Firebelt Pty Ltd v Brambles Australia Ltd
[1998] FCA 1737
•24 DECEMBER 1998
By Original Action
BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (Cross-Claimant) v. FIREBELT PTY LIMITED (Cross-Respondent)
By Further Cross Action
FIREBELT PTY LIMITED (Second Cross-Claimant) v. BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY (Second Cross-Respondent), COOLOOLA SHIRE COUNCIL (Third Cross-Respondent) and STATE OF QUEENSLAND (Fourth Cross-Respondent)
No. QG 92 of 1995
FED No. 1737/98
Number of pages - 36
Intellectual Property
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
DOWSETT J
Intellectual Property - patents - combination patents - whether best known method of performance disclosed in specification - whether claims clear and succinct - whether claims fairly based on matter described in specification - determination of priority date - whether invention a 'manner of manufacture' - whether invention novel or involves an inventive step.
Patents Act 1990 (Cth), s 5, s 7, s 18, s 38, s 39, s 40(2), s 40(3), s 43, s 102, s 104, s 114, reg 3.12, reg 3.14
Statute of Monopolies, s 6
Welch Perrin & Co Pty Ltd v Worrel & Anor (1960-61) 106 CLR 558 Ref'd
Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 Ref'd
Advanced Building Systems Pty Ltd & Anor v Ramset Fasteners (Aust) Pty Ltd (1997-8) 40 IPR 243 Ref'd
Commissioner of Patents v Microcell Ltd & Ors (1958-59) 102 CLR 232 Ref'd
Minnesota Mining and Manufacturing Co & Anor v Beiersdorf (Australia) Limited (1979-80) 144 CLR 253 Ref'd
PLACE, 14-24 November 1998 (hearing), 24 December 1998 (decision)
#DATE 24:12:1998
Counsel for the Applicant: Mr J. Garnsey QC and Mr C. Carrigan
Solicitor for the Applicant: Xavier Kelly & Co
Counsel for the Respondent: Mr A. Crowe and Mr R. Lilley
Solicitor for the Respondent: Deacins Graham & James
DOWSETT J
THE ACTION
The applicant holds Australian Registered Petty Patent No 657082 and alleges that the respondents have breached it. The first respondent cross-claims for revocation of the petty patent. I am presently concerned only with that latter question.
CONTEXT
The dispute arises in the context of relatively recent attempts to facilitate the recycling of waste by pre-sorting in the hands of those producing it, coupled with separate handling, transportation and disposition by waste collection services. In this judgment, I will distinguish between refuse and recyclable material. For present purposes, refuse is waste material which is not to be recycled. Obviously enough, recyclable material is to be so recycled. It is possible to further sub-divide these categories.
Throughout the trial, certain assumptions underlay much of the evidence. Firstly, it appears to have been accepted that for all presently relevant purposes, household waste will be accumulated in standard wheeled bins with attached lids. These are known as mobile garbage bins (MGBs) or "wheelie bins". The form of the bin appears in many of the drawings to which I will refer. The evidence also generally assumed that waste would be collected from such bins in trucks, each operated by one driver only. This implies that the driver is able to pick up a bin from the kerbside, using some form of device on the truck, empty it and return it to the kerbside. It is now a commonplace that such bins are able to be divided by partitions so that refuse and recyclable material or different categories of refuse or of recyclable material may be accumulated separately prior to collection. It is now also obvious that the trucks which collect such pre-sorted waste may be equipped to permit separate handling, carriage and unloading of such material. This case is concerned with the events which led to the current position.
HISTORY OF APPLICATIONS
The petty patent was granted on 23 February 1995, but much of its content had been anticipated in other patent documentation filed by the applicant. The relevant history is as follows:-
10.2.92 Provisional application for invention entitled "Refuse Vehicle" (exhibit ICR2);
10.2.93 Complete application for standard patent (exhibit CTG29, subsequently amended as per exhibit CTG1);
21.10.94 Application for divisional petty patent;
23.2.95 Petty patent granted (exhibit ICR3)
The applicant asserts that the priority date for the petty patent is 10 February 1992. I will return to this matter at a later stage.
THE PETTY PATENT
I attach as Annexure 1 the claims in the petty patent and as Annexure 2, an itemised list of the integers of the claims, prepared by the respondent and used in the course of the trial. Some of the terms used in both annexures require explanation. A "loading mechanism" is a system by which a bin is lifted, emptied and returned to the kerbside. A "refuse transfer mechanism" is a mechanism for moving refuse and/or recyclable material, once it has been emptied into the vehicle, to various discrete areas for storage. An "active transfer mechanism" uses a mechanical device of some sort as opposed to relying on, for example, the force of gravity, as would a "passive transfer mechanism". A "lid opening device" is a device to open the lid of a bin prior to emptying the contents into the truck. It may be necessary to distinguish between partially lifting the lid and fully opening it. A "pivoting lid" is a lid fixed to the top of a bin by a hinge on one side.
OTHER APPLICATIONS
The petty patent is a divisional patent, having been divided out of the earlier standard patent application. That application was amended at some stage. The original application is exhibit CTG29. The amended application is CTG1. As previously explained, that application was preceded by a provisional specification which is exhibit ICR2.
GROUNDS FOR REVOCATION
The cross-claim is an application pursuant to s 138 for revocation of the petty patent upon the ground that the invention is not a patentable invention because:
(a) It is not a manner of manufacture;
(b) It lacks novelty;
(c) It lacks an inventive step;
(d) It is not useful.
These attacks are collectively described as the "s 18 matters". It is also alleged that the specification does not comply with the provisions of subss 40(2) and (3) of the Patents Act1990 (Cth) ("the Act"). These points are described as the "s 40 matters". It is convenient to deal with them at this stage.
SECTION 40 MATTERS
Subss 40(2) and (3) provide:-
(2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and (c) where it relates to an application for a petty patent - end with a single claim or a single independent claim and not more than two dependent claims, defining the invention.(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The first respondent submits that the petty patent specification fails to comply with this requirement. To quote from the further amended cross-claim, it is said that:-
The specification does not fully describe the invention including the best method of performing the invention known to the applicant in that:-(a) the description of the preferred embodiment does not disclose apparatus having bin lid opening means as part of the loading mechanism and adapted to 'raise the lid';
(b) it fails to describe the best method of performing the invention in respect to the best method of performing the adaptation to remote control required by the claim.
It is also asserted that the claims are not clear and succinct and not fairly based on the specification.
THE INVENTION
Claim 1 of the petty patent describes a motor vehicle equipped to collect separate waste, store it in discrete compartments and discharge it separately. Such a vehicle is said to include:-
... a loading mechanism adjacent a side of the refuse vehicle ... having a lid opening device and ... being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle ...
Numerous diagrams demonstrate a side-mounted mechanism for lifting and emptying an MGB. The evidence establishes that such a mechanism was known at all material times. The loading process involves the vehicle stopping next to an MGB so that the side of the bin opposite that on which the hinge is fixed is nearest the vehicle. A side-mounted loading mechanism engages the bin at the kerbside, lifts it through an arc until it is over the vehicle, and then allows the waste to fall from it into the vehicle. The MGB is divided into compartments for separate storage of refuse and recyclable waste. During unloading of the bin, those compartments align with separate apertures, chutes and other mechanisms in the truck to permit separate on-board storage and eventual disposal of the pre-sorted waste.
THE LID OPENING DEVICE
The disposition of the lid during the emptying process is an important issue in maintaining the separation of pre-sorted waste. This is especially so where the bin is divided in an "east-west" direction, that is, where the division runs parallel to a line through the pivots on which the lid is mounted, so that if the bin is lifted from the front (that is the side opposite that on which the lid pivots) to a position above the truck, the compartments will be one above the other. If waste material falls from the upper compartment whilst the lid is partially open, it may be diverted into the path of travel of material from the lower compartment, allowing the former material to fall into the aperture reserved for the latter.
Whilst the bin is moving through its arc from the kerb to its emptying position, centrifugal force tends to keep the contents in the bin and, I infer, to keep the bin lid closed if it has not been previously opened. Thus it was generally accepted in evidence that at some point between the engagement of the bin at the kerbside by the loading mechanism and the ultimate unloading point above the truck, it is necessary, at least in the case of a bin with an east-west division, that the lid be either lifted or opened. In this context, "lifted" implies raising the lid from the closed position; "opened" implies that the lid is more or less fully opened. In a bin with a north-south division, the mechanical opening of the lid (that is by a force other than gravity) is not as important, as the waste falls in parallel streams, although at least one witness (Mr Idwall Richards, the actual inventor of the claimed invention) thought that it was desirable in all cases. He asserted that a device which merely opens the lid at any time after (the bin) is mounted on the loading arm will be ineffective. He further said at paragraph 7.b.i. of his affidavit filed on 29 June 1998:
In my opinion, taking the lid opening device off the loading mechanism will result in the ineffective emptying of segregated waste into the separate compartments in the tank section. That is, there will be greater cross-contamination of the segregated streams of waste. Another difficulty is that without the lid opening device, the lid can foul (ie, get caught) against the separator plate of the chute and prevent the separated waste from being emptied into the separate compartments of the refuse vehicle. The lid opening device is programmed to open the lid of the bin so as not to foul the separator plate of the chute ... In my invention, the lid opening device opens the lid at a specific time and is a vital part of the combination of events in the movement of the segregated waste from the bin to the respective sections of the receiving vehicle. In short, the system would not work at all without the lid opening device as specified.
There can be no doubt that maintaining the separation of refuse from recyclable material or of the different categories of refuse or recyclable material is the point of the alleged invention. To achieve this result, it is necessary that the lid be kept out of the path of falling waste and that it not "foul" on the chutes designed to receive such waste. The lid opening device was certainly a major focus of attention at the trial, although this may have been partially attributable to the need to distinguish between the claimed invention and other systems described in prior art. In any event, it is relevant to consider how the petty patent deals with the matter.
The specification (p 2, ll 1-4) describes the invention as relating to:-
a refuse vehicle and in particular, to a side loading refuse vehicle and more particularly, but not limited to, an automated side loading refuse vehicle for simultaneous collection, but separate storage of garbage and/or recyclable wastes in the one vehicle.
At p 3, ll 3-6, it identifies the invention "in one aspect" as including:-
a loading mechanism adjacent a side of the refuse vehicle and a refuse transfer mechanism ..., the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle ... (emphasis added).
On p 4, (ll 11-19), the refuse transfer mechanism is described as including:-
... a passive or active mechanism or a combination of passive and active mechanisms selected from the following:-1. automated bin-lid opening devices; (emphasis added). 2. retractable refuse diversion chutes or bin compartment alignment means; 3. bin compartment alignment means which aligns with or abuts against a compartment defining portion of a bin so that refuse from the bin remains separate as it flows or is moved from the bin, through the transfer mechanism and finally into the tank sections ...
A combination involving a lid opening device as part of the transfer mechanism, rather than the loading mechanism, seems to be beyond the claims in the petty patent. Figure 1 is said to include one embodiment of a refuse vehicle according to the present invention. It shows a bin with the lid raised at a stage in the lifting process at which that result could only have been effected by use of some form of lid opening device. Figures 4 and 5 are said to show a transfer mechanism. They also show the lid in a raised position, apparently as a result of the operation of a lid opening device (component 31). This appears to be a jet of some kind. Figures 8 and 9 contemplate the use of a similar device. Figure 12 contemplates the lid having been opened in some way, as do figures 14 and 18. Figure 18 is a different type of bin, having two lids. One such lid (component 108) appears to be in a position which could have been achieved only by the use of some device, although the second lid (component 109) may possibly have reached its position as a result of the force of gravity.
Under the heading "Method of Performance" at p 9, ll 9-20, it is said with reference to figures 1, 2 and 3:-
The embodiment of Figures 1 to 3 involves a bin having a compartment 27 above a compartment 28 as the bin is being emptied, the position of the blade 22 and the relative positions of compartments 27 and 28 of the bin 20 are set according to a predetermined geometry in order to maintain separation of the refuse from the compartments. Thus, the spatial relationship and geometry is such that a major proportion of the contents of compartment 27 is deposited on the far side of the blade 22 while the contents of the compartment 28 and a major proportion thereof would be deposited on the near side of the blade 22.Although an open fall of material from the compartments works to some degree, the inclusion of small diversion plates or ramps or other elements in the transfer mechanism is also envisaged to improve the geometry and this will be discussed below.
Clearly enough, as I have said, figure 1 contemplates some mechanism for opening the lid, although it is not mentioned in this discussion.
At p 10, ll 3-16, it is said of figures 4 and 5:-
Figures 4 and 5 illustrate a further embodiment employing an auxiliary refuse transfer mechanism which in this case is a pivoting ramp 29 which moves to a position illustrated in Figure 5 being aligned with the partition 21 of the bin 20. Ramp 29 is timed to move to its aligned position with the partition 21 just after a jet of water shown at 30 fired from nozzle 31 on the loading mechanism 19 opens the lid 32 of the bin 20 prior to the contents of the bin 20 being discharged. This will be slightly delayed due to the inertia of the bin being raised through its arc of movement to the final stop position illustrated in Figure 5. In other words the combined effect of the movement of the bin through its arc followed by the jet of water discharged from the nozzle 31 followed by raising of the ramp into the aligned position illustrated in Figure 5 will ensure that minimum recyclables from compartment 27 end up in the wrong tank section. As an alternative to the jet of water, other mechanically equivalent contrivances can be employed including air jets or directly acting mechanical lid openers. (emphasis added)
At p 11 the triple compartment bin shown in figure 6 is discussed. It is said that the loading mechanism will be "as in the previous embodiment". This implies that there is to be a lid opening device. At p 13 it is said that figures 7 to 10 illustrate the "refuse transfer mechanism". They show the various stages leading to the bin being emptied. In figure 7 the lid appears to be closed. In figure 8 the bin has been lifted to a position where its lower side is slightly past the horizontal, but the lid has pivoted open, apparently as a result of the lid opening device (component 62) having operated. In figure 9 the lid has opened further, again apparently as a result of the operation of the lid opening device. It is well clear of the waste material falling from the compartments. At p 14 it is said of these diagrams:-
As the bin 43 is inverted above the aperture 41 to the position illustrated in figures 9 and 10 (figure 10 in phantom), the ramp 59 is moved into the position illustrated in figure 9 shortly after a water jet or air jet via nozzle 62 has been delivered to lid 63 so that the lid and ramp will not collide.
Figures 12 and 13 are said to demonstrate an embodiment in which the compartments in the bin are side by side (ie, a "north-south" division). Figure 12 contemplates the lid opening during the lifting process, although the mechanism is not shown. At p 17, it is said of figure 14 :-
As can be seen in figure 14 the lid 89 of the bin 84 swings freely by virtue of the slot 90 enabling passage of the divider plate 85. As a consequence of the slot 90 not extending the full width of the lid 89 the plate 85 includes a cut-out portion at 100 to accommodate for this feature.
It seems that in this embodiment, in order to accommodate a north-south division of the bin, there is a slot in the lid, also running north-south. In the emptying process, the so-called divider plate 85 in the transfer mechanism passes through the slot and engages with the division in the bin. The lid of the bin as shown in figure 14 should then rotate freely. Clearly, there would have to be some external force applied in order to move the lid into the position shown in figure 14.
Figure 18 shows a bin with two lids. As I have previously observed, one lid (component 108) would require some applied force in order that it reach the position shown in the figure, although the other lid (component 109) may possibly reach the position shown without such force.
I have previously referred to the claim in the petty patent which provides for a:-
... loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle ...
Clearly, the lid opening device is an essential part of the claimed invention. Both the evidence and common sense dictate that the successful operation of the invention depends upon the location of the bin lid immediately prior to, and during the emptying process. It must not interfere with the transfer mechanism or impede the free fall of waste material from the bin. The claim identifies the method to be employed as involving a device on the loading mechanism. The specification indicates that it may be either a water jet, an air jet or some other (unspecified) mechanical device.
As to the water jet, the diagrams in the specification do not indicate an actual method of operation. Figures 4 and 8 contemplate a jet firing from outside the bin, but contacting the underside of the lid. This could only occur if the lid were already partially open. The specification says nothing about how the lid might be so opened, although gravity might assist. Such a jet is likely to be disrupted by items of waste falling from the compartments, depriving the lid of the force needed to keep it open. There was some suggestion in the evidence that the jet might be so adjusted as to throw the lid back onto the other side of the bin where it would tend to remain. A video tape showing a vehicle in action suggests that this is so. However the diagrams and explanations in the petty patent do not suggest that. The applicant has, in fact, solved both problems by incorporating into the design of the bin, an aperture through which it is possible to fire a jet of water, or water and air, so that it strikes the underside of the lid, forcing it to open. That mechanism is able to throw the lid back against the rear of the bin in which position, as I have said, it tends to remain. This method is the subject of a separate patent application. See exhibit CTG24 at p 16. No explanation is offered as to how any other form of lid opening device might operate.
The claims include any form of lid opening device, mounted on the loading mechanism and operating at any time. However, a more specific process is described at pages 10 and 14 of the specification, requiring co-ordination with the transfer mechanism. As I have said, Mr Idwall Richards considered that it was important in all cases that the lid not be opened too soon.
CRITICISM - NOT FULLY DESCRIBED; BEST KNOWN METHOD
The respondent asserts that the claimed invention is not described fully in the specification and that the best known method of performance is not disclosed. Although the pleading is somewhat Delphic as to the grounds, it appeared in argument that this criticism is based upon the nature and function of the lid opening device, including the timing question. As to the adequacy of the description, the specification makes clear that there is to be a lid opening device. It is true that in figures 1 and 2 and the description thereof, there is no express mention of such a device. In this respect, the claims may be narrower than the body of the specification, but that is not a ground of criticism. The location of the device (on the loading mechanism) is clear from the claims. Although the specification also contemplates a lid opening device located on the transfer mechanism, the claims exclude such a variation.
The claims are for a "combination" patent. The applicant has sought to include, within the protection of its patent, any combination, otherwise the same as the claimed invention, which includes a lid opening device of any kind located on the loading mechanism. This approach is valid in principle. See Welch Perrin & Co Pty Ltd v Worrel & Anor (1960-61)106 CLR 588 at 614 where Dixon CJ, Kitto and Windeyer JJ said:-
This is little more than a cautiously introduced assertion of the doctrine that a mere substitution of known mechanical equivalents will not suffice to avoid infringement.
The breadth of the claim does not mean that the invention is not described fully. However par 40(2)(a) also requires a description of the best method known to the applicant of performing the invention. There is no indication of which of the contemplated lid opening devices was considered to be the best at the relevant time, nor of the preferred timing. The specification indicates that different methods had been considered and that, at least in some embodiments, timing was thought to be of importance in determining the quality of outcome, that is the degree of maintenance of separation of waste. In view of the importance of this matter, it cannot be said, in the absence of such information, that the best method of performing the invention as a whole has been disclosed.
CRITICISM - NOT CLEAR AND SUCCINCT
As to the assertion that the claims are not clear and succinct, three primary criticisms are made. The first is that the claims refer to a "lid opening device ... adapted to raise the lid". This is incorrect. The claims refer to " ... the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin ... , raise the lid and empty the bin ...". The words "adapted to raise the lid" refer to the loading mechanism as a whole, not to the lid opening device. The complaint appears to be that by referring to a lid opening device raising the lid, ambiguity is created as to the meaning of the term "lid opening device". As I have demonstrated, it is the loading mechanism which is described as "raising the lid", although it may well be inferred that the lid opening device is to play some part in that operation. Clearly, what is contemplated is that the lid will be opened to an appropriate stage prior to the emptying of the bin. There is no "modification" of the meaning of the term "lid opening device" inherent in the wording of the claim. The claim contemplates some contribution by a lid opening device, but that does not exclude a degree of reliance on other factors such as gravity. The claims include all forms of lid opening device located on the loading mechanism. There is no want of clarity or succinctness in the claims in this respect.
The second criticism is that "it is not clear whether the 'refuse or other material' of line 4 (of claim 1) is coterminous with the "recyclable waste and other waste" of lines 9 and 10. When one reads claim 1 as a whole, it is clear that a distinction is being drawn between recyclable waste and other waste. The only reasonable inference is that the reference in line 4 to "refuse or other material" is a reference to non-recyclable material and recyclable material. I see nothing in this criticism.
The third criticism is that the term "active transfer means" is "indeterminate". This is a reference to claim 3 which actually refers to an "active transfer mechanism". I find this criticism curious in view of what I understand to have been the agreed position at the trial as to the distinction between active and passive transfer mechanisms. I recorded that understanding at the beginning of this judgment. In that light, I would have thought it fairly clear that chutes and bin compartment alignment means would be passive transfer mechanisms whilst refuse compaction devices, moveable oscillating slide packers and other packers which include oscillating blades would be active mechanisms. As to "automated bin lid opening devices", their description as transfer mechanisms seems to be inaccurate, but as the claims require that the lid opening device be part of the loading mechanism, that matter is irrelevant.
CRITICISM - NOT FAIRLY BASED
Finally, it is said that the claims in the petty patent are not fairly based on the matter described in the specification. It is said that claim 1 includes apparatus adapted for use with unseparated bins or bins having other than two compartments, whereas this is not disclosed in the specification. It is also said that claims 2 and 3 are not fairly based on the specification insofar as they are appended to claim 1. The first part of this criticism is simply incorrect. The claim contemplates that the bin is "holding recyclable waste separately from other waste in the bin". I cannot see how it can be seriously asserted that the apparatus described in the claim is "adapted for use with unseparated bins". It may be that unseparated bins could also be emptied in the fashion contemplated by the claim, but that is not to the point.
As to the criticism that claim 1 includes a bin having "other than two compartments" and that such a situation is not disclosed in the specification, this is also incorrect. If this is a reference to a single compartment bin, I have already demonstrated the error in the criticism. If the reference is to bins having more than two compartments, that is expressly contemplated by the specification. Figures 6 and 7 are clearly concerned with the treatment of three categories of waste collected from bins containing three compartments. See also the discussion at pages 12 and 13 of the specification.
As to the assertion that claims 2 and 3 are not fairly based on the specification insofar as they are appended to claim 1, I have great difficulty in understanding what is meant by this. Claims 2 and 3 are obviously designed to narrow the ambit of claim 1. Claim 2 limits the claim to an invention having all of the features described in claim 1, save that the tank sections are to be located one above the other. Claim 3 is designed to further limit the claim to systems involving active transfer mechanisms. As each of claims 2 and 3 is narrower than claim 1, and as I am satisfied that claim 1 is adequately based upon the body of the specification, there is nothing in this criticism.
It is then asserted that "The claims define an invention having a bin lid opening means forming part of the loading mechanism and adapted to raise the lid whereas this is not disclosed in the specification". This argument appears to relate to the inclusion amongst the possible transfer mechanisms of automated bin lid opening devices. As I have said, I do not consider this to be relevant in view of the fact that, pursuant to the claims, the lid opening device is to be on the loading mechanism. A lid opening device, so located, is clearly contemplated in the specification. See p 10 ll 5-16.
Finally, it is said that if there is a basis in the specification for the claim as to a lid opening device, then it is defective because of the omission of any statement that such device is to remove the lid out of the way. It is said that for this reason, "the invention as defined is either inutile or performs no function, as the content of the bin will empty with or without an opening device". This may be a basis for challenging the patent pursuant to s 18, but it is not relevant for present purposes.
It was also asserted that the diagrams showing the jet operating as a lid opening device are inaccurate, as such a device could not be effective for reasons already given. Clearly, the claims include all forms of lid opening device located on the loading mechanism. Given the breadth of the claim, the depiction of one such device in a particular embodiment of the invention cannot affect the validity of the patent. It should be seen as a schematic demonstration rather than as providing technical detail or as placing a limitation upon the claims. Its alleged ineffectiveness is of no relevance for present purposes, as the diagrams do not purport to represent all possible lid opening devices and it cannot be said that no such device would work.
I consider that the only valid criticism of the petty patent pursuant to s 40 is that it fails to disclose the best method known to the applicant of performing the invention.
SECTION 18 MATTERS
Section 18 provides:-
(1) Subject to subs (2), a patentable invention is an invention that, so far as claimed in any claim: (a) is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (c) is useful; and (d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentees or nominated persons predecessor entitled to the invention.
PRIORITY DATE
In order to consider a number of the s 18 matters, it is necessary to decide the priority date of the petty patent.
Section 43 provides relevantly as follows:-
(1) Each claim of a specification must have a priority date. (2) The priority date of a claim is: (3) the date of filing of the specification; or (4) where the regulations provide for the determination of a different date as the priority date - the date determined under the regulations. (5) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined. (6) The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.
Regulation 3.12 relevantly provides:-
(1) Subject to regs 3.13 ("priority dates: certain persons and applications") and 3.14 ("priority dates: certain amended claims") and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:(a) the date of filing of the specification; (b) if the claim is fairly based on matter disclosed in one or more priority documents, the date of filing the priority document in which the matter was first disclosed; (c) if: (i) the specification is a complete specification filed in respect of a divisional application; and (ii) the claim is fairly based on matter disclosed in the specification referred to in par 39(1)(a) or subsection 39(2) of the Act ("divisional applications"); the date that would have been the priority date of the claim if it had been included in the last mentioned specification.
(2) For the purposes of paragraph 1(b): (a) if the application that relates to the specification containing the claim is a complete application - a provisional application that is associated with that complete application in accordance with section 38 of the Act ("time for making complete application") is a priority document; ...
Subsection 38 (1) provides:-
"If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period".
Section 39 provides:-
(1) Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention: (a) disclosed in the specification filed in respect of the first mentioned application; and (b) where the first mentioned application is for a standard patent and at least three months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.(2) A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first mentioned petty patent was sealed. ...
Finally, it is necessary to refer to s 5 which provides:-
For the purposes of this Act, a complete application is to be taken to be associated with a provisional application if, and only if, the patent request filed in respect of the complete application identifies the provisional application and contains a statement to the effect that the applications are associated.
The applicant firstly contends that the petty patent claims, by virtue of the inter-operation of reg 3.12 and s 39, take the priority date accorded to claims in the standard patent application. Secondly, it is submitted that pursuant to reg 3.12, the latter claims, and therefore the petty patent claims, have the priority date of the provisional specification.
PRIORITY OF THE PETTY PATENT
I should firstly dispose of a complication raised in argument by the first respondent. The standard patent application was amended on 10 May 1994, although the circumstances do not appear from the evidence. Exhibit CTG1 contains the specification in the amended form. Exhibit CTG29 is the original form. The only difference appears to be the addition of claims 25 to 30. Presumably, the amendment was pursuant to s 104 or s 107. It has not been suggested that the amendment was invalid, either pursuant to s 102 or otherwise. Section 114 provides:-
Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.
Regulation 3.14 deals with priority in the circumstances to which subs 114(1) applies. The only aspect which is relevant for present purposes is par (b) which provides that the priority of any claim is to be the date of filing of the statement of proposed amendments resulting in the relevant disclosure.
Sub-section 39(1) authorises an applicant pursuant to a complete patent application (for a standard or petty patent) to make a further application for a standard or a petty patent for an invention disclosed in the specification already filed. However, if the original application is for a standard patent, and at least three months have elapsed since publication of the notice of acceptance, then the new invention must also fall within the scope of the claims of the earlier specification. As I understand it, the applicant made the application for the petty patent in the circumstances to which par 39(1)(b) applies. Thus its new claims must fall within the claims disclosed in the standard patent application. The first respondent has not challenged the validity of the amendment. It was submitted, however, that where, for the purposes of determining priority, reg 3.12(c)(ii) refers to the claim being fairly based on matter disclosed in the specification referred to in par 39(1)(a), that should, for some reason, be taken as meaning that such priority will only be accorded if the petty patent also complies with the provisions of par 39(1)(b).
Given that the validity of the amendment has not been challenged, s 39 has no further operation, save to the extent that it is invoked by reg 3.12. For the purposes of priority, sub-paragraph 3.12(1)(c)(ii) requires that the claim of the petty patent be fairly based on matter disclosed in the specification referred to in par 39(1)(a). Prima facie the reference must be to the specification as it is at the time of the petty patent application. The petty patent application was made after the amendment of the standard patent application, and so the reference in sub-paragraph 3.12(1)(c)(ii) is to the amended specification.
However it is possible that the new claims in the standard patent application may have a different priority date from the other claims. This would occur if s 114 and reg 3.14 operated. That would be so only if the new claims contain matter not disclosed in the original specification. The first respondent submits that the new claims disclose a combination of integers not previously disclosed, and so the amendments are themselves new matter disclosed at the time of amendment. This is really a further assertion of the par 39(1)(b) argument. In effect, the applicant is saying that if the new claims are not within the scope of the original claims, then they may take a different priority date, and that may affect the priority date of the petty patent claims. I have demonstrated the way in which the statutory scheme operates. For present purposes, assuming that the amendment to the standard patent application is valid, it is necessary only that the claims in the petty patent be fairly based on the subject matter of the specification as amended. The priority date of the new claims in the standard patent application is irrelevant. As I will demonstrate, the claims in the petty patent are fairly based on the body of the standard patent specification without reference to the claims.
Pursuant to s 43 the prima facie priority date for the petty patent is the date of filing, namely 21 October 1994, subject to the provisions of reg 3.12. The applicant seeks to rely upon par 3.12(1)(c) which provides:-
If:(i) the specification is a complete specification filed in respect of a divisional application; and (ii) the claim is fairly based on matter disclosed in the specification referred to in paragraph 39(1)(a) or subsection 39(2) of the Act ...
the date that would have been the priority date of the claim if it had been included in the last mentioned specification.
This is a complete specification filed in respect of a divisional application. Therefore it is necessary to address the question of priority as prescribed by subparagraph (ii). The specification referred to in par 39(1)(a) is the standard patent specification. Sub-section 39(2) does not apply for present purposes. The question, then, is whether or not the claims in the petty patent are fairly based on matter disclosed in the standard patent specification. The best approach to this problem is to consider the integers of the claims in the petty patent against the content of the standard patent application. In fact, most of the integers are to be found in the claims. The following table indicates where those integers are reflected in the claims and in the body of the specification. References to line numbers in the claims are to the lines of the relevant claim. Reference to line numbers in the body of the specification are to line numbers on the relevant page.
Integer of Petty Patent Claim | Claim in Standard Application | Line No | Page No. of Body of Specification | Line No. |
| (a) | 25 | 1 | 6 | 6 |
| (b) | 25 | 2 | 6 | 7 |
| (c) | 25 | 3-4 | 1 | 33-6 |
| (d) | 25 | 4* | 1 | 36-7 |
| (e) | 25 | 7-10 | 1 2 | 37 1-3 |
| (f) | - | - | 7 8 11 | 30-37 1-8 12-17 |
| (g) | 25 | 6-10 | 6 Diagrams showing loading mechanism | 10-17 |
| (h) | - | - | 7 8 | 30-37 1-8 |
| (i) | 25 | 7 | 6 | 10-17 |
| (j) | 25 | 11 | 6 | 12-17 |
| (k) | 25 | 7-10 | 2 | 24-31 |
| (l) | 29 | Whole | 2 | 10-15 |
| (m) | 28 | Whole | 2 3 | 32-37 1-10 |
* "Side of the refuse vehicle" is obviously equivalent to "side of the tank".
As to integers (f) and (h), the use of a lid opening device is contemplated in claim 25, l 20, but it is not limited to a lid opening device located on the loading mechanism. At p 7, ll 30-37, there is reference to the lid being opened by a jet of water fired from a nozzle on the loading mechanism. Figures 4, 5 and 8, which are the same as similarly numbered figures in the petty patent, show a nozzle which might well be so located. At p 8, ll 5-8 there is reference to other forms of lid opening devices involving air and direct mechanical means. At p 11, in reference to figure 9, there is further reference to opening the lid.
The respondent asserts that the standard patent specification does not disclose a lid opening device as part of the loading mechanism. It is said expressly that claim 25 of that specification does not disclose such a feature. The assertion is based upon the reference in the standard patent specification to such device being situated in the transfer mechanism and upon an assumption that the device on the loading mechanism referred to at p 7, l 26 and p 11, l 12 and shown in figures 4, 5, 8 and 9 is "clearly to keep the lid open to prevent the lid and ramp as part of the transfer mechanism from colliding". I quote from the first respondent's written submissions. It is apparently asserted that it cannot be a lid opening device if it performs that function.
The difficulty with this argument is that the specification says that the device in question "opens the lid". (p 7, l 26 et seq). It further speaks of the "combined effect of the movement of the bin through its arc followed by the jet of water discharged from the nozzle ...". The nozzle is said to be on the loading mechanism. This same device is described in the petty patent. I am satisfied that this aspect is disclosed in the standard patent specification. As to the assertion concerning claim 25, it may be that the location of the lid opening device is not specified, but the claim is wide enough to include such a device. Further, as I have previously shown, the applicant may base the petty patent claims on the body of the standard specification.
All integers of the petty patent claims are to be found in the standard specification, acting in relation to one another in the same way as in those claims. They are fairly based on matter disclosed in the specification. Their priority date is therefore to be fixed as if they were included in that specification. Prima facie that date is the date of filing of the standard specification, namely 10 February 1993. However the applicant submits that reg 3.12 operates to fix an earlier date. That regulation provides, in effect, that if a claim is fairly based on matter disclosed in one or more priority documents, the date of filing of the priority document may be the priority date of the claim. Paragraph 3.12(2)(a) provides:-
If the application that relates to the specification containing the claim is a complete application - a provisional application that is associated with that complete application in accordance with s 38 of the Act ... is a priority document ...
Section 38 permits an applicant who has made a provisional application to make one or more complete applications associated with the provisional application at any time within the prescribed period, which is 12 months from the filing date of the provisional application (reg 3.10).
Section 5 provides that:-
... a complete application will be taken to be associated with a provisional application only if the request filed in respect of the complete application identifies the provisional application and contains a statement to the effect that the applications are associated.
It was not suggested on behalf of the first respondent that these requirements (other than "fair basing") were not satisfied in this case. The only question is whether or not the claims of the petty patent, as notionally incorporated into the standard patent application, can be accurately described as fairly based on matters disclosed in the provisional specification. Once again, I set out in tabular form the points in the provisional specification at which the various integers are reflected.
Integer
| Page and Line Reference in Provisional Specification | |
| (a) | p.2 lines 27 and 28 |
| (b) | p.3 line 1 |
| (c) | p.3 lines 25-29 and p.4 lines 1-5 |
| (d) | p.3 lines 4-7 |
| (e) | p.3 lines 7-10 |
| (f) | p.11 lines 11-17 and lines 20-28 p.12 lines 1-9 |
| (g) | p.10 lines 7-12 and the various diagrams displaying the type of bin which has a pivoting lid. |
| (h) | p.11 lines 11-17 and 22-28 and page 12 lines 1-9 |
| (i) | p.10 lines 5-10 |
| (j) | p.3 lines 20-24 |
| (k) | p.3 lines 22-24 |
| (l) | p.3 lines 25-29 and p.4 lines 1-15 |
| (m) | p.4 lines 16-24 |
I have not given all of the relevant references in respect of some of the integers. Clearly, the petty patent claims are fairly based on the content of the provisional specification.
INVENTION AND MANNER OF MANUFACTURE - s 18
The word "invention" is defined in the legislative dictionary as:-
... any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies, and includes an alleged invention; ...
Section 18 provides that a patentable invention is an invention of a manner of manufacture within the meaning of s 6 of the Statute of Monopolies, provided that certain other tests are met, including that of novelty and inventiveness. The expression "manner of manufacture" is to be given a broad meaning which reflects the body of learning associated with patents. See Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995)183 CLR 655 at 667.
Notwithstanding the express requirements of novelty and inventiveness prescribed in par 18(1)(b), in Philips the High Court was concerned with a submission which asserted the need for novelty and/or inventiveness in order that a claimed invention be an "invention" and a "manner of manufacture" for the purposes of the introductory words of subs 18(1) and par 18(1)(a). In effect, the patent was challenged upon the basis that it was not an invention or was not a manner of manufacture because of absence of novelty and/or of an inventive step. The majority (Brennan, Deane and Toohey JJ) considered that it was possible that a claimed patent might fail because the subject matter did not constitute an "invention" for the purposes of the introductory words of subs 18(1). The claimant failed in that case because the alleged invention was nothing more than a new use for a known product having known qualities. Their Honours considered that the words "manner of manufacture within the meaning of s 6 of the Statute of Monopolies" should be understood as referring to a process which is the proper subject matter of letters patent according to traditional principles.
In Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1997-8) 40 IPR 243, the majority (Brennan CJ, Gaudron, McHugh and Gummow JJ) said at 255:-
The present case is not in that category of cases, considered in Philips, where the lack of an inventive step appears on the face of the specification. It concerns the validity of combination claims in the light of prior publications. It will be recalled that the full court went beyond the text of the specification and placed decisive weight upon the disclosures in the Burke advertisement, the Frimeda advertisement and the RFA Systems advertisement in the Concrete Year Book of 1980. In that respect, the full court was in error in considering under the ground of revocation in s 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side.
The first respondent submits that in the present case, the petty patent is liable to revocation because of such preliminary inadequacy, in that it is either not an invention or not a manner of manufacture as required by the preliminary words of subs 18(1) and par 18(1)(a). Whatever may be the inter-relationship of the decisions in. Philips and Ramset, it is clear that the preliminary question posed in Philips will generally only arise when "the lack of an inventive step appears on the face of the specification" (Ramset at 255). The Full Court was expressly criticised for going "beyond the text of the specification and (placing) decisive weight upon the disclosures ..." (ibid at 255). In the present case the claim is for a "combination" patent. As was said by the High Court in Welch Perrin & Co Pty Ltd v Worrel & Anor (supra)at 611:-
That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.
There is nothing on the face of the specification which suggests that this is other than an invention or other than a manner of manufacture. Neither is this a case in which the claimant seeks to protect " ...the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable ...". (See Philips at 665, quoting from Commissioner of Patents v Microcell Ltd & Ors (1958-59) 102 CLR 232 at 251). The applicant claims to have invented a machine which is a combination of various integers, having as its purpose the collection of pre-sorted waste material, the separate storage of that waste material and the ultimate separate disposal of it. The applicant asserts that the combination or combinations claimed in the petty patent will achieve that result and that such an outcome had not been previously produced in this way. I cannot see any sensible basis for asserting that the claim is not a claim for an invention, nor can I see any basis for inferring that it is not a manner of manufacture within the broad meaning attributed to that term in this area. This leaves for consideration the issues of novelty, inventiveness and usefulness.
NOVELTY AND INVENTIVE STEP
Pursuant to par 18(1)(b), novelty and inventiveness are to be measured by comparison with the prior art base as it existed before the priority date of the claim which, in this case, is 10 February 1992. "Prior art base" is defined as follows:-
(a) in relation to deciding whether an invention does or does not involve an inventive step:(i) information in a document, being a document publicly available anywhere in the patent area; (ii) information made publicly available through doing an act anywhere in the patent area; (iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and (ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and (B) the specification was published after the priority date of the claim under consideration; and (C) the information was contained in the specification on its filing date and when it was published; ...
Section 7 provides:-
For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base, unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:(a) prior art information (other than that mentioned in par (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in par (c)) made publicly available in two or more related documents, or through doing two or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in sub-paragraph (b)(ii) of the definition of prior art base in Schedule 1.
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2) the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in two or more related documents, or through doing two or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.
The term "prior art information" means:
(a) for the purposes of subs 7(1) - information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and(b) for the purposes of subs 7(3) - information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step; ...
For present purposes, the patent area is Australia.
NOVELTY
The parties accept that each of the various integers of the combination was known in the industry prior to 10 February 1992, and that any claim to novelty must be for the combination. The first respondent must demonstrate an act constituting prior disclosure of a combination of all of the relevant integers. I understand it to accept that the only possible acts constituting such disclosure prior to 10 February 1992 are two presentations made by a company called TWT Formark Pty Ltd in July and November of 1991. TWT Formark was a company associated with an inventor called Colin Joseph Hickey who was referred to at various places in the evidence. By 1991 Mr Hickey, on behalf of TWT Formark, was working on a proposal very similar in effect to that of the claimed invention. TWT Formark was not financially successful. I was told that at some stage, its intellectual property was transferred to a company which is, in some way, associated with the applicant. Mr Hickey was not called at the trial. I should say that hereafter, generally I use the names Hickey and TWT Formark interchangeably.
On 10 July 1991 TWT Formark lodged a provisional specification with the Australian Patents Office and subsequently lodged an application for a standard patent. The provisional specification is exhibit ICR4. The standard patent application is EJEL1. The invention described in the provisional specification clearly involves the separate accumulation of waste and the separate storage and carriage of it in a waste collection vehicle. It contemplates loading using a mechanical means attached to the vehicle. The described system also provides for the conversion of existing bins by the mechanical insertion of an appropriate divider.
At the trial, it was suggested that the system did not contemplate the use of MGBs, but at p 2, l 30 of exhibit ICR 4 to the affidavit of Idwall Charles Richards filed 29 June 1998, it is said that
Preferably, the container is open topped and is arranged to be upended in the second position such that the discrete elements move to the respective receiving zones under gravity.
Similarly at p 3, ll 26-30 it provides:-
In a further aspect, the present invention provides a collection vehicle arranged to collect discrete elements located in an open topped container, the vehicle comprising a plurality of receiving zones, each receiving zone being located on a different horizontal plane and each being offset from the other in a horizontal direction ...
When one looks at the accompanying diagrams it is relatively clear that they depict MGBs. In figures 1a and 1b it is clear that the lid is in the fully open position, resting against the back of the bin. It seems quite unlikely that the inventor would have been describing a bin which had no lid. Considerations of hygiene militate against such a situation. It is more likely that the inventor simply assumed that the lid had been previously opened and that the invention described in the specification was intended to operate from that point onwards. I infer that the bin in question was an MGB, having a lid. There is no suggestion that the content of this specification had been disclosed at any relevant time. The subsequent standard patent application (exhibit EJEL1) was filed on 7 July 1992 claiming priority from 10 July 1991, presumably upon the basis of the provisional specification. Clearly, the claims in the standard patent application relate to an MGB. At p 1, ll 20-25, this passage appears:-
To efficiently collect recyclable materials it has been proposed to use automated collection vehicles having lifter arms and adapted to engage a bin, which is typically a wheeled bin having a hinged lid and manufactured from resilient plastics material, and to lift and invert the bin over a suitable collection chute in the vehicle.
At p 3, ll 2-5, it is said:-
Preferably the bin has a substantially vertical partition dividing the bin into two compartments and the lifting arm is provided with a cover engageable with the top of the bin and adapted to hold the contents of the bin within the compartments while the bin is being inverted by the mechanical lifting arm, said cover comprising a hinge pin supported from the lifting arm and positionable across the top of the bin aligned with the upper edge of the partition, a pair of flaps hingedly connected to and extending outwardly from the hinge pin over the top of the bin ...
At p 7, ll 7-13, it is said:-
In order to keep the contents of the bin from falling prematurely when the bin is raised and inverted by the lifter arm (4), it is desirable to provide a removable cover for the bin as part of the lifter arm mechanism. When the lifter arm engages with the bin, the hinged lid (29) (Fig5) of the bin is flipped open by any suitable means, eg: by a high pressure water jet attached to the lifter arm and operating under the rim of the lid and a cover (30) is clamped in place over the open top of the bin.
The various drawings also show an MGB.
The novelty of the presently claimed invention depends upon the extent of the disclosures made on behalf of TWT Formark in July and November of 1991. Mr Love, a former director of TWT Formark, said that he and Mr Hickey "launched" the concept on 10 July 1991. He described the system at paragraphs 14 to 18 of his affidavit as follows:-
14. The concept which was launched on 10 July 1991 involved the collection of waste in divided streams from divided bins emptied into a divided truck.15. The division of the streams of waste from the divided bin to the truck was maintained by the use of a butterfly or retractor type lid connected to the loading mechanism of the truck.
16. This lid covered the respective sides of the divided bin and had a pivoting point in its centre which aligned with the east-west division of the bin.
17. Each side of the butterfly retractor type lid could open to the centre leaving the divided waste streams to flow into the respective parts of the vehicle storage bin.
18. The butterfly retractor type lid in itself included an opening device in that in the first instance it clamped over an open bin and then during the unloading stage the sides of the butterfly were automatically opened to allow the separate streams of waste to empty from the bin.
Mr Love asserted that the process could not work "unless the pivoting lid of the MGB was opened by some automated means operated by the driver from the cab of the vehicle". He said that a device using compressed air to open the lid prior to the insertion of the butterfly plate was designed in or about February, 1992. Mr Love and Mr Hickey made a further presentation in November, 1991. Thereafter, the former published a paper dealing with the concept in broad terms but saying nothing about the points of importance for present purposes. The paper reflected the content of the presentation, but was not a complete record of them. The article, exhibit EJEL3, speaks of the separate handling of different types of waste and of multi-compartment bins. It proposes that pre-sorted garbage be collected in one-man vehicles, the separation being maintained, but says nothing about the precise mechanism by which the bin will be picked up, the lid opened and the contents emptied. The article was published late in 1992. Its relevance lies in the extent to which it recorded the content of the 1991 disclosures. It could not, itself, constitute a relevant disclosure for present purposes.
The use of the butterfly plate necessarily involves the opening of the lid at some early stage to permit insertion of the plate. Its function is to prevent waste from falling from the bin too early, so it would have to be in position, at the latest, before the bin starts to tilt. There is no reference to this in the provisional specification or in the article, nor any discussion as to how the lid might be opened in advance of the process which is there described.
Mr Love was cross-examined at some length about his participation in the two presentations and as to the extent of disclosure. With respect to the absence of any reference to the butterfly plate and associated mechanisms in his article, he said that it was not designed to convey technical details. It should be noted that he was primarily concerned with marketing.
To give the flavour of his evidence, it is necessary to quote extensively from it.
(p 299, l 19) Well, in November '91, and I am talking about that now - I am just trying to clarify the evidence in your affidavit - in November '91, at the presentation at the conference there was no description of the loading mechanism on the truck with the lid of two sections that was going to be put on top of the lid?---It was likely that there was. Colin Hickey gave that particular aspect of the presentation.Well, you can't recall there being so, can you?---There's been a lot of conferences since then. I wouldn't be absolutely certain, but it's possible.
He was then referred to the complete specification which was published on 21 January 1993 and it was suggested to him:-
(p 300, l 1) ... that's the first detailed disclosure of that proposed lid covering/opening loading mechanism?
That question was not answered. It was put in an alternative form and answered as follows:-
I'm saying you didn't disclose that in November '91?---I don't know. I don't know either way. I can't say for sure.
He was then asked:-
Well, it's unlikely that you would have, isn't it?---No; it is not unlikely. It would have been something that we would have discussed, because we needed to get the lid open. I know we discussed whether we did that mechanically with a finger or whether we did it pneumatically. They were some of the concept things we discussed. We had seen vehicles overseas that were handled by, you know, manned personnel - where they actually had to open a lid before they actually emptied it into the - the contents into a bin. It would have been something that we would have discussed, but whether that would have been part of the presentation, I couldn't swear to that.
At p 300, l 30, this passage appears:-
And in the light of that I suggest to you that there was no disclosure in November 1991 of the proposal for a loading mechanism with a lid to be superimposed on the bin after the bin lid had been opened?---My recollection is that there was always a butterfly mechanism as part of that. The design criteria that we worked to was to minimise the breakage of glass and to prevent cross-contamination of glass occurring in the paper. In order to do that, you need to cover the bin when the contents were emptied and let that out to minimise that breakage and to prevent that cross-contamination.Yes; I understand the purpose of it, but all I'm putting to you is this: it's unlikely that that was disclosed in November '91 even if, within the TWT Formark organisation, that was a proposal you were developing?---I actually would have thought it was most likely because the industry discussion then was all about cross-contamination. That was probably the main issue that anybody who had some concerns about the system would have raised - about cross-contamination issues. I feel certain that that would have addressed by those in the industry that had those concerns.
Well, was it a proposal - that's the loading mechanism with the lid - that was around in TWT Formark in July '91?---I think the butterfly would have been around in TWT Formark in July 1991.
Well, why wasn't it referred to in the provisional?---I can't answer that question. It was drafted by a patent attorney.
I suggest to you, Mr Love, that that proposal didn't surface until some time later and that the patent attorneys were informed some time later about it, and that's why it was included in the provisional. By "some time later", I mean mid to late '92. Would you agree with that?---No; I wouldn't agree with that. That's - that would be much too late.
At p 309, l 1 and following, Mr Love was referred to a statement in his affidavit as follows:-
The concept could not work unless the pivoting lid of the MGB was opened by some automatic means operated by the driver from the cab of the vehicle.
The cross-examination then proceeded as follows:-
That was how you understood it at what stage, '91, '92?---I think at all stages. It had to be operated by one man. It was a one-man collection system so it had to be operated, whether that's by joystick from the driver or whatever means, it had to be operated - - -And was it your understanding in July '91 throughout '91 that the pivoting lid had to be opened - of the MGB had to be opened by some automated means operated by the driver from the cab of the vehicle?---Yes.
At p 312, this passage appears:-
So, that mechanism, the butterfly plate, I suggest to you wasn't the subject of any disclosure or publication in November '91 at the conference?---I would have thought it would have been disclosed then because it would - we would have - it was a first design issue that we addressed.You have no distinct recollection of that, do you?---No, no distinct recollection.
And it may or may not have been?---It may or may not have been, yes, yes.
At p 316 he was asked:
Mr Love, doesn't that history that I've taken you to suggest to you that the butterfly plate was not disclosed in 1991?---It would have been disclosed. It may not have appeared in a patent application. By explanation, my understanding was that, when we put in a provisional patent, we had 12 months to file another one. It may have been for cash flow reasons or design reasons that we took advantage of that full 12 months but, in my view, the butterfly would have been disclosed very early.Yes. But what I'm suggesting to you is that the provisional was filed in July '91. Taking account of that history, you wouldn't have described it at the convention in November '91?---It's quite possible we would have described it - the butterfly - at the - as I say, I can't remember word for word. There was probably 20 papers, of which we were one, and I didn't give that one but, to me, it is entirely likely and highly probable that the butterfly would have been an integral part of it at that stage. It's the only way you can keep the elements discrete. There's - to me, there's no other way of doing it.
Well, I appreciate that, and I'm not taking issue with you on that. All I'm saying is: looking at those documents, it makes it most unlikely, does it not, that there had been any public disclosure of that loading mechanism with that top in 1991 or, indeed, before the complete specification with those elements was filed?---I would have thought it was likely - that it was more than likely.
But, anyway, you have no distinct recollection one way or the other?---In conversations, we were fairly active. From July 10, right throughout, it was my role to proliferate awareness of that particular system. I was - I was familiar - I can't remember, I can't recall when the butterfly wasn't part of it, so, from my knowledge, I always thought it was a - the particular butterfly mechanism was always part of the system. The fact that it didn't appear on the original patent - I have no idea why it didn't appear there. Maybe we were finding some elements of that, but it was always - can I just, by - by way of history - my background in that goes to '86 with Otto, and one of the problems with that system that was experienced in Europe was cross-contamination, and the only way to solve that problem, in my view - and I didn't draw it - was to have the butterfly system that held onto the materials until such days (sic) as they could be let go and there was a small - I can see in my mind's eye describing the system, so we only let the materials draw a small distance into the top hopper, so we eliminated the breakage of glass coming back to the design criteria I mentioned earlier, and also prevent the cross-contamination of glass. These were issues that related to the proliferation of those systems that we would have addressed. Probably on July 10 people would have asked those questions, because there was a concern about bin systems and cross contamination ....
July 10 which year, '91?---Those issues would have been raised immediately by those in the industry who had an understanding of those types of systems, and we would have had to respond to that; otherwise, we would have been giving "I don't know" answers, and we would have been giving answers by that stage.
And I'll suggest to you the only sort of response you would have made was the effect is: "Well, we've got something and we're working on it"?---No, I don't think we would have said that. No, that's not convincing.
Mr Love, the evidence that you've just given, what you've thought about now, having been drawn to all these matters again for the purpose of giving evidence, but you've got no clear recollection at all of what happened over that period, have you, from the terms of relating to this and what was shown and what was not?---I'd probably have a lot of recollection. I couldn't answer that one "yes" or "no".
At p 325 it was again suggested to Mr Love that the butterfly plate had not been disclosed. He was then asked at l 8:-
And I suggest to you that that's because it was a secret of TWT Formark and its patent attorneys in the sense of being confined to the TWT organisation and the patent attorneys until the complete specification was lodged and finalised?---I can't recall that being the case.Though it could have been though?---I don't know; I don't think - I mean, I'd be more certain that it wasn't than it was.
A second witness to the disclosure at the July, 1991 presentation was Ronald Gordon Spratt. He was an environmental health officer concerned with the operation of refuse collection systems by the Ashfield Municipal Council. He chaired the July meeting held in the Holroyd Council Auditorium in Sydney at which the TWT Formark launch occurred. He was president of the International Federation of Environmental Health and was probably chosen to chair the session in that capacity. He said that there were about a hundred people at that meeting, mostly from local government. He said that the system was called the "SORT" system and involved a horizontally split truck with a side loading hydraulic mechanism for the "auto-pick" of divided garbage bins, all of which occurred by remote control operated by one operator from the cabin of the vehicle. It is not clear from his affidavit whether he was swearing that the features were disclosed at the meeting or merely giving his understanding of the system. He recalled that a feature of the system was the use of a retractor plate to maintain separation of the different categories of waste. The plate was placed in position at the beginning of the lifting cycle and operated when the bin was in place over the hopper. He inferred that for the plate to operate, it was necessary that the bin lid be first moved out of the way. Mr Spratt did not attend the November, 1991 presentation but spoke to Mr Love about it. He saw a prototype of the truck at a conference in Glenelg in November, 1992. The meeting in November, 1991 was the 18th National Environmental Health Conference.
At p 457, l 22 he was asked:-
What I want to suggest to you is that in July '91/November '91 there was no mention to you of what you call the retractor plate or the lid or that mechanism for keeping the contents of the bin in the bin, until it was accurately positioned for dumping?---During - in - in the situation in July '91, yes, the system required the retractor plate or retention plate to be used so that the - the materials could be - - -I appreciate that, but what I'm putting to you is that Mr Hickey and Mr Love didn't explain that in July '91?---They didn't explain it to me in the minutest of detail but the - the theory behind it all was available in 1991, yes.
Well they said in general terms did they, in 1991 in July and then in November?---In schematic terms, yes.
In schematic terms that the material would be kept in the bin, somehow or other, until it could be accurately put into the truck?---That's correct.
He agreed that there had been no drawings of mechanisms such as a butterfly plate or retractor plate.
In re-examination he said at p 460, l 4:-
In July 1991, as the - the chair of that particular launch, I usually make it my business to become aware of the - if I use the word mechanics, it is probably the wrong word. It is probably a little too restrictive in this circumstance, but I like to become aware of the processes at which I'm supposed to chair, and I made it my business prior to that particular July '91 launch to become aware of - of the basis of the particular SORT system.Well, if you could put that aside for the moment, can you tell the court what was revealed at the public meeting in July 1991 about the SORT system?---It was a schematic proposal of a - of a divided bin system that was principally developed for the collection of recyclables to remove what would have been the contamination of glass in among the paper.
You say in paragraph 4 there were diagrams. What sort of diagrams were used?---It was simply - simply a schematic diagram of a vehicle - of, first of all, a household, a bin, a vehicle and a sortation plant - after the receipt of the contents of the vehicle into the materials recovery facility.
At p 461, ll 8-9, he said that he couldn't recall Hickey or Love actually speaking about a retractor plate or butterfly plate, but "I recall it as being a part of the system at that particular time".
He was then asked:
Do you mean it was either in the diagrams or they said it, but you don't know which?---I can't recall whether it was diagrammatic or whether it was someone said, oh look, we've put a retractor plate over here and - or whether it was diagrammatic or by verbiage. I can't recall.
At p 464, l 22, he was asked:-
And before (the Glenelg Conference in 1992), you knew there was going to be a plate or something to hold the contents of the two parts of the divided bin until they were appropriately positioned with respect to the truck, but you didn't know how that was going to precisely - how, in mechanical terms, that was going to be effected?---I became aware of the schematic details of the retractor plate as of approximately July '91 but not in physical terms until November '92.When you say the schematic details of the retractor plate, there was no drawings of mechanisms in July '91, was there?---No, not that I'm aware of, no.
Finally, at p 465, l 6, he said that he probably first became aware that it was a so-called "butterfly action" in November 1992 when he saw the vehicle.
Raymond John O'Dwyer attended a presentation by TWT Formark in the second half of 1991. He said it was not the July presentation. I infer that it was the November presentation. His recollection was that the Formark proposal was for an east-west divided bin, coupled with a divided truck operated by a driver who could also control a robotic arm. The vehicle had a transfer mechanism. No detailed explanation of the loading mechanism was given on that occasion.
Mr Idwall Charles Richards also attended the July meeting. In his affidavit he gives a somewhat limited account of his recollections of it. He referred firstly to a brief introductory paragraph in Mr Spratt's account of what happened and endorsed it. He then referred to a statement by Mr Love of the same kind and endorsed that. Finally, he referred to Mr Love's article and asserted that the format of the meeting was "along the lines" of that article. In other words, he chose three short extracts of some of the evidence of other witnesses and endorsed them without, in his affidavit, giving his recollection of what was actually said.
In cross-examination at p 395, ll 20-30, Mr Richards agreed that Hickey's proposal related to the use of MGBs. He was then referred to the list of integers and agreed that integers (a) to (e) were all disclosed at the meeting. At p 396, ll 10 to 12 he denied that there was disclosure of a loading mechanism with a lid opening device. It seems unlikely that he meant to assert that the loading mechanism was not mentioned, this being the subject matter of integer (d). As to integer (g), at p 396, l 23 - p 397, l 15, Mr Richards appeared to resile from his assertion that he understood the presentation to be in the context of collecting waste from MGBs, asserting that the presentation involved open-topped bins. I suspect that he was referring to the passage in Hickey's provisional specification relating to a bin with an open top.
Mr Richards then asserted that in Hickey's system, it was not necessary that the lid be opened. He said that the only reason for requiring that the lid be opened was to insert the butterfly plate. See p 398, ll 13-15. He cannot have meant that the lid did not have to be opened at all, because that is obviously the only way in which the waste could be emptied from the bin. In view of his statement that east-west bins, in particular, benefit from the provision of a lid opening device, it is difficult to understand what he was trying to say. I should say that there were many points in his evidence at which I formed the view that he was being defensive and unco-operative.
I should refer to a question to Mr Richards at p 399, ll 1-2:-
And the obvious place to put a lid opening device when the lid is to be opened at the beginning of the cycle, is on the lifting mechanism?---Yes.
Finally at p 405, ll 22-28 this passage appears:-
Would you agree that integers (i),(j) and (k) were elements which were part of the Hickey system as made known at the July 1991 launch? Or if not made known were already known?---(i), (j) and (k) - the question is that (i), (j) and (k) were revealed at the launch of the '91, did you say?Yes, July '91?---Loading mechanism to empty the bin into the vehicle
Yes?---Yes.
Although this passage is a little difficult to understand in written form, the better view of it is that Mr Richards is agreeing that integers (i), (j) and (k) were disclosed at the July, 1991 presentation. Counsel made it more difficult for himself than it need have been by qualifying the words "as made known at the July, 1991 launch" by the addition of the alternative "or if not made known were already known?". However, Mr Richards' repetition of part of the question makes it clear that his intended answer is as I have indicated. It is, in any event, inconceivable that such matters would not have been disclosed. Thus the only aspects of claim 1 which Mr Richards asserts were not disclosed at the July, 1991 presentation are integers (f), (g) and (h), the use of a loading mechanism having a lid opening device, the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab and raising the lid. The first respondent alleges full disclosure of all relevant matters at either or both of the meetings, not that all disclosures on both occasions should be combined. It is therefore necessary to make findings about what was disclosed at each meeting.
It is true that neither Mr Love nor Mr Spratt had a particularly detailed recollection of what was said at, in the case of Mr Spratt, the July meeting, and in the case of Mr Love, either meeting. However each was quite firm in his recollection that he knew at that time that there was to be a mechanism of some kind to hold the waste in the bin. Mr Love was aware of no reason why that matter would not have been disclosed at the presentations and indeed, was of the view that such a disclosure would have been necessary in order to satisfy the interest of people in the industry. In effect, Mr Love's evidence is that although he cannot expressly remember the matter being discussed, it is probable that it was because of its perceived importance. Neither Mr Spratt nor Mr Love has any direct association with either party at the present time. Mr Love remains in the industry, but Mr Spratt is not presently so involved. Mr Richards denies any mention of the butterfly plate or a lid opening device at the July, 1991 meeting. Obviously, he has an interest in the outcome. Mr O'Dwyer, who is employed by the first respondent or an associated company, has only a limited recollection of the November meeting.
It was submitted on behalf of the applicant that I should draw an inference adverse to the first respondent from the fact that it did not call Mr Hickey. As I have said, I was informed in the course of the hearing that the intellectual property of TWT Formark was transferred by the receiver to a company associated with the Richards' interests. (See p 63.) There was no challenge to this information. I do not draw any inference adverse to either party from Mr Hickey's absence.
As I have previously said, I formed a generally unfavourable view of Mr Richards as a witness. He seemed to be unco-operative at numerous points in his evidence and to be quite defensive. I do not suggest that he has deliberately misled the court. I rather formed the view that he was so sure of the righteousness of the applicant's claim that he may have convinced himself of the truth of matters likely to be of assistance in making out that claim. I had a distinct preference for the evidence of Messrs Love and Spratt. Their roles in the presentations might also suggest that they would have a firmer recollection of what was said than would members of the audience.
I infer, on the balance of probabilities, that at the presentations in July and November 1991, reference was made to the use of the butterfly plate, although it may not have been so described, and its mechanism may not have been disclosed. I am also satisfied that the presentation was concerned with collection from MGBs. The use of such a device necessarily implied the prior opening of the lid of such a bin to permit its insertion. Mr Richards agreed that integers (a) to (e) and (i), (j) and (k) were all expressly mentioned in the presentation, and that the system involved use of MGBs. This leaves for consideration the extent of disclosure of integers (f), (h), (l) and (m).
As to the lid opening device, it is as well that I make a general observation about this case. Although opening the lid is of some importance, it may be that the case has focussed on that issue in a way which has over-emphasised the problem involved in achieving that result. It seems to me that the true merit of the invention and of the Hickey proposal is the concept of separate handling of pre-sorted waste. On any reading of Hickey's provisional specification, opening the lid was necessary, but the method of doing so was apparently not thought to be a problem. Although Mr Richards says that the timing of the lid opening is of great importance, the applicant's provisional specification says very little about it other than that a lid opening device may be included in the transfer mechanism and that in some embodiments, a water jet or other mechanism might be used. Further, the claims in the petty patent do not reflect such importance. I infer that in 1991-92, the method of opening the lid was not seen by Mr Hickey or Mr Richards as a major issue. I suspect that it has become a major issue in these proceedings simply because the applicant must distinguish its claim from the subject matter of the Hickey disclosures.
Although the need for a lid opening device may have been implicit in the Hickey presentations because of the involvement of the butterfly plate, there is no evidence that the use of such a device was disclosed in the 1991 presentations. It is possible that they, like the provisional specification, assumed an open lid without any consideration of the way in which that result might be achieved, again, perhaps because it was not seen as a real problem. It is difficult to see that there could have been any alternative to the use of a lid opening device. One other possibility would be to require the householder to open the lid when the bin was put out for collection. Hygiene considerations suggest that such a solution is unlikely.
It was common ground that to demonstrate want of novelty for present purposes, the first respondent must prove disclosure of each integer of the claim in one item of prior art. The location of the lid opening device on the loading mechanism was a possible solution to a problem which was implicitly identified, but not solved in the Hickey presentations. The use of a lid opening device located on the loading mechanism was not disclosed in either of the 1991 presentations. There is also no evidence of the disclosure of integers (l) and (m). In the circumstances, it is not necessary to consider at this stage whether disclosure in those presentations would have been sufficient to place the subject matter in the body of prior art. All of these matters fall to be considered again in the context of inventiveness, but the petty patent claims do not lack novelty.
INVENTIVENESS
I will deal firstly with the status of the presentations for the purpose of determining the state of prior art. As I have said, the July presentation was to a group of about 100 people from various local authorities. The presentation in November was to a professional organisation. We know nothing specific about the number of people attending, but it is reasonable to infer from Mr Love's evidence and that of Mr Spratt that it was a relatively large gathering. It was not disputed by the applicant that disclosure of information on either occasion would make such information publicly available for the purposes of ss 7 and 18. It seems clear that such disclosures would be widely distributed in the waste management industry. It is also reasonable to infer that this would include distribution to the relatively small number of companies engaged in building trucks for waste collection.
Section 7(2) dictates a consideration of what would have been obvious to a person skilled in the relevant art in the light of two matters, namely common general knowledge as it existed before the priority date, and prior art information made publicly available, being information that the skilled person in question could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art. A person skilled in the relevant art is said to be a "non-inventive skilled worker in the field". See Minnesota Mining and Manufacturing Co & Anor v Beiersdorf (Australia) Limited (1979-80) 144 CLR 253 at 293 per Aickin J. His Honour also considered the appropriate test for absence of inventiveness, the other members of the court (Barwick CJ, Stephen, Mason and Wilson JJ) concurring. Although the decision concerned previous legislation, the approach is of assistance. At p 293 his Honour said:-
In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter (sic). An allegation of want of inventive step is not made out by saying you may take one or two or twenty-one or twenty-two prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. 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 combinations 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.
For present purposes, it is necessary to consider whether the subject matter of the disclosures at the 1991 presentations had become part of "common general knowledge" prior to 10 February 1992 or whether the notional skilled person could, prior to that date, reasonably have been expected to have ascertained, understood and regarded that subject matter as relevant.
It is not disputed that each of the integers of the petty patent claims was known in the patent area before the priority date. The issue of absence of an inventive step requires an examination of the obviousness or otherwise of the combination. Mr Idwall Richards' evidence concerning the state of the industry is of some interest in this context. He said that " ... in the early 1980s the MGB came into use and was promoted almost universally by local government for the collection of domestic refuse". This "necessitated the development of purpose-built loading mechanisms which were fitted to side loading and rear loading refuse collection vehicles". Subsequently, side loading vehicles were developed to a stage where it was possible for them to be operated by one person. This was described by Mr Richards as "the automated collection of MGBs". He described the "industry transition from semi-automated collection to fully-automated collection", apparently meaning the establishment of equipment and practices pursuant to which bins were picked up and unloaded by remote control from the cab. Thereafter there was a demand for recycling of domestic refuse which led to his investigating the prospects of separate bin storage and handling. The use of a single operator system apparently dictates the use of a side loading vehicle, presumably because of the need to observe the operation.
The primary ideas in the invention are:-
1. That waste be sorted by householders and stored in separated compartments of one bin; and
2. That the vehicle collecting such waste comprise separate tanks for receiving pre-sorted waste.
The other elements are designed to facilitate the transfer of the sorted waste from the bin to the relevant storage tanks, maintaining the sorted state. The petty patent identifies certain characteristics of the vehicle and the bin. The vehicle is to be:-
1. A side loading refuse vehicle,
2. With a cab,
3. An elongate refuse storage tank divided lengthwise,
4. A loading mechanism adjacent to the side of the vehicle, and
5. A refuse transfer mechanism for transferring loaded material separately to the respective tanks.
The bin is to have a pivoting lid and hold recyclable waste separately from other waste.
The loading mechanism is to:-
1. Have a lid opening device.
2. Be adapted to engage a bin of the type having a pivoting lid by remote control from the cab.
3. Be appropriate to deliver refuse or other material into the vehicle.
4. Be capable of raising the lid of a bin and emptying the bin into the vehicle.
Claims 2 and 3 are specialised forms of Claim 1. Claim 2 is limited to the situation in which the tank sections are located one above the other. Claim 3 is limited to that situation associated with the use of an active transfer mechanism.
Anthony Paul Ahrens is the general manager of an engineering company and has experience in the design and construction of vehicles for use in the waste management industry. He said that each of the integers was known to him prior to 10 February 1992. At that stage he was aware of the inclusion of the features in the TWT Formark proposal as disclosed in late 1991. The number of companies manufacturing bodies for waste management trucks in this country is not large, there being about six such manufacturers. Such manufacturers are "very conscious of patent developments in the industry, both in Australia and overseas, and very conscious of patent content". The TWT Formark system became known in the industry in 1991-1992. In cross-examination Mr Ahrens said that he was aware in February, 1992 that TWT Formark had been promoting a system in late 1991 which included a side loading vehicle with an automated lifter and a horizontally divided tank section to lift an east-west divider bin. He heard of this by word of mouth in the industry. He also knew that the bin was to be divided horizontally. Although Mr Ahrens said that the first thing that occurred to him when he heard of the proposal was how to get the lid out of the way, he did not understand that to be a part of Mr Hickey's proposal. At some time in early 1992, he heard from an associate of Hickey that the latter was working on a lid opening device. He said, however, that in 1991 he "went through the process of what Colin Hickey was doing and knew all the concepts and the problems involved with actually performing that task". At pages 252-3 Mr Ahrens said that the combination was obvious in the light of the Hickey proposal. He regards himself as an inventor.
Douglas Gordon Browne is the engineering manager for a waste disposal company and entered the industry in November, 1991. He says that prior to February 1992, each of the features in the petty patent invention was known to him and that each was a concept to which he would resort in planning and constructing a waste disposal body for a truck. In view of Mr Browne's relatively late entry into the industry, I would have great difficulty in accepting his evidence as establishing the state of the art prior to 10 February 1992. He was previously employed by Cleanaway.
Raymond John O'Dwyer has been employed by Cleanaway since July, 1982. He is a fitter and turner by trade. He attended one of the 1991 presentations by TWT Formark, probably the November presentation. He learned that it proposed to use an east-west divided bin and a divided truck designed to maintain the separation of materials collected from the bin. It was a one-man, robotic arm-operated vehicle. It had a transfer mechanism to move the material into the back of the body, and a small materials recovery facility. He said that in 1991, he was aware of the problem in relation to split bin systems where the bin was divided with an east-west configuration, the problem being that the lid must be moved out of the way to avoid cross-contamination of the waste stream.
Prior to 10 February 1992 each of the integers of the claim was known to him and had been used or demonstrated in vehicles in the waste industry. Each was a concept to which he would resort in the planning and construction of a waste disposal body for a truck, having regard to the purpose for which the truck was being constructed. He was aware that in late 1991, TWT Formark was promoting divided bins. The use of horizontal divisions in the storage tank as in claim 2 would have been obvious to a designer. The use of an active transfer mechanism, as contemplated by claim 3, was "simply an option which a designer might adopt if the circumstances suited its use".
He said that in 1991, whilst managing a material recovery facility for Cleanaway, he heard of the TWT Formark system by word of mouth in the industry. He knew of the proposed use of a butterfly plate placed over the open mouth of an east-west bin, and he understood that the system was to be operated from the cab. He also knew in 1991 that J J Richards and Sons was using a lid opening device on vehicles operating in the Tweed Shire. By 10 February 1992, he was aware of the various integers of the claim and their inter-relationship. In cross-examination, he said that he has designed refuse removal vehicles and loading mechanisms.
Needless to say, Mr Richards asserts that his invention was not obvious. He made trenchant criticisms of many of the witnesses for the first respondent and gave interesting and useful evidence as to the development of the industry over many years. However the applicant's case on inventiveness eventually resolved into a narrowly based attack on the first respondent's evidence. It was said firstly that Mr Browne conceded that he was not qualified to express a view on the ultimate question of whether the combination was entirely new or not obvious. This was a reference to p 207 of the transcript where Browne said at ll 3-7:-
Paragraph 21 refers to you being informed that about whether features worked together or not are inter-related. What do you understand by manner of new manufacture?---A manner of new manufacture would be an inventive step, something that is entirely new and not obvious.You are not qualified to express a view on it?---That's right.
It is not entirely clear what Mr Browne meant by this answer, but I do not take it as detracting from his views as to the integers of the claim being known in the industry at the relevant time and being features to which he would have resorted in the design of an appropriate vehicle. I take that to mean, in the context of this case, that if he were faced with the task of solving the problem of how to open the lid for the purposes of the Hickey process, he would, without any inventive step, have resorted to the use of a lid opening device.
Mr Ahrens considered that loading mechanisms incorporating lid opening devices were well known prior to February 1992, as were the other elements of the claim. Again, in the context of this case, I take this to mean that had he been faced with the need to open the lid for the purposes of the Hickey proposal, he would have considered the solution to the problem to be obvious by reference to previous experience in the industry. It is true that Mr Ahrens considers himself to be an inventor, but that of itself cannot disqualify him from giving evidence as to obviousness. To describe oneself as an inventor is merely to say something about one's capacity to identify and solve a problem. The line between a competent technician, able to solve problems on the basis of an established state of knowledge in his or her industry. and an inventor will not always be easily discerned. Further, a person who is an inventor may well also perform non-inventive work.
The applicant sought to discredit Mr O'Dwyer's evidence because of his approach to the elements of the claims in the petty patent. This seems to me to be more akin to a pleading question than a valid attack upon the substance of his evidence. However it is true that Mr O'Dwyer was not looking at combined bin systems in 1991-1992 and therefore did not address the possibility of collecting refuse and recyclable waste from the same bin.
The evidence from the experts satisfies me that prior to 10 February 1992 the content of the disclosures at the TWT Formark presentation had passed into common general knowledge or, alternatively, was prior art information that a skilled person in the industry could reasonably be expected to have ascertained, understood and regarded as relevant to his or her work in that area. The apparent extent of distribution of such information to the various witnesses and their opinions as to its relevance demonstrate this. The occasions on which the disclosures occurred must inevitably have led to their content being widely disseminated amongst persons having the relevant skills and interests. Thus, the inventiveness of the petty patent claims must be measured against the ideas disclosed by Mr Hickey.
In the end, the applicant took two approaches to the question of inventiveness. It was at least suggested that the inventive element might lie in suggesting storage in, and collection from one bin of refuse and recyclable material. It was said that nobody else was interested in such a combined pick-up system as at February 1992, the emphasis in the industry being elsewhere. In particular, it had not been suggested that refuse could be collected jointly with recyclable material. In this sense the proposal was said to be different from the Hickey proposal because the latter involved separation of recyclable material. Mr Idwall Richards said that there were problems with cross-contamination as between refuse and recyclable material which did not occur as between classes of sorted recyclable material. However much of the evidence suggests that substantial difficulties are encountered in contamination of recyclable paper with glass. Some of Mr Richards' associates were not so firm on the specialised nature of his system. Mr Rhys William Richards said in his affidavit filed on 5 September, 1997 at paragraph 15, that the benefit of the petty patent system was:
This allows the recyclable material to be kept separate from refuse, or co-mingled recyclable materials, (glass, metals, plastics (GMP)), to be kept separate from paper and cardboard which is being deposited into the respective collection units.
Similarly, Philip Benjamin Richards said at page 16 of his affidavit that Mr Richards had proposed in the petty patent a system "where the two waste streams are maintained separately during the emptying process". He did not further describe those streams. It is clear from the provisional specification filed by TWT Formark that the Hickey system was not limited to pre-sorted recyclable material. The proposal at page 2, ll 5 and 6 and ll 15-18 is wide enough to include the simultaneous collection of refuse and recyclable material. Further, Mr Love's article, exhibit EJEL 3, which is said to reflect the content of the presentations in 1991, refers not only to a bin in which one compartment is for paper and other co-mingled recyclables, but also, at p 3, to:-
Another alternative used internationally is wet dry collection, where bio-degradables are placed on one side, and selected dry recyclables on the other.
Elsewhere in the article, there is discussion of the use in the United Kingdom of two divided bins, one containing paper in one compartment and "co-mingled recyclables" in the other, the second bin having "compostables" in one compartment and "residual waste" in the other. (See p 4.) Assuming that this reflected the content of the presentations, it would seem that different combinations of refuse and recyclable materials were disclosed. In any event, as I have previously demonstrated, Mr Richards agreed that integer (j) of his claim, "the bin holding recyclable waste separately from other waste in the bin" was disclosed as part of the presentation in July 1991. (See p 405 ll 20-28.)
Mr Ahrens treated the concept of separation as being equally applicable to collecting different categories of recyclable material and collecting refuse and recyclable material. I see no reason to cavil with this approach, nor did I understand Mr Ahrens' view to be challenged in cross-examination, although the matter was raised obliquely at the end of the cross-examination of Mr O'Dwyer. Given the content of Mr Love's article reflecting the presentations in 1991 and Mr Richards' willingness to accept that integer (j) was disclosed in the Hickey presentation, I see no reason to doubt that it was so disclosed, although people in the industry may have understood the proposal to be primarily designed to deal with pre-sorted recyclable materials. In any event, it seems to me to be beyond argument, and consistent with the expert evidence, that if sorted recyclable material could be held in different compartments and separately handled, then the same process would be broadly appropriate to the handling of refuse and recyclable material, subject to Mr Idwall Richards' caveat about the importance of avoiding cross-contamination. However, as the evidence discloses, cross-contamination may be as much a problem in handling different categories of recyclable material as in handling refuse and recyclable material. That caveat is therefore not valid. The use of the system for both purposes is obvious.
The other basis for resisting an allegation of want of inventiveness concerns the combination of the integers. Hickey's proposal involved an additional element, namely the butterfly plate. I will return to that point at a later stage. His proposal certainly contained each of the integers of petty patent claim 1, other than the location of a lid opening device on the loading mechanism and its operation. The applicant claims to have identified the need to open the lid and to have solved that problem by suggesting:-
(a) Use of a lid opening device;
(b) Locating it on the loading mechanism.
As I have said, the need to open the lid was obvious from the TWT Formark provisional specification and, I infer, from the 1991 presentations. As to the suggested solution, the applicant did not identify a particular lid opening device. The claim is wide enough to encompass all such devices. Although the specification identifies one type and speaks of others, there is nothing to suggest that the generality of the claim should be so read down. Thus the inventive step which is claimed is simply use of a lid opening device of any kind located on the loading mechanism. At least if the lid is to be opened at an early stage in the process, Mr Idwall Richards considered that location to be obvious. The expert evidence establishes that such a location was already known in the industry. Once geographical proximity is established between the lifting mechanism and the bin, it is, in my view, obvious that it is a possible location for the lid opening mechanism. This is the effect of much of the expert evidence which I accept.
It is true that in his evidence, Mr Idwall Richards asserted that the timing of the use of the lid opening device was critical to his invention, his suggestion being that it should occur quite late in the process. That, however, is not an element of his claim. Had he claimed the timing of the lid opening operation as, for example, an alternative to the use of the butterfly plate, it may be that he would have demonstrated an inventive step in comparison to the prior art base. The petty patent claims dispense with the requirement for a butterfly plate. In theory, I see no reason why dispensing with an element of a prior design may not be an inventive step if it produces a better result. However, in this case, the removal of the butterfly plate did not result in any different outcome in the interaction of the other integers. They continue to do precisely what they did before, both in total and in relation to one another. There was no suggestion that dispensing with the butterfly plate, by itself, was an inventive step, nor was there any basis in the evidence for such a claim. In the circumstances, I consider that claim 1 demonstrates no inventive step.
As to claim 2, the evidence shows that such a method of dividing the tank was either known in the industry at the relevant time or was obvious. I have no difficulty in accepting that view. As to claim 3, active transfer mechanisms were well known at the relevant time, and the expert evidence demonstrates obviousness, again a view which I have no difficulty in accepting.
UTILITY
It is asserted that if the petty patent otherwise survives, it should be revoked upon the basis of lack of utility. Because I have disposed of the matter upon the basis of want of inventiveness, it is not strictly necessary that I deal with this matter. However I should say that had I been satisfied as to the existence of an inventive step, I would not have doubted the utility of the invention. Many of the applicant's witnesses testified to this fact. The first respondent's main attack in this regard was not upon the invention, but upon the fact that in the diagrams, the only demonstrated lid opening device was one which would not work, a reference to the schematic diagram of a water jet firing outside the bin. I have previously explained the problems with such a design and why I do not consider that to be a valid criticism in the context of s 40. It also does not detract from the utility of the invention. A diagram may give a schematic representation which is inaccurate or will not work, or both, but the claim extends to all lid opening devices situated on the loading mechanism. The utility of the invention must be assessed on that basis. It is not suggested that no such device would allow the invention to work.
My findings are as follows:-
(a) The specification describes the claimed invention fully.
(b) The specification does not describe the best method known to the applicant of performing the invention.
(c) The claims are clear and succinct and fairly based on the matter described in the specification.
(d) The claimed invention is an invention which is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.
(e) The priority date of the claims in the petty patent is 10 February 1992.
(f) As at the priority date, the claimed invention was novel.
(g) As at the priority date, the claimed invention lacked an inventive step.
(h) The claimed invention is useful.
I will stand the matter over for the parties to consider my reasons, to make such requests for further findings as they may consider appropriate and to prepare a proposed form of order. I will also hear submissions as to costs.
ANNEXURE 1
"1. In a side loading refuse vehicle having a cab, the combination of an elongate refuse storage tank divided into longitudinally extending tank sections, a loading mechanism adjacent a side of the refuse vehicle and a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tank sections, the loading mechanism having a lid opening device and the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab, raise the lid and empty the bin into the vehicle, the bin holding recyclable waste separately from other waste in the bin and upon being emptied into the vehicle, the recyclable waste and the other waste are separately delivered by the transfer mechanism to respective ones of the said tank sections.
2. The combination of claim 1 wherein the tank sections are located one above the other.
3. The combination of claim 1 or claim 2 wherein the transfer mechanism is an active transfer mechanism.
ANNEXURE 2
FIREBELT PTY LTD v BRAMBLES
COOLOOLA SC and STATE of QLD
Analysis of Claims - Goodhew
(a) In a side loading refuse vehicle
(b) having a cab
(c) the combination of an elongate refuse storage tank divided into longitudinally extending tank sections
(d) a loading mechanism adjacent to the side of the refuse vehicle and
(e) a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tanks
(f) the loading mechanism having a lid opening device and
(g) the loading mechanism being adapted to engage a bin of the type having a pivoting lid by remote control from the cab
(h) raise the lid and
(i) empty the bin into the vehicle
(j) the bin holding recyclable waste separately from other waste in the bin, and
(k) upon being emptied into the vehicle, the recyclable waste and other waste are separately delivered by the transfer mechanism to the respective ones of the tank sections.
(l) the combination in claim 1 wherein the tank sections are located one above the other.
(m) The combination of claim 1 or claim 2 wherein the transfer mechanism is an active transfer mechanism.
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