Christopher Gary Parmenter - [2011] APO 26

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Christopher Gary Parmenter [2011] APO 26

Patent Application: 2004288607

Title:A Method of Cultivating Plants

Patent Applicant:                   Christopher Gary Parmenter
Delegate:  Greg Powell
Decision Date:  28 April 2011
Hearing Date:  28 January 2011, in Canberra
Catchwords:  PATENTS – re-examination – evidence in declaratory form from persons independent of the Commissioner not required – identification of the person skilled in the art – amendments not allowable – no “real and reasonably clear” disclosure as feature can only be inferred with the benefit of hindsight – not novel – person skilled in the art following teaching of citation would infringe the claim – not inventive – citation available on the Internet and could have been ascertained – citation is relevant notwithstanding pertinent part is a small portion of the complete citation – application refused – filing of divisional application noted

Representation: Mr Regan Gourley, patent attorney, of Cullens, assisted by Mr Gary Nock, patent attorney of Cullens and Mr Christopher Parmenter, patent applicant.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004288607

Title:A Method of Cultivating Plants

Patent Applicant: Christopher Gary Parmenter
Date of Decision: 28 April 2011
DECISION
The amendments filed on filed on 22 October 2010, 23 November 2010 and 27 January 2011 are not allowable.
Claims 1, 2, 4–6, 8 and 11 filed on 6 September 2010 are not novel.
Claims 3, 7, 9, 10 and 12 filed on 6 September 2010 lack an inventive step.
The application is refused.
REASONS FOR DECISION
BACKGROUND

Patent application 2004288607 in the name of Christopher Gary Parmenter was accepted on 12 February 2010. A routine quality review following acceptance identified documents which had not been considered during examination and which appeared to anticipate the invention in the accepted claims. It was decided to begin re-examination under section 97(1) of the Patents Act. A re-examination report was issued on 23 April 2010 finding the accepted claims either not novel or not inventive.
The applicant filed amended claims in response on 1 June 2010 and again on 9 July 2010 following a report on the first set of amended claims dated 30 June 2010 which noted that they claimed matter not in substance disclosed. The claims filed on 9 July 2010 were considered not to overcome all the issues that were identified in the re-examination report of 23 April 2010 and another report issued on 6 August 2010 finding the amended claims either not novel or not inventive. This report indicated that, given the nature of the objections, the applicant should consider requesting a hearing. The applicant responded on 6 September 2010 with further amendments but was informed, both by letter and a further report, that the matter would be set for hearing.
The matter was initially set to be heard on the basis of written submissions and the applicant was given until 19 November 2010 to file them. On 22 October 2010 the applicant filed another set of amended claims. A further set followed on 23 November 2010 at which time the applicant requested an oral hearing, which was subsequently scheduled. On 27 January 2011, the day prior to the hearing, following a letter from me regarding the allowability of the amendments of 22 October 2010 and 23 November 2010, the applicant filed a further set of amended claims.
THE PATENT SPECIFICATION
Notwithstanding the title of the application, the subject matter of the specification concerns a particular harvesting schedule for plants. According to the schedule, plants are harvested in a 10‑day window centred on the day when the moon is furthest from the Earth (the lunar apogee). The contention of the specification is that, by harvesting in a period of 5 days prior to lunar apogee to 5 days after, the qualities of the products of the plant are maximised.
The preferred embodiment focuses on cannabis and particularly the amount of tetrahydrocannabinol (THC) that is present (i.e. its “potency”) when the plant is harvested. There is also some briefer discussion on the “Stinging Tree” and the “Stinging Nettle” and the potency of their sting, sugar cane with respect to its sugar content and vegetables and herbs generally with regard to taste, flavour and shelf life. It is stated in the specification that these characteristics vary in time with the lunar apogee-perigee-apogee cycle – also known as the “anomalistic cycle”.
GROUNDS FOR CONSIDERATION
This matter arises as a result of re-examination. Section 98(1) states:
On re‑examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a)is not novel; and
(b)does not involve an inventive step.
It follows that I am limited to the grounds of novelty and inventive step in this decision.
PRELIMINARY MATTERS
Evidence
As part of their argument, at least on allowability of amendments and inventive step, the applicant submitted that, in general, the Commissioner was required to base her conclusions on evidence. The applicant pointed to the decision of Lindgren J in Emperor Sports v The Commissioner of Patents [2005] FCA 996 where they submitted it was said that the common general knowledge of a person skilled in the art must be established by evidence. The applicant submitted that, in the absence of evidence, the Commissioner was not at liberty to decide what is, and what is not, part of the common general knowledge. While there was a later decision on appeal (see Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26), the applicant submitted that this portion of Lindgren J’s judgement was not overturned in that appeal. The applicant’s contention in present matter was that no evidence had been supplied by the Commissioner.
It is clear that the Commissioner is not permitted to unilaterally assert that a claim is not novel or a claim lacks an inventive step and simply stop there. Clearly the Commissioner will need to put something forward to show how she reached her conclusion. However, this does not necessarily mean that what the Commissioner puts forward must be formal evidence in declaratory form from a person independent of the Commissioner. While that is what is required by the courts, that is not what is required in ex parte matters before the Commissioner. I think the applicant has mischaracterised the Full Court Emperor Sports decision.
In the decision of the first instance, Lindgren J certainly said:
“[101] In Firebelt, an infringement/revocation proceeding, the opening words of s 7(2) were construed as imposing an onus of establishing absence of inventive step upon the party challenging validity (at [31]). Although re-examination under s 97(2) takes place ex parte, s 7(2) similarly requires me (and required the Commissioner) to assume the presence of an inventive step in the absence of evidence establishing the matters referred to in ss 7(2) and (3). This approach finds support in the acceptance by the High Court in Firebelt (at [36]) of Burchett J’s construction of the provisions in Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414, and in the approach taken in other inter partes proceedings; cf Mather v Lockwood Australia Pty Ltd [2001] FCA 1814 at [91]- [97]; Dyno Nobel at [190]-[195].
…
[108] …in the absence of evidence, the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the Cited Documents. In the absence of evidence, the Commissioner was relegated to speculation. The Commissioner did not give effect to the opening words of s 7(2) of the Act noted at [23] above.” (my bolding)
Taken at face value this is unequivocal – the Commissioner requires evidence when making findings and that evidence has to be independent of the Commissioner. However, as I pointed out to the applicant during the hearing, in the Full Court decision paragraphs 23 and 24 were as follows:
[23] Senior counsel for the Commissioner submitted that the Commissioner can draw legitimate inferences from the material available to her. He said that his Honour erred in referring to a perceived need for the Commissioner to act only on “evidence”. In support of this argument senior counsel said that the stages of re-examination and report (ss 97 and 98), like the stages of initial examination and report (s 45) and acceptance (s 49), involved essentially an inquisitorial procedure. This was in contrast to the stages of opposition before grant (ss 59 and 60) and revocation by the Court after grant (s 138), both of which involved an adversarial procedure.
[24] It is not necessary to explore the suggested inquisitorial/adversarial dichotomy because we accept the basic proposition put. The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd [2002] FCA 30; (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the Commissioner based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.
To my mind, this is a direct comment on the position taken by Lindgren J in his decision. Formal evidence, independent of the patent office, is not always required by the Commissioner to support her decisions. She can “draw inferences that may be rationally drawn from technical knowledge”. The applicant sought to limit this exercise of power to the situation of when identification of the relevant prior art was in dispute. They relied on paragraph [33] of the full Court’s decision in Emperor Sports. The applicant submitted that the statements in paragraphs 23 and 24 do not forgo the need for formal evidence in other matters. I disagree. On their own terms, paragraphs 23 and 24 are clearly not saying that the Commissioner can only draw inferences without formal evidence when the identification of prior art is in dispute. Paragraph 23 clearly sets out the Commissioner’s position that:
“[Lindgren J] erred in referring to a perceived need for the Commissioner to act only on “evidence”.”
In addressing that position, the Court then clearly says in paragraph 24:
“… we accept the basic proposition put. The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations” (my emphasis)
It follows that I do not agree with the applicant’s submission that I require formal evidence from persons independent of the Commissioner before I can decide this matter. I am allowed to use inferences that I can rationally draw from my technical knowledge.
The Person Skilled in the Art
A person skilled in the art (PSA) is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:
“Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”
The applicant submitted that the PSA was a “farmer without any particular speciality”. I observed at the hearing that this was a very broad classification and I questioned what type of person this would be. I said that the word “farmer”, at least to my mind, brought up visions of rolling fields of wheat or the like. Given that the preferred embodiment was directed to cannabis, I said that rolling fields of cannabis were not what I associated with the word “farmer”. To capture what is in the preferred embodiment, something other than farmer seemed to be required. I asked what the applicant thought a farmer was. In response to these questions, the applicant indicated that maybe the PSA is a person who grows crops for commercial reasons. In that case I would question the need for the word “commercial”. While the preferred embodiment is directed to cannabis, and I understand that there is a commercial market for cannabis in some countries (e.g. the United States), it is also known that people grow cannabis for their own personal use. It seems unlikely that they would be considered to be growing crops for commercial reasons. Moreover, the claims are directed to “plants”. There are innumerable numbers of plants and, therefore, people known as “gardeners” or “growers” could also be considered to be a PSA.
Ultimately, in spite of the discussions at the hearing, given the broadness of the claim the definition of the PSA must be broad. It is clear from the specification that the claims are directed cultivating plants and having a particular harvesting schedule for those plants so that the “harvest” has better properties. As such, and possibly opening myself up to a charge of being overly semantic, I would characterise the PSA somewhat differently to the applicant. In my opinion the PSA must be a person who grows (and harvests) harvestable plants.
However, notwithstanding this discussion, nothing turns on this.
THE CLAIMS
I did not take the applicant as contesting the examiner’s findings of the invalidity of the claims as accepted. As such, I will not have any further regard to them.
During the hearing, the applicant focused on the amended claims that were filed on 6 September 2010. Claim 1 as filed on 6 September 2010 is as follows:
“1. A method of cultivating plants including the step of harvesting the plant at a time within a period of 5 days prior to a lunar apogee and 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis in different anomalistic cycles.”
With regard to the amended claims filed on 22 October 2010, amended claim 1 was proposed as follows:
“1. A method of cultivating plants including the step of harvesting the plant ~~at a time~~ on any day within a period of 5 days prior to a lunar apogee ~~and~~ to 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis in different anomalistic cycles and further at a time on any one of the days within the period between moonset and moonrise on a particular day, at a particular harvest location.”
On 23 November 2010, another set of claims were filed which had the same claim 1 as proposed on 22 October 2010 but added another independent claim 13:
“13. A method of cultivating plants including the step of harvesting the plant on any day within a period of 5 days prior to a lunar apogee to 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis and further at a time on any one of the days within the period between moonset and moonrise on a particular day, at a particular harvest location.”
This new claim 13 differed from claim 1 proposed on 22 October 2010 by the omission of the phrase “in different anomalistic cycles”.
Finally, the further set of amended claims filed on 27 January 2011 amended claims 1 and 13 as follows:
“1. A method of cultivating plants including the step of harvesting the plant on any day within a period of 5 days prior to a lunar apogee to 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis in different anomalistic cycles and further at a time on any one of the days within ~~the~~ a period during a daily rotation cycle of the moon to maximise the distance between the Earth and the moon ~~between moonset and moonrise on a particular day~~, at a particular harvest location.”
“13. A method of cultivating plants including the step of harvesting the plant on any day within a period of 5 days prior to a lunar apogee to 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis and further at a time on any one of the days within ~~the~~ a period during a daily rotation cycle of the moon to maximise the distance between the Earth and the moon ~~between moonset and moonrise on a particular day~~, at a particular harvest location.”
The claims filed on 27 January 2011 were in response to a letter I had written to the applicant prior to the hearing setting out my belief that the amendments of 22 October and 23 November were not allowable.
Allowability of Amendments
Section 102 of the Act is germane in assessing the allowability of amendments. The relevant parts read:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosedin the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
(2A)For the purpose of subsection (2), relevant time means:
(a)in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted
It is well understood that an amendment of a specification is not allowable if, as a result, the specification would claim matter not in substance disclosed in the specification as filed. This has been taken to require “a real and reasonably clear disclosure” of the subject matter of the amended claim in the originally filed specification (RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353), noting that express disclosure is not required (Pfizer Inc v Commissioner of Patents [2005] FCA 137).
Amendments of 22 October 2010 and 23 November 2010
When proposing the amendments of 22 October 2010 and 23 November 2010, the applicant stated that support for the inclusion of harvesting between moonset and moonrise could be found in the portion of the description from page 7, line 15 to page 9, line 9. They particularly pointed to the passage at page 8 lines 18–20. The passage highlighted on page 8 reads:
“From a fixed position on the Earth, the distance between the Earth and the moon will fluctuate by 12756 km on a daily basis due to Earth’s rotation. The rotation combined with the elliptical orbit acts like a ladder with potency levels.”
This passage is followed by the following paragraph:
“As the moon moves towards the apogee, potencies will increase with each daily rotation of the Earth. Potency levels will decrease with each daily rotation of the Earth as the moon moves towards perigee.”
On a plain reading of these passages I cannot see any support in these paragraphs for harvesting between moonrise and moonset. Furthermore, no other passage in the specification comes any closer. The paragraphs simply indicate that potency increases as the moon nears apogee and decreases as the moon moves away from apogee. The applicant sought to find support in this passage by the following set of steps:
(i)the specification is directed to increasing potency in plants (e.g. cannabis);
(ii)the specification discloses that lunar apogee maximizes potency;
(iii)the specification discloses that harvesting in a 10 day window centered on lunar apogee produces acceptable potency;
(iv)the PSA would understand that potency is maximised when the moon is furthest away;
(v)the PSA would understand that the moon is furthest away between moonset and moonrise (as the diameter of the Earth is interposed between the harvest location and the moon);
(vi)therefore, the PSA would understand the specification to be teaching harvesting between moonset and moonrise.

To my mind, requiring such a line of reasoning to reach a conclusion that the added features are supported is antithetical to the notion of a “real and reasonably clear disclosure”. The words “real and reasonably clear” carry a notion that the disclosure is readily apparent. It should not be necessary to stray too far from the disclosure to decide whether the feature is disclosed. In my opinion, to arrive at a conclusion of support by a number of steps (which might be suitable when discussing inventive step) indicates a lack of a real and reasonably clear disclosure. In this case, the feature of harvesting between moonset and moonrise can only be inferred with the benefit of hindsight. That is, the PSA has to know the position that they want to reach and then have to follow the steps given above before concluding that the features are disclosed. Such a “hidden” disclosure cannot be considered to be a real and reasonably clear disclosure in the specification.
The feature of harvesting between moonset and moonrise was not in substance disclosed in the specification as originally filed.
For completeness, I will note that, while harvesting between moonset and moonrise was not disclosed in the originally filed specification, the terms “moonset” and “moonrise” did appear in the specification immediately before amendment. Specifically, claim 10, which was added to the specification via the use of Article 19 of the PCT, is in the following form:
“10.A method according to claim 1 wherein harvesting also takes place after moonset and prior to moonrise during a daily cycle.”
It might have been argued that, as moonset and moonrise where already part of the specification prior to amendment, the addition of moonset and moonrise to claims 1 and 13 is not a feature added “as a result of the amendment” (see section 102(1)). However, it is clear that the feature of claim 10 is different to the feature added to claims 1 and 13. Claim 10 requires a “daily cycle”, while claims 1 and 13 mention a “particular day”. Moreover, it is a well established principle that, when construing claims, there is a presumption against redundancy. Following that principle, there is a presumption that claim 10 is different to claim 1. Hence, claim 10 does not provide a basis to argue that the features added to claims 1 and 13 were not added “as a result of the amendment”.
I would also note that there is clearly a lack of support for claim 10 in the specification. As such, its priority date is determined under section 114 and regulation 3.14 to be the date the amendment was made, i.e. 7 February 2005.
I also note in passing that claim 10 is difficult to understand. The lack of support in the description means that applying a meaning to claim 10 is difficult. While “moonset” and “moonrise” are easy to understand, what is meant to be “a daily cycle” is less so.
Amendments of 27 January 2011
These amendments also do not have support in the specification as originally filed. The applicant again pointed to the passages on page 8 which I have noted above and indicated that these proposed amendments more closely matched the particular language of these passages. Unfortunately, they do not. At the very least, there is no disclosure of “a daily rotation cycle of the moon”. I am not aware of the moon having a daily rotation cycle. Apart from that obvious difference, the arguments I have made above are also applicable to these amendments. Harvesting during a daily rotation cycle of the moon (whatever that may mean) to maximise the distance between the Earth and the moon is not in substance disclosed.
Conclusion
It follows that the claims filed on 22 October 2010, 23 November 2010 and 27 January 2011 are not available for consideration in this decision. I will confine my discussion on novelty and inventive step to the claims filed on 6 September 2010.
NOVELTY
The Law
The basic test for anticipation and lack of novelty is the “reverse infringement” test – see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).
In Apotex Pty Ltd v Sanofi-Aventis [2009] FCAFC 134, Bennett and Middleton JJ observed, while discussing the decision in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70:
“From the consideration in Lundbeck, the following is apposite to the consideration of anticipation by the prior art patents in this case:
·Where the prior publication discloses exactly what is claimed, there is anticipation (Lundbeck at [180]).
·There is anticipation if the skilled addressee would add missing information to what is disclosed in the prior art as a matter of course and without the application of inventive ingenuity or undue experimentation (at [181]). A disclosure is sufficient if it enables the skilled addressee, in the ordinary course and without invention, to add what is missing in the prior publication to obtain the claimed invention (at [183]).
·If the prior art discloses the very subject matter of the invention, the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work (at [189]). If the disclosure is of an invention which, if performed, would infringe the patent, there is anticipation.
·The question is whether the disclosure is sufficient to enable the skilled addressee to perceive, understand and, where appropriate, apply the prior disclosure necessarily, but within the ordinary limits of trial and error, to obtain the invention (at [190]).”
The second point listed above is particularly relevant in this case.
There is only one citation of relevance in this matter. The citation is titled “Precision Farming in Horticulture” edited by H. P. Singh et al (hereafter referred to as “Singh”) and is the published proceedings of the National Seminar-cum-Workshop on Hi-Tech Horticulture and Precision Farming held in Lucknow, India, on 26-28 July in 2002. Prima facie, noting the dates of the seminar, this document was available before the priority date of this application and is part of the prior art information to assess novelty against. The applicant did not dispute this.
The examiner indicated that the claims 1, 2, 4–6 and 10–12 filed on 6 September 2010 lacked novelty.
The document comprises the papers that were presented at the seminar. Paper 21 by R. K. Pathak and R. A. Ram on pages 275 to 294 is titled “Approaches for Green Food Production in Horticulture”. The paper advocates a more holistic production management system of farming to minimise excessive use of chemicals and the imbalanced use of fertilizers. At page 280 a topic titled “Biodynamic Calendar” is introduced and it discusses choosing the time to carry out various agricultural practices (such as field preparation, sowing harvesting, etc) in accordance with the movements of the Moon. Under this topic the paper discusses the phases of the moon, the position of the Moon with respect to the signs of the Zodiac and the rotation of the Moon around the Earth and provides advice as to what activities should be performed at various stages throughout the lunar cycle. For example, as the Moon is waxing, the paper indicates that upper parts of the plant are developing and activities such as propagation and spraying can be carried out with better effect.
At page 282, within the “Biodynamic Calendar” topic, the following passage appears:
“Apogee (new moon) — when the moon is farthest from the Earth. This occurs every 27th and 1/2 days. Owing to moisture deficiency, harvesting and seed storage practices show better response.”
Claim 1
The applicant submitted that Singh could not be used for novelty for a number of reasons:
(a)There is no clear and unmistakable direction to harvest on the lunar apogee
(b)There is no clear and unmistakable direction to harvest systematically
(c)There is no clear and unmistakable direction to harvest on a systematic basis in different anomalistic cycles
For (a), the applicant submitted that, in reading the above quoted passage, the person skilled in the art would take the position that either, (i) the apogee and new moon are the same, or (ii) that the apogee and new moon are different and they would not know which one was meant. In the applicant’s opinion, given this confusion there could not be said to be clear and unmistakable directions. As I said at the hearing, and as I still believe, I do not see any confusion over what this passage is indicating. Even if it is conceded that the words “Apogee (new moon)” would be confusing to a reader, any confusion is immediately dispelled by the next few words:
“when the moon is farthest from the Earth.”
There can be no mistake what this passage is talking about – harvesting when the moon is farthest from the Earth.
I believe that this conclusion stands regardless of whether the PSA is considered to be a farmer or a person who grows (and harvests) harvestable plants. The applicant submitted that a farmer would be confused by this passage. The applicant was of the view that a farmer would not understand the meaning of apogee and perigee and would equate apogee and the new moon as the same. Even if a farmer did not know the meaning of “apogee” off the top of their head, recourse to any available dictionary would solve that problem. Moreover, as I pointed out above, whatever confusion exists at the start of the passage would disappear. I do not believe that “a farmer” would be confused in any way.
Regarding (b) and (c), it is true that there is no explicit mention in Singh of harvesting systematically in different anomalistic cycles. However, as noted in Apotex (supra), this does not put an end to the enquiry. As noted in Apotex, claims will still lack novelty if the PSA would add the information that is missing in the prior art as a matter of course and without the application of inventive ingenuity or undue experimentation. That is, if, in following the teaching of Singh, the PSA adds in missing information as a matter of course and, as a result, ends up infringing a claim, that claim is not novel.
In the present case, Singh is not limited to any particular plant. It includes within its scope plants that are harvested once and plants that are harvested systematically. The PSA, as a grower of harvestable plants, would follow the teaching of Singh as it applied to their plants. For plants which required systematic harvesting (such as apple trees, tea plants and the like) the PSA would, as a matter of course, systematically harvest their plants (because that is what they have always done) at the lunar apogee (as taught by Singh) and, given the fact that plants such as apple trees, for example, do not produce further harvestable products within the same month, each harvest would, unavoidably, occur in a different anomalistic cycle. That is, in following the teaching of Singh for a systematically harvestable plant, the PSA would inevitably infringe claim 1.
Given the “reverse infringement” test for novelty, claim 1 filed on 6 September 2010 is not novel in light of Singh.
Dependent claims
I agree with the examiner that claim 2 lacks novelty. Claim 2 defines that the plant life cycle is “managed for systematic harvesting” within the 10-day period around the lunar apogee defined in claim 1. As noted by the examiner in their report, managing a plant’s life cycle is not described in the specification of the present application. However, it seems to be defining the well known practice of planting at particular times during the year and/or caring for plants to ensure that the plants are ready to harvest at other, predetermined times of the year. Following the reasoning given for claim 1, as managing a plant’s life cycle is what the PSA would do in the normal course of events I think it is reasonable to conclude that the PSA, when following the teaching of Singh, would ensure that their plants were cared for so that they are ready to harvest at lunar apogee. As such, their actions would infringe the claim. It is not novel.
It follows from this that claim 8, which defines planting a plant and calculating the harvesting time of a mature plant to coincide with a 10-day window around lunar apogee, lacks novelty. While not explicitly disclosed in Singh, in my opinion it is, nevertheless, a detail that would inevitably be added by the PSA in following Singh.
Claims 4–6 narrow the period of harvesting from a 10-day window around lunar apogee in claim 1 to a 6-day window around lunar apogee (claim 4), a two-day window around lunar apogee (claim 5) and on lunar apogee (claim 6). Singh discloses harvesting at lunar apogee, which falls within any of the windows claimed in these claims. Therefore, these claims are considered to lack novelty.
Claim 11 also lacks novelty in light of Singh. The claim defines that harvesting coincides with the time during the day when there is a reflex tide. A reflex tide is shown in the figures of the application to be the well know phenomenon of the high tide that occurs on the opposite side of the Earth to the moon. There is nothing in the claim defining that the reflex tide must be occurring at the location of the harvest (and would only make sense if the harvesting locality was defined as being coastal), or that the reflex tide must be occurring on the opposite side of the Earth to the harvest location. The claim simply defines that when harvesting is happening so must a reflex tide. There is always going to be a reflex tide somewhere on the Earth at any time during the day. A harvest at any time will be a harvest that coincides with a reflex tide. This claim adds nothing and lacks novelty.
Claims 3 (defining planting in a 10-day period around the new moon), 7 (defining harvesting in a 10-day period around the full moon), 9 (defining choosing to harvest at a particular apogee), 10 (defining harvesting after moonset and prior to moonrise) and 12 (defining harvesting after moonset and prior to moonrise and in a 10-day period around the full moon) are considered to be novel. Singh does not appear to disclose these features.
INVENTIVE STEP
The Law
Section 7 of the Patent Act 1990 provides that

“(2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

(3) The information for the purposes of subsection (2) is:
(a)any single piece of prior art information; or
(b)a combination of any 2 or more pieces of prior art information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”

The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated by the English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd where it was said:

“‘Obvious’ is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of ‘very plain’.”

There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
More recently, the High Court in Aktiebolaget Hassle (supra) referred with approval to this approach and further held:

“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:

‘Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?’

That approach should be accepted.”

I would also point out that, while the applicant’s submissions seemed to be founded on the assumption that a citation could only be used if it would have been ascertained, understood and regarded as relevant, this is not what is required. Section 7(3) clearly uses the word “could”. As such a citation can be used if the PSA could reasonably have ascertained it, could reasonably have understood it and could reasonably have regarded it as relevant.
Ascertained
The only relevant citation in this matter is Singh. It is available for viewing and downloading on the Internet.
The applicant argued, following Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd [2007] FCA 864 where it was found that a naval architect would not have been expected to ascertain the Journal of Ship Research, that it would not be reasonable to expect a farmer to use the Internet. In the applicant’s submission, it followed that the PSA would not have ascertained Singh. While I have characterised the PSA somewhat differently, even if I had agreed with the applicant’s position on the PSA, this submission seems to invoke the view that “farmers” do not turn to the Internet to solve their problems. Such a position seems to fly in the face of pronouncements that have been made on improving Internet performance for rural areas. Why improve something that is not needed? Indeed, a simple enquiry in any Internet search engine will reveal a multitude of web sites where farm supplies and machinery are found. It seems to me that, not only are farmers aware of the Internet, they make use of it and would like better performance.
The position remains the same if the PSA is taken to be as a person who grows harvestable plants, as I have identified them. The Internet is replete with websites which offer advice on growing plants and instructions for improving their “yield” – whether that yield is purely ornamental, like flowers and so forth, or vendible produce. What is more, there has been a clear call over the last decade at least for more “organic” methods of growing to reduce dependence on chemical solutions. While such approaches in the past may have been labelled as methods that lie closer to the “fringe”, it cannot be said now that advice and instructions which had been considered to dwell closer to the fringe will be simply dismissed as undeveloped ideas which warrant no consideration. Again, a search of the Internet for organic solutions to problems reveals a multitude of websites. The sheer numbers cannot be ignored. Given the fact that there are obviously a large number of people creating and maintaining such websites means that the practice of more organic farming methods is widespread and well known in the community. In my opinion it seems inevitable that, as well as searching for solutions in what I would call the “traditional” areas of horticulture, a grower of harvestable plants would have regard to information from the more organic areas.

The applicant’s attorney sought to make much of the fact that searching the problem as expressed by the examiner would not have resulted in Singh being found. Specifically, the applicant submitted that using the word “potency” as a search term would have excluded Singh. To my mind, the questions that arise around this submission are (i) would the PSA have used “potency”, and (ii) would the PSA have used only “potency”? I cannot see why this should be the case. As noted by the attorney, the examiner’s novelty search has the solution built in. It is dangerous to draw definite conclusions of what the PSA could or could not have found on the basis of the search that an examiner did while looking for a novelty citation. I would also note that, while “potency” appears in the description and the description does talk about improving potency, it is in the context or “herbs”, with cannabis being exemplified. When briefly discussing other plants, it speaks of quality, flavour, sweetness and shelf life. The claims are not limited to cannabis. They apply to any plant that is subject to systematic harvesting. In the circumstances I do not think it is right to focus only on the term “potency”. I will note that Singh mentions improved storage (i.e. shelf life). It is just as likely that the PSA could have used the term “storage”, in which case Singh would have been found.
Based on my reasons above, Singh could have been ascertained by the PSA.
Regarded as Relevant
The next point of attack on Singh by the applicant related to the fact that the term “apogee” appears on the 293^rd page of a 363 page PDF document. They submitted that the PSA would not have regarded the document as relevant given this situation. I disagree.
The PSA is not a real person but a construct of the court (like the “reasonable person” in tort law – no single “real” person is held up as the reasonable person). The fact that the relevant disclosure occurs some three quarters of the way through the book is irrelevant. The fact that I, or the applicant’s attorney, or even the applicant may not have the stamina to go so far does not alter the outcome. The case law supports the notion that, having found Singh, it is reasonable to conclude that the PSA could have read all of it. Having read all of Singh, the PSA could have been aware of the improved response shown by plants when harvesting at apogee.
Discussion
Claims 1, 2, 4, 5, 6, 8, 11
I have found above that claims 1, 2, 4, 5, 6, 8 and 11 lack novelty. Given my discussion in relation to Singh being a document that could have been ascertained, understood and regarded as relevant, I believe that the PSA would follow its teaching. It seems inconceivable to me that the PSA, having read Singh and been informed that plants show a better response when harvested at apogee, would then deliberately avoid harvesting at apogee. It follows that these claims also lack an inventive step.
Claim 3
Claim 3 defines that the life cycle of the plant is managed so that planting occurs at a time between the new moon and 10 day after the new moon. In the Pathak et al paper in Singh, Table 2 presents two “phases” of the moon and makes recommendations for agricultural activities to be carried out in these “phases”. The two phases are “Ascending moon” and “Descending moon”. The “Ascending moon” is characterised as a “waxing moon” and describes the stages of this phase as “New moon, crescent moon, first quarter moon, gibbous moon”. That is, the “Ascending moon” phase includes within it, a period of time from new moon to 10 days after new moon. Table 2 makes it clear that the “Ascending moon” phase is suitable for “sowing”. Taking the ascending moon phase as being approximately 13.5 days long, claim 3 differs from the disclosure in Singh by specifying that planting (i.e. sowing) is to taking place in the first 10 out a known 13.5 day period. To my mind, claim 3 defines nothing more than a mere selection. The selection of the first 10 days of a 13.5 day period provides no new or surprising results and there is no barrier in limiting planting to the first 10 days of the period.
Claim 3 lacks an inventive step.
Claim 7
Claim 7 defines that harvesting, as well as taking place in a period of time around the lunar apogee, must also take place within a period of 5 days prior to a full moon and 5 days after the full moon. In my opinion, this does not add an inventive step. Turning to Table 2 of the Pathak paper in Singh again, harvesting is mentioned as suitable in both the ascending and descending moon phases. While Table 2 indicates that harvesting of tuber crops is preferred in the descending moon phase, there is, nevertheless, a clear signpost that harvesting can occur around the full moon. To select a particular 10 day period out of the lunar cycle is a mere choice. There is no particular problem to be solved which would act as a barrier to the PSA that could not be crossed unless an inventive solution was developed. Selecting the particular 10 day period defined provides no new or surprising result.
Claim 7 lacks an inventive step.
Claims 9 and 10
Claim 9 defines that harvesting:
“takes place on a lunar apogee chosen to maximise the distance of the moon from the Earth.”
This claim defines that harvesting only takes place at an apogee that has been chosen because the distance from the Earth to the Moon at this particular apogee is further than the distance from the Earth to the Moon at other (non-chosen) apogees. No parameters are defined as to how the apogee is selected and, while noting that different apogees have different distances, the description provides nothing further either.
Claim 10 suffers from the same lack of clarity. It defines that harvesting, as well as taking place in a period of time around the lunar apogee, must also take place “after moonset and prior to moonrise during a daily cycle”. As noted above in the discussion on allowability of amendment, there is simply no teaching of harvesting between moonset and moonrise. As such it is difficult to understand what this claim is defining.
Notwithstanding this lack of support for both claims, assuming that there had been a disclosure of how to choose between different apogees and assuming that there had been a disclosure of harvesting between moonset and moonrise and that “during a daily cycle” was tied to some 24 hour period, both claims would still lack an inventive step in light of Singh.
Considering claim 9, the clear teaching of Singh is that harvesting when the moon is furthest from the Earth provides better results. That is Singh teaches maximising the distance to the moon. In light of such teaching, when seeking the best results, it is an obvious step to then choose the apogee that maximises that distance. This is all that claim 9 defines. There is no particular problem to be solved which would act as a barrier to the PSA and the selection provides no new or surprising result.
Claim 9 lacks an inventive step.
Turning to claim 10, it is common general knowledge (indeed, I would say it is public knowledge) that the distance to the moon from any particular location on the Earth increases from when the moon is “overhead” at the location to when the moon is “overhead” the point on the Earth’s surface that is diametrically opposed to first location, and then decreases as the moon “moves” from over the diametrically opposed point to back over the first location.
Given the teaching of Singh, it would obvious to the PSA that maximising the distance would be an obvious strategy to try as there would an expectation that an even better response (although likely to be very small) in harvested plants would be achieved. In seeking to maximise the distance to the greatest extent possible, the PSA would readily appreciate that harvesting between moonset and moonrise would be more preferable than harvesting between moonrise and moonset. Therefore, the PSA would readily, and by routine steps, arrive at the claimed invention.
Claim 10 lacks an inventive step.
Claim 12
Claim 12 is simply a combination of claims 7 and 10. It defines harvesting taking place in a period of time around the lunar apogee while at the same time being within a period of 5 days prior to a full moon and 5 days after the full moon and after moonset and prior to moonrise during a daily cycle. Using the reasons set out above, given the clear teaching of Singh on harvesting at apogee, the clear suggestion that harvesting can occur around the full moon and the fact that the PSA would harvest between moonset and moonrise in order to maximise the distance to the moon, claim 12 is simply defining a result that the PSA would readily reach without the exercise of any inventive faculty. No barrier exists to stymie the PSA and no new or surprising result arises by choosing these particular harvesting time parameters.
Claim 12 lacks an inventive step.
CONCLUSION
I have found that the amendments filed by the applicant on 22 October 2010, 23 November 2010 and 27 January 2011 are not allowable. In considering the amended claims filed on 6 September 2010, I have found that claims 1, 2, 4–6, 8 and 11 lack novelty and that claims 3, 7, 9, 10 and 12 lack an inventive step. That is, all claims are anticipated.
In some cases, the Commissioner may be minded to provide the applicant with a short period of time to file amendments to try and overcome these deficiencies. However, given the fact that, after 4 re-examination reports, the applicant has not been able to file any allowable amendments to overcome these same problems, it is clear that there is no subject matter that could be added to the claims that would provide novelty and/or inventive step. As such, there is no reason for further opportunities to be given to the applicant.
I refuse the application.
A FINAL MATTER – DIVISIONAL APPLICATION
The applicant has filed a divisional patent application 2011201254. The specification is in identical terms to the description and drawings that were present at acceptance of the current application, and contains the same claims as those proposed by the applicant on 27 January 2011. I do not understand why the applicant filed this application. The fact that the applicant requested a hearing in the present re-examination matter clearly signals that they believe the current application is acceptable and should proceed to grant. If that is the applicant’s belief, why file another application? If it was filed as “cover” in case the applicant was unsuccessful in re‑examination, it has made the process surrounding the hearing and this decision a complete waste of time and resources for the Commissioner and the applicant. Furthermore, it has introduced uncertainty for the public about whether a patent will be granted on this invention and introduced considerable delay. These are not desirable outcomes.
I note that the action of filing a divisional at this time is clearly within the limits of the Patents Act. I also note that the filing fee for the divisional does not appear to have been paid at present and, unless it is paid by 30 May 2011, the divisional application will lapse. However, assuming the filing fee is timely paid and examination is requested, and while I observe that the doctrine of issue estoppel does not apply to tribunals such as the Commissioner of Patents, it may be assumed that the present decision will be highly relevant to divisional application number 201101254. Moreover, noting my observations in this decision regarding lack of support and lack of clarity for some claims, it is highly likely that objections taken under other sections of the Act that were not considered in this decision will arise during examination of the divisional application.
GREG POWELL
Delegate of the Commissioner of Patents