Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd
[2001] APO 25
•28 May 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 651031 in the name of FIREBELT PTY LTD
Title: A Vehicle
Action: Opposition under section 59 by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD; hearing.
Decision: Issued
Abstract
The invention relates to a refuse collection vehicle having a particular combination of divided storage tank, side loading bin mechanism, entrance passageway for receiving streams of refuse, and transfer mechanisms to move the refuse streams to storage regions.
The specification was amended subsequent to acceptance and after evidence in answer was filed.
The applicant raised objections to the statement of grounds and particulars and the evidence in reply. It was held that the statement of grounds and particulars was deficient in failing to fairly foreshadow the case to be met on the opposition ground of lack of inventive step. Also a portion of the sole declaration filed as evidence in reply was not admitted being not properly evidence in reply.
The relevance to this opposition of findings by the Federal Court in an action concerning a related petty patent was considered.
Opposition grounds of non compliance with section 40, lack of novelty, lack of an inventive step, and not a manner of manufacture not established to the amended claims.
Cost were awarded against the patent applicant Firebelt Pty Ltd up to the date of allowance of the amendments to the specification, and against the opponent MacDonald Johnston Engineering Company Pty Ltd after that date.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 651031 by FIREBELT PTY LTD, and opposition thereto by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD under section 59 of the Patents Act 1990.
BACKGROUND
Patent Application No. 651031 was filed on 10 February 1993 by Firebelt Pty Ltd ("Firebelt"). It originated as a PCT application designating Australia. The application was originally numbered 34856/93 and when advertised accepted on 7 July 1994 was given the serial number 651031. The application claims priority from six earlier Australian provisional specifications the earliest of which was filed on 10 February 1992. Application 676371 has been divided from application 651031 and is subject to a concurrent opposition.
A notice of opposition to application 651031 was filed on 7 October 1994 by MacDonald Johnston Engineering Company Pty Ltd ("MacDonald"), and a statement of grounds and particulars followed on 6 January 1995. Evidence in support, answer and reply were duly filed and further evidence was permitted to be filed on behalf of the patent applicant after the evidence in reply stage.
On 18 April 1996, that is subsequent to the filing of evidence in answer, the applicant requested amendment of the specification. The present opponent opposed that request and by a decision dated 23 April 1998 a delegate of the Commissioner refused the request. A second request to amend was filed by the applicant on 16 February 1999. This request was not opposed and allowance of the amendments was notified to the parties on 21 June 2000. The amendments included new claims numbered 1 to 13.
The statement of grounds and particulars ("the Statement") lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990 ("the Act"): paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b) (novelty and inventive step) and section 40.
This matter was heard on 3 and 4 October 2000 in Canberra immediately before the hearing for application 676371 involving the same parties. The applicant was represented by Mr T Dredge, patent attorney of INTELLPRO, Brisbane and the opponent by Mr C Oberin, patent attorney, and Mr J Gottschall, solicitor, of McMaster Oberin Arthur Robinson & Hedderwicks, Melbourne. Mr Dredge attended in person with Mr R Richards of the applicant company in Canberra. Mr Oberin with Mr Gottschall attended by telephone for each day.
RELATED APPLICATION AND PETTY PATENT
As already mentioned standard patent application 676371 is a divisional application from application 651031 and is subject to a concurrent opposition. A hearing for that opposition took place following that for 651031. Petty patent 657082 also arose as a divisional application from application 651031. This petty patent has been before the Federal Court of Australia in actions concerning infringement and revocation. Dowsett J issued a judgement on 24 December 1998 finding inter alia that at the priority date the claimed invention was novel but lacked an inventive step (see Firebelt v Brambles (1999) 43 IPR 83). Judgement by the Full Bench of the Federal Court dismissing an appeal to the earlier findings was delivered on 22 November 2000 (see Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689 (22 November 2000)). During the hearing for the opposition to 651031 various references were made to findings by Dowsett J in his judgement, with submissions made that they had relevance to the present matter.
SPECIFICATION
The invention in application 651031 is entitled "A vehicle" although more specifically the specification relates to a refuse vehicle which enables the automated collection of garbage and/or recyclable wastes. The specification commences with the following paragraphs.
"TECHNICAL FIELD OF THE INVENTION
THIS INVENTION relates 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.BACKGROUND ART
With the introduction of environmental awareness, the collection of domestic garbage has taken on a new complexion, it being realised that new, convenient and economical approaches to garbage collection and recycling must be introduced. It has been proposed to provide householders with a plurality of waste bins so that each householder can sought waste into various categories.For example, paper, metal cans and bottles and garbage could conceivably be stored and collected separately and this has been tried, the main problem with this scheme is the high expense insofar as separate collections are required for each category.
The alternative has been to provide local or regional sorting facilities where garbage is hand sorted or expensive automated facilities have been tried with minimal success due to the high expense involved.
In summary therefore, sorting of recyclables from domestic garbage after collection is generally uneconomical.
OUTLINE OF THE INVENTION
The present invention has, as its primary object, to provide a useful alternative to the aforementioned prior art."
The specification then continues with a so-called consistory statement describing the invention, followed by detailed description of the invention by reference to the 13 sheets of drawings.
As already mentioned, the specification was amended subsequent to acceptance and contains a total of 13 claims. Claim 1 is the only independent claim and each other claim appends directly to claim 1. Claim 1 is directed to "a side loading refuse vehicle" and, broken up into integers for convenience but retaining original punctuation, is in this form:
A."A side loading refuse vehicle having a forward end, opposed sides and a rearward end and comprising
B.a driver's cab in front of
C.an elongate storage tank,
D.the storage tank being divided into separate upper and lower storage regions,
E.an entrance passageway being provided behind the cab and in front of the storage regions
F.and a bin loading mechanism being carried by an arm,
G.the arm being located adjacent one of said sides and being extendable sideways therefrom under control from the cab to engage a bin and empty refuse from the bin into the vehicle through the entrance passageway,
H.the entrance passageway having means maintaining separate first and second streams of refuse received from the bin,
the upper storage region having forward and rearward ends and
J.there being provided a first refuse transfer mechanism downstream of the entrance passageway and including active means moving the first stream into the upper storage region,
K.the lower storage region having forward and rearward ends and
L.there being provided a second refuse transfer mechanism downstream of the entrance passageway and said second transfer mechanism including active means confined in its operation to the forward end of the lower storage region and receiving the second stream and moving the second stream to the lower storage region."
In brief the invention provides a refuse vehicle which has a divided storage tank with an entrance passageway leading to the tank between the vehicle cab and tank, and the vehicle has transfer mechanisms which permit two streams of refuse from a bin to be kept separate when loaded into the vehicle via the passageway and directed to respective storage regions of the storage tank. The vehicle is identified as "side loading" since the vehicle has a bin loading mechanism positioned at a side of the vehicle to engage a refuse bin and empty its contents into the tank via the passageway. The drawings of embodiments showing the invention depict refuse bins which are commonly known as mobile garbage bins (MGBs) or "wheelie bins". For the purposes of the present invention these bins are divided so that they can contain two different types of refuse.
STATEMENT OF GROUNDS AND PARTICULARS AND THE EVIDENCE
The opponent's Statement lists the non-compliance with (1) Section 40 and (2) Section 18(1)(a) and (b) as grounds of opposition. The "Particulars" given refer to (1) three section 40 issues and (2) three prior patent specifications which are considered to "affect" certain claims with mention of a further patent specification.
The evidence filed in this matter with brief identification of the exhibits consists of the following:
Evidence in support
Declarations by:
| David J Browning (1) | Exhibit DJB1 (DE 3537546 with translation - KNIERIM) |
| Exhibit DJB2 (EP 314238 - GEESINK) | |
| Exhibit DJB3 (US 5035564 -MATSUMOTO) | |
| Anthony John Crozier | No exhibits |
| Robert Smith | Exhibit AB-1 (AU 82407/82) |
| Exhibit AB-2 (copy of photographs) | |
| Exhibit AB-3 (drawings) |
Evidence in answer
Declarations by:
| Rhys William Richards | Exhibit RWR 1 (extract from a decision re AU 629710) |
| Exhibit RWR 2 (copies of photographs) | |
| Trevor James Dredge (1) | Exhibit TJD1 (copies of photographs) |
| Duncan Bartlett Gilmore | Exhibit DBG 1 (curriculum vitae) |
Evidence in reply
Declaration by:
| David J Browning (2) | Exhibits DJB1 - 37 (various magazine extracts, brochures, etc) |
Further Evidence filed by the applicant
Declaration by:
| Trevor James Dredge (2) | Exhibit TJD1 (copies of photographs) |
ADMISSIBILITY OF EVIDENCE
Background
Just prior to the hearing, by letter dated 27 September 2000, the applicant made a request for the Commissioner to make certain directions about the admissibility of the opponent's evidence in support and evidence in reply. The evidence in reply had been filed on 28 October 1998. The request asserts that the statement of grounds indicated specific and limited particulars, and that the evidence in support extended to mechanisms described by Smith and Crozier which were not particularised. The request also asserts that the evidence in reply is not strictly in reply to the evidence in answer.
At the commencement of the hearing I invited submissions on the admissibility of evidence issue and how to proceed. Mr Dredge submitted that the evidence in question was of concern to the applicant and if admitted would clearly prejudice it. He explained that if certain evidence were admitted, the applicant would probably want to be in a position to counter such evidence with its own evidence. He also explained that his submissions based on this evidence as it stood would be coloured especially without the applicant's evidence in response to it. Mr Oberin was happy to proceed with the opposition hearing with any issue about the inadmissibility of certain evidence being raised during the course of submissions and to be determined by me in my decision.
I indicated that I was mindful that the opposition had already been in progress for some time and it seemed desirable that a determination of it should be progressed. I also indicated that it seemed that the issues about the admissibility of evidence were intertwined with the case to be made by the opponent, which would necessitate going to matters in the evidence in some detail. I also indicated that if the hearing on the opposition substantive matters went ahead, I recognised Mr Dredge's concern if certain evidence were admitted, and that it may be appropriate to give the applicant an opportunity to file further evidence or further submissions concerning it. I indicated that the hearing of the opposition should proceed and with issues about certain evidence and its admissibility being raised as it arose and to be disposed of in the decision. I also indicated that, if needed, the applicant would be given an opportunity to file further evidence or further submissions about disputed evidence.
In arguing for the admissibility of the evidence in reply Mr Oberin referred to the earlier evidence stages. Essentially he submitted that the evidence in answer by the applicant had contested matters (particularly regarding common general knowledge) in the evidence in support and that the opponent was entitled in the evidence in reply to respond in respect of the contested matters. Such response, he submitted, could include reference to additional material not contained in earlier evidence to support the response. In assessing this basis for admissibility of the evidence in reply and aspects of the evidence in support it is thus necessary to refer to the nature of the relevant evidence in some detail.
Evidence in support
This evidence was directed to the specification and claims as accepted. Accepted claim 1 included as part of the definition "a loading mechanism adjacent a side of the refuse vehicle" without further defining features of construction other than it enabled the emptying into the vehicle of refuse or other material. Claim 7, appended to claim 1 to 6, implied some releasable coupling for a bin on the loading mechanism. Claim 24, appended to claim 1 and others, provided that the loading mechanism "is coupled to the vehicle via a retractable arm assembly". Independent claim 25 included a definition of "a loading mechanism … carried by a retractable arm assembly mounted to the vehicle and being adapted for remote controlled operation by a person within the cab" and further included definition of the retractable nature of the retractable arm assembly.
In his declaration Browning (1), Browning discusses the claims. In clause 3 he states that he assumes claim 1 "should be read to infer that the loading mechanism is fitted to the side of the refuse vehicle in the manner of a side lifter mechanism which is well known in Australia for many years". In clause 12, referring to claim 24, he states:
"I understand this claim as meaning that the side lifter mechanism is retractable on an arm assembly to allow remote operation of the mechanism by the vehicle driver in attaching to a bin on the side of the road in much the same way as been (sic) disclosed in my company's earlier patent No.60231/90 relating to a side lifter mechanism."
Later in clause 20 he states:
"With reference to claim 24 I am of the opinion that retractable arm assemblies for side lifting loading mechanism has (sic) been used for many years in Australia, at least as early as 1985 and I am of the opinion such equipment is well known and subject of common general knowledge in Australia as has previously been established in matters before the Patent Office, and in particular I refer to the opposition procedure on patent application No.629710 heard before the Patent Office in the matter between Stevelift Pty Ltd and Macdonald Johnston Engineering Co Pty Ltd, and the opposition procedure on patent application No.632031 between Firebelt Pty Ltd and Macdonald Johnston Engineering Co Pty Ltd."
In clause 23 when discussing the disclosure of a prior art specification by GEESINK he states:
"It is my expert opinion that the transition between the rear loader disclosure of GEESINK to a side loader having the same general features to enable it to handle refuse and recycling material is a matter of mere workshop practice, particularly taking into account the well known use of remote control side lifting machinery in Australia since 1985 on refuse collection vehicles."
Declarant Smith states that side lifting mechanisms have been used since 1982 and AU patent specification 82407/82 with which he was involved disclosed such a mechanism. He states that lifting mechanisms of the same general design as in AU 82407/82 or with modifications were made by his company since 1982/83 and supplied to various refuse vehicle manufacturers. He says such mechanisms are well known to engineers involved in the industry.
Declarant Crozier states that a one man side loader refuse vehicle was imported into NSW in 1977 from the USA, the vehicle having a side lifting mechanism which was extendable and retractable transversely of the vehicle to grab a bin. He indicates that side loading rubbish collection vehicles have been very well known in NSW and the ACT at least.
Mr Oberin submitted that the effect of this evidence was that Browning considered side loading mechanisms as claimed were well known in Australia before the priority date, and that the other declarants support Browning's view.
Evidence in answer
Richards in his evidence disputes the generalised view of the opponent about the common general knowledge. In clause 7 he states that the "opponent has only established in a very general way the existence of remote controlled loading". He goes on to state:
"It seems to me that the opponent would have to show particular ones of remote control side loading equipment in the combination claimed was common knowledge in Australia before the priority date rather than just showing that remote controlled side loading in a general sense was common knowledge."
As to the particular loader referred to by Smith, Richards is of the view that it is not and never has been part of the common general knowledge. In clause 10 Richards refers to Browning's clause 20 and argues that the decision on AU 629710 "accepts that only a specific lifting means was part of the common general knowledge".
In other clauses Richards comments on other aspects of the evidence in support. The evidence of Dredge and Gilmore is not of relevance for the present discussion.
Evidence in reply
Browning (2), Browning's reply evidence is a lengthy document including 37 exhibits. The declaration is divided under the following headings:
"The Richards Declaration" - clause 2
"Side Loading Mechanisms" - clauses 3 to 41
"Prior Art Documents" - clauses 42 to 68
"Specific Matters raised In The Richards Declaration" - clauses 69 to 81
"The Dredge Declaration" - clause 82
"The Gilmore Declaration - clause 83.
In clause 3 Browning states "Mr Richards disputes that side loading mechanisms were part of the common general knowledge …". In clauses 4 through 31 Browning discusses side loading mechanisms and refuse collection vehicles referring to publications in Australia and publications in the USA and said to be available to the industry in Australia to support his comments. In clauses 32 to 41 Browning refers to at "least two public disclosures" before the priority date on the subject of refuse collection vehicles and the "specific use of retractable arm side loading mechanisms" based on a development by a Mr Hickey. In clauses 42 to 68 Browning revisits the specifications of prior art discussed in Browning (1) and comments on many clauses of Richards' evidence concerning the disclosure of these documents. Browning's clauses 69 to 83 refer to specific matters in the evidence in answer.
Submissions
Submissions for the applicant raise a number of matters which include, in summary:
The opponent's Statement (of grounds and particulars) solely relies on 4 patent specifications and does not foreshadow or particularise any evidence of other matters to be considered.
The side loading mechanisms referred to by Smith and Crozier in evidence were not particularised in the Statement.
The evidence in answer is limited to disputing that the particular side loading mechanisms referred to in evidence in support were common general knowledge, and disputes evidence going to the substitution of those particular mechanisms for the mechanisms on the vehicles disclosed in the prior patent specifications relied upon in evidence.
The evidence in support goes to the substitution of unmodified loaders for those on the vehicles in the prior patent specifications but the evidence in reply goes to issues of the modification of particular loaders to substitute them for those on the vehicles. This is relevant to clauses 52, 53, 60, 70, 72, 80, 81 and 83 of Browning (2).
The material relating to new vehicles and new loading mechanisms in exhibits DJB1 - DJB32 of Browning (2) is new evidence and not strictly in reply.
Only clauses 43 to 57, 65 to 68 apart from parts of 55, 56 and 64 represent admissible evidence in reply.
Clauses 57 - 64 serve as further evidence in support and do not address the evidence in answer allegedly replied to about GEESINK teaching away from the combination claimed.
Clause 76 alleges a matter which is not particularised in the Statement.
Mr Oberin submitted that if Richards is disputing the proposition in evidence in support that side loading refuse vehicles having an extendable arm were common general knowledge then it is appropriate for Browning to respond and substantiate in evidence in reply why he holds the views expressed in Browning (1), and clauses 4 to 41 of Browning (2) are then admissible in reply. If Richards does not dispute the proposition then Mr Oberin submitted clauses 4 to 41 were unnecessary to establish the opponent's case. Mr Oberin also submitted that it was evident from clause 61 that clauses 57 to 64 were elaborating on and explaining in more detail Browning's earlier evidence in direct reply to Richards' clause 25. Thus he submitted all of the evidence in reply should be admissible.
As to the adequacy of the Statement, Mr Oberin submitted that the evidence filed by the opponent "is in a general sense 'encompassed' by the Statement". Moreover "the documents which are directed at establishing common general knowledge need not be identified in the Statement". He added that any amendment of the Statement at this stage would only cause delay and serve no useful purpose. Mr Oberin also submitted that the applicant has been given fair notice of the case to be met and has been in possession of all the evidence before finalising amendments to its specification. The applicant was in no way disadvantaged by the evidence on file, and the submissions put at the hearing indicated that the applicant was able to prepare and address submissions on all the evidence.
Decision on admissibility of evidence
Firstly I will consider the Statement. Although there is some link between the evidence in support and the Statement, there are aspects of the evidence not encompassed by the Statement. Ground 2 of the Statement refers to non-compliance with section 18(1)(b) but does not identify whether this relates to the issue of novelty or inventive step. It is perhaps reasonable to assume both are meant. But the Statement provides no particulars which are clearly in respect of a lack of inventive step ground. There is, for example, no indication of any common general knowledge that may be relevant to that ground, an essential element to substantiate a lack of inventive step attack as evident from section 7(2) of the Act. As was held in Mobay Corp v Dow Chemical Co (1992) 24 IPR 379; AIPC 90-895, the Statement should:
(i) give particulars stating all material facts necessary for a ground of opposition;
(ii) give particulars stating only material facts; and
(iii) not give the evidence by which the facts are to be proved.
Although it is correct, as Mr Oberin submitted, that "the documents which are directed at establishing common general knowledge need not be identified in the Statement", in the present case there are not even "rudimentary details" of any such knowledge to be relied upon to forewarn the applicant of the case against it (see for example Borden Inc v Elken A/S (1992) 24 IPR 146 at 152 and Cooper Industries Inc v Metal Manufacturing Ltd (1994) IPR 106 at 112). The absence of any indication in the particulars of the common general knowledge to be relied upon, if lack of inventive step is alleged, gives rise to a deficient Statement, since the Statement fails to fairly foreshadow the case to be met. Any reliance on inventive step grounds in the evidence is therefore beyond the Statement and strictly inadmissible as evidence. Equally relevant is that reliance on other prior art for novelty or obviousness purposes not particularised in the Statement is strictly inadmissible as evidence.
A difficulty with the evidence in support is that although there are various references to things said to be "well known", there is only a vague inference that lack of inventive step is being advanced. Clauses 18 and 23 of Browning (1) refer to "workshop practice" developments which may be suggestive of an obviousness attack as does clause 20 with its reference to "such equipment is well known and subject of common general knowledge". The applicant appears to have had no difficulty appraising all the evidence in support and understanding its likely relevance, and thus I do not consider the applicant would be disadvantaged if all this evidence were considered. Thus whilst the Statement may exhibit some deficiency in particulars, I believe the evidence in support should all be considered and stand on its merits. The deficiency in the Statement may be relevant when considering costs in this matter.
I now turn to the evidence in reply. The position with evidence in reply is summed up by the following quote from Phipson (The Law of Evidence, 9th Ed.):
"Evidence in reply, whether oral or by affidavit, must, as a rule, be strictly confined to rebutting the defendant's case, and must not merely confirm that of the plaintiff."
In Ernest Scragg & Sons Ltd.'s Application [1972] FSR 219 Graham J. expressed similar views and further expressed the view that the statement in Halsbury's Laws of England:
"When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case",
was a sound principle which applies to oppositions in the Patent Office just as it does to any other case.
In Browning (2), the heading "SIDE LOADING MECHANISMS" appears before clause 3 and appears to embrace the subsequent clauses to clause 41. In clauses 4 to 41 Browning appears to be responding to Richards' evidence about remote controlled side loading mechanisms. Richards disputes that remote controlled side loading mechanisms in a general sense were common general knowledge in Australia at the priority date and that the specific mechanism mentioned by Smith was common general knowledge. It is reasonable for Browning in evidence in reply to respond to these matters. However I believe Browning goes beyond what could be merely matters in reply and introduces what in my view is additional evidence to strengthen the opponent's case. In clauses 8 to 41 Browning refers to and introduces by exhibits DJB1 to 36 a range of new material into evidence. It seems that the intention of most of these exhibits is to identify many separate disclosures of vehicles or devices before the priority date to lend support to the view of the opponent that side loading mechanisms were common general knowledge in Australia at the priority date. This is evidence that should have been part of the evidence in support thus supporting the declarant's prime evidence in the opposition. To me this evidence advances the case against the application way beyond a mere rebuttal of the applicant's case. Moreover the documents or publications were not particularised against any opposition ground in the Statement, nor did the Statement, as I have already indicated, particularise any common general knowledge.
Exhibits DJB31, 32, 35 and 36 refer to two public events, a seminar and a conference held prior to the priority date. I note that these events were the subject of consideration and evidence in Firebelt v Brambles (supra), see 43 IPR at 100, however that fact alone does not mean that this material about those events necessarily ought to be permitted into these proceedings other than through the usual evidence provisions. Evidence about these events should have been part of the evidence in support, although I note they were not even particularised in this case.
Of clauses 4 to 41, in my view only clauses 4 to 7 are allowable as evidence in reply. Clauses 8 to 41 are not admitted because they extend beyond what is properly evidence in reply.
The applicant has objected to some areas of clauses 43 to 68. Although clauses 55, 56 and 64 seem to introduce for the first time certain matters of fact not otherwise collaborated by the evidence, this evidence will be of little weight and can be disregarded. These clauses are otherwise admissible as evidence in reply. Clauses 69 to 83 are admissible although I agree that the matter of clause 76 is not particularised. However the matter of clause 76 is of little relevance to the accepted claims.
A major difficulty with the evidence in this matter is that, given the amendment of the specification after evidence was completed, the evidence is not specific to the amended claims or does not easily relate to those claims. The submissions of the parties at the hearing therefore necessarily departed to some extent from the thrust of the evidence to accommodate the amended claims.
I am also mindful of the concurrent opposition involving application 676371 which includes some similar evidence to that filed in this case. However these are separate oppositions involving different defined inventions, and although the parties are the same, the oppositions need to be advanced separately regarding evidence and considered separately. Thus what may be evidence in one matter does not become evidence for the other matter and each case has been considered based only on its specific evidence. As to whether the court decisions on related petty patent 657082 are of relevance in this opposition, I discuss this issue later in this decision.
To the extent mentioned the evidence in this matter is admitted. In particular clauses 8 to 41 of Browning's evidence in reply is not admitted. I do not believe that the applicant is prejudiced in its defence of this opposition by this finding, and thus I see no need to allow the applicant any opportunity to file further submissions or evidence.
DECISION
Section 40
The limited section 40 particulars in the statement of grounds and particulars refer to the accepted claims. Given the new claims following the amendment action those particulars are now of no relevance. At the hearing Mr Oberin referred to the claims and raised some issues regarding the definitions. I believe the opponent was entitled to raise them at the hearing given the changed claim definitions. The fact that they were not raised in the statement of grounds and particulars reflects the fact that they are seen to arise in the amended claims, the relevant amendments having been finalised after the main evidence stages had concluded and not long before the hearing. In the circumstances the applicant could hardly have been surprised that such issues were first raised at the hearing. I do not believe that the applicant can be considered to be prejudiced by these issues arising at the hearing especially as the applicant was in a position to reply to such issues.
Before going to the opponent's issues, I make the following observations about claim 1. The claim makes it clear that the "entrance passageway" is located between the vehicle cab and the storage tank (integer E). There is definition of a "bin loading means being carried by an arm" and of the "arm", and emptying refuse from a refuse bin into the vehicle through the entrance passageway (integers F & G). I note that the entrance passageway has some "means maintaining separate first and second streams of refuse received from the bin" (integer H). I also note that the definition requires first and second refuse transfer mechanisms each "downstream of the entrance passageway" to move respective streams of refuse to the separate storage regions of the tank (integers J & L). Thus the integers J and L are separate from the "means" defined in integer H.
For the opponent Mr Oberin submitted that the definition of claim 1 lacked clarity in a number of respects. Firstly it was suggested that the term "adjacent" in the expression "the arm being located adjacent one of the sides …" (integer G) caused uncertainty in definition. The usual dictionary meaning of "adjacent" refers to "1a: not distant or far off : nearby but not touching" (Webster's Third New International Dictionary ("Webster's 3rd")) and I see no reason why that is not the meaning that should be taken here. Whilst the claim does not indicate how or where the arm is attached to the vehicle, which attachment it must have given that with the "bin loading mechanism" it is a feature of the refuse vehicle, its sideways extensibility from its adjacent location to engage and then empty a bin into the vehicle via the entrance passageway to me implies a positioning in the vicinity of the entrance passageway at the side of the vehicle. I note that this interpretation is similar to what Browning assumes regarding a similar definition in accepted claim 1. I do not believe the term "adjacent" causes the uncertainty argued. I will say more about the arm definition later.
Secondly Mr Oberin argued that the meaning of "refuse transfer mechanism" is unclear when used in claim 1 (integers J and L). A further issue was the meaning of "active means" in relation to the refuse transfer mechanisms. As to "refuse transfer mechanism", the opponent pointed to the description on page 2 line 27 to page 4 line 14 and suggested that a range of devices is envisaged by the specification to fulfil the role of such mechanisms, including chutes, bin lid opening devices, and oscillating packers. Although the opponent was suggesting uncertainty as to the meaning of "refuse transfer mechanism" it seemed to be also flagging the possible range of devices that could qualify within the definition. With regard to "active means" the opponent submitted that there was no indication in the specification as to what was "active" or "passive" in relation to the transfer mechanism thus leaving the claim definition uncertain. In response Mr Dredge submitted that the approach taken by the opponent regarding the meaning of "refuse transfer mechanism" violated the rules of construction and that the expression was clear from the claim. He suggested the normal dictionary meanings for "transfer" and "mechanism" implied that a transfer mechanism was a system or structure of moving parts to perform a movement of something from one point to another, and this was the meaning in the claim. There was thus no need to resort to the description to alter or find a meaning. As for "active means" Mr Dredge submitted that "active" and "passive" were opposites and the expression could be understood in the context used. He suggested that if there was any ambiguity this could be resolved by reference to the description.
The dictionary meanings for "mechanism" suggest some assembly of parts working together. For example Webster's 3rd gives one meaning of "1a: a piece of machinery : a structure of working parts functioning together to produce an effect". This tends to imply, as Mr Dredge's submissions suggested, that there exists some moving parts in a mechanism. However the portion of the present specification to which Mr Oberin referred gives the impression that some element which does not move may still be a "refuse transfer mechanism" in the context of the description, such as a chute or an alignment means. However, notwithstanding this impression from the description, I believe the meaning and scope of "refuse transfer mechanism" in the claim has a clear meaning when the entire definition in each of integers J or L is considered. In each case the integer defines that the respective refuse transfer mechanism includes "active means" moving a refuse stream. Now it was argued that "active means" itself was not clear, but I believe that an addressee of the specification would have no difficulty in understanding this expression to mean some mechanical device which has some moving element so as to move refuse, such as a movable slide packer or a conveyor, as distinct from an alignment guide or a chute which would be a "passive means" relying only on the force of gravity to effect movement. Thus, in integers J and L, I interpret the "refuse transfer mechanism" to be an arrangement having some moving elements so as to act on and move refuse either to or into the respective storage region, and can include other elements of "passive means" which co-operate with the "active means". Given that interpretation, a simple chute without moving elements would not be a "refuse transfer mechanism" as defined in the claim.
Mr Oberin submitted that claim 1 included "bin lid opening devices" as a "refuse transfer mechanism", this point of view seemingly being derived from what the specification on page 3 indicated a refuse transfer mechanism to include. Despite what the description on page 3 states, I disagree with this view given the definition in the claim. As the expression suggests, I presume a bin lid opening device will open a lid of a refuse bin, so that the refuse from the bin can be emptied into the vehicle "through the entrance passageway" (integer G). The entrance passageway maintains separate the streams of refuse received from the bin (integer H). Since each refuse transfer mechanism is "downstream of the entrance passageway" (eg. integer J), I fail to see how a bin lid opening means can thus be, or constitute part of, a refuse transfer mechanism as defined in the claim.
Regarding integer J, Mr Oberin also submitted that it was not clear whether it was the refuse transfer mechanism or the active means that moved the first stream of refuse. My reading of this definition leads me to the view that it is the active means that effects the movement of the refuse. If there is ambiguity here I believe that reference to the description indicates that it is some active means component of the transfer mechanism which effects the movement of refuse into or to a storage region. This is the meaning I will adopt. Although integer L has slightly different wording the same conclusion applies.
At this point it is appropriate to mention these further interpretations about the definitions in integers I to L. Each storage region has "forward and rearward ends". I take this to mean the extremities of each storage portion, as would be delineated by a forward or rear wall or barrier of some form. I do not take it to refer to forward or rearward areas within the storage regions. I note that this interpretation is compatible with the subsequent definition in claim 2. From integer J the location of the first refuse transfer means is not stated, but as refuse is moved "into" the upper storage region this to me implies that some part at least of the active means is external to the storage region. In the case of integer L, the active means is "confined in its operation to the forward end of the lower storage region" and moves refuse "to the lower storage region". In my view this implies that this active means is located fully external to the lower storage region.
During submissions Mr Oberin raised another issue concerning claim 1. Essentially he submitted that because terms in the claim were unclear the claim was wide in scope covering a wide range of arrangements and did not define particular combinations as Mr Dredge's submissions had tended to suggest. I make two comments on this issue. Firstly, given my conclusions on terms in the claim as already expressed, I do not consider the meaning of the claim to be necessarily uncertain or its scope extremely broad as he suggested. Secondly, as to whether the claim is of broad scope, this seems to be more a fair basis issue and also something that may be relevant to novelty considerations. Given my interpretation of the claim I do not believe the claim lacks fair basis on the matter described in the specification.
Although not raised in submissions at the hearing, there is another aspect of the claim that requires comment. This relates to integers F and G and concerns the "bin loading mechanism" and the "arm". Integer F defines "a bin loading mechanism being carried by an arm", thus seemingly the arm is distinct from the bin loading mechanism. From integer G "the arm" is arranged "to engage a bin and empty refuse from the bin into the vehicle through the entrance passageway". Although a literal meaning of this is that the arm engages the bin and empties it, I believe a purposive construction should be given to integers F and G namely that the arm by extending sideways carries the bin loading mechanism to engage the bin and empty refuse from it into the vehicle.
Some submissions for the applicant tended to suggest that the invention concerned a vehicle to collect refuse in the form of household garbage (putrescent waste) and recyclables and that this was a significant aspect of the invention. I note however that claim 1 at least simply refers to first and second streams of refuse and thus is not restricted to the type of refuse handled.
In summary I believe the claims provide a clear definition and that the specification does not offend against the requirements of section 40.
Novelty
The test for novelty is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; 1A IPR 181. For this test one asks oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement. Infringement of a claim occurs where each an every one of the essential features of that claim has been taken (see eg Rodi & Wienenberger Ag v Henry Showell Ltd (1969) RPC 367 at 391).
The opponent's attack of the specification on the ground that the claims lacked novelty centred on three of the patent specifications listed in the Statement which I will discuss in turn. I should however add that the opponent did not strongly pursue this ground of opposition against the amended claims.
DE 3537546 (Knierim)
This specification discloses a side loading refuse vehicle having either 2 or 3 storage tanks positioned above one another. Refuse is deposited into the tanks from above via hatches at the front of each tank. In terms of claim 1, there is no disclosure of an entrance passageway as in integer E - what may be seen as a vertical passageway for deposited refuse as in Fig 5 is not in front, but at the front, of the storage regions, it being clear that each storage tank extends to include the gates 16 to 18 when in their forward position. Regarding integer H, in Fig 7 there is disclosed an arrangement whereby two streams of refuse received from a divided bin can be kept separate and directed into separate tanks, but the forward passageway leading to tank 25, even if considered to be the "entrance passageway", does not have means to maintain the separation of the refuse. There is no disclosure of the arm of integer G "being extendable sideways". Regarding integers J and L, the movable gates 16 to 18 (or 16 and 18 in Fig 7) are in the storage tanks and thus are not arranged as I have interpreted these integers to require. The invention of claim 1 is therefore novel given the disclosure of Knierim.
EP 314238 (Geesink)
This Geesink specification refers to the Knierim specification in the introductory paragraphs. It refers to disadvantages in the vehicle of Knierim, one being in relation to the danger from the side loading mechanism, and seeks to avoid them. Geesink discloses a refuse vehicle having a storage tank horizontally divided into two regions. Refuse is loaded into the vehicle from a bin by way of a rear mounted loading mechanism. Two streams of refuse are delivered by gravity towards respective regions and refuse from each is forced into the regions by oscillating packer blades. This specification does not disclose the invention claimed.
US 5035654 (Matsumoto)
This specification discloses a refuse vehicle having several storage regions vertically divided so as to be side-by-side, and thus it does not disclose integer D. It has a side loading mechanism at the front of the storage regions. It does not disclose an entrance passageway "in front of the storage regions" as integer E requires. It also does not disclose integers G, H, J and L of the claimed invention. This specification does not disclose the invention claimed.
In summary I find that the claimed invention is novel when considered against the patent specifications raised in the Statement and relied upon by the opponent.
Although I have ruled certain evidence inadmissible, I will briefly refer to two aspects of that evidence. Firstly I refer to two brochures exhibited as DJB23 and 24 to Browning (2), both of which it appears were available in Australia before the priority date. These brochures disclose an "Enviro-Pack 1000" refuse collection vehicle. The vehicle so disclosed in many respects appears to be similar to that of Matsumoto except that the storage regions are one above the other. These brochures do not disclose integers E, G, H, J and L of the vehicle claimed.
Secondly, in Browning (2), his exhibits DJB31, 32, 34 to 36 were introduced to provide evidence of a seminar and a conference held in Australia on 10 July 1991 and 9 November 1991 respectively. Browning does not say that he attended either function. The agenda for the seminar, held in Sydney, lists a Mr Hickey and a Mr Love presenting sessions concerning a "SORT system" (elsewhere referred to as the "Hickey proposal" or the "TWT Formark proposal"). Exhibit DJB35 is a copy of a statutory declaration by Eric Love made for the now withdrawn opposition by another company against the present application. An exhibit to the Love declaration is a paper by Love and Hickey which Love says was presented publicly at the November 1991 conference held on Queensland's Gold Coast, the 18th National Environmental Health Conference. The exhibited paper describes aspects of the "SORT system", in one section referring to "SORT: BIN PICK UP TRUCK". The paper refers to the truck being "our new two level, one-man operated, collection vehicle", and "designed to auto pick the divided bins and discharge the separated materials to an upper and lower level hopper where a transfer blade will transfer the materials into the rear sections which contain a conveyor moving floor." The paper gives no other details of significance about whether each hopper and each transfer blade is within or external to the overall storage region of a level, about the pick-up apparatus for the refuse bins, or about any doors closing an exit to the levels. There is no evidence from the opponent to establish whether the paper was available to participants at the conference or available before the priority date. There is no evidence that the contents of a provisional specification PK7150 filed on 10 July 1991, which appears to relate to the SORT system, was made available to the public before the priority date of the present claims. There is also no evidence that there was any other document available to the public disclosing the SORT system before the priority date. As there is insufficient detail about the vehicle disclosed at the conference I am only able to conclude that there was no disclosure of the invention claimed. A vehicle having the integers E to L as claimed is not disclosed by the paper exhibited at DJB35.
Thus even were these exhibits admissible as evidence in this matter they do not disclose the claimed invention.
Finally, there is a further matter about the "SORT system" and the presentations already mentioned. In Firebelt v Brambles (supra), given the evidence before him, Dowsett J made certain findings of fact and drew certain conclusions from the July and November 1991 presentations regarding the SORT system or Hickey proposal. Those findings and conclusions were not disturbed on appeal. One conclusion was that the presentations revealed the vehicle of the Hickey proposal to possess the feature of "a loading mechanism adjacent to the side of the refuse vehicle" along with some other features (see 43 IPR at pages 109, 110). However the court judgements do not provide any findings or conclusions from which it could be concluded that the presentations disclosed a vehicle having the integers E, H to L as claimed in this application. Thus even were I to rely on the findings of Dowsett J as being applicable to like issues in this matter, as the opponent has submitted, there is no basis for me to conclude that the presentations disclosed the present invention.
In summary the invention has not been shown to lack novelty.
Inventive step
It follows from subsections 7(2) and 7(3) of the Act that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:
(a)the common general knowledge existing in the art before the priority date considered alone; or
(b)the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information from the document or act as relevant to work in the relevant art in the patent area.
Schedule 1 to the Act provides a definition of "prior art base".
Common general knowledge
Crucial to any determination of whether a claimed invention lacks an inventive step is the common general knowledge in the art in the patent area before the priority date. As to what constitutes common general knowledge, Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253 remarked about common general knowledge in these terms at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge."
The relevant trade or industry in this case is that of the design and manufacture of refuse vehicles. It is the background knowledge of persons in that industry which is relevant to a determination of the common general knowledge. In my view users of refuse vehicles, such as waste collection contractors or local council employees, would not be persons in the industry for these purposes.
I have already mentioned that the Statement filed by the opponent does not identify even in a broad manner the common general knowledge to be relied upon for a lack of an inventive step attack. The evidence in support does however include some statements which I believe can be considered on this point. I have referred to the evidence of Smith, Crozier and Browning previously in this decision. Crozier says he is "very familiar with the so-called side lifter loading mechanisms for refuse collection vehicles". He says a particular vehicle with a side lifting mechanism to grab a bin was imported to NSW from the USA in 1977, and that his company made two units with similar features in 1978. He makes some other general statements about side lifting apparatus and vehicles. Crozier provides no material to support his statements or to give details of the machines he mentions. Although it seems Crozier may be qualified to give evidence about the common general knowledge he does not clearly do so. At best it could be inferred from Crozier's evidence that in a general sense the concept of providing a side loading mechanism for refuse vehicles was common general knowledge at the priority date.
Smith refers to a side loading mechanism disclosed in AU patent specification 82407/82. He states that lifting mechanisms of the same general design as in AU 82407/82 or with modifications were made by his company since 1982/83 and supplied to various refuse vehicle manufacturers. Smith does not clearly attest to the common general knowledge in the art at the priority date. At best it could be inferred from Smith's evidence that the general type of side loading mechanism disclosed in AU patent specification 82407/82 was common general knowledge at the priority date.
Browning, in Browning (1), makes some general references to side loading mechanisms being common general knowledge or well known in refuse vehicles. He draws support for these statements by referring to the opposition procedures in respect of AU applications 629710 and 632031 and by inference AU application 60231/90. Each of these specifications were filed by different Australian applicants and concerned side loading mechanisms for refuse vehicles and each specification was open to public inspection before the priority date of the opposed application. There is no evidence to establish that the disclosure in the patent specifications became part of the common general knowledge prior to the priority date. The Commissioner's decision regarding the extension of term action for petty patent 632031 does not provide any assistance from which any inference could be drawn of the common general knowledge applicable to the present matter. The Commissioner's decision regarding the opposition to application 629710 found that a particular construction of lifting mechanism was part of the common general knowledge before the priority date in that case (12 October 1989). It was not stated whether this was a side lifting mechanism. At best it could be inferred from Browning's evidence that in a general sense the concept of providing a side loading mechanism for refuse vehicles was common general knowledge at the priority date.
Richards' evidence in answer disputed what he considered the generalised view of the opponent about remote controlled loading and the common general knowledge. He stated that the particular side loading mechanism referred to by Smith had not been shown to be common general knowledge. At the hearing submissions for the applicant acknowledged that the concept of remote controlled side loading was known.
The evidence in support is by no means definite in identifying or establishing what was part of the common general knowledge. However, despite Richards' comments, I believe the evidence in support enables an inference to be drawn, and I do infer that in a general sense side loading mechanisms for refuse vehicles were common general knowledge at the priority date. The opponent's declarants, who are involved with different companies, all make statements to the general effect that side loading mechanisms were known to them for some years before the priority date. It is also evident that at least four manufacturers or companies in Australia were involved with either manufacturing or developing side loading mechanisms for refuse vehicles before the priority date. This is evidenced by the patenting activity, and this suggests that information or development in this industry was not limited to only a few persons in the art. Although the disclosures of the various patent specifications have not been shown to be part of the common general knowledge, the activity by different parties in this area allows an inference to be drawn, and I do infer that side loading mechanisms which were able to extend sideways from the vehicle also formed part of the common general knowledge.
The admissible evidence in this matter provides no material from which other common general knowledge in relation to the present invention can be established or reasonably inferred. I should add at this point that even were Browning (2) fully admissible as evidence in this matter, the common general knowledge established from the evidence filed by the opponent would not clearly extend beyond what I have indicated.
Notwithstanding my conclusions about Browning (2), there is another aspect to consider regarding the Hickey proposal and the presentations at the seminar or conference to which Browning (2) in part refers. The opponent submitted that I should follow the findings by the court in the action involving the related petty patent 657082. As I have already mentioned, in Firebelt v Brambles (supra) Dowsett J made certain findings of fact and drew certain conclusions from the July and November 1991 presentations regarding the SORT system or Hickey proposal, findings which were not disturbed on appeal. Relevant for present purposes is the following finding, at 43 IPR 114:
"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."
There is no reason why I should not be bound by this finding regarding the TWT Formark presentation and the Hickey proposal, and that is how I will proceed. I therefore need to identify as best I can from the material before me what was disclosed by the presentation and which represented common general knowledge. To do this it is appropriate to refer to the judgement by Justice Dowsett.
In Firebelt v Brambles the disclosures of the presentations were being considered against the petty patent claims which were itemised as to features as follows (see page 117):
"(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."
From the report of the judgement from page 109 line 15 to page 110 line 5, I understand the judge to conclude that integers (a)-(g) and (i)-(k) were disclosed by the presentations. Although integer (g) is not mentioned at page 109 line 23, it is evident from page 115 lines 24-27 that integer (g) was also disclosed by the Hickey proposal. Thus I understand that it was the disclosure of a vehicle including the integers mentioned which was taken by the court to be common general knowledge or otherwise to be prior art information. Accordingly, regarding whether the present invention lacks an inventive step, I will consider this material along with the other matters of common general knowledge to which I have earlier referred.
Was then the claimed invention obvious at the priority date?
In considering this question it is important to remember that the present invention is for a combination, as that expression is known in patent law. The combination is necessarily comprised of a number of integers which co-operate to form the vehicle. The question thus is whether the invention being the combination claimed would have been obvious to a person skilled in the art.
The opponent's submissions regarding the invention claimed lacking an inventive step stemmed from the prior art mentioned under novelty. In considering whether the claimed invention was obvious at the priority date, regard can be had to the common general knowledge together with information from a single document. A proviso to this is that a skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information in the document as relevant to work in the relevant art in the patent area (see s.7(3) of the Act). The applicant submitted that these patent specifications had not been shown to be common general knowledge or meet the requirements of s.7(3). There is no evidence before me from the opponent to assist in assessing whether the documents raised under the novelty heading fall within the s.7(3) category. However as these documents relate to refuse vehicles and there was active patenting activity in Australia in the art before the priority date, I believe that a skilled person could have ascertained, understood and regarded the information in these documents as relevant. The information in each of the patent specifications can therefore be considered for obviousness grounds.
Taking first Knierim (DE 3537546), the information from this document along with the common general knowledge mentioned does not suggest to me that the invention would have been obvious to a non-inventive worker in the field. The common general knowledge merely suggests to a non-inventive worker that Knierim could be modified to have a sideways extending side loading mechanism. There is nothing from which to suggest that the vehicle could otherwise be modified to include the features of the entrance passageway and transfer mechanisms as required by the claimed combination. Thus, based on the information from Knierim, the invention was not obvious at the priority date.
The information in Geesink (EP 314238) in my view teaches away from the claimed invention. It specifically refers to disadvantages with the side loading vehicle of the Knierim specification and proposes an alternative vehicle with rear loading. Armed with the common general knowledge mentioned, I fail to see why a non-inventive worker would even contemplate modifying the Geesink vehicle to revert to a side loading facility. Even if such a modification were contemplated, there is the issue of what transfer mechanism would be used to deliver refuse to the storage areas. Browning in clause 23 of evidence in support suggests that it would be a matter of mere workshop practice to make a transition from Geesink to a side loading vehicle. That may be so but the claimed invention has side loading at the front with a relevant entrance passageway and refuse transfer mechanisms. I am not convinced that changes that would be needed to ensure proper refuse transfer with side loading at the front of the vehicle would be no more than mere workshop practice absent of any inventive ingenuity. There is no evidence on this point either way. In any event, even assuming that front side loading with associated refuse transfer were obvious steps to take, there is nothing to suggest that the non-inventive worker would have arrived at the particular combination as claimed. I am not satisfied that the opponent has established that the invention would have been obvious based on the information from Geesink.
The information in Matsumoto (US 5035654) with the common general knowledge also does not suggest to me that the invention would have been obvious to a non-inventive worker in the field. There is nothing before me to suggest that the non-inventive worker would have modified the vehicle to incorporate integers of the claimed vehicle not disclosed by this specification, apart from integers F and G. Thus, based on the information from Matsumoto, the invention was not obvious at the priority date.
Finally, the question of whether the invention was obvious can also be considered on the basis of the common general knowledge alone. The common general knowledge as revealed from the Hickey proposal and about side loading mechanisms for refuse vehicles would in my view have suggested at best to a person skilled in the art a vehicle with features represented by integers A to D, F and G as in claim 1. Importantly the integers of the invention relating to the entrance passageway and the first and second transfer mechanisms have not been shown as part of the common general knowledge. There is thus a considerable gap between what the common general knowledge would have suggested to the skilled person and the invention. Thus I am not satisfied that the invention would have been obvious based on the common general knowledge alone.
In summary I find that the invention defined by the claims does not lack an inventive step.
Manner of manufacture
Although the statement of grounds and particulars allege lack of patentable invention under s.18(1)(a) of the Act, no submissions of note were raised by the opponent in support of this ground. The High Court in NV Philips Gloeilampenfabrieken v Mirabella International Ltd (1995) 183 CLR 655 stated that manner of manufacture can be a threshold question:
"… if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further" (at page 664).
In reviewing the specification, there is nothing to suggest that on its face the claimed invention lacks inventiveness. Thus I have no basis on which to conclude adversely against the application on this ground and dismiss this ground of opposition.
Costs
On costs the opponent submitted as follows:
Given the wholesale amendments made to the specification after the evidence stages, and concessions made in the applicant's evidence concerning the original claims, costs up to the hearing should be awarded in favour of the opponent.
Costs of the hearing should follow the event.
Submissions for the applicant did not contest the opponent's position on costs.
The usual practice is that costs should follow the event. The opponent rightly draws attention to the amendments made to the specification during the progress of the opposition. Richards in his evidence in answer conceded that prior art documents referred to in the statement of grounds and particulars and raised in evidence in support rendered at least accepted claim 1 not novel. The amendments can thus be seen as addressing this deficiency which the applicant had recognised after considering the evidence in support. I see no reason why the opponent should not benefit from an award of costs up to the time of allowance of the amendments, the date of allowance being 20 June 2000. Thereafter costs should follow the event and as the opposition to the amended specification has not been established, these costs should favour the applicant.
Accordingly I award costs in the opposition up to the date of allowance of the amendments to the specification (namely 20 June 2000) against the applicant, Firebelt Pty Ltd. I award costs after that date against the opponent, MacDonald Johnston Engineering Company Pty Ltd. The relevant costs awarded are in accordance with Schedule 8 of the Patents Regulations 1991.
CONCLUSION
I have found no grounds of opposition established to specification 651031 as it presently exists. Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.
I have awarded costs against the patent applicant Firebelt Pty Ltd up to the date of allowance of the amendments to the specification (namely 20 June 2000), and against the opponent MacDonald Johnston Engineering Company Pty Ltd after that date.
Trevor Bruhn
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : INTELLPRO, Brisbane
Patent attorneys for the opponent : McMaster Oberin Arthur Robinson & Hedderwicks, Melb.
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