Cyber Technics Pty Ltd v Johnson Screens (Australia) Pty Ltd - [2005] APO 53

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 742060 in the name of CYBER TECHNICS PTY LTD

Title: Screening Assembly

Action: Opposition by JOHNSON SCREENS (AUSTRALIA) PTY LTD under section 59 of the Patents Act 1990

Decision: Issued 2 December 2005.
Abstract

The opponent raised grounds of entitlement, novelty, inventive step and manner of manufacture, which grounds were also pursued at the hearing. The opponent also raised the ground of utility but specifically in relation to the ground of manner of manufacture.
The main invention claimed is a screening machine wherein a combination of features provides for locking of adjacent screen modules to a rail base by a deflection and wedging action. Claims are also made to an attachment rail, a cam key style locking member and a locking member. A single citation and five instances of prior use were raised against novelty. Omnibus claim 28 when read with figure 6 was found to lack novelty.
A single citation, and common general knowledge consisting of prior use disclosures and several patent specifications were raised against inventive step. Omnibus claim 28 when read with figure 6 was found to lack an inventive step.
Claim 21 was found to lack clarity and thus contravene section 40.
The opponent was unsuccessful on the grounds of entitlement and manner of manufacture and was found to have not made out a case on the ground of utility.
Applicant granted sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 21 and 28
In the circumstances no award of costs was made and each party directed to bear their own costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 742060 by CYBER TECHNICS PTY LTD and an opposition under section 59 of the Patents Act 1990 by JOHNSON SCREENS (AUSTRALIA) PTY LTD.

BACKGROUND

Cyber Technics Pty Ltd (Cyber) filed patent application No 742060 as a complete application on 8 December 1998. The application is linked to two Australian provisional applications PP0777 and PP2833 filed on 8 December 1997 and 6 April 1998 respectively. The application was examined and advertised accepted on 13 December 2001.
USF Johnson Screens Pty Ltd filed a notice of opposition on 12 March 2002. The opponent notified the Office of a name change to Johnson Screens (Australia) Pty Ltd by a communication dated 11 June 2002. A statement of grounds and particulars was filed on 11 June 2002. The statement of grounds and particulars was subsequently amended and the amendments allowed on 6 May 2004. The service of evidence in support, evidence in answer and evidence in reply was completed on 24 June 2005.
A hearing to deal with the substantive opposition was held in Canberra on 6 October 2005. The applicant did not appear at the hearing but filed written submissions, prior to the hearing, via their attorney, Griffith Hack, Melbourne, on 10 August 2005. Mr Chris Owens, patent attorney, F B Rice & Co, Sydney, represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
·     Chris Owens, dated 11 June 2003 and exhibits CO-1 to 26. He states that he is a registered patent attorney and partner in the firm F B Rice & Co, Sydney. His declarations provide copies of patent documents and related publication dates.
·     Brandon Ford McDougall, dated 11 June 2003 and exhibits BFM-1 to 10. He states that he is currently employed as a Contracts Manager by Johnson Screens Pty Ltd. He further states that he holds a Mechanical Engineering Certificate (1973), and has worked in the mining industry for 33 years variously as a design draftsman, sales engineer, customer service engineer, and contracts manager. He also states that his declaration is based on his personal knowledge of the industry, information he has received and from a review of Johnson Screens’ records and files.
·     Robert Ian Johnstone, dated 11 June 2003 and exhibits RIJ-1 to 4. He states that since 1992 he has been a Principal of R.I. Johnstone Consulting. He also indicates that after serving an apprenticeship in Mechanical Engineering at BHP Steelworks, Newcastle, for a 40 year period he held positions of Washery Manager for Buchanan Borehole, CSR Lemington, Pelton and Saxonvale Coal Preparation Plants and more recently as Mechanical Maintenance Engineer for Wambo Coal Handling Preparation Plant. In these positions he states that he was involved in numerous tests of new and experimental products for various screen manufacturers including Melwire (the licensee of the opposed patent application), Johnson Screens (Australia) Pty Ltd and their various predecessors (Hunter Wire Products, Hunter Screens, etc.) and hence has established a personal knowledge of the history of the progress and development of the polyurethane modular screening systems of all parties.
·     John William Eeles, dated 7 November 2003. He states that currently he is the R&D Engineer for Johnson Screens Pty Limited. He states that he is a toolmaker and has 25 years of experience in the processing of Polymers by spray and casting (hand and machine) as well as tool and product design.
·     Ronald Keith McGregor, dated 7 November 2003. He states that he is currently the Marketing Manager – Asia Pacific of Johnson Screens Pty Ltd. He further states that he holds Certificates of Mechanical and Structural Engineering from Newcastle Technical College and has worked in the mining industry for 24 years in the areas of production and sales for Hunter Screens and Johnson Screens in Australia and their related companies in the USA.
·     Ronald Leslie Johnson, dated 11 September 2003 together with exhibits RLJ-1 to 12, and declarations dated 10 and 11 November 2003. He states that he is currently the Research and Development manager of Johnson Screens Pty Limited. He further states that he holds Certificates of Mechanical and Structural Engineering from Newcastle Technical College and has worked in the mining industry for 24 years in the areas of design engineer, project engineer, production manager and research and development manager.
Evidence in answer consists of declarations made by:
·     Scott Taylor, dated 9 November 2004. He states that he is the inventor of the subject matter disclosed and claimed in Australian Patent Application 742060. He further indicates that he has been involved in various technical fields including screening equipment for use in washeries, job costing, process routing of products and jobs and is highly skilled in CAD drafting.
·     Allan Taylor, dated 10 November 2004. He states that he holds a PhD (Engineering Stress Analysis) and is the father of Scott Taylor, the inventor of the subject matter disclosed in Australian Patent Application 742060.
·     Darren Taylor, dated 10 November 2004. He states that Scott Taylor is his cousin and that he took over Scott’s position when Scott left Hunter Screens in 1996. He further states that he was aware of all research and development and design work that Scott Taylor was involved in prior to his resignation from Hunter Screens and he was fully aware of all research and design activity that took place up to the time he left Hunter Screens in 2000.
Evidence in reply consists of declarations made by:
· Ronald Leslie Johnson, dated 14 June 2005 together with exhibits RLJ-13 to 17.
· Peter Martin Olsen, dated 14 June 2005 together with exhibit PMO1. He states that he holds a Master of Science [Primary Metallurgy](1990) from Newnham college of Advanced Education, and a Bachelor of Engineering [Mech] (1987) from Swinburne Institute of Technology. He also states that he is currently an Applications Engineer with Johnson Screens Pty Ltd. He further states that he has 25 years experience in the mining and project engineering fields of which the last 8 years were with Johnson Screens in the field of product development, sales management and support of field problems, and filed assessment of product.
THE SPECIFICATION
The specification under consideration is the specification as advertised accepted on 13 December 2001. The specification commences stating, “The present invention relates to screening machines and, in particular, to screening assembly including a screening module for a screening machine.” The description indicates that coal and other particulates are often classified by particle size before further processing and that vibrating machines having screening meshes are used to separate larger from smaller particles. The specification then proceeds to discuss background art, the disadvantages/defects of the prior art and then states that, “It is the object of the present invention to overcome or substantially ameliorate at least some of the above disadvantages.” This is followed by a ‘Summary of The Invention’ covering several different embodiments of the invention similar to the matter covered in the independent claims. Next a detailed description of the invention having reference to several drawings is provided and the specification concludes with thirty claims. The independent claims and omnibus claims read as follows:
1.A screening assembly for a screening machine comprising:
a screen module including:
a screen module body having laterally extending ends and longitudinally extending sides bordering a screen region, a screen surface on the screen region and a lowermost extremity below the screen surface; and
a resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at a said module body end, the end flange being positioned entirely between the screen surface and the lowermost extremity, said module end flange having an outwardly facing flange surface defining an obtuse angle with an adjacent upper surface of said module body, said module end flange further having an inwardly facing flange surface defining a downwardly opening recess with an outwardly facing surface of said module body end;
said screening assembly further comprising:
a laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member, said attachment rail further having a laterally extending attachment rail flange projecting upwardly from said base at an acute angle, said screen module being locatable on said attachment rail with said attachment rail flange received in said recess and said attachment rail flange projecting upwardly and outwardly with respect to said screen module body; and,
a locking member adapted to engage said outwardly facing flange surface following location of said screen module on said attachment rail so as to deflect said module end flange to bring said inwardly facing flange surface into bearing engagement with said attachment rail flange and a portion of the end flange into engagement with the base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange.
20.A locking member for locking adjacent screen modules to an attachment rail in a screening machine, said screen modules having resiliently deflectable laterally extending and downwardly projecting module end flanges located at adjacent ends engageable with laterally extending attachment rail flanges provided on said attachment rail, said locking member being in the form of a cam key having a generally elliptical form adapted to be inserted between said module end flanges, and rotated so as to engage said module end flanges and thereby deflect said module end flanges into locked positions wedged between said locking member and a said attachment rail flange.
21. A screening assembly for a screening machine comprising:
a screen module including:
a screen module body having laterally extending ends and longitudinally extending sides bordering a screen region, a screen surface on the screen region and a lowermost extremity below the screen surface; and
a resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at a said module body end, the end flange being positioned entirely between the screen surface and the lowermost extremity,
said screening assembly further comprising:
a laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member, said attachment rail further having a laterally extending attachment rail flange projecting upwardly from said base, said screen module being locatable on said attachment rail with said attachment rail flange received in said recess, and,
a locking member adapted to engage said module end flange following location of said screen module on said attachment rail so as to wedge said module end flange in a locked position between said locking member and said attachment rail flange and with a portion of the module end flange engaging said base,
wherein said screen module is provided with a longitudinally extending side reinforcement member disposed adjacent each said side of said module body, opposing ends of each said side reinforcement member extending to adjacent respective ends of said screen module, said attachment rail flange being provided with notches for receiving respective said side reinforcing member ends such that, in use, said side reinforcing members are supported by said attachment rails.
25.A screen module for a screening machine which has a laterally extending attachment having a laterally extending attachment rail base, the attachment further having two laterally extending attachment rails projecting upwardly from the base, said screen module including:
a screen module body having laterally extending ends and longitudinally extending sides bordering a screen region, a screen surface on the screen region and a lowermost extremity below the screen surface;
a resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at each laterally extending end of the screen module body, the end flanges being positioned entirely between the screen surface and the lowermost extremity, said module end flanges having an outwardly facing flange surface, and having an inwardly facing flange surface defining a downwardly opening recess with an outwardly facing surface of the screen module body, and
wherein when two such screen modules are located on the screening machine, the laterally extending attachment rails engage in the downwardly opening recesses of the respective modules and a locking member is locatable between the screen modules so as to deflect the module end flanges of the screen modules to bring the respective inwardly facing flange surfaces into bearing engagement with the respective attachment rails and a portion of the end flanges into engagement with the base, thereby wedging the module end flanges in a locked position between the locking member and the attachment rails.
26.A screen module for a screening machine substantially as hereinbefore described with reference to Figures 1 to 4, 10 and 11, Figure 8, Figures 5 to 7 or Figure 12 of the accompanying drawings.
27.An attachment rail substantially as hereinbefore described with reference to Figures 5 to 7, Figure 8 or Figure 9 of the accompanying drawings.
28.A locking member substantially as hereinbefore described with reference to either of Figures 6 and 8 of the accompanying drawings.
29.A locking member substantially as hereinbefore described with reference to Figure 7 of the accompanying drawings.
30.A screening assembly substantially as hereinbefore described with reference to any one of the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of entitlement, novelty, inventive step and manner of manufacture, which grounds were also pursued at the hearing. The opponent also raised the ground of utility but specifically in relation to the ground of manner of manufacture. The opponent filed an application under regulation 5.9 to amend the statement of grounds and particulars on 11 June 2003. The amendment sought to correct typographical errors and to add documents which the opponent became aware of incidental to the preparation of its evidence in support. The applicant was given up to 30 June 2003 to object to the regulation 5.9 application. As no objection was filed the amendment of the statement of grounds and particulars was allowed on 6 May 2004.
DECISION
The applicant did not appear at the hearing and provided written submissions. The opponent provided written submissions and also made oral submissions at the hearing. I shall refer to those submissions wherever relevant in my decision.
Entitlement
The opponent made the following submissions:
1.   The nominated person is either not entitled to the grant of a patent or, is entitled to the grant of a patent only in conjunction with some other person.
2.   The opponent is the true owner of the invention and the patent should be recorded in the name of the Opponent because, the invention was made at a time when the named inventor was an employee of the opponent’s predecessor in business.
3.   Refer to the whole declaration of JWE and RKMG and the declaration of RLJ at paragraphs 15 to 19.
4.   The evidence of the applicant is not entirely believable and the invention claimed in so far as it might be an invention is the property of the opponent.
The applicant made the following submissions:
1.   Regarding the declaration of Ronald Leslie Johnson dated 11 September 2003:
·     In paragraph 16, Mr Johnson refers to an alleged brainstorming meeting, but appears not to have been present at the meeting relied upon to support allegation (sic) that the present inventor made the invention while an employee of the opponent.
·     Nothing in paragraph 16 or following paragraphs 17 to 19 contain any positive information which could possibly support a conclusion that the present invention was made by Mr Taylor whilst an employee of the opponent.
·     Mr Johnson, according to his own admission, was not present at the alleged meetings he relies upon in order to support any contention that the invention was made by the inventor whilst employed by the opponent.
2.   The declaration by Ronald Keith McGregor dated 7 November 2003 also refers to the brainstorming meeting. Mr McGregor is not able to confirm that Mr Taylor was at that meeting, and simply refers to the meeting at which Terry Askew, Chris Owens and he were present, amongst others. Although it appears Mr McGregor has a normal practice of making notes of such meetings, those which relate to the alleged brainstorming meeting cannot be located, as is stated in paragraph 16 of the declaration. Thus nothing in the McGregor declaration supports any contention at all that the present invention was made by the inventor whilst employed by the opponent.
3.   The declaration by John William Eeles dated 7 November 2003 also refers to the alleged brainstorming meeting. However, Mr Eeles concedes that he was not directly involved in the meeting and does not declare that the present inventor was a party to that meeting. Thus, it is also submitted that there is nothing in the declaration by Mr Eeles which can possibly lead to a conclusion that the present invention was made by the inventor whilst employed by the opponent.
4.   The facts recited in the declarations lodged in evidence in support match those given by Mr Taylor in the evidence in answer confirming that he was not present at the meeting, that he was asked by Mr Askew to design a cam lock system. Nothing in the evidence in support provides any basis for concluding that the invention claimed in the present application or, indeed, any matter disclosed in the present application, is rightfully owned or partly owned by the opponent. Furthermore, the evidence given by Mr Taylor in answer to this opposition is not contradicted or commented on in any way in the evidence in reply and for this reason, we also submit that Mr Taylor’s evidence should be accepted.
I shall assess the three different declarations raised by the opponent to determine if they support its case. Mr Eeles states that:
·A meeting was called around late 1995, early 1996 to brainstorm the idea of creating a rotatable fastening system.
·He was not directly involved in this meeting but was aware of its occurrence and of the discussions that took place in the Engineering Department before and after the meeting.
·The concept shown in exhibit RLJ3 of Ron Johnson’s declaration of 11 September 2003 was one idea that was supported by a majority of attendees at that meeting.
·A prototype was produced and the remains are still present in the yard of Johnson Screens premises and are represented by the photographs shown in exhibit RLJ6.
Mr McGregor confirms that he was present at the meeting and that he recognises sketches exhibited as RLJ3 to 5 as being sketches produced either at that meeting or about the time of the meeting. He further states that the meeting was held before Scott Taylor left the employment of Hunter Wire Products. He confirms that a prototype was subsequently produced and that the photographs of the same are in exhibit RLJ6.
Mr Johnson’s declaration confirms the occurrence of events as set out by the other declarants. However, he indicates that he was not present at the meeting and that the meeting was held before Scott Taylor left in April 1996. He confirms that the most promising prototype is illustrated in exhibits RLJ3 to 5 and the photographs of the actual prototype produced are shown in exhibit RLJ6. He then asserts that:
“Scott Taylor, ….employed in the drawing office….while not directly involved in the brainstorming meetings, was working alongside those who were, and would have had occasion to discuss the various proposals during further informal discussions that occurred in the engineering department before and after the brainstorming meetings. These discussions encompassed the cam proposal that was actually prototyped and tested and the other discarded proposals. I believe that the rotatable cam solution disclosed in the opposed application (see figures 14a, 14b & 14c and claims 12 & 20) is substantially identical to rotatable cam solutions discussed and dismissed in the brainstorming meeting referred to above. I do not believe that Scott Taylor is the true inventor of this invention….the invention was made by one or more employees of Hunter Wire Products Pty Ltd and obtained by Scott Taylor in the course of his employment. If, on the other hand, Scott Taylor did make a contribution to the invention, his contribution was made while he was an employee of Hunter Wire Products Pty Ltd and the invention should belong to Hunter Wire Products Pty Ltd and its successors in business.”
Mr Johnson was the only declarant to assert that the prototype made subsequent to the brainstorming meeting was identical to the opposed invention as illustrated in Figures 14a to 14c and as claimed in claims 12 & 20. Having read the claims referred to and looked at the relevant drawings I fail to see the identical nature of the invention asserted by Mr Johnson. I note that Mr Johnson has not provided any comparative drawings to show where the similarities lie and the relevant features in the prototype which disclose the features of the opposed invention. In such matters the standard of proof required is the civil standard, that is, the balance of probabilities, as set out by the Court of Appeal in Dunlop Holdings Ltd.'s Application (1979) RPC 523. In applying this standard of proof, as the Commissioner is functioning as a tribunal, it is generally incumbent upon an opponent to establish their case. Mr Johnson has made several assertions regarding Mr Taylor but has not provided any firm evidence to show Mr Taylor’s involvement in producing the device now claimed in the opposed invention during his stay at Hunter Wire Products Pty Ltd. For instance, drawings produced by Mr Taylor or statements from his supervisor of the time regarding his work at Hunter Wire Products have not been provided. There is no firm evidence before me showing that during Mr Taylor’s employment at Hunter Wire Products Pty Ltd, such an invention was produced or that he was responsible for its production. Accordingly I find that the opponent has not established that the applicant was not entitled to the invention.
Novelty

The opponent alleged lack of novelty on the basis of six documents and by virtue of prior use made in Australia. The opponent listed five instances of prior use relating to lack of novelty and four of these were additionally based on patent documentation. Thus novelty on the basis of citations was included in the prior use submissions. For convenience I shall assess the prior use patent documentation under prior use novelty. The applicant’s declarants provided submissions in rebuttal and I shall address submissions from both parties wherever relevant.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
I shall commence with novelty considerations based on documents raised by the opponent. Both parties did not firmly establish that any of the features of claim 1 were inessential to the working of the invention. I shall, therefore, begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183):
1. A screening assembly for a screening machine comprising:
a screen module including:
a screen module body having laterally extending ends and longitudinally extending sides bordering a screen region, a screen surface on the screen region and a lowermost extremity below the screen surface; and
2. A resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at a said module body end, the end flange being positioned entirely between the screen surface and the lowermost extremity,
3. Said module end flange having an outwardly facing flange surface defining an obtuse angle with an adjacent upper surface of said module body,
4. Said module end flange further having an inwardly facing flange surface defining a downwardly opening recess with an outwardly facing surface of said module body end;
5. Said screening assembly further comprising:
a laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member,
6. Said attachment rail further having a laterally extending attachment rail flange projecting upwardly from said base at an acute angle,
7. Said screen module being locatable on said attachment rail with said attachment rail flange received in said recess and
8. Said attachment rail flange projecting upwardly and outwardly with respect to said screen module body; and,
9. A locking member adapted to engage said outwardly facing flange surface following location of said screen module on said attachment rail so as to deflect said module end flange to bring said inwardly facing flange surface into bearing engagement with said attachment rail flange and a portion of the end flange into engagement with the base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange.
Novelty (citation based)
The opponent raised the first citation (AU A 62147/96) in respect of claims 1 to 19, 21 to 25, and 26 to 30. The remaining five citations were stated to form part of the common general knowledge in Australia at the relevant date. Accordingly I shall assess these five documents to see if they constitute part of the common general knowledge under the ground of inventive step.
AU A 62147/96 (exhibit CO3)
The opponent’s arguments on novelty stated:
“The attachment method described in AU A 62147/96 is clearly identical to the invention claimed in at least claims 1 to 19 and 21 to 25, other than in immaterial detail. The omnibus claims are also anticipated in so far as they do not relate to Fig 7 or 14.
The applicants rely on features of shape which have no significant bearing on the operation of the screen or which are merely mechanical equivalents of other well known systems. For example the differences between this system and the system claimed in claim 1 relate mainly to the specific shape of the rail projections and the module end flange and while the Elastomers system requires some force to engage the module on the rail, this is also mentioned as a possibility in the opposed specification at page 9 line 27 to page 10 line 2. The differences between the claims and the Elastomers (AU A 62147/96) prior art system are described in detail in RLJ#2 18 to 21. Other features mentioned in the dependent claims are also discussed at length in RLJ#2 22 to 46.
Claims 12 and 20 relate to a cam style locking member and is not disclosed by AU A 62147/96.
Though the applicant did not specifically address the citation raised above they made the following counter arguments:
“The essence of the invention….is the requirement for the screen module to have a resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at the module body end, with the end flange being positioned entirely between the screen surface and the lowermost extremity of the screen module. A lock member is adapted to engage the outward facing flange surface following location of the screen module on an attachment rail so as to deflect the module end flange to bring the inwardly facing flange into bearing engagement with the attachment rail flange, and a portion of the end flange into engagement with the base of the attachment rail, thereby wedging the module end flange in a locked position between the locking member and the attachment rail flange. ….These features result in a component of the bearing force locking the module end flange on the attachment flange, both onto the attachment rail flange and the base of the attachment rail which more securely holds the screen module in place. …It is respectfully submitted that the invention as claimed in the present application is clearly novel over all of that prior art.”
AU A 62147/96 discloses an apparatus for screening, separating or grading materials and in particular to the fixing of screen panels to a support frame of such an apparatus. The broadest claim, claim 1 of the specification states:
1.   Screening apparatus for screening, separating or grading materials such as ores or the like including
·     A screen deck frame,
·     At least two adjacent screen panels,
·     An elongate fixing member and
·     An elongate retaining member,
·     Wherein the elongate fixing member is fixed to the screen deck frame and extends along and between facing side edge faces of the adjacent screen panels,
·     Wherein each of the facing side edge faces of the adjacent screen panels includes a longitudinally extending connection portion for engaging an adjacent portion of the fixing member,
·     Wherein the retaining member is engaged with the adjacent screen panels so as to clamp each connection portion thereof between the fixing member and the retaining member such that each screen panel is secured to the frame.
I shall assess the features of opposed claim 1 in light of the citation’s claim 1 and related descriptive material. I find that features 1, 2, 4, 5, 7, and 8 of the opposed claim are clearly disclosed in the citation. I shall now assess the remaining features, 3, 6 and 9 individually.
Feature 3 states, “Said module end flange having an outwardly facing flange surface defining an obtuse angle with an adjacent upper surface of said module body.” The citation does disclose a module end flange having an outwardly facing flange surface (longitudinally extending connection portion for engaging an adjacent portion of the fixing member having an outwardly facing flange surface). However there is no disclosure in the description or the drawings of a “laterally extending and downwardly projecting module end flange having an outwardly facing flange surface defining an obtuse angle with an adjacent upper surface of said module body.” (my emphasis)
Feature 6 states, “Said attachment rail further having a laterally extending attachment rail flange projecting upwardly from said base at an acute angle.” The citation certainly discloses an attachment rail having a laterally extending attachment rail flange projecting upwardly from the rail base but there is no disclosure that the projection is at an acute angle.
Feature 9 states, “A locking member adapted to engage said outwardly facing flange surface following location of said screen module on said attachment rail so as to deflect said module end flange to bring said inwardly facing flange surface into bearing engagement with said attachment rail flange and a portion of the end flange into engagement with the base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange.” I do not find in the citation, that the locking member (elongate retaining member), screen module flange surface (longitudinally extending connection portions which form part of the facing side edge faces of the adjacent screen panels) and the attachment rail flanges and attachment rail base (elongate fixing member) interact in the manner set out in feature 9. In particular the relevant portion of claim 1 of the citation states;
“Wherein each of the facing side edge faces of the adjacent screen panels includes a longitudinally extending connection portion for engaging an adjacent portion of the fixing member,
Wherein the retaining member is engaged with the adjacent screen panels so as to clamp each connection portion thereof between the fixing member and the retaining member such that each screen panel is secured to the frame.”
The key difference evident from this lies in the manner in which the retaining member engages the adjacent screen panels. The citation clearly refers to a clamping action, whereas the opposed invention defines an action by the retaining member wherein the flange is deflected into engagement with the attachment rail flange of the adjacent screen panels and a portion of the flange into engagement with the rail base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange. There is no disclosure of this deflection type manner of engagement and wedging action in the citation. I do not find that claim 1 of the opposed application lacks novelty in light of AU A 62147/96. As claims 2 to 19 are directly or indirectly appended to claim 1, I do not find that they lack novelty in light of AU A 62147/96.
I shall now proceed to consider claims 21 to 25, and in particular claims 21 and 25 which are independent claims. Claim 21 reads as:
1. A screening assembly for a screening machine comprising:
a screen module including:
a screen module body having laterally extending ends and longitudinally extending sides bordering a screen region, a screen surface on the screen region and a lowermost extremity below the screen surface; and
2. A resiliently deflectable, laterally extending and downwardly projecting module end flange disposed at a said module body end, the end flange being positioned entirely between the screen surface and the lowermost extremity,
3. Said screening assembly further comprising:
a laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member,
4. Said attachment rail further having a laterally extending attachment rail flange projecting upwardly from said base,
5. Said screen module being locatable on said attachment rail with said attachment rail flange received in said recess, and,
6. A locking member adapted to engage said module end flange following location of said screen module on said attachment rail so as to wedge said module end flange in a locked position between said locking member and said attachment rail flange and with a portion of the module end flange engaging said base,
7..Wherein said screen module is provided with a longitudinally extending side reinforcement member disposed adjacent each said side of said module body, opposing ends of each said side reinforcement member extending to adjacent respective ends of said screen module, said attachment rail flange being provided with notches for receiving respective said side reinforcing member ends such that, in use, said side reinforcing members are supported by said attachment rails.
Comparing this with the citation I find that features 6 and 7 are not disclosed therein. For feature 6, in particular, the wedge aspect and the module end flange engaging the rail base is not referred to in the citation. The plain meaning of the term ‘to wedge’ as set out in The Macquarie Dictionary, 3^rd Edition, first published 1997, reprinted 2001, is, “to pack or fix tightly by driving in a wedge or wedges”, or “to thrust, drive, or fix (in, between, etc.) like a wedge”. In this case claim 21 is referring to the driving in or fixing of the module end flange between the locking member and the attachment rail flange and with a portion of the module end flange engaging said attachment rail base. The citation shows a clamping action between complementary rib and groove features on the rail flange (groove), module end flange (rib – inner side, groove outer side) and locking member (rib – outer side) to secure the module end flange. There is no disclosure of a wedging action and also, it does not show the module end flange engaging with the rail base. Further the feature of the side reinforcement members in feature 7 are disclosed as internal reinforcement in the citation. However, the notches in the rail flange for ‘receiving respective said side reinforcing member ends such that, in use, said side reinforcing members are supported by said attachment rails’, are not disclosed in the citation. Thus some features of claim 21 are not disclosed in the citation. I find that claim 21 and claims 22 to 24 (appended to claim 21) do not lack novelty in light of the disclosure of AU A 62147/96.
An assessment of claim 25 shows that the feature wherein the locking/retaining member interacts with the module end flanges to secure them, (deflecting and wedging of the module end flanges and end flanges engaging the rail base) is not disclosed in the citation. Thus I find that claim 25 does not lack novelty in light of AU A 62147/96.
The omnibus claims 26 and 30 which define a screen module for a screening machine and a screening assembly clearly possess the key feature of the action of the locking/retaining member and the manner in which it secures the module end flange. This feature is disclosed both in the description as well as the drawings (excluding figs. 7 and 14) referred to in the claims. There is no disclosure of this feature in the citation raised by the opponent. Thus I find that claims 26 and 30 do not lack novelty in light of the disclosure of AU A 62147/96.
Omnibus claim 27 defines an attachment rail with reference to any of figures 5 to 9. The opponent indicated that they did not challenge the omnibus claim referring to figure 7. From a review of the relevant parts of the description and the drawings the following are the features of the attachment rails encompassed by claim 27 (when read with any of figures 5, 6, 8, 9):
·A laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member,
·said attachment rail further having two laterally extending attachment rail flanges projecting upwardly from said base at an acute angle towards each the other,
·a screen module being locatable on said attachment rail with said attachment rail flanges received in said recesses of module end flanges of adjacent screen module bodies and said attachment rail flanges projecting upwardly and outwardly with respect to said screen module body in whose recess the respective flange enters.
A typical attachment rail flange, as per figure 5 of the opposed specification and the rail flange of the citation (figure 1) is shown below:

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A comparison with Figure 1 of the citation shows that in the citation the feature equivalent to the rail flanges is placed at 90^o to the attachment rail base. There is no disclosure of placement of the rail flanges at an acute angle. I do not find that claim 27 of the opposed invention lacks novelty in light of AU A 62147/96.
I shall now assess claims 28 and 29. As claim 29 refers to figure 7, I shall not consider it as the opponent has not challenged the novelty of omnibus claims relating to figures 7 and 14. Claim 28 defines a locking member with reference to either of figures 6 and 8. From a review of the relevant parts of the description and the drawings the following are the features of the locking member encompassed by claim 28. Note that figure 8 refers to a modification of the embodiment in figure 6 and I shall refer to this when relevant:
The locking member is formed as a laterally extending strip which may extend up to the width of the screening machine frame to lock down several screen modules positioned side by side, or may be shorter in length such that each locking strip only extends across one module. The locking strip has an engaging surface, which engages the surfaces of adjacent screen modules, and has an upper portion or head which typically extends onto the upper surface of the adjacent screen modules. The head can be of varying shapes.
The end flange (of the screen module) outwardly facing surface is preferably provided with one or more grooves which engage corresponding projections provided on the engaging surface of the locking member thereby helping maintain the locking member in locking engagement with the module end flange, preventing any possible tendency for the locking member to pop out of engagement. Alternatively the end outwardly facing surfaces (of the screen module) could be provided with projections and the locking member provided with corresponding grooves.
A modification depicted in figure 8 to further inhibit the ingress of fines, involves the provision of a groove or projection on the upper surface of each screen module adjacent the end of the screen region which engages a corresponding projection or groove provided on the underside of the head of the locking strip. The projection will typically be slightly larger than the groove to provide an interference fit improving the seal created.
The citation discloses a locking member with the features set out for opposed claim 28 when linked to figure 6. In particular figure 1 of the citation and the related description at pages 7 and 8 disclose features which I have compared with equivalent features in opposed claim 28:
1.   An elongate retaining member in the form of a rail – equivalent to - locking member formed as a laterally extending strip.
2.   Cover portion – equivalent to - upper portion or head.
3.   Downwardly depending plug portion – equivalent to - engaging surface of the locking member
4.   Connecting elements in the form of ribs which are complementarily shaped to seat within grooves of arms of adjacent screen panels – equivalent to - The end flange (of the screen module) outwardly facing surface is preferably provided with one or more grooves which engage corresponding projections provided on the engaging surface of the locking member. Alternatively the end outwardly facing surfaces (of the screen module) could be provided with projections and the locking member provided with corresponding grooves.
Thus I am satisfied that the citation has disclosed all the features of claim 28 when read with figure 6. When claim 28 is read with figure 8 it discloses a modification “…the provision of a groove or projection on the upper surface of each screen module adjacent the end of the screen region which engages a corresponding projection or groove provided on the underside of the head of the locking strip.” This feature is not disclosed in the citation. I find that claim 28 when read with figure 6 lacks novelty in light of AU A 62147/96. I also find that claim 28 when read with figure 8 does not lack novelty in light of AU A 62147/96.
I have found that claims 1 to 27, claim 28 when read with reference to figure 8, and claims 29 to 30 do not lack novelty in light of AU A 62147/96. I have found that claim 28 when read with reference to figure 6 lacks novelty in light of AU A 62147/96.
Novelty (Prior Use)

The opponent listed five instances of prior use relating to lack of novelty. I shall address each instance separately. Further, I shall consider claims 1 to 19, 21 to 25 and 26-28, 30 raised by the opponent for purposes of novelty in the following groups:- Claims 1 to 19, 21 to 26, 30 as one group (hereinafter referred to as the main invention), and claims 27 and 28 on an individual basis.
Binder & Co AG., Nordberg Australia Pty Ltd, Bivi-Tec (henceforth referred to as Bivi-Tec)
The declarant Mr McDougall has provided exhibits showing the system which he alleges was in use in Australia prior to the earliest priority date (henceforth referred to as the relevant date) of the opposed application. Declarant, Mr Johnstone, also supported his assertions. Mr McDougall’s exhibits BFM3 and 4 are of direct relevance to the issue of novelty of the opposed invention. Mr Johnston’s exhibit RIJ1 is also relevant to an assessment of novelty of the opposed invention. Both declarants assert that the device shown in the exhibits was in use in Australia at the relevant time. The applicant has not challenged this assertion but is of the view that this device (exhibit RIJ1) does not challenge the novelty of the opposed invention.
The device relates to a method of securing screen webs (which screen various materials) to a screening machine. The drawings (BFM4, RIJ1) and related description show adjacent screen cloths secured to a support beam by a rubber clamping strip inserted between the adjacent screen cloths. The rubber clamping strip is flat at the top lying flush with the upper screen cloths and is tapered at the bottom where it is located in the support beam. The support beam lies below the screen cloths and no visible support for the support beam is shown. The support beam is described as having a C shape wherein the C is lying flat with the normally upright curved side now horizontal with the legs of the C facing vertically upward. The actual shape is obtained by pinching the flat C at a point halfway to the top to obtain a bottom half having a normal V shape and the top half having legs emerging from the V angled to almost meet each other. In the gap at the top between the legs the ends of the adjacent mats are inserted with the clamping strip between the screen cloths. The ends of the screen cloths lie flush with the inner surface of the two upper legs of the support beam. A portion of the ends of both screen cloths lie flush with the outer surface of the two upper legs of the support beam. The bottom of the V portion of the support beam is shown as being supported on rods in some embodiments.
A comparison with the opposed invention relating to:
A screening assembly for a screening machine, and A screen module for a screening machine (claims 1 to19, 21 to 26, and 30)
shows a number of differences. The major difference is that in the opposed invention the actual screen cloth has no direct contact with a clamping device or similar, being placed in a screen module. The support beam of the citation bears no resemblance to the attachment rail and rail flanges of the opposed invention. Also, in the opposed invention, a portion of the module end flange engages the attachment rail base in the locked position and this is missing from the citation. Thus the prior use in Australia of the Bivi-Tec device does not render the opposed main invention as lacking in novelty.
Johnson Screens (Australia) Pty Ltd (and their predecessors in business) (PIPO II) (henceforth referred to as PIPO II)
The opponent contended that the system disclosed in AU A 60947/90 was in use prior to the relevant date in Australia. The applicant did not challenge the prior use. Reviewing the PIPO II disclosure as embodied in AU A 60947/90 I find that adjacent screen module end flanges are locked side by side on an attachment rail, wherein the respective rail flanges have protrusions with lips designed to mate with recesses in the end flanges of the screen modules. There is no disclosure of (i) a locking member, and (ii) the deflection of the adjacent screen module flanges on locking to engage the rail flanges and the rail base. The PIPO II disclosure does not render the opposed main invention as lacking in novelty.
Lettela Pty Ltd (Elastolok or Elastoscreens) (henceforth referred to as Lettela)
The opponent submitted that the device as disclosed in AU A 80172/91 was in use prior to the relevant date in Australia. The applicant did not challenge the prior use. The disclosure shows a device similar to AU A 62147/96 (discussed previously under Novelty (citation based)) with one major difference. This device differs from the AU A 62147/96 disclosure in that the facing side edges of adjacent screen panels do not possess a connection portion in the form of an arm that is connected to the side edge face by a cantilever section. A comparison with the opposed main invention shows that the prior art disclosure fails to define the feature wherein the locking member deflects the flange faces of the adjacent screen panels into contact with the inner flange faces of the attachment rail and further contact with the base portion of the attachment rail. I do not find that the Lettela disclosure has rendered the opposed main invention as lacking in novelty
Fioris Pty Ltd (henceforth referred to as Fioris)
The opponent submitted that this system formed part of the common general knowledge in Australia and was in use in Australia prior to the relevant date. The applicant did not challenge this assertion of prior use and disclosure in Australia. The relevant document raised by the opponent is AU A 21009/83. This discloses adjacent screens with flange edges each comprising a complementary half shaped as one half of a bulb. The bulbous portion faces away from the respective adjacent screen. The retaining member for holding the adjacent screens together has a matching bulbous shaped hollow into which the two complementary portions fit to secure the adjacent screen flanges to a clamping bar. This document has not disclosed the features of the opposed main invention, such as:
“A locking member adapted to engage said outwardly facing flange surface following location of said screen module on said attachment rail so as to deflect said module end flange to bring said inwardly facing flange surface into bearing engagement with said attachment rail flange and a portion of the end flange into engagement with the base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange.”
I do not find that the Fioris disclosure has rendered the opposed main invention as lacking in novelty.
Advanced Polymer Products, Screenex and Richardson Pacific (henceforth referred to as Screenex)
The opponent submitted that this system formed part of the common general knowledge in Australia and was in use in Australia prior to the relevant date. The applicant did not challenge this assertion of prior use and disclosure in Australia. The relevant document raised by the opponent is US 4,141,821. This document discloses four adjacent screen elements each with end flange elements being connected to each other at the respective corner edge. The edge of each screen element constitutes a 90^o sector of a tube wall and when the four screen elements are assembled the four corner edges combine to form a hollow tube. The screen elements are placed upon support bars and secured to the support bars by the insertion of a securing pin. The flanges are secured to the support bar by the pin wedging the flange portions against the support bars. Various similar embodiments are also disclosed. Thus there are a number of key differences between the citation and the opposed main invention. The opposed main invention discloses the securing of a single/two adjacent screen modules, not four, along extended lateral edges to an attachment rail base with rail flanges projecting upwardly and outwardly at an acute angle. The locking mechanism shows a locking member adapted to engage outwardly facing flange surfaces (of said screen module) following location of said screen module on said attachment rail so as to deflect said module end flange to bring inwardly facing flange surfaces into bearing engagement with said attachment rail flange and a portion of the end flange into engagement with the base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange. Thus several features which combine to form the opposed main invention do not find disclosure in US 4,141,821. I find that the disclosure by prior use of Screenex has not shown the opposed main invention to be lacking in novelty.
Claim 27 – Novelty (prior use)
Omnibus claim 27 defines an attachment rail with reference to any of figures 5 to 9. The opponent indicated that they did not challenge the omnibus claim referring to figure 7. From a review of the relevant parts of the description and the drawings the following are the features of the attachment rails encompassed by claim 27:
A laterally extending attachment rail having a laterally extending attachment rail base adapted to be fixed to, or integrally formed with, a screening machine frame member,
said attachment rail further having two laterally extending attachment rail flanges projecting upwardly from said base at an acute angle toward the other said attachment rail flange,
a screen module being locatable on said attachment rail with said attachment rail flanges received in said recesses of module end flanges of adjacent screen module bodies and said attachment rail flanges projecting upwardly and outwardly with respect to said screen module body in whose recess the respective flange enters.
A typical attachment rail flange, as per figure 5 of the opposed specification as well as figures 7 and 2 respectively of the citations is shown below:

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80172/91

The most relevant disclosures in this regard are the Lettela and PIPO II disclosures. A comparison with Figures 7 and 2 respectively of the citations shows that in the citations the feature equivalent to the rail flanges is placed at 90^o to the attachment rail base. There is no disclosure of placement of the rail flanges at an acute angle. I do not find that claim 27 of the opposed invention lacks novelty in light of Lettela and PIPO II disclosures.
Claim 28 – Novelty (prior use)
Claim 28 defines a locking member with reference to either of figures 6 and 8. From a review of the relevant parts of the description and the drawings the following are the features of the locking member encompassed by claim 28. Note that figure 8 refers to a modification of the embodiment in figure 6 and I shall refer to this when relevant:
The locking member is formed as a laterally extending strip which may extend up to the width of the screening machine frame to lock down several screen modules positioned side by side, or may be shorter in length such that each locking strip only extends across one module. The locking strip has an engaging surface, which engages the surfaces of adjacent screen modules, and has an upper portion or head which typically extends onto the upper surface of the adjacent screen modules. The head can be of varying shapes.
The end flange (of the screen module) outwardly facing surface is preferably provided with one or more grooves which engage corresponding projections provided on the engaging surface of the locking member thereby helping maintain the locking member in locking engagement with the module end flange, preventing any possible tendency for the locking member to pop out of engagement. Alternatively the end outwardly facing surfaces (of the screen module) could be provided with projections and the locking member provided with corresponding grooves.
A modification depicted in figure 8 to further inhibit the ingress of fines, involves the provision of a groove or projection on the upper surface of each screen module adjacent the end of the screen region which engages a corresponding projection or groove provided on the underside of the head of the locking strip. The projection will typically be slightly larger than the groove to provide an interference fit improving the seal created.
The only prior use document, which is relevant in this matter, is the Lettela disclosure. In particular Figures 1, 4 and 7 disclose the features as set out for the locking member of claim 28 when read with figure 6. The modifications of the opposed locking member as set out in figure 8 are not disclosed in the Lettela disclosure. Thus I find that opposed claim 28 when read with figure 6 lacks novelty in light of the Lettela disclosure.
In conclusion claims 1 to 27, 29-30, and claim 28 when read in light of figure 8, do not lack novelty in light of the prior use disclosures raised by the opponent. Claim 28 when read with figure 6 lacks novelty in light of the Lettela disclosure.
Inventive Step
The opponent submitted that the invention so far as claimed in any claim did not involve an inventive step having regard to the common general knowledge or a single document or act when combined with the common general knowledge. The applicant countered that the claims were clearly inventive over the prior art references whether considered alone or as combined in the manner allowed in section 7 as it existed at the time of lodgement of the application.
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available 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.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
·a determination of the problem sought to be solved by the opposed patent specification
·a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
·a determination of the common general knowledge in Australia at the priority date (8 December 1997)
The problem of the prior art identified in the opposed specification relates to attaching screening modules to a screening machine such that the module stayed secure during screening operations. Difficulties such as inserting and removing the modules, and a tendency to ‘pop’ out of position under certain operating conditions have been identified. Also the use of pins to secure the modules suffered from the defect wherein the pins were subject to shear failure. The object of the invention was to overcome or substantially ameliorate some of the disadvantages mentioned.
The hypothetical non-inventive skilled worker in the field would be an engineer working in the field of ore processing/screening and an engineer involved in the design/manufacture of ore screening systems.
The common general knowledge (henceforth referred to as cgk) relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"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."
In order to determine the cgk in Australia I shall have regard to the submissions of the various declarants in this matter. I shall also have to consider their experience in the relevant art in Australia and whether that would provide them with the relevant cgk.
Brandon Ford McDougall:- There is no indication that this declarant was working in the field of ore screening/processing nor is there any indication that he was involved in the design/manufacture of ore screening systems. I note that he possesses the information and knowledge to comment on the availability and use in Australia of various screening systems prior to the earliest priority date of the opposed patent application.
Robert Ian Johnstone:- This declarant has had extensive experience in coal washeries, coal preparation and screening systems. I consider this declarant would be able to provide information on the common general knowledge in Australia at the relevant date.
John William Eeles:- There is nothing to show that this declarant had direct experience in ore screening/processing or the design/manufacture of ore screening systems. I do not consider that he can provide details regarding what constituted the cgk in Australia at the relevant date.
Ronald Leslie Johnson:- He does not provide details of screening systems that he actually worked on or worked with or designed. There is no indication of a detailed involvement with screen usage or screen design. I consider that he will be unable to provide information regarding what constituted the cgk in the art in Australia at the relevant date. However, I note that he possesses information on various screen systems which he states he was familiar with before the relevant date.
Ronald Keith McGregor:- There is no indication of Mr McGregor having worked on or worked with or having designed screening systems, or of any detailed involvement with screen usage in a mining/industrial environment. I consider that Mr McGregor will be unable to provide information regarding what constituted the cgk in the art in Australia at the relevant date. However, I note that he possesses information on various screen systems which he states he was familiar with before the relevant date.
Peter Martin Olsen:- There is no indication of Mr Olsen having worked on or worked with or having designed screening systems, or of any detailed involvement with screen usage in a mining/industrial environment. I consider that Mr Olsen will be unable to provide information regarding what constituted the cgk in the art in Australia at the relevant date. However, I note that he possesses information on various screen systems which he states he was familiar with before the relevant date.
The opponent stated that the following documents and instances of prior use formed part of the common general knowledge in Australia before the earliest priority date of the opposed patent application. As some of the documents are linked to prior use, I shall group the documents and related disclosures:
·     Prior Use:- AU A 80172/91, Lettela and AU A 46121/93; AU A 21009/83, Fioris; US 4,141,821, Screenex; AU A 60947/90, PIPO II; and Bivi-Tec.
·     Patent Documents:- AU A 24859/84 (equivalent to US 4,670,136), AU A 44810/85, AU A 18312/88, AU A 69864/87, US 5,361,911, US 5,112,475, US 5,372,261, US 5,049,262, US 3,980,555.
The applicant disagrees with the above submission and states that,
“…if it is accepted that PIPO II, Fioris, Elastomer (possibly a reference to Elastolok/Elastoscreens/Lettela), and Bivi-Tec screen panels were part of the common general knowledge we do not consider that common general knowledge renders the present claims lacking in inventive step whether they are considered alone or in combination with the printed reference.”
“…the evidence does not establish why, even if it is accepted that the above material is part of the common general knowledge, why it would be obvious or how it would be obvious to make up the differences between the present invention as claimed and the prior art which is identified in the conclusion set out above under the heading ‘Novelty’.”
The citations raised by the opponent consist of several patent documents and in some cases prior use disclosures linked to specific patent documents. I shall apply the tests set out by the courts to determine if these disclosures form part of the common general knowledge in the art. Regarding the several patent specifications which the opponent alleges constitutes part of the cgk in Australia, the Courts (see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482) have stated that in general:
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge ..."
However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question.”
Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280. Thus where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants.
A review of the patent documents raised by the opponent establish that in three citations the use of locking pins to secure the screen modules is disclosed and in three instances the use of longitudinal strips to secure adjacent screen modules is disclosed. Clearly this is insufficient to show that these features form part of the common general knowledge in Australia. However I note that there has been widespread acknowledgment of the knowledge of these features in the prior use documents and devices illustrated therein and by most of the declarants. Based on this acknowledgement I am satisfied that use of:
1.   Pins to secure screen modules, and
2.   Longitudinal strips to secure screen modules.
formed part of the cgk in Australia at the relevant date. Further, based on the statements of several of the declarants, regarding their knowledge of, and the availability and use of, the prior use disclosures I am satisfied that the individual teachings of these disclosures formed part of the common general knowledge in Australia at the relevant date. Also in respect of the cam key locking member of claim 20 there is agreement between both parties that a furniture/kitchen cupboard cam style locking concept was part of the cgk in Australia at the relevant date. However nothing has been provided in the way of drawings or description to show what a furniture cam style locking concept is and in what way it is similar to the claimed locking cam style member of the opposed invention. There is no evidence to show how knowledge of the furniture cam concept would lead to the presently claimed cam key locking member. I shall now consider if the opposed invention lacks inventiveness on account of it being obvious to a person skilled in the relevant art in light of solely the common general knowledge in the art established previously. For this purpose I shall assess the claims in the following groups:- (a) Claims 1 to 19, 21 to 26, and 30, (b) Claim 20, 29, (c) Claim 27, and (d) Claim 28.

(a) Claims 1 to 19, 21 to 26 and 30:- I had assessed the disclosures of prior use and concluded that none of them disclosed the invention as claimed in claims 1 to 19, 21 to 26 and 30. The addition of the cgk from the prior use disclosures (use of pins/longitudinal strips to secure screen modules) and the furniture cam concept, does not add anything new to the prior use disclosures. Given the problem of securing the screen modules, I do not find that there is anything in the established cgk which would point the skilled addressee in the direction of the opposed invention. In particular there are no pointers as to why the skilled addressee would choose the combination of features wherein, a locking member would effect the deflection of adjacent screen module flanges on locking, to engage the rail flanges and the rail base, thereby securing the screen modules to a rail base. I find that the invention as claimed in claims 1 to 19, 21 to 26 and 30 does not lack an inventive step, solely in light of the common general knowledge.
(b) Claims 20, 29:- These claims disclose a locking member in the form of a cam key having a generally elliptical form adapted to be inserted between the module end flanges of adjacent screen modules of a screening machine, and rotated so as to engage said module end flanges and thereby deflect said module end flanges into locked positions wedged between said locking member and an attachment rail flange. None of the novelty citations or prior use documents disclose this concept. Considering the cgk as established by the furniture cam concept and prior use disclosures, I do not find that there is any matter which would point in the direction of or disclose the concept of the locking member of claims 20 and 29. I find that the established cgk does not show the invention of claims 20 and 29 to be obvious.
(c) Claim 27:- I had found that claim 27 of the opposed invention did not lack novelty in light of Lettela and PIPO II prior use disclosures. Claim 27 defines an attachment rail with reference to any of figures 5 to 9. The opponent indicated that they did not challenge the omnibus claim referring to figure 7. The major difference between the disclosures and the opposed attachment rail lay in the feature equivalent to the rail flanges, being placed at 90^o to the attachment rail base in the disclosures. There is no disclosure of placement of the rail flanges at an acute angle to the rail base such that opposing flanges point towards each other. The established cgk does not show such a feature in respect of screen modules attached to a rail base. I do not find that selection of a rail base with adjacent rail flanges placed at an acute angle to the base would be obvious to the skilled addressee in light of the known cgk. I find that claim 27 when read with reference to figures 5 to 9 does not lack an inventive step solely in light of the cgk in Australia at the relevant date.
(d) Claim 28:- I had found that claim 28, when read with figure 6, lacked novelty in light of AU A 62147/96 and the prior use Lettela disclosure (including AU A 80172/91). As I had determined that the prior use disclosures raised by the opponent, including the Lettela disclosure, formed part of the cgk in Australia at the relevant date, I consider that the invention defined by claim 28 when read with figure 6, would be obvious to the skilled addressee in light of the Lettela disclosure. I find that claim 28 when read with figure 6 lacks an inventive step in light of the Lettela disclosure.
Claim 28 when read with figure 8 disclosed a locking member/strip wherein there is provision of a groove or projection on the upper surface of each screen module adjacent the end of the screen region which engaged a corresponding projection or groove provided on the underside of the head of the locking strip. The cgk does not disclose or suggest such an arrangement. I find that claim 28 when read with figure 8 does not lack an inventive step in light of the cgk alone.
I conclude that the common general knowledge on its own would not have led the skilled addressee, when faced with the problem of the prior art, to the invention as defined in claims 1 to 27, 28 (when read with figure 8), 29, and 30. I find that claim 28 when read with figure 6 lacks an inventive step in light of the common general knowledge alone.
The opponent has raised lack of inventive step in light of a single document when read in light of the common general knowledge. I shall now determine if the teaching of the document raised by the opponent, in combination with the cgk in Australia, would render the opposed invention as lacking an inventive step.
AU A 62147/96 (exhibit CO3)
This document describes a screening apparatus and in particular the fixing of screen panels to the support frame of such an apparatus. As this apparatus clearly lies in the field of the opposed invention I consider that it would have been ascertained, understood and regarded as relevant by the non-inventive skilled worker in the art. As the claims of the opposed patent application cover several aspects of the invention relating to screen modules and the means to secure them, I shall assess the claims in the following groups:- (a) Claims 1 to 19, 21 to 26, and 30, (b) Claim 20, 29, (c) Claim 27, and (d) Claim 28.
(a) Claims 1 to 19, 21 to 26, and 30:- These claims define a screening assembly and a screen module for a screening machine. I had compared these claims with AU A 62147/96 under Novelty and I had determined there were differences between the disclosures. The key difference evident from the comparison lay in the manner in which the retaining member engaged the adjacent screen panels. The citation clearly referred to a clamping action, whereas the opposed invention defined an action by the retaining member wherein the flange is deflected into engagement with the attachment rail flange of the adjacent screen panels and a portion of the flange into engagement with the rail base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange. There is no disclosure of this deflection, manner of engagement and wedging action in the citation.
Considering the cgk as established by prior use disclosures (Pins to secure screen modules, and Longitudinal strips to secure screen modules, and furniture cam concept, I do not find that there is any matter which would point in the direction of or disclose the concept of the deflecting and wedging action of the retaining member with regard to screen modules. In this regard, Declarant Johnson for the opponent has stated (declaration of 10 November 2003):
“In my opinion, there is nothing disclosed in the opposed specification that is not a mere super-position of the features of the Bivitec system on the one hand and the PIPO II, Fioris or one of the Elastomers systems on the other hand.”
The use of hindsight in assessing the obviousness of an invention has been addressed by the Courts in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293.
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."
Apart from assertions the opponent has not shown how the person skilled in the art would be led directly to combine the various individual features disclosed in the cgk to obtain the claimed invention. The opponent has not established that claims 1 to 19, 21 to 26, and 30 lack an inventive step in light of AU A 62147/96 when combined with the cgk in Australia.
(b) Claim 20, 29:- These claims define a locking member, for locking adjacent screen modules to an attachment rail in a screening machine, in the form of a cam key having a generally elliptical form adapted to be inserted between the module end flanges of adjacent screen modules of a screening machine, and rotated so as to engage said module end flanges and thereby deflect said module end flanges into locked positions wedged between said locking member and an attachment rail flange. AU A 62147/96 does not disclose this concept. Considering the cgk as established by prior use disclosures and the furniture cam concept, I do not find that there is any matter which would point in the direction of or disclose the concept of the locking member of claims 20 and 29. The opponent’s declarant Johnstone states (declaration of 10 November 2003)
“The feature of claim 20 is the adaptation of well known technology. The idea was conceived, together with others, for use in the screening industry in the manner claimed, whilst the “inventor” was employed by the opponents’ predecessor in business.”
I have reviewed the evidence provided by the opponent in this regard and there is no disclosure of the cam key of the opposed invention. No evidence is provided to show why the skilled addressee possessing the citation and the established cgk would be led directly and without difficulty to the invention of claims 20 and 29. I find that Claims 20 and 29 do not lack an inventive step in light of AU A 62147/96 when combined with the cgk in Australia.
(c) Claim 27:- I had found that claim 27 of the opposed invention did not lack novelty in light of the Lettela and PIPO II disclosures. Claim 27 defines an attachment rail with reference to any of figures 5 to 9. The opponent indicated that they did not challenge the omnibus claim referring to figure 7. The major difference between AU A 62147/96 and the opposed attachment rail lay in the feature equivalent to the rail flanges, being placed at 90^o to the attachment rail base in the disclosures. There is no disclosure of placement of the rail flanges at an acute angle to the rail base such that opposing flanges point towards each other. The established cgk when combined with the teaching of AU A 62147/96 does not teach towards such a feature. I do not find that selection of a rail base with adjacent rail flanges placed at an acute angle to the base would be obvious to the skilled addressee in light of the known cgk when combined with AU A 62147/96. I find that claim 27 when read with reference to figures 5 to 9 does not lack an inventive step in light of AU A 62147/96 when combined with the cgk in Australia at the relevant date.
(d) Claim 28:- I had found that claim 28, when read with figure 6, lacked novelty, in light of AU A 62147/96 and the prior use Lettela disclosure (AU A 80172/91) when considered individually. I had also determined that the invention defined by claim 28 (locking member) when read with figure 6, would be obvious to the skilled addressee in light of the Lettela disclosure, which was considered to be part of the cgk in Australia at the relevant date. The consideration of the disclosure of AU A 62147/96 (which is similar to the Lettela disclosure in terms of the locking/retaining member) when combined with the cgk in Australia would therefore directly lead the non-inventive skilled worker in the art to the invention claimed in claim 28 when read with figure 6. I find that the invention of claim 28 when read with figure 6 lacks an inventive step in light of AU A 62147/96 when considered together with the cgk in Australia.
Manner of Manufacture
The opponent submitted the following at the hearing:
“The invention as claimed in claims 1 to 30 is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies.
(i) the claimed invention does not meet the threshold requirement of having the necessary quality of inventiveness for it to be proper subject of letters patent under the Statute of Monopolies; and or
(ii) the claimed invention defines nothing more than the application of known devices or techniques to a known problem; and or
(iii) the claimed invention, so far as claimed in any claim, is a mere collocation of known integers; and/or
(iv) when considered on the face of the specification itself or in light of the publication of any one of the documents, or the prior use described above, the specification does not disclose a new invention.”
Further arguments provide by the opponent were directed to the ground of utility and I shall address those separately. I will consider the issues in the order in which they have been raised. Looking at item (i); the opponent has failed to show that the main claims are lacking in novelty. They have been unable to establish the main opposed invention as being obvious in light of the common general knowledge alone or in light of the disclosure in the novelty citation when combined with the established cgk. The opponent has shown only that claim 28 when read with figure 6 lacks novelty and an inventive step. Claim 28 is directed to a locking member, which is one feature of many in the main invention. The main invention lies in a screening assembly for a screening machine and a screen module which forms part of the screening assembly. Thus the opponent has relied on novelty and inventive step issues to support raising a ground of manner of manufacture. The teaching of the courts in Bristol Meyers v FH Faulding 46 IPR 553 at paragraph 45, Black CJ and Lehane J (Finkelstein J concurring) are pertinent:
“Indeed, there is in our view an element of unreality, in a case such as the present, even in posing the question in that form. Although Philips suggests that there may be such cases (it does not decide the question, because obviousness was not pressed), it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step. This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness. It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given). Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and s 7(3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a "threshold test") lack of inventiveness on the face of a specification. In our opinion this is not a case where such a finding is justified.”
If this ground is consequential upon a finding of want of novelty or inventive step, it is fully encompassed by those other grounds - and a finding of lack of inventiveness on the face of the specification would not be justified. For the above reasons I consider that the opponent has been unable to show that the opposed invention does not constitute a manner of manufacture.
Item (ii) refers to the claimed invention defining nothing more than the application of known devices or techniques to a known problem. The opponent has provided several disclosures showing prior art devices including some which form part of the cgk in Australia. There is no evidence to show what would lead the skilled addressee to combine selected individual features from these disclosures to arrive at the main opposed invention. I have referred previously to the impermissible use of hindsight in these matters. I do not find that the invention as claimed in the opposed application does not constitute a manner of manufacture in the light of the application of known devices or techniques to a known problem.
Item (iii) refers to the opposed invention being a mere collocation of integers. In International Paint Co. Ltd.'s Application, (1982) RPC 247 the question of collocations was dealt with at page 275, in the following terms:
"..... certain of the specific grounds included in the broad head of "no manner of new manufacture", of which collocation is one, are really cases which may be characterised as "so utterly obvious that the Comptroller can even consider them of his own motion in the absence of an opposition", and this fits in with the line of authorities. ............
.......... Such cases are the cases - but only those cases where the ingredients of a mixture, or the parts of an article each (to use the modern vulgarity) "do their own thing". That is to say, howsoever juxtaposed to the other ingredients of the mixture or parts of the article, each part performs its own function and would do so even in the absence of the other parts. The classic cases of collocation are those mentioned in Through the Looking Glass: "Mix sand with the cider, and wool with the wine". However novel and unobvious in practice such mixtures may be, they are mere collocations and cannot be allowed to be patented for the ingredients do not react with each other and the mixtures are obvious in law."
Thus looking at the opposed invention I have to determine if each part of the device, however juxtaposed to other parts of the device, would perform its own function and would do so even in the absence of the other parts. The opponent has asserted this is the case but has not provided any evidence which supports their assertions. A review of the device claimed in the opposed specification shows that the device is a combination of various features which interact to provide a device to secure adjacent screen modules to a screening machine base. In particular the key aspect of the opposed invention defines an action by a retaining/locking member wherein respective end flanges of adjacent screen modules are deflected into engagement with the respective attachment rail flanges supported on a rail base. The rail base provides support for the adjacent screen modules. Also a portion of the end flanges of the screen modules are deflected into engagement with the rail base, thereby wedging said module end flange in a locked position between said locking member and said attachment rail flange. Thus the device as claimed does not satisfy the requirements to constitute a mere collocation of integers. In fact it is a true combination. Hence I cannot conclude that the claimed device does not constitute a manner of manufacture.
Item (iv) asserts that the specification does not disclose a new invention when compared on an individual basis with:
·the disclosure of the specification itself, or
·any one of the published documents cited for novelty and inventive step, or
·prior use publications.
As I have indicated previously the opponent was unable to establish lack of novelty, lack of novelty by prior use, or inventive step in respect of the main invention. Lack of novelty (including prior use) and lack of inventive step was established only in respect of claim 28 when read with figure 6. Claim 28 is directed to a locking member, which is one feature of many in the main invention. The opponent was unable to show any disclosure of prior art in the opposed specification which disclosed the invention itself. I find that the opponent has not shown the opposed invention does not constitute a manner of manufacture in light of the disclosures listed at item (iv).
Utility

In submissions provided at the hearing, the opponent argued that the applicant’s preferred embodiment does not work and that the invention as claimed in these claims therefore lacks utility and cannot be a manner of manufacture.
While the issue has been argued under the ground of manner of manufacture, I agree with the applicant that the issue is properly one of utility rather than manner of manufacture. The applicant argued that as the opponent did not raise the ground of utility in the statement of grounds and particulars, they were precluded from arguing this ground at the hearing. This is not strictly correct because the Commissioner does have the power in deciding a case under section 60(3) of the Patents Act 1990 to take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.
In any event however, I do not believe that the opponent has made out their case for lack of utility. The opponent’s case is based on certain statements in Mr Johnson’s and Mr Olsen’s declarations dated 10 November 2003 and 14 June 2005 respectively. Mr Johnson alleges at paragraph 47 of his declaration that:
“In my view the embodiments employing this aspect are not adequately described to enable a skilled worker to use the invention without further development of a non trivial nature. It is not even clear to me that this aspect of the invention can be made to work in anything approaching the described form.”
However, Mr Johnson has not provided any substantive basis for his allegation. In particular, he has not provided evidence showing how the alleged defect in the cam lock would prevent the overall invention from functioning. In addition, the opponent has not established that Mr Johnson has had any detailed involvement with screen usage or screen design. Given this, I had previously determined above that Mr Johnson would be unable to provide information regarding what constituted the cgk in the art in Australia at the relevant date. In view of these findings I do not accord much weight to Mr Johnson’s assertions. I therefore do not find that there is sufficient evidence provided by Mr Johnson to establish a lack of utility.
In his declaration (paragraphs 5 to 12), Mr Olsen states that the screening system of the opposed invention was marketed by Polyscreen. This system was subjected to a comparative and competitive test against the screens from Johnson Screens. The trials were held at Warkworth Coal Handling Preparation Plant between July and August 2001. Both screens were assigned to problem screening machines for the purposes of the trial. Though the response from Polyscreen has not been provided, Mr Olsen makes the following statements about the performance of the Polyscreen product. He alleges that he was told by a Rio Tinto representative present at the trial that the Johnson screens overcame the problem whereas the Polyscreen screen did not. He also alleges that the Polyscreen screens worked trouble free for a week and then gave problems on a daily basis. He talks of another trial but is unable to provide details, other than that the Polyscreen product failed within the first shift. He further indicates that he was unable to determine with any certainty whether the failure mode was due to faulty installation or a fitness for purpose issue.
Looking at the submissions provided, a number of issues arise. The first relates to the fact that the Polyscreen device was not installed in a normally functioning screening machine. Secondly there is no indication that the device did not work at all, but that it gave problems after functioning trouble free continuously for a week. Regarding the second test Mr Olsen has indicated that he cannot definitely determine if the Polyscreen device definitely did not work unless there is surety about proper installation of the device and in fact if the device was suited to the machine it was tested on. Reviewing this evidence I do not find that there is anything which would challenge the utility of the opposed invention. There is no definite evidence to show that the opposed invention did not work. I find that the submissions and evidence provided by the opponent regarding utility is lacking in substance and I find that the opponent has not made out a case in relation to the ground of utility.
Section 40/Fair Basis:
The opponent had not raised any matter under this ground. However on reviewing the claims for novelty purposes I detected a lack of clarity in Claim 21. In particular the relevant part of the claim reads:
“Said screen module being locatable on said attachment rail with said attachment rail flange received in said recess” (my emphasis).
The feature of the recess is not defined within the claim nor is there any indication if it forms part of a feature defined in the claim. This clearly leads to a lack of clarity as a result. Thus claim 21 does not satisfy the requirements of section 40.
CONCLUSION
The opponent pursued grounds of entitlement, novelty, inventive step and manner of manufacture at the hearing. The opponent did not directly raise the ground of utility but linked it to the ground of manner of manufacture.
The opponent has been successful on the grounds of novelty (including by prior use) and inventive step in respect of claim 28 when read with figure 6. The opponent was unsuccessful on the grounds of entitlement and manner of manufacture. Regarding utility, based on the submissions and evidence provided, the opponent has not made out a case in relation to the ground of utility. Also, I had determined that claim 21 lacked clarity.
I believe the defects identified in claims 21 and 28 can be overcome by suitable amendments. I grant the applicant sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 21 and 28.
COSTS
The applicant did not make a statement on costs in their submissions. The opponent submitted that costs should follow the event.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been successful under novelty and inventive step in regard to a minor aspect of the opposed invention. Also, a clarity defect was detected in claim 21. In the circumstances I make no award of costs and direct that each party should bear their own costs.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack, Melbourne
Patent attorneys for the opponent : F B Rice & Co, Sydney