Bundaberg Foundry Engineers Limited v the Track Shop Pty Ltd - [2005] APO 54

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 753802 in the name of THE TRACK SHOP PTY LTD

Title: MILL ROLLERS AND ABRASION RESISTANT SURFACE COATINGS FOR MILL ROLLERS

Action: Opposition under sec. 59 of the Patents Act 1990 by BUNDABERG FOUNDRY ENGINEERS LIMITED

Decision: Issued 07 December 2005
Abstract

This application relates to a sugar mill roller for crushing cane and a method of manufacturing such a roller. In particular, according to the invention multiple weld deposits supporting a wear resistant material in grit-like form are made upon machined circumferential ridges formed on the roller to enhance the roller’s ability to grip the sugar cane and to extend the intervening periods between which the weld deposits need to be renewed. It was known in the prior art to apply multiple weld deposits having particulate material within the weld matrix, but there was no indication in the disclosure and in the technical evidence in this matter that these particles were of a sufficient size to be considered “grit-like”, as that term was to be construed in the specification.

An instance of prior use of the invention during experimentation was held to not be public prior use because of the existence of formal confidentiality agreements in place and because of an implied duty of confidence arising out of an employer-employee relationship.

The invention was also held to involve an inventive step in light of the common general knowledge in the field of the invention. While each integer of at least the broadest claims might be considered to be common general knowledge, the bringing together of those integers would seem to have about it the character of an inventive step. A document which was established to have been held in the library of an Australian research institute two years before the priority date of the claims was found to be not available for consideration for inventive step purposes because the evidence did not suffice to establish that it could have been reasonably expected to have been ascertained by the person skilled in the art.

The opposition was dismissed, and costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 753802 by The Trackshop Pty Ltd, and an opposition thereto by Bundaberg Foundry Engineers Limited under section 59 of the Patents Act 1990.

BACKGROUND

Application 753802 was filed under the Patent Cooperation Treaty as International Application PCT/AU1998/000074 by The Trackshop Pty Ltd on 10 February 1998, claiming priority from Australian provisional applications PO5047 and PO6499 filed on 10 February 1997 and 30 April 1997, respectively. The inventor is listed as Timothy Stuart Falkenhagen. Australia was one of the countries designated in relation to the PCT application. PCT/AU1998/000074 was published under the PCT as WO 1998/034729 on 13 August 1998, and in Australia was allocated the application number 58482/98. The application entered the national phase of processing on 2 August 1999, having undergone international preliminary examination under the PCT. After being subjected to national examination, the application was advertised accepted on 31 October 2002 and given the six-figure number 753802.

Petty patent application 23806/99 had been filed on 15 April 1999 as a divisional application of application 58482/98. A petty patent was sealed on this petty patent application on 15 July 1999 and allocated the six-figure number 707580. Subsequently an application under section 69 of the Patents Act (as it then was) for an extension of the term of the petty patent was made, but two persons filed notifications under section 28 of the Act asserting that the petty patent was invalid. Following a hearing, a delegate of the Commissioner of Patents issued a decision in which he found that claim 1 of the petty patent lacked novelty: The Track Shop Pty Ltd v Bundaberg Foundry Engineers Limitedand The Sugar Research Institute [2001] APO 46.

A notice of opposition to application 753802 was filed by Bundaberg Foundry Engineers Limited (BFEL) on 29 January 2003. A statement of grounds and particulars was duly served on the applicant, and subsequently evidence in support, answer and reply was served, albeit with some extensions of time being required for the evidence in support and reply. Several of the requests for an extension attracted an objection from the applicant, with one of these being taken to a hearing. Eventually the substantive opposition was heard on 16 and 17 March 2005 in Canberra. The applicant was represented by Mr Barry Hess of counsel, instructed by Mr Bill Anderson and Mr Dan Fox, patent attorneys of the firm Ahearn Fox, Brisbane, and the opponent was represented by Dr Ian de Jonge and Mr Regan Gourley, patent attorneys of the firm Cullen & Co, Brisbane.

Subsequent to the serving of evidence in reply, on 2 December 2004 the attorneys for the applicant sent a fax to the Commissioner alleging that the evidence in reply was not strictly in reply, and reserving the right to provide “rejoinder evidence”, terminology which is alien to the patent system. Then on 4 February 2005 the attorneys for the applicant requested the Commissioner to order the production of certain documents from various persons and entities associated with the case for the opponent. The order was made on 14 February, with the date for compliance being 7 March 2005.

On 11 February 2005 the applicant filed evidence which it designated as “Rejoinder Evidence”. On 17 February 2005 the Commissioner wrote to each of the parties stating that she intended to treat the “rejoinder evidence” as “further evidence” filed under subregulation 5.10(4) and proposing to hear any objection to the admission of this further evidence at the hearing on the substantive opposition. The applicant concurred with this approach, but the opponent contended that the evidence should not be admitted without a formal request being made under subregulation 5.10(4). Likewise, the opponent contended that the material brought forth as a result of the order for production should not be available for consideration in the opposition unless it also subject of a subregulation 5.10(4) request and met the requirements of that provision. These issues appear to have been left for resolution at the hearing.

After the hearing, and having considered the evidence, I notified both parties that I was prepared to admit both the “rejoinder” evidence (as further evidence under subregulation 5.10(4)) and such of the documents that were the subject of Notices requiring Production of Documents which the applicant had relied upon at the hearing (utilising the provisions of regulation 5.11). I gave the opponent 1 month in which to file evidence and/or submissions in response.

A response in the form of submissions was filed by the opponent on 22 April 2005. However, this turned out to not be the opponent’s final word, for on 6 May 2005 they requested an extension of time of one week in which to file additional submissions and/or evidence in response. A further extension to 20 May 2005 was requested on 17 May 2005. On 24 May 2005 the Commissioner wrote to both parties and informed them that she would not grant the extension, and that if the opponent wished to file further evidence it would have to be done so as such.

On 27 May 2005 the opponent filed further evidence and submissions, along with a request for leave to file that evidence. The Commissioner advised both parties that the hearing officer would review this material when writing his decision, and if he found the material important to his deliberations, he would propose to grant leave to serve it. Before the decision on the opposition could be issued, on 15 July 2005 the applicant provided submissions in rebuttal of the opponent’s further evidence. The submissions give no indication of any desire on the part of the applicant to file evidence in response to the opponent’s further evidence were such an opportunity to be afforded to them in the event that I granted leave to serve the further evidence. I take it that the submissions of 15 July 2005 are the extent of the response that the applicant would wish to make in the eventuality that I grant leave for the serving of the evidence (in anticipation of that, as it were).

STATEMENT OF GROUNDS AND PARTICULARS

The Statement of Grounds and Particulars lists all grounds under Section 59, and stipulates those grounds to be that the nominated person is not entitled to the grant of a patent for the invention (subparagraph 59(a)(i)), and that the specification does not comply with the following provisions of the Patents Act 1990: subparagraph 18(1)(b)(i) (novelty), subparagraph 18(1)(b)(ii) (inventive step), paragraph 18(1)(a) (manner of manufacture) and section 40. No particulars are given for the entitlement ground, and at the hearing only the grounds of lack of novelty, lack of inventive step and non-compliance with section 40 were pursued. Only two of the extensive list of documents referred to in the particulars for the grounds of novelty and inventive step were relied upon.

THE SPECIFICATION

The invention relates to a mill roller having circumferential ridge caps that are covered by hardfacing. The hardfacing is applied in layers by a welding process and incorporates wear resistant material. The preferred embodiment uses tungsten carbide grit as the wear resistant material which is added to the molten weld as the weld is applied to the ridge caps.

The roller is said to have advantages in processing sugar by allowing longer roller life and better grip of bagasse, although the specification states that the invention may have uses in other applications where improved mill rollers are required.

The specification concludes with ten claims. Disregarding an omnibus claim (claim 10), there are two independent claims - claims 1 and 5. The claims read as follows (with the features of claims 1 and 5 being paragraphed substantially along the lines adopted by the parties at the hearing):

“1. (a) A sugar mill roller including:

(b) a roller body of substantially circular cross-section having a plurality of circumferentially running machined ridges formed to be substantially parallel and spaced along a substantial part of said roller body,
(c) each said machined ridge including one or more land portions,
(d) and a ridge capping on said one or more land portions,
(e) each said ridge capping including a plurality of layers of composite weld supporting therein a wear resistant material in grit-like form.
2. A sugar mill roller according to claim 1, wherein each said machined ridge includes two or a multiple of two land portions, separated by a wall portion and one or more of said layers of said composite weld are supported on respective ones of said land portions against said wall portion.
3. A sugar mill roller according to Claim 1 or claim 2, wherein said roller body is formed of grey cast iron, and said ridge capping further includes a first layer of stainless steel weld.
4. A sugar mill roller according to claim 3, wherein said first layer includes no wear resistant material.
5. (a) A method of applying hardfacing to a sugar mill roller, the method including:
(b) providing a roller body of substantially circular cross-section,
(c) machining a plurality of circumferentially running ridges on said roller body, said ridges being substantially parallel and axially spaced along a substantial part of said roller body,
(d) each said ridge including one or more land portion, and
(f) on each said ridge, forming a weld matrix on the or each innermost land portion by successively applying weld on the previous layer until a ridge capping of desired profile is formed substantially all the way round said roller body, at least some of said layers of weld comprising a composite weld having particulate wear resistant material supported therein.
6. A method according to Claim 5 and including machining a wall portion on each said ridge so as to provide one or more land portions on each side of said wall portion, and applying weld against each side of said wall portion in successive layers until the height of said wall portion is substantially reached.
7. A method according to Claim 8 [sic], and including applying one or more further layers of weld to each respective ridge to substantially encapsulate said wall portion.
8. A method according to any one of Claims 5 to 7 wherein said weld is applied by metal inert gas (mig) welding or tungsten inert gas (tig) welding, characterised in that the weld pool first applied to the or each said land portion is formed from a stainless steel welding rod without any wear resistant material added thereto and said successive layers are formed from a mild steel welding rod used to form said respective weld pools impinged with a particulate wear resistant material to form a composite weld, until a ridge capping of desired profile is formed substantially all the way round each ridge.
9. A sugar mill roller including a roller body formed in accordance with the method of any one of claims 5 to 8.
10. A sugar mill roller having applied thereto a ridge capping on each ridge substantially as hereinbefore described with reference to Fig. 6.”

The underlined words in claim 1 are the extent to which the present claim 1 differs from claim 1 of petty patent 707580 which was held to be not novel in the decision on the section 28 action on that patent. After the decision on the petty patent was issued the applicant had proposed to amend claim 1 of the petty patent to include the phrase “in grit like form”, but the hearing officer considered that that amendment would not sufficiently limit the scope of the claim to render it novel. Ultimately it was only by amending the claims to limit the grit-like wear resistant material to being tungsten carbide that term of the petty patent was extended.

EVIDENCE

The evidence in support comprises statutory declarations by:

·Druce Barry Batstone, who has worked in the sugar milling industry since 1967 when he commenced as a “sugar mill technologist”, and is now a director of a company that bears his name; the main focus of his evidence relates to an instance of alleged prior use;

·Garrie Russell Blight, who was originally a blacksmith/welder and is now the Production Manager for the opponent company (which is a manufacturer of sugar mill rollers and holds the majority of that market); he corroborates the prior use evidence of Mr Batstone and makes comments on the present specification, principally with regard to a large number of prior art documents that are exhibits to the declaration; and

·Ian de Jonge, who provides as exhibits evidence verifying the publication date of some of the documents in the evidence in support, as well as a copy of the decision issued in respect of petty patent application 707580 and a copy of subsequent correspondence between the hearing officer and the parties in that matter.

The evidence in answer comprises statutory declarations by:

·Timothy Stuart Falkenhagen, who is the sole director of the applicant company and inventor of the present invention and has been trained in welding and hardfacing techniques in the course of obtaining his Diesel Fitter Trade Certificate; he asserts that much of the detail in the evidence of Batstone and Blight is not correct and supports this with documentary evidence included in his declaration as exhibits; and in rebuttal of the evidence of Dr de Jonge he provides as exhibits copies of correspondence from the applicant to the Commissioner in respect of the amendments proposed to petty patent application 707580 subsequent to the decision on the section 28 matter;

·Peter Kuebler, who is a metallurgist and gives evidence on the welding processes applied to sugar mill rollers before the priority date of the claims;

·Benjamin Henry Falkenhagen, who is a nephew of Tim Falkenhagen and had worked with his company prior to becoming an apprentice boiler maker with a company (North Queensland Hardfacing) having a “close commercial relationship” with the applicant company; his only evidence is that he drew drawings under the instruction of Tim Falkenhagen of a stepped structure for ridges formed on a sugar mill roller body;

·David James MacDonald is the Managing Director of North Queensland Hardfacing; he provides evidence corroborating the evidence of Tim Falkenhagen in relation to a secret trial of a hardfaced roller conducted by Tim Falkenhagen’s company for the Sugar Research Institute (SRI) (which is made up of a number of member sugar mills, about 25% of which are owned by owner of the opponent company) at a mill called South Johnstone Mill in Queensland April 1997; and

·Eric William (Bill) Anderson, which has as exhibits two formal progress reports on projects of the SRI having the objective of extending the life of sugar mill rollers.

The evidence in reply comprises statutory declarations by:

·David Michael McLeish, who is the owner and General Manager of a company called Pratco Industries Pty Ltd which manufactures grass care and sugar cane harvesting blades and uses a process to apply hardfacing called “Duratech” which was invented by one of Pratco Industries employees; he gives evidence as to the common general knowledge in the field of the invention; and

·Garrie Russell Blight (his second declaration), in which he disputes a number of the contentions contained in the statutory declarations in the evidence in answer.

Further evidence - referred to as “rejoinder evidence” by the applicant - was filed 11 February 2005. This comprises statutory declarations by:

·Darren Wayne Paidley, who was employed by Pratco from February 1997 until January 2004 as a junior factory-hand; he challenges assertions by David McLeish that the original Duratech process is still in use today, that technical journals were made available to employees and that welding personnel were required to have a working knowledge of Australian Standard 2576 and the Technical Notes issued by the Australian Welding Research Association; and

·Bill Anderson (his second declaration) which has as exhibits extracts from various dictionaries and standard texts providing background information about the art and the meanings of various terms and phrases, copies of some documents referred to in the opponent’s statement of grounds and particulars, a copy of an article published in the Proceedings of the Australian Society of Sugar Cane Technologies Conference of 1996 which gives an economic analysis of the work in the field of prior art hardfacing of sugar mill rolls and enlargements of some photographs which are in the evidence in answer.

The opponent also filed further evidence on 27 May 2005. This consists of a statutory declaration by Clyde Anthony Garson, who since 2001 has been the Development Engineer at the Bingera [sugar] Mill and prior to that was a Senior Engineer, Technology and Development, with Bundaberg Sugar from 1996 and prior to that was a Senior Engineer, Engineering Research Unit with the SRI. Mr Garson co-authored (with K. N. Joyce) the Proceedings of the Australian Society of Sugar Cane Technologies Conference article contained in the further evidence of the applicant. Mr Garson provides evidence regarding a research project which he carried out for the SRI commencing in 1992 involving hardfacing of sugar mill rollers (the Moreton Mill Project). He also makes similar statements to those of Mr McLeish as to the common general knowledge in the art.

As well, certain of the documents which were the subject of the order for production were the subject of submissions by the applicant at the hearing. These are:

·A letter from Dr V Mason of the SRI to Mr R Kirkcaldie of Queensland University of Technology authorising the funding of a research project “Carbide containing weld overlays for sugar mill rollers” and to become known as the Moreton Mill Project.
·A series of progress reports by the SRI in 1995 and 1996 on a research project titled “Extend the life of a roll shell surface – selection of candidature materials”.
·A “Technical Brief” by the SRI in 1996 on the research project referred to at the previous dot point.
·A report of the SRI in 1999 titled “Maintenance free roll shell Phase I – Final Report” on factory trials carried out at the South Johnstone Mill in 1997 and the Tully Mill in 1998.
·A deed of confidentiality between Mr Batstone and BFEL.
·Reports of trials carried out by Mr Batstone’s organisation (Batstone Technology) in conjunction with BFEL at Bingera Mill in 1996.

More details of what is contained in the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

Dr de Jonge commenced by criticising the applicant for having filed “rejoinder” evidence rather than “further” evidence in accordance with the statutory requirements, and also the Commissioner for being prepared to treat this as a request to serve further evidence in accordance with subregulation 5.10(4). He went on to submit that even were a proper request to be made under subregulation 5.10(4), the applicant had failed to establish that it had been diligent, and that granting leave to serve the further evidence would cause an unnecessary protraction of proceedings.

Mr Gourley then presented the submissions for the opponent in relation to the substantive opposition. He largely agreed with the delegate in the petty patent matter’s assessment of the person who is skilled in the art, namely, an engineer or welding engineer who is employed by a company specialising in the application of hard-facing, a company in the sugar industry or as a consultant with the relevant background and experience in the formulation and application of hard facing materials. Mr Gourley also largely concurred with the delegate’s construction of claim 1. In relation to the newly added term “composite”, Mr Gourley argued for a broad construction of this, it simply meaning formed of two or more parts and encompassing the situation where carbide crystals or particles are present in a carbide matrix of the same metal.

Applying this construction, Mr Gourley alleged lack of novelty in light of two articles in a journal called Sugar y Azucar, in the July 1991 and July 1994 editions, respectively. That these editions of this journal were publicly available before the priority date of the present claims is not contested by the applicant. Mr Gourley also alleged lack of novelty in light of certain acts performed in the course of trials conducted by Batstone Technology and BFEL at Bingera Mill in 1996. On the question of whether the claimed invention involved an inventive step, it was contended that this was not the case both on the basis of the common general knowledge alone and also on the basis of common general knowledge combined with the disclosures in the Sugar y Azucar documents

In response, Mr Hess firstly addressed the issue of the request for leave to serve further evidence. His case for leave to be granted seemed primarily to be based on the assertion that Mr McLeish’s evidence in reply was “new material” which “was a new slant on which the applicant took a view upon that it required responsive material”. He went on to assert that “the material ought not be in contention and it ought to be of assistance to the hearing officer”.

In regard to the substantive opposition, Mr Hess employed two main defences. Firstly, he sought to distinguish the claimed invention from the prior art by some fairly technically complex arguments ascribing meanings to various words and phrases occurring in the claims and in the prior art. Secondly, he sought to eliminate from contention various items of prior art by either establishing that they were confidential, or at least were not widely enough known to be considered common general knowledge in the field of the invention.

I will provide more details of the parties' submissions, where relevant, later in my decision.

DECISION

In proceedings such as these before the Commissioner the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).

Preliminary issue: further evidence

Subregulations 5.10(4) and (5) provide the statutory basis to allow further evidence to be served. Subregulation 5.10(4) reads as follows:

“(4) The Commissioner may:

(a) on the application of a party; and

(b) on such reasonable terms (if any) as the Commissioner specifies;

permit the party to serve further evidence on the other party."

Subregulation 5.10(5) provides inter alia that the Commissioner must not grant a direction under subregulation 5.10(1) or grant an application under sub-regulation 5.10(2) or (4) unless the Commissioner:

(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed direction; and
(ii) is reasonably satisfied that a direction, an extension of time or the service of further evidence is appropriate in all the circumstances.

It is well established that the approach used in Sandoz Ltd v Fujisawa Pharmaceutical Co. Ltd 27 IPR 421 and Imperial Chemical Industries PLC v Mitsubishi Gas Chemical Co (1994) 29 IPR 285 should be used in determining whether further evidence should be allowed. In those decisions, a number of factors which may be relevant in determining whether the serving of further evidence is appropriate in all the circumstances were considered, including:

· Has the party applying to serve further evidence shown that the evidence could not have been obtained with reasonable diligence at an earlier stage?

· Is the evidence such that, if given, it would probably have an important influence on the result of the case?

· Is the evidence such as is presumably to be believed; i.e. is it apparently credible, though not necessarily incontrovertible?

· Would allowance of the application to serve further evidence cause unnecessary protraction of the opposition?

· Would there be an injustice done to either party?

It is also well established that the public interest has to be considered in determining whether further evidence was appropriate and this needs to be a balance between having a serious opposition determined on its merits while determining the opposition as expeditiously as possible. I note that this balance of interests is consistent with the principles outlined in the Federal Court decision in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213 at 222.

While Goninan concerned an extension of time for filing of evidence under regulation 5.10(2), it was based on the operation of sub-regulation 5.10(5) which applies to both regulation 5.10(2) and (4).

Goninan found that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. In Transgene S.A. v Virax Holdings Ltd, [2002] APO 14, the delegate of the Commissioner took the approach that Goninan is not only relevant to the issue of whether further evidence is allowed but it supersedes the more narrow approach in Sandoz and ICI. She went on to find that the reasoning in Goninin suggests that the requirements outlined in Sandoz and ICI are not prescriptive. Instead, the questions asked in those cases are only a guide to help identify the relevant aspects of a case so that “proper, genuine and realistic consideration” can be given to them as required by Goninan. That approach would appear sound.

In the case of the request to serve further evidence filed by the applicant on 11 February 2005, I see little substance to the applicant’s claim that the evidence in reply of Mr McLeish is new material and a “new slant” - presumably by which is meant it is not strictly evidence in reply. Indeed, that claim has a contrived feel about it. It thus appears that Dr de Jonge’s allegation of lack of diligence has some basis to it. However, Mr Hess was on firmer ground in suggesting that there was information useful to the determination of this matter contained in the further evidence, and that the evidence was non-contentious. I refer specifically to the background material from standard texts and technical dictionaries which makes up the preponderance of this evidence. As I have already indicated, the outcome of this matter to a large extent revolves around the particular meanings ascribed to technical terms present in the specification and the prior art. Had I not been given this information it is likely I would have had to seek at least some of it out myself to place a construction upon the present specification and upon prior art citations (a process which, despite the contentions of the applicant in this regard, is not a process of mosaicing). Moreover, allowing this background information in as further evidence had a potential additional beneficial consequence in that it provides automatically for the other party (in this case the opponent) to vet the information contained in the evidence, and if necessary provide, as evidence in response, further background material to support its position. I have therefore admitted this further evidence.

In the case of the request to serve further evidence filed by the opponent, I note this is a response to the further evidence served by the applicant and to the material introduced into evidence by the Production procedure. It had to be served as further evidence because the applicant failed to meet the deadline for filing evidence in response. I regard this as a special consideration supporting the admission of this evidence. As to the other traditional considerations to be taken into account, none would seem to militate against admitting this evidence. The overall public interest would appear to favour the evidence being admitted, even though it does not seem to add significantly to the evidence already at hand, except for perhaps serving the purpose of reinforcing it. Neither party would appear to be prejudiced by following that course of action. Accordingly I allow the request to serve further evidence filed by the opponent on 27 May 2005.

Section 40

Clarity and construction of the claims

The law as to the construction of patent specifications is well-settled, and has been comprehensively surveyed in two recent court judgements: Flexible Steel Lacing Co v Beltreco Ltd 49 IPR 331 at [70]-[81] and Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385. Of relevance to this matter is the following from Flexible Steel Lacing Co v Beltreco Ltd:
"73 When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts, and those parts have different functions: Welch Perrin& Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610, DecorCorporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391, 398. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed: Walker v Alemite Corporation (1933) 49 CLR 643 at 656, Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 35 and 39. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that.
74 Hence, although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification: Welch Perrin at 610, Decor at 391, 398, Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. (Welch Perrin at 610, Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478-479, Electric & Musical Industries at 41, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69, Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113, Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333).
75 It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. Where the language of the claim is "obscure or doubtful" (Martin v ScribalPty Ltd (1954) 92 CLR 17 at 97 per Taylor J) the doubt was sometimes resolved by referring to words in the body of the document to explain it. (See Welch Perrin at 610-611; Electric & Musical Industries at 41-42, Interlego at 478-479, Decor at 400, Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302 at 308, Freeman v T J & F L Pohlner Pty Ltd (1994-1995) 30 IPR 377 at 383-384, Sartas No 1 Pty Ltd v Koukourou& Partners Pty Ltd (1994-1995) 30 IPR 479, 486).
76 In Decor at p 410, Sheppard J rejected the notion that the claims are first to be construed without reference to the body of the specification, and it is only if ambiguity is exposed by that process that reference to the body of the patent is permissible. In his Honour's view, that approach ignores the "fundamental rule of construction" that the specification must be read as a whole, and the modern approach to interpretation, which requires that the context be considered in the first instance, and not merely at some later stage when ambiguity might be thought to arise. In addition, Sheppard J enunciates that "if there is disclosed in the specification an intention on the part of the draftsman that words used elsewhere are to have a particular meaning, that meaning must be given those words because the draftsman has used his own dictionary" (Sheppard J at 410-411).
77 The decision of Aickin J, in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 exemplifies that approach. Focussing on the "essence of the invention" (at 267), Aickin J proceeded to construe various terms in the claim which were in dispute. In the course of so doing, his Honour made repeated reference to the body of the specification in order to understand the context in which words had been used. His Honour did this even though the specification did not provide a "dictionary" for such terms, and without first making a finding that any of the terms or questions were ambiguous. At 272 his Honour said:
‘This is not a case where the specification supplies its own dictionary meaning but it is legitimate to look at the specification to see whether it shows the word to have been used in some special sense. In fact it shows that it was not so used.’”
Hely J went on to endorse the approach of Sheppard J referred to in par 76, which is of particular significance in the present matter.

"Other principles of construction" cited by Hely J were:

·A patent specification should be given a purposive construction rather than a purely literal one: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, per Diplock LJ at 243, cited in various Australian cases including Decor at 400 - Rule (6); although it is noted by Gummow J in Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561, that a purposive approach was adopted in the pre-Catnic decision of Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388.

· The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date (Welch Perrin at 610, Populinv HB Nominees Pty Ltd (1982) 41 ALR 471 at 476, Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 254, 260, Decor at 397, Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583). The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification: Decor at 391 - per Lockhart J.
· There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders at 585 - per Drummond J.

· It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use: Stanway Oyster Cylinders at 585; Minnesota Mining at 274. The consideration is whether, on any reasonable view, the claim has meaning (Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513, Tye-Sil Corp Ltd v Diversified Products Corp (1991) 20 IPR 574 at 585). In determining this, the expressions in question must be understood in a practical, commonsense manner (Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95, Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338). Absurd constructions should be avoided (Stanway Oyster Cylinders at 582-583) and mere technicalities should not defeat the grant of protection (Tye-Sil at 585).

· As a general rule, the terms of a specification should be accorded their ordinary English meaning: Electric & Musical Industries at 41, Elconnex at 512-513, Interlego at 478, Minnesota Mining at 270.

· Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: Sartas No 1 v Koukourou at 485-486, N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 at 531-532, Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138, Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 at 455.

· However, the construction of the specification is for the Court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corporation [1994] RPC 443 at 486, Sartas No 1 v Koukourou at 485-486, Patent Gesellschaft at 455.

The parties seemed prepared to accept as correct the construction placed upon features (a) to (d) of claim 1 (using the paragraphing adopted earlier in this decision) by the delegate of the Commissioner in the decision on petty patent 707580. The delegate stated:

“Turning to claim 1, the first portion of the claim refers to a sugar mill roller of common form, that is a roller of substantially circular cross-section having a plurality of circumferentially running machined ridges formed thereon (integers (a) and (b)). There was no dispute that this form of roller was common in the industry including at the priority date. The claim then defines "each said machined ridge including one or more land portions" (integer (c)), "a ridge capping on said one or more land portions" (integer (d)), and "each said ridge capping including a plurality of layers of weld supporting therein a wear resistant material (integer (e)). The parties provided submissions about the meaning of the claimed invention arising from features in integers (c) to (e) which I will now discuss.
1. Land portions
[Dr] de Jonge submitted this term did not appear to have a precise dictionary meaning but from the specification considered it "should include any substantially flat portion irrespective of how it is formed" and be without limitation as to size. Mr Hess submitted that an addressee of the specification would understand the term to be "a surface sufficient to support a layer of weld". I note that the specification itself does not provide a specific meaning for this term (its own dictionary) nor does it seem to be a term in the art. The normal dictionary meaning of "land" is "an area of a surface partly machined (as with holes, indentations, furrows, or grooves) that is left without such machining" (Webster's Third New International). Thus where a roller is machined to form grooves with non-machined portions between the grooves, the non-machined portions would be lands. When the claim is limited to one land portion for a machined ridge, then that portion could equate with the dictionary meaning of "land". If the whole of the specification is considered, what is described as land portions are flat areas or rebates including a flat surface formed either at the top or at upper regions of the sides of the machined ridges. The specification describes a single step pyramid shape at the top of a ridge as having three land portions (as in fig 2) and a double step pyramid shape as having five land portions (as in fig 1), although these land portions, particularly the side located ones, result from machining not the absence of machining as the meaning of "land" would imply. Thus in the context of the specification I believe an addressee would understand the term "land portion" to mean a land or flat portion on the ridges whether machined or not and, given integer (d), able to support a ridge capping.
2. Each ridge capping including a plurality of layers of weld
Firstly [Dr] de Jonge submitted that there was no limitation on the shape, size, etc of the ridge capping. I note that a ridge capping is defined as related to a land portion, not to each machined ridge. Thus there may be one or more ridge cappings to each ridge depending on the number of land portions. I agree that there are no dimension or profile limitations for the ridge cappings and the claim leaves open the resulting profile of a ridge when the ridge cappings are first formed. However as the subject of the invention is a sugar mill roller, the resulting profile of the roller must be suitable for the purpose of sugar cane rolling, which in my view implies that the resulting ridge profiles with the ridge cappings in situ equates to an otherwise uncapped ridge profile in order to cooperate with other mill components such as roller trash plates.
A second issue concerned the "layers of weld". [Dr] de Jonge submitted that the size and nature of the layers were without limitation - thus the layers could be continuous or discontinuous, and need not be overlapping or contacting each other. Mr Hess referred to the text "The Procedure Handbook of Arc Welding", 12^th edition, 1973, a portion of which was attachment 4 of the SRI notice. He referred to reference section 16.1-14 where "Layer" is referenced as "A stratum of weld metal, consisting of one or more weld beads." He submitted that this definition did not encompass dots spattered on a roller ridge by a discontinuous weld action, such as the "dot-dash" arrangement discussed in the background art to the specification. In my view by requiring a "plurality of layers of weld" each ridge capping has to have at least two identifiable weld layers where each layer could be of one or more weld beads. Thus the simplest ridge capping would be one weld bead partly or wholly on a lower weld bead on a land portion. Given that each of the ridges is formed circumferentially of the roller, each ridge capping would be of at least two such layers circumferentially of the roller.”

I, likewise, concur with the foregoing construction. However I think one point ought to be made in relation to the “layers of weld” feature. That is, that although it is implicit in what the delegate of the Commissioner said, it is not, perhaps, explicit that the word “layer” conveys the meaning of “one thickness, course, or fold laid or lying over or under [my emphasis] another” (Webster's Third New International). Thus the arguments advanced by Dr de Jonge based on a possible construction of “plurality of layers” as meaning a number of layers laid side by side (thus, in reality, forming a single large layer) would not appear soundly based.

Turning now to feature (e) of claim 1, this remains, as was stated by the delegate of the Commissioner in the decision on petty patent 707580 in relation to the corresponding feature, central to the meaning and scope of the invention. This feature is:

“each said ridge capping including a plurality of layers of composite weld supporting therein a wear resistant material in grit-like form”.

Claim 1 which was the subject of the decision on petty patent 707580 did not have the words “composite” and “in grit-like form” in feature (e). The delegate concluded:

“I do not see the claim definition as excluding from its meaning certain weld products simply because a product inherently contains wear resistant material in the form of certain metal particles in the weld matrix. Also the definition does not suggest a requirement that the materials of the weld making up the weld layers be distinct from the wear resistant material. Accordingly it seems to me that provided some wear resistant material is identifiable and thus can be taken to be supported by or within the weld layer, such layers meet the claim definition.”

The consequence of this construction being adopted was that the invention defined by claim 1 was found to be not novel in light of the 1994 Sugar y Azucar article. However, the delegate did seem to leave the door slightly ajar by stating:

“Even if the integer (e) definition were considered ambiguous, which I do not consider to be the case, and recourse is made to the description to clarify its meaning, I do not believe there is clear support only for a construction that the wear resistant material must be distinct from the weld materials. The description on pages 4 and 5 states that the layers of weld forming the ridge capping are, or the hardfacing is formed as, "preferably" a "hardfacing composite". Thus the description places a hardfacing composite (presumably meaning a product made up of distinct parts or elements such as weld matrix materials and wear resistant materials) no higher than a preferred form of weld layers.”

However, in amending to overcome the adverse finding the petty patentee chose not to take the “composite” route. Instead it chose to insert the words “in grit-like form”. This did not satisfy the delegate’s requirements. In a letter to the patentee he stated:

“Being in grit-like form suggests that the wear resistant material has some character which can be identified as a grit, but there is nothing to indicate the nature of the grit, particularly its size. I understand that “grit size” is a common term used in relation to abrasives and hard surfacing products and that there can be a wide range of particle (grit) size available to use in different applications and environments. Being without limitation, the claim can reasonably be interpreted to include any size of grit-like wear resistant material.”

Again the delegate gave an indication that a way out for the patentee lay with the word “composite”, saying:

“Although there would seem to be a distinction between the Sugar y Azucar disclosure and the patentee’s invention, this is not distinguished by way of claim 1. The attorney’s submission refers to a “composite weld” but the claim definition is not seen as providing any distinguishing element in this regard following my interpretation of integer (e) as indicated above”.

Claim 1 of the present application is limited to a “composite weld”. However, I have reached a somewhat different view of the significance of the inclusion of that word from that which was apparently held by delegate in the petty patent matter. Although the inclusion of “composite” serves a useful purpose in that it renders the claim clearer than perhaps it would have been otherwise, my feeling is that this limitation was probably already implicit in the phrase “supporting therein a wear resistant material in grit-like form.”

But whether or not that is so, I have also reached a somewhat different view to that of the delegate as to the effect of the words “in grit-like form” upon the scope of the claim that renders the issue of the impact of the word “composite” irrelevant for the purposes of this decision. The delegate concluded that this expression encompassed particles of any size. The rules of construction which I have quoted from Flexible Steel Lacing Co v Beltreco Ltd suggest strongly that the expression “grit-like” is one which recourse should be had to the specification as a whole to determine its scope. I am also cognizant of the general principle that the appropriate construction of a specification is the one which would have been arrived at by an addressee of the specification who was "willing and wishing" to understand it (Philpot v Hanbury 2 RPC 33).

In turning to the specification as a whole to determine what size of particles we are dealing with here, it emerges that the specification gives no numerical limits, although it does state a preferred size, which is 12/35 mesh. In light of this lack of any numerical values as to the limits of particle sizes in consideration in this specification, it seems appropriate to me to fall back on human perception as being the determinant of the lower limit of size of the grit particles, that is, if the presence of grit is not detectable by the human senses, then it is outside the scope of the claim. Not only does this appear to be the most reasonable construction given the way the specification is framed, it also sits well with the sense the word “grit” itself in normal usage conveys to me. At the hearing Mr Hess argued for a macroscopic/microscopic distinction, and I think this is almost right. However I would allow for the possibility that the grit may not be visually perceptible, but is tactilely perceptible. In this case I consider the particles would still be identified as “grit-like” within the scope of the present claims.

At the hearing Mr Gourley drew my attention to the fact that Claim 7 had been wrongly appended to claim 8, as being a clarity issue. However, it is clear upon a close reading of the relevant claims that claim 7 should instead be appended to claim 6. This incorrect appendancy thus falls within the category of being an obvious mistake, and does not, in my view, detract from the overall clarity of the claims.

No other aspect of non-compliance with section 40 was pursued by the opponent, and neither is there any which I am able to make out. Accordingly I find that that the opposed application satisfies all the requirements of section 40 of the Patents Act.

Novelty

Law

The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 288 at 235 where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement occurs when "each and every one of the essential features" of the claim has been disclosed by the alleged anticipation: see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391.

Preliminary issue: priority date

Although nothing of consequence for novelty would appear in this case to arise from this issue, this appears to be a convenient point at which to address it. The question of the relevant priority date does have a potential bearing on inventive step, and in particular the assessment of the state of the common general knowledge in the art.
At the hearing, Mr Gourley submitted that this application was not entitled to either of the priority dates claimed for it by virtue of its association with provisional patent applications PO5047 and PO6499 – 10 February 1997 and 30 April 1997. This was said to be because neither priority document referred to “a composite weld”. Mr Hess virtually conceded that the first priority date did not obtain, since the focus of his rebuttal was the second priority document, PO6499.

I am inclined towards Mr Hess’ position as to the correct priority date. As I stated when construing claim 1, I consider that the limitation imposed by the word “composite” is probably already implicit in the phrase “weld supporting therein a wear resistant material in grit-like form.” Since PO6499, unlike PO5047, discloses a weld with tungsten carbide grit contained within it, I am satisfied that the priority date of 30 April 1997 is the valid one.

Novelty consideration

There are only two documents put forward by the opponent as anticipating the present invention, namely the two Sugar y Azucar articles. It was conceded by the applicant that these disclosed all the features of the present invention, bar that of the wear resistant material being of grit like form. The citations described the use of chromium carbide as the weld material, and considerable technical evidence was provided which established that chromium carbide used in this fashion had formed within it alloys of iron and chromium carbide as particles within the weld matrix. However, there is no indication in any of the technical evidence provided whether these particles are of a size to warrant them being considered as being “grit-like” in nature, as I have construed that term to mean in the claims in suit. In fact the 1991 Sugar y Azucar article, by referring to iron and chromium carbide alloys in terms of showing “in the microstructure” would appear to teach away from these being evident in any macro sense. Approached in this way, and applying the test of whether the citations could be considered to give "clear and unmistakeable directions" to produce the invention as claimed (Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428, General Tire & Rubber Co. Ltd. v Firestone Tyre & Rubber Co. Ltd. [1972] RPC 457), I do not see the two Sugar y Azucar disclosures as sufficing to deprive the present claims of their novelty.

The only other prior art relied upon by the opponent in relation to the ground of novelty was an instance of prior use said to have taken place as a result of certain trials conducted by Batstone Technology and BFEL at Bingera Mill in 1996. As I have already observed, the standard of proof required in these proceedings as to the primary facts is the civil standard, that is, the balance of probabilities, but it is incumbent upon the opponent to make its case. In the case of prior use, some corroboration is usually required. For example, in Seiller's Application [1970] RPC 103, Graham J said at 106:

"In my judgment it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135, in which it was stated:

"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."

However, there are at least two Patent Office decisions where the uncorroborated evidence of an independent witness has been sufficient to establish the facts alleged in relation to prior use: Glenwood Systems v Gooden (1993) AIPC 90-985 and Endurequip v Robyn Ann Roelofs (1993) AIPC 91- 037, 28 IPR 131.

The evidence as to the Bingera Mill trial comes from Messrs Batstone, Blight and Falkenhagen. Mr Falkenhagen was not involved in the trial per se, but appears to have been involved at an early stage in the work leading up to the trial until his services were dispensed with due to pricing considerations. The evidence of Batstone would suggest that the method and resulting product of the trial possessed all the features of claims 1 and 5. The evidence of Blight supports this. The Blight and Batstone version of events also seemed to be effectively confirmed by Mr Falkenhagen’s evidence, except in so far as the “plurality of layers” [my emphasis] feature is concerned. This was the only aspect of Mr Batstone’s evidence on what was carried out in the trial that Mr Falkenhagen seemed to dispute, but since Mr Falkenhagen’s involvement ceased before the trial, I consider that I should accept the evidence of Batstone and Blight as to what happened at the trial. At the hearing Mr Hess presented an argument based on omission, more than anything else, to support a contention that tungsten carbide grit had not been utilized in the trial, but I think that also fails in light of Mr Falkenhagen’s apparent concession.

However, the applicant provided a defence against this alleged prior use, to wit that the trial had been conducted under conditions of confidentiality, and the first time any details had been published was in a document which was a paper presented to the International Society of Sugar Cane Technologists in 2001, that is, well after the priority date. I am inclined to agree with the applicant on this. A formal confidentiality agreement existed between Batstone and BFEL binding Batstone to an obligation of confidentiality to BFEL. Moreover in providing his services to BFEL the documentation in evidence states explicitly that Batstone agreed that all intellectual property was to be the exclusive property of BFEL. I agree with Mr Hess that Mr Blight’s status as an employee of BFEL would, as with all BFEL employees, normally at least have imposed an implied obligation of confidentiality upon him. In light of these circumstances it is clearly not the case that there has been prior use of the invention that has communicated the invention to a member of the public without inhibiting fetter (Bristol-Meyers Co. 's Application [1969] RPC 146 at 155).

Hence I find the claims of the opposed application to be novel in light of the prior art in the evidence of this opposition.

INVENTIVE STEP

The effect of subsections 7(2) and 7(3) of the Patents Act, in the case of applications filed before 1 April 2002, is that a claimed invention will lack an inventive step if it is obvious in the light of:
(a)common general knowledge; or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:

"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 in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.

The person skilled in the art may be a team of people from different disciplines - see, for example, Root Quality Pty Ltd v Root Control Technologies Pty Ltd 49 IPR 225, American Cyanamid v Ethicon Ltd (1979) RPC 215 and Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) ALJR 212. In the present matter I consider the person skilled in the art would be a team of people, being a mechanical engineer working in the field of sugar cane rolling mills, a materials engineer in the hard facing field and a person skilled in the art of welding. Support for the person skilled in the art of the present invention being a team comes from the fact that when Mr Batstone, who has been involved in research, development, engineering and equipment manufacturing services for the sugar industry was contracted to supply a prototype of an experimental crusher, he sought out Mr Falkenberger’s company (the applicant) by checking in the Australian Yellow Pages for the supply and application of tungsten carbide hard coatings.

In his statutory declaration, Mr Batstone lists his understanding of the common general knowledge in the field of the present invention as follows:

·Hard facing in the field of welding.

·The application of multiple layers of weld to build up a substrate.

·That different types of hard facing materials are known and available for choosing as particularly needed.

·That tungsten carbide as chips or particles can be added to a molten weld to improve wear resistant characteristics of a weld.

·That items subject to wear and tear are hard faced.

·That layers of weld have been applied to sugar mill rollers to improve the grip of the rollers.

Mr Blight has an identically worded list, save for an additional item:

·That “buttering layers” of stainless steel can be applied before hardfacing on mill rolls.

But I note that Mr Batstone at a later stage in his declaration asserts that “the use of ‘buttering layers’ in sugar mill roll hardfacing is well known and widely used in the art”.

Mr McLeish and Mr Garson provided identical lists to that of Mr Blight, save for a very few superficial variations of wording.

All these declarants in my view seem well positioned to attest authoritatively as to the common general knowledge in the art.

At the hearing Mr Hess drew attention to the differences between the respective lists as casting doubt on the reliability of the evidence given by the opponent’s declarants on common general knowledge. For my part, what I find remarkable is the extent of the correlation between the lists. It is possible that that correlation could be a reaction to deficiencies which the delegate of the Commissioner in the petty patent proceedings found with the evidence on common general knowledge. Be that as it may, I have no reason to doubt that the evidence given by these four declarants truthfully reflects their understanding of the state of the common general knowledge in the field(s) of the invention at the priority date of the claims.

Mr Hess also submitted that the evidence of the opponent’s declarants on the issue of obviousness/lack of inventive step cannot be relied on or should be heavily discounted, both because of their exposure to the specification (based on Minnesota Mining and Manufacturing Co v Tyco Electronics 56 IPR 24), and also because, in the case of Batstone and Blight, they had demonstrated they had inventive capabilities (evident from several patent applications for which they were the named inventor). I accept the thrust of Mr Hess’ submission, provided it is quarantined to the issue of obviousness/inventive step and is not seen to extend to the common general knowledge. In my view Minnesota Mining and Manufacturing Co v Tyco Electronics is just another decision in a line of cases dating back at least to British Celanese Ltd. v. Courtaulds Ltd. House of Lords, (1935) 52 RPC 171 at p.196. In British Celanese Ltd. v. Courtaulds Ltd. Lord Tomlin stated:

"The area of the territory in which cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried into effect by a skilled worker. He is entitled to way what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connexion with the art could be carried out and generally to give any explanation required as to facts of a scientific kind.
He is not entitled to say nor is Counsel entitled to ask him what the Specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist. Nor is he entitled to say whether any given step or alteration is obvious, that being a question for the Court."

In his evidence in answer, Mr Falkenhagen seems to dispute only one aspect of the evidence of Batstone, Blight, McLeish and Garson on common general knowledge, namely, that the use of tungsten carbide in hard rough deposits on sugar mill rolls was well known. Even then, he later contradicts himself, saying:

“In clause 20 of [Blight’s] declaration he says that it is entirely obvious and was well known prior to 1997 to hard face cutting, grinding or abrading surfaces and to supply particles such as tungsten carbide chips so that as the outer surface of the weld erodes away, fresh chips surface to prolong the life of the hardfacing. All this is true and was well known to those in the sugar industry……..”

I note, however, that Batstone, Blight, McLeish and Garson seem careful not to state that the use of tungsten carbide is well known in the sugar industry. When the evidence of Mr Batstone is looked at in this regard, it would in fact appear to indicate the contrary. While his listing of the common general knowledge refers specifically to tungsten carbide, later in his evidence when talking about what was common practice in the sugar industry in respect to applying hard, rough deposits of weld metal to sugar mill groove surfaces he is initially non-specific as to material. He goes on to state (my emphases):

I had long favoured a different form of rough, hard deposit on small, steel rolls that were manufactured for small-scale mills supplied by BT [Batstone technologies] to Indonesia and Laos in 1989 and 1991. The deposit was tungsten carbide (TC) chip in a matrix formed by flame deposition.”

This appears to suggest that the use in the sugar industry of tungsten carbide chips in a matrix to roughen roll surfaces was not common practice. The evidence as a whole strongly indicates that chromium carbide was the weld material of choice, mainly, it would seem, for reasons of cost.

At the hearing Mr Hess also argued that the evidence was insufficient to establish that either the tungsten carbide feature or the layers (plural) of weld feature are common general knowledge. I am in agreement with his position on the tungsten carbide feature, so long as the art in question is limited to sugar mills. However, I do not concur with his assertion on the layers of weld feature, which appears to fly in the face of the evidence of his own side. I note also that Mr Blight’s evidence on this is supported by a little documentary evidence, although I think Mr Hess’ criticism of the strength of this evidence has some substance to it.

What is clear from the evidence is that it has been longstanding practice (according to the evidence, at least back to 1950) for sugar mill rollers to be provided with circumferential ridges to enable the crushing of sugar cane, as per feature (b) of claim 1. Furthermore, according to the evidence it has been longstanding practice to form weld deposits on the ridges to better grip the cane when crushing it. These ridges have flattened areas (in the jargon of the present specification - “lands”) on them. I also accept that the possibility of using multiple layers for such weld deposits on sugar mill rollers is well known. I am also prepared to accept that the use of tungsten carbide chips in a weld matrix would be part of the common general knowledge available to the hypothetical team of people under consideration when deciding whether it would be obvious to that team to make the present invention when overcoming the problem addressed by the present invention. In deciding that question the test to be applied is that set down in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 (12 December 2002), namely:

“Would a person skilled in the art be directly led as a matter of course to try the claimed matter in the expectation that it might well solve the problem?”

The problem addressed by the present invention appears to be that of devising a weld deposit for sugar mill rollers that is effective over a longer period of time for a given cost. The solution has two components: firstly, the use of tungsten carbide; and, secondly, the use of multiple layers of weld and application of the weld layers to one or more lands on the ridges of the roller.

The evidence establishes that in the few years prior to the priority date of the present specification a fair amount of experimentation was carried out with the use of tungsten carbide in a weld matrix as a hardfacing to sugar mill rollers. This is a strong indication that the use of tungsten carbide in a weld matrix for hardfacing sugar mill rollers would not of itself involve an inventive step, despite the fact that the trials were unsuccessful in terms of commercial viability of the process. The aspect of the present invention which appears to have imparted to it the necessary “scintilla” of invention is the depositing of multiple layers of weld supporting wear resistant material in grit-like form. There seems to have been only one instance – the Bingera Mill trial - where this appears to have been contemplated (and that was kept secret, as has been previously noted). The overall sense one gains from the evidence in this matter is that a person skilled in the art would not be led as a matter of course to try the claimed matter in the expectation it would achieve the results sought, and to do so would require some exercise of the inventive faculty.

Lack of inventive step was also said to arise on the basis of the two Sugar y Azucar articles considered together with the common general knowledge. In order for the two Sugar y Azucar articles, which are published out of the New Jersey in the United States, to be considered for inventive step purposes it is necessary for the opponent to establish that the person skilled in the art could reasonably be expected to have ascertained, understood and regarded them as relevant (subsection 7(3) of the Patents Act). At the hearing, Mr Gourley stated that evidence had been provided in relation to the petty patent matter that the Sugar y Azucar journal was available in the SRI library, and that was a matter of record in the decision on that matter. That is true, but I observe that a research institute will likely acquire a wide range of obscure publications, and it is not apparent from the evidence what access persons skilled in the art had to documents in the library of the SRI. Furthermore, the decision on the petty patent matter went on to state at a later point:

In the result I am not satisfied that relevant evidence and materials have been placed before me by SRI and Bundaberg Foundry upon which I can legitimately consider whether the invention would have been obvious. It is not appropriate for me to speculate on what may have formed part of the common general knowledge, or on what information could properly qualify for consideration under s.7(3) of the Act. Furthermore any conclusions based on any such speculation would not be sound. Accordingly I am unable to consider the matter further. SRI and Bundaberg Foundry have not made out a case of obviousness.

Clearly, the delegate of the Commissioner did not consider that the evidence before him was sufficient to establish that the person skilled in the art could reasonably be expected to have ascertained, understood and regarded the Sugar y Azucar articles as relevant. The evidence before me in this matter does not seem to go much further down that path. Mr Batstone states:

“……magazines such as the “Sugar y Azucar” journal properly represent material widely available and consulted by the welding, hardfacing and sugar industries”

Messrs Blight and McLeish’s evidence is in exactly the same terms, while Mr Garson’s adds “amongst others” after “journal” and deletes the word “widely”. I observe that at no point do these declarants state that they themselves have read the articles in question, or even read the journal at all. Mr McLeish comes closest, for he says “I am aware shortly after publication of journals such as Sugar y Azucar……”.

I therefore conclude that the evidence in relation to the Sugar y Azucar articles fails to establish that these articles fulfil the requirements of subsection 7(3) of the Patents Act, and therefore cannot be taken into account for the purposes of subsection 7(2).

Accordingly I find that the evidence in this matter does not establish that the claimed invention is lacking in an inventive step.

Manner of manufacture and entitlement

As stated above, at the hearing the opponent indicated that it did not wish to pursue these grounds. I have considered the evidence having relevance to these grounds, and find that there is nothing in the evidence that would warrant an adverse finding in relation to these grounds.

CONCLUSION

The opposition fails on all the grounds which were relied on. I therefore dismiss the opposition.

Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.

COSTS

In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion. I therefore award costs against Bundaberg Foundry Engineers Limited.

E J Knock

Delegate of the Commissioner of Patents

07 December 2005

Patent attorneys for the applicant : Ahearn Fox, Brisbane
Patent attorneys for the opponent : Cullen & Co, Brisbane