Bradken Resources Pty Limited v North Mining Limited & Norcast Castings Company Ltd
[2005] APO 30
•1 July 2005
Abstracts of Decisions
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 739607 in the name of Bradken Resources Pty Limited
Title: Grinding Mill
Action: Opposition under S59 by North Mining Limited and by Norcast Castings Company Ltd.
Decision: Issued 1 July 2005 .
Abstract
The invention relates to the efficiency of autogenous or semi-autogenous grinding mills.
The patent application was opposed by two opponents, and both were heard simultaneously to ensure issues in respect of invalidity are heard at the same time.
An allegation of lack of novelty in respect of numerous claims, through the doing of an act, (one opponent having bought and received the invention from the applicant prior to the relevant priority date – per Old Digger Pty Ltd v Azuko Pty and Another [2000] FCA 676) was conceded by the applicant at the hearing.
A lack of inventive step in the light of prior art documents, either taken alone or in combination with common general knowledge was established by each opponent individually. Whilst one opponent raised arguments under novelty which ultimately led to a finding of lack of inventive step, the applicant did respond to such arguments at the time. Hence the applicant was not considered disadvantaged as it had the opportunity to address the relevant issues raised and did so at the time.
The claims were found to comply with section 40. In particular, the claims were found to be fairly based on the matter described in the specification as a whole (as per Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [2004] HCA 58 (18 November 2004)), and clear when a purposive construction was applied to the claims.
Despite lacking an inventive step, the claims were considered to be for a manner of manufacture on the face of the specification alone.
As there was believed to be no patentable subject matter remaining in the specification, the applicant was not afforded the opportunity to amend and the application was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 739607 by Bradken Resources Pty Limited, and opposition thereto by North Mining Limited and by Norcast Castings Company Ltd. respectively.
BACKGROUND
1. Patent Application 739607 in the name of The ANI Corporation Limited, was filed on 13 November 1997, being associated with provisional application PO 3686, having a filing date of 14 November 1996. The patent application was advertised accepted on 18 October 2001, and ownership of the application amended in favour of Bradken Resources Pty Limited (“Bradken”) on 13 February 2002.
2. North Mining Limited (“North ML”) filed a notice of opposition on 17 January 2002 and after various extensions of time to serve evidence was granted to both parties, service of evidence was completed on 6 April 2004. It should also be noted North ML have chosen not to serve evidence in reply.
3. Similarly, Norcast Castings Company Ltd (‘Norcast”) filed a notice of opposition on 18 January 2002, and again after numerous extensions of time being allowed for both parties, the serving of evidence was completed 30 September 2004.
4. The present matter was heard in Canberra on 1 February 2005. The applicant, Bradken was represented via telephone by Mr Peter Williams, patent attorney of Griffith Hack, Brisbane. Mr Ben Fitzpatrick of counsel, instructed by Mr Grant Follett of Corrs Chambers Westgarth, Melbourne, represented the first opponent, North ML. Also present was Mr Kevin Fenwick, a declarant for North ML. The second opponent, Norcast, was represented by Mr Greg Turner, patent attorney of Spruson & Ferguson, Sydney.
GROUNDS OF OPPOSITION
5. The grounds for opposition submitted by North ML were that the invention so far as claimed in any claim was not novel, was obvious and did not involve an inventive step, and the claims do not disclose an “invention” within the meaning of section 18(1) of the Patents Act 1990.
6. The grounds for opposition relied upon by Norcast were similar to those set out by North ML, that is, the invention is not a patentable invention because it does not comply with paragraphs 18(1)(a) or (b) of the Patents Act 1990, as outlined above. Additionally, Norcast allege that the specification filed in respect of the complete application does not comply with subsection 40(3), in particularly the claims are not clear and succinct.
EVIDENCE
7. Evidence in support provided by North ML consisted of declarations made by:
·Mr Donald Christopher BURGESS, dated 14 October 2002, along with Exhibits DCB-1 to DCB-29. Mr Burgess is currently a principal of Don Burgess Consulting and Technical Services, providing consultancy services in relation to grinding (comminution) systems. Mr Burgess further states he has experience working in ore grinding mills since 1966, before commencing his consultancy firm in 1994.
·Mr David ROYSTON, dated 15 October 2002, along with Exhibits DR-1 to DR-4. Mr Royston presently runs his own mineral processing consultancy firm. Mr Royston states he has worked in the mineral processing industry since 1969, including a stint as Chief Process Engineer-Mills, for ANI Bradken (later to become The ANI Corporation, the original applicant of the present application). Mr Royston holds a Doctor of Philosophy degree in Chemical Engineering.
·Mr Kevin Robert FENWICK, dated 21 October 2002, along with Exhibits KRF-1 to KRF-11. Mr Fenwick states he is the Ore Processing Maintenance Superintendent for Northparkes Mines, a division of North ML. Mr Fenwick states he is responsible for the maintenance and upkeep of Northparkes’ ore grinding mills, and has held this position since 1993.
8. Evidence in support provided by Norcast consisted of declarations made by:
·Mr A M (Mac) McKIM, dated 10 October 2002. Mr McKim states he is President of McKim Comminution Related Services Ltd, a mechanical consulting firm in the field of comminution and mineral processing, based in Ontario, Canada. Mr McKim states he has experience in the design, maintenance and installation of mineral processing equipment since 1959. Also included are Exhibits M-1 to M-14.
·Mr Rhual GUERGUERIAN dated 10 October 2002, including Exhibits R-1 to R-10. Mr Guerguerian states that he is Senior Project Engineer with FFE Minerals USA Inc of Pennsylvania USA. He also states that he has over 35 years experience in the design and manufacture of semi-autogenous and autogenous grinding mills.
·Mr Ludwig M STRAH, of Ontario, Canada dated 11 October 2002, including Exhibits L-1 to L-8. Mr Strah states he is a self-employed consultant to engineering and mining companies with respect to mining equipment. He further states he has 40 years world wide experience as a mining engineer focussing on crushing and grinding equipment including all aspects of mill liner design and application.
·Mr Stephen W THOMPSON, dated 8 November 2002, including Exhibits T-1 to T-24. Mr Thompson states he is an engineer and co-founder of Farnell-Thompson Applied Technologies Inc., a machine design consultancy of Montreal, Canada. Mr Thompson states he is a mechanical engineer who has been involved in the repair, retrofit and design of large grinding mills since 1986.
9. Evidence in answer provided by Bradken in response to the evidence in support filed by both opponents, consists of a declaration made by Mr Craig Faulkner, dated 4 April 2004, along with Annexures CF-1 to CF-4. Mr Faulkner states he has been the Product Manager at Bradken since 1997.
10. Evidence in reply was not filed by North ML, whilst Norcast provided evidence in reply in the form of a statutory declaration by Mr Ludwig STRAH, dated September 2004, together with Exhibits LS-1 to LS-18.
11. I shall refer to specific declarations and exhibits as appropriate throughout my decision, rather than reviewing them at this point.
THE SPECIFICATION
12. The present invention relates to grinding mills, including autogenous and semi-autogenous grinding mills.
13. A grinding mill typically takes the form of a horizontally oriented drum having a large diameter relative to its length. The drum is typically mounted for rotation about a substantially horizontal axis on large bearings in the two end walls of the drum. Typically, in larger grinding mills, the end walls take the form of truncated cones.
14. A grinding mill can be notionally divided into three portions, generally separately manufactured and secured together later. Material to be ground and water are introduced into the mill through a feed portion and a slurry containing ground material is typically discharged through a discharge portion, with the grinding portion located between the feed and discharge portions. Flow of material is assisted by the introduction of water and the discharge of slurry.
15. The specification states the interior of the cylindrical wall of the grinding portion is typically formed with a series of protrusions, referred to as lifter bars, which generally protrude towards the horizontal axis of the grinding mill. These lifter bars serve to enhance the lifting of material as the grinding mill rotates, and also form part of a plating arrangement which overlies the interior wall of the grinding portion to protect the interior wall from wear.
16. A screening wall for screening material to be discharged from the grinding mill is typically located adjacent to and inwardly of the discharge end wall, with a cavity formed between the screening wall and the discharge end. The cavity contains solid portions to enhance rigidity and provide cavity channels between successive solid portions.
17. Discharge portion lifter bars typically overlay the solid portions in the cavity between the screening wall and the discharge end. Such lifter bars serve the same function as the grinding lifter bars, particularly as wear protection means.
18. The specification states that the typical discharge portion lifter bars form a radial array on the screening wall, with the cavity channels taking the form of truncated sectors which narrow towards the centre of the discharge wall. It then states such an arrangement can be problematic because centrifugal force tends to inhibit movement of material through the cavity channels towards the centre of the discharge wall.
19. The present specification then describes at least portions of the cavity channels and at least portions of the discharge portion lifter bars as being curved when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis. That is to say that at least portions of the cavity channels are curved when the screening wall is viewed from the grinding portion along lines parallel to the horizontal axis.
20. Such a configuration of the cavity channels is described as enabling gravity to begin to oppose centrifugal forces earlier than radially arranged channels. This arrangement is said facilitate a more efficient “emptying” of the cavity channels.
21. The specification finishes with the 15 claims set out below:
“1. A grinding mill having a substantially cylindrical body arranged to rotate about a substantially horizontal axis, wherein
the body includes a grinding portion adjacent to a discharge portion;
the discharge portion includes a discharge end wall arranged for the passage therethrough of material to be discharged from the mill, a truncated conical or a truncated pyramidal screening wall located inwardly of the discharge end wall and which has its notional vertex remote from the grinding portion, and a cavity located between the discharge end wall and the screening wall;
portions of the cavity are solid with cavity channels being located between adjacent solid cavity portions;
the screening wall includes screening means which overlay at least portions of the cavity channels for the passage therethrough of screened material into the cavity channels for subsequent discharge from the mill through the discharge end wall;
discharge portion lifter bars overlay at least portions of at least some of the solid cavity portions and protrude from the screening wall towards the grinding portion; and
at least portions of the cavity channels and at least portions of the discharge portion lifter bars are curved when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis.
2. A grinding mill as claimed in claim 1 wherein the cavity channels are linear through a portion of their length extending outwardly from their inner extremities.
3. A grinding mill as claimed in claim 2 wherein the cavity channels are linear extending outwardly from their inner extremities for between 30% and 70% of the radial distance between their inner and outer extremities.
4. A grinding mill as claimed in claim 3 wherein the cavity channels are linear for about 50% % of the radial distance between their inner and outer extremities.
5. A grinding mill as claimed in any one of claims 2-4 wherein the cavity channels are of a single radius curve configuration between their linear portions and their outer extremities.
6. A grinding mill as claimed in any one of claims 2-4 wherein the cavity channels are of a compound curve configuration having a plurality of radii between their linear portions and their outer extremities.
7. A grinding mill having a substantially cylindrical body arranged to rotate about a substantially horizontal axis, wherein
the body includes a grinding portion adjacent to a discharge portion;
the discharge portion includes a discharge end wall arranged for the passage therethrough of material to be discharged from the mill, a truncated conical or a truncated pyramidal screening wall located inwardly of the discharge end wall and which has its notional vertex remote from the grinding portion, and a cavity located between the discharge end wall and the screening wall;
portions of the cavity are solid with cavity channels being located between adjacent solid cavity portions;
the screening wall includes screening means which overlay at least portions of the cavity channels for the passage therethrough of screened material into the cavity channels for subsequent discharge from the mill through the discharge end wall;
discharge portion lifter bars overlay at least portions of at least some of the solid cavity portions and protrude from the screening wall towards the grinding portion; and
the cavity channels and the discharge portion lifter bars are curved through their lengths between their outer and inner extremities when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis.
8. A grinding mill as claimed in claim 7 wherein the cavity channels and the discharge portion lifter bars are of a single radius curve configuration between their outer and inner extremities.
9. A grinding mill as claimed in claim 7 wherein the cavity channels and the discharge portion lifter bars are of a compound curve configuration having a plurality of different radii.
10. A grinding mill as claimed in claim 1 wherein the cavity channels are curved through substantially their length between the outer and inner extremities.
11. A grinding mill having a substantially cylindrical body arranged to rotate about a substantially horizontal axis; wherein
the body includes a grinding portion adjacent to a discharge portion;
the discharge portion includes a discharge end wall arranged for the passage therethrough of material to be discharged from the mill, a truncated conical or a truncated pyramidal screening wall located inwardly of the discharge end wall and which has its notional vertex remote from the grinding portion, and a cavity located between the discharge end wall and the screening wall;
portions of the cavity are solid with cavity channels being located between adjacent solid cavity portions;
the screening wall includes screening means which overlay at least portions of the cavity channels for the passage therethrough of screened material into the cavity channels for subsequent discharge from the mill through the discharge end wall;
discharge portion lifter bars overlay at least portions of at least some of the solid cavity portions and protrude from the screening wall towards the grinding portion;
at least portions of the cavity channels and at least portions of the discharge portion lifter bars are curved when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis; and
the cavity channels and the discharge portion lifter bars are linear extending outwardly from their inner extremities for between 30% and 50% of the radial distance between their inner and outer extremities.
12. A grinding mill having a substantially cylindrical body arranged to rotate about a substantially horizontal axis, wherein
the body includes a grinding portion adjacent to a discharge portion;
the discharge portion includes a discharge end wall arranged for the passage therethrough of material to be discharged from the mill, a truncated conical or a truncated pyramidal screening wall located inwardly of the discharge end wall and which has its notional vertex remote from the grinding portion, and a cavity located between the discharge end wall and the screening wall;
portions of the cavity are solid with cavity channels being located between adjacent solid cavity portions;
the screening wall includes screening means which overlay at least portions of the cavity channels for the passage therethrough of screened material into the cavity channels for subsequent discharge from the mill through the discharge end wall;
discharge portion lifter bars overlay at least portions of at least some of the solid cavity portions and protrude from the screening wall towards the grinding portion;
at least portions of the cavity channels and at least portions of the discharge portion lifter bars are curved when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis; and
the cavity channels and the discharge portion lifter bars are linear extending outwardly from their inner extremities for between 50% and 70% of the radial distance between their inner and outer extremities.
13. A grinding mill as claimed in any one of the preceding claims wherein the discharge portion was originally designed with original discharge portion lifter bars forming a radial array on an original screening wall and original cavity channels each taking the form of a truncated sector which narrows towards the centre of the discharge end wall.
14. A grinding mill as claimed in any one of the preceding claims wherein the screening wall is a truncated right circular conical screening wall having its notional vertex on the substantially horizontal axis.
15. A non-prior art grinding mill substantially as herein described with reference to the accompanying drawings. ”
DECISION
22. Onus of proof
I note that it is well established in proceedings such as these that the onus of proof lies with the opponent(s) who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG v New England Biolabs Inc 50 IPR 305 at [67]. It is also settled in law that the standard of proof is the civil standard of being on the balance of probabilities (Dunlop Holdings Ltd’s Application [1979] RPC at 542).
23. Essential Features
Before continuing any further, I believe it is appropriate for me to construe the claims and determine what I consider to be the essential features of the invention. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed. See Catnic Components v Hill & Smith [1982] RPC 183.
24. Concentrating on claim 1, in following Catnic, I do not think there is any doubt that every feature of this claim should be considered essential. None of the parties expressed a contrary view. In construing the claim, various declarants appeared to apply different interpretations to the construction implied by the geometry of the notional planes in the following passage:
“at least portions of the cavity channels and at least portions of the discharge portion lifter bars are curved when projected onto a notional plane perpendicular to any notional plane which passes through the substantially horizontal axis”
25. For the sake of clarity, I will address this issue of construction. To my mind a "[first] notional plane which passes through the substantially horizontal axis" could refer to either (a) a plane which passes through at least one point of the axis; or (b) a plane which passes through the entire axis. However, option (a) is geometrically inconsistent with the existence of "a notional plane perpendicular to any [first] notional plane". Hence, to avoid an absurd construction, option (b) is the most appropriate. It therefore follows from basic geometry, that the above passage equivalently defines "at least portions … projected onto a notional plane perpendicular to the substantially horizontal axis". This construction is also consistent with reading the specification as a whole and the Figures, and therefore the most appropriate.
26. “At least portions of the discharge portion lifter bars being curved”
I believe this phrase needs some type of clarification given there are various combinations of curved and part linear part curved arrangements described and claimed.
27. I do not believe this phrase allows within its scope a series of straight edged discharge portion lifter bars juxtaposed so as to form an overall segmented curve from the inner to outermost points of the discharge wall.
28. However, the phrase to my mind includes within its scope:
Øthe discharge portion lifter bar from the inner most point to outer most being made up of portions, (or segments, much like the wedges) and, at least one of these portions or segments of the discharge lifter bar being curved. That is, one or more of these individual portions are individually curved,
Øor, alternatively, each individual discharge lifter bar is a single unitary piece, running from the radially inner most to outermost point (as is possible under this construction). Then, in order to satisfy the wording of “at least portions ...being curved” the unitary lifter bar must have a curved configuration, or a “smooth” curve, somewhere along its length. That is, the discharge lifter bar maybe a single piece which is predominantly linear, apart from a portion of the bar (such as the last 30%) being curved.
29. Additionally, Mr Fitzpatrick raised construction issues in respect of independent claim 7 in the context of possible anticipation. I will address his specific submission later in my decision, where it seems more appropriate.
30. I am also of the opinion that independent claims 11 and 12 merely add features to the invention of claim 1 which reflect the various embodiments of the invention described and as such their construction is self explanatory.
31. “Vanes” versus solid cavity portions
Prior to addressing the issue of anticipation, in an attempt to simplify the language used, the applicant made the following submissions in respect of the terminology used:
“…There is a clear distinction in the document (i.e specification, my addition) between the discharge portion lifter bars and what I am referring to now as ‘vanes’, which are in the document referred to as solid cavity portions…”
32. The applicant then used the term “vanes’ when making further submissions. Both opponents then used this term interchangeably with the described term, solid cavity portions. I shall adopt a similar approach and use these two labels interchangeably.
33. Furthermore, in my deliberations I will focus primarily on the features that may distinguish the claimed invention from the prior art disclosures.
NOVELTY
34. At the hearing the second opponent, Norcast commenced proceedings by submitting arguments in respect of three prior art documents. However I would first like to address the initial arguments presented by North ML in relation to novelty, and in particular its submissions on “prior use” before ruling on any prior art documents.
35. Prior Use
As set out in Section 7 of the Act, a claim will lack novelty if it is not novel in the light of information in a single document made publicly available anywhere in the world before the priority date, or information made publicly available through doing a single act in Australia before the priority date in question.
36. North ML made the submission that “where a person demonstrates and discloses their invention to a third party with the object of inducing a purchase, then this constitutes use of the invention”. That is to say the use of the invention equates to “doing a single act”. North ML submitted this line of reasoning is supported by Re Wheatley’s Patent Application (1984) 2 IPR 450, and particularly the decision of Oliver LJ:
“…By agreeing to sell, the applicant has used his invention to achieve his commercial object. He has dealt in the products of his invention before had (sic) obtained any patent rights. This was doing one of the things which the Statute of Monopolies 1623 was intended to prevent, namely getting a monopoly after having already dealt commercially with the invention…”
37. I was also directed to the findings of von Doussa J. in Old Digger Pty Ltd v Azuko Pty and Another [2000] FCA 676. I find the following passage at [189] highly relevant:
“…What anticipates an invention is “use” in public. There will be such a use in public if in advance of obtaining patent protection, the patentee enters into an enforceable contract of sale, or has engaged in the commercial promotion of an embodiment of the invention by offering it for sale (Hudson Scott & Son Ltd at 87) or by display and gift of a sample: Formento Industrial SA, Biro Swan Ltd v Mentmore Manufacturing Co Ltd. Such conduct by the patentee places the invention on the market and constitutes use in public...”
38. As evidence of prior use through commercialisation of the invention, Mr Fitzpatrick directed me to the declaration and exhibits provided by Mr Fenwick.
39. Mr Fenwick describes the installation of a semi-autogenouous grinding mill (known as ML01) at the Northparkes Mines site in Parkes, New South Wales around April 1994. The mill is described as being of 24 foot diameter, of substantially cylindrical shape, with the cylinder lying horizontally and rotating about its horizontal axis. Mr Fenwick also states the mill comprised a large grinding portion with an input section adjacent one end of that portion for feeding in material, and a discharge portion adjacent the other end of the grinding portion.
40. The discharge portion is described by Mr Fenwick as having a truncated conical screening wall, with a notional vortex of the cone remote from the grinding portion of the mill. He further states that behind the screening walls were solid pulp lifters which formed cavity channels between them and through which crushed pulp flowed for discharge. Lifter bars overlaying the screening wall and protruding into the grinding portion of the mill were also described by Mr Fenwick.
41. Fenwick declares the mill has always had and still has all of these characteristics described above.
42. I am now referred to exhibit KRF-1, a document entitled “Northparkes Mines 330ML01 Mill Liner History”. Mr Fenwick states the document was produced by ANI Corporation Ltd (the original patent applicant) and provided to Northparkes. The document is said to provide a pictorial history of the discharge end components used in the mill from November 1995 to March 1997.
43. In viewing the photographs of this document, I note they are dated from 15 November 1995 to 17 January 1996 and show the various components (and quantity thereof) of the discharge end which have been installed subsequent to the commencement of the mill’s operation. In particular I can identify screening grates, solid pulp lifter bars and cavity channels, along with lifter bars overlaying the screening wall and protruding into the grinding portion. The bars and cavity channels extend radially outwardly. Essentially I believe the mill described is a known prior art mill as described in the present patent specification.
44. Mr Fenwick then declares that sometime in mid 1996, Mr David Denlay of ANI suggested to Mr Fenwick to replace the discharge end part of the mill with a new discharge end containing “spiral” shaped pulp lifters, and a sketch of the “spiral” pulp lifter parts was faxed to Mr Fenwick on 24 September 1996 by representatives of ANI, (Exhibit KRF-2).
45. Mr Fenwick alleges that on around 30 September 1996 he requested a formal quotation from ANI for the replacement of existing parts with the spiral version suggested by ANI, and said quote was duly faxed to him by a Mr Jerry Hoslin of ANI on October 1996, (Exhibit KRF -3).
46. Exhibit KRF-4 shows an order form for the new discharge end, which Mr Fenwick states was faxed by Mr Jim Armitage of North ML’s purchasing division to Mr Hoslin of ANI. The order form shows a required delivery date of 8 November 1996.
47. Mr Fenwick asserts the new discharge portion including spiral lifter bars was delivered to Northparkes Mines on 12 November 1996. This is supported by exhibit KRF-7, which comprises of a printout of a “Purchase Order Review” screen, from Northparkes procurement records. Highlighted on the printout is a file headed “Rcvd Onsite (UOP)” which Mr Fenwick states is a record of when a product is received onsite (Unit of Purchase). It is dated “12/11/96”.
48. Subsequent to receiving the goods, Mr Fenwick states the process of replacing the old discharge end parts with the newly received discharge end commenced on 14 November 1996, and was completed on 15 November 1996.
49. Given there is no evidence to the contrary, I believe Mr Fenwick’s evidence to be credible and as such believe the discharge portion including spiral shaped pulp lifters of the invention were sold to, and received by North ML prior to the priority date of the present application.
50. I was also referred to exhibits KRF-9, KRF-10 and KRF-11 respectively by Mr Fitzpatrick. Essentially these exhibits are described as photographs of the various segments of the new discharge end, prior to installation in the Mill. In viewing the photographs they clearly show segments of pulp lifter bars and a grate (or screen) segment overlying some of the lifter bar segments. Such segments are curved, as are the cavity channels between adjacent lifter bars. The photos also show pulp lifter arms that are linear through a portion approximating 50% of the length before adopting a curvature as the bar extends outwardly. The curves appear to be compound, and the cavity channels reflect a corresponding curvature.
51. On the basis of Mr Fenwick’s declaration and exhibits KRF-9 to KRF-11, North ML alleged that claims 1 - 15 are clearly disclosed and therefore not novel.
52. Significantly, the declaration made by Mr Fenwick was not disputed or contested by the applicant in any manner, and surprisingly at the hearing, Mr Williams conceded the allegation of prior use in respect of claims 1, 2, 3, 6 and 11.
53. Mr Williams then submitted that, if rewritten in independent form, present dependent claims 4 and 5 would be novel. He also submitted that independent claim 7 is novel, and claims 8-10 if re-written in independent form would be novel over allegations of prior use (notwithstanding the fact that, if claim 7 is novel, then claims 8, and 9 must be novel due to their dependency). Similarly it was further submitted that either claim 12 or claim 13 would be novel over prior use allegations and that claims 13-15 would be novel when dependent on any of the previously mentioned claims if re-written.
54. As I understand it, Mr Williams is suggesting that if these dependent claims were re-written as independent claims having the limitations of the original independent claim as well as the limitation of the dependent claim in question, then that newly written claim would be novel. I believe such an approach is a standard claim construction process which is often adopted when notionally re-writing claims, and as such I cannot see how this process alone would confer novelty.
55. There are two issues to address in this argument. Firstly, there is an assumption by the applicant that the dependent claim provides a novelty conferring feature in the first instance. Secondly, there is an assumption that the specification contains patentable subject matter to potentially afford the applicant an opportunity to amend the present claims to define an invention that is both novel and inventive over the entire relevant prior art, not just the evidence of the Fenwick declaration. At this stage I am not in a position to determine if there is patentable subject matter remaining in the specification without having reviewed all the relevant prior art. However, I will address the issue of patentable subject matter and possible amendments later in my decision.
56. From my observations of exhibits KRF-1 and KRF-9 to KRF-11, I also believe that claims 4, 12 – 15 are not novel. In drawing this conclusion, I believe that having linear cavity channels for about 50% of the radial distance is disclosed when one considers the fully assembled discharge end portion comprises the linear cavity channels not replaced, alongside the replacement curved cavity channels added to the discharge end portion. This is confirmed by Mr Fenwick’s declaration at paragraph’s 24 and 25. The remaining features of the claims, such as having a grinding mill designed with a radial array of discharge portion lifter bars and truncated sector cavity channels, are clearly disclosed in these exhibits, (see for example KRF-1 for the above feature).
57. With respect to independent claim 7, Mr Fitzpatrick submitted that if one were to construe the phrase “…the cavity channels and the discharge portion lifter bars are curved through their lengths between their outer and inner extremities” as not requiring a continuous curve through the entire length, then the claim is anticipated by the evidence presented in the above exhibits. Conversely, it was conceded that if one were to construe the term to mean curved through their “entire” lengths, then the claim would not be anticipated by the discharge portion delivered to the opponent, which does not disclose such a feature.
58. In my opinion, the language of the claim does not bear out Mr Fitzpatrick’s initial construction of the claim as the claim explicitly reads that the length that is curved extends between the inner and outer extremities. Consequently I find that claim 7 is novel over the discharge portion supplied to North ML by Bradken. For similar reasons I find claims 8 and 9 novel as they are appended to claim 7.
59. This leaves claims 5 and 10 in dispute. As indicated above, I believe exhibits KRF-9 to KRF-11 clearly show cavity channels having a compound curve, rather than a single radius curve as defined. Given that it was conceded that the compound curved configuration lacks novelty, I find that claim 5 defining a single radius curve is novel over this allegation of prior use.
60. In respect of claim 10, given my earlier comments, I am not convinced there is clear and unmistakable evidence to suggest that the cavity channels are curved “substantially” through their length between the two extremities (given they are considered linear for about 50% of that length as per claim 4). Therefore I find claim 10 novel in this instance.
61. Therefore I can only conclude the allegation of prior use has been proven in respect of claims 1, 2, 3, 4, 6, and 11-15, and to that end I find the invention of these claims lacks novelty.
62. Mr Fitzpatrick also submitted that if the applicant were afforded the opportunity to amend their claims in the light of their concession at the hearing, there is nothing in the body of the specification to suggest an invention residing in limiting the extent of curvature of the lifter bars or cavity channels to specific ranges, (for example 30% to 50%), “would provide any benefit at all”. I believe such an argument is better dealt with in terms of inventive step rather than novelty, and as such I will consider the issue there.
63. Documentary Anticipation
It is well established that the basic test for novelty is the " reverse infringement test" as stated by Aikin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
64. Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
65. A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. What ever is essential to the invention must be read out of or gleaned from the prior publications."
66. At the hearing, each opponent relied upon a variety of prior art documents. I will review the documents in the order they were presented. I will also include relevant submissions from the “other” opponent, if they also relied on the same prior art document (or family member thereof) rather than reviewing the document for a second time later.
67. “Dominion Mining Grinding Mills” Newsletter
Norcast allege the present invention as claimed in claims 1-4, 6, 7, and 9-12, is not novel over this document, submitted as Exhibit R-3 of the Guerguerian declaration. Mr Guerguerian as a former employee of Dominion Engineering at the relevant time, states this document was available to the public from 1972. This was not disputed and as such I have no reason to doubt this document was publicly available from 1972 onwards.
68. My attention was drawn to a part section or isometric view of a Dominion Autogenous Mill shown in the newsletter. The standard prior art features of a grinding mill (as described and claimed in the present application) are not in dispute as being disclosed in this citation.
69. However, the applicant disputes there is a clear disclosure of curved discharge lifter bars overlying curved vanes. Furthermore it was stated that whilst the discharge end lifter bars have some appearance of curvature, this curvature is in fact due to a straight bar (or bars) on the surface of the cone (truncated conical), when drawn in perspective, giving the appearance of a curve.
70. In my opinion, there is no doubt in viewing the drawing that both vanes and discharge end lifter bars exist together with the lifter bars overlaying at least portions of the vanes, this is conceded in the Faulkner declaration. The vanes are also clearly labelled on the diagram as curved. However it is not clear cut that the discharge lifter bars are also curved, as they appear as three partial straight edged chords in the diagram shown.
71. On this point Mr Turner submitted that it was engineering logic to secure “wedges” acting as lifter bars to the vanes using the same bolt holes (as supported by the McKim declaration, paras17-19), and that, as the vanes were curved, and the discharge end lifter bars followed the vanes, the lifter bars must be curved to follow the same line.
72. I appreciate the merit of the submissions made by Mr Turner. However, even accepting Mr Turner’s argument with respect to the bolt holes, to my mind from the disclosure made in the diagram alone (read in the light of common general knowledge at the time of publication) one is not able to clearly determine whether such a curvature exists. Therefore there is no “clear and unmistakeable direction” that the discharge end lifter bars are curved in the manner claimed. That is, it is not clear that “at least portions of the discharge lifter bars being curved” exists given my earlier observations in respect of this term.
73. Consequently the reverse infringement test cannot be satisfied, and I find the invention as claimed is novel over this particular prior art document.
74. Canadian Patent number CA 1146918 (and family equivalent, US Patent number 4365763)
This patent was issued 24 May 1983 to Dominion Engineering Works Ltd, with the inventor being Mr Guerguerian.
75. Norcast directed me to Figures 1 and 2 of this citation. Again in viewing Figure 1, it depicts the standard prior art features associated with the feeder and grinding portions of a grinding mill as claimed in present claims 1, 7, 11 and 12, as well as a truncated conical screening wall and general discharge end arrangement as defined. The presence of these features was not disputed by the applicant.
76. Figure 2 focuses on the discharge end of said mill and in particular the arrangement of wedges 36 extending between grated sections 26, holding the grates against discharge lifters 18. In equating the terminology to the present invention, I believe the wedges 36 are the same as the discharge portion lifter bars, the grates equate to screening means and the lifter bars 18 are the same as vanes or solid cavity portions. Also shown in Figure 2 are cavity channels adjacent each vane.
77. Mr Turner asserted that the wedges shown follow the curvature of the lifter bars and a curve is formed by a series of short segments added together from the inner point to outer.
78. Conversely, whilst the applicant did not dispute that the lifter bars 18 (or vanes) in Figure 2 are curved, it did dispute that this document disclosed curved wedges (discharge portion lifter bars) overlaying curved vanes, separated by the screening wall. Furthermore, Bradken submitted that Figure 2 shows clearly that the wedge portions overlying the vanes are actually straight portions, not curved. Mr Williams then directed me to the McKim declaration, and paragraph 44:
“…The discharge portion lifter bars 36 would form a segmented rather than a smooth curve being made of a series of straight bars laid out in a curved line rather (sic)…”
79. I also note Mr McKim then goes onto state:
“In my opinion such an arrangement could nevertheless be characterized as a “curve” and any effect on pulp lifting would be the same with either a smooth curve or a segmented curve.”
80. Bradken then submitted that the present application does not in anyway suggest that a series of straight bars falls within the scope of the claims of its accepted application, and hence no reverse infringement for such a scenario.
81. Whilst I am of the opinion that the opponent’s declarants are clearly persons skilled in the art, I also believe each declarant has tended to gloss over the construction implied by the phrase“...at least portions of the discharge portion lifter bars being curved…” when reviewing the citation.
82. Given my earlier discussion of this term, I do not believe the scope implied by this phrase is satisfied by CA ‘918, as effectively admitted by Mr McKim. For completeness, Figure 2 also shows lifters 40 (which in addition to the wedges) are described as means for lifting larger friable material that overlie the vanes, and are straight edged segments rather than curved as defined.
83. The opponent North ML, made out similar submissions in addressing US’763, again without specifically addressing the issue of a curve comprising a series of straight segments. It did however submit that US ‘763 made reference to “curved discharge lifters or discharge channel members” in its description. Upon closer reading of this document, it is clear from the Figures that the term “discharge lifters or discharge channel members” is consistently used to refer to vanes and channels, i.e. the solids cavity portions in the language of the present claims, and not to the discharge portion lifter bars of the claims.
84. Consequently the reverse infringement test has not been satisfied and I do not believe Canadian Patent number CA 1146918 (or family equivalent, US Patent number 4365763) robs the present claims of novelty.
85. Canadian patent number 927353
This document was issued and consequently published on 29 May 1973. The document readily discloses the standard prior art features associated with the feeder and grinding portions of a grinding mill as claimed in present claims 1, 7, 11 and 12, as well as a truncated conical screening wall and general discharge end arrangement as defined.86. This citation discusses the use of inclined lifters, preferably being in the form of curved lifters which may be curved, straight, or a composite thereof. In the language of the present claims, this corresponds to some type of curved solid cavity portions and corresponding cavity channels. CA ‘353 also discloses discharge portion lifter bars, labelled as wedge bars 17, in the document.
87. Again, Bradken contested the disclosure of a curved configuration (when projected on a notional plane) for the wedge bars (or discharge portion lifter bars) in CA ‘353.
88. In reviewing the citation, I agree with this argument. The citation clearly identifies various embodiments of curved lifters however it makes no mention of the wedge bars being similarly curved.
89. I note that whilst Norcast submitted that each of its declarants supported the proposition that all of the essential features are present in the citation, not one declarant was specifically able to identify the feature of curved wedge bars in the citation. Typical of the declarants was the statement made by Mr McKim at para 19:
“Although the individual wedge members were generally straight, a series of them could be used to form a segmented curved configuration generally following the curve of the pulp lifters”
90. In a manner similar to that set out in CA’918 above, I do not believe the present document sets out with clear and unmistakable direction that “at least portions…of the discharge portion lifter bars are curved…”
91. Therefore I find the present claims novel over CA 927353 as not all of the essential features are present in this document.
92. “High or Low Aspect – Which One?” (Exhibit DCB-4)
The next paper citation was submitted by North ML, it being a technical paper Mr Burgess declares he presented to the Murdoch Mineral Science Programme at Murdoch University, Perth, Western Australia in November 1989. This was not disputed by the applicant.93. Again the basic mill features were not in dispute as being disclosed in the paper. Attention however focussed on Figure 2A, which the paper refers to as depicting curved pulp lifters. North ML submitted Figure 2A is almost identical to Figure 3 of the opposed application. The applicant disputed that pulp lifters were disclosed in the figure. Bradken submitted that as the art has evolved, so too had the terminology, and Figure 2A in fact refers to vanes and not lifter bars. Reading both Figures 2A and 2B, I believe the applicant’s point to be valid. Figure 2B clearly shows a curved vane (and channel) arrangement, over which segmented discharge lifter bars lie, the lifter bar segments do overlay at least a portion of the vane as claimed. However, the lifter bar segments appear to be straight edged pieces again forming a segmented curve, rather than portions of the discharge portion lifter bars being curved.
94. Therefore I believe the claimed invention to be distinguished and novel over the High or Low Aspect –Which one? paper for reasons similar to that set out in CA’918 above.
95. “Handbook of Mineral Dressing, Ores and Industrial Minerals” by Arthur F Taggart, (Exhibit DCB-26 and DR-2).
This is a textbook on processing industrial minerals, published by J Wiley & Sons, Inc in New York, in 1947. (The publication date was not disputed by the applicant.)96. North ML submitted this document contains all of the features of claim 1 except that the screening wall is flat rather than truncated conical or pyramidal in shape. They then submitted that there is nothing in the present specification to suggest the shape of the screen is essential, and the flat screen wall is a mechanical equivalent.
97. I do not agree with this argument for several reasons. Firstly I do not believe this citation gives any disclosure of curved discharge portion lifter bars overlaying at least some of the solid cavity portions. The item identified by Mr Burgess as said lifter bars is merely shown in cross-section and actually labelled as “end and side clamp bars…for grate sections”. (I do however concede the text discloses the use of grates provided with curved pulp lifters, (ie vanes) described as spiral lifters).
98. Secondly there is insufficient evidence before me to show that having a truncated conical screening wall is inessential, given that in the first instance, all features of a claim are to be considered essential (See Catnic Components Ltd v Hill and Smith, (1982) RPC 183), and given the specification describes that it is typical for the screening wall to have the same configuration as the discharge end wall, and in its best mode for carrying out the invention a truncated conical discharge end wall and truncated conical screening wall are described.
99. Consequently I do not believe this document robs the claims of their novelty.
INVENTIVE STEP
100. Section 7(2) provides a definition of inventive step for the purposes of the Patents Act.
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
101. Prior art information in relation to inventive step is set out in the definition of prior art base in Schedule 1 of the Act, which reads as follows:
“(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i)information in a document that is publicly available, whether in or out of the patent area; and
(ii)information made publicly available through doing an act, whether in or out of the patent area”
102. Aickin J set out the following test for inventive step or obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
103. This test was recently affirmed by the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 (12 December 2002).
104. North ML was the only opponent who made specific submissions in respect of inventive step. However I believe Norcast’s submissions in respect of CA ‘918 were highly relevant to the issue of inventive step. In particular, its argument that a segmented curve has the same functions as a continuous curve should be addressed under inventive step. Bradken was fully aware of this argument and made submissions in rebuttal, specifically addressing the McKim declaration. Therefore I do not believe it has been disadvantaged by my considering Norcast’s arguments under inventive step as well as novelty.
105. North ML submitted that all of the integers claimed were well known and part of the common general knowledge, as identified in numerous prior art journals and publications, and to combine them was also well known, as supported by the evidence of Mr Burgess and Mr Royston.
106. Given their work history, I accept that both Mr Burgess and Mr Royston could be considered appropriate persons skilled in the art. Despite assertions to the contrary by North ML, I also accept Mr Faulkner to be such a person. However, I note that Mr Faulkner’s evidence essentially consisted of what is commonly referred to as a “novelty table” (a table listing the features claimed and identifying the presence or otherwise of these features in a variety of prior art documents) with little else by the way of detailed analysis and comment. Mr Faulkner’s evidence did not address many of the usual issues raised with inventive step, and I therefore do not find his limited observations as helpful or particularly persuasive.
107. The problem faced
Before addressing the specific problem to be solved by the invention, one needs to bear in mind the overall working limitations of these grinding mills. Such mills have a critical speed of rotation below which they must operate in order to balance the competing requirements of centrifugal force and gravitational force in order for material to be ground to the appropriate size, against throughput of material, given that slurry cannot be discharged until gravitational forces overcome centrifugal and frictional forces.
108. Faced with this background the specification states the problem to be solved is one relating to the discharge portion lifter bars and cavity channels:
“The discharge portion lifter bars typically form a radial array on the screening wall with the cavity channels taking the form of truncated sectors which narrow towards the centre of the discharge end wall. Such an arrangement can be problematic because centrifugal force tends to inhibit movement of the material through the cavity channels towards the centre of the discharge end wall.”
109. Essentially the problem to be solved is one of facilitating a more efficient “emptying” of the mill.
110. The person skilled in the art
When asked, North ML submitted that they considered the person skilled in the art to be a person involved in the design of mills, or it could comprise a team which further includes a person skilled in the installation mechanics of parts in a mill. There were no submissions to the contrary. I would also add that in this environment the person skilled in the art would appear to have international experience in working in mills, and knowledge of changes in the international environment. I note that all three declarants have worked in this industry outside of Australia (as have the declarants for the second opponent, Norcast).
111. Common general knowledge
The notion of what is common general knowledge has been clearly set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292 where Aikin J stated:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade...and it must be treated as being used by an individual as a general body of knowledge”.
112. Bradken did not dispute that the basic features of a grinding mill such as a feeder, grinding portion and discharge portion are well known and considered common general knowledge. Similarly, truncated conical screening walls with screening means overlying cavity channels and radial array or wedge type discharge lifter bars are considered well known in the art. This was supported by the large number, (some 31), and variety of, exhibits provided by Messer’s Burgess and Royston, including textbooks, journal articles, product handbooks, brochures, technical drawings and patent specifications all exhibiting these features well before the present priority date.
113. I believe it has also been clearly established that curved or partially curved pulp lifters (and therefore curved or partially curved cavity channels) also form part of the common general knowledge. Numerous Exhibits provided by Mr Burgess and Mr Royston support this position. Typical of these is exhibit DR-2; the “Taggart handbook” cited earlier, which Mr Royston states was commonly used as a reference book at relevant university courses in Australia in the1960’s. Taggart shows curved pulp lifters running from the inner to outer most extremity of the discharge portion. Again this was not disputed.
114. Mr Royston also notes in his declaration that, as an employee of ANI (the parent to Bradken) whilst undertaking research, he was aware of the concept of curved pulp lifters being used by other companies such as Dominion Engineering prior to the priority date.
115. Mr Faulkner, in drafting the novelty table for all 31 of the exhibits filed, also specifically chose to comment on the presence and shape of curved pulp lifters.
116. Whilst not always being a true indicator of common general knowledge, also persuasive are some 7 foreign, English language patent specifications, the latest being published in 1982 (DCB-19 to DCB-25), each showing curved pulp lifters and cavity channels. It is difficult to imagine this knowledge would not have become part of the general body of knowledge in Australia over the ensuing 14 years to the priority date given the international nature of the art.
117. More importantly, with the above mentioned knowledge, I consider the effect that curved pulp lifters had on improving the efficiency of the mill was well recognised as common general knowledge in Australia prior to the present priority date.
118. Additionally I should add it appears that it was common general knowledge for pulp lifters (either radial or curved) and discharge portion lifter bars/wedges to be made up of a series of modular segments and that these individual segments could be bolted on to replace worn existing segments. Many of the exhibits filed identify (as acknowledged by Mr Faulkner in his comments) this piece of common general knowledge. Similar acknowledgments were made by Mr Burgess and Mr Royston.
119. North ML also submitted that discharge portion lifter bars which protruded into the grinding portion of the mill and which were arrayed at a series of different angles so as to approximate a curve were common in ore grinding mills before the priority date. I was referred DCB-5 and the complimentary explanation by Mr Burgess.
120. Exhibit DCB-5 is a copy of a drawing prepared by Boliden Allis in Canada in 1989. The drawing shows lifter bars forming a segmented curve. However the drawing is marked “Confidential – property of Boliden Allis Canada” and Mr Burgess merely states that he viewed drawings “similar” to the Boliden Allis drawings in 1990. Consequently, I do not accept this as evidence of the described arrangement being common general knowledge in Australia, let alone evidence of at least portions of the discharge portion lifter bars being curved, forming part of the common general knowledge in Australia.
121. Furthermore, there is no evidence of any weight to suggest that the arrangement of at least portions of the discharge portion lifter bars being curved when projected onto a notional plane was common general knowledge at the relevant time. Both North ML declarants merely state: “ All of the features described in claim 1 were well known to mill designers generally in Australia before the Priority Date” without addressing the specific issue of curved discharge portion lifter bars.
122. Consequently I am not persuaded that the invention as presently claimed lacks an inventive step in the light of common general knowledge alone.
123. Common general knowledge together with a document
I will first concentrate CA 1146918 (or US 4365763) cited by both opponents earlier. Given that Bradken presented no evidence to the contrary, I see no reason why the notional person skilled in the art could not have reasonably ascertained, understood and regarded as relevant this prior art patent document as it is directly related to the problem.
124. As indicated earlier, the difference between the citation and the claimed invention lies in the disclosure of a series of straight segment lifter bar portions forming a segmented curve, rather than at least portions of the discharge portion lifter bars being curved to form a continuous curve.
125. In the context of the problem, I agree with the assessment made in Mr McKim’s declaration quoted earlier. In particular, I believe the functionality of the segmented curve is identical to that of the continuous curve formed by discharge portion lifter bars. Furthermore it is well recognised by the person skilled in the art that a curved arrangement (segmented or continuous) allows for an earlier pick up than radial array type lifters and therefore gravitational forces oppose centrifugal forces earlier in the rotation, thereby allowing the pulp to be discharged more quickly and avoiding the risk of carry over.
126. The use of a continuous curve rather than a segmented curve is merely considered a matter of basic design and workshop variation, readily understood by the person skilled in the art. Consequently claim 1 lacks an inventive step in the light of CA 1146918 when combined with common general knowledge cited above.
127. For similar reasons I find claims 7 and 15 lack an inventive step.
128. I also believe that claims 11 and 12 merely reflect workshop variations involving no invention. Mills having discharge portion lifter bars which form a segmented curve, commencing with a linear piece are not novel and well known, as are underlying curved cavity channels commencing with a linear section (as shown in several documents cited above). Merely quantifying a particular range, (such as 30%-50% or 50%-70%) for the linearity without describing any sort of advantage gained or disadvantage avoided is not considered inventive. Given the modular nature of the bars it is clear that the person skilled in the art would as a matter of routine vary the linear lengths to balance all the necessary variables such as need for replacement, cost, throughput, motor speed, etc. for any given mill.
129. The appended claims
Claim 2 lacks an inventive step in the light of the above document. Having cavity channels which are linear through a portion of their length can be directly read onto the figures of these citations, and is well known as indicated in paragraphs 9 and 16 of the Royston declaration.
130. I believe that claims 3 and 4 lack an inventive step in the light of CA ‘918(when combined with common general knowledge) for the same reasons as set out for claims 11 and 12 above.
131. Similarly, in my opinion claims 5, 6, 8 and 9 lack an inventive step when compared to CA ‘918 (in light of the common general knowledge). Each discloses cavity channels of a single radius running from their innermost to outer extremities. Having either a single radius curve or compound curve configuration for the cavity channels is merely a matter of design choice (which still addresses the problem to be solved) requiring no invention given that both styles of curve are well known in the art as identified by both the Burgess and Royston declarations. Similarly modifying discharge portion lifter bars to also have variations in curvature as per claims 8 -9 requires no inventive ingenuity given that in the citations, these lifter bars follow the path of the vanes.
132. Claim 10 lacks an inventive step as again it can be read directly onto the figures of the cited document.
133. I believe claim 13 is inventive over the cited document as CA ‘918 discloses curved cavity channels (and vanes) rather than the truncated sector as defined.
134. Claim 14 is not considered inventive as it reflects a well-known variation to the shape of mills in general having no effect on the proposed solution to the problem.
135. Other “prior art” documents
One document raised under inventive step was “High or Low Aspect – Which One?”(Exhibit DCB-4), a technical paper Mr Burgess declares he presented to the Murdoch Mineral Science Programme at Murdoch University, Perth, Western Australia in November 1989. I note the applicant didn’t challenge the document meeting the requirements of section 7(3). However, I believe the opponent has not discharged its onus in establishing that this information is information that the skilled person could have ascertained. In particular, it is not clear whether the paper was freely available to attendees, whether the paper is the speaker’s notes or otherwise.
Consequently I am not convinced this paper is a document that a person skilled in the art could have ascertained. Therefore I will disregard it when assessing inventive step. However if the document were ascertainable, at first glance, it appears that the independent claims at least would lack an inventive step for reasons similar to that set out for CA’918 above.
136. North ML also submitted several other documents as evidence of a lack of inventive step either individually or when combined with common general knowledge. Notably these were the “Taggart” document (DCB-26), the “Mokken” publications (exhibit DCB-27, DCB-28) and the “McKim” publication (DCB-9). I will address the Taggart document and the Mokken publications together before reviewing the McKim publication.
137. Taggart is a published textbook, and the Mokken documents have been published in journals since 1975 and 1978 respectively, and each directly relates to the milling of ores. Given there was no evidence to the contrary, I will assume that the person skilled in the art could have reasonably ascertained, understood and regarded as relevant these prior art documents.
138. In reviewing these documents, I agree with the assessments made by Mr Williams that they do not render the claims as lacking an inventive step. In particular as submitted by Mr Williams none of these documents disclose discharge portion lifter bars overlaying solid portions and protruding from the screen wall towards the grinding portion. Additionally each citation appeared to show a flat screening wall, rather than a truncated conical screening wall arrangement. Consequently I do not believe it obvious to arrive at the claimed invention from these documents as a matter of routine.
139. The McKim publication
This document is a 1982 publication of a paper “Crushing and Grinding Autogenous Mill Curved Pulp Dischargers” presented by A M McKim and T R Eby at the 111th Annual Meeting of the American Institute of Mining Metallurgy and Petroleum Engineers in Dallas Texas in Feb 1982. North ML made no submissions to establish that this presentation by McKim and Elby at a meeting in the US provided information that could be ascertainable by the person skilled in the art.
For reasons similar to those set out earlier for “High or Low Aspect – Which One?”(Exhibit DCB-4), I do not believe the onus of proof has been met by the opponent in establishing that the McKim publication could have been ascertainable. Hence I will disregard this document when addressing inventive step.
140. I note that, even if it were ascertainable, I do not believe it would deprive the application of an inventive step. There no disclosure of the shape of the discharge portion lifter bars. The paper discloses cover plate liners held in place by wedge bars, but there is no indication if this configuration is radial, or a segmented curve or otherwise. The person skilled in the art would assume the wedge bars are the standard radial type in the first instance.
141. Given the document identifies efficiencies made by curved “vanes” per se, I do not believe it is reasonable to then say given this document, as a matter of routine, the next step would obviously be to create discharge portion lifter bars, where at least portions of which are curved, to improve the efficiency of the mill.
SECTION 40
142. At the hearing, Mr Fitzpatrick directed me to the written submissions, in respect of Section 40, where he submitted the claims lacked fair basis on the complete specification, and additionally lacked clarity.
143. Fair Basis
It was alleged that claims 6 and 9 were not fairly based as there was no support in the description for “cavity channels to be curved throughout their length, with the curve being a compound curve of different radii”.
144. North ML submitted 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 as per Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [2004] HCA 58 (18 November 2004) at [99]
145. I do not believe this to be the case in this instance. Whilst there is no specific embodiment reflecting a compound curve throughout the length of the channel as set out in these claims (and consistory statement), there are embodiments showing a compound curve running for approximately half of the length, and others showing a single radius curve running the entire length. Additionally the specification as a whole describes the invention in terms of the benefits of curved lifters (hence curved cavity channels) over radial lifters to improve efficiency. Therefore I do not believe the claims to be broader than the overall invention described.
146. I am further guided by Lockwood at [66] which states:
“For the purposes of s 40(2)(a), it is not necessary for the inventor to disclose all the alternative means; it is enough that there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting additional difficulty”
147. I believe this to be the case in the present situation, and therefore I find these claims are in fact fairly based.
148. Claims 3, 5, 8, 11 and 12 were alleged to lack fair basis as there was no need or benefit, or indication of significance in the description for the features of these claims. I do not believe such considerations are relevant to fair basis. I consider fair basis to relate to the relationship between the description and the claims. Whether or not there is any need or benefit in having a linear component in the range of 30%-50% or 50%-70% (as claimed for example) seems to me more of a selection issue related to inventive step rather than fair basis.
149. Therefore, I find these claims to be fairly based.
150. Clarity
North ML allege the claims are unclear as the terms curved and linear are unclear and not adequately described in the specification. More specifically, it is not clear that the shapes of the cavity channels are not curved or linear.
151. This may be so in a strictly technical sense, as the cavity channels appear to be more like arcuate (or semi arcuate) annular sectors. However it is a well established practice that a patent specification should be given a purposive construction rather than a purely literal one (See Catnic Components Limited v Hill and Smith Limited, (1981) FSR 60). In reading the specification as a whole, I believe the meaning is clear in that it allows one to differentiate between cavity channels formed when the solid portions are linear or when the solid portions are curved without difficulty to the person skilled in the art.
MANNURE OF MANUFACTURE
152. North ML submitted that for the reasons set out in relation to obviousness the claimed invention is not for a manner of manufacture.
153. The law as to manner of manufacture has been set out in the High Court decision of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 and confirmed in
Advanced Building Systems Pty Ltd and Another v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243, and in the Full Federal Court decision of Bristol-Myers Squibb Company v F.H. Faulding & Co. Ltd 46 IPR 553.
154. Whilst there may exist a myriad of prior art against which one may assess obviousness, one should remember to exclude this when assessing whether or not the threshold of inventiveness has been met. The threshold of inventiveness is to be assessed on the face of the specification only. Given the disclosed prior art and the invention described, I find the subject matter of the invention has the necessary quality of inventiveness.
155. Therefore I consider the invention to be for a manner of manufacture.
CONCLUSION
156. In respect of an allegation by North ML that the claimed invention lacked novelty through the doing of a single act, I believe a proper case has been made out by the opponent, as was conceded by the applicant in respect of numerous claims. In particular I find that claims 1-4, 6 and 11-15 lack novelty.
157. In terms of documentary anticipation, I find that Norcast has not made its case in respect of the Dominion Engineering newsletter as there is no clear and unmistakeable direction that at least portions of the discharge portion lifter bars are curved is disclosed.
158. North ML and Norcast have not proven a lack of novelty in respect of the patent documents cited, primarily as I do not believe a series of straight edged segments abutted to form a segmented curve fall within the scope of the essential feature “at least portions of the discharge portion lifter bars are curved”.
159. However, the arguments raised by North ML and Norcast with respect to a segmented curve are persuasive in terms of a lack of inventive step. In particular I find the function provided by a segmented curve the same as the function provided by the claimed curved discharge portion lifter bars. Hence I find claims 1-12, 14 and 15 lacking an inventive step when compared with the cited document CA 1146918 (or family member US 4365763, as raised by Norcast) when combined with common general knowledge.
160. I do not believe the claims lack an inventive step in the light of common general knowledge alone, as I am not persuaded that a person skilled in the art would consider at least portions of discharge portion lifters bars being curved as common general knowledge.
161. Additionally, I find the claims to be clear and fairly based on the matter described, and to be for a manner of manufacture.
162. Finally, given I have found that each claim either lacks novelty, or an inventive step, or both, and that in reviewing the specification as a whole I do not believe there is patentable subject matte r available to the applicant, I am left with no alternative but to refuse the present application.
COSTS
163. Under normal circumstances costs follow the event. Given that both opponents individually, were successful in proving their opposition to the present patent application, I award costs against Bradken Resources Pty Limited, and in favour of North ML and Norcast.
Lars Koch
Delegate of the Commissioner of PatentsPatent attorneys for the applicant: Griffith Hack, Brisbane
Patent attorneys for the first opponent: Corrs Chambers Westgarth, Melbourne
Patent attorneys for the second opponent: Spruson & Ferguson, Sydney.
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