High Tech Auto Tools Pty Ltd v Ferocem Pty Ltd
[1994] APO 3
•10 January 1994
official notice
decision of a delegate of the commissioner of patents
Petty Patent : No.621027 in the name of HIGH TECH AUTO
TOOLS PTY LTD
Title: A method of cleaning an electronic fuel
injector
Action : Application for the grant of an
extension of term under section 69 of
the Patents Act 1990 and notice filed
under section 28(1) by FEROCEM PTY LTD
Decision: Issued . Specification does not comply with subsections 40(2) and 40(3); Claim 1 is not novel and does not
involve an inventive step; Priority dates determined; Patentee given 60 days to amend.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Application for the grant of an extension of term under section 69 of the Patents Act 1990 of Petty Patent No 621027
in the name of High Tech Auto Tools Pty Ltd and notice filed
under section 28(1) by Ferocem Pty Ltd.
background
Petty Patent application No 83484/91 was filed by High Tech Auto Tools Pty Ltd (hereinafter referred to as High Tech) on 29 August 1991 being a divisional application made by virtue of subsection 39(1) of application No 621447 (47783/90) lodged 8 January 1990 which in turn was a complete specification received after application No PJ2727, accompanied by a provisional specification, and lodged on 14 February 1989. Following acceptance, the Petty Patent application was sealed on 15 January 1992 as Petty Patent No 621027. On 11 December 1992 High Tech applied for a grant of an extension of term of Petty Patent No 621027 and on 15 December 1992 a notice was filed under section 28(1) of the Patents Act 1990 by Ferocem Pty Ltd (hereinafter referred to as Ferocem).
The parties failed to reach agreement on a date for the hearing before the Commissioner in respect of the extension of term of the Petty Patent and, following a hearing on 24 September 1993 to decide the matter, the delegate of the Commissioner of Patents found that a hearing into the extension of term of Petty Patent No 621027 should proceed before the Commissioner and not await the outcome of a copending court action.
Subsequent to the Commissioner's decision which issued on 1 October 1993 setting the date of the hearing into the extension of term of petty patent No 621027 as 22 November 1993, a letter was received from Davies Collison Cave, dated 15 October 1993, advising that the Commissioner's decision would be appealed and seeking confirmation that the hearing set down for 22 November 1993 would be suspended. Davies Collison Cave were subsequently advised that for the Commissioner to adjourn the hearing, not only would a copy of the Notice of Appeal be required but also the Commissioner would need to be served with a court order staying the decision of 1 October 1993. In a letter sent by facsimile transmission on 18 November 1993, Davies Collison Cave advised that their client had decided not to appeal against the Commissioner's decision to hold the hearing into the extension of the term of the petty patent No 621027.
The matter came to hearing in Canberra on 22 November 1993. The patentee decided to rely on written submissions provided by Mr John Walsh, patent attorney, of Davies Collison Cave, while the notifier was represented by Mr Fraser Old, patent attorney, of Spruson & Ferguson.
THE PETTY PATENT SPECIFICATION
The specification commences by stating that:
"The present invention relates to an apparatus and method for cleaning electronic fuel injectors, and other electronic controlled injections (sic) such as air injectors."
Previous prior art methods of cleaning electronic fuel injectors and the respective disadvantages thereof are then discussed followed by what I take to be an object statement which reads:
"The present invention seeks to ameliorate the disadvantage by
providing a method and apparatus for cleaning injectors which
allows readily flushing out of the filter basket of the
injector."
After this statement is the consistory statement which corresponds to claim 1.
The invention is then described with reference to the accompanying drawings, with each drawing stated to be another embodiment of the invention.
The claims then follow which read:
" 1. A method of cleaning an electronic fuel injector
comprising the steps of supporting an electronic fuel
injector in an ultrasonic bath of cleaning fluid such that
at least the outlet tip is immersed, resonating said bath
at a frequency between 10 and 50kHz and pulsing said
injector between 1 and 40 mSec at a R.P.M. of between 50-
15,000 whereby the cleaning fluid, while being resonated
by the ultrasonics, flows in the reverse direction through
the injector as a result of the interaction of the
ultrasonics and the pulsing of the injector.
2. A method of cleaning an electronic fuel injector according
to claim 1 wherein the ultrasonic bath has its transducer
positioned centrally and wherein each injector is aligned
with the epicentre of the transducer.
3. A method of cleaning an electronic fuel injector according
to any one of the preceding claims substantially as
hereinbefore described with reference to the accompanying
drawings."
THE NOTICE UNDER SECTION 28(1)
The notice reads:
" We Ferocem Pty Limited, of ...., hereby give notice under
Section 28(1) in relation to Patent Application Serial
No 621027 (83484/91).
1. We assert that the petty patent is invalid on the following
grounds:
(a) that the invention, so far as claimed in any claim, is not a
manner of manufacture within the meaning of Section 6 of the
Statute of monopolies and does not comply with Section
18(1)(a);
(b) that the invention, so far as claimed in any claim, was, when
compared to the prior art base as it existed before the
priority date of that claim, not novel and does not comply
with Section 19(1)(b)(i)[sic];
(c) that the invention, so far as claimed in any claim, when
compared with the prior art base as it existed before the
priority date of that claim, did not involve an inventive
step and does not comply with Section 18(1)(b)(ii); and
(d) that the complete specification does not comply with
sub-Sections 40(2) or (3).
2. REASONS
A. Claims:
1. Claim 1 as granted of Petty Patent No. 621,027 is directed to
a method comprising the following:
(1) supporting an electronic fuel injector in an ultrasonic
bath of cleaning fluid,
(1A) such that at least the outlet tip is immersed,
(2) resonating the bath,
(2A) at a frequency of between 10 and 50 kHz,
(3) and pulsing the injector,
(3A) between 1.0 and 40 mSec,
(3B) at a R.P.M. of between 50-15,000,
(4) whereby the cleaning fluid,
(4A) while being resonated by the ultrasonics,
(4B) flows in the reverse direction through the injector,
(4C) as a result of the interaction of the ultrasonics,
(4D) and the pulsing of the injector.
2. Claim 2 as granted depends from claim 1 and is directed to a
method further comprising the following:
(5A) wherein the ultrasonic bath has its transducer
positioned centrally, and
(5B) wherein each injector is aligned with the epicentre of
the transducer.
3. Claim 3 as granted depends from claim 1 or 2 and is directed
to a method as described with reference to the accompanying
drawings, that is all of Figs. 1, 2, 3 and 4 (being Fig.5 as
originally lodged).
B. PRIORITY DATE
(a) The provisional specification of "parent" Application
No. PJ2727 lodged 14 February 1989 disclosed at page 3,
third last line "The injector 1 is pulsed at 1.0-4.0
mSec." Claim 1, step 3A above claims pulsing the
injector at "between 1.0 and 40 mSec". Accordingly,
the scope of claim 1 is broader than the disclosure of
the provisional specification and claim 1, is not
fairly based on the disclosure of the provisional
specification. Similar considerations apply in
relation to claims 2 and 3.
(b) The complete specification of parent Application No.
47783/90 as lodged 8 January 1990 included only four
pages of description. A fifth page of description was
lodged 10 January 1990, made the subject of an
application under Section 77 lodged 7 February 1990 and
which was allowed 14 March 1990.
(c) Petty Patent Application No. 83484/91 was lodged 29/8/91
as a divisional of Application No. 47783/90.
(d) The priority date of the claims is accordingly 8 January
1990 or 10 January 1990 (Section 114 and Regulation 3.14
1990 Act).
C. DETAILS
1. Ground (a) Manner of Manufacture
1. Claim 1 is directed to steps 1, 1A, 2A, 3, 3A, and 3B above
each of which is known. The claim is prima facie limited by
the result of step 4 (including steps 4A-4D). However, this
limit by result includes all ways of achieving the result.
The claim is therefore directed to a scientific principle not
a manner of manufacture.
2. Further, the object of the invention as expressed at page 1,
lines 24-27 is to provide a method "which allows readily
flushing out of the filter basket of the injector". A
practical demonstration to be conducted at the Hearing of the
petty patent's own apparatus commercially available in
Australia and operating in accordance with the claimed method
will show a reverse flow amounting to a minor dribble
insufficient to flush the filter basket. In this connection,
bear in mind that debris deposited on the filter basket
impact on same through the injector inlet at some speed as
a consequence of the pressure applied to, and flow of, the
engine fuel. See also the enclosed declaration of J.J.
McCaffrey in this connection. That the claim includes
within its scope, arrangements which do not achieve the
object of the invention is generally inconvenient and a hurt
of trade and thus not a manner of manufacture within Section
6 of the Statute of Monopolies.
Each of claims 2 and 3 is likewise flawed.
2. Grounds (b) Novelty and (c) Inventive Step.
The invention defined in each of the claims is published,
otherwise not novel, and lacking an inventive step by reason
of the following matters:
(a) The sale and use in Australia before 14 February 1989
and January 1990 of the "New Age EFI 2001" cleaner.
(b) The advertising and offering for sale in Australia
before 14 February 1989 and January 1990 of the "New
Age EFI 2001" cleaner.
(c) The use in Australia before 14 February 1989 and January
1990 of the "New Age EFI 2001" cleaner together with
ultrasonic baths.
(d) The uses before 14 February 1989 and January 1990 of
pulsing injectors in ultrasonic baths.
In relation to (a)-(d) above see the enclosed declarations:
1. J.J. McCaffrey dated 4th December 1992.
2. P.L. Ginley dated 7th December 1992.
3. F. Dietsche dated 7th December 1992.
4. R.H. O'Donnell dated 4th December 1992, and
5. M. Doehrmann dated 4th December 1992
which annexed a copy of the following Affidavits
5A. F. Dietsche dated 16 April 1992.
5B. K.A. Greenfield dated 16 April 1992, and
5C. M. Payne dated 16 April 1992.
3. Ground (d) Section 40
(a) Claim 1 is not clear or fairly based in that the term
"cleaning fluid" embraces both liquids and gases but only
cleaning liquids are disclosed.
(b) Because of single point injection systems no clear
meaning can be ascribed to the term "R.P.M."
(c) The resonating of the bath is not said to be ultrasonic
and thus no clear meaning can be given to the range 10-
50kHz since a frequency of 10 Hz is not ultrasonic and is
not disclosed. It is not clear from claim 1 whether the
bath is resonated at a frequency of between 10 Hz and 50
kHz or a frequency of between 10 kHz and 50 kHz since the
resonating itself is not said to be ultrasonic. It is
noted that an ultrasonic bath can be resonated at
frequencies other than ultrasonic frequencies.
(d) The pulsing of an injector for 40 mSec at a frequency
equivalent to 15000 R.P.M. for a multipoint injection
system is meaningless since the pulse or ON time exceeds
the period.
(e) Because the period of the ultrasonic vibration is so much
shorter than the period of the injector pulsing there is
no interaction therebetween.
(f) Claim 1 is not clear in that the orientation of the
injector in the bath is not specified, only that the
injector outlet tip is immersed. If the injector is
fully immersed in the bath and aligned with the
transducer with the inlet facing towards, and the outlet
extending away from, the transducer then the alleged
interaction of the ultrasonics and the pulsing of the
injector will move the cleaning liquid in the forward
direction. This is the opposite direction to the claimed
"reverse direction".
(g) Claim 2 suffers from the same difficulty since the
direction of the alignment is specified but not the
sense. Thus, the claim includes within its scope
alignment but with the inlet adjacent the transducer and
the outlet facing away from the transducer. Again under
these conditions flow of the cleaning liquid is in the
forward, not the reverse direction.
(h) In claim 1, the ultrasonic bath is not required to have a
transducer, it being the bath (or container) itself which
is resonated. This is not fairly based since only the
use of a transducer is disclosed.
(i) Further claim 2 refers to "wherein the ultrasonic bath
has its transducer", there being no antecedent for this
term.
(j) It is not clear from the words "pulsing said injector
between 1.0 and 40 mSec" means repeatedly applying a
pulse of duration from 1 to 40 mSec or applying pulses of
some other nature for a duration of from 1 to 40 mSec.
(k) Claim 3 is a method as described with reference to all
the drawings, yet each of the drawings Figs. 1-4
illustrates a different embodiment. Accordingly,
claim 3 is ambiguous.
EVIDENCE
The notifier submitted written evidence in the form of statutory
declarations provided by the following:
John Joseph McCaffrey - Senior Research and Development
Engineer and Consulting Engineer (Dated
4 December 1992).
Patrick Leo Ginley - Company Director (Dated 7 December 1992).
Frank Dietsche - Proprietor of Fuel Injector Servicing
Firm (Dated 7 December 1992).
Robert Henry O'Donnell - Director of Fuel Injector Servicing
Company (Dated 4 December 1992).
Margrit Doehrmann - Solicitor (Dated 4 December 1992).
Annexed to Margrit Doehrmann's statutory declaration were Affidavits provided by:
Frank Deitsche - (Dated 16 April 1992).
Kevin Alan Greenfield - Technical Manager (Dated 16 April 1992).
Mark Payne - Proprietor of Fuel Injection Service
Business (Dated 16 April 1992).
The patentee submitted written evidence in the form of statutory declarations provided by the following:
Trevor Tansley - Associate Professor of Physics (Dated
7 May 1993).
Paul Julier - Managing Director (Dated 11 May 1993).
THE DECISION
Section 40
The patentee did not provide any written submissions for the hearing specifically in relation to this ground. At the hearing, Mr Old provided submissions with respect to the details purporting to substantiate the various grounds and while he dealt with the question of priority dates prior to considering section 40 generally, I will deal with the section 40 matters first.
With regard to the various points put forward by Mr. Old on the section 40 matters, with respect to the Notice, I have considered each point in the order raised in the Notice and reached certain conclusions, which I have explained where necessary as follows:
(a) While I agree that the term "fluid" encompasses gases and
liquids, given that claim 1 calls for at least the outlet tip
to be "immersed" in the bath of cleaning fluid and the
cleaning fluid to be "resonated by the ultrasonics" I do not
agree that a man skilled in the art would consider "cleaning
fluid" to be anything other than "cleaning liquid" and since
examples of cleaning liquids have been disclosed I am of the
opinion that the use of the term "cleaning fluid" is fairly
based.
(b) The term "R.P.M." presents me with some difficulty. It is
common ground that it usually stands for "revolutions per
minute" but, as far as I can ascertain, no part of the method
claimed utilises components that actually revolve. Mr.
Tansley explains in his declaration that ignition systems
require the existence of an ignition (rpm) signal to
determine and control the injector pulsing width and
frequency and that the automotive trade uses "R.P.M." to
relate to pulse frequency. Mr. McCaffrey on the other hand
in his declaration states that the term "R.P.M." has no clear
meaning in relation to fuel injectors because of the use of
both multi-point and single point injection systems and goes
on to say that for single point injection systems, the rate
at which an activity in relation to a particular cylinder
happens is not a clear function of the engine speed because
an engine may have various numbers of cylinders. What
neither Mr. Tansley or Mr. McCaffrey has explained and which
the patent in suit is similarly silent on is why there should
be any relationship between the speed an engine may run and
the method of cleaning given that the cleaning method, as I
understand it, takes place away from the engine from which
the injectors being cleaned may have been taken. Certainly,
if an actual engine is used to provide an ignition signal
corresponding to a specific engine R.P.M. this fact is not
made clear in the description. I therefore consider, in the
light of an absence of any definition or explanation in the
description and the differing opinions of Mr. Tansley and Mr.
McCaffrey, the view that no clear meaning can be ascribed
to the term "R.P.M." has merit. As a result, the bounds of
the claim, with respect to this integer, are rendered
uncertain.
(c) Claim 1 calls for the bath to be resonated at a frequency of
between 10 and 50 kHz and the question arises whether what is
meant is between 10 Hz and 50kHz or between 10kHz and 50 kHz.
The question is compounded since the bath is said to be an
ultrasonic bath and while 10 Hz is clearly not ultrasonic,
as acknowledged by the patentee's declarant, Mr. Tansley,
neither is 10 kHz. Mr. Tansley declares that the term
"ultrasonic" commonly refers to the use of frequencies
greater than 20 kHz. I therefore agree that the bounds
of the claim are also unclear as to the range of the
resonating frequency.
(d) In accordance with claim 1, the injector is pulsed at
between 1 and 40 mSec at an R.P.M. of between 50-15,000.
Leaving aside the problem discussed above in paragraph (b),
the ranges 1 - 40 mSec and 50-15000 R.P.M. are not
reconcilable, without a further qualifier, in that at the
higher figures of the ranges, for example, the pulse time at
40 mSec exceeds the 15000 R.P.M. time of 4 mSec by a factor
of 10:1. Here again, because the range figures are not
reconcilable, the bounds of the claim with respect to the
range figures are unclear.
(e) Claim 1 also calls for the cleaning fluid, while being
resonated by the ultrasonics, to flow "in the reverse
direction through the injector as a result of the interaction
of the ultrasonics and the pulsing of the injector". The
proposition has been put forward on behalf of the notifier
that at 30kHz, the period of vibration of the cleaning fluid
is of the order of 0.03 mSec and "it is impossible to
conceive that there is any interaction between the
ultrasonics and the pulsing of the injector". While I agree
that there may be a mismatch between the relevant time
periods, i.e that the period of ultrasonic vibration is so
much shorter than the period of injector pulsing, I do not
consider that the claim requires the two time periods to
coincide. In any case utility, or the lack of it, is not a
question I need to consider since it is not a notifiable
ground.
(f) The notifier considers that claim 1 is not clear because the
orientation of the injector in the bath is not specified. It
is contended that under a certain orientation the pulsing of
the injector will move the cleaning liquid in the forward
direction which is opposite to the claimed "reverse
direction". While this may be so, the claim ends with the
phrase "whereby the cleaning fluid, while being resonated by
the ultrasonics, flows in the reverse direction through the
injector as a result of the interaction of the ultrasonics
and the pulsing of the injector". In my view this phrase is,
in effect, defining the monopoly sought by reference to a
desired result. Following No-Fume Ltd. v Frank Pitchford and
Co. Ltd. (1935) 52 RPC 231 this is a permissible form of
drafting and I see no problem with it.
(g) The notifier considers that claim 2 suffers from the same
problem as enunciated in (f) above, but here again, for the
reason I have given in (f), I see no problem with this aspect
of the claim.
(h) It is submitted by the notifier that in claim 1, the
ultrasonic bath is not required to have a transducer, it
being the bath (or container) itself which is resonated.
Considering the second part of this submission first, I do
not agree that it is only the bath (container) itself which
is required to be resonated. The claim states: "...supporting an ... injector in an ultrasonic bath of
cleaning fluid (my emphasis) ... resonating said bath ...
whereby the cleaning fluid while being resonated by the
ultrasonics (again my emphasis) ...". In my opinion the
addressee, in reading the context of the claim as a whole
would conclude it is the intention that the cleaning
fluid contained in the bath be resonated rather than
the bath itself.
With regard to the first part of the submission, I agree that
claim 1 does not require that the cleaning fluid be resonated
through the medium of a transducer but, given that the use of
transducers is only disclosed by way of embodiments of
invention performance, I am inclined to the view, as claim 1
mirrors the consistory statement, the patentee does not need
to be constrained by limiting the source of resonance solely
to transducers.
(i) I agree that claim 2 refers to "wherein the ultrasonic bath
has its transducer" and that there is no antecedent for this
term in claim 1 rendering the claim unclear.
(j) I agree that the phrase "pulsing said injector between 1.0
and 40 mSec" could be read as meaning repeatedly applying a
pulse of duration from 1 to 40 mSec or applying pulses of
some other nature for a duration of from 1 to 40 mSec. As
a consequence I consider the claim unclear also with regard
to this aspect.
(k) I also agree that claim 3 in defining "A method ...as
hereinbefore described with reference to the accompanying
drawings" is unclear in that as the drawings exemplify
different embodiments it is not certain which embodiment
or combination thereof is encompassed.
During the course of the hearing Mr. Old drew my attention to disconformities between the "promises" of the invention in accordance with the description and the invention as defined by the claims. For example the opening page of the description sets out what may be considered the "promises" of the invention in such terms as "The present invention relates to an apparatus (my
emphasis) and method for cleaning electronic fuel injectors ..."
and "The present invention seeks to ameliorate the disadvantage
by providing a method and apparatus (my emphasis) for cleaning injectors which allows readily (sic) flushing out of the filter
basket of the injector (my emphasis). Notwithstanding these "promises" none of the three claims is directed to "apparatus"
while "flushing out of the filter basket of the injector" is not mentioned in any of the claims. In view of the foregoing it can be said the claims do not define the invention with regard to the
emphasised portions of the "promises".
Section 18(1)(a) - Manner of Manufacture
The notifier, with respect to the claims, asserts that since claim 1 is limited by the step "whereby the cleaning fluid, while being resonated by the ultrasonics, flows in the reverse direction through the injector as a result of the interaction of the ultrasonics and the pulsing of the injector" the claims are directed to a scientific principle and not a manner of manufacture. In arriving at this conclusion Ferocem asserts that this limiting step is defined so broadly that the claims in effect, without explaining what the interaction between the ultrasonics and the pulsing is and bearing in mind that the other steps of the claim are alleged to be known, includes all ways of achieving the result. This is not a conclusion with which I agree. In my opinion the patentee is perfectly entitled to qualify the claims by this limiting step which includes the feature of the cleaning fluid, while being resonated by the ultrasonics, flowing in the reverse direction through the injector as a result of the interaction of the ultrasonics and the pulsing of the injector if it is believed that the flow is as a result of the interaction. In my view it is not necessary to include in the claims the nature of the interaction. At the hearing, Mr. Old stated that he had attended tests conducted by Mr. McCaffrey on the patentee's device and in the view of Mr. McCaffrey, the device did not work in the way claimed. Mr. Tansley, for the patentee, declares that he has tested the device and produced results which supports the claims. I am not persuaded by these competing arguments in that they are really directed to the question of utility which, as I have previously stated, is not within my province to consider.
I agree that the claims are not directed to a method "which allows readily flushing out of the filter basket of the injector"
and thus it can be said a "promise" of the invention is not met.
While this may be so, the claims are nevertheless directed to cleaning an electronic fuel injector in accordance with the opening statement of the description. Thus, although I agree that not all the objects (or promises) of the invention have been met, since, prima facie, at least one has, I do not agree, as alleged by the notifier, that the invention is generally inconvenient and a hurt of trade such as to render it not a manner of manufacture.
I consider that the "vendible product" test suggested by Morton J. in G.E.C's Application (1942) 60 RPC 1 to determine whether a method is a manner of manufacture is applicable in this case and since I am of the opinion that the claimed method, according to the claims, improves or restores a vendible product (the injector) to its former condition (i.e. cleans it) I conclude that the claims are directed to a manner of manufacture.
Priority Date
Priority dates are determined in accordance with section 43 of the Patents Act 1990. Paragraphs 43(2)(a) and (b) state:
"The priority date of a claim is:
the date of filing of the specification; or
where the regulations provide for the determination of a
different date as the priority date - the date determined
under the regulations."
In this instance, since we are dealing with a divisional application it is necessary to determine the priority date in accordance with the regulations.
The relevant parts of regulation 3.12 read:
"(1) Subject to regulations ... and 3.14 ... and subregulation
(2), the priority date of a claim of a specification is the
earliest of the following dates:
(a) the date of filing of the specification;
(b) ...
(c) if:
(i) the specification is a complete
specification filed in respect of a
divisional application; and
(ii) the claim is fairly based on matter
disclosed in the specification referred
to in ... ("divisional applications");
the date that would have been the priority date of
the claim if it had been included in the last-
mentioned specification.
(2) In paragraph (1)(b), "relevant application" means:
(a) a provisional application that is associated with a
complete application in accordance with section 38 of the
Act ..."
Regulation 3.14 reads:
"If subsection 114(1) of the Act ("priority date of certain
amended claims") applies to a claim of a specification, the
priority date of the claim is:
(a) in the case of an amendment to which subsection 89(4)
or (5) of the Act ("modified application of Act")
applies - the date on which the amendment is taken to
have been made under that subsection; and
(b) in any other case - the date of filing of the statement
of proposed amendments that resulted in the disclosure
referred to in subsection 114(1) of the Act."
Referring back to the background for an explanation of how patent No 621027 relates to applications No 621447 and No PJ2727 respectively, I agree with Mr. Old's submission that the first disclosure of an injector pulse period of "between 1 and 40 mSec"
was in complete specification 621447 (47783/90) lodged 8 January 1990. While provisional specification No PJ2727 disclosed an injector pulse period of 1.0-4.0 mSec, because of the broadening in scope of the pulse period by a factor of 10:1 (40 mSec:4 mSec), I do not consider the respective periods at all consistent and hence do not conform to one of the guides set down by Gibbs J. in Mond Nickel Co. Ltd's Application (1956) R.P.C. 189 where he said: "Is there anything in the basic application which is inconsistent with the alleged invention as claimed?"
In a covering letter dated 12 May 1993 accompanying the Tansley and Julier declarations, Mr Walsh, for the patentee states, (presumably in relation to the provisional specification), that the phrase "The injector 1 is pulsed at 1.0 - 4.0 mSec" is an obvious typing error and should in fact read "The injector 1 is pulsed at 1.0 to 40 mSec". For an error to be obvious it must be clear on the face of the documents or, as stated in General Tire and Rubber Co. (Frost's) Patent 19782 RPC 259 (at 279) "an obvious mistake is one `that the instructed public can, from an examination of the specification, appreciate the existence of a mistake and the proper answer by way of correction'". In my view the public would accept that 4 mSec was an upper limit of the pulse period given that the lower limit is 1 mSec and it certainly would not be obvious on the face of the documents that anything different was intended.
Accordingly I determine that the earliest priority date of claims
wherein the pulse period is defined as being between 1 and 40 mSec is 8 January 1990, i.e. the lodgement date of parent complete specification No 621447.
Claim 3 is limited as being "according to any one of the preceding claims substantially as hereinbefore described with reference to the accompanying drawings" (my emphasis) and given that a page of the description making reference to drawings was not lodged until 10 January 1990 and incorporated into the description by way of a section 77 amendment, I determine, in as far as claim 3 relies on the disclosures of this page, that the priority date of this claim is 10 January 1990.
Novelty and Inventive Step
The notifier bases its case that the invention as defined by the claims is not novel and does not involve an inventive step on the following propositions:
(a) that the invention was commercially used by the
patentee in Australia before the priority date i.e. between
the date of filing of provisional specification PJ2727 and
the date of filing of complete specification 47783/90
(accepted as application 621447).
(b) by the use of the "New Age EFI 2001" fuel injector service
unit in conjunction with an ultrasonic bath.
Dealing with proposition (a) first. In Mr. Julier's declaration
dated 11 May 1993 he states that on or around 10 August 1989 he was made aware that it was possible to more efficiently clean fuel injectors using an ultrasonic bath with injectors pulsed in the bath so that a cleaning fluid resonated in the bath flowed in the reverse direction through the injector. He then goes on to say that "around that time had I (sic) approached High Tech Auto Tools Pty Ltd and asked Michael and Alan Skovran of that company if they could clean fuel injectors for me. I was not aware of any method for cleaning injectors prior to 14th February 1989 which involved immersing an injector in an ultrasonic bath pulsing the injector whilst in the bath and resonating the cleaning fluid. This method was explained to me by Mr. Skovran ... I engaged the services of High Tech Auto Tools Pty Ltd to clean fuel injectors for me on 10th August 1989. Annexed hereto as annexure B is a copy of an invoice dated 10th August 1989 indicating the transaction that took place between myself and High Tech Auto Tools Pty Ltd." The immediately preceding quotation in parenthesis is the basis on which the notifier relies to show that the invention was commercially used before the priority date.
The copy of the invoice (annexure B) reads as follows:
"QTY DESCRIPTION
0.0 0 HR 0 MIN LABOUR
6.0 SUPPLY EXCHANGE INJECTORS
6.0 SUPPLY EFI-INJECTORS REPAIR KIT
6.0 SUPPLY EXCHANGE INJECTORS (K-JET)
4.0 SUPPLY EXCHANGE INJECTORS
4.0 SUPPLY EFI-INJECTOR REPAIR KIT
TOTAL $440.00"
While I have no reason to doubt Mr. Julier's statement that this
particular invoice covers the injector cleaning work he had done, the invoice itself gives no indication that it covers injector cleaning. It is not possible therefore to determine from the invoice just how, or if, Mr. Julier's injectors were cleaned. All I am left with is Mr. Julier's statement that he had his injectors cleaned by High Tech Auto Tools but since Mr. Julier does not say he was present when the cleaning took place, it is understandable that he does not state they were actually cleaned by using the High Tech method in accordance with the claims of the patent under suit. I am not prepared to accept, without further evidence, that just because Mr Alan Skovran explained to Mr Julier High Tech's new cleaning method, that this in itself establishes that the cleaning work undertaken by High Tech for Mr Julier was done in accordance with the claims of petty patent No 621027. As a consequence, I am of the opinion that the notifier has not been able to show that the invention in accordance with the claims of petty patent No. 621027 was used commercially before the priority date of the claims.
Turning now to proposition (b). The notifier argues that a number of injector cleaning concerns used the "New Age EFI 2001" fuel injector service unit in conjunction with an ultrasonic bath before the priority date of the claims and thus the method according to the claims of petty patent No. 621027 was anticipated by such use.
Sales literature on file describing the EFI 2001 unit indicates that it has three choices of operating time (30, 60 and 120)
[units not shown], three choices of pulse duration (3 mSec, 6 mSec and 12 mSec) and three choices of engine revs (600, 2400 and 7200). While the literature in the form of a brochure is not dated, an article in MEN covering a demonstration of the machine is dated February 1988 and I therefore accept that the EFI 2001 machine was available and used in Australia before the priority date of the claims.
I now turn to the statutory declarations and affidavits giving details of the use of the EFI 2001 machine in conjunction with an ultrasonic bath.
Mr. Ginley states in his statutory declaration dated 7 December 1992: "Prior to 1988 I was engaged as a freelance sales representative for Air Automotive Pty Ltd and was selling the New Age EFI 2001 device to motor vehicle service centres. By early 1989 I would estimate that approximately 100 of these machines had been sold in Australia and the device was, by then, well known to the operators of motor vehicle service centres since the device had been first sold in Australia about 1986. ... Before 1989 I was aware that several operators, including Frank Dietsche ... had been cleaning fuel injectors by placing them in an ultrasonic bath of cleaning fluid whilst simultaneously pulsing the injectors in order to repeatedly open and close same."
Mr. Dietsche states in his statutory declaration dated 7 December 1992: "Prior to 1989, I was aware of, and had used, the New Age EFI 2001 Injector cleaning device. Since September/October 1988, I have been cleaning fuel injectors by submerging the injector tips in cleaning liquid contained in an ultrasonic bath, energising the ultrasonic bath and pulsing the injectors. The liquid in the bath, flows into the tip of the injector and out of the inlet of the injector in the reverse direction to the flow of fuel through the injector."
Mr O'Donnell in his statutory declaration dated 4 December 1992
states: "Prior to 1989, I was aware of the New Age EFI 2001 Injector Cleaning Device. Since about 1986, I have been cleaning fuel injectors by submerging the injector tips in cleaning liquid contained in an ultrasonic bath, energising the ultrasonic bath and pulsing the injectors. The liquid in the bath, flows into the tip of the injector and out of the inlet of the injector in the reverse direction to the flow of the fuel, through the injector."
Mr Deitsche in his affidavit dated 16 April 1992 states:
"Since October 1988 I have been cleaning fuel injectors by using an EFI 2001 machine together with an ultrasonic bath. Since using this cleaning method I have observed that when fuel injectors are pulsed in the ultrasonic bath, provided a suitable fluid is used, the triggering action causes the fluid in the bath, as a matter of course, to flow up through the injectors."
Mr Greenfield in his affidavit dated 16 April 1992 states:
"I have been using the method of cleaning fuel injectors by pulsing them in an ultrasonic bath for 8 years. It has been my experience that, in the majority of cases, when injectors are submerged in the ultrasonic bath and pulsed, the fluid comes up through the injector in a back-flow way."
Mr Payne in his affidavit dated 16 April 1992 states:
"Since mid 1988, I have been using an ultrasonic bath to clean fuel injectors. This method of cleaning fuel injectors involves submerging the injector tips in the ultrasonic bath, pulsing the injectors and the fluid in the bath, as a matter of course, flows up through the injector."
In the submissions provided under cover of his letter dated 19 November 1993, Mr Walsh states "The patentee submits that all of
the declarations and affidavits should be discounted by the hearing officer in consideration of this matter due to the total
absence of corroborating evidence supporting the assertions in any one of the declarations and affidavits." This is not a view to which I subscribe. I see no reason why I cannot accept the facts declared in the statutory declarations and affidavits on their face value as being true and accurate and without the need for corroboration. In coming to this view I have taken into account the question of the need for corroboration which was canvassed in Glenwood Systems Pty Ltd v Gooden (1993) AIPC 90-985 where, when considering this matter, Delegate of the Commissioner, J I Welsh, stated:
"Some guidance is provided by the UK Court of Appeal in the
Dunlop Holdings [Ltd's Application] case [(1979) RPC 523]
where Waller, L.J. said:
`The opponent's evidence, being unchallenged and
uncontroverted, must be accepted at face value'.
This seems to be a reiteration of a more general rule of
evidence as expounded for example in Cross on Evidence 1970
Australian edition at 202:
`The general rule of the law of evidence is that the court
may act upon the uncorroborated testimony of one witness,
and of such requirements as there are concerning a
plurality of witnesses, or some other confirmation of
individual testimony are exceptional.'"
Only Mr Dietsche(Deitsche) makes it clear, when combining the statements contained in his statutory declaration and affidavit respectively, that the EFI 2001 machine is the pulse source he used when cleaning injectors with an ultrasonic bath.
Comparing his statements with claim 1 of the patent in suit I am satisfied that all the essential integers are anticipated except the resonating frequency of the ultrasonic bath. The only evidence before me appertaining to the ultrasonic bath is the date and place of purchase. I next need to consider whether the bath resonating frequency range as defined in the claim i.e. "between 10 and 50kHz" was common general knowledge when Mr Dietsche was cleaning injectors in an ultrasonic bath, it being long established law as exemplified in Acme Bedstead v Newlands 58 CLR 689 that prior publication can be considered in the light of common general knowledge. In other words, what I need to establish is whether or not a man skilled in the art of injector cleaning at the time when Mr. Dietsche was cleaning his injectors
would understand an ultrasonic bath to mean an ultrasonic bath resonated at a frequency of "between 10 and 50 kHz".
Mr McCaffrey in his statutory declaration dated 4 December 1992 says: "Ultrasonic baths of cleaning liquid are well known in Australia and have been so for at least 20 years. Typically, such baths operate at a frequency of approximately 30 kHz or 40 kHz which is within the range of 10-50 kHz."
Mr Tansley in his statutory declaration dated 7 May 1993 in effect agrees with Mr McCaffrey when he says: "The use of Ultrasonic cleaning by resonating a cleaning fluid with an object immersed therein is well known. The term Ultrasonic commonly refers to use of frequencies greater than 20 kHz. This form of cleaning has been in use for at least 20 years."
Only persons skilled in the art can establish what is common general knowledge in the field of the invention (see the judgement of Aicken J. in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253). Given the occupations, experience and qualifications of Mr McCaffrey and Mr Tansley, I am of the opinion that both have established that they are possessed of the requisite skills to establish what is common general knowledge in the art of cleaning fuel injectors using an ultrasonic bath.
In the light of Mr McCaffrey's and Mr Tansley's statements I consider that it has been established that at the time Mr Dietsche was cleaning his fuel injectors with an ultrasonic bath it would be a matter of common general knowledge that the bath would be resonated at a frequency of "between 10 and 50 kHz". This being the case, I am of the opinion that claim 1 of the patent in suit is not novel in the light of Mr. Dietsche cleaning fuel injectors in an ultrasonic bath while using an EFI 2001 pulse generator before the priority date of the claim.
I equate inventive step with obviousness. For an invention to be obvious, it needs to be obvious to a non-inventive skilled worker in the field equipped with common general knowledge as at the relevant priority date (Welcome Foundation Limited v VR Laboratories(Aust) Pty Ltd [1982] RPC 343). In the light of the statutory declarations and affidavits of Messrs McCaffrey, Tansley, Ginley, Dietsche, O'Donnell, Greenfield and Payne, all of whom are skilled in the art, I consider it is established that cleaning injectors using an ultrasonic bath was common general knowledge before the priority date of the claims. Further from the Ginley, Dietsche and O'Donnell statutory declarations I also consider it is established that pulsing injectors using the EFI 2001 machine was also common general knowledge before the priority date of the claims. Having previously found from the McCaffrey and Tansley declarations that resonating an ultrasonic bath at a frequency of "between 10 and 50kHz" was also common general knowledge at the priority date of the claims, I am of the opinion that it would be obvious to a non-inventive skilled worker in the art of cleaning fuel injectors to clean injectors in accordance with the method of claim 1 and hence claim 1 is obvious and does not contain an inventive step.
With regard to claim 2, Mr McCaffrey expresses the opinion that aligning the injector with the epicentre of the transducer is of no effect while Mr Tansley states there is substantially more ultrasonic pressure above the epicentre of the transducer than there is at the side of the tank. Notwithstanding that each of these views is contrary to the other and are directed to utility,
with which I am not concerned, neither view establishes that "wherein the ultrasonic bath has its transducer positioned centrally and wherein each injector is aligned with the epicentre of the transducer", as required by claim 2, is common general knowledge. Since the essential integers introduced by claim 2 are missing from the prior use evidence I am unable to say that claim 2 lacks novelty in the light of the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 and where infringement occurs where "each and everyone of the essential integers" of the claim have been taken [Rodi & Wienenberger AG v Henry Showell Ltd (1969) RPC 367]. Also, since it has not been shown that the essential integers introduced by claim 2 were common general knowledge at the priority date of the claims, I am unable to say that claim 2 is obvious and lacks an inventive step.
I am not satisfied that the prior use discloses the embodiments as illustrated by the drawings and, since there is no evidence on file to show that the embodiments as illustrated by the drawings were common general knowledge at the priority date of the claims I am unable to say that claim 3 fails for lack of novelty or inventive step.
With regard to the question of novelty and inventive step, I have no need to further consider the statutory declarations and affidavits of Messrs O'Donnell, Greenfield and Payne since none of them provides any information on the source and/or nature of the pulsing used in their cleaning methods and therefore I am unable to determine whether the pulsing they employed during cleaning bears any relationship to the pulsing defined by claim 1. However they do all confirm the widespread use of ultrasonic baths for cleaning fuel injectors before the priority date of the claims.
SUMMARY
Having considered the section 28(1) notice I find Ferocem has succeeded on the following grounds:
(1) The invention as defined by claim 1 when compared with the
prior art base as it existed before the priority date of the
claim is not novel and does not involve an inventive step for
the reasons I have outlined.
(2) The specification does not comply with subsections 40(2) and
40(3), again for the reasons outlined.
I have also determined that the priority date of claim 1 and claim 2 respectively is 8 January 1990 and the priority date of claim 3 is 10 January 1990.
Since it may be possible to amend the complete specification to overcome the successful section 28(1) grounds I allow High Tech Auto Tools Pty Ltd 60 days from the date of this decision to propose amendments to overcome the defects to my satisfaction failing which, I will formally refuse to grant an extension of term.
COSTS
I see no reason why costs should not follow the event and I therefore award costs against High Tech Auto Tools Pty Ltd.
J.M.Sellars
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Davies Collison Cave, Sydney.
Patent attorneys for the notifier : Spruson & Ferguson, Sydney.
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