Energie Froide International S.a. v Lightning Protection International Pty Ltd

[1993] APO 35

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 591357 in the name of ENERGIE FROIDE INTERNATIONAL S.A.

Title             :   Carrier System of Lightning Protection

Action:   Opposition by LIGHTNING PROTECTION INTERNATIONAL PTY LTD under Sec 59 of the Patents Act 1952.

Decision:   Issued            .  Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 591357 by ENERGIE FROIDE INTERNATIONAL S.A. and opposition thereto by LIGHTNING PROTECTION INTERNATIONAL PTY LTD under section 59 of the Patents Act 1952.

background

Patent application 591357 by ENERGIE FROIDE INTERNATIONAL S.A. (EFI) was advertised accepted on 30 November 1989. On 16 February 1990 LIGHTNING PROTECTION INTERNATIONAL PTY LTD filed a notice of opposition to the application under sec 59(1) of the Patents Act 1952.

Evidence in support was served by the opponent on 11 May 1990 and evidence in answer was served by the applicant on 22 November 1990. Evidence in reply was served on 11 January 1991.  On 3 July 1991, the applicant served further evidence.  The opponent consented to this and served evidence in reply to the further evidence on 23 October 1991. On 17 August 1992 the applicant filed an application for special leave to adduce additional further evidence, however in a decision dated 21 December 1992 I refused this application.

The opposition was heard in Melbourne on 17 February 1993.  The applicant was represented by Mr K Borg and Mr L Dyson of Watermark Patent & Trademark Attorneys, and the opponent was represented by Mr J Christiansen of the firm Carter Smith & Beadle.

While the notice of opposition refers to several grounds (a) to (i) Mr Christiansen made it clear at the hearing that the opponent would only be relying on grounds (e) through (i) of section 59(1) of the Patents Act 1952.

THE SPECIFICATION

The specification commences by stating that the invention relates to lighting protection installations.  Disadvantages of bare down conductors are then discussed as well as the applicants own earlier development of a sheathed downconductor or cable as disclosed in US Patent 3919956.  I note here that this patent is of the same family as Australian Patent 465821 also in the name of EFI.  The specification further states in relation to this prior art at pages 4-5 that:

"the sheathed cables make use of a central conductive component constituted of a set of metallic wires rolled like a helix around a central core made of insulating material and the metallic shielding is likewise achieved in using wires or metallic stripes rolled like an helix on the insulating coating wrapping the internal conductive component.

The result is that, even if windings constituting the internal conductive component and the sheath are jointed, or even overlapping (if they are metallic stripes and not wires), the unavoidable layer of oxide on these wires or stripes acts so that the current follows an helicoidal path and not a linear one, whence increased ohmic resistance and inductance."

The advantage of the present invention is then stated (page 5 lines 3-6) as:

"In using wires or metallic strips parallel to the cable central line, the impedance is very appreciably reduced and the performances of a lightning conductor are improved in the sense of the present invention"

Following this is a discussion of the invention in relation to the three figures of the drawings.  There are three claims, but
most discussion at the hearing centred on claim 1 which reads:

"Lightning protection down conductor comprising a first lightning conductive component, an insulating sheath surrounding this first conductive component, and a second conductive component completely surrounding this insulating sheath, said second conductive component being earthed at its lower end, characterised in that each of the two said conductive components are formed of an assembly of metallic conductors all extending in a direction parallel to the central line of the assembly formed by said two conductive components and the insulating sheath."

THE EVIDENCE

Evidence-in-Support

The evidence in support comprises six statutory declarations made by:

.John Richard Gumley

.Stephen John Gumley

.Thomas Harrison Lupfer

.Thomas Paine Plotts

.Raymond William Biggs

.Phillip Richard Tompson

I will refer to these declarations at the appropriate points in my decisions however I make the following general observations:

1.The first five declarants apparently have considerable experience in the lightning protection industry in Australia and each has some knowledge of the products manufactured by the applicant EFI through their association with E.F. Australasia Pty. Ltd.  According to Mr John Gumley this company operated under a licence to EFI in relation to Australian Patent 465821.

2.Downconductor cable manufactured in accordance with 465821 was apparently widely used in lightning protection installations in Australia at least up to 1986.

3.A number of the declarants allege that the invention claimed in the present invention is anticipated by 465821 and/or that the present invention offers no improvement over the cable made in accordance with that Patent.  In this regard a number of statements in the present specification are disputed and the practical difference between a cable with parallel conductors and a cable with a long lay up is questioned.

4.In relation to the previous point Mr Tompson's declaration provides the results of a comparison test he conducted on two cable samples, one of which was allegedly made according to the present invention.  Mr Stephen Gumley declares that the other sample was made in accordance with 465821 and concludes from the test that there are no discernible differences between the inductances and resistances of the two cables.

Evidence-in-Answer

The evidence-in-answer comprises a declaration by Cesare Giulio Invernizzi, who is president of EFI, with three exhibits and 6 so called technical evidences-in-answer.  These six documents are not in the form of a signed statutory declaration as required by regulations 22.12 and 22.13 and I believe that they should be weighted accordingly.  In any event this evidence focuses on peripheral commercial matters and is of little assistance in considering the issues raised by the opponent.

Evidence-in-Reply

The evidence in reply is a declaration by Mr Chistiansen which addresses some of the issues raised by Mr Invernizzi.  Given the nature of the evidence-in-answer there is again little in this evidence that addresses the issues of the opposition.

Further Evidence

The further evidence-in-answer is a declaration by Mr Invernizzi which seeks to explain the process by which the present invention was developed and asserts that the improvement over the cable of 465821 is apparent in its use under the extreme effects of lightning energy.  Furthermore he states that while failures of the prior cable occurred he is unaware of any failures of the new conductor.

The further evidence in reply is a declaration by Mr John Gumley which essentially restates the opponent's case that the present invention is not novel and does not involve a technical improvement because it is in operation equivalent to prior art cables with helical windings of long pitch.

SECTION 40

Mr Christiansen submitted that the application did not comply with section 40 and made the following points:

.That the specification was generally not clear because it was a poor translation and in parts difficult to understand, and

.Claim 1 is not fairly based on the description because at page 5 lines 3 to 6 the description refers to an essential feature of "wires or metallic strips parallel to the cable centre line" but the claim refers only to "an assembly of metallic conductors all extending in a direction parallel to the centre line of the assembly".

In relation to the first of these issues I agree that the description suffers to some degree in being a translation from a foreign language however I do not think that this makes it insufficient.  In particular I believe that the nature of the invention and how it is to be performed would be readily apparent to a skilled addressee even if as in this case the technical validity of certain statements is questioned. (Universal Oil Products v. Monsanto (1973) ALJR 658)  As to the second issue I believe the reference to "an assembly of metallic conductors" is fairly based on the description which clearly comprehends conductors of either wires or metallic strips.

PRIOR PUBLICATION AND NOVELTY

It has been the opponent's general contention that the present claims are prior published and not novel in the light of the applicant's Australian Patent 465821, now expired, and in light of the cable made in accordance with that patent which apparently was widely used in Australia before the priority date of the present application.  Following from the evidence-in-support and submissions presented at the hearing by Mr Christiansen, the opponent's case also appears to be that there is no practical difference between a downconductor cable with a long helical layup and a cable with parallel conductors and in particular that the improvement in going from one to the other in terms of reduced inductance is insignificant.  For its part the applicant has argued that the prior art does not disclose a parallel layup and that even if the approximately 1% reduction in inductance and resistance as conceded by Mr Stephen Gumley is accepted, then in extreme field conditions this will be a significant improvement.

Before further consideration of the specific facts of this case it may be worth observing that in order to establish novelty it is not necessary that a claim defines a technical improvement.  Indeed, as pointed out in Bond (Keith Leslie) v Dorf Industries Pty. Ltd. (1981) AOJP 1832:

"The test set out by Dixon J. in Griffin v. Isaacs (supra) does not require technological advance to be a condition of novelty: a retrograde step, technically considered, could well fulfil the requirements."

Accordingly, even if I were to accept the view that the present invention has brought about no technical improvement over the prior art as has been suggested on behalf of the opponent then this would not be conclusive.  The great deal of opinion on both sides as to the relative merit of the invention is relevant only to the extent to which it may assist in the application of the accepted tests for novelty and anticipation to the present circumstances.

The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Limited (1972) RPC 457 and Meyers Taylor Pty. Ltd. v. Vicarr Industries Ltd. (1977) 137 C.L.R. 228 at 235.  In applying this test I must ascertain whether each and every one of the essential features of the claimed invention are provided by the prior disclosure (Rodi Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).  With regard to what constitutes an essential feature, in Catnic Components Limited and another v. Hill and Smith Limited [1982] R.P.C. 183 at 242, Lord Diplock said:

"My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. 'skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim.  A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge.  The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."

In the present case the declarants for the opponent are persons with appropriate knowledge and experience in the art of lightning protection systems.  From their declarations (e.g. para 6, declaration by Mr John Gumley dated 8 May 1990) it is apparent that they recognise the parallel layup of conductors as being central to the invention as now put forward by the applicant, even though they dispute that this feature will provide the advantages alleged by the applicant.  Accordingly I do not think there is any doubt that the parallel arrangement of conductors defined in the present claims is an essential feature and accordingly must be present in the disclosure of the prior art to establish anticipation or lack of novelty.

Having read Australian Patent 465821 I find that it discloses all the features of claim 1 except that it is silent in respect of the layup of the conductive component and in particular does not disclose "metallic conductors all extending in a direction parallel to the central line of the assembly".  This fact is acknowledged, for example, by Mr John Gumley where he states in paragraph 4 of his declaration of 8 May 1990 that both 465821, and the cable made in accordance with it, differ from the claimed invention in this regard.  This is supported by other of the declarants and particularly by Mr Tompson's investigation of the cable samples. 

I also note in this regard that both Mr John Gumley and Mr Stephen Gumley are uncertain as to whether the words "metallic conductors all extending in a direction parallel to the central line of the assembly" exclude conductors wound with long helical pitch length or at what point in increasing pitch length these conductors could be considered "parallel".  I do not however think the plain meaning of these words can be construed to include the helical arrangement of the prior art.  A parallel arrangement of conductors is known to require special manufacturing techniques to prevent bending failures and is unlikely to be interpreted by a person skilled in the art as including helical arrangements having pitch lengths within the normal range.  In relation to this it is apparent from para 5 of Mr John Gumley's declaration dated 8 May 1990 that pitch lengths between 0.5 to 6 meters can normally be specified for helical cables and as the pitch length of the prior art cable has been measured by Mr Tompson as, on average, 275mm for the inner conductors and 530mm for the outer conductors, there can be no doubt that these conductors are wound helically rather than "parallel to the central line of the assembly".  This helical arrangement is in fact readily apparent from photographs 1,2,3 and 5 of Mr Tompson's declaration, even to an untrained eye.

On the above consideration I do not find the claimed invention is prior published or lacks novelty in relation to the prior art downconductor cable.  Having found that the feature of conductors all extending parallel to the central line of the cable is not only essential but central to the inventive concept I could not, even if I were to apply the  Griffin v. Isaacs test or indeed the test of "mechanical equivalents" per R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. (1989) AIPC 90-568 and  Nicaro Holdings Pty Ltd v Martin Engineering (1990) AIPC 90-670, come to any other conclusion.

OBVIOUSNESS

In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claims.  (See Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253)  While I accept that a number of the declarants for the opponent are qualified to comment on the state of common general knowledge in Australia before the priority date, I find that their statements provide little assistance in positively establishing what in fact was known in the field of the present invention.  However, even if I was to assume that the prior art EFI cable was common knowledge in the art it would in any case not be decisive in the determination of obviousness in this case.  This is because the opponent has failed to provide any evidence that the claimed invention, and particularly the parallel arrangement of conductors, was obvious to a non-inventive skilled worker in the field equipped with the common general knowledge as at the priority date (Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1982) RPC 343).  Indeed, the evidence suggests that a skilled addressee faced with the same problem would be lead away from a parallel arrangement because it (allegedly) produces no technical advantage over known downconductors while requiring a cable structure that is more difficult to manufacture.

MANNER OF MANUFACTURE

I do not believe that the opponent has raised any serious challenge to the claimed invention under this ground and as the invention clearly has a functional purpose will not consider this issue in further detail.

conclusion

I am satisfied that no ground of opposition mention in subsection 59(1) has been made out and consequently I dismiss the opposition.

COSTS

In accordance with the principle that costs follow the event I awards costs against the opponent Lightning Protection International Pty Ltd

Philip Spann
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant: Watermark Patent & Trademark Attorneys, Melbourne

Patent attorneys for the opponent: Carter Smith & Beadle, Five Dock