E. D. Oates Pty Ltd v Unipac Australia Pty Ltd, Sabco Australia Limited and Shanghai Yi Da Cleaning Products

[1997] APO 17

official notice

decision of a delegate of the commissioner of patents

Petty Patent :  No. 664013 in the name of E. D. Oates Pty Ltd

Title:  Improved Mop-Wringing Bucket

Action: Application under Section 69 for an extension of term of the petty patent; notices by Unipac Australia Pty Ltd, Sabco Australia Limited and Shanghai Yi Da Cleaning Products under Section 28.

Decision:  Issued            .

Abstract:

Application to extend the term of the petty patent refused. The bucket described and claimed results merely from the “use of a known material in the manufacture of known articles for the purposes of which its known properties make the material suitable” (TheCommissioner of Patents v Microcell 102 CLR 232) and was otherwise obvious to a person skilled in the art at the priority date.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 664013 in the name of E. D. Oates Pty Ltd, application under Section 69 for an extension of term of the petty patent and notices by Unipac Australia Pty Ltd, Sabco Australia Limited and Shanghai Yi Da Cleaning Products under Section 28.

background

Petty patent 664013 in the name of E. D. Oates Pty. Ltd. (Oates) was filed on 27 March 1995 and claims priority from provisional application PM 4713 filed on 28 March 1994. The petty patent was sealed on 26 October 1995 and the informant Shanghai Yi Da Cleaning Products notified the Commissioner of matters pursuant to section 28 of the Patents Act 1990 on 22 December 1995. Unipac Australia Pty Ltd (Unipac) and Sabco Australia Limited (Sabco) filed notices on 26 September 1996, the same day that Oates filed its application for the extension of term.

The matter came to hearing in Canberra on 2 April 1997. Mr J Winch, patent attorney of Callinan Lawrie, Kew represented the patentee. Mr R Shelston, patent attorney of Carter Smith & Beadle, Sydney represented Unipac Australia Pty Ltd. The other informants were not represented and made no written submissions.

SPECIFICATION

The specification indicates that the invention relates to mop wringing buckets that have a stabilising pedal or footrest. Know arrangements where the pedal or footrest is attached to the bucket by “welding, riveting, bolting or the like” are said to suffer from breakages under constant use. The claims of the patent are as follows:

“1.      A bucket or like container, said bucket or the like container being adapted to have associated therewith a mechanism for extracting or wringing excess fluid from a cleaning implement adapted to be used in conjunction with said bucket or the like container, said mechanism including a linkage or lever arrangement disposed at or in the vicinity of the top of said bucket or the like container and to be actuated in any suitable manner, said bucket or the like container being of unitary construction, being constructed principally from a plastics material of any suitable type and including, at or in the vicinity of a ground-engaging base portion thereof, stabilising means adapted, in use, to assist in preventing unwanted toppling or overbalancing of the bucket or the like container in use, wherein said stabilising means is in the form of a member, formed integrally with said container, extending outwardly from said ground-engaging base portion at a location removed circumferentially from said wringing or extracting mechanism.

2         The container as claimed in claim 1, wherein said stabilising means is disposed on said ground-engaging base portion at a circumferential location diametrically opposite said wringing mechanism linkage.”

Notices under S.28

The material filed by the informants is as follows:

Unipac

1. Declaration by Kevin Frederick Dunn, principle of K & A Marketing, with exhibits KRF1, a letter from Noram Industries of the USA, and KRF2, extracts from a Noram brochure.

2. Photocopied pages said to come from J. Blackwood & Sons Ltd’s 1991 catalogue.

3. A copy of Australian patent No. 583069.

4. Extracts from the text Materials and Processes in Manufacturing (5th edition) E. Paul DeGarmo.

5. Declaration by Frank Papamichalakis relating to the availability and publication of the documents referred to in items 2) and 4).

The notice states that the only feature of the patent not apparent in prior art plastic buckets is a “stabilising means” which is integral with the bucket and goes on to assert that there was no inventive step in providing this feature.

Sabco

1. Copies of Australian patents 482363, 563444 and 603954.

2. Copy of UK patent No. 1501316.

3. Declaration by Doreen Perrin in relation to the publication dates in Australia of the above documents.

4. Declaration by Garry White, tooling engineer employed by Sabco, with exhibits GW1, photographs of the Oates bucket and Sabco’s galvanised bucket, GW2, photograph of the “Straight Jane” bucket and GW3, documents relating to production of a Sabco plastic bucket.

5. Declaration by Greg Spooner, project engineer employed by Sabco, with exhibit GS1, drawings for a proposed “plastic wringer bucket” and GS2, a copy of the present patent.

Sabco’s notice also includes submissions in relation to “manner of new manufacture”, novelty and inventive step and compliance with section 40.

Shanghai Yi Da

1. Documents appearing to be a copy of at least the patent certificate and drawings of “Patent No. ZL 93 2 175562” published by the Patent Bureau of the Peoples Republic of China together with an English translation.

The patentee did not provide evidence in response to any of this material although it did file written submissions. I will refer to the informants’ evidence and the submissions made by the parties as appropriate in my decision.

decision

Section 28 allows a person (the informant) to assert that a petty patent is invalid on various grounds and if the Commissioner is satisfied that a ground mentioned in subsection 28(1) is made out, the extension of the term of the petty patent may be refused. If not satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).

The grounds specified in subsection 28(1) are:

(a)that the patentee was not entitled to be granted the petty patent;

(b)that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);

(c)that the specification does not comply with subsection 40 (2) or (3).

The main ground pursued against the patent, at least by the informant Unipac, was non-compliance with section 18(1)(a). That is, that the invention is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. In this regard I was directed to the decision of the High Court in N V Philips Gloeilampenfabrieken v Mirabella (1995) 132 ALR 117 which established that the phrase “manner of manufacture” in section 18 incorporated the same subject matter considerations as encompassed by the words “manner of new manufacture” under the 1952 Act.

Unipac submitted that the present invention “amounts to no more than the manufacture of an old article (a metal wringer bucket having stabilising means, being an integral part of the bucket in the form of a member extending outwardly from the bucket’s ground engaging portion) from a known material (plastics material) to take advantage of the known properties of the material (resistance to corrosion and mouldability)”. In TheCommissioner of Patents v Microcell 102 CLR 232 at 251 the court found:

“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purposes of which its known properties make the material suitable.  A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do."

Mr Winch for the patentee argued that the claimed invention was not merely a moulded plastic mop bucket but was directed to a new combination. He also pointed out that the bucket has had significant market success reinforcing the argument that it had satisfied previously unmet demand and therefore that there was a presumption of an inventive step.

In relation to the first point I note that in Ramset Fasteners (Aust ) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256 the court stated that a combination patent may be valid even if each integer, when considered separately, is well known; but in that case the combination itself must be new, and referred to the following passage from Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc 26 IPR 565 at 570:

" There can be no subject matter ... in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers.  Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination."

Also in Winner v Ammar (1993) AIPC 971 it was said that:

"Notwithstanding that the inventive step may lie in the choice and management of integers in a combination patent (Wellcome Foundation at 281 ), where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step "unless the combination is substantially a new thing." "

and in Elconnex v Gerard Industries 105 ALR 266:

"... this is not the case of a new combination, although of old integers, but of an old combination which has been, at most, subjected to slight variations. The question must be whether those variation are other than obvious." 

Here it was agreed by the parties that galvanised mop buckets with welded or riveted stabilising pedals removed circumferentially from the wringing mechanism were part of the common general knowledge before the priority date (for example the Sabco bucket shown in GW1). The combination claimed in claim 1 differs in that it requires the container to be a “unitary construction”, “constructed principally from a plastics material of any suitable type” with the stabilising means or pedal being “formed integrally with the container”. I do not think this amounts to a “new mutual relation in the operation of the integers”. The old combination is merely manufactured using plastics materials for their known properties including corrosion resistance and ability to be moulded in one piece. These properties are well known but are also discussed in the “Materials and Processes in Manufacturing” text provided in evidence. I note in this regard that there is nothing in the specification or elsewhere that suggests that any of the exceptions approved by Morton J. in Re L & G’s Application 58 RPC 23 have been satisfied. That is:

“1)where a change or variation of the construction of the apparatus is rendered necessary by the use of a particular kind of material not previously used for that purpose;

2)where the use for a particular apparatus of a known material not previously used for that purpose is due to a hitherto unknown or unsuspected property of the material; or

3)where the adaptation of the known material to the particular piece of apparatus leads to a new departure in the technique of the production of the apparatus.”

There is nothing for example to suggest that the foot or pedal must be manufactured in a particular way to permit the use of plastics.

On the second point pursued by Mr Winch, while the commercial success of an invention can be a factor considered in cases relating to obviousness it is certainly not conclusive. Indeed, commercial success was argued by the respondent in the Microcell case and I find that the issue is addressed sufficiently by the wording of the decision quoted above:

“and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do”

In any event I do not have evidence of commercial success only Mr Winch’s assertion.

I find that the invention claimed is not for a manner of manufacture within section 18(1)(a) of the Act. I believe my conclusion applies also to claim 2 which specifies that the stabilising means is disposed diametrically opposite the wringing mechanism. A plastic mop bucket with metal pedal in this arrangement is illustrated in the Noram brochure (KFR2) which I accept became available to the public on 27 August 1992 and which is relevant to this consideration under the principles established by the Mirabella and Ramset decisions (supra). What is claimed in claim 2 differs from this device only in that it requires a stabilising means or pedal being “formed integrally with the (plastic) container”.

Following the other lines of attack pursued by the informants I believe the invention could also be shown to lack an inventive step according to the test set out in The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 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."

In this respect the problem addressed by the specification appears to relate to corrosion of existing “traditional style” metal buckets particularly resulting in breakages to the stabilising pedal. Relying on the evidence of Mr White and Mr Spooner I believe the person skilled in the art of bucket design would have as a matter of course attempted to construct an all plastic bucket because of its known properties and that having made that decision would seek to construct it in a single moulding. Indeed the evidence indicates that plastic mop- buckets were well known at the priority date (for example the “Straight Jane” of GB1501316) although without a stabilising pedal offset from the wringing mechanism, as was the approach of moulding in one piece items that were otherwise constructed in two pieces. Why a plastic bucket of the type claimed had not been made previously is not addressed in the evidence but I note the words of Buckley LJ in Tetra Molectric Ltd v Japan Imports Ltd (1976) RPC 541:

“Failure to recognise an obvious solution to a mechanical or other technical problem may result from a variety of causes. The existence of the problem may not be recognised, or there may be no pressing commercial need for a solution of it, or other solutions may be given preferential consideration. The evidence indicates that for many years flint ignition for smokers’ lighters [the case involved a patent substituting piezo-electricity] satisfied the commercial need”

Before the priority date Sabco was in the process of designing a plastic bucket to incorporate some features of the “Straight Jane” type and elements of their existing metal bucket such as the wringing mechanism and pedal arrangement. The reason for doing this is unknown but there is nothing to suggest it was an attempt to solve a well known problem as a reflection of a “long-felt want”. The evidence in relation to this does however suggests to me that once decided on, the reduction to practice of the bucket was a straight forward design exercise. This supports the view that once the solution of a plastic bucket was chosen there were no practical difficulties in implementing the solution which required inventive ingenuity to overcome (Tetra Molectric Ltd v Japan Imports Ltd, supra.)

Conclusion

I have found that the patent does not comply with the requirements of section 18(1)(a) and (b) in that the invention described and claimed is merely the “use of a known material in the manufacture of known articles for the purposes of which its known properties make the material suitable” and was otherwise obvious at the priority date. Consequently, and with the view that no patentable subject matter is disclosed in the specification, I refuse the application to extend the term of the petty patent.

costs

I award costs against the patentee, E. D. Oates Pty Ltd. This applies only to Unipac’s costs in being represented at the hearing.

Delegate of the Commissioner of Patents
Philip M Spann

Patent attorneys for Unipac Australia Pty Ltd:                Carter Smith & Beadle, Sydney

Patent attorneys for the patentee:  Callinan Lawrie, Kew