Gamma-Metrics v Mineral Control Instrumentation Pty Ltd

[2000] APO 57

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 673263 in the name of Gamma-Metrics

Title:          Enhancement Of Measurement Accuracy In Bulk Material Analyzer

Action: Opposition under section 59 of the Patents Act 1990 by Mineral Control Instrumentation Pty. Ltd.

Decision:          Issued            .

Abstract

Opposition upheld.  Grounds of novelty and inventive step established.  Grounds of section 40 and manner of manufacture not established.

The claims were found to lack novelty in light of two citations.  The invention related to a measuring device known as a Prompt Gamma-ray Neutron Activation Analyser. The claims had been amended after filing evidence in support to stipulate that the disposition of a neutron moderator "improved the spatial uniformity of response".  It was found that in the circumstances of the case this did not serve to distinguish the invention over prior art in which the neutron moderator was similarly disposed.

The claims, which related to the measurement of material as it was being transported by conveyor belt, were found to be lacking an inventive step over similar arrangements in which material was passed through a chute.  The opponent succeeded in establishing that the provision of a conveyor instead of a chute was common general knowledge in the art, and the applicant was unsuccessful in putting forward a defence that there was an inventive step in identifying the "true nature of the problem".

Costs were awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 673263 by Gamma-Metrics and Opposition thereto by Mineral Control Instrumentation Pty. Ltd.

BACKGROUND

Patent Application 67370/94 was filed by Gamma-Metrics on 8 July 1994.  It claims priority from United States Patent Application 08/089274 filed on 9 July 1994.  The application was advertised as accepted on 31 October 1996 and given serial number 673263.

A notice of opposition was filed by Mineral Control Instrumentation Pty. Ltd. (MCI) on 31 January 1997. Service of evidence in support was completed on 27 March 1998.  On 7 June 1998 the applicant sought leave to amend the complete specification under section 104.  Allowance of these amendments was advertised on 11 March 1999.  Service of the evidence in answer was completed by 26 February 1999 and service of the evidence in reply was completed by 4 November 1999.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (non-patentable invention), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40.

The matter was heard in Canberra on 15 June 2000.  The opponent was represented by Bruce Caine of counsel instructed by Leon K. Allen, patent attorney of the firm Davies Collison Cave, Melbourne.  The applicant was represented by Catherine Hustwick, patent attorney of the firm Maddern & Associates, Adelaide.

THE SPECIFICATION

In what follows, except where specifically indicated, any reference to the specification or claims is to be taken as referring to the specification or claims in their form subsequent to the amendments which were advertised allowed on 11 March 1999.

The invention relates to bulk material analyzers and is particularly directed to improving the spatial uniformity of gamma ray detection in bulk material analyzers of the type in which bulk material is bombarded by neutrons as it passes through an activation region on a conveyor belt.  Secondary emissions of gamma rays are produced by the neutron bombardment, which are detected and analyzed to identify the elemental content of the bulk material using prompt gamma-ray neutron activation analysis (PGNAA), a well-known process within the art.

In the prior art bulk material analyzers described in the specification, the response of the gamma-ray detectors to gamma-ray emission from different areas of a cross-sectional profile is extremely non-uniform, which results in measurements on non-homogeneous bulk materials being dependent on their location in a cross-sectional profile of the activation region, that is, on where the bulk material is located on a conveyer belt.

Under the heading "Summary of the Invention" the specification states:

"the present invention provides a bulk material analyzer in which measurement accuracy is enhanced by improving the spatial uniformity of the response of the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region."

A consistory statement then follows which corresponds to Claim 1 as accepted  (that is, in the form it was prior to the amendment advertised as allowed on 11 March 1999). The specification goes on to discuss various optional features relating to further improving the spatial uniformity of the response of the gamma-ray detector(s), which are the subject of appendant claims.  Two other aspects of the invention are then given, which do not appear to have a true counterpart in any of the present claims or the accepted claims.

The specification ends with 11 claims.  Claim 1 is the only independent claim, apart from an omnibus claim.  In setting out Claim 1 below, I will use the notation used by both parties in the evidence and at the hearing as a convenient shorthand method of referring to features of Claim 1.  Claim 1 reads:

"1. (a) A bulk material analyser in which bulk material is received in an activation region between at least one neutron source and at least one gamma-ray detector, including:

(b) a container having surfaces defining said activation region, wherein the container surfaces further define a passageway for enabling bulk material to be transported through said activation region on a conveyer belt;

(c) at least one neutron source disposed within the container beneath the passageway on one side of the activation region for emitting neutrons for bombarding bulk material being transported on a conveyer belt through said activation region to cause gamma-rays to be emitted from said bombarded material;

(d) at least one gamma-ray detector disposed within the container above the passageway on another side of the activation region opposite from said one side for detecting gamma-rays emitted from said bulk material;

(e) a primary neutron moderator disposed around said neutron source(s) for reducing the velocity of said emitted neutrons; and

(f) a secondary neutron moderator disposed about the primary neutron moderator for further reducing the velocity of said neutrons and further disposed adjacent a portion of the activation-region-defining surfaces of the container that are lateral to said one side and said other opposite side of the activation region at which the neutron source(s) and the gamma-ray detector(s) are respectively disposed, for channelling and reflecting said neutrons into said activation region;

(g) wherein a lower portion of the passageway-defining surfaces define a trough having upwardly extended sides adjacent the activation region; and

(h) wherein the secondary neutron moderator is disposed adjacent the sides of the trough for channelling and reflecting said neutrons into said activation region; and

(i) wherein the neutron moderators are disposed to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region."

Feature (i) was introduced into claim 1 in the amendment of 11 March 1999.

EVIDENCE

The evidence in support consists of the following:

·A statutory declaration by Leon Keith Allen (patent attorney for the opponent), having as exhibits a selection of patent and non-patent literature on which the opponent's case relies, as follows:

LKA3"Dynamic Trial of an On-Stream Analyser for Iron Ore Fines", Holmes et al., Proc. Aust. Min. Metal No. 274, June 1980, pp 17-22

LKA4Cekorich et al. "Development of an Elemental Analyser for coal, oil and Similar Bulk Streams - A Status Report" 1979, "Symposium of Instrumentation and Control Fossil Energy Processes" pp 297 - 313

LKA5Marshall et al. "On-line Measurement of Bulk Coal Using Prompt Gamma Neutron Activation Analysis" J. H. Marshall III and J. F. Zumberge Nuclear Geophysics Vol. 3 No. 4 pp 445 - 459, 1989

LKA6US 4171485 (MARSHALL)

LKA7US 4266132 (MARSHALL)

LKA8US 4682043 (MARSHALL)

LKA9PCT/FR91/00498 (WO 92/01295) (FRANCAIS et al.)

LKA10US 4028267 (CHRISTELL ET AL)

LKA11Cooper "Progress in On-line Coal Quality Measurement" Journal of Coal Quality, Vol. 3, No. 1 (Jan 1984) pp 16-23

LKA12Cox et al. "The Design of Neutron Howitzers" International Journal of Applied Radiation and Isotopes 1968, Vol. 19, pp 541-544

LKA13Beckurts et al. "Neutron Physics", Springer Verlag 1964 pp 116-199

LKA14Turner "Atoms, Radiation, and Radiation Protection" Pergamon Press 1986 pp 183-184

·A statutory declaration by Brian Edward Clancy, director of Lugarno Nuclear Services Pty Ltd, "a specialist consulting company providing advice in nuclear science to a range of clients", and having no apparent link to the opponent company.

·A statutory declaration by James Howarth, chairman of Scantech Limited, which owns the opponent company MCI.

·A statutory declaration by Kenneth Graham Smith, an employee of MCI.

The evidence in answer consists of the following:

·A statutory declaration by Jeffrey Stewart Schweitzer, who, at the time of making the declaration, was Research Professor of Physics, University of Connecticut, Research Affiliate, Yale University, and Adjunct Professor, University of Albany, SUNY, and with no apparent link to the applicant company.

The evidence in reply consists of the following:

·A statutory declaration by Ralph John Holmes, Manager of Iron Ore Processing with CSIRO Minerals at Pinjarra Hills Queensland and principal author of exhibit LKA3, and with no apparent link to the opponent company.

Further details of the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

At the hearing, Mr Caine submitted on behalf of MCI:

·That LKA3 is wholly anticipatory of claim 1.

·That the following facts, including the entire content of LKA3, were common general knowledge within the art before the priority date of the claims, and that this submission has not been challenged in the applicant's evidence; these facts are listed below, and I will label them as CGK 1 to CGK 7:

CGK 1measurement accuracy in bulk material analysers of the kind disclosed in the application is improved by improving the spatial uniformity of response by the gamma-ray detectors;

CGK 2the number, configuration, and orientation of gamma-ray detectors used in bulk material analysers of the kind disclosed in the application are selected to improve the spatial uniformity of the response of the detectors;

CGK 3the number and configuration of neutron sources used in bulk material analysers of the kind disclosed in the application are selected according to the neutron flux distribution required in the activation region and hence can be selected to improve the spatial uniformity of the response of the detectors;

CGK 4secondary neutron moderator geometry in bulk material analysers of the kind disclosed in the application can be used to adjust the neutron flux density in the activation region and hence improve the spatial uniformity of the response of the detectors;

CGK 5conveyer belts are used to convey bulk materials through the activation region of bulk material analysers of the kind described in the application;

CGK 6paraffin, polyethylene, water and heavy water are all materials capable of moderating thermal neutrons;

CGK 7neutron moderators can be used to moderate, channel, and reflect neutrons from a neutron source to an activation region and the neutron flux density distribution in the activation region is determined by selection of the moderator(s) and moderator geometry.

·That although documents LKA4-8 disclose systems having chutes rather than conveyers, there is no invention in making this alteration.

·That the specification does not describe the invention, including the best method known to the applicant of performing the invention, because there is no disclosure of suitable materials for the primary, secondary and tertiary neutron moderators sufficient for practice of the invention by persons skilled in the art, and no statement of to what degree the respective moderators actually perform moderation of the neutrons.

·That feature (f) of claim 1 is unclear.

·That feature (i) of claim 1 is not fairly based on what is described in the specification.

·That the terms "a primary neutron moderator", "a secondary neutron moderator", and "a tertiary neutron moderator" are unclear and not sufficiently defined to allow a person skilled in the art to interpret the scope of the claims.

·That feature (i) of claim 1 is merely a "statement of desire", and that there is no inventive way disclosed of achieving it.

·That the evidence of the applicant's witness, Professor Schweitzer, is neither relevant nor logically probative, and should therefore be given little or no weight.

·That although according to F. Hoffman-La Roche v New England Biolabs Inc [2000] FCA 283 (28 April 2000) the opponent has to make it clear that a patent, if granted, would not be valid, the burden of proof cannot be anything other than the civil "balance of probabilities" test; that if the applicant is given the benefit of all reasonable doubt, then the opponent must prove their case beyond a reasonable doubt, which renders this tribunal tantamount to a criminal proceedings.

The ground that the claimed invention is not a manner of manufacture, was not specifically pursued at the hearing.

Ms Hustwick submitted on behalf of Gamma-Metrics:

·That the invention is based on the discovery that enhanced measurement accuracy is achieved by so disposing the neutron moderators as to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region; and that this disposition compensates for any irregular distribution of bulk material on the conveyer belt.

·That none of the cited documents, alone or in combination with common general knowledge, disclose or suggest that enhanced measurement accuracy in conveyer-type bulk material analyzers can be achieved by disposing the neutron moderators in the manner specified in claim 1.

·That the invention is described fully, and it is no more than a matter of engineering design, without undue experimentation, for a person skilled in the art to determine how the neutron moderators are disposed to achieve the desired degree of uniformity of response.

·That the claims are clear and fairly based on what is described in the specification.

·That Professor Schweitzer is a person skilled in the art, and that he is relevantly qualified to make his declaration.

·That "specifically including feature (i) in the amended claims made it clearer to the reader of the claims just where the invention lay, but certainly I believe it was inherent in claim 1 even without the amendment, it's just more clearly saying it."

·That "there wouldn't really be a clash of opinion regarding common general knowledge etc, it’s just that the opponent has failed to appreciate the nature of the invention."

I will set forth the submissions made by the parties in more detail, where material, later in my decision.

DECISION

Evidentiary issues

Professor Schweitzer's declaration

Mr Caine argued that Professor Schweitzer's declaration should be given little or no weight, citing the Patent Office Manual of Practice and Procedure, Vol. 3:

Where the Commissioner has to determine questions of fact, he or she is not obliged to decide in accordance with the rules of evidence applicable in a court of law. On the other hand, he or she must decide on the basis of relevant and logically probative evidence",

and also T.A. Miller Ltd. v. the Minister for Housing and Local Government and Another (1968) 1 WLR 992:

"Tribunals are entitled to act on any material which is logically probative …"

As well as criticizing the paucity of Professor Schweitzer's declaration, observing that it contains only one page of substantive material, Mr Caine submitted that Professor Schweitzer's evidence is neither relevant nor logically probative, noting the following points in relation to it:

·Professor Schweitzer is an academic residing and working in America, and his knowledge is thus not similar to that of an Australian witness.  There is no evidence that Professor Schweitzer has any current knowledge of what is happening in Australia.

·There is no indication that Professor Schweitzer's research experience or patents are relevant to the present subject matter, namely, bulk material analyzers and PGNAA.

·His closest related research experience is in "applied nuclear physics, especially in geological and industrial applications," but this occurred after the priority date of the present application, and there is no indication that the particular applications of nuclear physics referred to here are relevant to the present subject matter.

·There is no relevant time period given for the experience related in paragraph 3 of his declaration.

On the other hand, Ms Hustwick asserted that Professor Schweitzer is a person skilled in the art, and that he is relevantly and sufficiently qualified to read the specification and to understand the nature of the invention.

While I consider there is some force to the points made by Mr Caine regarding Professor Schweitzer's evidence, especially the first and last of these points, in relation to the second and third point I note that Professor Schweitzer clearly states in his declaration:

"During the course of my professional experience I have from time to time worked in bulk material analysis …"

and also that:

"I have knowledge of bulk material analyzers of the type described in the Background portion of the Australian Patent Application No. 673263 …"

Although it is true that, as observed by Mr Caine, no relevant information in support of, or repeating, these statements can be extracted directly from Professor Schweitzer's resume, it is also the case that there is no information available directly to contradict these statements, which have been made in a statutory declaration.

In my view the evidence of Professor Schweitzer cannot be completely disregarded.  However, I have borne in mind the points raised by Mr Caine when considering Professor Schweitzer's evidence and when weighing it against any other evidence.

The declarations of the opponent

In her written submissions, Ms Hustwick claimed that

"There is at least some doubt as to whether the opponent's declarants have relevant expertise, based on the evidence which has been lodged."

The nature of these doubts was not elucidated in either the written submissions or at the hearing.

The opponent's declarants include four Australian experts, two of whom have no known relationship to the opponent, and two of whom have an employment relationship and thus their evidence will carry less weight than would otherwise be the case.  Each declarant lists in their declarations relevant experience in the technological area of the opposed patent application, and are quite particular about the extent of and the time periods covered by their knowledge.  In view of this observation, I believe that the opponent's declarants do have relevant expertise, and that they appear to be sufficiently qualified to comment on the present matter.

Section 40

Several section 40 issues are raised in the statement of grounds and particulars.

In relation to section 40(2)(a), it is alleged that:

"there is no disclosure in the Application of materials suitable for use as the primary neutron moderator, the secondary neutron moderator, or the tertiary neutron moderator and the qualities of the materials have not been sufficiently defined to allow the invention to be performed by a person being skilled in the art." 

This seems somewhat at odds, however, with item CGK 6 listed earlier, in which the opponent claims that certain moderator materials are common general knowledge.

Ms Hustwick in her written submissions cites the following definition of the term "moderator" from the "Chambers Science and Technology Dictionary," 1991:

"Material such as water, heavy water, graphite used to slow down neutrons in a reactor."

Both parties therefore seem to agree that a range of possible materials suitable for use as moderators are common general knowledge within the art, and hence I do not believe that the omission from the specification of explicit examples can be considered as a barrier to a person skilled in the art performing the invention.  The choice of particular moderating materials is not germane to the inventive concept, which is more concerned with their dispositions within the analyser, rather than their composition or qualities. 

It is also alleged that:

"It is totally unclear from the specification as to the extent to which the primary neutron moderator, the secondary neutron moderator, or the tertiary neutron moderators respectively perform moderation of the neutrons."

While it is true that the extent to which moderation of the neutrons is performed is not stated in the specification anywhere, there is nothing in the specification to indicate that this is a feature on which the invention pivots.  Further, none of the witnesses allege that, as a result of the lack of disclosure of this information, they would be unable to perform the invention.  The invention is characterised by the dispositions of the moderators, as opposed to the degree to which the respective moderators moderate the neutrons.

In the evidence from the opponent the specification was further criticised due to the lack of performance data, theory or explanation of how the invention works, or examples or comparative examples to demonstrate the degree of improvement proffered by the invention.  Such explanations and examples are not an absolute requirement of specifications, and in the case of the present specification would seem nonmaterial.  I note that none of the witnesses allege that the lack of this information would be an impediment to them performing the invention, or that they are completely unable to ascertain the nature of the invention from a reading of the specification due to the lack of this information.  Hence I do not believe that the specification fails to comply with section 40(2)(a) in this respect.

In relation to section 40(3), it is alleged in the statement of grounds and particulars that the claims lack clarity because:

"the terms "a primary neutron moderator," "a secondary neutron moderator," and "a tertiary neutron moderator" are not sufficiently defined to allow a skilled addressee to properly interpret the claims."

However, I believe that these terms are sufficiently clearly defined in the claims in terms of their function (to slow down the neutrons and to reflect them into the activation region) and their disposition within the analyser.  The terms "primary", "secondary" and "tertiary" are merely labels reflecting the sequence in which each of these moderators comes into play in moderating neutrons emitted from the neutron source.  There is no evidence that the meaning of the terms in question would cause any difficulty for the skilled addressee.  In fact, there is evidence that the opponent's witnesses, who declare themselves as skilled addressees, are able to interpret these terms, as they do in order to make their allegations in relation to section 18.

Claim 1 was also said by the statement of grounds and particulars to lack clarity in relation to feature (f).  The wording of Claim 1 was altered slightly when Claim 1 was amended by the statement of proposed amendments advertised allowed on 11 March 1999, but the clarity of feature (f) of amended Claim 1 was still disputed at the hearing, particularly as feature (h) appears simply to repeat a portion of feature (f).  The lack of detail in relation to the "portion" referred to on line 21 of feature (f) was also criticised.

I do not perceive any lack of clarity in Claim 1.  Feature (f) basically defines where the secondary neutron moderator lies in relation to the activation region.  The part of it which seemed to be the main cause of criticism was the passage:

"and further disposed adjacent a portion of the activation-region-defining surfaces of the container that are lateral to said one side and said other opposite side of the activation region at which the neutron source(s) and the gamma-ray detector(s) are respectively disposed".

While this clause is somewhat awkwardly phrased (unnecessarily so in my view), it is not actually unclear.  It implicitly defines that there are activation-region-defining surfaces of the container where the neutron source(s) and the gamma-ray detector(s) are respectively disposed, and activation-region-defining surfaces of the container that are lateral to (that is, to the sides of) these surfaces.  It is then specified that the secondary neutron moderator is disposed adjacent a portion of these lateral activation-region-defining surfaces.  There seems to be no particular significance attached to the term "portion", so I do not see why it should be given other than its plain meaning.

Feature (g) then introduces into Claim 1 the feature of a "trough", and feature (h) ratifies exactly where the secondary neutron moderator is disposed in relation to the trough.  This fact is not made completely clear from feature (f) itself, which makes no mention of the trough.

Finally, at the hearing the fair basis of the wording of feature (i) was challenged, on the ground that, as the opponent saw it, there is no basis in the specification for the phrase "neutron moderators" (plural), but rather this should read "secondary neutron moderator".

I observe that the neutrons have to pass through both the primary and the secondary neutron moderators before reaching the activation region, so the disposition of both moderators will have at least some effect on the spatial uniformity of response of the detector(s) to gamma-ray emissions.  Also, as the aim of the invention is to improve the spatial uniformity of response by the gamma-ray detector(s), every integer of the claims is presumably disposed so as to assist in achieving this result.  Hence I am satisfied that both the primary and the secondary neutron moderators are in fact disposed in order to improve the spatial uniformity of response by the gamma-ray detector(s).  Feature (i) is merely re-stating the aim of the invention, and confirming that both moderators also assist in achieving this aim.

Novelty

The basic test for novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd., (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd., [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd., (1908) 25 RPC 428).

The item of prior art which is principally relied upon by the opponent for establishing lack of novelty is LKA3.  The applicant on the other hand relies upon features (f) and (i) of Claim 1 as being novelty conferring.

Feature (e) of Claim 1, the primary neutron moderator, is provided in figure 3 of LKA3 by the bismuth shield that surrounds the ²⁵²Cf neutron source.

Regarding feature (f), the secondary neutron moderator can be considered as either the paraffin surrounding both the HDPE and the lead "pot", or alternatively as the composite comprising the paraffin and the HDPE.  Either would satisfy the requirements of Claim 1.  There is no requirement for the secondary neutron moderator to consist of one substance only.  In either case, the secondary neutron moderator is plainly disposed about the primary neutron moderator.  The conveyer belt resides in a trough-shaped portion, and the paraffin extends up to the trough-shaped region and surrounds the conveyer.  Around the trough, the secondary neutron moderator is disposed in a roughly wedge-shaped configuration.  The secondary neutron moderator is not disposed in the area directly below the bottommost portion of the conveyer belt, which is occupied by the primary neutron moderator and the neutron source.  The secondary neutron moderator is therefore disposed adjacent a portion of the activation-region-defining surfaces of the container that are lateral to (ie to the side of) the sides of the activation region at which the neutron source(s) and the gamma-ray detector(s) are disposed.  It was asserted by Mr Caine that the further qualification of feature (f), that the secondary neutron moderator would channel and reflect neutrons into the activation region, is an obvious statement of the purpose of the secondary neutron moderator, and this assertion did not appear to be refuted by Ms Hustwick.

Hence LKA3 discloses a secondary neutron moderator disposed exactly as required by feature (f) of Claim 1.

The only outstanding question, and the main point of contention between the parties, is whether or not feature (i) is disclosed in LKA3.

Feature (i) is capable of being read in two ways.  Firstly, it can be read as simply stating the result which automatically accrues from the particular disposition of the neutron moderators which has been already defined in the claim, that is, it is inherent in features (a) to (h).  Upon this construction, this feature would have no substantial limiting effect upon the scope of the claim, and the claim would lack novelty.  Alternatively, feature (i) can be read as requiring the further disposition of the neutron moderators disposed so as to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region.  Upon this construction, feature (i) would, prima facie, impose a limitation upon the scope of Claim 1, requiring it to exclude all dispositions of the neutron moderators that will not achieve the defined result.  This would, however, assume that such dispositions exist.

Ms Hustwick seemed ambivalent as to the proper construction for Claim 1.  On the one hand, she seemed to say that feature (i) should be read in the first way that I have stated.  She said:

"……specifically including feature (i) in the amended claims made it clearer to the reader of the claims just where the invention lay, but certainly I believe it was inherent in Claim 1 even without the amendment, it's just more clearly saying it."

If understand this correctly, I am to interpret feature (i) as imposing no further limitation on the structural arrangement defined by features (a) to (h) of Claim 1, but being merely re-statement or a summary of the result that is already achieved by the earlier features of Claim 1, in order to get across the gist of the invention more clearly.  Thus feature (i) does no more than to reinforce that the neutron moderators as claimed already are disposed in such a manner as to provide the improvement, and not to require any greater degree of improvement that was not already present in the claimed arrangement.  This also seemed to accord with the opponent's view.  The implication of this is that, if each of features (a) to (h) of Claim 1 is anticipated (as they are by LKA3), then feature (i) will be too, and thus Claim 1.

However, in fact Ms Hustwick also relied upon feature (i) to differentiate the claimed invention from the prior art.  She states in her written submissions in relation to LKA3 that:

"Although this document reveals the disposition per se of a neutron moderator adjacent portions of the activation region of a conveyer-type bulk material analyzer, and although it may have been known that the disposition of the neutron moderators affects measurement accuracy, this document does not suggest that enhanced measurement accuracy can be achieved by so disposing neutron moderators as to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region.  Instead, various other techniques for improving measurement accuracy are described……….There is no mention in [LKA3] of enhancing measurement accuracy by improving the spatial uniformity of response by the gamma-ray detector to gamma-ray emission from different areas of a cross-sectional profile of the activation region, much less disposing neutron moderators to improve such spatial uniformity of response………Accordingly, [LKA3] fails to disclose feature (i)." (Ms Hustwick's emphasis)

The claimed result is merely that the spatial uniformity of response from different areas of a cross-sectional profile of the activation region be improved.  There is no further requirement on the nature or the threshold of the improvement.  As long as the neutron moderators of LKA3 are not disposed to leave the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region completely unchanged, or actually to make it worse, then a sufficient degree of improvement will be attained.  From some of Ms Hustwick's submissions, I gather that she interprets the improvement as being related to compensating for inhomogeneities in the bulk material.  I note that Claim 1 is not explicitly limited to achieving this particular result, as it only requires that the spatial uniformity of response from different areas of a cross-sectional profile of the activation region is improved in some way and to some extent, but not necessarily in such a manner or to the extent that compensation for inhomogeneities in the bulk material is achieved.  These two results are not necessarily the same.  No declarants have asserted that this is so, and I can conceive of the claimed result being provided without this other result being attained.

On the face of the specification, the only features relating to the neutron moderator distribution that can possibly provide the improvement of feature (i) are simply the features relating to the neutron moderator distribution that are outlined in features (e), (f) and (h) of Claim 1.  There are no other facets to the distribution of the primary and secondary neutron moderators disclosed in the specification that correspond to further improvements in the spatial uniformity of response in the arrangement of Claim 1.  There are no instructions of any kind anywhere in the specification indicating in any way that the addressee of the specification is to consider any further alterations or enhancements in the dispositions of the neutron moderators in order to provide the improvement.

The only statement in the specification explicitly relating the distribution of these neutron moderators to the spatial uniformity of response is the following (from page 6):

"The secondary neutron moderator 22 is disposed about the primary neutron moderator 20 for further reducing the velocity of neutrons emitted from the neutron sources 14.  The secondary moderator 22 is further disposed adjacent the sides of the trough 30 for channeling (sic) and reflecting the slower neutrons into the activation region 34 to thereby enhance the response of the gamma-ray detectors 16 for a given quantity of a given bulk material 38 located near the edges of the activation region 34."

The aspects of the neutron moderator distribution referred to in this passage, when read in light of the figures, correspond to features (e), (f) and (h) of Claim 1.  These features are the only features of the neutron moderators identified anywhere in the specification as being responsible for improving the spatial uniformity in the way required by feature (i).  It seems reasonable to conclude that, from a practical standpoint, features (e), (f) and (h) inherently enhance the response of the gamma-ray detectors for a given quantity of a given bulk material located near the edges of the activation region, and provide the improvement of feature (i).  If this is not the case - that is, something further is required - then it is not apparent from the specification, and this would raise questions as to the sufficiency of the specification.

Thus, in my view, feature (i) does not impose any substantial limitation upon the scope of Claim 1.  In Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69 it is stated:

"It is clearly……..legitimate and appropriate in approaching the construction of claims to read the specification as a whole.  Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification".

For the reasons I have expressed, on my reading of this specification it does not provide support for the narrower construction for claim 1 I have referred to.  This holds true even where one is "willing or wishing to understand the specification" (Philpott v Hanbury (1885) 2 RPC 33) and where one may "reject that meaning which leads to an absurd result" (Henriksen v Tallon Ltd [1965] RPC 434). Consequently I consider the broader construction of Claim 1 should prevail. Applying the reverse infringement test, and taking into account all the above considerations, I am satisfied that LKA3 includes all the essential features of the Claim 1 in suit, when it is properly construed. On the basis of this reasoning, Claim 1 lacks novelty in light of LKA3.

However, even assuming for the sake of argument that the narrower construction applies, a similar conclusion would still appear to obtain.  The aspects of the secondary neutron moderator distribution outlined in the passage from page 6 quoted previously are also present in the apparatus of LKA3.  Hence it appears that LKA3 provides exactly the same enhancement due to the neutron moderator distribution as provided by the present arrangement and is therefore not distinguishable in this regard from the invention defined by Claim 1.

Schweitzer, in his declaration states the view that LKA3, inter alia, does:

"not suggest that measurement accuracy may be enhanced by disposing the neutron moderators to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of the cross-sectional profile of the activation region.  In fact these prior art documents do not address the problem of enhancing measurement accuracy."

It would be surprising indeed if the designers of a measuring device were not concerned with the problem of enhancing measurement accuracy.  But in any case it is unnecessary for LKA3 to disclose explicitly that accuracy can be improved by suitable disposition of neutron moderators - it must merely disclose an arrangement in which the primary and secondary neutron moderators are disposed such that they will inherently improve the spatial uniformity to some extent.  The disposition of the moderators in LKA3 shares all of the features of the disposition in Claim 1, so it is reasonable to conclude that the arrangement of LKA3 does improve the spatial uniformity and would disclose that to the person skilled in the art, whether it discloses explicitly that this is so or not.

Schweitzer further states, in regard to LKA3, that:

"It is apparent from the drawings of [LKA3, 9 and 10] that the neutron moderators within the bulk material analyzers disclosed therein are not particularly disposed to improve the spatial uniformity of response by the gamma-ray detector to gamma-ray emission from different areas of the cross-sectional profile of the activation region, as taught by the opposed patent application." (my emphasis)

Professor Schweitzer's choice of words suggests a tacit acceptance that the disposition of the neutron moderators described in LKA3 is capable of improving the spatial uniformity of response by the gamma-ray detector to gamma-ray emission from different areas of the cross-sectional profile of the activation region.

The only other evidence on this point is from Dr Holmes, who is actually the principal author of LKA3.  Paragraph 19 of his declaration states:

"… it is an inherent factor in the mind of any designer of analysing equipment and in particular bulk material analysing equipment to produce an arrangement that maximises the measurement accuracy.  In relation to the disclosure in LKA3, the skilled addressee would immediately understand that the moderator material is acting to improve the spatial uniformity of the neutron flux density and hence improve the spatial uniformity of the measured response.  In this regard a comparison of the arrangement disclosed in the LKA3 reveals the use of paraffin material around the high density polyethylene and which also extends up the side of the conveyer belt trough………..LKA3 does disclose the use of a moderator to improve uniformity of neutron flux and thus uniformity of measured response to enhance measurement accuracy as would be readily recognisable by any person skilled in the art."

While there are obvious dangers in having the author of a document interpret his or her own document (as there may be an inclination for the author to confuse what the document says with what he or she intended it to say), nonetheless I find Dr Holmes' evidence on this point fairly persuasive.  Thus, the expert evidence would seem to point towards LKA3 being a disclosure of locating the moderator material to improve the spatial uniformity of the neutron flux density, that is, feature (i).  Therefore, while LKA3 does not explicitly mention this feature (i) - narrowly construed - I am satisfied that it does in fact implicitly disclose this feature.

I therefore find that Claim 1 is not novel in light of LKA3.
Regarding Claim 2, Clancy asserts that the paraffin blocks above the activation region in the apparatus of LKA3 are spatial compensators of a similar type to those of the claims, but he does not assert that they would be suitable "for reflecting neutrons toward said activation region at a greater density toward said opposite ends of said other opposite side than toward the centre of said other opposite side", only that their purpose is to "reflect neutrons away from the detector", which is not quite the same.  Thus Claims 2 is novel over LKA3, as are Claims 5 and 6 which are appended to Claim 2.

Claim 7 requires a radiation shielding material and a tertiary neutron moderator "for isolating the secondary neutron moderator from the radiation shielding material."  Clancy argues that "the requirements specified for the tertiary neutron moderator do not differ from those of the secondary neutron moderator.  This claim therefore includes within its scope the inclusion of further secondary neutron moderator."  I disagree with the former statement; the tertiary neutron moderator differs from the secondary neutron moderator in that it must isolate the secondary neutron moderator from the radiation shielding material; other than this, they can certainly consist of the same material, as long as the isolation is achieved.  LKA3 does not disclose this isolation, and therefore Claim 7 is novel in light of LKA3.

While Claims 3, 4 and 8 relate to various of items CGK 1 to CGK 7 they are nonetheless novel.

Claims 9 and 10 define features which are disclosed in LKA3.  As these claims are appended to Claim 1, I find that they are not novel in light of LKA3.

Claim 11 is an omnibus claim, and as the essential features of the present invention in preferred form differ in their detail from the prior art, Claim 11 is novel.

Mr Caine also alleged novelty to be lacking in light of LKA9.  Professor Schweitzer's comments set out above in relation to LKA3 apply also to LKA9, and I find them unconvincing in relation to LKA9 for the reasons I have already given in relation to LKA3.  Ms Hustwick adopted the same position in relation to LKA9 as she did with LKA3, namely that Claim 1 is distinguished by feature (i).  This was the only distinction that she relied upon with respect to this document.

LKA9 does not make use of the PGNAA technique, but as Claim 1 is also not so limited, this distinction is not pertinent.  Figure 2 of LKA9 is the most relevant; once again, it discloses an arrangement that anticipates the features detailed in feature (f) of Claim 1, despite the different appearance.  A conveyer belt anticipates feature (b), the neutron source 14 is surrounded by the lead 17, which slows down or stops the neutrons, and hence will function as the primary neutron moderator.  The paraffin 13 anticipates the secondary neutron moderator, which is disposed about the primary neutron moderator, and about the lateral sides of the activation-region-defining surfaces of the container.  The trough is illustrated. 

The previous comments relating to feature (i) apply equally to this document.  As the balance of the features of Claim 1 are disclosed in LKA9, and because feature (i) is a consequence of the other features, feature (i) is disclosed in this document too.  Of the remainder of the claims, just Claim 9 is also anticipated by LKA9.

The remaining documents in the evidence do not deprive the claims of novelty.

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)   common general knowledge; or

(b)   common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 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 it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.

The claims are alleged to lack an inventive step in light of any one of LKA3 to 12 when considered in light of common general knowledge.  It was also alleged that LKA3 itself is common general knowledge within the art, and that the claims thus also lack an inventive step in light of common general knowledge when that knowledge is considered separately.

No question was raised as to whether any of LKA3 to 12 would, before the priority date of the claims, have been ascertained, understood and regarded as relevant.  I believe that each of these documents satisfies these criteria.

Common general knowledge

When considering whether or not a journal article such as LKA3 is common general knowledge, the following passage from British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250 is of relevance:

"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates.  A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."

In the present case the opponent's declarants have provided reasonably convincing evidence that LKA3 is common general knowledge, and this evidence has not been contested by the applicant's declarant.  Furthermore, as previously mentioned, at the hearing Ms Hustwick indicated her acceptance of the opponent's assertions with respect to the common general knowledge.  Thus I consider that the allegation that LKA3 is common general knowledge satisfies the above criteria, and that the contents of this journal article can therefore be accepted as having been common general knowledge before the priority date of the claims.

Regarding the seven items of common general knowledge CGK 1 to CGK 7, these were also affirmed by all four of the opponent's declarants, and again this was not challenged by either the declarant for the applicant or by Ms Hustwick.

I therefore find that the items CGK 1 to CGK 7 stipulated earlier in this decision were common general knowledge before the priority date of the claims.

Inventive step in light of LKA3 and 9

It follows from my finding that Claim 1 is not novel in light of LKA3 and 9, that, as these documents would have been ascertained, understood and regarded as relevant, Claim 1 is also lacking an inventive step in light of these documents.  Moreover, as LKA3 was common general knowledge before the priority date of the claims, and as I have found that LKA3 discloses each and every feature of Claim 1, it is clear that Claim 1 lacks an inventive step having regard to those features as items of common general knowledge expounded in LKA3, when considered separately.

Inventive step in light of documents LKA4 to 8

It was contended by Mr Caine that the claims lack an inventive step in light of each of documents LKA4 to 8, when considered together with common general knowledge.  Mr Caine noted that these documents had a very similar disclosure to one another to the extent that a conclusion pertaining to any one of these documents would automatically apply to the others.

I concur, and accordingly I will only consider LKA8 in detail.

The chief difference between LKA8 and the claimed invention is that LKA8 uses a vertical chute whereas the claimed invention uses a conveyer lying in a trough-shaped passageway, that is LKA8 does not disclose feature (b) of Claim 1.

Regarding feature (f), the secondary neutron moderator of LKA8 (the gamma-ray shield 20) is disposed about the primary neutron moderator 14, and it extends to the portions of the trough-shaped activation region of the measurement volume 18 that are either side of the sides of the activation region where the neutron sources and the gamma ray detectors respectively lie.  Thus a secondary neutron moderator anticipating feature (f) is disclosed in this document.

Feature (g) is not quite disclosed; LKA8 discloses a vertical chute, so its "lower portion" is the exit point from the base of the chute, and hence it does not define a trough, as required by feature (g); consequentially feature (h) is not disclosed either.

The question regarding inventive step is thus whether the provision of all of these missing features into the apparatus of LKA8 would be obvious to a person skilled in the art.

I have found that CGK 5 - the use of conveyor belts to convey bulk materials through the activation region of bulk material analysers of the kind described in this application - is common general knowledge, as is LKA3 which discloses a conveyer rather than a chute.

Moreover, Ms Hustwick acknowledged at the hearing that inclusion of the conveyer belt per se was not inventive, and that its inclusion alone did not constitute the applicant's invention.  Hence both sides seem to agree that the use of a conveyer belt is not inventive, and its use would have been obvious to a person skilled in the art.

Regarding features (g) and (h), such a conveyer would not go in a vertical direction, but would be at least substantially horizontal.  For this reason, I believe that it would be sensible to think of an activation region containing a conveyer as having a "lower region" that is shaped the same as the base of the trough, as in the present application, rather than a lower region that is the base of the chute, as in LKA8.  Hence I believe that a person skilled in the art would provide features (g) and (h) directly and as a matter of course upon providing feature (b), and that no further thought or inventive step would be necessary in providing these features.  They would follow automatically from the re-orientation resulting from going from a chute to a conveyer. 

The distinction relied upon by Ms Hustwick to distinguish Claim 1 from LKA8 when a conveyer has been substituted for the chute is that further problems are incurred due to having to compensate for the irregular distribution of the bulk material on the conveyer.  These further problems, that would not have been rendered apparent until the substitution of the conveyer had been made, was, she alleged, solved by the applicant by changing the secondary neutron moderator disposition.

Professor Schweitzer supports her on this point:

"(c)  Although it was common general knowledge prior to 9 July 1993 that measurement accuracy of bulk samples could be improved by improving the uniformity of response in the measurement volume and that it could be achieved in bulk material analyzers of the type in which bulk material is transported within a rotationally symmetric measurement volume, such as a chute, through an activation region between at least one neutron source and at least one gamma-ray detector, as described in LKA8, the difference in the relative disposition of the bulk material within the respective activation regions of rotationally-symmetric-measurement-volume-type analyzers and conveyer-type analyzers is such that the disposition of neutron moderators to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of the cross-sectional profile of the activation region of a conveyer-type analyzer involves an inventive step."

Professor Schweitzer's qualifications to speak on common general knowledge were, as has already been mentioned, called into question by Mr Caine; in his declaration, he does not establish his qualifications to speak about common general knowledge in Australia, and I note that in the quoted paragraph he makes no specific claims to be speaking of common general knowledge in Australia.  He simply concludes that the claim "involves an inventive step", rather than providing information with which I might be able to justify such a conclusion.

Even accepting for the sake of argument that the common general knowledge referred to by Professor Schweitzer was common general knowledge in Australia before the priority date of the claims, simply stating that one alternative was common general knowledge does not in any way imply that the other alternative was not.  For these reasons, Professor Schweitzer's declaration carries little weight in this aspect.

Holmes also proffers an opinion on this issue, noting that:

"Whilst the invention as claimed in the opposed patent application refers to a conveyer type transport system the physics involved in controlling the neutron flux density irradiating the sample by the use of moderator material is the same.  The specific geometry of moderators required in each case will differ with the physical characteristics of the transport mechanism but in both cases the function of the moderator material is to control the neutron flux density distribution to improve the measurement response characteristics.  It is not inventive to apply this well known principle of physics to a closely analogous problem.  In any case, the application of the use of moderator material to the non-rotationally symmetric case is clearly shown in LKA3."

Regarding the statement that the same physics is involved with either a conveyer or a chute, it does not follow from this that an inventive step is lacking.  Although the person skilled in the art in this case is most certainly a physicist, it would not necessarily be obvious that the same physics is involved (and nowhere is this stated in the evidence), and neither is it necessarily the case that merely having the same physics involved automatically means an inventive step is lacking.  It would still have to be established that the analogous system using the same physics could be arrived at using no more than common general knowledge, and without exercise of the inventive faculty.

Ms Hustwick further discusses LKA8 in her written submissions as follows:

"Although LKA8 describes the placing of neutron-reflecting material adjacent the activation region for reflecting the neutrons into the activation region for improving the spatial uniformity of response by gamma-ray detectors to gamma-ray emission from different areas of a cross-sectional profile of the activation region in a bulk material analyzer, there is no reference to specifically disposing that material in such a way as to compensate for non-uniform distribution of the bulk material passing through the analyzer."

At the hearing there was agreement by the parties that "neutron-reflecting" has the same meaning as "neutron moderating".

The first sentence of this paragraph is significant; it contains an admission that LKA8 discloses a system that improves the spatial uniformity of response of the gamma-ray detectors to gamma-ray emission from different areas of a cross-sectional profile of the activation region.  Ms Hustwick appears to state that feature (i) is disclosed in LKA8; the feature that she has admitted is disclosed in LKA8 is word-for-word what is required to anticipate feature (i) of Claim 1.  Together with her admission that the use of a conveyer belt is not inventive in itself, she seems to effectively concede that the claimed combination is obvious.

Regarding her point of contention that there is no reference to specifically disposing that material in such a way as to compensate for non-uniform distribution of the bulk material passing through the analyzer, I have already stated that I am of the opinion that Claim 1 contains no such limitation.

She then continues:

"In any case, LKA8's bulk material analyser is of the chute-type…".

As I have already indicated, I do not consider this to be a relevant distinction; Ms Hustwick has already acknowledged that the provision of a conveyer instead of a chute is not inventive because conveyers are common general knowledge, and even without this acknowledgement, I believe that this fact would have been satisfactorily established.  On the basis of this reasoning it would appear that Claim 1 is lacking an inventive step in light of LKA8.

Identifying the "true nature of the problem"

However at the hearing Ms Hustwick suggested another approach.  She alleged that problem recognition was part of what prompted the invention, and that the inventor picked up on a specific means of overcoming the problem, and a specific way of putting it into effect, namely, disposing the neutron moderators.  From her written submissions:

"It has been pointed out that the very statement of a problem may make the solution obvious, but the perception of the nature of the problem, in such a case, may have been inventive (see eg "Cornish on Intellectual Property", 2^nd ed, 1989, paragraph 5-027 on page 129 and Leonardis v Sartas No 1 Pty Ltd and Anor (1996) 35 IPR 23 at 44-45".

Support for this can also be found in Wellcome Foundation Pty Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 281:

"the perception of the true nature of the problem was the inventive step which, once taken, revealed that straightforward experiments will provide the solution."

Thus, if an inventive step lies in the identification of the true nature of the problem, it is irrelevant whether there is any subsequent inventive step in providing a solution to the problem.

In the present situation, it is alleged by Ms Hustwick that the exact disposition of the neutron moderators to be utilised can be found by simple trial and error once it has been realised that improved measurement accuracy can be achieved in a conveyer-type bulk material analyser with unevenly distributed material by varying the disposition of the neutron moderators.

It is well established law that the applicant in its complete specification must make clear the "nature of the invention"; in Samuel Taylor Pty Ltd v S.A. Brush Co. Ltd (1950) 83 CLR 617, Abbott J refers to Lindley LJ in Edison & Swan Electric Light Co. v Holland (1889) 6 RPC 243, at p 280:

"On the one hand, the Patentee must make the nature of his invention, and how to perform it, clear and intelligible".

When the inventive step arises from identifying the true nature of the problem, this must be clear and intelligible from the specification.  In Winner v Ammar Holdings Pty Ltd., 24 IPR 137 at page 141, the patent failed because, according to Heerey J,

"in the present case there is no suggestion in the specification itself that discovery of the problem involved an inventive step."

It seems clear that before I can find that the present application comprises an inventive step in identifying the true nature of the problem, it must be clear from the specification that this is so.

In her written submissions, Ms Hustwick claims:

"The present invention is based upon the discovery that enhanced measurement accuracy is achieved by so disposing the neutron moderators as to improve the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region." (Ms Hustwick's emphasis)

I find it difficult to accept this assertion.

Firstly, the specification is devoid of any statement that the invention is based upon any kind of a "discovery."  The specification contains a number of ways of improving measurement accuracy by improving the spatial uniformity of response of the detector(s) to gamma-ray emission, which are summarised at paragraph 13 of the Clancy declaration.  There is no allegation or indication in the specification, either before or after amendment, that any of these improvements came about as the result of any kind of discovery.  I do not consider that a discovery is made "clear and intelligible" in the specification.

There is even less indication that a discovery was made pertaining to the disposition of the neutron moderators in particular in order to achieve the improvement.  Indeed, the specification includes two other "aspects" of the invention, at page 3 line 24 to page 4 line 3 and page 4 lines 4 to 22, respectively, each of which have differently disposed primary neutron moderators and which make no mention of the secondary neutron moderator whatsoever.  Although neither of these "aspects" were claimed by the time the application was accepted, it seems unlikely that an applicant, having made and claimed a "discovery," would then go and relate two further "aspects" of its invention that made no use of its "discovery" at all.  It is of course possible that the inventor has made three discoveries, each corresponding to one of the aspects of the invention, but then the expectation would be that, having made three discoveries, this would receive recognition in the specification. 

Ms Hustwick then goes on to say:

"We submit that the opposed patent application does explain, on page 2, that improved measurement accuracy is achieved in bulk material analyzers of the type in which bulk material is transported on a conveyer belt through an activation region between at least one neutron source and at least one gamma-ray detector by disposing neutron moderators to improve spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region." (Ms Hustwick's emphasis)

Page 2 of the specification does not seem to me to draw any particular connection between the disposition of the neutron moderators and the spatial uniformity of response by the gamma-ray detector(s) to gamma-ray emission from different areas of a cross-sectional profile of the activation region.  The instructions contained in this part of the specification fail to exemplify any particular feature or features over any of the others, so I would interpret them as being in relation to disposing each feature of the combination which comprises the apparatus to improve spatial uniformity of response.  I am satisfied on the basis of the various pieces of evidence provided that the disposition of the neutron moderators is at least in part responsible for the improvement, and that a person skilled in the art would realise that this is so.  However, there are other features in Claim 1 that also improve the spatial uniformity of response, such as the disposition in the analyzer of the neutron source(s) and the gamma-ray detector(s).  I find nothing on page 2 of the specification exemplifying the disposition of the neutron moderators, and nothing to indicate that they should be considered as the crux of the invention rather than any other features of the analyzer.

Ms Hustwick then concludes:

"Armed with the teaching of the present application (ie that this feature will accomplish the objective of enhancing measurement accuracy), it is merely a matter of engineering design, without undue experimentation, for the skilled person to determine how the neutron moderators are disposed to achieve the desired uniformity of response."

I do not interpret  the specification to be directing the person skilled in the art to determine, by trial and error without undue experimentation, a particular configuration or disposition of the neutron moderators to achieve the desired uniformity of response.  The only part of the specification that deals in any way with the disposition of the neutron moderators is the relevant phrases in the consistory clauses and the corresponding claims, and there are no instructions anywhere that these dispositions are to be further modified and optimised.  Although it is to be expected that a person skilled in the art who is actually performing the invention would in fact vary the disposition of the neutron moderators, as well as each of the other features of Claim 1, in order to attempt to uncover the particular configuration of features that will achieve the best results, this is not the same as saying that the specification discloses that the invention consists of varying the disposition of the neutron moderators, and much less that the applicant has made any kind of a discovery of this nature.

Experimenting to achieve optimal results is explicitly mentioned in the specification, on page 8 at lines 6 to 9 in relation to selecting the number of neutron sources and the number of gamma-ray detectors, and at lines 10 to 17 in relation to selecting their dispositions.  There is thus a clear teaching in the specification for a person skilled in the art to experiment to determine the optimal number and disposition of the neutron sources and gamma-ray detectors.  Whilst this would not prohibit a person skilled in the art from experimenting with other features of the invention, including the dispositions of the moderators, in order to achieve optimal results, it is apparent that  the invention that is described in the specification contemplates experimenting with the number and the distribution of the gamma-ray detectors and the neutron sources, but not with varying the disposition of the neutron moderators.

The upshot is that, in my view, the allegation that the invention lies in identifying the real nature of the problem fails for the same reasons as in Winner & Anor v Ammar Holdings Pty Ltd (supra).

However, even accepting for the sake of argument that the inventive step in the present case lies in problem recognition as alleged by Ms Hustwick, the common general knowledge itself makes the problem known, as well as providing a path towards a solution.

In particular, based on the information represented by items CGK 1, CGK 4 and CGK 7, a person skilled in the art in attempting to improve measurement accuracy would automatically consider improving the spatial uniformity of response by the gamma-ray detectors, and would be aware that secondary neutron moderator geometry can be used to adjust the neutron flux density in the activation region and hence improve the spatial uniformity of the response of the detectors.

Hence in the present case, the nature of the problem itself is obvious.  From Winner & Anor v Ammar Holdings Pty Ltd, (supra):

"In my view it is sufficient if the workman or user of the article would as a matter of observation and use himself or herself recognise the defect which it is alleged the invention overcomes to call in question the issue of obviousness."

The relevant common general knowledge in the present case is clearly indicative of the workman in the art of the present invention being capable of recognising the defect that the invention overcomes, and more, that the common general knowledge clearly instructs that measurement accuracy can be increased by the method that Ms Hustwick alleges that the present invention teaches.

Hence I find that Claim 1 lacks an inventive step in light of LKA8 when considered together with the common general knowledge.  In line with my comments earlier regarding the similarity of the disclosures of documents LKA4 to 7, I also find that Claim 1 similarly lacks an inventive step in light of each of those documents.

Inventive step of Claims 2 to 11

Dependent Claims 2, 5, 6 and 7 relate to further improvements in the distributions of the neutron moderators in order to enhance the spatial uniformity of the response.  Items CGK 1, CGK 4 and CGK 7 indicate that a person skilled in the art, in seeking to improve a bulk material analyzer of the present type, would certainly consider experimenting with the neutron moderator geometry in order to bring about their desired improvement.  The question then is whether such a person, beginning with the arrangement of any of the documents, would come up with the precise arrangements set out in these claims.

As already mentioned, at the hearing Ms Hustwick submitted that:

"Armed with the teaching of the present application … it is merely a matter of engineering design, without undue experimentation, for the skilled person to determine how the neutron moderators are disposed to achieve the desired uniformity of response."

While I have previously found fault with this statement, what can be gleaned from it is that the applicant concedes that the particular dispositions of the neutron moderators arrived at by the applicant were not in themselves inventive because, according to the applicant, it was the realisation behind them that was allegedly inventive.

If it is indeed merely a matter of engineering design, without undue experimentation, that is required in order to arrive at the claimed disposition of the neutron moderators, then I am satisfied that a person skilled in the art would arrive at the arrangement outlined in Claims 2, 5, 6 and 7 without an inventive step.  This premise seems to be accepted by both parties.

Appended Claims 3, 4 and 8 relate to the dispositions and numbers of the neutron source(s) and gamma-ray detector(s).  Items CGK 2 and CGK 3 are relevant here, and once again, a person skilled in the art, in seeking to improve a bulk material analyzer of the present type, would certainly consider experimenting with the dispositions and numbers of the neutron source(s) and gamma-ray detector(s) in order to bring about their desired improvement.  The same question as before must be asked, namely, whether such a person, beginning with the arrangement disclosed in the documents, would come up with the precise arrangements set out in these claims.

Clancy indicates that the features related by these claims are merely matters of design choice, well within the common general knowledge within the art.  I find this evidence persuasive, firstly because no contrary evidence has been given, and secondly because the case for the applicant rested on invention relating to identifying the true nature of the problem, and not on the arrangements set out in these claims being anything other than obvious.

Hence I find that appended Claims 2-10 are lacking an inventive step in light of LKA3 to 9.

Similarly I am not aware of anything in what is defined by Claim 11 (an omnibus claim) that could be considered to involve an inventive step and accordingly I also find that Claim 11 is lacking an inventive step in light of LKA3 to 9.

MANNER OF MANUFACTURE

While manner of manufacture was made a ground of opposition on the basis that the invention is a mere collocation, this was not pursued at the hearing.  In my view the invention is clearly both a patentable combination rather than a mere collocation and, as it is an apparatus, is a manner of manufacture.

Accordingly I find that the invention is a manner of manufacture as required by paragraph 18(1)(a) of the Patents Act 1990.

CONCLUSION

I have found that the opposition succeeds on the ground of lack of novelty in respect of Claims 1, 9 and 10 and lack of an inventive step in respect of all claims, but is unsuccessful on the other grounds of non-compliance with section 40 and section 18(1)(a).  However, I believe that there might be patentable matter disclosed in the specification, and that the specification may be amenable to being amended to overcome the shortcomings I have found in it.  Consequently I allow Gamma-Metrics 60 days from the date of this decision to propose amendments to that effect.

COSTS

In accordance with the general principle that costs follow the event, I award costs against Gamma-Metrics.

E. J. Knock

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Maddern & Associates, Adelaide

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne