EIGHT MILIEU NOMINEES PTY. LTD.

[1987] APO 26

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Patent Application No. 43027/85 for Letters Patent in the Name of EIGHT MILIEU NOMINEES PTY. LTD.

‑ and ‑

In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         This matter concerns an application for a patent entitled "IMPROVEMENTS RELATING TO THE WRAPPING OF HAY BALES" lodged on 25 May, 1984 accompanied by a provisional specification.  The complete specification was lodged on 24 May, 1985.  Following a request for examination, the Examiner issued a first adverse report on 16 September, 1986.  Despite proposed amendments and submissions in rebuttal, the Examiner in the most recent report dated 30 July, 1987 has maintained objections raised in earlier reports, namely that the invention claimed is not novel and the specification claims matter not in substance disclosed in the specification as lodged.  The applicant requested a hearing and this took place in Melbourne on 14 August, 1987.  Mr. L.J. Dyson, Patent Attorney, of Edwd. Waters & Sons appeared on behalf of the applicant.
The Specification as Lodged
         The opening paragraphs of the specification read as follows:

"This invention relates to the wrapping of hay bales, particularly, round bales.  Large round hay bales lend themselves to the production of silage because of their relative bulkiness, however, difficulties have been experienced in the effective and quick wrapping of such bales when the bales are still in the field.

Wrapping of hay bales in preformed plastic bags or by wrapping using a single axis turntable is known to applicants.  However, there are difficulties with such methods in forming an airtight seal to prevent ingress of air which will spoil the silage forming process.  Furthermore, the operation is limited to specific bag sizes which do not necessarily form a tight fit around the bale.  If this occurs a small hole formed in the bag will mean large scale spoilage of the bag for a wide area around the hole, and possibly spoilage of all the material within the bag.

The present invention has as its main objective to provide a method and apparatus for wrapping hay bales such that the spoilage effects of atmosphere on the hay when lying in the field are minimised."

There are consistory statements in terms respectively identical to those of claims 1 and 4, followed by a description of a preferred embodiment of the invention.  The embodiment illustrates an apparatus mounted on a vehicle or trailer.  The apparatus comprises a turntable incorporating a pair of parallel rollers one of which is driven, the rollers being interconnected by a number of belts.  Adjacent to the turntable is a stand which supports a roll of plastic film.
         The apparatus is operated by placing a bale of hay on the rollers and belts and the wrapping film is connected to the bale.  The turntable is rotated and the bale is rotated simultaneously about its horizontal axis by the rollers and belts.  The twin rotation results in the bale being completely wrapped.
         The specification concludes with eight claims of which the independent method and apparatus claims are as follows:

"1.A method of wrapping a hay bale including the steps of supporting the bale on a rotatable support, said support being capable of rotation about two axes, attaching a sheet of substantially air impervious material to said bale, rotating said bale about said two axes until said sheet envelops said bale in close air tight relationship.

4.Apparatus for handling a hay bale including a turntable for rotatably supporting a hay bale, said turntable being rotatable about a substantially vertical axis, the turntable including rotatable support means thereon for rotating the bale in a substantially horizontal axis and means for wrapping a sheet of substantially impervious material around the bale whilst it is being rotated about said axes."

The Specification as Proposed to be Amended
         The proposed amendments lodged on 22 May, 1987, would, if allowed, replace the statement of claims with one claim only, and make consequential changes to the description.  The claim reads as follows:

"1.A method of forming hay silage comprising the steps of supporting a hay bale on a support, applying a sheet of impervious plastic film to said bale by wrapping the plastic film material around the bale in overlapping close fitting fashion, wherein the plastic is self adhering to form a close fitting air tight package completely enveloping the hay bale, the hay being substantially sealed from atmosphere for sufficient period of time whereby the formation of silage within the package occurs."

Examiner's Objections
         The objections maintained by the Examiner in his most recent report can be summarized as:

(1)The proposed amendments are not allowable as they would cause the specification to claim matter not in substance disclosed in the specification as lodged.  Thus the defined method differs substantially from the method applied which concerns twin axis rotation of the bale to achieve wrapping whereas the proposed claim defines what appears to be in substance the object to be achieved.

(2)Pursuant to the changes as per (1) (above), the priority date is the date of lodgement of the complete specification as the provisional specification only disclosed twin axis wrapping.  Consequently, claim 1 is anticipated by European Patent No. 0110110.

(3)Claim 1 is anticipated by Australian Patent Application No. 53505/79 in the name of P. Bourrieu, which includes roll wrapping the cylindrical surface plus covering the extremities of the bale by glueing film thereto.

In Substance Disclosed
         In relation to this matter, Mr. Dyson submitted that originally the twin axis rotation of the bale was thought to be the inventive idea; but as a result of the consideration of published material raised during the examination process, it was decided that the emphasis of the invention should be shifted to cover the tight wrapping of the hay bale.
         In support of this, Mr. Dyson submitted that in fact the applicant was the first to realize that silage could be made by tightly wrapping a hay bale.  However, it is clear from a consideration of the opening paragraphs of the specification as lodged (supra), that this is not so.
         Firstly, it is clear that the specification is concerned with the difficulties involved in effective wrapping of large bales in the field.  Secondly, the description emphasises that previous methods involved difficulties in forming an air tight seal, which is necessary to form silage, and avoid spoilage by exposure to air.  The description also points out that there was a problem in forming a tight fit (of the wrapping) around the bale ‑ thus if the fit is not tight any holing of the wrapping allows access of air to the whole bale, or at least to a large portion thereof rather than just to a small portion adjacent the hole.  Spoilage would follow accordingly.  Thus clearly the problem to be solved is how to wrap a large bale in the field tightly, in an air tight wrapping. I do not doubt that the specification as lodged disclosed method and apparatus, which if operated, would produce the same class of product as would the method defined in the proposed amended claim. This, however, is not the point in determination of "in substance disclosed". The fact is that the latter claim omits features which the original disclosure represented as essential to the achievement of the invention. In these circumstances, the Courts of the UK have made a number of pronouncements to the effect that such proposed amendments are not allowable. See, for example: Re International Playtex Corporation's Application (1969) RPC 362; Protoned B.V.'s Application (1983) FSR 110; and B&R Relays Ltd.'s Application (1985) RPC 1. I have in a previous decision (see Re Application by AB Volvo, 1 IPR 554) considered this class of problem more fully, and there is no need here to expand the discussion on what are essentially a very simple set of facts. I agree with the examiner on this matter.
Priority Date
         The Examiner raised an objection that proposed claim 1 is not entitled to the priority date of the provisional specification as it is not fairly based on the matter disclosed therein.
         Mr. Dyson submitted that in his view legitimate development of the invention should be allowed between lodgement of the provisional and complete specifications; the deletion of the twin axis rotation was such a development and the complete specification would still have all the features disclosed in the provisional specification except this one.
         Whilst legitimate development may be allowable, the question to be considered in determination of the priority of the claims of a complete after provisional specification concerns the basis in the provisional specification for such development, whether other words, whether the claim is fairly based on the disclosure of the provisional specification.  The test to be applied  is the three‑fold investigation set out in Mond Nickel's Application (1956) RPC 189, namely:

(1)Is the alleged invention as claimed broadly described in the provisional specification?

(2)Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?

(3)Does the claim include as a characteristic of the invention a feature as to which the provisional specification is wholly silent?

In my view the proposed amended claim clearly fails the first test.  The description of the invention in the provisional specification is quite specific towards wrapping a bale using twin axis rotation.  There are no general statements in the provisional specification that would indicate to the reader that other ways of obtaining tight wrapping were envisaged.  
         Therefore, the claim is not fairly based on the provisional specification, and I determine its priority date for the purpose of this exercise to be the date of lodgement thereof, i.e. 22 May, 1987.
Anticipation
         The Examiner maintained that the claimed invention was not novel in the light of Australian Patent Applicaton No. 53505/79 (Bourrieu) and European Patent Application No. 0110110 (Manuli).  In regard to the first of the above, I do not consider that this specification is particularly relevant as it discloses only wrapping the bale tightly around its cylindrical surface, and not its whole surface.  I note that the Examiner has considered that the whole surface could be wrapped as a consequence of the expression "at least on the lateral circumference of the bale" which appears in claim 1 of the Bourrieu specification.  However I do not consider that this view is valid on a reading of this specification as a whole.
         The Manuli specification was available in the Patent Office for inspection by the public on 31 July, 1984.  This specification discloses a device for wrapping hay bales.  The device comprises a wheeled vehicle upon which is mounted a series of rollers arranged along an arc of a circle.  In addition, there is disclosed a trolley or an arm on which is mounted a roll of self‑adhesive plastic film.  The trolley or arm moves around the periphery of the device.  In operation, a cylindrical bale of hay is placed upon the series of rollers and the leading edge of the film is attached to the bale.  The rollers are set in motion and the bale revolves about its horizontal axis.  At the same time the trolley or arm moves around the turning bale and as a result of which the film is dispensed from the roll and the bale is completely and tightly wrapped.
         In relation to the Manuli specification, Mr. Dyson submitted that it does not comprehend the manufacture of silage but only the preservation of hay, straw or fodder.  I cannot agree with this view.  The method disclosed in this specification is applied to the same material (i.e. hay) as that defined in the proposed amended claim.  It is true that there is no specific reference to "the hay being substantially sealed from atmosphere for sufficient period of time whereby the formation of silage within the package occurs".  However the description does make reference to "long maturity preserved fodder" which in the circumstances, must include silage.  Thus while the term "silage" is not specifically used in the Manuli specification, the disclosure is such that the production of a product which the present specification calls "silage" is clearly envisaged.  Therefore, the claim is prior published by this specification.
Conclusion
         I have found that the proposed amendment is not allowable.  Further, proposed claim 1 is prior published.  Consequently, I refuse to allow the proposed amendments, and I direct the applicant to lodge amendments to my satisfaction in the time remaining for acceptance.

(J.L. ROVETA)