Henry Frank Jarvis v John Tom Arthur Doman

[1985] APO 22

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 522527 for a patent by HENRY FRANK JARVIS - and - In the Matter of Section 59 Opposition thereto by JOHN TOM ARTHUR DOMAN.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent Application No. 522527 entitled "Agricultural Shares" is based on two provisional specifications. Acceptance of the application was notified in the Official Journal of 10 June, 1982.

Notice of opposition under section 59 was lodged on 7 September, 1982 and the matter was heard in the Perth session July 1984. On 7 September, 1984 a decision was issued finding that of the nine claims constituting the statement of claims, the first seven were prior published by use. The decision also expressed the following view:

"Insofar as claim 8 is concerned, there is no evidence of publication thereof, and no argument concerning the novelty of this claim was advanced at the hearing. Consequently in accordance with the principles laid down in BOC International Ltd.'s Application (1980) RPC 122, this is not a matter which I will consider for the purposes of this decision."

The applicant was allowed 60 days from the date of the decision in which to request amendment of the complete specification (see Jarvis v. Doman 3 IPR 300). The applicant subsequently lodged a request under section 77 to amend his complete specification and those amendments have been allowed and incorporated into the specification. The present hearing arises in relation to the amended specification as the opponent has sought to be heard before the fate of the application is finally determined.

At the hearing, Mr. R.C. Wray, patent attorney, of R.C. Wray & Associates, Perth, represented the opponent and Mr. K. Lord, patent attorney, of Kelvin Lord & Company, West Perth, represented the applicant.

The Amended Specification

The amendments have had the effect of deleting claims I to 7 as accepted and substituting new claims incorporating the features of claim 8 as accepted. Consequential amendments have been made to the description. Claim 1 as amended reads as follows:

"An unworn agricultural share formed of metal having a front and rear and two sides converging together to form a point and a mounting aperture located remote from the point, wherein a first, central protective metal length is secured hy welding to the front of the share extending rearwardly from the point substantially equidistant from the sides of the point and in alignment with the mounting aperture, and second and third lateral protective metal lengths each have a forward end and inner and outer edges extending rearwardly from said forward end are secured by welding to the front of the share, wherein each said lateral protective metal length extends rearwardly from adjacent the point, the forward end of each lateral protective metal length is located adjacent to a side of the central protective metal length and is shaped so as to be substantially parallel with the adjacent side of the centre protective metal length, the outer edge of each lateral protective metal length extends generally parallel to a respective side of the share and said outer edges of the lateral protective metal lengths are disposed at least as far outwardly as said respective sides of the share, the inner edge of each lateral protective metal length diverges away from an intermediate point on a side of the central protective metal length such that there is a depression between the central protective metal length and the inner edge of each lateral protective metal length, said centre protective metal length is fixed in position such that its position cannot be adjusted without first breaking the weld by which it is secured to the front of the share and the protective metal lengths are formed of harder material than the metal of the snare itself."

The underlined expression sets out the material that distinguishes this claim from claim 1 as accepted.

Novelty

The decision of 7 September, 1984 found that shares constructed in accordance with the claim set out above except for the underlined feature had been publicly used before the priority date of that claim. The question to be determined here is whether those shares were so close in construction to the share defined by present claim 1 that a valid patent could not possibly be sealed on that claim.

Mr. Wray submitted that the invention defined by claim 1 is "so obvious" that a valid patent could not issue. In support of this submission he referred to hard metal bit inserts, hard facing of bulldozer blades, hard facing of lawn mower blades and common general knowledge in several arts. Finally, he requested refusal of the application. Mr. Lord responded by saying that we are not here concerned with bulldozers or other machinery, but a specific type of plough share. In any case, he argued, Mr. Wray hardly qualifies as a skilled addressee in the relevant arts, there was limited publication of the original share types, and there is no evidence from any person skilled in any relevant art relating to the invention claimed.

It is the practice of the Office to use the test for novelty as set out by Dixon J. in Griffin v. Isaacs (1942) AOJP 739 at page 740:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the differences as giving novelty."

This test is, in a sense, a negative one. Thus it is only where the variations make no substantial contribution or involve no ingenuity or inventive step, or there is no merit difference that it is impossible to treat the differences as giving novelty. The proper and full determination of these points requires, at times, the knowledge of how the invention came to be developed : this is not, of course, universally true, and at other times such knowledge may be irrelevant. In my view, however, such knowledge is essential in the present case. It would be all too easy to take the view that as everyone knows hard materials wear less rapidly than soft materials, it is a self-evident truth that there can be no novelty in making the metal reinforcements on the share of harder metal than that of the share itself, and this, of course, is the essence of Mr. Wray's submission.

The background to development of the present invention is set out by the applicant Mr. Jarvis in his evidence-in-answer. This aspect of his evidence is uncontradicted. It appears in the following terms:

"Agricultural shares of the general type with which the present invention is concerned have been in use for between thirty and forty years in Australia. Initially, the shares were found to be quite satisfactory since the paddocks being cropped only had an area of about 20 acres and the cultivating machinery in use had only about 10 shares per machine.

Some of the cultivating machines were horse drawn. Even when tractor drawn, the machines only travelled at about 2 to 3 miles per hour in use. Using horse traction, the rate of travel was much slower.

As large cultivating machines began to be introduced the rate of wear of the shares started to become a problem. This was because broad acre farming became established which required larger machines capable of travelling at higher speeds whilst working. The large machines each required more shares. The continuation of increased rate of travel and increased number of shares per machine resulted in a reduction in the useful life of the shares on the one hand and an increase in the amount of down time required to replace a set of shares on a machine. Nowadays, machines travel at speeds of 8-10 miles per hour and each machine may have from 80-320 shares.

The problems with shares outlined above started to become serious about eight years ago. Within the last eight years there have been a number of proposals for modifying agricultural shares to increase the useful life of the agricultural shares but most of these proved ineffective. In particular, they were not cost effective. This was because the increased useful life obtained did not justify the expense of carrying out the modification. Normally, a set of unmodified shares will last for 200-220 acres and then the entire set has to be replaced. When a farm has an arable area of 5,000-10,000 acres this means that the shares on a cultivating machine have to be changed 25-50 times to treat the whole arable area. Changing a set of shares on a modern cultivating machine is a time consuming and difficult exercise, particularly after dark or in poor weather.

During 1979 and early 1980 I conceived the idea of a modified unworn agricultural share which would be reinforced hy lengths of metal welded to the front face of the share."

I draw attention in particular to the underlined portion (my underlining).

The evidence also shows that the early modified shares using reinforcing metal lengths of the same or lesser hardness than the sharp body did not fully overcome the prior art problems in that the increased working life was too small - this was because the leading edges of the share rounded off quickly and the share could not then penetrate the ground as it should. Thus these earlier shares did not prove cost effective.

Subsequently Mr. Jarvis experimented with his invention by using various steels of greater hardness than that of the share body. This steel is, of course, more expensive generally than the softer steels. He then found that these new shares "have a satisfactory cost effective working life and it has been found that the leading edges do not round off".

Clearly, having regard to these results, and on comparison of the share presently claimed with that used publicly before the priority date it could not be said that there was no substantial contribution made to the working of the share as a result of the variations : nor could it be said that the merit of the two considered as inventions was the same. As to the question of whether the variations involve any ingenuity or inventive step, it seems to me that it was not at all clear that the share reinforced with the harder metal would be cost effective while the other would not. Therefore I cannot say that the variations involve no ingenuity or no inventive step and I reject Mr. Wray's submission. As to the quantum of invention, this is a matter for evidence, and while the claimed variation well may have been an obvious thing to do, there is no such evidence, nor can there be, because of the limited publication of the original shares.

Conclusion

I have found that claim 1 (and its appended claims) as amended cannot be said to lack novelty over the shares previously used. Consequently, subject to appeal, I will direct this application to sealing. I award costs against the opponent.

(J L Roveta)Supervising Examiner of Patents

12 SEP 1985