Cooper Industries Inc v Metal Manufactures Ltd

[1994] APO 10

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 617325 in the name of COOPER INDUSTRIES INC.

Title:    Electrical Connector

Action: Opposition under s.59 of the Patents Act 1952 by METAL MANUFACTURES LIMITED

Decision: Issued . Evidentiary issues. Opposition grounds of lack of novelty, obviousness and non-compliance with s.40 have not been established. Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 617325 by COOPER INDUSTRIES INC. and an Opposition under s.59 of the Patents Act 1952 by METAL MANUFACTURES LIMITED

BACKGROUND

Patent application 617325 (18228/88) "Electrical Connector" by Cooper Industries Inc. was advertised accepted on 28 November 1991.  On 28 February 1992 Metal Manufactures Limited filed a notice of opposition to the application and a statement of grounds and particulars was served on 20 March 1992.  Evidence in support, answer and reply was served on 19 October 1992, 13 February 1993 and 11 May 1993, respectively.  The opposition was heard in Sydney on 11 October 1993.  The applicant was represented by Mr John Hinde of Spruson & Ferguson, Sydney, while the opponent was represented by Mr Peter Heathcote of Shelston Waters, Sydney.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is proceeding under Part V of the Patents Act 1952 with the procedures of the opposition governed by Chapter 5 of the Patents Regulations to the Patents Act 1990.

THE SPECIFICATION

The specification begins by stating that the invention relates to electrical connectors and is more particularly concerned with such devices useful in three-phase electrical systems such as are used, for example, in mining operations.  The specification goes on to reveal that the purpose of the invention is to prevent electrical leakage in plug-to-plug and plug-to-adaptor connectors in hostile environments such as underground mines in order to prevent ignition of inflammable or explosive gases.  It achieves this by more effectively (compared with the prior art) sealing the conductive portions of the connector from moisture and by the use of a ribbed surface within the connector to extend surface creepage distance over which any electrical leakage might travel when the system is operative.  The preferred form of the invention is described with reference to a particular type of electrical connector known as a "bolted coupler".  In these arrangements the interconnected components are joined together by means of bolts.

The specification concludes with ten claims, as follows:

1.   A multi-pole connector wherein each individual pole connector is insulated and sealed, each said connector comprising a first thimble and socket combination, said thimble incorporating an open end adapted to encompass and secure a cable end portion, said thimble being secured to said socket by a securing means, said thimble and socket being sealingly housed in a resilient dielectric moulding, said moulding having an outer circumferential ribbed portion adapted to extend the surface creepage distance over which any electrical leakage must travel, a second thimble and socket combination and dielectric moulding located in mirror image relationship to said first thimble and socket combination, and a shielded pin device comprising a unitary moulded dielectric member having a central web portion with an electrical connecting pin disposed therethrough, said pin extending into the sockets of said first and second thimble and socket combinations and the moulded member being located in encompassing sealing engagement with respective end sections of said resilient dielectric mouldings housing respective said socket portions of said first and second thimble and socket combinations.

2.   A multi-pole connector as defined in claim 1 wherein said securing means comprises a female threaded opening in said thimble and a threaded pin extending within said socket and secured in said female opening.

3.   A multi-pole connector as defined in claim 1 or claim 2 wherein each said dielectric moulding includes a reduced diameter end portion adapted to sealingly engage a cable dielectric portion.

4.   A multi-pole connector as defined in any one of the preceding claims wherein each said socket and thimble is of copper or brass.

5.   A multi-pole connector as defined in any one of the preceding claims wherein said shielded pin moulded member sealingly engages the ribbed portion of each respective said thimble and socket housing moulding.

6.   A multi-pole connector as defined in any one of the preceding claims wherein mutually contacting ends of each respective said thimble and socket are conically formed to provide a conical interface therebetween.

7.   A multi-pole connector as defined in any one of the preceding claims wherein said first thimble and socket combination is incorporated in an adaptor, one end of the casting of which is adapted for sealing connection with a machine or other apparatus which receives or supplies three phase AS/C supply, the adaptor incorporating three separate sealed connectors each incorporating a said thimble and socket combination, one respective said connector for each cable phase.

8.   A multi-pole connector as defined in claim 7 wherein the other end of said adaptor casting is in sealing engagement with one end of a plug casting said plug casting housing three connectors each incorporating a said second thimble and socket combination respective said plug connectors corresponding with respective said adaptor connectors and being connected thereto by respective said shielded pins.

9.   A multi-pole connector as defined in any one of claims 1 to 6 wherein three said first thimble and socket combinations are incorporated in a first plug and three said second thimble and socket combinations are incorporated in a second plug said first and second plugs having sealingly engaged castings and respective said first and second thimble and plug combinations being connected by three respective said shielded pins.

10.  A multi-pole connector as defined in claim 1 and substantially as described herein with reference to the accompanying drawings.

THE STATEMENT OF GROUNDS AND PARTICULARS

The statement specifies three grounds. These are (in summary): obviousness, lack of novelty and non-compliance with section 40.

The particulars are set down in five numbered paragraphs.

Paragraphs 1 to 4 relate to the grounds of obviousness and lack of novelty, and may be condensed to the following:

The invention as claimed is not novel and is obvious in light of the following:

1. Australian Standard 1300-1983 "Electrical Equipment for Coal Mines - Bolted Flameproof Cable Coupling Devices", which was common general knowledge in the art in Australia at the priority date of the claims;

ii.the features of sealing engagement and ribbing to extend leakage path were common general knowledge in the art in Australia at the priority date of the claims;

iii.the knowledge, public use and sale by Cable Makers Australia Pty Limited of their 11KV Single Way Flameproof Flit plug adapters in Australia prior to the priority date of the claims of the opposed application;

iv.the additional features introduced by the dependent claims were common general knowledge in the art or mere workshop improvements.

Paragraph 5 is concerned with the ground of non-compliance with Section 40, as follows:

1. The complete specification does not comply with the requirements of Section 40 of the Patents Act 1952 because:

i.Claim 1 does not clearly define the invention described in that:

(a)the orientation of the ribs forming the ribbed portion are[sic] not clearly  defined;

(b)it is unclear what components form the multi-pole connector and what components form each individual pole connector;

(c)the term "encompassing" is unclear in the context of the claim;

(d)it is unclear whether the "mirror image" is about the horizontal or vertical axis of the connector.

1. Claim 7 does not clearly define the invention described in that:

(a)there is no clear antecedent for the term "the casting" at line 3;

(b)it is unclear whether the adaptor forms part of the multi-pole connector or whether the three separate connectors are pole connectors as defined in claim 1 or additional connectors not having all the features of claim 1.  It appears the features of the multi-pole connector are not introduced until claim 8

(c)it is unclear whether the "said thimble and socket combination" at the penultimate line of the claim is a first or second thimble and socket combination.

THE EVIDENCE

The evidence in support consists of three statutory declarations.  Two of these, one by a Mr Evans and the other by a Mr Arnold, only state that they agree with the third declaration, by a Mr Bergner.

The Bergner declaration has eight exhibits, only five of which are noteworthy.  One of these is a copy of Australian Standard 1300-1983 referred to in the statement of grounds and particulars.  The second is a technical drawing of the 11KV Single Way Flameproof Flit Plug Adaptor which was referred to in the statement of grounds and particulars.  Two others disclose the use of ribbing in insulators to extend the current leakage path.  The last is an exhibit of a specification sheet for a bolted coupler produced by the Joy Manufacturing Company Pty Ltd prior to the priority date of the present claims and having a two piece thimble and socket arrangement.

The evidence in answer is two statutory declarations, one by a Mr Nelson and the other by a Mr Robson.

The evidence in reply is a further statutory declaration by Mr Bergner.  This has three exhibits.  The first consists of extracts from Australian Standard 2380.6-1988: "Electrical equipment for explosives atmospheres explosion protection techniques Part 6: Increased Safety".  The second is extracts from the predecessor of that Standard, Australian Standard 1593-1982.  Mr Bergner declares that the first mentioned Standard is referred to in Australian Standard 1300, but it is unlikely that this could mean Australian Standard 1300-1983, as this pre-dates it, and there is no support for this anywhere else in the evidence.  Australian Standard 1593-1982 is referred to in Australian Standard 1300-1983, Australian Standards 2380.6-1988 and 1593-1982 detail ribbing and creepages, etc.  The third exhibit is two data sheets for the CMA 1100 Volt Bolted Coupler produced and sold in Australia by a company associated with the opponent.

SUBMISSIONS

Mr Heathcote commenced by affirming that the opponent would rely on the three grounds specified in its statement of grounds and particulars.  In relation to the grounds of novelty and obviousness, he indicated there was to be a joint submission but that this would concentrate on obviousness.  The opponent would contend that the differences between the claimed invention and the prior art were non-inventive, mere workshop variations and involved no inventive step.  Mr Heathcote drew my attention to three cases concerning novelty and obviousness: Coopers Animal Health Australia v Western Stock Distributors, 6 IPR 545, W R Grace & Co. v Asaki Kasei Kogyo, (1993) AIPC 90-974, and Elconnex v Gerard Industries, (1993) AIPC 90-984.

Mr Heathcote went on to submit that when faced with the problem presented by the prior art it would have been obvious to the skilled addressee to arrive at the claimed invention.  In particular, the solution to the sealing problem would have been obvious, as would the advantage afforded by the ribbing within the connector.

Mr Heathcote asserted that the bolted coupler illustrated in Australian Standard 1300-1983 was common general knowledge, as were the various types of bolted couplers which were illustrated in exhibits in evidence.  Furthermore, the differences between these bolted couplers and the present claimed invention were also just common general knowledge.  Mr Heathcote considered those differences to be the ribbing, the thimble and socket combination and the sealing of the thimble and socket combination.

Mr Heathcote questioned the relevance of the applicant's evidence, on the basis that it was mainly concerned with bolted coupler devices, whereas the claims in suit did not have this restriction.  They are directed to a multipole connector, but are not specifically limited to the bolted coupler type.

Mr Heathcote concluded by referring to various section 40 deficiencies purported to be present in the specification. These by and large correlated with those particularized in the statement of grounds and particulars.

In response, Mr Hinde questioned the independence of the opponent's declarants, and said that their unsupported conclusions should not be given any weight.  Mr Hinde observed that claim 1 and its appended claims are combination claims, and that they are being attacked with the benefit of hindsight.  He cited Lockhart J. in Nicaro Holdings v Martin Engineering Company, (1990) AIPC 90-670:

"Each of the integers of a combination patent may not be novel.  They may be part of the prior art, but it is the interaction of the combined integers to produce a new result which constitute the invention the subject of a combination patent."

Mr Hinde compared the Australian Standard 1300-1983 with a genus, and the present invention with a species.  According to Mr Hinde, a species will always be novel in light of a genus.

In response to Mr Heathcote's observation that the claims are not limited to bolted couplers, Mr Hinde asserted that the specification, when read as a whole, really related to bolted couplers, but in any case the applicant is entitled to claim as broadly as the prior art allows.

Mr Hinde referred to four differences between the claimed invention and the prior art.  He said that while the opponent had established the prior existence of publications revealing certain integers of the invention as separate items, it would be inappropriate to mosaic those individual disclosures in order to sustain an allegation of obviousness or lack of novelty.

Mr Hinde also raised two procedural issues:

.since the opponent had not put forward any evidence in relation to its section 40 grounds, the law on procedure and the law on evidence in matters of this nature should (as in the case of matters before the courts) be that if evidence is not given in respect of any ground of opposition then that ground is foregone when it comes to a hearing.

.there are a number of publications in evidence which are not referred to in the statement of grounds and particulars and are therefore not entitled to be taken into account in this opposition.

Where appropriate I will deal in more detail with the submissions by each party in my decision (infra).

DECISION

Procedural matters

Mr Hinde submitted that since no evidence relating to the ground of non-compliance with section 40 had been provided by the opponent, it was no longer open to the opponent to pursue this ground, consistent with the approach taken by the courts.

It is important to observe that the present proceeding is a tribunal, a tribunal which, in the words of Lord Denning MR in T.A. Miller v The Minister for Housing and Local Government and Another, (1968) 1 WLR 992,

"is master of its own procedure, provided that the rules of natural justice are applied."

Although the Patents Act 1990 and its regulations introduced a number of requirements modelled on procedures of the Federal Court (the statement of grounds and particulars, dismissal, directions, and so on), I do not see this as meaning that all procedures adopted by courts have application in the context of Patent Office tribunals. In particular, it has been the long-standing practice that at a hearing of an opposition an opponent may raise issues involving section 40 regardless of whether it has put forward evidence in relation to those issues, provided, of course, that section 40 is a ground of opposition. Indeed, it is not uncommon for a hearing officer of his or her own volition to make an adverse finding on a section 40 matter even where the opponent has omitted to make any mention of it. The fact is that section 40 questions frequently do not lend themselves to being the object of meaningful evidence, but rather must be left to skilled practitioners in the field such as patent attorneys to argue their merits, with the proviso, of course, under the present regulations, that they have been the subject of adequate particularization.

Apart from this proviso, I discern no valid reason why the previous practice should be overturned. Were a hearing officer to become aware of a section 40 problem but fail to address it when deciding the opposition, this would necessitate a bar to sealing action. This would appear to be an unnecessarily roundabout way, given the nature of section 40 issues, of dealing with the situation.

I will mention in passing that while I accept that Mr Hinde has given an accurate account of court procedures, I am not entirely sure that those procedures are as rigid as implied by Mr Hinde.  For instance, in National Australia Bank v Nobile and Another (Federal Court of Australia), 100 ALR 227, it was decided that, in some circumstances, it was permissible to amend the pleadings even at the hearing itself and over the other side's objections. This degree of latitude would not normally be available in patent opposition proceedings in analogous circumstances.

The other procedural point concerned the admissibility of certain published documents in evidence.  These documents are not referred to in the statement of grounds and particulars.

As I understand it, the opponent is not alleging that these documents anticipate the invention: this is confirmed by perusal of the documents.

The relevance of these documents can only be to the establishing of the common general knowledge in the art.  If this is so, then there is no necessity to particularize these documents.  Ordinarily it is only necessary to particularize the actual common general knowledge being relied on, and the identification of any documentary evidence used to establish that common general knowledge is in the nature of evidence, not particulars (see, for example, my decisions in Borden v Elkem, (1992) AIPC 90-893, and Sterling Canada v Eka Nobel, an unreported Patent Office decision of 19 April 1993 concerning patent application 628254).  This should be sufficient to fulfil the purpose of the statement of grounds and particulars - to forewarn the applicant of the case against it - since the pervasiveness of common general knowledge is such that the applicant should be able to readily discern the strength or weakness of the opponent's case against it which relies upon the common general knowledge.

Accordingly, I find

.section 40 continues as a ground of opposition to be determined.

.the whole of the opponent's evidence is admissible.

Section 40

The opponent alleges that there are a number of instances of non-compliance with section 40 by the present specification. I need only mention some of these:

.in claim 1, the opponent contends that the orientation of the ribs forming the ribbed portion is not clearly defined.  The wording of the claim is

"said moulding having an outer circumferential ribbed portion adapted to extend the surface creepage distance over which any electrical leakage must travel".

While I accept Mr Heathcote's point that "outer circumferential ribbed portion" includes within its scope ribs which may be transverse to the circumference as well as parallel, this does not appear to involve any lack of clarity.  It simply means that that phrase is broad enough to include both possibilities, and questions of fair basis could arise.  However, in my view the claim is fairly based when it is borne in mind that the claim subsequently defines the ribbed portion as being adapted to extend the creepage distance.

.the opponent submitted that the feature in the  claim that there is

"a second thimble and socket combination and dielectric moulding located in mirror image relationship to the said first thimble and socket combination"

is unclear as to whether the "mirror image" is about the horizontal or vertical axis of the connector.  I take the expression "mirror image relationship" as meaning that the second thimble and socket combination itself, in situ, is a mirror image of the first thimble and socket combination.  I agree with Mr Hinde that the passage in question must be read in conjunction with the definition later in the claim of

"a....pin extending into the sockets of said first and second thimble and socket combinations".

When one takes into account the ordinarily accepted meaning of "pin" as being a straight elongate piece of material for joining two articles together, it is clear that the mirror image location of the first and second thimble and socket combinations must be about a plane perpendicular to their longitudinal axes.

.claim 7 is said by the opponent to be unclear because of uncertainty as to the relationship of certain of its features compared with claim 1, to which it is appended.  In my view, the only criticism which may be levelled against claim 7 is that it is a little awkwardly worded, but without being in any way unclear.  It may be that had claim 7 been drafted as an independent claim even this may have been obviated, but this would have detracted from the overall succinctness of the claims.

At the hearing an issue of peripheral relevance to section 40 arose. Mr Heathcote observed that the claims were directed to a multipole connector without being restricted to that of the bolted coupler type. Mr Hinde's response to this was that if one has recourse to the body of the specification it is apparent that the specification is really concerned with bolted couplers. He then suggested that this limitation should be read into the claims. He cited Interlego v Toltoys, 130 CLR 461.

It is well established law that clear and unambiguous words in a claim cannot be varied or qualified by reference to the body of the specification (see Electric & Musical Industries v Lissen, 56 RPC 23; Rosedale Associated Manufacturers v Carlton Tyre Saving Co., [1960] RPC 59). Interlego v Toltoys re-affirmed this approach.  The meaning of the claim in that case was determined by the wording of the claim itself.  Resort was had to the body of the specification only to confirm what had been obtained from the claim.

Therefore I must part company with Mr Hinde on this point.  It is not correct to construe the claims as being limited to bolted couplers.

As an apparent fall-back position to this, Mr Hinde then submitted that an applicant was entitled to claim as broadly as the prior art allowed.  This is so, provided that other requirements such as fair basis and obviousness are satisfied.

While I am satisfied that the construction placed on the claims by the opponent is, in this regard, the correct one, there are no adverse implications in relation to section 40 arising from this. In my view, the specification clearly provides a fair basis for the claims when so construed. However, the issue does have some bearing in relation to obviousness, and, in particular, the common general knowledge in the art. This is dealt with infra.

Prior-publication and Novelty

The opponent concedes that none of the material in evidence prior-publishes the claimed invention.  At the hearing the opponent indicated it would be concentrating on obviousness, but also contended that the invention is not novel in that the differences between the invention as claimed and the prior art are mere workshop variations and do not involve an inventive step.

The involvement of inventive step in novelty considerations in the manner the opponent appeared to have in mind amounts to applying the test laid down in Griffin v Isaacs, (1938)12 ALJ 169. This is an approach which is no longer open to me to take, in the face of such recent decisions of Werner v Bailey Aluminium Products, (1987) AIPC 90-368, and Nicaro Holdings v Martin Engineering, (1990) AIPC 90-670.

Moreover, the current law on novelty appears to require that considerations such as workshop variations, mechanical equivalents and so only need be taken into account in relation to non-essential features of the invention. That law involves the application of the so-called "reverse infringement test" as set out in Meyers Taylor v Vicarr Industries, 137 CLR 228, 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 oneself whether the alleged invention would, if the patent were valid, constitute an infringement."

In Rodi & Wienenbergerv Henry Showell,(1969) RPC 367, it was held that infringement of a claim occurs where "each and every one of the essential integers of that claim has been taken." The present invention is a combination-type one, and it is well established law that all the features of a true combination are essential. Factors such as workshop variations are rendered irrelevant, and since there is no prior art disclosure having all the features of the claimed invention, then, on the evidence, there is no lack of novelty.

Accordingly, I find that the invention defined by the claims is novel.

Obviousness

A determination of whether an invention is obvious requires that firstly the state of the common general knowledge in the art is ascertained.  The common general knowledge is that which would be attributable to the person skilled in the art (see, for example, Minnesota Mining and Manufacturing and 3M Australia v Beiersdorf(Australia), 144 CLR 253). In the present case I consider that the person skilled in the art would be one with an appropriate engineering background whose job it is to design connectors of the type to which the present invention relates, but without themselves being inventive. It must be borne in mind that the present invention is not restricted to bolted coupler type connectors. In my view, the person skilled in the art of this matter must be ascribed a wide ranging knowledge in the field of power transmission by cable.

At the hearing Mr Hinde questioned the credibility of the opponent's declarants.  He compared the independence of his declarants with the opponent's, who, in effect, are employees of the opponent.  I do not think the picture is quite as stark as Mr Hinde painted it.  After all, the opponent's declarants have given their evidence in properly executed statutory declarations, and I doubt whether the applicant's declarants can be considered as independent in any absolute sense when having been retained by the applicant.  Nonetheless, I believe that the point made by Mr Hinde is a valid one.  Clearly the opponent's declarants should be given less weight than they would have had they been perceived as being more independent.

Despite this shortcoming in the opponent's evidence, I am persuaded by it to, by and large, accept its version of the common general knowledge in the art.  In having done so, I have probably been influenced more by the modestness of what the opponent has set out to establish as common general knowledge rather than the depth of its evidence or the convincingness of its expert declarants.  For example, it would seem commonsense that a standard such as Australian Standard 1300-1983 would be common general knowledge in its own art.  Bolted couplers are clearly common general knowledge.  The use and knowledge of the advantages of ribbing on insulators is that widespread it too must have been common general knowledge in the art at the priority date of the claims.  As for thimble and socket combinations, while one does not get the impression from the evidence that their use was widespread, the matter-of-fact way they are referred to in the evidence leaves the impression that the person skilled in the art (the designer of cable connectors) would have them in his or her armoury of bits and pieces to be used in the design of couplers.  As a final element of common general knowledge, the necessity of adequately sealing these contrivances would be universally understood in the art.

However, a finding of obviousness requires more than that all the parts which make up a combination are common general knowledge.  It also requires that it would have been obvious to a non-inventive skilled worker in the field (that is, the person skilled in the art) to not only select the separate integers which make up that combination, but also to select the particular combination of those integers in question (see Minnesota Mining & Manufacturing and 3M Australia v Beiersdorf (Australia), supra).

I am not convinced that the present combination is obvious. 

The purpose of this type of connector is, apart from its primary purpose of providing a connection, to prevent electrical leakage.  Clearly, this can be achieved by satisfactory insulation and sealing, and these may be improved by even more complex and robust mechanisms.  What the present invention seems to accomplish is a mix of components which provides a desirable level of protection against electrical leakage, but at the same time having advantages in relation to one or more such factors as cost of manufacture, ease of manufacture, durability, ease of handling and ease of repair.  Although the applicant and opponent differed as to the utility and commercial success of the invention, the evidence on this (including the fact of the opposition itself) appears to favour the applicant.

Mr Hinde expressed the view that any invention which required the bringing together of so many pieces of common general knowledge as did the present one could not be obvious.  Once again, the real position is somewhat less open-and-shut than Mr Hinde put it.  Nonetheless, I am inclined to agree that in this case, when account is taken of the factor of ex-post facto analysis, then the detailed nature of the invention and the variety of constituent items of common general knowledge embraced by it point to the invention being non-obvious.  The evidence of the opponent is not sufficiently persuasive to justify a contrary finding as to whether, as a question of fact, the invention is obvious.

Therefore I find that the opponent has not established its ground of obviousness.

Conclusion

I have found that none of the grounds of the opposition have been established, and so I dismiss the opposition filed by Metal Manufactures Limited. I direct that the application proceed to sealing, subject, of course, to any appeal being filed to this decision.

Costs

Costs in this matter should go with the decision. 

I award costs against the opponent, Metal Manufactures Limited.

E. KNOCK
Delegate of the Commissioner of Patents

Patent Attorney for the applicant: Spruson & Ferguson, Sydney
Patent Attorney for the opponent :  Shelston Waters, Sydney