Firebelt Pty Limited v MacDonald Johnston Engineering P/L

[1994] APO 67

official notice

decision of a delegate of the commissioner of patents

Petty Patent       :  No. 632031 in the name of FIREBELT PTY LIMITED

Title:  A REFUSE VEHICLE

Action: Application for the grant of an extension of term under section 69 and a notice filed under section 28 by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD

Decision:  Issued            .

Abstract:  Lack of novelty, lack of inventive step and manner of manufacture not established.    Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for the grant of an extension of term under section 69 of the Patents Act 1990 of Petty Patent No 632031 in the name of FIREBELT PTY LIMITED and a notice filed under section 28 of the Patents Act 1990 by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD.

background

Petty patent application 79252/91 was filed on 21 June 1991 by Jayrich Engineering Pty Ltd. Therefore the petty patent was filed under the Patents Act 1990. The petty patent application was filed as a divisional application of patent application 21063/88, which was filed on 18 August 1988. Application 21063/88 gained its earliest priority from provisional specification PI3822 filed on 18 August 1987.

Petty patent application 79252/91 was assigned from Jayrich Engineering Pty Ltd to Firebelt Pty Limited (Firebelt).  A petty patent was sealed on the application on 10 December 1992.  The petty patent was given the number 632031. 

MacDonald Johnston Engineering Company Pty Ltd (MJE) filed a notice under section 28 on 4 November 1993. On 8 December 1993 Firebelt applied for an extension of term of the petty patent under section 69. This was accompanied by an application for an extension of time under section 223 in which to file the section 69 extension. The section 223 request was subsequently allowed.

I heard the matter in Canberra on 17 May 1994.  Mr Trevor Dredge, patent attorney of Intellpro, represented Firestone.  Mr Bruce Caine of Counsel, assisted by Mr Richard Hamer of Arthur Robinson & Hedderwicks, represented MJE.

section 28 notice

The section 28 notice filed by MJE asserted "that the Petty Patent No. 632031 is invalid on one or more of the following grounds.

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

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

The notice set out the following reasons:

"It is asserted that the patentee was not entitled to be granted the petty patent in accordance with the terms of claims 1, 2 or 3 of the petty patent.  It is submitted that the claims insofar as they can be interpreted are not novel and have been prior published by Australian Patent No. 572684.

It is submitted that claims 1 to 3 in Petty Patent No. 632031 are not novel and prior published in the light of the referenced prior art and that an extension in terms of Section 68 not be granted in respect of this Petty Patent."

The notice was accompanied by a statutory declaration by Mr. David J. Browning, Director of Product Development of MJE.

The patentee's evidence in response to the section 28 notice was a statutory declaration by Mr Idwall Charles Richards, the inventor of the invention described and claimed in the petty patent.

At the hearing, Mr Caine indicated that the informant would not be arguing ground a) at the hearing.  The informant would be basing its case on ground b), that is, that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b).  Mr Caine stated that section 18(1)(a) and (b) could be sub-divided into three grounds, namely novelty, obviousness and manner of new manufacture, and that the informant would be relying on these three grounds. 

Mr Caine also alleged at the hearing that the petty patent was not entitled to a priority date earlier than its date of filing and as a result was not novel in light of its parent applications. Mr Dredge submitted that argument relating to novelty based on the parent applications was not included in the section 28 notice and was only raised for the first time at the hearing. He requested the opportunity to file written submissions addressing this issue. I gave the patentee the opportunity to file written submissions on this point. I also gave the informant the opportunity to respond to these submissions. Both parties subsequently filed written submissions on this issue.

petty patent claims

The claims of the petty patent read as follows:

1.  A refuse vehicle including a cab, a hopper immediately behind the cab, a bulk refuse container immediately behind the hopper, a retractable arm having one end mounted adjacent the hopper and a free end which travels in a transverse direction back and forth from the hopper, a bin loading mechanism mounted on the free end of the arm and being adapted to lift and tip a generally rectangular bin to dump the contents of the bin engaged by the mechanism into the hopper of the vehicle as the arm is retracted, the bin having generally planar side walls including a near side wall and an opposed far side wall, the arm being constrained to move in a substantially horizontal plane and to engage a bin under control from the cab, the loading mechanism having a bin engagement means being pivotal about an axis located transverse to the direction of travel of said retractable arm to facilitate alignment of the bin engagement means with the bin, the bin engagement means being alignable with the near side wall of the bin but not extending to the far side wall of the bin.

2.  A refuse vehicle according to claim 1 wherein the bin engagement means comprises a pivotable plate which engages a lip on the bin.

3.  A refuse vehicle according to claim 1 or claim 2 wherein the loading mechanism includes a bin alignment member adjacent said bin engagement means to physically manoeuvre a bin toward an aligned position.

decision

I will first consider the issues of novelty, inventive step and manner of new manufacture based on Australian Patent 572684 (46513/85) by Zoller-Kipper GmbH (which I will refer to as "Zoller" for convenience) before deciding on the issues of priority date and novelty based on the parent applications.  Zoller was first published before the earliest possible priority date of the petty patent, so priority was not raised as an issue with regard to this citation.

At the hearing there was some debate over whether Mr Richards or Mr Browning could be classed as addressees of the specification.  Mr Caine for the informant submitted that Mr Richards was the inventor of the claimed invention and claimed to be a consistent innovator in the industry.  As such, he did not satisfy the test of the skilled addressee being non-inventive.  Mr Dredge, for the patentee, submitted that Mr Browning stated in his declaration that he was a Director, Product Development and that he had become familiar with refuse vehicles during his years of employment with MJE.  Mr Dredge submitted that familiarity does not qualify someone as an expert.  On the other hand, Mr Caine said that Browning was not only an expert, but in his position as Director, Product Development was a person to whom the specification was addressed.  While the details of Mr Browning's expertise are sketchy, I consider there is enough information to support the argument put forward by Mr Caine.  However I note that both declarants have a direct interest in the matter and both have omitted certain features of the claims when construing them.  I place equal, but limited, weight on both declarations.

Novelty

The generally accepted test for determining novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235, where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement"

Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken.  See, for example, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.

The reverse infringement test has been applied by the full bench of the Federal Court in R D Werner & Co v Bailey Aluminium Products Pty Ltd, (1989) 85 ALR 679, and Nicaro Holdings v Martin Engineering, 16 IPR 545.

I will go through the features of the claim in point form  as this is a convenient way to compare the disclosure of Zoller against the claimed invention.  However it must be kept in mind that many of the integers of the claim interact with each other.  I have already set out the claims in their entirety above.

1."A refuse vehicle including a cab, a hopper immediately behind the cab, a bulk refuse container immediately behind the hopper".

Zoller is directed to a tipping or lifting and tipping appliance for emptying containers into the collecting container of a refuse vehicle.  Figure 1 of Zoller clearly shows a refuse vehicle including a cab and a bulk refuse container behind the cab.  The point disputed at the hearing was whether or not Zoller discloses a hopper between the cab and the container.

In his declaration, Mr Browning stated "There is a loading orifice 14 shown in Figure 3 behind the cab with a container behind the loading orifice see reference 102 in Figure 1" of Zoller.  Page 15 of Zoller states that the loading orifice 14 is in the rear wall or a side wall of a collecting container.  But the Zoller specification describes two embodiments of the lifting and tipping appliance, illustrated in figures 1 and 3 respectively.  I tend to agree with the comments in the declaration by Mr Richards that the embodiment in figure 3 is not shown on the end of an arm and it is not permissible to combine the teachings of the two different embodiments. In my opinion, only the embodiment illustrated in figures 1 and 2 of Zoller is relevant to the claims of the petty patent.  The orifice shown in figure 3 does not provide a hopper for a loading mechanism on the end of an arm.

According to page 3 of Zoller it is known to provide facilities for rear-wall loading, side loading or overhead loading on the collecting container.  The embodiment shown in figure 1 is of the overhead loading type with the loading mechanism attached to the side of the vehicle.  According to paragraph 31 of the Richards declaration, the embodiment of figure 1 of Zoller includes an orifice above and somewhere behind the cab.

Page 19 of Zoller indicates that the device may be operated from within the cab.  Mr Caine submitted that this was a plain inference that the hopper is located intermediate the cab and the container.  While I do not agree that this need always be the case, I consider that Zoller discloses to the skilled addressee an arrangement where the hopper is behind the cab and in front of the bulk refuse container.

Mr Richards referred to an abstract of US Patent No 5,018,929.  This abstract showed a loading mechanism movable along the side of the vehicle to dump refuse into different sections along the length of the container, rather than into a section at the front of the container.  Mr Richards stated that this was an equally valid interpretation of Zoller.  However I do not see anything in Zoller to indicate this type of arrangement.

2."a retractable arm having one end mounted adjacent the hopper and a free end which travels in a transverse direction back and forth from the hopper"

Mr Caine submitted that this feature could not be properly construed because the word "transverse" was not clear because the claim did not define what the free arm travelled transverse to.  He compared this to a later use of the word "transverse" in the claim which was qualified by "transverse to the direction of travel" of the arm.  However there is a further qualification later in the claim that the arm is "constrained to move in a substantially horizontal plane".  The claim also defines the movement as being "back and forth from the hopper" and to engage a bin.  I consider that the claim would be clear to a skilled addressee.

Zoller describes an extension device having two arms articulated to one another.  The lower arm is attached to the vehicle frame while the upper arm has a free end which travels in a transverse (vertical) direction to the vehicle.  I note also that the parent patent refers to the arrangement in Zoller as a retractable arm assembly.  Therefore I consider that Zoller describes a retractable arm having one end mounted on the vehicle frame and a free end which travels in a transverse direction back and forth from the hopper.  I note that claim 1 defines the arm being mounted adjacent the hopper. I will consider this difference in greater detail later.

3."a bin loading mechanism mounted on the free end of the arm and being adapted to lift and tip a generally rectangular bin to dump the contents of the bin engaged by the mechanism into the hopper of the vehicle as the arm is retracted"

Zoller describes a tipping frame connected to an end piece on the free end of the arm.  The tipping frame carries an attachment device for grab devices and for abutment devices.  The patentee submitted that the piece on the end of the arm in Zoller was not a loading mechanism in itself.  At paragraph 17 of his declaration, Mr Richards stated that "`the loading mechanism' (in the sense of my invention) in Zoller is actually the combination of the arm and grab device.  In my invention, the arm is used to carry the `loading mechanism' to and from the hopper, but doesn't perform any vertical swinging action on the bin".  At the hearing Mr Dredge submitted that if the endpiece of Zoller was placed onto a horizontal arm it wouldn't do anything.  Mr Dredge submitted that the Zoller device required the vertical movement of the arm to tip it.  Mr Richards, at paragraph 36, stated that "Careful examination of Zoller shows that the tipping device is retained in the position illustrated in Figure 2 at all times and does not tip relative to the extension device 103 but relies on operation of the extension device 103 for inversion of the bin 100 over the container 102".

Zoller describes a cylinder/piston arrangement 113 inserted between the end piece of the arm and the tipping frame.  I am inclined to agree with Mr Caine that this cylinder/piston arrangement would have no purpose other than to tip the bin relative to the arm.  I have measured the angle of the tipping frame relative to the arm shown in figure 1.  While the drawings are not purported to be to scale, this measurement shows that the angle is greater when the bin is being emptied than when the bin is being loaded onto the device, contrary to the assertions of Mr Richards and Mr Dredge.  I am satisfied that the "loading mechanism" shown in Zoller is mounted on the free end of the arm and is adapted to lift and tip a bin to dump the contents of the bin.

There is a further limitation on the claim that the contents of the bin are dumped into the hopper "as the arm is retracted".  I note that in Zoller the arm is fully extended as the bin is emptied, rather than as it is moved back to its original position.

4."the bin having generally planar side walls including a near side wall and a far side wall"

This is not a feature of the vehicle itself but relates to the type of bin to be emptied into the refuse container.  Both Zoller and the petty patent are directed to vehicles for collecting refuse from what are commonly called "wheely bins".  This feature is clearly disclosed in Zoller.

5."the arm being constrained to move in a substantially horizontal plane and to engage a bin under control from the cab"

With respect to the arm being constrained to move in a horizontal plane, this feature is not disclosed in Zoller.  The arm in Zoller moves in a vertical plane.  However, Mr Caine submitted that this feature did nothing to limit the claim.  He submitted that this difference was a workshop variation and was insignificant and inessential.  I will come back to this point later.

Referring to the second part of point 5, Zoller at page 19 states "a readiness signal is transmitted to the vehicle driver actuating the extension device".  Therefore it is clear that Zoller anticipates controlling the arm from the cab.

6."the loading mechanism having a bin engagement means being pivotable about an axis located transverse to the direction of travel of said retractable arm to facilitate alignment of the bin engagement means with the bin"

The "loading mechanism" described by Zoller has grab devices and abutment devices connected rigidly to one another via a container carrier.  I interpret this arrangement as being equivalent to the bin engagement means defined in claim 1 of the petty patent.

The container carrier is connected to the tipping frame in Zoller via a rubber/metal element which is designed in the manner of a ball-and-socket joint.  According to Zoller, the rubber/metal element allows limited pivotability.  This enables alignment of the grab devices and the abutment devices relative to the container to be emptied.  The embodiment illustrated in Figure 3 of the petty patent allows pivoting of the bin engagement means through an arc subtending an angle of 30°.  However, claim 1 only requires that the bin engagement means is pivotable to facilitate alignment of the bin engagement means with the bin.

The bin engagement means is also defined as being pivotable about an axis located transverse to the direction of travel of the retractable arm.  In his declaration at paragraph 7(vi), Mr Browning stated that this "phrase includes an axis which is in a plane transverse to the retractable arm.  That is, a horizontal or vertical axis or something in between".  I agree with this interpretation by Mr Browning.  I am satisfied that the features which I have set out as point 6 are disclosed by Zoller.

7."the bin engagement means being alignable with the near side of the bin but not extending to the far side wall of the bin".

It is clear from Figures 1 and 2 that the "bin engagement means" of Zoller is alignable with the near side of the bin but not extending to the far side wall of the bin.

Therefore there are some differences between claim 1 and Zoller.  Zoller describes a top loading device with the retractable arm moving in a vertical plane.  Claim 1 defines an arrangement in which the retractable arm is mounted adjacent the hopper and is constrained to move in a horizontal plane.

Having determined that there are some differences between claim 1 and the citation, I must now determine whether these differences are essential features of the claim or whether the differences represent no more than mechanical equivalents of inessential features.  In the course of dealing with want of novelty, the courts have had regard to the doctrine of mechanical equivalents.  That is, whether the difference between the claimed invention and the alleged anticipation represented no more than the substitution of an inessential feature with an obvious equivalent.  On this point Mr Caine referred me to Werner v Bailey Aluminium (supra).

Much of the debate over whether or not the horizontal movement of the arm is an essential feature of the claim was based on problems identified with the Zoller arrangement in the parent patent.  The paragraphs bridging pages 3 and 4 of parent Patent No 608043 read as follows:

"In another arrangement described in Australian Patent Application No. 46,513/85 a retractable arm assembly is employed to empty a bin.  This retractable arm assembly operates in a vertical plane and serves the dual function of extending outwardly from the vehicle and also performing the loading mechanism function once engaged with the bin.  A problem with this arrangement is that the bin assembly and loading operations are performed in a vertical plane thus bringing into play inertial forces proportional to the total weight (including the weight of the bin), the velocity of the movement and length of the arm.

These forces present an enormous load on the truck chassis and one of the features of past arrangements of this type has been the premature failure of the truck chassis with consequential cost to the operator."

The informant submitted that the inertial forces were only dependent on the load  and the radius of the arc travelled by the arm.  It was immaterial, in the informants submissions, whether the arm travelled in a vertical or horizontal plane.  Mr Caine referred to paragraph 26 of the Richards declaration to support this view.  Paragraph 26 stated that the "moment of inertia" equals the load multiplied by the radius of the arc.  Paragraph 7 of the Browning declaration referred to the problem as follows:

"I acknowledge that there are slight differences as outlined above (particularly in items vi & vii).  Nevertheless, I am of the opinion as an expert in this field that these differences do not contribute to the working of the refuse vehicle as claimed in the Petty Patent.  In particular, I fail to see any problem in relation to inertia or abnormal loads on the truck chassis when examining the Zoller equipment as disclosed in the patent specification.  Furthermore, I cannot see any solution disclosed in the Petty patent relating to this alleged problem."

When construing the claims of the petty patent Mr Browning presented the claims in summarised form.  In doing so he omitted all reference to the feature of the arm being constrained to move in a horizontal plane.  It is not clear to me whether the "slight differences" he refers to is intended to include the horizontal movement or only other differences he has noted.

Mr Richards set out certain alleged advantages of the claimed invention in his declaration.  The major advantages are set out as follows:

"16.   On the other hand, my invention uses an arm which is "constrained to move in a substantially horizontal plane" (claim 1) with little or no effect on the chassis.  This enables the loading mechanism to operate with the arm in the retracted position and through a much shorter arc than the boom type lifters, once again greatly reducing the inertial forces on the chassis.  The extended life of this important component is a result.

17.    The Zoller arm operates in the vertical plane and the "loading mechanism" (in the sense of my invention) in Zoller is actually the combination of the arm and grab device.  In my invention, the arm is used to carry the "loading mechanism" to and from the hopper, but doesn't perform any vertical swinging action on the bin.  This allows me to have a more compact loader with the receiving hopper positioned lower than in Zoller."

Paragraphs 18 and 19 referred to the additional advantages of the loader operating with a straight line action and travelling directly out from the hopper whereas in Zoller different sections of the arm must be driven.  However these are clearly only advantages of a preferred embodiment as the claims are not so limited.

With regard to paragraph 17 Mr Caine submitted that there was nothing in the claim which limits the position of the hopper to be "lower than in Zoller".  However the claim defines the retractable arm as having one end mounted adjacent the hopper and a free end (carrying a loading mechanism) which travels back and forth from the hopper, with the arm being constrained to move in a horizontal plane.  The only sensible construction which I can place on this is that the claim is limited to a vehicle of the side loading type with a hopper lower than in the overhead loader described by Zoller.

With regard to paragraph 16 of the Richards declaration, Mr Caine submitted that the claim does nothing to limit the nature of the path the arm travels or the length of the arm.  He stated that whether the arm moves in a vertical plane or horizontal plane has little or nothing to do with the radius of the arc that is scribed by the bin at the end of the arm.  However I believe there are some practical limitations on the length of the arc scribed by the bin.  The arm has one end mounted adjacent the hopper while the free end travels back and forth from the hopper.  The claim defines the hopper as being immediately behind the cab, and the bulk refuse container immediately behind the hopper.  Therefore the length of the arm is limited at least approximately to the length of the hopper, and the hopper must be immediately in front of the bulk refuse container.  I believe that it is most unlikely that such an arrangement would result in the arm scribing an arc as great as that shown in figure 1 of Zoller, where the loader empties the bin from above the top of the loader.

In my opinion the device defined by claim 1 would operate in a different manner to the overhead loading arrangement shown in Zoller and would provide at least some of the advantages described in the declaration of Mr Browning due to the horizontal movement of the arm.  I therefore consider that the horizontal movement of the arm is an essential feature of the claim.  As this feature is not disclosed in Zoller, I find claim 1 to be novel over Australian Patent No 572684.  As claims 2 and 3 are appended to claim 1, I also find these claims to be novel.

Inventive Step

As the petty patent was filed under the Patents Act 1990, the relevant test to determine lack of inventive step is that set out at Section 7(2) and (3). Under this section of the Act, it is permissible to have regard to documents such as Zoller when determining issues of obviousness.

Mr Caine submitted that the Richards declaration cannot be relied on for determining inventive step, as Mr Richards is by his own admission an inventor and innovator in the field.  Mr Caine directed me to the following passage from Welcome Foundation Ltd v V.R.Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:

"It is well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge.  The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field."

While I accept Mr Caine's arguments on this point, it does little to assist me as it is up to the informant to establish that the claims lack an inventive step.  The question I have to ask is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art at the relevant date.  See also Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253.

The only evidence filed by the informant is the Browning declaration.  This declaration does not establish that it is common general knowledge to provide an arm constrained to move in a horizontal plane in accordance with the features set out in claim 1.  Nor has it otherwise established that it would have been obvious to a non-inventive worker in the art to provide such an arrangement in light of the disclosure in the Zoller specification.  I find that the claims of the petty patent involve an inventive step over the cited art.

Manner of Manufacture

During the hearing Mr Caine referred me to W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha 25 IPR 481 at page 497:

"The relevant principles governing s 6 of the Statute of Monopolies are well established:... Section 6 requires that there be some inventive idea sufficient to warrant the grant of a monopoly.  To be patentable a manner of manufacture must not only be new, it must also not be something which would suggest itself in the ordinary course to anyone already using an invention already known.  A manner of manufacture must be something discovered which is not included in the already existing stock of public knowledge and must be the result of independent invention."

Mr Caine stated that the patentee had professed a number of advantages of the invention, these being a more compact loader, shorter travel of the loader, and no need for the arm to scribe a wide arc.  It was Mr Caine's submission that none of these advantages would be met by the claimed device.  He stated that if there was a particular configuration of retractable arm assembly that confers advantages (such as a first and second arm as described in the parent patent) then the patentee should claim it.

I have stated above that I believe that the claimed invention will provide at least some of the professed advantages.  As I have found the claim to be novel and to have an inventive step over Zoller, the informant has not established that the claimed invention would suggest itself in the ordinary course to anyone using the invention described in Zoller or that it is included in the already existing stock of public knowledge.  There is no basis for me to find that the claimed invention is not a manner of manufacture on the basis of the Grace v Asahi decision.

Novelty based on the earlier applications

The parent Patent 608043 and its associated provisional application PI3822 were published for the first time on 23 February 1989, before the filing date of the petty patent.  Mr Caine submitted that the claims of the petty patent were not fairly based on either of the earlier applications, and as such the priority date of the claims was the date of filing.  Accordingly, in the informant's submission, both the parent patent and the provisional application formed part of the relevant prior art for the purposes of assessing novelty of the claims.

It was the informant's submission that the claims of the petty patent were broader than what was disclosed in the provisional specification.  The informant submitted that the provisional specification described a specific configuration of an arm assembly having first and second arms.  This had been broadened in the claims of the petty patent to include any retractable arm.  It was the informant's submission that there had been a discernible shift away from a retractable assembly comprising a first and second arm in the provisional specification to any retractable arm in the claims of the petty patent.

Both parties made submissions on the fair basing of the claims on the provisional specification.  However the real issue is whether or not the claims lack novelty in light of the earlier applications.  The claims will not be invalid merely because they are not fairly based on the earlier applications.

The provisional application was titled "RETRACTABLE ARM/LOADER ASSEMBLY".  The opening paragraph of the provisional reads as follows:

"THIS INVENTION relates to a retractable arm assembly for a refuse vehicle loading mechanism, in particular to a retractable arm assembly which is adapted to be interposed between the side of a refuse vehicle and a loading mechanism, and controllable from the cabin of the refuse vehicle to enable the loading mechanism to engage a domestic refuse bin and deposit its contents into the refuse vehicle."

Figure 1 of the provisional specification shows an arm assembly having a second arm pivotally connected to a first arm.  Figures 2 to 6 of the provisional are identical to figures 1 to 5 of the petty patent, apart from reference numerals assigned to features of the device.  The provisional specification describes a retractable arm assembly 10 having a first arm 11 and a second arm 12 pivotally connected to an end of the first arm.  The petty patent, on the other hand, refers to a retractable arm 14 without reference to any pivotally connected first and second arms.  There is no reference anywhere in the petty patent specification to an arm assembly having first and second arms pivotally connected to each other.

There appears to be two possibilities in the present case.  The first of these is the case where the specific configuration of the arm assembly having a second arm pivotally connected to a first arm is not essential to the combination described by the provisional specification.  In this case the combination of an arm and a loading mechanism defined by the claims of the petty patent would be fairly based on the provisional specification.  The claims could not be held to lack novelty on the earlier documents as they will be of the same priority date.

The second possibility arises where the claims are not entitled to an earlier priority date.  This is the case if the invention described by the provisional specification is limited to a combination including an arm assembly having a second arm pivotally connected to a first arm.  The claims of the petty patent define a combination including an arm and a loading mechanism.  The claims do not define an arm assembly having a first arm and a second arm pivotally connected to an end of the first arm.  In this case the combination defined by the claims of the petty patent is different to the combination disclosed by the provisional specification.  The claims would not be fairly based on the earlier documents.  However, if there is such a discernible shift away from the device described in the provisional specification, I do not see how the claims could be invalid for want of novelty on the earlier applications.  As the claims would be defining an invention not disclosed in the provisional specification, the claims would be novel over the earlier applications.

In either of the above possibilities, the claims would not be invalid on the ground of lack of novelty based on the parent patent or the provisional patent.

At the hearing Mr Caine also referred to a reference in the provisional to prior art loaders on the end of a telescopic boom.  It was Mr Caine's submission that the claims in their present form included such an arrangement.  This was something not contemplated by the disclosure in the provisional.  However there is nothing to indicate whether or not such telescopic booms are constrained to move in a horizontal plane.  I do not consider that the disclosure of this arrangement in the provisional is a prior publication of the device claimed.

conclusion

I find that the informant has not established that the claims lack novelty or inventive step over Australian Patent No 572684.  I also find that the claims of the petty patent do not lack novelty based on the parent patent or the provisional specification.  As a result I find that the claims of the petty patent are valid.  Accordingly, I grant an extension of the term of Petty Patent 632031.

costs

Having found that the informant has not established that any of the claims are invalid, I see no reason why costs should not follow the event.  I award costs against the informant.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the patentee    :  Intellpro, Brisbane

Patent attorneys for the informant   :  Watermark, Melbourne