits DJF1 to DJF24.
Evidence in support from David James Ferris
Mr Ferris is a qualified mechanical engineer who has worked in the field of railway engineering, including railway wagon design and manufacture, since 1966.
Mr Ferris commences by setting out his general knowledge of the field of railway wagon design at the priority date.
He says that any designer would have known before the priority date to provide one of more strengthening ribs at the end and/or side walls of a railway wagon in order to support those walls when the wagon became loaded. For example, the wagon shown on pages 284-285 of exhibit DJF17 has external vertical and horizontal ribs on its side walls, as do the wagons respectively shown on page 18 of exhibit DJF20, page 309 of exhibit DJF3 and page 1259 of exhibit DJF16. Another example of the use of strengthening ribs is shown in the prior art wagon depicted by Figure 1 of the specification.
Mr Ferris further states that a person skilled in the art of designing railway wagons would have also known of the use of ridged or corrugated side and end walls, and the benefits to wall stiffness and strength that these ridges or corrugations provide. Some examples of railway wagons having corrugated end walls are shown on page 171 of exhibit DJF18 and pages 218-219 of exhibit DJF16, the side walls of these wagons being stiffened with vertical strengthening ribs. Some examples of railway wagons having both their end walls and side walls corrugated are shown on pages 1262 and 1296 of exhibit DJF16, the side walls of these wagons similarly being stiffened with vertical strengthening ribs. Other examples of railway wagons having corrugated end walls and side walls are shown on pages 131, 144, 179 and 501 of exhibit DJF16.
According to Mr Ferris, exhibit DJF16 additionally shows that:
- it has been common practice for many years to increase the strength of railway wagons by stamping horizontal ridges into their end walls (pages 407-408 refer);
- it is known to provide the side walls of railway wagons with reinforcement at the uppermost edge nearest the lip or rim (pages 218, 219, 285 and 501 refer; and see also page 227 of exhibit DJF4); and
- ridged or corrugated floors in passenger railway wagons have been used since the 1930s (pages 762 and 778 refer).
In relation to the final point above, Mr Ferris says that the benefits to floor stiffness and strength provided by the ridges or corrugations would be known to a person skilled in the art of designing railway wagons for conveying bulk goods.
Mr Ferris next provides his interpretation of the meaning of the words used in the specification which have been particularised under the opposition ground of non-compliance with section 40. It is not necessary to set out that evidence here.
.
Mr Ferris concludes his evidence in support with a comparison of each of claims 1 to 31 with the following material:
- Exhibit DJF3 - “The Fyansford quarry railway”, Pearce, WA, 1974, Industrial Railway Record, No 56, October, Industrial Railway Society (IRS), pp 305, 309, 315;
- Exhibit DJF6 – “Use of aluminium on the railroad industry”, Weiss JC, Sauter KL, Roup DD, 1994, Proceedings of the International Mechanical Engineering Congress and Exposition Nov 6-11, Chicago, IL, USA, American Society of Mechanical engineers, Rail Transportation Division (Publication) RTD, New York, NY, USA, pp 145-152;
- Exhibit DJF 10 – “New freight cars designed by Russian plants”, Mironov, NI et al, 1998, Tyazheloe Mashinostroene, January, No 1, pp 15-18;
- Exhibit DJF13 – United States patent specification no 5154302;
- DJF16 – 1946 Car Builders’ Cyclopedia of American Practice, 17th edition, Association of American Railroads (AAR) – Mechanical Division, Simmons-Boardman Publishing Corp, NY, USA, pp 112-114, etc; and
- Exhibit DJF 24 – Canadian patent specification no 2201041.
Mr Ferris acknowledges that the exhibits he relies on do not disclose the features of every claim, but states that he does not “see anything very special” about these features.
Evidence in support from Warren Williams
Mr Williams is a qualified engineer with over twenty years experience in the railway industry, and since 1995 has held the position of general manager - rail with a company he says is one of a relatively small number of specialist consultants in Australia in the field of railway car design.
Mr Williams states that prior to 1998 he was well aware of the approaches to railway wagon design as would be demonstrated by the designs in use in Australia as well as other countries, most notably the USA. He expresses the view that a leading source of information on the subject is the Car Builders Cyclopedia of American Practice. Exhibit C is an extract commencing at page 227 of the 19th edition of this reference which Mr Williams says is representative of common railway wagon design at the priority date.
I note here that exhibit C is equivalent to exhibit DJF 4 referred to in the evidence of Mr Ferris.
Evidence in support from Ian Raymond Malouf
Mr Malouf is the managing director and proprietor of a specialist hire, waste removal and recycling business known as Dial A Dump Pty Ltd.
In 1986 Mr Malouf designed a waste bin in which the side walls (and, in some cases, one or both end walls) of the bin were strengthened with at least one integrally formed V-shaped corrugation to resist outward deformation of the walls under heavy load. Mr Malouf says the V-shaped corrugation is clearly shown in the engineering plans comprising exhibit IRM2.
Mr Malouf states that the bin he designed was additionally strengthened by vertical support bars spaced along the side and end walls, and that he has:
“progressively added bins of various sizes to the suite of bins available today for hire, but the same general design that was developed in 1986 is still used. Actual bins presently in service include the same bins that I first built in 1986.”
Evidence in support from Julie Mather and Ngaire Ann Petit-Young
Ms Mather and Ms Petit-Young are librarians at Deakin University and the University of New South Wales, respectively. Between them they attest to the public availability of the sources of exhibits DJF3, DJF4, DJF6, DJF10, DJF11, DJF16 to DJF18 and DJF20, as well as the particularised documents labelled as “Reference 3”, “Reference 6”, “Reference 7”, “Reference 9”, “Reference 15” and “Reference 17”, before the priority date.
EVIDENCE IN ANSWER
The evidence in answer filed by Lynx consists of:
- A statutory declaration made by Mark A Pullen on 4 November 2004 together with exhibits MAP-1 to MAP-7;
- A statutory declaration made by Krzysztof (Kris) Kilian on 3 March 2005 together with exhibits KK-1 to KK-3;
- A statutory declaration made by Vladimir Mazur on 4 March 2005 together with exhibits VM-1 to VM-3;
- A statutory declaration made by Brigette Sarah Grizaard on 21 April 2005 together with exhibits BSG-1 to BSG-9;
- A statutory declaration made by John G Wager on 22 April 2005 together with exhibits JGW-1 to JGW-5; and
- A statutory declaration made by Anthony Peter Boland on 22 April 2005 together with exhibits APB-1 to APB-4.
Evidence in answer from Mark A Pullen
Mr Pullen is a registered patent attorney with Watermark, which is the firm representing Lynx in the opposition. The sole purpose of his declaration is to introduce the following exhibits into evidence:
MAP-1: a copy of an extract from the Engineering Excellence Awards 2002 book of entrants which identifies a new iron ore railway wagon designed by Lynxrail. Mr Pullen says he is advised that Lynxrail is a trading entity of Lynx.
MAP-2: a copy of an extract from the Engineering Excellence Awards 2002 winners program which names Lynxrail as a national award winner in the small business category for its new iron ore railway wagon design.
MAP-3: a copy of an article from Railway Gazette International dated October 1999 concerning a new ore wagon designed by Lynx for BHP Billiton Iron Ore (BHPBIO). I note here that this is the same wagon which was recognised at the Engineering Excellence Awards 2002.
MAP-4 and MAP-5: copies of reports respectively dated August 1995 and March 1999 on the outcomes of wind tunnel tests conducted by Lynx at the University of Western Australia (UWA) on the new BHPBIO ore wagons.
MAP-6: a copy of a letter dated 29 May 2001 from UWA to Lynx confirming that the modifications employed following the wind tunnel tests conducted in 1995 to aerodynamically streamline the side walls of the BHPBIO ore wagons had been shown by the tests in 1999 to reduce aerodynamic resistance.
MAP-7: a copy of a report dated March 1999 concerning a field test carried out by Lynx to establish whether the modified BHPBIO ore wagons produced fuel efficiencies.
Evidence in answer from Krzysztof (Kris) Kilian
Mr Kilian is a structural engineer having extensive experience in the railroad industry and is currently a director of Lynx. He regularly attends railroad conferences and is the co-author of thirteen technical papers dealing with railroad technology.
In discussing the background to the invention, Mr Kilian says that the accepted method of reinforcing the side walls of bulk material containers before the priority date was to attach vertical side posts and/or horizontal stiffeners to the exterior of the container. The side posts and stiffeners were attached to the exterior of the container so that the interior of the side walls remained flat (ie. free of protrusions) and, consequently, did not obstruct the flow of material when unloading. Mr Kilian makes the point that although bulk material containers were occasionally reinforced by vertical side posts attached to the interior of the container, these posts extended in the same direction as the flow of material and therefore were not considered to hamper unloading operations.
Mr Kilian next explains that the invention arose from efforts by Lynx to design a new iron ore wagon for BHPBIO that could carry more payload, would cost less to operate, and would be cheaper to manufacture than existing wagons.
These design activities included the wind tunnel and field tests referred to in the evidence of Mr Pullen, and culminated in a product known as the “Lynxrail wagon” (also known as the GOLYNX car) which Mr Kilian says was acclaimed:
“not only by the client, who proceeded to order more (to date, about 1200 container cars have been sold to BHP Billiton), but also by the Institution of Engineers Australia who gave the Lynx container car three Engineering Excellence Awards, including the overall Western Australia award, as well as one of five national awards in 2002.”
Mr Kilian states that the Lynxrail wagon was unique in that the side walls were strengthened with horizontal ridges extending towards the interior of the container which was contrary to conventional thinking at the priority date, and yet did not impede the discharge of bulk material when unloading. The provision of horizontal ridges was also found to increase the carrying capacity of the wagon without increasing its external dimensions, and to reduce the need for vertical side posts, thereby making the wagon both lighter and cheaper to build. On this basis Mr Kilian claims that the Lynxrail wagon was not merely the result of routine modifications to conventional bulk material containers.
The remainder of Mr Kilian’s declaration sets out his reasons for disputing the relevance of the exhibits relied on by Mr Ferris and Mr Malouf to the Lynxrail wagon.
Evidence in answer from Vladimir Mazur
Dr Mazur holds a PhD in Applied Engineering and has been employed by Lynx since 1994. He regularly attends railroad conferences and is the author or co-author of about twenty-five technical papers dealing with railroad technology.
Aside from establishing his qualifications and experience in the field of engineering, Dr Mazur’s declaration goes no further than duplicating the evidence of Mr Kilian.
I note here that Mr Kilian and Dr Mazur are named as co-inventors by the application.
Evidence in answer from John G Wager
Dr Wager holds a PhD in Industrial Engineering and is currently a member of the Railway Technical Society of Australia.
Dr Wager states that as far as he is aware the accepted method of constructing iron ore railway wagons before the priority date was to form a rectangular container from sheet steel, and reinforce the side walls of the wagon by external vertical ribs spaced along the side walls in a manner similar to that shown in Figure 1 of the specification. He notes that these external ribs impose a measurable aerodynamic drag resistance when the wagons are travelling at designed speed.
Dr Wager also states that he has not experienced any difficulty in reading and understanding the specification from which it is clear that the claimed combination of features offers a number of material advantages over railway wagons in existence at the priority date. Further to this, Dr Wager says his overall impression of the prior art documents relied on by Bradken is that they “provide evidence of some individual aspects which have been included in the Lynx cumulative design, but do not show the complete nature of the Lynx design.” He expresses the opinion that exhibit DJF24, for example, does not disclose vertical side wall reinforcing members or a ridge extending inwardly from the side wall for a distance which is demonstrably greater than the thickness of the side wall material.
Evidence in answer from Anthony Peter Boland
Mr Boland is a mechanical engineer who has worked as a railway consulting specialist with BHP Engineering since 1994. He was previously employed with the State Rail Authority of New South Wales for almost forty years and performed various duties which at times related to the design of a wide range of railway cars, including bulk material transport containers.
Mr Boland states that before the priority date the method employed to reinforce the side walls of bulk material containers depended on the specific type of container involved. Box type containers were reinforced primarily with vertical reinforcing posts, but if needed a stiffening element was installed between the posts and along the side walls of the container to provide additional reinforcement. No protuberances were present on the interior walls of the container.
Mr Boland says he is familiar with many examples of box type containers having corrugated walls such as those shown in Mr Ferris’ exhibits DJF13 and DFF16. However, according to Mr Boland, these containers are not suitable for transporting bulk material as the corrugations restrict the flow of material during unloading which can lead to “hang up” of bulk material (ie. the retention of bulk material in the container after unloading).
Mr Boland then sets out his reasons for concluding that the claimed invention is directed to a novel combination of features which provides material advantages over prior art bulk material containers, and which has not simply resulted from a routine design exercise. In this regard he says that “the most remarkable feature of the claimed invention is that it took so long to be done.”
LYNX’S FURTHER EVIDENCE
The further evidence filed by Lynx consists of:
- A statutory declaration made by John Gilbert Wager on 5 May 2005 together with exhibit JGW-6 (in hard copy and electronic (CD) formats); and
- A statutory declaration made by Mark A Pullen on 6 May 2005.
Exhibit JGW-6 is a prior art analysis chart foreshadowed in Dr Wager’s evidence in answer which compares claims 1 to 31 of the present specification with the exhibits relied on by Mr Ferris and Mr Malouf. Mr Pullen’s declaration in essence provides submissions in support of the admissibility of the chart as further evidence.
EVIDENCE IN REPLY
The evidence in reply filed by Bradken consists of:
- A statutory declaration made by David James Ferris on 24 October 2005 (in reply to the Kilian declaration);
- A further statutory declaration made by David James Ferris on 24 October 2005 (in reply to the Mazur declaration);
- A statutory declaration made by David James Ferris on 22 November 2005 (in reply to the Boland declaration); and
- A further statutory declaration made by David James Ferris on 22 November 2005 (in reply to the Wager declaration).
In replying to the evidence of Mr Kilian and Dr Mazur, Mr Ferris contends their statement that “having a non-flat wall on the interior of the container was contrary to conventional teaching and design” at the priority date is plainly wrong in view of many of the photographs of railway wagons appearing throughout exhibit DJF16. Mr Ferris refers in particular to Figures 3.235 (page 501) and 3.209 (page 492) which he says show a wagon for transporting bulk material having a non-flat interior on the side walls of the wagon, as well as vertical side wall posts.
Mr Ferris also disputes numerous other statements made by Mr Kilian and Dr Mazur. He says the statement that “a skilled person would not think it obvious to design a container that looks and performs like the Lynx container” is not to the point since, on his understanding:
“… the main claims of the Specification (Claims 1 and 2) as written have nothing to do with how the “Lynx container” actually performs, and these claims just cover some of the actual physical features of a container for transporting bulk material (i.e. how it looks).” (original emphasis)
He therefore argues that claims 1 and 2, for example, do not specify the purpose of the internal ridge so as to distinguish the claimed invention from his exhibits DJF4 and DJF5, or specify how the container is unloaded (ie. whether it is a bottom-discharge container or a rotary unloading container which is emptied via the top) so as to distinguish the claimed invention from exhibit DJF8.
In an apparent reference to the evidence relied on by Lynx concerning the recognition attained by the Lynxrail wagon design during the Engineering Excellence Awards 2002 program, Mr Ferris states that even if it is assumed that the Lynxrail wagon is the subject of the preferred embodiments of the invention that have been described and illustrated by the present specification, “achieving a good design is not necessarily the same thing as inventing something new.” He contends in this respect that:
“… no individual feature of the wagon that is described in the specification and shown in the drawings has been “invented”. Appropriate features have been combined and applied as part of the described process of sound design, as they would have been by any competent and experienced designer(s). If a new container design was the aim, then the mere identification of a list of obviously desirable criteria can be considered to be part of the process of devising a good design, but does not necessarily amount to an invention.”
Mr Ferris is similarly critical of Mr Boland’s evidence in answer. He additionally makes the general comment that Mr Boland has seemingly referred “to the claimed invention as being one and the same thing as everything that is shown in the drawings and all that is described in the specification.” This comment has apparently arisen from the references frequently made by Mr Boland to “the Claimed Invention as described in the Lynx specification” and “the description of the Claimed Invention” in his evidence, and I note that Dr Wager has adopted the same terminology. Whatever the case may be, Mr Ferris has consequently argued that although the material advantages of the “Claimed Invention” over the prior art identified by Mr Boland may be attributable to features which have been described with reference to the specific forms of the invention shown in the drawings, these optional features do not constitute limitations of independent claims 1 and 2.
Mr Ferris continues this line of argument when responding to the evidence in answer provided by Dr Wager. As an example, Dr Wager is said to have asserted that the claimed invention “achieves a greater cross-sectional area of the wagon transverse to its length than wagons prior to 20 March 1998” and that “this will result in greater carrying capacity.” Mr Ferris’ response is that he cannot find these optional features of the invention in claim 1 or claim 2. Mr Ferris also comments that Dr Wager’s mistaken reliance on features culled from the body of the specification when interpreting the scope of claims 1 and 2 is further evidenced by his prior art analysis chart.
BRADKEN’S FURTHER EVIDENCE
The further evidence filed by Bradken consists of:
- Statutory declarations respectively made by Ngaire Ann Petit-Young on 30 September and 25 October 2005;
- A statutory declaration made by David James Ferris on 24 October 2005 together with exhibits DJF25 to DJF30 and exhibit DJF TT1;
- A statutory declaration made by Warren Williams on 24 October 2005.
Further evidence from David James Ferris
Mr Ferris introduces two additional exhibits (DJF25 and DJF26) which he says disclose a railway wagon having some similarities to the wagon disclosed by his earlier exhibit DJF6.
I note by way of explanation that the wagon in question is described by exhibit DJF25 as consisting of a number of articulated units joined together to form a composite car for transporting coal which is known as a “Trough Train”.
Mr Ferris then refers to a sketch (exhibit DJF TT1) prepared by him on the basis of his observations of the photographs in exhibit DJF25. Relevantly, the sketch includes a horizontal ridge (R) extending into the interior of the wagon which Mr Ferris says is arranged to provide structural stiffness to the sides of the wagon while allowing the free downward flow of bulk material during discharge from the bottom of the wagon.
Mr Ferris states that he has “been able to deduce by looking at the photographs” that the internal ridge has been integrally formed in the wagon side walls by bending the aluminium side wall sheets to form an indentation of desired shape, and that he would be extremely surprised if the side wall sheets are of a thickness greater than the visible depth of the internal ridge, otherwise the wagon would be prohibitively heavy and costly.
On this basis Mr Ferris asserts that exhibit DJF25 discloses all of the features of claim 1. He makes the same assertion in respect of claims 2, 3, 5, 8, 16, 17, 19, 20, 22 and 31, and maintains that the balance of the claims do not “represent anything new or remarkable”.
Mr Ferris goes on to explain that subsequent to his review of exhibits DJG25 and DJG26, he was provided with a number of internet website addresses (exhibits DJG27 and DJG28) and journal articles (exhibits DJG 29 and DJG30) which discuss the development of the Trough Train.
He says it became clear to him that exhibits DJF28, DJF29 and DJF30 relate to prototype Trough Train wagons built around April 1991 which did not have an internal ridge formed as part of the side walls, and draws attention to the fact that the centre page photograph of Mr Kilian’s exhibit KK-3 shows the interior detail of such a prototype wagon. A later batch of wagons developed in 1994 incorporated design changes including the use of aluminium instead of steel which Mr Ferris surmises is why the side walls were stiffened with an integrally formed ridge. He says the wagons shown in exhibit DJF27 are from this later batch and, although exhibit DJG27 was not published before the priority date, the features of construction it discloses are identical to those shown in exhibits DJF 25 and DJF26 and portrayed in exhibit DJF TT1.
Further evidence from Ngaire Ann Petit-Young and Warren Williams
Ms Petit-Young attests to the date on which exhibits DJF25, DJF29 and DJF30 became publicly available. Mr Williams does likewise for exhibit DJF26.
LYNX’S EVIDENCE IN RESPONSE
The evidence in response filed by Lynx to Bradken’s further evidence consists of:
- A statutory declaration made by Anthony Peter Boland on 14 February 2006 together with exhibits APB-5 and APB-6;
- A statutory declaration made by John Gilbert Wager on 17 February 2006 together with exhibit JGW-7; and
- Statutory declarations respectively made by John Gilbert Wager on 22 February and 2 March 2006. The purpose of the first of these declarations is to correct some “minor errors and inadvertent omissions” in Dr Wager’s earlier declaration filed as evidence in response.
Evidence in response from Anthony Peter Boland
Mr Boland expresses the view that there are a number of material differences between the Trough Train and the “apparatus described by the claims of the opposed application”, and discusses the nature of these differences with the assistance of the summary prior art table which comprises exhibit APB-6. He also contends that the information conveyed by exhibits DJG25 to DJG30 is insufficient to support the conclusions drawn by Mr Ferris with the result that the sketch prepared by him from these exhibits is purely speculative.
Evidence in response from John Gilbert Wager
Dr Wager states that he has failed to see the significance of Mr Ferris’ evidence concerning the Trough Train. In referring to his own summary prior art table (exhibit JGW-7), Dr Wager discusses a number of features of the invention as interpreted on his reading of “the complete Lynx Specification” which he considers are not found in exhibits DJF25 to DJF30. Dr Wager says, for example, that:
“Exhibits DJF 25-27 show ridges in side panels of wagons of the car depicted. None of the wagons comprising each of the composite wagons shown has two ends, and for each composite wagon, due to the provision for articulation, the ridges in the side walls are not structurally continuous between the end walls of the wagon. They cannot be considered to contribute to the overall longitudinal structural stiffness of the Trough Train as does the longitudinal ridge of the wagon of the Lynx design.”
Dr Wager then proceeds to respond to Mr Ferris’ dismissal of the claims he considers do not represent “anything new or remarkable”.
I will make further reference to the above body of evidence, as well as the helpful submissions made by the parties, where appropriate later in my decision.
REQUEST TO AMEND THE STATEMENT OF PROPOSED AMENDMENTS
The allowability of an amendment to the statement of grounds and particulars is governed by regulation 5.9 which relevantly provides:
“(1) Subject to subregulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
(a) if the Commissioner reasonably believes that an amendment of a statement referred to in regulation 5.4 corrects an error or omission by the opponent or by his or her agent – may amend the grounds of opposition set out in the statement; or
(b) if the Commissioner reasonably believes that an amendment of the grounds set out in a statement that is served and filed under regulation 5.4 results from an amendment of a patent request or complete specification – must amend those grounds; or
(c) must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4.(2) The Commissioner must not allow an amendment requested under subregulation (1), if:
(a) an application for dismissal of opposition is being considered, or
(b) an application for determination of opposition is being considered; or
(c) in the case of opposition under section 59 of the Act – a specification relating to the opposed application is being re-examined; or
(d) he or she does not reasonably believe that the applicant has been notified of the proposed amendment.(3) The Commissioner must give the parties an opportunity to make representations concerning the proposed amendment.”
The amendment requested by Bradken to the statement of grounds and particulars on 8 August 2006 relates only to the particulars and not to the grounds and, consequently, is not subject to regulation 5.9(1)(a) or (b). Specifically, the amendment seeks to introduce a new particular as follows:
“Reference 12D
The use in Australia since 1986 of various designs of waste material collection and haulage bins used by Dial A Dump Pty Ltd.
Details regarding the prior use of these bins are referred to in the Statutory Declaration of Ian Raymond Malouf dated 1 March 2004. Paragraph’s [sic] 1-6 of Mr Malouf’s declaration sets [sic] out background details regarding the design and development of the standard construction for the bin, and confirms that the design for the bin has been in use in Australia since 1986. Paragraph 7 and Annexure IRM2 of Mr Malouf’s declaration provide details of engineering drawings for the design of the bin. Further depictions of the bin are contained in Annexures IRM1 and IRM3. In addition to the pictorial examples of the bin which are annexed to Mr Malouf’s declaration, at paragraphs 8 and 10-17 of his declaration are described the features of the bin. Based on the contents of and annexures to Mr Malouf’s declaration, prior use is established of large haulage containers which include two side walls, two end walls and a base. The containers have the feature of at least one horizontal, V-shaped corrugation integrally formed in the side walls. The side and end walls have several vertical support bars which are spaced along these walls.
As discussed earlier, Mr Malouf’s evidence concerning the Dial A Dump waste bin he designed in 1986 forms part of the evidence in support. More relevantly, the particular sought to be introduced by amendment provides material facts to establish a prima facie case of prior use of this bin. The traditional notion of prior use is now encompassed by the term “act” in section 7(1) which set outs the kinds of information against which the novelty of an invention is tested. Want of novelty is a head of opposition pursued in the statement of grounds from the outset, with the result that the amendment requested to the statement of particulars falls under regulation 5.9(1)(c).
It is evident from the wording of regulation 5.9 that the power of the Commissioner to allow an amendment of particulars which relate to a stated ground of opposition is not discretionary, provided the requirements of regulation 5.9(2) are satisfied.
This is clearly the case here. There is no pending application for dismissal, an application for determination of the opposition is not being considered, there is no re-examination, and Lynx has been notified of the proposed amendment. I note for the sake of completeness that the parties were invited to make representations at the hearing with regard to the request to amend.
I therefore allow the amendment to the statement of grounds and particulars as requested by Bradken on 8 August 2006.
ONUS OF PROOF
As submitted by Mr McCormack, the onus of proof in these proceedings rests upon Bradken who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG vNew England Biolabs Inc 50 IPR 305 at 319). It is settled in law that the standard of that proof is the civil standard on the balance of probabilities (Dunlop Holding Ltd’s Application [1979] RPC 523 at 543).
EVIDENTIARY ISSUES
Each party has attempted to discredit the evidence led by the other party. Mr McCormack was particularly critical of the opinions expressed by Mr Ferris in his declaration filed as evidence in support as being wholly devoid of the facts and chain of reasoning necessary to sustain them. For his part Mr Burley argued that as the Kilian and Mazur declarations are in identical terms, they cannot represent independent recollections of events. Mr Burley also drew attention to the pro forma evidence of Dr Wager and Mr Boland which he says again undermines the objectivity of the evidence presented by Lynx.
These competing submissions have largely arisen from the nature of some of the evidence adduced by the parties in relation to the question of inventive step. The same evidentiary issues were considered by the full Federal Court in Minnesota Mining & Manufacturing Co v TycoElectronics Pty Ltd 56 IPR 248 at 259 where it was said:
“[50] Questions of obviousness and inventive step are ultimately for the court to determine, irrespective of the opinion expressed by any number of experts. Evidence by an expert as to whether a claimed invention was obvious or did not involve an inventive step will of necessity be essentially argumentative. Even if admissible, such evidence is likely to result in a waste of time by reason of the analysis of and cross-examination of the evidence that will be required. Such evidence is therefore a prime candidate for the application of s 135 of the Evidence Act, under which the court may refuse to admit evidence if its probative value is substantially outweighed by the danger that the evidence might be misleading or confusing or cause or result in an undue waste of time. Hence such evidence, even if it is strictly admissible, is unlikely to be helpful and it is preferable to exclude it.”
Nevertheless, it is important to remember that as an administrative decision-maker the Commissioner is not obliged to determine questions of fact in accordance with the rules of evidence applicable in a court proceeding. The Commissioner may instead act on any material which is logically probative of the issues being decided. As stated by Deane J in The Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666 at 689:
“These technical rules of evidence, however, form no part of natural justice. The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.”
In the present case I consider that as a matter of reason the evidence for both Lynx and Bradken has some probative value. As a consequence, I believe that the appropriate course is for me to have regard to all the evidence but weigh it accordingly.
ENTITLEMENT
The principal issue for determination where the entitlement of a person to the grant of a patent is in dispute is whether that person falls within any of the categories of persons to whom a patent may be granted that are specified by section 15.
In contrast, the particulars on which this ground of opposition is based merely state:
“Because the alleged invention defined by each of claims 1 to 31 is not novel and does not involve an inventive step for the reasons set out below, the nominated person is not entitled to a grant of a patent for the alleged invention defined by claims 1 to 31.”
On any view these particulars are totally unrelated to the question of whether Lynx is an eligible person under section 15, and nor has Bradken pressed the matter by way of evidence or submissions.
I therefore find that Bradken has failed to make out this ground of opposition.
MANNER OF MANUFACTURE
Although not argued at the hearing, Bradken has by its statement of grounds and particulars raised this ground for reasons framed both in terms of section 18(1) and section 18(1)(a). In short, Bradken asserts that on the basis of what was known, either as revealed on the face of the specification or by comparison with the prior art base in existence before the priority date, the invention as claimed in each of claims 1 to 31 merely resides in the new use of an old product.
Section 18(1) relevantly provides:
“Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step ...”The word “invention” is defined in schedule 1 to the Act as meaning “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.”
The majority view of the High Court in N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 was that the effect of the introductory words of section 18(1), namely, “… a patentable invention is an invention that …”, is to introduce a general threshold requirement of “newness” or “inventiveness” which, if not satisfied, will deny patentability to something which is merely a new use of an old product.
At 454 their Honours stated:
“In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of “an alleged invention” will, notwithstanding an assertion of “newness”, remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purpose of the Statute of Monopolies. That does not mean that the threshold requirement of “an alleged invention” corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, 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.”
The High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners Aust Pty Ltd 40 IPR 243 did not challenge the correctness of the majority view in Philips. The question of the existence of a threshold requirement under section 18(1), independent of the specific provisions of section 18(1)(b) as to novelty and inventive step, was again considered by the full Federal Court in Bristol-Myers Squibb Co v F H Faulding & Co Ltd 46 IPR 553. At 564 the court concluded:
“In our view, in the light of the authorities to which we have referred, 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 … then the threshold requirement of inventiveness is not met … If however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge of information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is … the only approach which does not, in practical terms, render s 18(1)(b)(ii) otiose. Of course, once that additional knowledge is taken into account, one is applying s 18(1)(b)(ii), not the opening words of s 18(1) …”
It is clear enough from the above authorities that if a claim is to be rejected because it is not in respect of an “invention” for the purposes of section 18(1), it must be for reasons other than want of novelty or inventiveness. The following passage from Dyno Nobel AsiaPacific Ltd v Orica Australia Pty Ltd 47 IPR 257 at 300 is also to the point:
“[156] In the present case (as occurred in Philips), issues arise under s 18(1)(b), and there is substantial evidence concerning those issues. It may be difficult to identify which parts of that evidence may also be used to decide the “invention” point with which I am presently concerned. The “surrounding scientific facts” referred to in Microcell* will presumably be part of, or at least implicit in, the prior art bases for the purposes of s 18(1)(b). If, however, one focuses on the correct question, the meaning of the specification, and considers only material relevant to that issue, one will not trespass upon the proper area of operation of s 18(1)(b).”
* Commissioner of Patents v Microcell Ltd 102 CLR 232
In my opinion, there is nothing on the face of the specification to suggest that the threshold requirement of inventiveness inherent in section 18(1) has not been met.
The specification discloses a conventional bulk material transport container with the aid of Figures 1 and 4a. The prior art container is said to include:
“two side walls 1, a base 2, and two end walls 3. The size of any such container, whether it be for transportation by road or by rail, has certain dimensional limitations. That is, neither the height, nor width, of the container can exceed pre-defined dimensions. These pre-defined dimensions are determined by both rail or road standards, and also, the practical limitations of loading and unloading facilities.
Accordingly, whilst it is presently desirable in the industry to increase payloads, the size of the actual containers cannot be increased without decreasing the strength of the containers. In this regard, it is noted that the walls of the containers do not extend to the maximum possible dimensions due to the structural requirements of the container. That is, the bulk product transported via these containers places extreme stresses on the walls of the containers, requiring a number of support or reinforcing members to strengthen the walls. This can conveniently take the form of a number of ribs 4, extending around the body of the container. The addition of the necessary number of ribs 4 to strengthen the walls 1, results in a much heavier container and in a resultant decrease in the aerodynamics of the container, having both fuel and cost implications on the profitability of the container. It is also noted that structural maintenance and repairs to such containers are both frequent and expensive and do not guarantee that the operational life of the container will be significantly increased.”
The specification next describes the advance made by the invention over the prior art with reference to Figures 2, 3 and 4b:
“The container of the preferred embodiment also includes two side walls 5, two end walls 7, and a base 6. However, the present invention also includes at least one internal ridge 8. The main element of this internal ridge 8, is a first portion 8a, which extends from the wall at an angle towards the interior of the container. A second portion 8b, can be adapted to complete the internal ridge 8, by rejoining the wall 5, to the end of the first portion 8a.”
After describing how the angle at which the first portion of the internal ridge extends from the side wall towards the interior of the container may be calculated, the specification states:
“The number and the placement of the internal ridges may be dependent upon the size of the container. As can be seen by a comparison of Figures 1 and 2, the addition of the internal ridge 8 reduces the number of strengthening ribs 4 required on a conventional container. This reduction in the number of ribs decreases the weight of the container, and also improves the aerodynamics of the container.”
The specification continues:
“By the addition of at least one internal ridge in the wall of the container, the present invention results in a container that is lighter than conventional containers as the side wall containing the internal ridge does not require as many structural reinforcements as conventional containers, since the internal ridge itself adds to the structural strength of the wall.”
However, the specification itself contains no suggestion whatsoever that in providing one or more internal ridges for this purpose, the invention is merely taking advantage of the state of knowledge of the utility of such a feature so as to amount to the kind of new use of an old product held in Philips not to be a proper subject matter for a patent. Accordingly, I find that the invention shown on the face of the specification satisfies the threshold requirement of section 18(1).
At 456-7 the majority in Philips said in relation to section 18(1)(a) that:
“the preferable conclusion is that the phrase “manner of manufacture within the meaning of section 6 of the Statute of Monopolies” in s 18(1)(a) should be understand as referring to a process which is a proper subject matter of letters patent according to traditional principle … it is to be assumed that it was the legislative intent that the phrase “manner of manufacture” in s 18(1)(a) should be construed in accordance with earlier judicial decisions about its content as used in the saving clause of s 6 of the Statute of Monopolies.”
In my view the invention is a manner of manufacture for the purposes of section 18(1)(a). The invention clearly does not fall within the classification of the fine rather than the useful arts, and nor is it directed to a “mere collocation” as that term is understood according to the traditional principles of patent law. Moreover, the invention as related by the specification resides in the physical characteristics of a certain article (namely, a bulk transport container), and thus I fail to see how the invention can possibly be regarded as a “mere working direction for the working of known apparatus” as additionally argued by Bradken.
In light of the foregoing I dismiss this ground of opposition.
CLARITY
Bradken has asserted that the specification does not comply with section 40(3) since a number of terms used in the claims cannot be ascribed a clear meaning.
Resolution of this ground of opposition raises questions as to the construction of the claims. The general principles of construction were summarised by Hely J in Flexible Steel Lacing Company v Beltreco Ltd 49 IPR 331 at 347-350 where his Honour observed that in determining whether the terms of the claims are clear and unambiguous, the specification must be read as a whole. This was confirmed by the High Court in Kimberley-Clark Australia Pty Ltd vArico Trading International Pty Ltd 177 ALR 460 at 466:
“Where the question concerns infringement of a claim or the sufficiency of a claim to “define” the invention, it has been held in this court … that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification” (references omitted)
100. His Honour also noted that the specification is addressed to the non-inventive person skilled in the relevant art. Accordingly, as said in Populin v HB Nominees Pty Ltd 41 ALR 471 at 476-477, the specification must not be read in the abstract but should be construed by adopting a common sense approach to what the words used convey in the context of the then-existing published knowledge. The facts in Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 are illustrative of this situation, and the remarks of Lord Diplock (at 242-243) as to a “purposive” rather than a “purely literal” construction are to be understood in that light.
101. It was further noted by his Honour that, in accordance with authority, an invention may be described in a way which involves matters of degree. The lack of a precise definition in a claim is not fatal to its validity, so long as it provides a workable standard suited to the intended use
(Minnesota Mining &Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253 at 274). The consideration is whether, on any reasonable view, the claim has meaning (Elconnex Pty Ltd v Gerard Industries Pty Ltd 22 IPR 551 at 575 et seq, and Nesbit Evans Group Australia Pty Ltd v Impro Ltd 39 IPR 56 at 95).
102. I now turn to the terms of the claims which Bradken has alleged are unclear.
“integrally formed within” – claims 1 and 2
103. Claims 1 and 2 each speak of the inclusion in at least one of the side walls of the container of an internal ridge that is “integrally formed within said at least one side wall”.
104. The proper construction of this expression is at the heart of the dispute between the parties. It was common ground that on the ordinary meaning of the term “integral”, the internal ridge forms part of the container side wall. However, Mr Burley drew attention to the additional requirement in claims 1 and 2 that the internal ridge “projects from said side wall” which he submitted is equally suggestive of the notion that the internal ridge is distinct from the side wall. He said the resulting element of doubt was incapable of resolution as confirmed by the conflicting evidence from Lynx’s own experts on this point.
105. Mr Ferris developed the point in his evidence in reply as follows:
“Kilian (the inventor) in his Declaration dated 3 March 2005 stated that the claim term integrally formed means that the ridge is:
·part of the side wall and therefore part of the container; and
·not an optional or added extra strengthening member.
I note that this view is largely in accordance with the interpretation that I made of this feature in Paragraph 49 of my Statutory Declaration of 4 May 2004.
Also, Kilian clarified how the ridge can be integrally formed:
·the ridge can be achieved by bending or pressing the plate into the required side wall silhouette; or
·the ridge can be fabricated, for example by welding individual plates to construct the side wall to achieve the required silhouette.
... In his Paragraph 56, Wager states that:
“integrally formed would mean that the ridge shape … could be formed within the metal sheet or plate comprising the overall shape of the wall by either hot or cold forming or deformation processes … while the remaining greater part of the wall retained its required overall profile and shape.”
This part is clear, and is not in contradiction with Kilian. However, Wager then goes on to say [my emphasis added]:
a)Should the ridge be achieved by attaching internally to the wall a separate portion of sheet or plate metal, shaped by hot or cold deformation processes or by welding into the desired shape of the ridge, by welding around its periphery, leaving the outer profile of the wall completely continuous in the outer plane or shape of its profile, I would say that this wall, being welded assembly, then had an integrally formed internal ridge.
b)Should such a ridge-shaped portion be attached internally to the wall, leaving the outer profile of the wall completely continuous in the outer plane or shape of its profile, by the use of rivets or bolts, I would not call that internal ridge integrally formed.
… I cannot see that Wager can think that an added, separate member that is formed into the shape of a ridge and then welded onto the side wall can be “integrally formed”, and is somehow distinguished from the situation where the same ridge is riveted or bolted onto the same side wall and is thus not “integrally formed”. According to the inventor Kilian, any type of optional or added strengthening member is not an integrally formed ridge. I believe that this would exclude both of the versions proposed in Paragraph 56 (a) and (b) of Wager.”
106. I am not convinced that the disagreement between the experts as to the meaning of the terms in question of itself necessarily leads to the conclusion that no certain construction can be given to claims 1 and 2. My reasons for this are two-fold. First, a claim is not bad for uncertainty “merely because it is capable of more than one construction, even though it be difficult to decide which is the right one” (Blanco White, Patents for Inventions (5th Ed) at 4-701). Second, and as stated by Finkelstein J in Root Quality Pty Ltd v Root Control Technologies Pty Ltd 49 IPR 225 at 237:
“The proper construction of the specification is a matter of law. It is, however, a task that must be undertaken through the eyes of the person to whom the specification is directed … who may give expert evidence to inform the court what is the generally accepted meaning of technical terms and also to explain how things actually work.
There will be cases, however, where expert evidence is not admissible on the question of construction. Sometimes the text of the specification will be couched in language with which all lawyers are familiar, containing no technical or trade terms calling for explanation. In that event the court of construction can determine for itself, unassisted by experts, the relevant meaning, as it does with any other instrument.”
107. I consider that to be the case here. There is nothing in the expert evidence to suggest that “integral” is a term of art, or that it has been used in some special sense, so as to give it a meaning it would not otherwise bear. In these circumstances, the term must be construed according to its ordinary meaning in the context in which it is used.
108. The term “integral” is defined by the Macquarie Dictionary (3rd Ed) as referring to something “made up of parts which together constitute a whole”. Thus, on one possible view, the internal ridge is integral with the container side wall in the sense that it constitutes an intrinsic portion or element of the side wall, as distinct from an adjunct or appendage thereto. As indicated by Mr Kilian, this meaning would apply where the integral ridge was physically formed with the side wall by folding or otherwise shaping the latter. However, as a matter of ordinary English, the term “integral” also includes the possibility that the internal ridge is formed separately from, and subsequently attached (for example by welding), to the side wall. On this alternate view, the side wall and the internal ridge may still fairly be said to “constitute a whole” in a structural context.
109. It therefore follows that the language of claims 1 and 2 is sufficiently doubtful to allow resort to the body of the specification for clarification (Flexible v Beltreco at [81], and see Freeman v TJand FL Pohlner Pty Ltd 30 IPR 377 at 383-4).
110. In my opinion, the context in which the expression “integrally formed” appears in the body of the specification dictates that the term “integral” is to be treated as conveying the notion that the side wall and the internal ridge are manufactured as one item.
111. The specification teaches that as a result of inherent design problems, it is necessary to strengthen conventional bulk transport containers by adding a number of reinforcing members (shown as ribs 4 in Figure 1) to the exterior of the container. The addition of such reinforcing members has proven detrimental to container weight and cost. These drawbacks are said to be overcome by the invention since the internal ridge acts as an “in-built longitudinal structural stiffener” and thereby reduces the number of reinforcing members required. This strongly implies that the internal ridge is not something that is added to the container side wall in like fashion to the conventional reinforcing members, but instead forms an intrinsic part of it.
112. The description of the preferred embodiments of the invention confirms this to be so. Here the internal ridge is specified as comprising a first portion which extends from the sidewall, and a second portion which extends from the free end of the first portion to rejoin the side wall. The internal ridge may further include a third portion extending between the first and second portions. In either case, it is apparent that the body of the specification explicitly contemplates the formation of a continuous structure between the side wall and the internal ridge.
113. This construction is entirely consistent with the requirement in claims 1 and 2 for the internal ridge to “project from” the side wall. The Macquarie Dictionary defines “ridge” as including “an elongated wedge”. In turn, “wedge” is defined as “a device consisting of a piece of hard material with two principal faces meeting in a sharply acute angle”. It is therefore self-evident that although integrated with the container side wall in the sense discussed above, the faces (or, in the language of the body of the specification, the first and second portions) of the internal ridge, being angled, would extend away from the general plane of the side wall.
114. Accordingly, I find that there is no lack of clarity in claims 1 and 2 in respect of the expression “integrally formed within said at least one side wall”. I should add that I am well aware of the need to uphold my interpretation of this expression when considering the grounds of novelty and inventive step.
115. Bradken has criticised the clarity of other terms appearing in the claims. However, as before, there is no suggestion that the terms in issue have been used other than in their ordinary meanings and, as a consequence, it is again not appropriate to canvass the various interpretations put forward in the expert evidence.
“aligned along” – claim 4
116. Claim 4 speaks of the inclusion of additional reinforcement which is “aligned along” the internal ridge.
117. The term “align” is defined by the Macquarie Dictionary as “to adjust to a line; lay out or regulate by line; form in line”. It would be fanciful in the context of the specification to suggest that the requirement that the additional reinforcement be aligned along the internal ridge contemplates that the additional reinforcement and the internal ridge are laid out in a line. The only sensible construction that can be applied having regard to the functional considerations described (see in particular the drawing labelled “Section A.A”), and the fact that claim 4 uses the expression “aligned along” rather than “aligned with”, is that the additional reinforcement extends alongside the internal ridge.
“the interior” – claims 6 and 7
118. Claims 6 and 7 require the internal ridge to include a first wall portion which is angled from the side wall towards the interior of the container.
119. Although having no antecedent, it is evident as a matter of ordinary English that “the interior” refers to the space bound by the walls and base of the container which have been expressly defined in claims 1 and 2.
“a first wall portion angled from said wall” – claims 6 and 7
120. I briefly referred to this expression when considering the clarity of “the interior”. Bradken has questioned whether the first wall portion is part of the “said wall” and, if so, how can it be angled from itself?
121. I find this criticism curious since it is immediately clear upon a plain reading of claims 6 and 7 as a whole that the first wall portion comprises an element of the internal ridge, and that the reference to “said wall” is a reference to the container side wall with which the ridge is integrated.
122. For the same reasons I dismiss Bradken’s criticism of the expressions “said first wall portion extends from said side wall” in claims 10 to 13, “said third wall portion is parallel to said side wall” in claim 20, and “said third wall portion is angled relative to said side wall” in claim 21.
“the direction of flow” – claim 8
123. Claim 8 requires that the angle of the first wall portion of the internal ridge is in “the direction of flow” during unloading of the material from the container.
124. Bradken contends that, without an antecedent, it is unclear what the expression “the direction of flow” refers to. I do not agree. What the specification clearly contemplates is that the first wall portion extends at an angle from the side wall in the direction in which bulk material flows when unloading the container. This is to ensure that the flow of bulk material is not obstructed. Thus, in the case of a bottom-discharge container, the first wall portion is sloped in a direction toward the base of the container.
claim 9
125. Claim 9 requires the internal ridge to include first and second wall portions. The first wall portion is defined as being “deflected inwardly a progressively increased degree” relative to the intersection of the side wall and the base of the container, while the second wall portion is defined as “extending from said first wall portion and being deflected outwardly a progressively decreased degree” relative to the same reference point.
126. Although the construction of these expressions has been a matter of some initial difficulty, they are understandable in the context of the specification as meaning that the first wall portion slopes inwardly of the side wall and that the second wall portion extends from the first wall portion so as to slope outwardly of the interior of the container. As explained by the specification:
“… as we move along the first portion 8a from the side wall 5, the angle between the side wall 5 and the position on the first portion 8a relative to the intersection of the side wall 5 and base 6 progressively increases. Similarly, as we return along the second portion 8b, the angle relative to the intersection between the side wall 5 and base 6 progressively decreases.”
claim 23
127. Claim 23 speaks of the inclusion of a partial ridge along the top or rim of the side wall formed by a fourth wall portion which is defined as being “equivalent to said first wall portion”.
128. Bradken asserts that claim 23 is manifestly unclear for the following reasons:
“The “partial ridge along the top or rim” of the side wall is not defined or identified. Nor is the “fourth wall portion”. Those words have no relevant antecedents in the specification. The partial ridge could be any configuration. It is unclear what the fourth wall portion is to be. It is a matter of guesswork as to how the “fourth wall portion” should be “equivalent” to the first wall portion.”
129. I consider this criticism to be an example of the meticulous verbal analysis repudiated in Catnic. Any ambiguity exhibited by the term “equivalent” is readily resolved by recourse to the body of the specification which indicates that the partial ridge is “formed by a first portion which extends at an angle towards the interior of the container”, but “does not include the second portion of the internal ridge”. Clearly enough, what is contemplated is a partial ridge formed by a wall portion that is the counterpart of the first wall portion of the internal ridge.
“integrally formed within” – claim 26
130. Claim 26 speaks of a strengthening member which forms the rim of the container and is “integrally formed within” the container sidewall. For the reasons discussed in relation to claims 1 and 2, I do not consider this expression to be ambiguous.
In light of the foregoing I dismiss this ground of opposition.
FAIR BASIS
131. Bradken has submitted that the specification further does not comply with section 40(3) since claims 1 and 2 are not fairly based on the matter described in the specification in respect of the following:
a)there is no disclosure of the relationship defined in claims 1 and 2 between the distance the internal ridge projects from the container side wall and the thickness of the side wall; and
b)there is also no disclosure of the situation embraced by claim 1 where the internal ridge extends over the entire length of the container.
132. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, the High Court said that the words “fairly based” in section 40(3) refer to a relationship between what is claimed in the claims and what is described in the body of the specification. The court emphasised that in assessing whether the invention claimed is fairly based, it is necessary to take into account the construction of the specification as a whole. As stated by their Honours at [99]:
“… the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
133. The High Court affirmed the formulation of the question of whether a claim is fairly based as stated by Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd 180 CLR 236 at 240. Thus, the question is whether the claim, as expressed, travels beyond the matter disclosed in the specification.
134. The need to look to the construction of the specification as a whole was also stressed by Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd 81 ALR 79 at 95:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.
135. Thus the words “a real and reasonably clear disclosure”, when used in connection with section 40(3), do not limit disclosures to preferred embodiments.
136. Returning now to Bradken’s submissions, the specification provides a general description of what the invention is said to consist of in the following terms:
“With the above object in mind the present invention provides a container for transporting bulk material including two side walls, two end walls and a base, wherein at least one said side wall includes at least one ridge running along said at least side wall between said end walls, and wherein said ridge is integrally formed within said at least one side wall and the distance from which said ridge projects from said side wall is greater than the thickness of said side wall.”
137. The relationship between “the distance from which said ridge projects from said side wall” and “the thickness of said side wall” set forth in this statement (commonly called a “consistory clause”) corresponds to the language of claims 1 and 2. As a matter of construction, it is clear that the reference to “the distance from which said ridge projects from said side wall” refers to the depth of the internal ridge.
180. Accordingly, I am unable to find on the evidence before me that the public use of the Lynxrail prototype wagons disclosed all the essential features of the claimed invention.
181. However, this does not quite bring the matter to an end given the concession surprisingly made by Mr McCormack during the hearing that the Lynxrail wagon fell within “one of the embodiments” described in the body of the specification. Mr McCormack did not explain what he meant by this statement, and nor was an explanation pursued by Mr Burley. Thus Mr McCormack’s concession is open to conjecture which falls well short of the standard of proof necessary to establish anticipation.
The Dial A Dump waste bin
182. Mr Malouf has explained that the Dial A Dump waste bins are supplied on-site to customers for the collection and subsequent removal of waste materials. It is therefore immediately apparent that these bins are capable of transporting bulk material in common with the claimed invention.
183. Mr Malouf states that Exhibit IRM2 is a copy of engineering plans of a Dial A Dump waste bin that has been in use since 1986. He draws particular attention to Section 1 of the engineering plans which he says shows that the side walls of the waste bin are provided with at least one integrally formed V-shaped corrugation which extends into the interior of the bin. Each corrugation is symmetrical in shape. Mr Malouf does not at any stage of his evidence refer to an internal ridge, but in my view the terms “corrugation” and “ridge” can as a matter of ordinary construction be regarded as synonymous for present purposes. Mr Malouf submits that the presence of integrally formed corrugations is confirmed by the series of colour photographs comprising exhibit IRM3. I find this evidence especially compelling. The depth of each corrugation is said by Mr Malouf to be of the order of 25-30 millimetres, as compared to a side wall thickness of approximately 4-5 millimetres.
184. None of Mr Malouf’s evidence has been seriously challenged by Lynx. Mr Killian has simply asserted that the Dial A Dump waste bin cannot be compared to the Lynx container since:
- The waste bin is clearly intended for neither bottom discharge nor rotary discharge;
- The waste bin does not have the required specifications to function as a bulk material container to be used in a railroad environment;
- One end of the waste bin is a door through which the bulk material can be emptied by lifting up the opposite end wall so that the material slides out the door; and
- When the material flows out the waste bin, the flow of material is in the same direction as the reinforcing corrugations.
185. Although an accurate summary of the functional characteristics of the Dial A Dump waste bin as related by Mr Malouf, the points noted by Mr Killian are unconvincing since they are not reflective of limitations found in at least claims 1 and 2.
186. I therefore find that the public use of the Dial A Dump waste bin has disclosed all the essential features of claim 1, as well as claims 6, 9, 14 and 30 (when each appended to claim 1). These claims are, as a consequence, not novel.
187. Mr Malouf has stated that each corrugation extends along the full length of the side walls, and thus claim 2 is not anticipated by prior use of the Dial A Dump waste bin. This is also the case for the balance of the claims.
Prior publication
188. I now deal with the prior art documents on which Bradken has placed reliance as anticipating the claimed invention.
Canadian patent specification 2201041 (exhibit DJF24)
189. This exhibit relates to a rail hopper car for transporting granular material. The car has two side walls, two end walls and a base. Each side wall comprises a flat sheet having a plurality of longitudinally extending strengthening ridges constituted by ribs 20. The ribs are integrally formed with the flat sheet by cold working so as to include a flat rib face which is offset from the general plane of the flat sheet towards the interior of the hopper car. In contrast to the claimed invention, the offset of the ribs (ie. their depth) is less than the thickness of the flat sheet.
190. This exhibit consequently does not disclose all the essential features of the claimed invention.
United States patent specification 5154302 (exhibit DJF13)
191. This exhibit similarly fails to disclose all the essential features of the claimed invention. Although I think that the corrugations or ribs formed in the side wall panels can be properly equated with the claimed internal ridge, the information disclosed by exhibit DJF13 (including the drawings) is insufficient to establish to the necessary degree of certainty that the depth of the corrugations or ribs is greater than the thickness of the panels.
1946 Car Builder’s Cyclopedia of American Practice, 17th edition, Association of American Railroads (AAR) – Mechanical Division, Simmons-Boardman Publishing Corp, NY, USA (exhibit DJF16)
192. Bradken rely on the photographic copies respectively comprising Figures 2,654 (page 285) and 3,235 (page 501), and the technical drawings comprising Figure 3,209 (page 492) of this exhibit. The second figure is cross-referenced to the third figure. Each of these figures relates to a railway container for transporting bulk material, but none are accompanied by a description of the container they depict.
193. I am unable to discern an internal ridge from the first of these figures, let alone a ridge having a depth greater than the thickness of the wagon side wall. The container is shown by the second figure to include side wall panels located between a plurality of vertical ribs (or what Mr Killian, for example, has referred to as “posts”) spaced along the length of the container. The panels include portions protruding outwardly of the container and formed by a large flat plate portion extending between a pair of smaller angled plate portions which in turn respectively extend away from and towards the container. It seems clear enough from Sections A-A and F-F of the third figure that these components are integrally formed. The same figure also shows that the depth of the side wall panel protrusions is greater than the side wall panel thickness.
194. However, unlike the ribs disclosed in Canadian patent specification 2201041, I do not consider that the side wall panel protrusions of exhibit DJF16 can be properly said to constitute a ridge. As stated by Dr Wager in his evidence in answer:
“… I understand an internal ridge to be a portion of the wall projecting from the overall general shape profile of the wall, leaving the overall general shape profile of the wall along a line, which is typically straight, and then projecting from the overall general shape profile of the wall at an angle towards the inner portion of the container and then returning to meet an extrapolation of the overall general shape profile of the wall at some distance from its point of departure, at a line typically parallel to the line of commencement. The distance from the line of departure to the line of return I term the width of the ridge. The term ridge implies that the width so described is relatively small in comparison with the total extent of the wall along its overall general shape profile.”
195. In my opinion, Dr Wager’s description of what he considers to be a “ridge” is entirely consistent with the ordinary meaning of that term. The side wall panel protrusions disclosed in exhibit DJF16 depart from this description only in that they project away from the interior of the container, and include a third plate portion intermediate the two angled plate portions. Nevertheless, the protrusions could also be aptly categorised as a “ridge” if the “width” of the protrusions was relatively small in comparison with the width (in effect, the height) of the side wall panels. However, the width of the flat plate portion disclosed in exhibit DJF16 extends for almost the full width of the side wall panel, with the result that the side wall panel protrusions do not meet the description of a “ridge” as a matter of ordinary language.
196. This exhibit therefore does not disclose all the essential features of the claimed invention.
“New freight cars which are run in by Russian plants”, Mironov, NI et al, 1998, Tyazheloe
Mashinostroenie, January , No 1, pp15-18 (exhibit DJF10)197. The text of this exhibit is of no assistance since it is in the Russian language. The railway container depicted in the middle figure on the third page (presumably page 17) of exhibit DJF10 incorporates what appears to be an integral side wall structure comprising a plurality of vertical posts spaced along the length of the side wall, and a plurality of ribs or ridges extending between each of the vertical ribs. However, there is no disclosure whatsoever of ridges having a depth greater than the thickness of the side wall.
198. This exhibit therefore does not disclose all the essential features of the claimed invention.
“The Fyansford quarry railway”, Pearce, WA, 1974, Industrial Railway Record, No 56, October, Industrial Railway Society (IRS) (exhibit DJF3)
199. This exhibit relates to limestone hoppers, but again is limited in its disclosure to copies of photographs without any accompanying description. As confirmed by Mr Ferris’ evidence in support, the side wall of the hopper is similar in structure to that disclosed in exhibit DJF16 which I have already decided does not constitute a ridge. The feature which to my eye comes closest to resembling a ridge has been dismissed by Mr Ferris as a bar in the form of an angled section or channel which he believes “is probably welded or otherwise externally formed onto the third plate portion and the vertical reinforcing posts.” Thus, even if it were assumed that the bar can be equated with a ridge, it is not “integrally formed” with the hopper side wall in the sense I have previously discussed.
200. This exhibit therefore does not disclose all the essential features of the claimed invention.
“Use of aluminium on the railroad industry”, Weiss, JC, Sauter, KL, Roup, DD, 1994, Proceedings of the International Mechanical Engineering Congress and Exposition Nov 6-11, Chicago, IL, USA, American Society of Mechanical Engineers, Rail Transportation Division (Publication) RTD, New York, NY, USA (exhibit DJF6)
201. As its title suggests, this exhibit refers to the use of aluminium for the construction of railway wagons. Figure 6 shows a prototype five-unit “trainset” which employs the Trough Train concept. As explained earlier, this concept employs a number of articulated units which together form a composite wagon. According to Mr Ferris, an internal ridge “appears” to be integrally formed in each unit side wall, “possibly” by bending of a single flat sheet by hot-pressing, stamping or roll forming. He further states that he would be “extremely surprised” if the depth of the ridge was less than the side wall thickness, otherwise the trainset would be prohibitively heavy.
202. There is no accompanying description to substantiate these assertions, and nor is a ridge of any form sufficiently visible from Figure 6.
203. This exhibit therefore does not disclose all the essential features of the claimed invention. In fact, and to use the metaphorical language of General Tire, exhibit DJF6 does not even provide a signpost upon the road to the claimed invention.
“Burlington Northen’s trough train”, “Railnews” magazine, Issue 399, February 1997, Pentrex Inc, Pasadena, CA, USA (exhibit DJF25)
204. This exhibit discloses a thirteen-unit composite wagon which was developed from the prototype Trough Train disclosed in exhibit DJF6.
205. Mr Ferris refers to exhibit DJF TT1 which he says represents the cross-section of the Trough Train as deduced from his reading of the photographs contained in exhibit DJF25. Based on his sketch, Mr Ferris asserts that the side wall includes an integrally formed horizontal ridge (R) which extends into the interior of the Trough Train and is delineated by upper and lower side wall portions attached to one another by rivets. Mr Ferris points out that the depth of the ridge is visible from the photograph appearing on page 37 of exhibit DJF25. He then argues that the Trough Train would be prohibitively heavy and costly if the thickness of the side wall was greater than this depth.
206. Mr Ferris’ evidence as to the information that can be derived from exhibit DJF25 has been the subject of considerable debate. I should note here that the text of this exhibit does not provide a detailed explanation of the accompanying photographs, and thus the competing submissions of the parties are primarily based on their respective perceptions of what the photographs themselves disclose.
207. Mr Boland contends that there are a number of material differences between the claimed invention and the Trough Train. Put briefly, these alleged differences are as follows:
- The Trough Train comprises a thirteen-unit wagon and yet, instead of having twenty-six separate end walls (two for each unit as in the claimed invention), it only has two;
- Exhibit DJF25 does not convey sufficient information regarding the function or role of the features of the Trough Train;
- It is not clear in the photographs whether the ridge is “sloping as required by the patent”
- The “ridges” which appear on the side walls of the Trough Train do not extend fully from one end of each unit to the other as specified in claim 1; and
- There are two separate “ridges” on each unit side wall, with the separation being evident “from the short vertically positioned segment which is centrally located on the external side wall of each of the “cars””. These segments are not equivalent to the vertical reinforcing members defined by claim 2.
208. Dr Wager has drawn attention to the same differences. Interestingly, neither Mr Boland nor Dr Wager has disputed the alleged disclosure by exhibit DJF25 of an internal ridge having a depth which is greater than the side wall thickness.
209. The first three points made by Mr Boland can be easily disposed of. It seems self-evident from the photographs of exhibit DJF25 that the thirteen units which make up the Trough Train can as a whole be considered to comprise a single container or wagon having two end walls, while the invention defined by at least claims 1 and 2 is not limited by the purpose or shape of the internal ridge.
210. The remaining points warrant closer analysis. Claim 1 speaks of “at least one internal ridge running along said at least one side wall between said end walls”, thereby allowing for the provision of more than one ridge. However, when read in its entirety, it is clear that what the specification envisages in the case where claim1 is construed to define multiple ridges is that each ridge “runs” end-to-end of the container and not, as taught by exhibit DJF25, in sequence from one ridge to the next. Alternatively, and in accordance with claim 2, each ridge “runs” between an adjacent pair of vertical reinforcing members. In contrast, there is simply nothing in exhibit DJF25 to suggest that the short vertical segments identified by Mr Boland serve as reinforcing members.
211. Mr Ferris has also placed some reliance on exhibits DJF26 to DJF30. These exhibits all relate to the Trough Train, but in my opinion do not go beyond the disclosure of exhibit DJF25.
212. In light of the foregoing, I find that exhibits DJF25 to DJF25 do not disclose all the essential features of the claimed invention.
Summary
213. I have found that none of the prior art documents relied on by Bradken disclose all the essential features of the claimed invention. It therefore follows that these documents do not deprive the claimed invention of novelty.
214. However, I have found that claim 1, and claims 6, 9, 14 and 30 (when each appended to claim 1), lack novelty by virtue of the prior use of the Dial A Dump waste bin.
INVENTIVE STEP
215. Broadly speaking, under section 7(2) an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the relevant art.
216. Inventive step may be assessed having regard to the reformulated “Cripps question” set out in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 at [53]:
“Would the notional research group at the relevant date in all the circumstances … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce the [desired result]?”
217. While inventiveness requires more than novelty, even a “scintilla of inventiveness” is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273 at 293-4). Moreover, where, as in the present case, the question of inventiveness arises in respect of an invention involving a combination of features, it is the inventiveness of the combination as a whole that must be examined: the “inventiveness of particular integers is irrelevant to the inventiveness of a combination of them” (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [78]).
The person skilled in the relevant art
218. The question of inventiveness is to be determined through the eyes of the person skilled in the relevant art.
219. Lord Diplock in Catnic observed at 242 that the skilled person in the art is “likely to have a practical interest in the subject matter of [the] invention”. The authorities also recognise that while the skilled person against whose efforts the claimed invention is to be tested may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (Elconnex at 178, and Minnesota at 293).
220. The identity of the person skilled in the relevant art is determined in the light of the problem the invention is intended to solve, and not in the light of the claimed solution (Allsop Inc v Bintang Ltd 15 IPR 686 at 701-2). The invention in the present case is directed to overcoming the design inefficiencies present in existing bulk transport containers, and thus it seems clear enough that the person skilled in the relevant art is a person having experience in the design of containers for bulk product transportation.
221. I consider that Mr Williams and Mr Ferris for Bradken, and Mr Kilian for Lynx, can be properly regarded as the person skilled in the relevant art. Although not possessing the same level of practical expertise, I am satisfied that Mr Boland and Dr Wager are sufficiently qualified to provide evidence in this proceeding. Dr Mazur is named by the application as co-inventor, but his evidence as to inventiveness is unhelpful since it merely repeats that of Mr Kilian
Common general knowledge
222. Common general knowledge consists of the background knowledge and experience that is available to all in the relevant art. However, as stated by the full Federal Court in Aktiebolaget Hassle v Alphapharm Pty Ltd 51 IPR 375 at 391:
“That is not to say that the whole of the content of “common general knowledge” need be within the conscious awareness of the hypothetical non-inventive skilled worker. For example, there may be publications of technical and detailed information that are habitually consulted by the hypothetical skilled worker. Notwithstanding that the hypothetical skilled worker would not have the whole of the contents of such reference material in his or her mind, such information should be regarded as part of common general knowledge.”
223. The common general knowledge that is relevant is that existing in Australia. However, there is much in the evidence which suggests that the common general knowledge in Australia is the same as that in the United States. Mr Ferris has contended that “Australia has largely adopted US technology as appropriate for this country, and AAT [Association of American Railroads] design standards are highly applicable and almost universally used in Australian freight railway applications”. This evidence has not been challenged by Mr Kilian who himself states that iron ore wagons in use in Australia have since the late 1960s been based on an American design. Mr Boland has also referred to iron ore wagons which were “American based”.
224. Further to this, Mr Ferris and Mr Williams have stated that the various editions (dating from 1919) of the Car Builders Cyclopedia of American Practice (collectively, the Car Builders Cyclopedia) are a leading source of information on the subject of railway wagon design. In the absence of any suggestion to the contrary, I accept that this material was part of the common general knowledge. There is, however, no evidence from which I could infer that the textbook comprising exhibit DJF20 had assimilated into common general knowledge as asserted in Bradken’s written submissions.
225. The state of the common general knowledge is a question of fact which must be determined on the basis of expert evidence.
226. There is no dispute that bulk material transport containers having two side walls, two end walls and a base had entered the common general knowledge of those engaged in the relevant art at the priority date. The declarants for Lynx have only provided limited evidence directly relevant to the question of container reinforcement. The most illuminating evidence comes from Mr Kilian:
“As at 30 March 1998 the accepted method to construct or reinforce side walls of bulk material containers was to construct flat side walls i.e., walls that had a flat interior surface that were reinforced by either vertical side posts or horizontal stiffeners attached to the exterior of the container, or both. These side posts and stiffeners were attached to the exterior of the container so that the interior of the side walls remained flat to enable smooth material flow and clear discharge of material during unloading. It was generally accepted that any physical protrusions on the interior of the side walls would obstruct the flow of bulk material, thus making unloading difficult … Occasionally, bulk material containers were reinforced by vertical side posts attached to the interior of the container. These side posts ran in the same direction as the flow of material and were not considered to obstruct the flow of material.”
227. I note that Mr Kilian’s account bears many similarities to the prior art container which the specification has described with reference to Figures 1 and 4a.
228. Mr Ferris adds to this body of knowledge by pointing out that as verified by the 17th and 19th editions of the Car Builders Cyclopedia (exhibits DJF16 and DJF 17), it has been common practice in the art for many years to increase the strength and stiffness of railway wagons by providing horizontal ribs or corrugations at either or both the side walls and end walls of the wagon. Examples of railway wagons having corrugated end walls and side walls are (it is said) shown on pages 218-9, 501, 1262 and 1296 of exhibit DJF16, with the side walls being stiffened with vertical ribs spaced along the length of the wagon. In some wagons the horizontal ribs or corrugations are located between the vertical ribs which Dr Wager has said is an arrangement typically employed in “box type” containers. Mr Ferris also underlines the use of ridged or corrugated floors in passenger railway wagons as shown, for example, on pages 778 and 762 of exhibit DJF16. According to Mr Ferris, any skilled wagon designer would recognise that the ribs could be attached to the wagon walls by welding, bolting, riveting or other known fastening techniques, and that the corrugations could be formed by hot pressing, roll forming or stamping metal sheets. Dr Wager confirms that the skilled person would have knowledge of each of these processes.
229. Mr Ferris says the Cars Builders Cyclopedia additionally establishes that it was known to form an inwardly facing lip at the uppermost region of the wagon side walls. Mr Kilian agrees that this lip was commonly used “for the purpose of strengthening the top portion of the wagon so that the side walls will not deform during operation”.
230. Mr Kilian has nevertheless argued that:
“The changes in the Lynx container as compared to conventional containers at the priority date were not routine modifications, but a whole new method of designing a side wall … It is not possible to achieve the Lynx invention by simply proceeding on a trial and error basis, because the side wall with the integral ridge is a completely new way of thinking about side wall design, reinforcement, and the flow of the material during unloading.
231. With regard to his reference to “the flow of the material during unloading”, Mr Kilian argues that, contrary to conventional thinking, the side walls of the Lynx container are not flat due to the inclusion of the internal ridge, and yet do not impede the discharge of bulk material when unloading (that is, are not prone to “hang up”). This is said to be because the profile of the internal ridge is based on the angle of repose of the bulk material.
232. In response Mr Ferris notes that the problem of hang up is well understood in the art, and that the angle of repose would be considered as a matter of course to facilitate the discharge of bulk material. As an example, Mr Ferris highlights the importance of the angle of repose when designing the sloping walls or bases that he says are commonplace in bulk material containers.
233. It is at this point that considerable difficulties arise. The Car Builders Cyclopedia is the principal source of common general knowledge on which Bradken relies. However, as I have mentioned in relation to exhibit DJF16, the contents of the Car Builders Cyclopedia are largely confined to photographs of railway wagons and offer very little in the way of explanatory text. For example, there is no conclusive indication of whether the vertical ribs discernible in Fig 2.520 on page 218 of exhibit DJF16 are attached to, or formed integrally with, the side walls of the wagon.
234. On the other hand, the evidence for Lynx cannot be said to seriously challenge Bradken’s case on inventiveness since in addressing this issue it misguidedly focuses on the preferred embodiment of the invention rather than the invention as claimed. Mr Boland has frequently referred to the advantages over existing wagon designs of “the Claimed Invention as described in the Lynx specification”, while “the Lynx container” predominant in Mr Kilian’s evidence is obviously a reference to the Lynxrail wagon. The following passage from Dr Wager’s evidence in answer is perhaps most telling:
“My overall impression of the materials provided by Bradken is that the documents provide evidence of some individual aspects which have been included in the Lynx cumulative design, but do not show the complete nature of the Lynx design, particularly as shown in Figures 2(a), 2(b), 3(a), 3(b), 4(b) and 5 of the Lynx specification.”
235. Nevertheless, ultimately I must decide whether the claimed invention involves an inventive step and in this I am bound by whatever evidence has been put before me.
236. Based on the evidence, I find the following common general knowledge:
- The use of railway wagons or containers to transport bulk material, which include two side walls, two end walls and a base;
- The use of horizontal strengthening members in the container end walls, and horizontal and vertical strengthening members in the container side walls;
- The vertical strengthening members are in the form of vertical ribs or “posts” spaced along the exterior of the container side walls. Additional vertical ribs may be located on the interior of the side walls;
- The horizontal strengthening members are in the form of ribs or corrugations which Mr Ferris himself has apparently recognised as “ridges” (see, for example, his evidence in answer at 38);
- The horizontal strengthening members extend unbroken over the length of the container, or between respective pairs of the vertical ribs;
- The use of fastening techniques such as riveting or welding to attach the vertical or horizontal ribs to the container walls, and the use of metal forming processes such as stamping to form the vertical ribs or corrugations integrally with the container walls;
- The use of corrugated or ridged floors in passenger railway wagons to add structural strength;
- The use of an inwardly formed lip to strengthen the uppermost region of the container side walls;
- The recognition of the problem of hang up; and
- The relationship of the angle of repose to bulk material discharge.
I therefore conclude that all features of claims 1 and 2 had become part of the common general knowledge, with the exception of the feature that the internal ridge has a depth greater than the thickness of the side wall in which the ridge is formed.
The only disclosure of this feature by the Car Builders Cyclopedia of which I am aware occurs in the technical drawings comprising Figure 3,209 on page 492 of exhibit DJF16. This solitary disclosure clearly fails to demonstrate that the feature in question had entered the realm of common general knowledge. In any event, I have already found that the side wall panel protrusions formed in the container to which Figure 3,209 relates do not constitute a “ridge” as a matter of ordinary language, and there is no evidence before me to suggest that the substitution of one for the other would naturally occur to the skilled person.
Mr Ferris has submitted that constraining the depth of the internal ridge to be greater than the side wall thickness is “entirely unremarkable” since it merely reflects conventional engineering practice used in metal roofing materials or fencing. However, I see no reason why the skilled person would look to an art as remote as the roofing or fencing industry (Proctor v Flo-Con 4 IPR 187 at 198). Mr Ferris also states that he would be “extremely surprised” if the depth of the internal ridge was not greater than the side wall thickness since the container would otherwise be prohibitively heavy, but this statement is highly suggestive of the misuse of hindsight (Minnesota at 293).
Common general knowledge and prior art information
237. Lynx does not dispute that the remaining exhibits on which Bradken has placed reliance can be regarded as prior art information for the purposes of section 7(3). I accept that the skilled person could reasonably be expected to have ascertained, understood and regarded these exhibits as relevant to the problem at hand.
238. However, I am of the view that when brought together with the common general knowledge, these exhibits do not directly lead to the invention defined by claims 1 and 2. For example, the claimed relationship between the depth of the internal ridge and the container side wall which is missing from exhibits DJF10 and DJF13 does not form part of the common general knowledge, while exhibit DJF24 teaches away from this relationship. Furthermore, there is no evidence that the skilled person would have been led as a matter of course by the common general knowledge to choose an internal ridge in preference to the side wall panel protrusions disclosed in exhibit DJF3, or to add vertical strengthening ribs between the ridges disclosed in exhibit DJF25.
239. I therefore dismiss this ground of opposition.
CONCLUSION
240. I have allowed the amendment to the statement of grounds and particulars as requested by Bradken on 8 August 2006.
241. I have found that the opposition does not succeed under the grounds of entitlement, manner of manufacture, section 40 (clarity and fair basis) and inventive step.
242. I have found that even though the claims are not entitled to take the filing date of provisional application PP2677 as their priority date, the claims are nevertheless novel in the light of the prior art documents on which Bradken has placed reliance. However, I have found that claim 1 and claims 6, 9, 14 and 30 (when each appended to claim 1) are not novel by virtue of the prior use of the Dial A Dump waste bin.
243. I allow Lynx 60 days from the date of this decision to file amendments responsive to my finding on novelty.
COSTS
244. The power of the Commissioner is discretionary, so I must take account of all relevant circumstances.
245. Having considered all circumstances relevant to the present case, I see no reason to depart from the usual practice that costs follow the event. Bradken has been successful on the ground of novelty, and I therefore award costs against Lynx.
246. Bradken has also sought an award of costs following the extension of time hearing on 29 March 2005. Prima facie, Bradken was justified in objecting to the extension sought by Lynx which was allowed only after Lynx had provided a written undertaking to complete the service of its evidence in answer within a specified period. Accordingly, I award costs against Lynx in respect of the extension of time hearing noting, however, that the hearing fee has already been refunded.
O L Haggar
Delegate of the Commissioner of PatentsPatent attorneys for the applicant: Watermark, Hawthorn, VIC
Patent attorneys for the opponent: Griffith Hack, Sydney, NSW
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