Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd
[2001] APO 24
•28 May 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 676371 in the name of FIREBELT PTY LTD
Title: Waste Collection Vehicle
Action: Opposition thereto by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD under section 59 of the Patents Act 1990; hearing.
Decision: Issued
Abstract
The invention relates to a refuse collection vehicle having a particular combination of divided storage tank, side loading bin mechanism, refuse transfer mechanism and rear door assembly involving an inner and an outer door.
The relevance of some brochures about a refuse vehicle, and other material about a seminar and a conference were considered for novelty and inventive step purposes. The relevance to this opposition of findings by the Federal Court in an action concerning a related petty patent was also considered.
It was held that:
1. claims 6 and 13 lacked clarity and offended against section 40;
2. the invention defined by claims 1, 2, 3, 6, 9 and 12 lacked novelty in the light of the disclosures in several brochures concerning an Enviro-Pack 1000 vehicle;
3. the invention defined by claim 1 lacked an inventive step in the light of the common general knowledge;
4. the invention defined by claims 1 to 6, 9, 11, 12 and 14 lacked an inventive step in the light of the information in the Enviro-Pack 1000 brochures and the common general knowledge;
5. the invention defined by claim 1 lacked an inventive step in the light of the information about the so-called "Hickey proposal" and the common general knowledge; and
6. the ground of not an manner of manufacture had not been established.
The applicant was afforded an opportunity to amend the specification in order to claim patentable subject matter.
Costs were awarded against the patent applicant Firebelt Pty Ltd.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 676371 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. 676371 was filed on 4 October 1994 by Firebelt Pty Ltd ("Firebelt") as a divisional application of application 651031. The application was originally numbered 74430/94 and when advertised accepted on 6 March 1997 was given the serial number 676371. On filing the application was associated with an earlier Australian provisional specification numbered PM7626 which had been filed on 24 August 1994. Parent application 651031 was filed on 10 February 1993 as a PCT application and claims an earliest possible priority date of 10 February 1992. Application 651031 is subject to a concurrent opposition.
A notice of opposition to application 676371 was filed on 6 June 1997 by MacDonald Johnston Engineering Company Pty Ltd ("MacDonald"), and a statement of grounds and particulars followed on 6 September 1997. Evidence in support, answer and reply were duly filed and further evidence was permitted to be filed on behalf of the patent applicant.
The statement of grounds and particulars 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)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40.
The matter was heard on 4-5 October 2000 in Canberra following the hearing for application 651031 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 Gottschall, solicitor, of McMaster Oberin Arthur Robinson & Hedderwicks, Melbourne. Mr Dredge attended in person with Mr R Richards of the applicant company in Canberra on 4 October and by telephone on 5 October. Mr Oberin with Mr Gottschall attended by telephone for each day.
RELATED APPLICATION AND PETTY PATENT
As already mentioned standard patent application 651031 is the parent application for divisional application 676371 and is subject to a concurrent opposition. A hearing for that opposition took place immediately prior to that for the present opposition. Some submissions on the patent law requirements and particular technology under consideration raised in the 651031 hearing were taken to also apply to the 676371 matter given the somewhat similar technology involved. 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 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 676371 is entitled "Waste Collection Vehicle" and 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 16 sheets of drawings. The specification contains a total of 15 claims. Claim 1 is the only independent claim and claim 15 is an omnibus claim referring to figures 24 to 26. Of the other claims, all but claims 7 and 8 can be appended directly to claim 1 while the exceptions are appended to only claim 2. 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."In a side loading refuse vehicle,
B.the combination of an elongate refuse storage tank divided into longitudinally extending tank sections,
C.a loading mechanism adjacent a side of the refuse vehicle
D.and a refuse transfer mechanism for delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tank sections,
E.the tank sections comprising at least first and second tank sections and a rear door assembly,
F.the door assembly comprising an outer door closing the first tank section and an inner door closing the second tank section,
G.the second tank section remaining closed when the outer door is open but both tank sections being open when the inner door and the outer door are open."
In brief the invention provides a refuse vehicle which has a divided storage tank, a loading mechanism adjacent a side of the vehicle, and a transfer mechanism to deliver refuse or other material emptied into the vehicle to respective tank sections. The tank sections (at least two) are closed by a rear door assembly which comprises an inner door closing the second tank section and an outer door closing the first tank section. The rear door assembly shown in Figures 24 to 26 show a double door arrangement wherein the outer door when open allows refuse to be emptied from one tank section and wherein the inner door can only be opened once the outer door is open to thus allow the refuse from the tank section closed by that door to be emptied. The drawings also depict the vehicle picking up divided refuse bins, which are commonly known as mobile garbage bins (MGBs) or "wheelie bins", to deposit refuse from them into the vehicle. For the purposes of the present invention these bins are divided so that they can contain two different types of refuse. The embodiments also show the loading means positioned near the front of the tank sections with the transfer mechanism delivering refuse into the tank sections adjacent their forward ends.
STATEMENT OF GROUNDS AND PARTICULARS AND THE EVIDENCE
The opponent's statement of grounds and particulars lists the non-compliance with (1) Section 18(1)(b)(i) (novelty), (2) Section 18(1)(b)(ii) (inventive step), (3) Section 18(1)(a) (patentability) and (4) Section 40, as grounds of opposition. Various particulars are listed against each opposition ground.
The evidence filed in this matter consists of the following:
Evidence in support
Declarations by:
| David J Browning (1) | Exhibits DJB-1 to 42 |
| Larry Horning | |
| Owen Ross Williams | |
| Anthony John Crozier | Exhibits AJC-1 to 2 |
| Caroline Pamela Knaggs | Exhibit CPK-1 |
| Ross Smith | |
| Tony Arthur | Exhibits TA-1 to 11 |
| Robin McGuirk | Exhibit RMG-1 |
Evidence in answer
Declarations by:
| Trevor James Dredge (1) | Exhibits TJD-1 to 3 |
| Idwall Charles Richards | Exhibit ICR-1 |
| Robert Emlyn Richards | Exhibits RER 1 to 3 |
| Kenneth John Sellar | |
| Anthonyn T Schmidt | |
| Donald Ross Buckley | |
| Gregory James Freeman | |
| Trevor Milton Starr |
Evidence in reply
Declaration by:
| David J Browning (2) | Exhibits DJB1to 5 |
Further Evidence filed by the applicant
Declaration by:
| Trevor James Dredge (2) | Exhibits TJD-1 to 3 |
Both parties presented submissions at the hearing on issues of section 40, lack of novelty and lack of inventive step. I will refer to these as necessary under the relevant headings in the decision section following.
DECISION
Section 40
The only matters raised by the opponent on section 40 grounds relate to claims 10 to 13. Firstly, claims 10 and 11 refer to "the transfer mechanism comprises a retractable means …" and "the loading mechanism is coupled to the vehicle via a retractable arm assembly", respectively. The opponent submitted that the term "retractable" makes these claims unclear because the term is not used in a relative sense, since it is not evident in what way the integers are retractable. It is also said there is no basis in the specification to claim such features. In reply Mr Dredge suggested that the meanings were clear, pointing out that something which was retractable must also be extendable and that the description referred to "retractable refuse diversion chutes" (and see figures 4 and 18) and showed a loading mechanism having a movable retractable arm assembly (see figure 22). In each case the purpose of the retractable integer is indicated in the claim definition and I do not believe an addressee would have any difficulty in understanding what is meant and what may be embraced by such integers. I do not see a lack of clarity as a result. I reject the lack of fair basis assertion because the embodiments refer to elements illustrative of these integers which are moveable forward and backward and thus in a general sense are extendable and also retractable.
Secondly, regarding another fair basis issue raised against claim 10, the opponent submitted that the disclosure of a pivoting ramp in figure 4 is not sufficient disclosure to support the generality of "retractable means operable to prevent refuse being delivered to one of the tank sections" as defined in the claim. I reject this argument. As the judgement in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 28 IPR 481 indicates, all that is needed is a "real and reasonably clear disclosure" in the description to support the feature claimed and I believe the present specification does this.
Finally the opponent submitted that claims 12 and 13 were not clear given the definition of one of the tank sections as being "generally L-shaped". Given that no plane of reference is incorporated in the definition there may be some doubt as to the particular shape encompassed by the claim. However the description illustrates various embodiments wherein one tank section is essentially of L-shape when the vehicle is viewed in plan or in side section, or when the storage tank is viewed in cross section. I believe a skilled addressee would have no difficulty in understanding these claims to extend to a tank of such shapes.
In considering the definition of claim 13 my attention has been drawn to a matter not raised by the opponent. This concerns the definition at the end of the claim namely "the rear door of the second tank section being formed by the rear door of the upper tank section and a rear portion of the side wall of the upper tank section." I can give no clear meaning to this definition, especially as "the rear door of the upper tank section", given the related definition of the "outer door" closing the first tank section in claim 1, needs to permit the operation as in integer G of claim 1. This operation implies that the door of the first or upper tank section cannot also be part of the door to the second or lower tank section. Being unclear, claim 13 thus offends against section 40. The definition without the italicised wording indicated above would however be clear. For later discussion I will assume claim 13 is so defined.
Construction of claim 1
In evidence and submissions relating to novelty and obviousness grounds, an issue arose as to the meaning and scope of "refuse transfer mechanism" defined in claim 1. It is convenient to address that issue now. Integer D of claim 1 is:
"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 opponent, in submissions at the hearing and in the evidence such as in Browning (1), pointed to the description on pages 4 to 6 and suggested that a range of devices is envisaged by the specification to fulfil the role of refuse transfer mechanisms, including chutes, bin lid opening devices, refuse compaction devices, and oscillating packers. Thus it was submitted that the feature had a broad meaning. Mr Dredge submitted that 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. Thus he submitted that a chute without moving parts did not constitute such a transfer mechanism, and that a compaction device working within a tank section did not fall within a transfer mechanism of integer D because it did not deliver refuse to the tank section.
The dictionary meanings for "mechanism" suggest some assembly of parts working together. For example Webster's Third New International Dictionary ("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 be some moving parts in a mechanism. However the portion of the present specification to which the opponent 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. The claims overall lead to a meaning of refuse transfer mechanism along the same lines.
Apart from the wording of integer D, claim 1 includes no further characterisation of the refuse transfer mechanism. There are however six claims directly appended to claim 1 which further characterise the refuse transfer mechanism. Claims 2 and 6 are as follows:
"2. The combination of claim 1 wherein the tank sections comprise upper and lower storage regions having respective forward and rearward ends and respective entrances adjacent the forward ends, the transfer mechanism comprising respective upper and lower transfer mechanisms for selectively diverting refuse or other material through the entrances to the respective upper and lower storage regions.
6. The combination according to any one of the preceding claims wherein the transfer mechanism includes a passive or active mechanism or a combination of passive and active mechanisms selected from the following:-
(i) an automated bin lid opening means;
(ii) a retractable refuse diversion chute or bin compartment alignment means;
(iii) bin compartment alignment means which align with or abut against as compartment defining portion of a bin so that refuse from the bin remains separate as it flows from the bin, through the transfer mechanism and finally into tank sections;
(iv) a refuse compaction device;
(v) a longitudinally movable oscillating slide packer;
(vi) a packer which includes an oscillating blade which oscillates about a substantially vertical axis relative to the longitudinal direction of the tank sections;
or
(vii) a travelling floor conveyor."
I note that the wording of these claims repeat nearly exactly the wording in two passages in the description on pages 4 to 6. Claim 2 requires the respective transfer mechanisms to divert refuse or other material through the entrances to the respective storage regions. This suggests the possibility of a chute or guide to achieve the intended function. Claim 6 identifies a number of specific forms of the transfer mechanism defined in claim 1, including either a passive or an active mechanism or a combination of each. I believe that an addressee of the specification would have no difficulty in understanding an "active mechanism" 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 mechanism" relying only on the force of gravity to effect movement. Thus although the expression "refuse transfer mechanism" may normally suggest that there be some moving parts in such a mechanism, the description and claims leads me to conclude that the expression is not intended to be so limited. Accordingly apart from including active mechanisms, I interpret "refuse transfer mechanism" in claim 1 to include passive mechanisms such as a chute or an alignment means, such devices not including moving parts. However given the requirement in claim 1 that the mechanism is for "delivering refuse or other material emptied into the vehicle by the loading mechanism to the respective tank sections" (emphasis added), this in my view excludes any mechanism that may solely move refuse once present within a tank section. I would add that as the definition limits the action of the transfer mechanism to delivering refuse emptied into the vehicle, I fail to see how "an automated bin lid opening means" as in claim 6, which presumably refers to a device to open the lid of a bin holding refuse which is to be emptied into the vehicle, can constitute a transfer mechanism as defined in integer D. Claim 6 is thus not clear in this regard and offends against section 40. For subsequent discussion I will disregard the arrangement of paragraph (i) of claim 6 from its scope.
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 on lack of novelty grounds centred on a disclosure of a refuse vehicle known as the "Enviro-Pack 1000". Various brochures and other material is exhibited to Browning (1) concerning this vehicle or communications concerning possible sales of such vehicles in Australia. Exhibits DJB-32 and 33 are copies of two brochures showing and describing technical specifications of a vehicle known as "Enviro-Pack 1000" apparently manufactured by E-Z Pack in the USA. The opponent MacDonald has been the Australian agent for E-Z Pack since around 1972. Browning, who has been employed by MacDonald since 1970, says he received these brochures in 1991 and he also says that he passed these brochures to others within MacDonald in May 1991 and communicated with the manufacturer in June 1991. He provides evidence of these dealings. The brochures are marked "Form No. EZ 627 4/91" and "Form No. EZ 628 5/91" respectively. Browning also exhibits as DJB-39 a copy of a video tape of the Enviro-Pack 1000 vehicle he says he received sometime in 1991 from Mr Kazi of E-Z Pack when he was in Australia. He further exhibits as DJB-40 and 41 copies of pages from the June and October 1991 editions of a US journal "Waste Age" which contain advertisements showing or including the Enviro-Pack 1000 vehicle. Mr Dredge conceded that the brochures were published in Australia before the priority date. He made no concessions about the other materials relied on by MacDonald.
Browning's evidence is that the invention claimed in various claims lacks novelty against the disclosures of the Enviro-Pack vehicle as disclosed in either the brochures, the "Waste Age" extracts, or the video tape. I will consider these in turn.
Brochures of exhibits DJB-32 and 33
I first turn to the exhibits DJB-32 and 33 which I am satisfied, and as Mr Dredge conceded, were published in Australia before the priority date. For novelty purposes these exhibits and their disclosures must be considered individually. The brochure copied as exhibit DJB-32 is in colour and in 2 sheets. There are several colour pictures showing an actual vehicle or certain views of the vehicle and one sheet includes vehicle specifications. Exhibit DJB-33 has 4 sheets in colour and apart from the same pictures and specifications listing as in DJB-32 includes some text describing aspects of the vehicle.
In assessing the disclosure of these brochures, it is apparent to me at the outset that all integers of the vehicle defined in claim 1 apart from integer D are clearly disclosed. Firebelt contested MacDonald's allegation that there was disclosure of integer D and in particular a mechanism which delivered refuse to the respective tank sections. The "Specifications" sheet of these brochures refer to "Packing Rams (2)", "Dual Packing Rams Sequenced With Lift Cycle", "Compaction blade facilitates off-loading of individual compartments", and "loading baskets dump within body profile". The brochure of exhibit DJB-33 in the text states "The Enviro-Pack 1000 compacts recyclables with each automated dump of its twin baskets" and later states "The unique compaction mechanism is specifically designed to compact plastic and metal …". Although the brochures refer to "packing rams" and "compaction blades", there is nothing to suggest that these are not referring to or are not part of the same components. Browning in fact states that they refer to the same components. Mr Dredge submitted that the "compactors" (by which I take he means the compaction blades/packing rams) of the Enviro-Pack 1000 moved refuse within the tank sections to another point within the tank sections. After referring to the text on the brochure of "Dual Packing Rams Sequenced With Lift Cycle" he further stated:
"It seems from this that the packing rams are dependant upon the emptying process rather than operate as transfer mechanisms. Waste free falls directly into the tank sections. Consequently there is no transfer mechanism that operates on the waste."
Thus, Mr Dredge submitted, there was no disclosure of a transfer mechanism to deliver refuse emptied into the vehicle to the respective tank sections as claim 1 defines.
Browning exhibits as DJB-34 an annotated version of the brochure at exhibit DJB-32 and discusses this in clause 45.2 of Browning (1). He refers to the storage tank part of the vehicle as indicated by his numeral "2", being a section at the back of the vehicle behind the loading basket section which is adjacent and immediately behind the vehicle cab. In discussing the integer D in paragraph (d) of clause 45.2 Browning states:
"Referring to the photograph of the Enviro-Pack 1000 vehicle in the Brochures, it can be seen that the basket is emptied into the vehicle in front the storage tank (marked "2" on the Annotated Brochure). Consequently, there must be some means for pushing the refuse into the tank sections once the refuse has been emptied into the vehicle. If this were not the case, then the refuse would pile up where it fell and further refuse would not be able to be emptied into the vehicle.
… The packing rams are used for pushing refuse emptied into the vehicle to the tank sections at the rear of the vehicle. In addition the packing rams also function to compact the refuse in each storage tank. It is clear that the packing rams and compaction blades refer to the same components."
Browning then states that in the bottom left hand photograph on the Specifications page of the brochures the packing ram in the top compartment is clearly visible (annotated as "7"). He also says it is clear from that photograph that this packing ram "is located in front of the upper tank section and operates by pushing refuse to the rear." Browning thus concludes these brochures disclose integer D.
There is no other evidence in this matter which discusses the disclosure of these brochures and the matters to which Browning refers. Idwall Richards for Firebelt mentions the Enviro-Pack 1000 vehicle in clauses 35 and 36 of his evidence. However his comments are general statements about the suitability of that design for Australian requirements and its use with MGBs, and comments about adapting the vehicle to replace the basket loaders. There is thus no evidence contrary to Browning's about what these brochures disclose.
Whatever these published brochures disclose must be ascertained from the respective brochures alone and without knowledge gained from other sources. In interpreting the brochures and the photographs therein, I note the comments made in C Van Der Lely NV v Bamfords Ltd [1963] 80 RPC 61 at page 71:
"… There is no doubt that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language. It was argued that the same applied to a photograph. I do not think so. Lawyers are expected to be experts in the use of the English language, but we are not experts in the reading or interpretation of photographs. The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence. Where the evidence is contradictory the judge must decide. But the judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance.
The photograph must be looked at through the eyes of the typical addressee of the appellants' specification - the kind of person who would be expected to make a machine of this kind. …"
In this case there is unchallenged evidence from Browning about the disclosure in the brochures including the photographs. Browning in my view clearly has "appropriate engineering skill and experience" in the technology to interpret the photographs. It may perhaps be argued that his interpretation and conclusions of the photographs could have been influenced by knowledge gained from other material about this vehicle, such as the video tape exhibited. However to me the brochures fairly suggest the disclosure advanced by Browning and I see no reason to reject his evidence on it. That disclosure is of a refuse transfer mechanism meeting the requirements of integer D, involving the packing rams/compaction blades delivering refuse, which has been emptied into the vehicle forward of the tank sections, to the tank sections behind the loading zone. Thus I find that the invention claimed in claim 1 is not novel in the light of the brochures of exhibits DJB-32 and 33.
As to the other claims, Browning discusses them and further refers to the Enviro-Pack 1000 brochures. There is no evidence from the applicant contesting Browning's views on these claims. My conclusions on these claims follow.
Claim 2. The brochures disclose a vehicle with storage regions as claimed. It is evident that there are entrances to each region at their respective forward ends. The transfer mechanism by way of the packing rams/compaction blades which are forward of each storage region effects the delivery of refuse through the entrances to respective storage regions. Thus the invention of claim 2 is not novel.
Claim 3. This claim (appended to claim 1) specifies that "the transfer mechanism includes a refuse separator means adjacent the loading mechanism and adapted to be located in close proximity to a bin inverted over the separator means by the loading mechanism for separating refuse delivered into the transfer mechanism so the separated refuse is moved to the respective tank sections." The brochures refer to "twin loading baskets" as part of the loading mechanism. In fact this appears as a single unit divided into side-by-side baskets. An associated divider (or separator means) as part of the transfer mechanism at the delivery point of the baskets is not visible from the photographs in the brochures and is not mentioned in the text. About this feature Browning states:
"It would be obvious to anyone involved in the design of refuse vehicles that the vehicle requires a vertical divider which lines up with the basket in order to maintain the separation of refuse emptied into the vehicle. Without the presence of such a divider there would be nothing to prevent the refuse from mixing, which of course defeats the purpose of having a divided refuse vehicle and of pre-sorting different categories of refuse."
I take Browning's comments to imply that if he was to attempt to make a vehicle as disclosed by the brochures, he would understand that the transfer mechanism needed to have a separator means of some kind cooperating with the basket divider, otherwise the refuse streams from the respective baskets upon dumping would not be kept separate, something which would be contrary to the teaching of the brochures and the clear intent and purpose of the vehicle (see the Van Der Lely case, supra). This to me seems a reasonable understanding that a typical addressee would have of the vehicle as described and shown in the brochures. It follows that the invention of claim 3 is disclosed by the brochure and is therefore also not novel.
Claim 4. There is no disclosure in the brochures of the additional features claim 4 introduces over the combination of claim 1. Claim 4 is thus novel.
Claim 5. This claim, which is appended to any one of claims 1 to 4, introduces the integer of "a bin releasably coupled to the loading mechanism" and further defines the relationship between those integers and the transfer mechanism. As the loading baskets of the vehicle of the brochures appear not to be "releasably coupled" to the loading mechanism, the invention of this claim is novel.
Claim 6. This claim encompasses numerous alternative combinations of the transfer mechanism integer arising from the various passive and active mechanisms listed. When appended other than to claims 4 and 5, the invention of claim 6 lacks novelty. This follows from my comments on claims 1 and 3 and discussion about the packing rams/compaction blades and separator means as disclosed in the brochures. The claim includes arrangements involving alignment means and compaction devices as specified in paragraphs (ii), (iii) and (iv) of the claim. The claim relating to these arrangements lacks novelty.
Claim 7. There is no disclosure in the brochures of the additional feature claim 7 introduces over the combination of claim 2. Claim 7 is thus novel.
Claim 8. There is no disclosure in the brochures of the form of transfer mechanism claim 8 introduces over the combination of claim 2. Claim 8 is thus novel.
Claim 9. This claim (appended to claim 1) specifies that "the transfer mechanism includes means for receiving and selectively diverting refuse from a bin having two compartments which are side-by-side as the bin is emptied …. so that refuse from the compartments is maintained separate as the refuse is moved to the respective tank sections." The vehicle of the brochure has a divided loading basket, this feature equating with the bin mentioned in the claim. Browning states in clause 51.2:
"The vehicle clearly includes means to receive the refuse and to selectively divert refuse into the respective storage compartments. If this were not the case there would be no point in having separate refuse storage compartments in the basket or the vehicle body."
Browning also refers to his comments concerning claim 3 and a somewhat similar feature there claimed. Browning's understanding to me seems a reasonable understanding that a typical addressee would have of the vehicle as described and shown in the brochures. It follows that the invention of claim 9 is disclosed by the brochure and is therefore also not novel.
Claim 10. There is no disclosure in the brochures of the additional feature claim 10 introduces over the combination of claim 1. Claim 10 is thus novel.
Claim 11. There is no disclosure in the brochures of the additional feature claim 11 introduces over the combination of any one of the preceding claims. This feature is that the "loading mechanism is coupled to the vehicle via a retractable arm". No retractable arm assembly is evident in the vehicle of the brochures. Claim 11 is thus novel.
Claim 12. Claim 12 reads "The combination of claim 1 wherein the first tank section is generally L-shaped." Browning in clause 53.2 states that "to me 'generally L-shaped' probably refers to a tank section that has a part which extends beyond the confines of a regularly shaped (ie. generally rectangular prismatic) tank section". The upper storage compartment of the vehicle of the brochures is closed by a so-called bubble door which also overlies the door closing the lower storage compartment. Browning states that the upper tank section of the vehicle in the brochures is shaped according to his interpretation of "generally L-shaped". He adds that "the Brochures clearly shows that the space within the outer bubble door belongs to the upper tank section when the door is closed". I agree with Browning that the vehicle as described and shown in the brochures has an L-shaped upper tank section. It follows that the invention of claim 12 is disclosed by the brochure and is therefore also not novel.
Claim 13. There is no disclosure in the brochures of the feature regarding the rear door of the second tank section that claim 13 introduces over the combination of claim 1. Claim 13 is thus novel.
Claim 14. There is no disclosure in the brochures of the additional feature claim 14 introduces over the combination of claim 1. Claim 14 is thus novel.
Claim 15. This is an omnibus claim which refers to figures 24 to 26. These figures show a particular rear door arrangement for the tank sections. There is no disclosure in the brochures of such an arrangement so claim 15 is novel.
In summary, the invention defined by claims 1, 2, 3, 6, 9 and 12 lacks novelty in the light of the brochures of the Enviro-Pack 1000 vehicle.
Exhibits DJB-40 and 41, the "Waste Age" extracts
There is evidence from Arthur, a librarian at The University of Melbourne, about the availability of various editions of the US journal "Waste Age" in Australia. The October 1991 edition (from which exhibit DJB-40 is taken) was available "shortly after 10 December 1991". There is no similar evidence about the June 1991 edition (re exhibit DJB-41). Browning states that he has always paid close attention to journals in the industry, among them "Waste Age". I believe it is reasonable to infer that the journal editions from which exhibits DJB-40 and 41 are taken were published before the priority date in Australia. However I do not consider that these exhibits, individually considered, provide sufficient disclosure of the Enviro-Pack 1000 vehicle to conclude that the invention defined in the claims lacks novelty.
Exhibit DJB-39, the video tape
Under the Act a video tape falls within the meaning of "a document" and thus can form part of the prior art base for consideration with regard to novelty and inventive step considerations. Few details are given by Browning about the circumstances surrounding the receipt by him of, and the dealings he may have had regarding, the video tape he received from Mr Kazi and which is copied as exhibit DJB-39. It particular it is not clear whether it was received in circumstances which constituted a publication in Australia, as that is understood in patent law, or indeed if it was "published" whether it was in fact published in Australia before the priority date. In view of those uncertainties I am not satisfied that the video tape forms part of the prior art base. Consequently I dismiss this exhibit from further consideration. However I would merely add that if the video tape had formed part of the prior art base, then its disclosure would render the same claims not novel as found above in relation to the brochures.
Inventive step
The opponent alleges that the invention claimed in any claim is not patentable due to a lack of an 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, that is before
10 February 1992. 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.
In its statement of grounds and particulars MacDonald lists various matters which are said to be included in the common general knowledge at the priority date. The evidence filed in this opposition and advanced to establish the common general knowledge is that of Browning and to a lesser extent that of Crozier and Williams.
Williams' experience appears to be mainly from working in the industry as a manufacturer in New Zealand. He says that "side loading refuse vehicles in use around the world in the years before 1991 were of reasonable standard design, typically having a storage tank with a hydraulically openable bubble door at the rear and a loading mechanism for wheelie bins mounted on an arm just behind the cab". Williams also discusses a proposal which he says his company was exploring or developing in 1991, apparently being somewhat similar to the invention, but his comments about this proposal do not include indications of possible common general knowledge.
Crozier indicates experience in the industry in Australia as a manufacturer since 1969. He says he is aware of developments in the industry in Australia and overseas by way of industry contacts, attendance at Expo shows, and through various trade journals published in Australia or overseas. His evidence further includes the following statements (which I have provided in summary form):
a) Very many side loading refuse vehicles were made and sold in Australia by different companies prior to 1992 - he mentions various companies (per clause 10).
b) "By 1992 all the side loaders on the market had a loading mechanism for bins which was mounted on an arm behind the driver's cabin, a bubble door at the rear of the vehicle and some form of compactor. By 1992, everyone in the refuse collection industry in Australia would have been familiar with these basic types of equipment" (per clause 10).
c) Vehicles like one known as "Recycle One", which had baskets to temporarily store refuse which were then emptied into the vehicle, were extensively advertised in US journals and "as a result of the large amount of advertising in US journals, they would have been common knowledge in Australia in 1992" (per clause 12).
Browning indicates experience in the industry in Australia with manufacturer MacDonald since 1973. Like Crozier he says he is aware of developments in the industry in Australia and overseas by way of industry contacts, attendance at Expo shows in Australia and overseas, and through various trade journals published in Australia or overseas. Browning states that "[m]ost developments that are made in this industry, whether in Australia or overseas, become well-known in the industry a short time later through the constant exchange of information as described …" (per clause 19). His evidence further includes the following statements (which I have provided in summary form):
a) Refuse collection vehicles having bubble doors were very well known in the industry for many years prior to 1992 (per clause 21).
b) The use of an arm mounted on the side of a refuse collection vehicle and which was extendable from the vehicle to carry a mechanism for emptying a bin into the vehicle was also very well known prior to 1992 (per clause 22).
c) By 1992 features of a loading mechanism mounted on an arm behind the driver's cabin and a tank with a bubble door were standard equipment for side loading refuse vehicles in Australia (per clause 23).
d) Refuse vehicles with a divided body and a divided basket (for loading refuse into the vehicle) were being made in the US since at least 1989, and whilst not used in Australia, were generally known as a result of extensive advertising in the US trade journals to which most if not all industry participants would subscribe or otherwise receive (per clause 25).
e) Divided wheelie bins to be used with divided refuse vehicles were also known in Australia prior to 1992 (per clause 27).
f) So-called "walking floor" conveyors were widely known in Australia prior to 1992 (per clause 29).
g) Prior to 1992, oscillating packers were known in Australia (per clause 30).
Browning's comments are those from a person who has been closely involved in the refuse vehicle industry in Australia for many years. He indicates continuous involvement in the design and manufacture of refuse vehicles from 1973. With that experience, in my view, he qualifies as a person skilled in the art. At best it could be inferred from Browning's evidence that the various arrangements or components to which he refers were part of the common general knowledge in Australia at the priority date. Crozier's evidence, if understood to refer to matters before the priority date rather than "by 1992", could be taken to support several matters of inferred common general knowledge from Browning's evidence (per statements b) to d)). William's evidence also lends support to Browning's statement c).
Of the evidence filed by Firebelt, only that of Idwall Richards covers developments in the art prior to the priority date. In the main Richards comments on his business involvement and that of his companies in the industry since 1961. He refers in fairly general terms to various vehicles built or modified for refuse collection by his companies since that time and prior to the present invention. In clause 23 he suggests that the trade journals referred to by Browning "are of little use in disclosing other than general information about competitor's products", but as such he does not dispute that those in the industry in Australia would not be familiar with these journals and their disclosures. I do not see in Richards' evidence any statements regarding matters of common general knowledge nor any statements contrary to or denying the statements of Browning listed above.
The evidence in support is by no means definite in identifying or establishing what was part of the common general knowledge. MacDonald, who has raised and seeks to sustain validity issues based on the common general knowledge, bears the onus in establishing the common general knowledge. In submissions at the hearing Firebelt conceded that the following were part of the common general knowledge in Australia at the priority date:
so-called bubble doors on refuse vehicles, and
in general terms, remote controlled side loading for refuse vehicles.
These two matters are covered in statements by Browning (see statements a) to c)). With regard to the other matters raised by Browning, I believe an inference can be drawn from Browning's evidence, and I do infer that the matters in his statements d) to g) were also common general knowledge at the priority date.
The above matters represent to me the extent of the common general knowledge as has been presented in evidence in this case. I observe that there is no evidence from which to conclude that the brochures to which I referred under the novelty heading were part of the common general knowledge. There is also no evidence from which to conclude that a smaller door within or enclosed by a bubble door on refuse vehicles was common general knowledge at the priority date.
There is however another issue which requires some comment at this point since it arose in evidence and submissions. This concerns the so-called "Hickey proposal" of 1991/1992.
The "Hickey proposal" of 1991/1992
Browning refers to 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. Browning also does not say whether he gained information about the Hickey proposal before the priority date of the present application. The agenda for the seminar held in Sydney, provided by Knaggs in evidence, 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"). Smith in evidence says he attended the July 1991 seminar. He says "Colin Hickey gave a long talk on the benefits of using a divided bin in conjunction with a divided refuse collection vehicle for collecting recyclable refuse" and that a refuse vehicle was described. Smith states in clause 9:
"The refuse vehicle described at the Seminar was to be driven by a single operator. It was side loading, having the loading mechanism mounted on an arm and controllable from within the vehicle cabin. The vehicle was divided horizontally into two compartments. These and other aspects of the vehicle were described and explained with the aid of many drawings."
Smith does not go on to describe the operation of the vehicle and bin combination which he says was extensively described and explained at the Seminar. Smith does not say whether any paper describing the vehicle as described at the seminar was available to participants at the seminar or later. Smith states that he was invited to the seminar to demonstrate a truck mounted bin washer and that Idwall Richards attended all day. Whether any persons from other refuse vehicle manufacturers in Australia attended the seminar is not evident from the evidence before me. Idwall Richards does not admit to attendance at either the seminar or conference but he does refer to the 1991/92 Hickey proposal in his evidence. I note that Idwall Richards and Rhys Richards are given as the inventors for the opposed application.
Exhibit DJB -3 to Browning (2) is a copy of a statutory declaration by Eric Love made for the withdrawn opposition by a company against the patent application 651031. 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, which has page numbering 96 to 103, 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. Browning says in Browning (1) that the "paper is reported at pages 97 to 104 [sic] of the proceedings" of the conference, but there is no evidence to establish when such papers of proceedings were available to participants or others, or whether 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. Exactly who attended the conference and particularly whether representatives from refuse vehicle manufacturers in Australia attended is not evident from the evidence provided by the opponent which is before me.
Thus, from the evidence before me as filed by the parties, at best persons attending the seminar or conference, firstly, heard disclosures about the Hickey proposal, and secondly, received papers describing the proposal. Even if both aspects were the case, there is however no evidence to indicate to what extent the disclosures became known to skilled persons in the industry before the priority date. Given the nature of the evidence before me, a conclusion based on that evidence to the effect that the disclosures about the Hickey proposal at the seminar or conference had became part of the common general knowledge in the art before the priority date would be unsound.
However there is another aspect to consider regarding the Hickey proposal and the presentations at the seminar or conference which is relevant. The opponent submitted that I should follow the findings by the court in the action involving the related petty patent 657082. 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. 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.
Firstly, I will consider this question on the basis of the common general knowledge alone. The common general knowledge as discussed would, in my view, have readily suggested to a skilled person a refuse vehicle having the combination of integers A to E as in claim 1. Although a bubble door for a refuse vehicle was common general knowledge, a "door within a door" arrangement as integers F and G of the claim define has not itself been established as part of the common general knowledge in the art at the priority date. However the question to be considered is whether to a skilled person in the art it would have been an obvious step to include a "door within a door" arrangement on a vehicle having the known combination of integers A to E. The only evidence that relates to this point is that of Browning. In Browning (1) at clause 45 on page 22, when discussing integers F and G of the claim, he indicates a need to have separate doors to the storage compartments of a refuse vehicle "to allow separate discharging of refuse from each compartment". In the following paragraph he states:
"There are only two possibilities for providing each compartment with a door - each compartment can have its own door or one door may be inside the other. To provide each compartment with its own door would require significant modification of the design of a standard side loader. However, one door can be put inside the other without much modification of the existing design and without reducing the capacity of the vehicle by removing the large bubble door. This feature of claim 1 would have been an obvious possibility to a designer of refuse vehicles in 1992."
In Browning (2) at clause 30 paragraph (d) Browning states:
"In converting a waste collection vehicle with an undivided storage tank and a rear bubble door to a vehicle with a divided storage tank, a designer is inevitably led to the use of an inner door. The alternatives are more complicated, more expensive or reduce the performance of the vehicle. The use of the inner door would therefore be arrived at as a mere workshop expedient."
I note that Browning does not say that it would have been obvious to him before the priority date to use a "door within a door" arrangement on a divided tank refuse vehicle. However that is not significant in this consideration. His evidence is to the effect that confronted with a divided refuse storage tank and the desire to maintain refuse from the compartments separate on discharge, a designer has limited options for door arrangements to the compartments, the "door within a door" being "an obvious possibility" and one of two options. Browning's evidence also implies that no practical difficulties would have prevented implementation of the "door within a door" option. Based on this evidence I conclude that before the priority date a skilled but non-inventive person in the art would have arrived at the invention of claim 1 including the "door within a door" arrangement without the exercise of any inventive quality or ingenuity.
Secondly, lack of inventive step can also be considered given the common general knowledge and 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). Of relevance to this consideration is whether the Enviro-Pack 1000 brochures to which I referred under the novelty heading and the information in them meet the requirements of s.7(3). Browning's evidence is that he received these brochures by May 1991. Browning is a skilled person in the relevant art in question and I have no reason to doubt that as a skilled person, and before the priority date, he could have ascertained, understood and regarded the information in these documents as relevant to work in the relevant art in the patent area. In fact his dealings with these brochures soon after receipt indicate that he did understand and regard the information in these brochures as relevant to work in the art. I believe that other skilled persons could have ascertained and understood the information in these brochures before the priority date and recognised its relevance. The information in the brochures can therefore be considered for obviousness grounds.
As the brochures disclose the invention defined by claims 1, 2, 3, 6, 9 and 12, the invention of these claims would be immediately obvious to a skilled person in the art being absent of any inventive step over the prior art information. As to the invention defined by the other claims my conclusions follow.
Claim 4. As "walking floor" conveyors were part of the common general knowledge prior to 1992, the invention of claim 4 would have been obvious to a skilled person in the art given this knowledge and the information in the brochures. No invention would have been required by a skilled person to consider including a conveyor on the floor of one of the tank sections to assist movement of refuse within the tank section.
Claim 5. Appended to any one of claims 1 to 4, claim 5 introduces the integer of "a bin releasably coupled to the loading mechanism" and further defines the relationship between those integers and the transfer mechanism. The information in the brochures concerns a refuse basket (bin) as part of the loading mechanism and is not releasably coupled thereto. Given the common general knowledge of the use of an arm mounted on the side of a refuse collection vehicle to carry a mechanism for emptying a bin into the vehicle, in my view to provide as an alternative a loading arm as part of the loading mechanism to releasably couple a refuse bin would have been an obvious step for a non-inventive worker in the field. Furthermore, no inventive ingenuity would have been needed to ensure that the arrangement of loading mechanism and transfer mechanism enabled refuse from a divided refuse bin (itself common general knowledge) to be selectively transferred to respective tank sections of the vehicle. In fact the arrangement defined in this claim was exhibited by the Hickey vehicle and formed part of the common general knowledge. Accordingly the invention of claim 5 would have been obvious to a skilled person in the art.
Claims 7, 8 and 10. There is nothing to suggest that the invention defined by these claims would have been obvious to the skilled person in the art given the information in the brochures and the common general knowledge.
Claim 11. As the common general knowledge included loading mechanisms on an arm which was extendable from the side of a refuse vehicle, the invention of claim 11 would have been obvious to the skilled person in the art.
Claim 13. There is nothing to suggest that the invention defined by this claim would have been obvious to the skilled person in the art given the information in the brochures and the common general knowledge.
Claim 14. This claim is as follows: "The combination of claim 1 wherein the tank sections have a door sharing a common seal". I interpret this to mean that, as from claim 1 each tank section has a door, there is a sharing of a seal for the doors. The vehicle of the brochures has a "door within a door" assembly. With this arrangement it would have been obvious to the skilled person in the art to provide a seal member for the tank section openings which could be contacted by each door in the closed position thus constituting a common seal. Thus the invention of claim 14 is obvious.
Claim 15. There is nothing to suggest that the specific form of the invention defined by this omnibus claim, which refers to figures 24 to 26 of the drawings, would have been obvious to the skilled person in the art.
Accordingly the invention defined by claims 1 to 6, 9, 11, 12 and 14 lacks an inventive step in the light of the information in the Enviro-Pack 1000 brochures and the common general knowledge.
Thirdly, in view of Dowsett J's finding, in an alternative, that the presentations regarding the "Hickey proposal" amounted to information that meets the requirements of s.7(3), this leads to that information being considered with the common general knowledge for inventive step considerations without the "Hickey proposal" being part of that knowledge. That information reveals a refuse vehicle which includes the features represented by integers A to D as in claim 1. The feature of claim integer E and particularly the "rear door assembly", if not part of the information regarding the Hickey proposal presentations, would have been an obvious part of a vehicle of this nature to a person skilled in the art. The information does not however reveal the refuse vehicle having the features of integers F and G of claim 1. However, as indicated above when discussing the inventive step question with reference to the common general knowledge alone, a non-inventive skilled person in the art would have arrived at the invention of claim 1 including the "door within a door" arrangement without the exercise of any inventive quality or ingenuity. The invention of claim 1 is therefore also obvious if considered in the light of the information of the Hickey proposal and the common general knowledge.
In summary, the invention defined by claims 1 to 6, 9, 11, 12 and 14 lacks 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. Furthermore, in the particulars for the opposition the opponent asserts that the invention claimed is a mere collocation of known integers. In my view the claim is directed to a combination where the integers have an interworking relationship and thus the invention is not a mere collocation as asserted. Thus I have no basis on which to conclude adversely against the application on this ground and dismiss this ground of opposition.
Costs
The usual practice is that costs should follow the event and both parties agreed that principle should apply in this matter. As I have found certain grounds of opposition established, the opponent has been successful in its opposition and it is entitled to an award of costs. Accordingly I award costs in the opposition against the applicant, Firebelt Pty Ltd. The relevant costs awarded are in accordance with Schedule 8 of the Patents Regulations 1991.
CONCLUSION
I have found that:
1. Claims 6 and 13 are unclear and offend against section 40;
2. the invention defined by claims 1, 2, 3, 6, 9 and 12 lacks novelty; and
3. the invention defined by claims 1 to 6, 9, 11, 12 and 14 lacks an inventive step.
Accordingly the opposition has been successful. As I consider that there is patentable subject matter in the application and complete specification, I afford the applicant an opportunity to propose amendments to the specification to overcome the grounds of opposition found to apply. The applicant has a period of 60 days from the date of this decision to request amendment of the specification in this regard. If an amendment request is not filed within that period, and in the absence of any appeal from this decision, I will direct that the application be refused.
I have awarded costs against the patent applicant Firebelt Pty Ltd.
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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