Bruce James Lake v Alan Alexander Lake

[1992] APO 24

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 603760 in the name of BRUCE JAMES LAKE

Title             :    Duct Cleaning

Action: Application for the grant of an extension of term under section 69 of the Patennts Act 1990; and notices lodged under section 68B(3) of the Patents Act 1952, and section 28 of the Patents Act 1990.

Decision:    Issued            .  Grounds of obtaining, non-compliance with section 40, obviousness, lack of novelty and secret use not established. Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for the grant of an extension of term under section 69 of the Patents Act 1990 of Petty Patent No 603760 in the name of BRUCE JAMES LAKE and notice lodged under section 68B(3) of the Patents Act 1952 by ALAN ALEXANDER LAKE.

Background

Petty Patent application No 58939/90 was lodged on 13 July 1990 being a divisional application made by virtue of section 51 of the Patents Act 1952 of application accompanying Provisional Specification No PJ7292 which was lodged on 9 November 1989. Following acceptance, the Petty Patent application was sealed on 28 September 1990 as Petty Patent No 603760. On 10 April 1991 a notice was lodged under section 68B(3) of the Patents Act
1952 by ALAN ALEXANDER LAKE and on 28 August 1991 a further notice under section 28 of the Patents Act 1990 was filed by BAINS HARDING INDUSTRIES PTY LTD. On 21 May 1991 the patentee, BRUCE JAMES LAKE, applied for a grant of an extension of term of Petty Patent No 603760.

The matter came to hearing in Canberra on 18 February 1992.  Just prior to the hearing, Bains Harding Industries Pty Ltd advised that they no longer wished to proceed with their notice.  Mr Dennis E Barr, patent attorney, of Grant Adams & Company, represented the patentee assisted by the patentee, Bruce James Lake.  Mr. Richard K. Sheehan, associate of the patentee, was also present.  Mr Alan Alexander Lake represented himself.

The Patents Act 1990 commenced on 30 April 1991 which was after the lodgement of the section 68B(3) notice by Alan Lake. In view of regulation 23.26 of the Patents Act 1990 I need to consider the notice in the light of the provisions of the Patents Act 1952.

The submissions at the hearing were limited to the grounds specified in paragraphs (b), (c), (e), (g) and (l) of sub-section 100 (1) of the Patents Act 1952 i.e. obtaining, non-compliance with section 40, obviousness, lack of novelty and secret use.

EVIDENCE

Apart from verbal submissions provided at the hearing, both parties submitted, prior to the hearing, evidence in the form of statutory declarations which I will identify and refer to later.

During the course of the hearing the informant advised that he had additional evidence that was with his attorneys which was just about ready for submission and asked permission to file it.  The informant indicated that the nature of the evidence comprised statutory declarations from persons skilled in the art of duct cleaning, air filtration and equipment manufacture as to the common general knowledge they possessed and which was relevant in assessing US patent specification 3215560.  US3215560 was the subject of the Bains notice and on which Alan Lake made submissions in the hearing. More importantly, the informant claimed that he had in his possession certain American technical literature which would be damaging to the patent were it to be submitted.  Some evidence was filed subsequent to the hearing and I will also refer to it later.

THE PETTY PATENT SPECIFICATION

The specification commences by stating that the invention

"relates to cleaning and in particular to a process whereby ducting may be cleared of deposits of dust and other materials and contaminants."

Then follows a discussion of the prior art and its associated problems.

The object of the invention is subsequently set out as follows:

"It is an object of the present invention to provide a cleaning process which is suited to cleaning air conditioning and like supply ducts without the need to repeatedly cut access holes into the system, remove ducting for cleaning, or replace ducting as an alternative to cleaning it".

After the stated object is a consistory statement which corresponds to the claim.

A preferred embodiment is then described which is followed by the claim which reads:

"1. A cleaning process for removing deposits from  within air-conditioning ducting comprising:-

introducing a flexible air line to the ducting which is to be cleaned by which means pressurised air may be fed to a cleaning head attached to the end of the air line inside the ducting;

feeding pressurised air to the flexible air line and by it to the cleaning head, the cleaning head establishing a rearward blast of air to push the cleaning head down the ducting, drawing the flexible air line thereafter;

drawing the cleaning head back along the ducting whilst providing air at high pressure to the airline to create an air blast at the cleaning head, which air blast impinges on the ducting walls;

exhausting air from the ducting along with entrained deposits;  and

filtering the exhausted air to remove the  entrained deposits."

ANTICIPATION

The Bains Harding Industries Pty Ltd section 28 notice cites United States patent specification No 3215560 (US3215560). Although Bains Harding are no longer involved, I allowed Mr Alan Lake at the hearing, for reasons I will explain later, to make submissions with respect to US3215560.

Briefly, US3215560 deals with a method of cleaning hot air furnaces and duct systems and discloses two designs of nozzles which eject a plurality of streams of air to dislodge dust and foreign matter, the air containing the dust and foreign matter being drawn by a vacuum and discharged to a collecting station.  The disclosures of US3215560 are relied on to render the claim not novel although it is argued that US3215560 does not explicitly disclose that:

(a)compressed air is introduced into the air line to effect displacement of the cleaning head (nozzle in the citation) along the ducting towards the remote part of the ducting and

(b)the exhausted air is filtered to remove entrained deposits.

The patentee admits, as stated by Mr. Barr at the hearing, that it may be that a nozzle design similar to figure 4 of US3215560 could generate thrust as a result of compressed air discharging from the rearward facing ports to move the nozzle.  The question is "does the citation teach or disclose a nozzle that is self propelled using compressed air"?

US3215560 discloses two nozzle types.  One nozzle type (in accordance with figure 2 of the citation which shows air discharge ports at or adjacent the front of the nozzle) is used, as described, when the front of this particular model is fed towards the source of vacuum.  The other nozzle type (in accordance with figure 4 of the citation which shows corresponding air discharge ports at or adjacent the rear of the nozzle) is used, as described, when the rear of this particular model is progressively moved towards the source of vacuum.  The citation in effect states at column 2, line 44, that irrespective of which nozzle is used the pressure emanating from the air discharge ports is discharged angularly in the direction of movement towards the source of vacuum.

The nozzle shown in figure 4 is the one of most relevance in this matter since the position of the air discharge ports corresponds to the position of the air discharge ports of the cleaning head shown in figure 2 of the present specification.   With specific reference to the nozzle shown in figure 4, the citation states at column 2, line 37, "With this arrangement the nozzle 16  and flexible hose 9 are inserted through the opening 14 and forced (my emphasis) adjacent the remote end 15 of the duct 7, at which point air under pressure is caused to pass through the nozzle 16 (again my emphasis) and the nozzle and hose are progressively moved in the direction of the plenum ..."

Leaving aside for the time being the question of what the citation discloses in respect of the nozzles, what does the citation disclose with respect to filtering the exhausted air to remove entrained deposits?  The description of US3215560 is silent on what happens to the air containing entrained deposits but there is a method step in both the claims which refers to this aspect.  The step I am referring to reads:

"and, simultaneously, applying a vacuum to the furnace to draw said air containing said dislodged dust and foreign matter through said duct and said plenum and to discharge said air containing said dislodged dust and foreign matter to a collecting station." (my emphasis).

Although not specific I interpret the latter italicised phrase to mean that the air is discharged to a point where the dust and foreign matter are separated from the air.  To construe this phrase as meaning the air complete with dust and foreign matter is collected with no separation taking place would lead to an absurd result and should thus be avoided (Hendricksen v Tallon [1965] R.P.C. 434)

Subsequent to the hearing the informant, Alan Alexander Lake,  filed through his patent attorney a number of statutory declarations from people engaged in various fields of endeavour stating what their reading of US3215560 means to them.  I will briefly discuss those declarations.

David Wayne Meredith

David Wayne Meredith, states he is a refrigeration mechanic by trade and from 1987 to 1991 has been employed as Service and Sales Manager for International Filter Corporation.  He goes on to say that in that capacity he has been involved in the manufacture and supply of filters for air conditioning and ventilation systems.  He does not say that he has any experience with cleaning of air conditioning ducting or for that matter whether his experience includes experience of such ducting.  He particularly does not say that the filters of which he has experience are used in air conditioning ducting systems.  I am therefore unable to determine the extent of his experience relative to the matter at hand and hence what weight I should afford his evidence.

Mr Meredith says "I have read the patent (presumably US3215560) and understand the terms `collection station' and `application of vacuum' must in my view employ filtration and I believe it would be generally accepted within the industry to accept these words as embracing filtration as the only normally acceptable way under the circumstances to separate the air from the dust ..."

David Newberry

David Newberry states that he is Managing Director of ANSU Building Maintenance Pty Ltd and eight years ago his company started cleaning air conditioning ducts using vacuum cleaners and air movers.  He says "I do not believe there are any circumstances where one wishing to apply vacuum in a situation described in the U.S. patent (US3215560) would not employ filtration and that when one buys a vacuum unit one would also get a filter as part of the unit.  It is my understanding that it is generally known that the two go together".  He had earlier stated in his statutory declaration  "I am aware of eight other companies using similar techniques (to his own duct cleaning process) and all duct cleaning systems involved using vacuum filtration".  I note that in Newberry's duct cleaning process the majority of dust is extracted from the ducts after being dislodged by a brush from the duct walls together with the use of a vacuum.  The use of an extraction unit to draw out air and suspended dust is an ancillary procedure.

Jeremy Joseph McAtamney

Jeremy Joseph McAtamney in his statutory declaration states that he is a first class sheet metal worker and that he has been working in air conditioning and associated sheet metal work since 1971.  He further states that to his knowledge dirt contaminated ducting was discarded and replaced.  He goes on to say that he has no direct knowledge of ducting being cleaned prior to 9 November 1989 but believes this was done by using a hand brush and a vacuum cleaner.  With respect to US3215560 he says  "My understanding of a `collection station' would have to be a vacuum cleaner or the like which separates the air from the dust using filtration.  As mentioned above, I believe it was common to manually vacuum ducting and I believe that the clear impression I get from the US patent and from a practical point of view that to implement the method described, the US patent discloses to me the use of a vacuum cleaner or the like which means the air and dust are filtered after leaving hose 8.  I believe that is explicit in the US patent since collection must be via some normally acceptable method for doing this, which amongst others, includes filtration".

None of the declarants that have discussed the separation of dust from the air has submitted conclusive evidence as to why the separation would be accomplished by filtration as opposed to other methods alluded to in the McAtamney declaration e.g. by the use of a scrubber, a cyclone or an electrostatic precipitator.  I am therefore of the view that separation may take place using filtration but this is by no means certain.  To be more positive would be to use an unacceptable degree of ex post facto analysis.

Returning now to what US3215560 discloses in respect of the nozzles and in particular the nozzle shown in figure 4.

In addition to the Meredith, Newberry and McAtamney statutory declarations, statutory declarations discussing US3215560 have been submitted by Laurens Theordore Eversteyn (toolmaker), Alan Alexander Lake, John Ernest Ross (Senior Lecturer in Physics at the University of Queensland) and Trevor James Dredge (patent attorney).

Laurens Theordore Eversteyn

Statutory Declaration Filed 26 February 1992

Mr Eversteyn, being a toolmaker, should be well versed in reading drawings and he is therefore qualified to say, as he does in paragraph 5 of his statutory declaration  "I note that the specification does not provide any dimensions and the drawings do not appear to be to any clearly relatable scale".  In paragraph 6 he says  "As the discharge ports of the nozzle are facing rearward, this nozzle would be self propelled".  How Mr. Eversteyn arrived at this conclusion by merely reading the whole specification and not knowing any of the relative dimensions of the nozzle is not explained.  In paragraph 8 he says he made a nozzle in accordance with figure 4 of US3215560 and goes on to say  "It is slightly bigger than the one depicted in figure 4 of the US patent, but I could make it smaller or larger and it would still work".  Here again it is not explained how, in the absence of any dimensions, he can so conclude.  I note that in an earlier statutory declaration dated 14 February 1991 Mr Eversteyn states that in mid 1989 he made a nozzle based on the design that Bruce James Lake and Alexander Lake had jointly developed and that over the next four or five months he made varying designs of nozzles but which all incorporated the same principle.  That is, the designs "....had a central chamber ...and a number of holes drilled in the wall of the nozzle which connected the exterior with the central chamber.  The holes were angled back towards the outlet of the central chamber and were designed to permit the nozzle to be propelled by jets of air streaming therefrom".  Just how much Mr Eversteyn's knowledge of the Lake design influenced his interpretation of US3215560 is not known but he knew of the Lake design before he made his statutory declarations.

John Ernest Ross

John Ernest Ross states that the nozzle shown in figure 4 of US3215560 will experience a forward thrust when connected to air pressure greater than atmosphere.  He does not say that the nozzle will be self propelled and this is significant bearing in mind his profession as a Senior Lecturer in Physics.

Mr Meredith in his statutory statement says "I understand the nozzle of figure 4 as described in the U.S.patent to be self-propelled...".  In paragraph 5 he states "I have never operated the system described in the U.S. patent but I believe I would have to undertake some form of experimentation to apply the teaching of the U.S. patent in order to determine the correct design parameters to implement the system commercially...I do not believe there will be anything inventive in doing this.. ".  In the light of Mr. Meredith's apparent lack of qualifications and experience with respect to pneumatically driven nozzles I do not consider that he is competent to say that the nozzle of the citation will be self-propelled and he is certainly not competent to say that there is no invention involved ( Brooks v Steele and Currie 14 R.P.C.46 )

Mr Newberry in his statutory declaration states "From my knowledge of the water blasting industry ...I immediately know how the nozzle described in the U.S. patent (US3215560) is intended to work  and I know that the nozzle depicted in figure 4 of the U.S. patent would be self-propelled when pressure is applied to the airline ...."   Mr Newberry bases this observation on the fact that similar shaped nozzles are propelled by water and that the only difference is that air is being used as the propellent.  He does not say what his experience is with respect to pneumatically driven components or nozzles to back up his statement and in the absence of such evidence I doubt that Mr Newberry is qualified to make a judgement of how the nozzle of figure 4 of US3215560 would perform when subject to air pressure.

Mr McAtamney states he has extensive experience in the use of air tools.  In his statutory declaration dated 26 February 1992 with respect to US3215560 he says "My experience in the use of flexible air hoses and tools tells me that without applying air to flexible hose 9, and thereby nozzle 16, it would not be possible to force nozzle 16 around the corner depicted in Figure 1 of the US patent.  On the other hand, once pressure is applied to the nozzle 16, it would propel itself down the ducting if it was a suitable size.  To my way of thinking, the only way the nozzle 16 could get to the position (around a corner) illustrated in figure 1 is by self-propulsion as the flexible hose would just coil up if one tried to push it down the ducting.  If I were to make a nozzle like that depicted in the U.S. patent, I would see no reason to modify the nozzle in any way. ...but I would make it to suit commonly available air hose and as it would have to be self-propelled ... as I have said above." 

In his submission dated 6 March 1992 commenting on Jeremy Joseph McAtamney's statutory declaration, Dennis E Barr, patent attorney for the patentee, points out that the relevant figure of US3215560 clearly shows a register or opening which would provide access to the nozzle (or hose) to enable it to be pushed or guided around the relevant corner.  I agree that such an opening is clearly shown which could be used for the purpose outlined by Mr. Barr.   Therefore, if Mr. McAtamney is basing his statement that the nozzle is self-propelled solely on the fact that as illustrated in figure 1 the nozzle has traversed round a ducting corner I do not consider this is a good basis on which to make such a statement.  Further, Mr McAtamney in his statutory declaration does not mention his previous involvement with Alan Lake as mentioned by Alan Lake at the hearing.  Barbara Anne McAtamney in her statutory declaration recalls visiting Bruce Lake with her husband when Alan Lake was also present.  She says that during that visit, Alan and Bruce Lake, who had just come in from Bruce's shed, said they had a compressor in the shed and some duct and they did not know how much pressure they needed to make a thing they called a bullet move.  She also says it became apparent from the conversation that as the pressure to the bullet was allowed to build up and suddenly released, the bullet would move along the floor of the shed.  Jeremy McAtamney in all probability would also be privy to this information before he studied US3215560 and made his statutory declaration.   

The statutory declarations of Alan Alexander Lake and Trevor James Dredge both dated 26 February 1992 state that they witnessed tests carried out on the nozzle in Brisbane on 13 February 1992 which Mr.Eversteyn in his latter declaration says he made in accordance with figure 4 of US3215560.  This was despite the fact that in the same declaration, as mentioned previously, he says that US32155650 does not provide any dimensions and that the drawings do not appear to be to any clearly relatable scale.  Mr. Eversteyn explains that the outside dimensions of the nozzle he made were dictated by the randomly selected piece of aluminium stock he used.  He does not state how he arrived at the interior and air jet hole dimensions or their relationship to the Lake design with which he was familiar having been engaged on making prototypes.   Mr. Alan Lake states that in his opinion this particular nozzle "functions better and operates more efficiently than any of the nozzles that I used to date".  He does not elaborate on this statement.

From the evidence before me I am prepared to accept that the nozzle depicted in figure 4 of US3215560 may, if subjected to sufficient air pressure, be self-propelled, but I am not convinced it has been established this would necessarily be the case.  The real issue is what does US3215560 actually disclose.

Dennis E Barr in his submission dated 24 February 1992 states:

"At present, it appears appropriate to assess U.S. Patent No. 3215560 as a paper anticipation.  Clear and unmistakable directions to perform the Petty Patent process are not set out in it.  Propelling the cleaning head down ducts by action of compressed air is an essential step in the process.  It is not found in the U.S. specification."

Returning to what US3215560 states at column 2, line 37 viz:  "With this arrangement the nozzle 16 and flexible hose 9 are inserted through the opening 14 and forced adjacent the remote end 15 of the duct 7, at which point air under pressure is caused to pass through the nozzle 16".  I construe this to mean that the hose is inserted through the opening and then fed by use of an outside force to the remote end of the duct  When this point is reached the air to the nozzle is switched on.  To me there is no vagueness about these words - the air is not introduced until the nozzle has reached the remote end of the duct after it has been forced to this position.  I cannot see any way how these words can be construed to mean air was fed to the nozzle before it reached the remote end of the duct and hence I cannot see any reason why it should be thought the nozzle is self-propelled.  In other words the citation actually teaches away from the present invention.  In the light of the foregoing, and in the absence of any evidence to the contrary I agree with Mr. Barr's interpretation of US3215560 on this point and in so doing reject the interpretations on this point submitted on behalf of the informant.

For the purposes of sub-section 100(1)(g) of the Patents Act 1952 novelty encompasses prior publication. US3215560 compared with the claim does not meet the test for prior publication as quoted in Flour Oxidising Co. Ltd. v. Carr & Co. Ltd. (1908) 25 RPC 428 viz:

"The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The patent must be shown to have been made known.  Whatever, therefore is essential to the invention must be read out of the prior publication."

Since the step "feeding pressurised air to the flexible air line and by it to the cleaning head, the cleaning head establishing a rearward blast of air to push the cleaning head down the ducting, drawing the flexible air line thereafter" is not disclosed, the test is not met, and the claim therefore has not been prior published.

Whilst the claim does not lack novelty by way of publication,  I need also to consider whether the claim otherwise lacks novelty.  As I have already indicated, the citation does not disclose the self-propelling feature.  In deciding whether this difference or variation in the claim from the citation confers novelty I have used the Griffin v. Isaacs [1942] AOJP 739 test as set out by Dixon J. viz:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the difference as giving novelty".

Clearly, the self-propelling feature of the air driven nozzle does make a substantial contribution to the working of the thing and thus I find the claim is novel.

OBVIOUSNESS

In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claims.  (See the judgement of Aicken J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253). US3215560, being a patent specification, in the absence of evidence to the contrary, is not common general knowledge and thus cannot be considered in determining the question of obviousness. I have no evidence before me which establishes what was the common general knowledge in the art at the priority date, and therefore I am not in a position to conclude that the invention claimed is obvious.

PRIOR USE AND SECRET USE.

Although the question of prior use is normally determined as part of novelty considerations, in this instance I have reviewed the evidence in conjunction with that presented with respect to secret use since the issues are similar.

In his statutory declarations and repeated at the hearing Alan Lake stated that the invention had been worked commercially, both for financial gain and testing, at least three and possibly four times prior to the lodgement of the provisional specification.  He cited instances at the Alexandra Headlands Hotel, the Oxley SEQEB Depot and APB Baker.  Alan Lake further states that at the SEQEB job a member of SEQEB's "high staff" was in attendance because it was SEQEB's policy that any new contractors were "watched".  Mr. Alan Lake does not provide any corroboration regarding prior use.

Sub-section 100(2) of the Patents Act 1952 states "For the purposes of paragraph (1)(e) or (g), account shall not be taken of any secret use" while Sub-section 100(3)(a) states "For the purpose of paragraph (1)(l), account shall not be taken of any use of the invention, so far as claimed in any claim- for the purpose of reasonable trial or experiment only".

In Mr Barr's submission dated 25 February 1992, on behalf of the Patentee, he admits to the use taking place and goes on to explain that the use was by the nature of tests.  He states (for the purposes of testing) "All four buildings were entered after the buildings were closed to the public.  There was not public access at the times of the tests."  He goes on to say "It is submitted if the presence of a building engineer (the SEQEB official) makes a test a public test then the test remains a reasonable trial of the type where the public nature of the test was necessary.  Trials could only be conducted in buildings.  The buildings were not the property of the Patentee.  The Patentee lacked the power to exclude from the test building a building owner, or his representative such as a building engineer.  The presence or absence of a building engineer at a test site is not under the control of the Patentee.  The tests had to proceed in those circumstances if the tests were to be carried out.  Testing in buildings was necessary.  The short test duct into which dust was thrown was a poor substitute for the real thing....At each of the four buildings at which the process was trialled, the apparatus to implement the process was being developed or the effectiveness of the process was being proved".

Section 100 of the Patent Act 1952 is subject to Section 158 of that Act.  Paragraph 158(1)(h) provides :

"Objection shall not be taken to an application for a patent, so far as the invention is claimed ... in the claim of the petty patent specification ...and a patent, so far as the invention is so claimed, is not invalid, by reason only of-

the invention, so far as claimed, having been publicly worked in Australia, within one year before the priority date of that claim - by the patentee or applicant ...if the working was for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for the purpose should have been in public..."

In the absence of any evidence to the contrary and in particular in the absence of any evidence provided by people associated with the buildings where the tests took place that they had access to the invention, I am satisfied that what security could be put in place was put in place and I have no reason to conclude that the tests were conducted in public or that their purpose was for other than reasonable trials.

With regard to the informant's statement that the trials were conducted on a commercial basis there is no evidence before me to indicate to what extent, if any, payment by the building owners took place.  On behalf of the Patentee,  Mr Dennis Barr in his submission dated 25 February said  "If the tests had not been proceeded on a commercial basis, they would not have proceeded at all.  The costs associated with acquiring the apparatus, paying for labour, and fitting out that labour with satisfactory accessories are substantial.  The Patentee's personal resources did not permit funding of the tests by other means."  Notwithstanding the Patentee's admission that the costs of the tests were fully or partially met, in the absence of evidence that any payments received went beyond covering the costs of the tests I am not persuaded that the tests comprised use of the invention on a commercial scale. Taking into consideration that the informant himself has stated that the invention was worked in the cited instances for the purpose of testing I conclude that what use there was of the invention before the priority date does not invalidate the patent.

SUFFICIENCY

The preferred embodiment describes a recirculating air scheme whereby air, having passed through the filter arrangement to remove the entrained deposits, is directed to an air compressor for pressurising and thus becomes the source of pressurised air.  At the hearing Alan Lake stated that Bruce Lake's equipment did not do this and therefore the invention had not been fully described.  Mr Dennis Barr, on behalf of the patentee, said it was true that the equipment Alan Lake may have seen did not have the air recirculating facility but this was not necessary to work the invention and was not included in the claim.  He went on to say that a recirculating air scheme could well be incorporated sometime in the future.

In deciding whether the specification fails because of insufficiency I will use the guide set out by Romer L.J. in No‑Fume Ltd v Pitchford (Frank) & Co. (1935) 52 RPC 231 where at page 243 he said:

"... if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid.

The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has to be stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty?  If he can, then the description of the specification is sufficient.  If he cannot, the patent will be void for insufficiency."

Bearing in mind that the claim does not include as a part of the process the air recirculating feature and as I do not consider that working the invention without recirculating the air requires any exercise of inventive ingenuity I conclude that the specification does not fail on the ground of insufficiency.

OBTAINING

Evidence on Obtaining

In the letter from Cullen & Co (Alan Lake's original attorneys) dated 10 April 1991 containing the Section 68B(3) information it was stated that the air conditioning duct cleaning process which is the subject of this Petty Patent was developed jointly by the brothers Alan Lake and Bruce Lake.

Basically, according to the statements made by Alan Lake in his statutory declarations and at the hearing, the period of development and conceivement of the idea of cleaning ducts as per the claimed process was initially a joint venture between Alan Lake and Bruce Lake and subsequently, Neville Lake made a contribution as did Ronald Cooper to some extent.

Alan Lake claimed that it was always meant to be a joint venture.  He explained that Bruce and himself were two of a family of fourteen children and, of all the family, prior to the present differences, he and Bruce were the closest doing everything together.  Because they were `family' and had absolute trust in each other no written legal agreements with respect to the invention or a partnership were drawn up.  Alan Lake considered that, because of his relationship with Bruce, they worked together as a partnership on all projects where they (Alan and Bruce) were jointly involved.

Alan Lake said that the idea of using a "bullet" was Bruce Lake's initially since he had the experience in drain cleaning where an almost identically shaped nozzle driven by water at high pressure is used.  Since it is not practical to use a water driven nozzle (bullet) in air conditioning ducting because of potential leakage problems, a nozzle adapted to be driven by compressed air was chosen.

The original hexagonal shaped billet used to make the first prototype was selected from a collection of odds and ends that Bruce Lake had in his garage.  Alan Lake claimed in his first statutory declaration that he started making the bullet nozzle by drilling a .375 mm diameter chamber along the central axis of the billet.  In his statutory declaration dated 14 February 1992 this dimension was corrected to .375 cm (about 1/8") diameter as was the dimension of the diameter of plastic tubing mentioned in paragraph 5 of the original statutory declaration dated 14 February 1991. In accordance with the statutory declaration dated 14 February 1992 which specifically corrected the original declaration Alan Lake in effect states that he drilled a central chamber of about 1/8" diameter in the hexagonal billet. Afterwards a piece of copper tube of about 1/8" diameter was brazed to the billet and thereafter a length of about 1/8" diameter plastic tubing was connected to the copper tube.  At the hearing Alan Lake stated that the diameter of the copper pipe was 3/8" diameter as was the diameter of the air hose which was connected to it.  I will return to the discrepancies in the dimensions later.

Alan Lake stated that after the initial testing, (which according to his statutory declaration dated 14 February 1991 took place in a section of dirty ducting that had been salvaged from a job), it was common sense that you could not have all the dust and dirt that was blowing around blow out into the building that was being cleaned.  There had to be some way of collecting it and so the question of filtration and extraction was raised during the first few months of experimentation in 1986.  According to Alan Lake, neither his brother nor himself were at that time aware of commercially available filtration or extraction products. At that stage all that was apparent was that there had to be some way of drawing the dirty air through some sort of filtration and blowing clean air out of the other side.  The question of cleaning ducting was given added impetus following the Legionnaires Disease scare.  That is when the filtration system was secured.  This was done according to Alan Lake by his discovery of the "missing link" for getting the invention into a practical working form, the "missing link" being a "vacuum box" which Alan Lake had come across when employed removing asbestos fibres from air conditioning ducting in the Suncorp Building.  The "vacuum box" comprised two boxes, one of which was a filter box and the other a fan box.  Alan Lake claims he introduced Bruce Lake to the "vacuum box" in May 1989.  Measurements of the box were taken at that time and Alan Lake claims that the scrap of paper supplied as exhibit AAL1 is the piece of paper on which he wrote down the measurements.

Alan Lake stated that once the idea of the "vacuum box" had been secured, a suitable fan and filter had to be located and housing made to  make up the box.  With regard to the vacuum box housing, Alan Lake claims that he designed it, drew it and cut it out, the only contribution by Bruce Lake being that he welded the pieces together.  This fact, according to Alan Lake, concludes that Bruce Lake and himself were co-inventors and that he (Alan Lake) was not just a casual observer.

Alan Lake claims that he introduced Bruce Lake to an Email fan/filter system in May or June 1989 which was being used in the Commonwealth Bank Building but that this system was not sufficiently powerful and therefore not used.  He also says that in May 1989, the same day that Bruce Lake and himself had visited Mr Allan Wilson, who was then at the Department of Health, he introduced Bruce Lake to pyratube filters at the Ipswich Commonwealth Offices.  Alan Lake says that in July Bruce Lake found a suitable fan and it was subsequent to this that he (Alan Lake) started work on the vacuum box housing.

Summarising Alan Lake's claims with respect to his contribution to the invention:

(a)He was in at the discussions on the invention right from the beginning.

(b)He made or helped make the first  prototype and was involved in the initial testing using old dirty ducting.

(c)He introduced Bruce Lake to the Email fan/filter system and pyracube filters in May or June of 1989.

(d)He recorded the measurements of the "vacuum box" in the Suncorp Building in May 1989 and has the record to prove it.

(e)He designed and made the basic parts of the vacuum filter box housing used in the invention.

Bruce Lake in his statutory declaration dated 17 August 1991 states that he:

"got the idea that ducts might be cleaned when I saw the junk in the duct at the Spastic Centre.... That after seeing the dirt in the ducting at the Spastic Centre, I decided they should be cleaned and started work to develop the idea.  I thought of the device that I once used for cleaning drains with water...this was like a steel bullet with holes towards one end...My idea was to drive a device by air as electricity was too dangerous in metal ducts...I made my first gadget out of a small car piston, which had a convenient central bore, in my workshop at home...It was unsatisfactory but showed possibilities...I knew what I wanted but without a lathe, I couldn't make it.  I made one out of an oil pick up bolt out of a motor car.  This also had a convenient central bore.  I brazed a piece of copper pipe into it and again drilled holes into its sides.  This also had possibilities.   One day my brothers Neville Lake and Alan Alexander Lake came to visit me and I demonstrated the idea to them on the shed floor.  I showed how a bullet pulled itself along the floor of my workshop and also in a drain outside my workshop using a very small compressor (approximately 6 cfm).  That contrary to the Declaration of Alan Alexander Lake,  I did not have any hexagonal brass billets....That the oil pick up bolt has a hexagonal head ...over a cylindrical externally threaded,  coaxial projection with about a 12 mm bore therein into the head.  The 12 mm bore has a length of 12 mm outside diameter copper tube brazed therein and a further length of 10 mm copper tube brazed into the 12 mm tube ...A number of holes are drilled into the shoulder below the head around the base of the cylindrical head. I still have this device."

Further on in the declaration he says that he had no dirty salvaged ducting to test the device as suggested by Alan Lake and, when describing a specially built length of experimental ducting Bruce Lake says "One side panel had a round hole which I cut which an exhaust fan could be attached(sic).  The fan was butted into this hole."  Still further on in the declaration he says "That contrary to the statement of ALAN ALEXANDER LAKE, the problem of exhausting dust from the ducting was solved.  The exhaust fan provided that solution.  The problems that remained were more of adapting the test device to use in an actual building".

In paragraphs 27 to 29 of his statutory declaration Bruce Lake says:

"That in February 1989 I contacted Mr GRAHAM LAMBERT of Email Westinghouse ...with the aim of discussing a filtration system I had in mind.  By way of confirming the date, attached hereto as "EXHIBIT BLJ10" is a copy of a Statutory Declaration of GRAHAM LAMBERT which I think is with my Solicitor.  My idea was to use a giant vacuum cleaner.  GRAHAM designed a box to mount to a negative air unit which would carry a pyracube filter.  We also discussed the removal of asbestos and he advised me on appropriate filters and the like.  He visited my mower shop at Cribb Street,  Landsborough on 13 May 1989.  Attached hereto as "EXHIBIT BJL11" are two drawings of my negative air units supplied by GRAHAM LAMBERT.  That in May 1989 I took delivery of a negative air unit from Email Westinghouse.  When I tried it out at the mower shop, it was not what I wanted so I took it back for refund the next day.  That in May 1989 I visited the Suncorp Building ... with ALAN ALEXANDER LAKE to see the results of cleaning a duct which he said he and another worker for Impact Air had cleaned by hooking a fan unit to the duct.  A company, Sarcon, was removing asbestos and Impact Air was asked to suck out the ducts.  I inspected the fan box and duct.  The fan system was similar to the one GRAHAM LAMBERT told me about.  I took measurements of the housings and identifying marks.  Annexed hereto marked "EXHIBIT BLJ01" is a copy of the scrap of cardboard on which I noted the measurements.  There was no information on the actual fan itself.  We could not see a maker's ID plate on it.  After discovering that the suction was not powerful enough for my requirements, I gave it no more thought.  We also visited Alan Wilson of the Health Department that same day."

Comparing Alan Lake's claims with Bruce Lake's responses:

(a)Alan Lake has it that he made or helped make the initial prototype, was in at the initial discussions on the invention and was involved in the testing of the prototype.  Bruce Lake has it that he thought of the genesis of the invention and made the first working bullet nozzle prototype so that he was in a position to demonstrate the basis of his invention to his brothers Neville and Alan when they visited him.

(b)Alan Lake has it that testing was carried out in old salvaged ducting.  Bruce Lake has it that a length of new ducting made up of metal sheets had to be produced for testing purposes.

(c)Alan Lake has it that he introduced Bruce Lake to the Email fan/filter system in May or June 1989.  Bruce Lake has it that he discussed such systems with Mr Graham Lambert of Email in February 1989 who designed a box to which an Email negative air unit could be mounted and took delivery of an Email unit on 13 May 1989.

(d)Alan Lake has it that he recorded measurements of the "vacuum box" in the Suncorp Building in May 1989 and has the record to prove it (Exhibit AAL-1).  Bruce Lake has it that he recorded the measurements of the "vacuum-box" in the Suncorp Building in May 1989 and has the record to prove it (Exhibit BLJ01).

(e)Alan Lake has it that he designed and made the basic parts of the vacuum filter box housing used in the invention.  Bruce Lake has it that Graham Lambert designed a box to mount to a negative air unit which would carry a pyracube filter.

Comparing Alan Lake's claims with Bruce Lake's responses does
not help in determining the inventor since for each of Alan
Lake's claims, Bruce Lake has a counterclaim.

Considering now the statutory declarations submitted on behalf of Alan Lake with respect to obtaining other than those by Alan Lake:

Robert Andrew Boyton

Mr Boyton says that he is personally acquainted with Bruce and Alan Lake and that he worked with Alan Lake at Impact Air Pty Ltd in 1989.  He says that he was aware that Alan Lake was developing a housing for a fan and filter to be used with a compressed air conditioning duct cleaning system that Alan Lake had been working on with Bruce Lake and that he was privy to the process and apparatus, the process being the same as that claimed in Petty Patent specification 603760.

He does not say how he was aware of Alan Lake's involvement nor does he say what he knew about the process and apparatus or how he came by any knowledge.  In particular he does not say why his knowledge with respect to the housing that Alan Lake was developing is relevant since there is no particular housing described or claimed in Petty Patent specification 603760.

Graham John Lake

Mr Graham Lake says he is the brother of Bruce and Alan Lake and that he either attended or was privy to the initial stages of the development of the duct cleaning system and apparatus which was being jointly developed by Bruce and Alan Lake.  He confirms that the process claimed in Petty Patent specification 603760 is the same as the process Bruce and Alan Lake were developing over the period 1986 to 1989.

Mr Graham Lake does not say what particular contribution either Alan Lake or Bruce Lake made to the claimed invention, what were the initial stages of the development of the duct cleaning system and apparatus and just where he attended the initial stages.

Richard Duncan Wild

Mr Wild says he was the Queensland Manager of Impact Air Pty Ltd when Alan Lake was an employee from March 1989 to March 1990.  He says that in May 1989 Alan Lake informed him of a system for cleaning air conditioning systems with compressed air and a uniquely designed nozzle, which he had been developing with his brother, Bruce Lake, and that he and his brother were looking for a system for cleaning the dirt laden air expelled from the cleaning equipment.  He further says that Alan Lake asked him to speak to Bruce Lake to help sort out a suitable fan to develop the necessary air volume and suction pressure, which he did in May 1989.  In July 1989 he says Alan Lake asked him whether he (Alan Lake) and Bruce Lake could use the workshop of Impact Air Pty Ltd for the construction of a housing to accommodate a fan and filters for their duct cleaning system and that he allowed the brothers the use of the workshop.

Mr Wild does not give any details of the system other than he was told it has a uniquely designed nozzle.  Neither does he say he was present when the Lake brothers used the workshop of Impact Air Pty Ltd.

Laurens Theordore Eversteyn

Statutory Declaration Dated 14 February 1991.

Mr Eversteyn says that he is personally acquainted with Bruce and Alan Lake and that in May or June of 1989 he was asked by Alan Lake and Neville Lake (a brother of Alan Lake) to manufacture a nozzle for use in air conditioning ducting based on the design which Bruce Lake and Alan Lake had jointly developed.  He says he was asked to make any necessary workshop alterations or any obvious improvements in the design and that Alan Lake paid him for making the nozzle.

Mr Eversteyn does not say whether he worked to a design drawing or copied a prototype.  More importantly, he does not say how he knew the design was jointly developed by Bruce and Alan Lake or whether he discussed the design with Bruce Lake.

Barry Ronald Ladewick

Mr Ladewick says he is personally acquainted with Bruce Lake and Alan Lake and that in 1986 he supplied a compressor to Bruce Lake for the purpose of carrying out experiments with nozzles for use in cleaning air conditioning ducting.  He says that when he supplied the air compressor he understood that Bruce Lake and Alan Lake were jointly experimenting to determine if it was possible to effectively use compressed air for duct cleaning.  He further says that he attended Bruce Lake's garage on several occasions during 1986 when Alan Lake was present and witnessed ducting being cleaned with a nozzle connected to his air compressor by a flexible hose. He states that Alan Lake was clearly involved in the development of the cleaning system.

Other than stating that Mr Alan Lake was present when he witnessed ducting being cleaned, Mr Ladewick does not say how he knew Alan Lake was clearly involved in the development of the cleaning system or how he concluded his understanding that Bruce and Alan Lake were jointly experimenting.

Allan Wilson

Statutory Declaration Dated 8 March 1991.

Mr Wilson says that he was previously with the Department of Health and that in May 1989 Bruce and Alan Lake visited him at the Department and discussed their jointly developed system for cleaning air conditioning ducting.

Mr Wilson does not say how he knew who was developing the system and does not give any details he can recall of the discussion.

Barbara Anne Mcatamney

Mrs McAtamney says she recalls visiting Bruce Lake's home where she met Bruce Lake and Alan Lake.  She recounts the conversation she had with Bruce and Alan Lake, which I have already considered under the heading ANTICIPATION, and states that on at least six occasions she saw Alan Lake working on a fan box at Bruce Lake's shop which she says she was told was to be used in the duct cleaning system.  She then says that the impression she formed from all her discussions with the Lakes and their relatives was that Bruce and Alan Lake were joint inventors of the duct cleaning system as they had developed it together and had intended to exploit it together.

According to Mrs McAtamney's evidence the only time she actually saw any equipment was at Bruce Lake's shop where she says she saw Alan Lake working on a fan box, which is not part of the present invention.  The rest of Mrs McAtamney's evidence is based on conversations in which she was involved.  She says she was only able to form the impression that Bruce Lake and Alan Lake were joint inventors of the  duct cleaning system.  Mrs McAtamney apparently is not in a position to provide any specific evidence to verify her statement that Bruce Lake and Alan Lake developed the invention together or how she knows the brothers intended to exploit the invention together.

Holly Anne Lake

Mrs Holly Lake says she is Alan Lake's wife and prior to the present dispute the two families (Mr and Mrs Bruce Lake and Mr and Mrs Alan Lake) would often visit each other and during these visits, Bruce Lake and Alan Lake spent much of their time discussing their ideas for the duct cleaning system.  Since Bruce Lake and Alan Lake had been in so many joint ventures over the years she says she had the impression that the duct cleaning idea was another one, the impression having been obtained from her discussions with Mr and Mrs Bruce Lake and her husband.  Mrs Holly Lake says she recalls Bruce Lake showing Alan Lake a brochure with a nozzle that squirted water which she understood was for cleaning drains.  She also recalls both Bruce Lake and Alan Lake having the idea of some kind of fan box for which she understood her husband assumed responsibility for designing since he had the experience in sheet metal work.  She recounts how her husband would sketch his ideas at home and how when Bruce Lake visited, Bruce Lake would make his contribution.  Mrs Holly Lake says that as far as she is concerned, it is not possible for her to conclude who actually contributed what detail to the duct cleaning system but she cannot see how the system could be considered as being developed either by Alan Lake or Bruce Lake alone, because they were both closely involved in the development from the very early stages until the system was put in practice.

Considering now the statutory declarations submitted on behalf of Bruce Lake and their relevance to confirming or otherwise Alan Lake's claims.

Alan Wilson

Statutory Declaration Dated 13 August 1991.

In this statutory declaration Mr. Wilson says in reference to his earlier statutory declaration dated 8 March 1991 that his belief  that air conditioning ducting cleaning system was jointly developed by Bruce Lake and Alan Lake simply arose as a conclusion based on the fact that both appeared in his office to talk about the system.  This statement in effect negates Mr Wilson's earlier declaration.

Warren England

Mr England says he is the Manager of Coolmaster Air Conditioning and that in approximately July-August 1986, while working at the Rocklea Spastic Centre, Bruce Lake suggested to him that there was a market for a duct cleaning method to which Mr England says he answered "Yes".  Mr England's declaration confirms Bruce Lake's evidence to the extent that Bruce Lake was at least thinking about the duct cleaning system as early as July 1986. 

Mark Timothy Beattie

Mr Beattie says he was the site foreman for Coolmaster Air Conditioning in 1986 when he supervised the brothers Graham, Bruce and Alan Lake when all three were involved in site duct erection and factory duct manufacture.  During this period Bruce Lake was the only person to raise the possibility of duct cleaning.

Russell Raymond Paterson

Mr Paterson says that in April 1987 when Bruce Lake hired a 85 cfm compressor he told him he was developing a method to clean air conditioning ducting.

Garry Dunstan

Mr Dunstan says he is a qualified refrigeration mechanic and served his apprenticeship with Carrier Air Conditioning Pty Ltd.  He says he lives adjacent to Bruce Lake and in early 1987, because he heard a diesel compressor and saw a lot of dust coming from Bruce Lake's garage his curiosity led him to see what was going on.  He goes on to say he saw metal panels put together to resemble a duct approximately 20 feet long with a small grey centrifugal fan on one side.  Bruce Lake showed him how it worked and Mr Dunstan describes seeing a bullet shaped object which was attached to an airline introduced into the makeshift duct and, when the air was switched on, the device pulled itself into the duct and thrashed around expelling a very large amount of sand, dirt and dust via the small centrifugal fan.  He states that his house is only 20 metres away from Bruce Lake's garage and at no time did he see Alan Lake working on or with this equipment saying that in fact, Bruce Lake was working alone.

Ronald Cooper

Mr Cooper says that in December 1988 whilst helping Bruce Lake in his mower shop Bruce Lake told him of his ideas for duct cleaning and of the gadget he had invented that used compressed air to drive it along the ducting and, when withdrawn, then blew all the dirt and other bits and pieces backwards to the point of entry.  In January 1989 he was given a practical demonstration and at that time Bruce Lake told him that he had tried out a system for taking out the dirt and stuff from some home made ducting using a small extractor fan but that he would need a stronger fan and some way of filtering the air.  He goes on to say that while helping out at the mower shop a Mr Lambert from Email-Westinghouse called to see Bruce Lake for further discussions on an extractor unit and filter system suitable for use with Bruce Lake's invention.  He says Mr Lambert drew up ideas of how to make a box for holding the filters and how to make it so it would be removable and sealable.  Bruce Lake ordered a fan unit from Mr Lambert but when they (Ronald Cooper and Bruce Lake) tried it out Bruce Lake said it was not as powerful as he had been led to believe and that he would take it back.  He then goes on to say

"Bruce phoned his brother and asked him to ask his boss if he would let Bruce, with Alan's help, make two boxes, one for holding the fan, and one for the filters.  He (Bruce) then went to Impact Air one evening and with his brother's help, made two casings and frames to specification and sizes that Bruce took down with him.  The next morning when I went to the mower shop, I helped Bruce unload the boxes.  Then we proceeded to try out different ideas on the frames.  When the fan was tried in the casing, we realised the floor would have to be strengthened.  The switchbox was on top of the casing   we removed it and fitted it on to the end.  We also had to do some reconstructing to the casing that would house the filter.  This was all done by trial and error.   Although Alan came down occasionally at weekends, most of this work was done by Bruce and myself."

Mr Cooper also states in the declaration

"When Alan came to the mower shop to stake his claim to a 50% share in the system in my presence, the basis of his claim was the designing of the blower fan which is wrong because the one we used at the Alexandra Headlands Hotel was the one that was built at the mower shop.  The only part that Alan had any dealings with was the cabinet which Bruce also altered and improved on."

Decision on Obtaining

In considering the evidence I have extracted those portions which I find of relevance.  Much of the evidence is conflicting while some reflects opinion rather than fact.

To prove obtaining, it is necessary for certain requirements to be satisfied.  Thus it must be established:

(a)what the invention is that has allegedly been obtained;

(b)whose invention it was when the alleged obtaining occurred;

(c)that the claim defines, or includes within its ambit, the invention allegedly obtained, and

(d)that the patentee actually obtained the invention from the informant, or from a person of whom the informant is the legal representative, assignee, agent or attorney, prior to the priority date of the claim.

(See Massey v Noack 11 IPR 632)

Although I have considered and compared Alan Lake's claims against Bruce Lake's responses I now need to consider all the evidence to determine the veracity of those claims in the context of the requirements to prove obtaining.

I have already concluded that the self-propelling feature of the air driven nozzle confers novelty on the claim over the prior art, hence it must be shown that an invention including this feature has been obtained.

Alan Lake in his first statutory declaration admitted that using a bullet nozzle was Bruce Lake's idea.  Bruce Lake says in his statutory declaration that the idea of driving the bullet by compressed air came to him after thinking of the water driven device he had used when cleaning drains.  Alan Lake says that the idea of driving the bullet by air  "was brought up during our discussion"  and does not say whose idea it was to use compressed air to drive the bullet, however on a matter of such importance to his claims, it is unlikely that he would not say it was him if that was the case.

Now to the prototype bullets.  Alan Lake claims that a hexagonal brass billet approximately 50 mm long and 20 mm in diameter selected from Bruce Lake's "bits and pieces" was used to make the first prototype bullet nozzle and that he drilled a .375 cm (about 1/8") diameter chamber in it.  Alan Lake is adamant that the billet was originally solid without any holes.  He claims that a piece of about 1/8" diameter copper tube was brazed to the billet and that afterwards he drilled a number of smaller holes, angled backwardly, through the walls of the billet to communicate with the 1/8" diameter chamber.  All this was done with a hand drill.

Bruce Lake claims that he made the first prototypes himself out of old car parts, the first being a small piston and the second an oil pick up bolt. Both parts had convenient central bores.  He says he drilled several radial holes angled back to the bore and brazed a copper pipe into the bore.  Bruce Lake produced what he claimed to be the second prototype he made at the hearing in Alan Lake's presence for me to examine.  It was made of brass, had a hexagonal shaped head and a threaded shank with a copper pipe of about 3/8" diameter brazed into the bore at one end while the other end of the bore was brazed closed and matched Bruce Lake's original description.  In his statutory declaration Bruce Lake states it was this prototype he used to demonstrate to his brothers, Alan and Neville, using a small compressor, how his idea worked.  He was able to show how the bullet pulled itself along the floor of his workshop and also in a drain.  Alan Lake did not deny that the modified car part shown to me was one of the first prototypes.

Faced with the conflicting evidence, and having seen what Bruce Lake describes as the oil pick up bolt prototype, I am inclined to the view that Bruce Lake's version of events of how the prototypes came into being is the more feasible. I base this view on the following observations:

(a)The second prototype described by Bruce Lake matched that produced by him at the hearing.

(b)Although this prototype was produced in Alan Lake's presence at the hearing, Alan Lake did not dispute the veracity of Bruce Lake's statement that this was indeed the second prototype.

(c)Alan Lake did not proffer any explanation of what happened to the prototype made from the solid billet in which he claimed to have drilled the central chamber having around a 1/8" diameter bore.

(d)I find it difficult to accept that anybody faced with the task of making a prototype and only having a hand drill would choose to start with a solid hexagonal billet when a suitable component which already had a central bore was available.

(e)Even if only a solid hexagonal billet of around 20 mm diameter was available, it is my opinion (based on my experience) that the chances of successfully using a hand drill to drill a 1/8" diameter central chamber and then thereafter drilling smaller holes backwardly in from the side of the billet to intersect the bore to make a prototype that worked would be minimal, bearing in mind the angles involved.

Reviewing now the evidence submitted on behalf of Alan Lake for the purpose of determining what, if any, was Alan Lake's contribution to the invention.  This evidence gives rise to the following observations:

(a)Graham Lake says he either attended or was privy to the initial stages of development.  He does not say what the initial stages were or what Alan Lake contributed to them. Without this information, Graham Lake's evidence does not establish anything of relevance.

(b)Richard Wild admits that his knowledge of the duct cleaning system was derived from his discussions with Alan Lake and Bruce Lake.  He is not in a position to say what contribution to the invention either Alan Lake or Bruce Lake made.

(c)Laurens Eversteyn does not say how he knew that the duct cleaning system was jointly developed by Bruce and Alan Lake.

(d)Barry Ladewick does not say how he knew Alan Lake was involved in the development of the duct cleaning system or how he concluded that Bruce and Alan Lake were jointly experimenting.

(e)Allan Wilson has admitted by his second declaration that he is unable to say that Alan Lake and Bruce Lake were jointly involved in the development of the duct cleaning system.

(f)Barbara McAtamney and Holly Lake both state that they gained the impression that Alan Lake And Bruce Lake were jointly involved in the development of the system.  Neither is able to present any firm evidence as to what contribution Alan Lake or Bruce Lake made to the invention.

(g)Both Alan Lake and Bruce Lake have made reference to Neville Lake's presence when the system was being tested.  As Graham Lake's evidence was so brief that it did not add anything of relevance, evidence by Neville Lake would have been beneficial particularly since it has been said the idea of a round bullet was his.  However, for whatever reason, I do not have the benefit of any evidence by Neville Lake.

(h)Much has been said about Alan Lake's contribution to the development of a "vacuum box" for the system but, as stated previously, a special "vacuum box" is neither described nor is part of the claim of Petty Patent 603760.

Alan Lake mentioned at the hearing that Bruce Lake was in the box seat since the latter already had the petty patent granted to him.  Alan Lake was on very good ground when he said this since it is established law that the onus is on the opponent (informant) to make out a clear case.  Only if a clear case is made out can there be any finding in favour of the informant: see MontecatiniEdisonSpAvEastmanKodakCo (1971) 45 ALJR 593 at 595.

My overall assessment of the evidence leaves me in doubt as to what (if any) involvement (both conceptual and developmental) Alan Lake had in the invention claimed.  The evidence indicates the idea of using a bullet nozzle to be powered (down a duct) by compressed air arose in the mind of Bruce Lake.  Since I cannot find any clear supporting evidence for Alan Lake's claims that he contributed to the invention as claimed and since he has not satisfied the requirements that must be established to prove obtaining, I am unable to find in his favour on this ground. 

PARTNERSHIP

Alan Lake has asserted that in the formative stages of the invention a partnership existed between Bruce Lake and himself. He makes this claim on the basis that prior to the present falling out, Bruce and himself were involved in, and shared, many projects together.  He says he had every reason to believe that the duct cleaning project would be no different and it was not until late July 1989, when he mentioned to Bruce Lake about development and insurance costs, that Bruce Lake advised him a partnership no longer existed.

It may be that Alan Lake honestly believed that his involvement with Bruce Lake was such that if the duct cleaning project came to anything he would automatically be included.  As Alan Lake has said, he had no reason to distrust his brother and therefore there was no reason why legal documentation should have been needed to formalise the brothers' business relationship.  Evidently, Bruce Lake did not share the view that Alan Lake and himself were in partnership and, without corroborating evidence to the contrary, I am unable to find that Alan Lake has an entitlement to the invention on the ground that he was a business partner of Bruce Lake. 

LATE EVIDENCE

In the case of Murray Joseph Wright v Ajax Davey Pty Ltd 9 IPR 77 Supervising Examiner T R Bruhn said at page 80:

"In my view the Patents Act and the Regulations permit an informant to provide the Commissioner within 11 months of the sealing of the petty patent the notice under sub-s 68B(3) together with a statement of facts including any supporting evidence: see Vulcan Australia Ltd v Braemar Appliances Pty Ltd (1985) 6 IPR 143. The question of the admissibility of evidence provided by the informant after 11 months, or provided by the patentee beyond the period allowed by the Commissioner, is a matter to be determined given the circumstances and merits of each case".

In the case of Komesaroff v Mizzi and Another 9 IPR 457 Acting Deputy Commissioner of Patents G Baker decided that he would admit evidence lodged outside the 11 month period allowed by sub-s 68B(3) under sub-ss 68B(5), (6) and (7), which requires that the Commissioner shall consider all material which has been brought to his attention, but that the weight given this late evidence be less than the evidence lodged within the 11 months.

In the present case Alan Lake stated at the hearing that he had just within the last few days engaged a new firm of Patent Attorneys to prepare evidence on his behalf and that this evidence was all but ready for filing.  More importantly, he said he had evidence in the form of American technical trade literature which would be fatal, if filed, to the validity of the Petty Patent.  He asked permission to file this evidence. I explained that the time to lodge evidence under sub-s68B(3) had expired but that a precedent had been set in Komesaroff v Mizzi in that evidence lodged late had been considered by the Commissioner in the public interest but that it had not been afforded the same weight as evidence lodged within the statutory 11 month period.  I then asked Alan Lake whether the nature of the evidence he wished to file was such as to affect the validity of the Petty Patent and since he answered in the affirmative I allowed him 7 days in which to file his further evidence.

In the event, the late filed evidence does not include any technical trade literature and in effect comprises evidence supporting the grounds raised by Alan Lake either before or during the hearing.  Since none of this late filed evidence is crucial to the outcome I do not have to consider what weight I should afford it.  I note however that the extra time I allowed Alan Lake to complete his evidence was based in part on the expectation that the technical trade literature he said he was in a position to file would in fact be filed and that the nature of this literature promised to affect the validity of the Petty Patent.  To this extent the informant partially obtained extra time to file his further evidence on grounds that he did not completely fulfil.  As a consequence I have formed the view that although the Commissioner is required to consider all evidence before him before reaching a decision paying due regard to the nature of the evidence, the stage of the proceedings and what weight should be afforded the evidence, this does not mean that evidence that should have been filed during the statutory 11 month period can be filed late as a matter of right on the basis that it is in the public interest.  Clearly, it is not in the public interest for the Commissioner, when endeavouring to decide a matter, to be continually presented with new material which a party may consider relevant to the proceedings, thereby causing undue delay.

Allied to the Komesaroff v Mizzi decision I allowed Alan Lake to make submissions on US3215560 at the hearing and to subsequently file particular evidence in relation to it.  I did this given that this Patent Specification was already before me by way of the Bains Harding Industries Pty Ltd notice and was a matter I needed to consider under sub-ss 68B(5), (6) and (7).  In addition, Alan Lake's submissions would enable me to arrive at a more informed conclusion regarding the validity of the petty patent. 

SPECIAL PLEA

At the Hearing Alan Lake asked me to take into account the fact that he currently employed seven people and, if the case went against him, it was likely that their future would be at stake.
While I can understand this position, it is not one which I can properly take into account in reaching a decision.

SUMMARY

I find Alan Alexander Lake has not succeeded in proving any of the grounds he raised with respect to his Section 68B(3) notice and accordingly I find that there is no impediment to the term of Petty Patent No 603760 being extended. Accordingly. I grant an extension of the term of Petty Patent 603760.

COSTS

Having found that Alan Alexander Lake has not succeeded in proving any of the grounds with respect to his Section 68B(3) notice I cannot see any reason why costs should not follow the event and I therefore award costs against Alan Alexander Lake.

J.M. SELLARS
Delegate of the Commissioner of Patents

Patent Attorney for the patentee : Grant Adams & Company, Brisbane

Patent Attorney for the informant: Trevor Dredge & Associates, Brisbane