Humberto Urriola v Australian Drainage Modules and Peter Schindler

[2001] APO 8

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 704302 in the name of Humberto Urriola

Title:          Underground Drainage System

Action: Oppositions under Section 59 of the Patents Act 1990 by Australian Drainage Modules Pty Limited and Peter Schindler

Decision:          Issued            .

Abstract

The specification states that the invention relates to a drainage system designed to not only collect excess water, but to return purified water to the environment as close to the point of collection as possible.  The underground drainage system of the invention comprises water storage and/or piping formed by a plurality of load bearing box like modules that are arranged adjacently and wrapped in water permeable geotextile with the modules having external walls with perforations therethrough so that water can flow into and out of the storage and/or piping through the perforated walls. 

The opponents contended that the invention was not novel or inventive over the applicant's earlier patent, which disclosed a drainage cell.  As the invention contemplates, in a preferred form, the use of the drainage cell as an external wall with the modules themselves being constructed of drainage cells, it was argued that the invention lacks novelty and does not involve an inventive step.  However, there is simply no evidence to suggest that a person skilled in the art would, as a matter of course, realize that the drainage cell of the earlier Urriola patent could be used as an underground drainage system as defined by the claims of the present invention.  The fact that the Federal Court revoked the earlier Urriola patent has no bearing on the novelty and inventiveness of the invention of the current application.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 704302 by Humberto Urriola and oppositions thereto by Australian Drainage Modules Pty Limited and Peter Schindler under section 59 of the Patents Act 1990.

BACKGROUND

Australian Patent Application 12688/95 was filed as the national phase application of PCT/AU94/0077, which claimed priority from an Australian Provisional Application PM 2944 that was filed 14 December 1993.  The application was accepted on 22 April 1999 and allocated patent number 704302.

Australian Drainage Modules Pty Limited and Peter Schindler filed oppositions to the grant of a patent on 18 June 1999.  The statements of grounds and particulars were filed 7 September 1999.  On the 7 December 1999, Mr Bizannes who is the agent for the opponents requested that the statement of grounds and particulars be treated as evidence-in-support of the oppositions.  In the absence of any comment from the applicant, this request was granted.  Evidence-in-answer was filed on 22 March 2000.  This date was determined by the Deputy Commissioner of Patents in his decision on a request under reg 5.10(2) to extend the time for serving evidence-in-answer and oppositions thereto:Humberto Urriola v Australian Drainage Modules Pty Ltd (and Peter Schindler) [2000] APO 30 (14 April 2000). On 24 May 2000, Mr Bizannes filed a statutory declaration made by Mr Jorna who is a Director of Australian Drainage. An official letter was sent requesting confirmation on whether this declaration formed evidence-in-reply. No reply was received and on 26 July 2000, both parties were informed that the provisions of reg 5.12 applied based on the service of the evidence-in-answer. Consequently, this declaration is not formally in evidence in these oppositions. However, in the interests of dealing with all matters, I will review the declaration later in my decision and comment on its relevance to these oppositions.

The evidence in both oppositions was identical.  All parties agreed that the oppositions should be held concurrently.

A hearing on the matter was held on 7 November 2000 in Canberra.  Paul Taylor, patent attorney of Paul Taylor & Associates, attended on behalf of the patent applicant.  Victor Bizannes, solicitor and attorney attended on behalf of both opponents.

Grounds of the opposition

The opponents contented that (a) the nominated person is not entitled to the grant of the patent and that (b) the invention does not comply with s18 (1)(a) and s18 (1)(b) of the Patents Act.

In relation to ground of opposition (a), the opponents contend that:

• The applicant did not invent the subject product (i.e. the drainage cell which forms the subject matter of the earlier Urriola patent),

• The product employs as its essential unit the drainage cell of Australian Patent No 593805 (the earlier Urriola patent), which was revoked by decision of the Federal Court of Australia on 24 October 1997 on appeal suit No.  NG 284 of 1997 that was subsequently reported as Atlantis v Schlinder 39 IPR 29,

• German Patent Specification DE2512374 (Rosemeier) discloses prior art applicable to the subject invention, and

• A finding of the Supreme Court of New South Wales that the Rosemeier patent preceded the earlier application and deprived that invention of novelty.

The basis of ground (a) relies upon a finding that the invention is not novel and does not involve an inventive step.  If I find that the invention is novel and inventive then this ground need not be further considered.

In relation to ground of opposition (b), the opponents contend that

• The invention is a "methods patent" and not one of manufacture,

• The claim is not novel in view of the disclosure of the Rosemeier patent,

• Section 7(1)(a), (b) and (c) of the Patents Act apply,

• The applicant's product was in the public domain prior to the priority date (the Atlantis pamphlet), and

• Section 9 as to secret use is not excluded by virtue of subsection (c) in that the product was used with the authority of the applicant in trade and commerce (as evidenced by the Atlantis pamphlet) thereby putting it into the public domain prior to the priority date of the current application.

The Application

The specification states that the invention "relates to a drainage system and in particular to such a system designed to not only collect excess water, but to return purified water to the environment as close to the point of collection as possible.  The aerated and pure water allows aerobic neg-entropic activities in the soil horizon both above and in the drainage strata itself."

The significance of the present invention lies in its "ability to alter the disruption of the natural water by replacing the impervious entropic man-made systems with a neg-entropic natural system, with resulting improvement in quality of flora and fauna".  The invention does this by filtering out the solids from the water and lessening the reduction of oxygen from the water contained in the pipes of the drainage system as compared to the conventional stormwater channels.

Current stormwater channels result in "concentration of runoff and resultant depletion of the oxygen content of the water" that is one of the "major causes of water contamination and depletion of flora".  In natural systems, on the other hand,

"rainwater is filtered through the ground, maintaining a healthy oxygen content, and is being continually cleansed by such filtration through the soil, sand and rock strata and transport slowly by aquifers." 

Consequently, it is

"an object of the present invention to more closely emulate natural drainage patterns by provision of an underground system which provides not only for collection and transport of stormwater, but also for return of the stormwater to the environment through porous surfaces at a locality as close as possible to the point of collection."

The broad form of the invention is disclosed in claim 1 and provides for

"an underground drainage system comprising storage and/or piping which are made of porous materials to allow water to flow in all directions through the material such that, in use, water permeates from said storage and/or piping into the surrounding earth."

The specification states that "any porous material such as concrete can be used" but a preferred embodiment comprises plastic pipes having perforated double walls which provide structural strength and permeability with a layer of geotextile material covering the entire perforated walls that provides the filtering action.

The system of the invention is "essentially different from existing stormwater channels in that water contained therein has firstly been filtered prior to entry into the channel and secondly may exit from the channel through the water permeable walls of the channel at the first available location where the surrounding ground is not saturated.  In this manner clean water is distributed to the nearest adjacent non-saturated location to where the runoff originated."

In summary,

"The present invention therefore provides a drainage collection system which retains and distributes rainwater in an area as close as possible to the area of the rainfall."

The specification ends with 11 claims with claim 1 being the only independent claim.  This claim reads as follows:

1. An underground drainage system comprising water storage and/or piping formed by a plurality of load bearing box like modules, arranged adjacently and wrapped in water permeable geotextile, said modules having external walls with perforations therethrough, such that water can flow into and out of the storage and/or piping through the perforated walls.

In claim 2, the modules are defined.

2. An underground drainage system according to claim 1 wherein: said module comprise two opposed perforated external wall panels with at least two perforated wall panels extending transversely therebetween.

3. An underground drainage system according to claim 3 [sic 2], wherein connection means in the form of recesses and mating pins located on adjacent wall panels to secure adjacent wall panels together.

Claim 4 defines the external walls of the modules as being modular. 

4. An underground drainage system according to any one of the preceding claims, wherein at least the external walls comprise modular wall panels having two planar spaced apart perforated surfaces with a plurality of rigid spacer members, therebetween, maintaining said surfaces in a fixed spaced relationship to each other,

said box like modules being connected to form the storage and piping, with the water permeable geotextile being wrapped around the thus connected box like modules, to cover all of the perforations on the external walls.

5. An underground drainage system according to claim 4, wherein the perforations of each of the two planar spaced apart perforated surfaces are out of registry with the perforations of the other surface.

6. An underground drainage system according to any one of claim 3 to 5, wherein internal walls in the storage and distribution units are formed by said modular wall panels.

7. An underground drainage system according to any one of the preceding claims, wherein the storage and distribution units have a layer of sand surrounding the geotextile.

8. An underground drainage system according to any one of the preceding claims, wherein piping connected to the storage is formed by said box like modules or said modular wall panels connected end to end and wrapped in geotextile.

Claim 9 is directed to a combination of the drainage module with the silt trap.  This claim reads as follows.

9. An underground drainage system according to any one of the preceding claims including a silt trap comprising a water impervious container having an opening in its base;

a layer of said perforated modular wall panels, lining the inner walls and the base of the container and defining a passageway in communication with the said opening in the base of the container;

a bag of water permeable geotextile supported on the modular wall panels; and
and [sic] an inlet pipe connected to said bag, such that solids, carried by water into said bag, are retained in said bag and the filtered water passes along the passageway defined by the modular wall panels and out through the opening in the base of the container.

10. An underground drainage system according to claim 9 wherein the opening in the base of the container is connected to piping formed by said modular wall panels connected end to end and wrapped in geotextile.

11. An underground drainage system substantially as hereinbefore described with reference to accompanying drawings.

The Evidence

As previously mentioned the statement of grounds and particulars constituted the evidence-in-support.  This evidence referred to the following documents.

• A copy of the judgement of McLelland CJ in Eq NSW Supreme Court 27 March 1997,

• Copy of the judgement of full bench of the Federal Court of Australia Sydney 24 October 1997,

• A purported copy of Rosemeier patent with an English translation thereof (although, the German language patent that was put into evidence was not the Rosemeier patent, the English translation supplied related to the Rosemeier patent),

• A copy of page 210 from the Appeal Book presented to the Federal Court,

• A copy of page 748 from the Appeal Book presented to the Federal Court, and

• A photocopy of extracted pages from Atlantis Corporation Pty Ltd advertising material (three pages).

The evidence-in-answer consisted of declarations by Paul Taylor (the patent applicant's attorney), Anthony Bennett (employee of the applicant), and Umberto Urriola (applicant and inventor). 

DECISION

Patent 593085: Novelty and Inventive Step

The earlier Urriola patent 593085 was subject to decisions of NSW Supreme Court and the Federal Court.  The opponents allege that the present application lacks an inventive step in view of this patent. 

The earlier Urriola patent is directed to a "Drainage Cell" and "relates to the provision of adequate drainage by artificial means and has particular application in the area of landscaping gardening".  It also teaches "a method of providing drainage" utilising the drainage cell.  "In addition to roof-top garden applications it is envisaged that the invention may be of use to provide drainage under roadways, under embankments and elsewhere where surface erosion would otherwise be a problem."

The drainage cell is described in the drawings as follows:

"Figure 1 depicts a drainage cell comprising a first planar perforate surface 1 and a second planar perforate surface 2 maintained in parallel spaced relationship to each other by a plurality of upright spacer members 3.

The nature of perforations in the embodiment of figures 1 and 2 may best be observed from figure 2 which clearly depicts substantially square perforate areas 4 in the first planar surface 1.  It will be noted that the square perforate areas are interposed with substantially square load bearing sections 5 such that the resulting configuration of the first planar surface 1 is checkered.  In this embodiment the second perforate planar surface is of the same configuration as the first perforate planar surface except that the square perforate sections are out of register with each other such that directly beneath each square perforate section of the first perforate planar surface lies a square load bearing section of the second planar perforate surface."

The specification ends with twelve claims defining the invention in the following terms:

1. A rigid cell structure comprising a first and second substantially parallel perforate planar members maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means in any direction.

2. A structure in accordance with claim 1 wherein each spacer member adjoins at each end wall members in turn adjoining the ends of adjacent spacer members; the orientation of the walls being perpendicular to the plane of the parallel perforate planar members; the walls thereby serving to brace the entire structure and assist in transferring local stresses throughout the structure.

3. A structure in accordance with any one of the preceding claims wherein at least twenty per cent of the total surface area of the planar surfaces is adapted to support a load.

4. A structure in accordance with claim 1 wherein the spacer members are columnar in configuration and disposed substantially normally to the two parallel perforate surfaces.

5. A structure in accordance with any one of the preceding claims wherein the perforate areas are formed as parallelograms interposed with load bearing sections of like configuration and dimensions in a chequered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such parallelogram shaped load bearing sections and perforate areas.

6. A structure in accordance with any one of the preceding claims wherein the perforate areas are of a substantially square configuration interposed with substantially square load bearing sections of similar dimensions in a chequered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such square sections.

7. A structure in accordance with any one of the preceding claims wherein all perforate areas of one perforate surface are out of register with the perforate areas of the opposing perforate surface.

8. A structure in accordance with any one of the preceding claims where at least one of the planar perforate surfaces includes upon its internally facing side a plurality of low upstanding walls extending between adjacent spacer members defining shallow areas adapted to trap small quantities of liquid.

9. A structure in accordance with any one of the preceding claims wherein the cell structure is of adequate strength to ensure that either one of the perforate planar surfaces has a load bearing capacity of at least twenty kilograms per square metre when the opposing perforate planar surface is supported by a rigid planar surface.

10. A structure in accordance with any one of the preceding claims wherein the cell structure is of adequate strength to ensure that ei(t)her one of the perforate planar surfaces has a load bearing capability of between 15,000 and 90,000 kilograms per square metre when the opposing perforate planar surface is supported by a rigid planar surface.

11. A rigid cell structure in accordance with any one of the preceding claims wherein there is a regular pattern of shall tongues and grooves along the peripheral edges of the structure to allow the structure to be interlocked when assembled into a mat.

12. A structure substantially as hereinbefore described with reference to the accompanying drawings.

The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken: Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391.

It is clear from the claims that the rigid cell structure of the earlier Urriola patent is capable of load bearing.  It is also readily apparent that rigid cell structure can be considered as a module as drainage cells can be interconnected to form a mat.

I note that in the present application, modular wall panels with spacer members are introduced in claim 4.  And in relation to figure 7 of the present application, a modular panel structure similar to that of the earlier Urriola patent is described.

"One form of a drainage cell is shown in figure 7, where the drainage cell (11) is constructed from parallel planar spaced-apart walls (25) and (26) with bracing members (27) interposed therebetween.  In this example, the apertures (28) in each of walls (25) and (26) are substantially rectangular and are arranged in a checkerboard fashion alternating with substantially rectangular planar load-bearing sections (29) of similar size.  These load-bearing sections are well adapted to support geotextile material.  In this embodiment of drainage cell material, the apertures (28) in one of the sides are out of register with the apertures in the opposing side, hence providing a baffling effect to water passing therethrough.  Such a product may be injection moulded from plastic materials." 

Hence, the current application contemplates the use of a drainage cell that was described in the earlier Urriola patent.  But it is not described or claimed as the sole essential feature of the invention.  It is merely one of the invention's essential features.  The opponents appear to argue that the drainage cell is the sole essential feature.  The applicant expressed the view that while the drainage is useful for fulfilling the object of the invention, it is not the sole essential feature of the invention. 

Mr Taylor submitted that the earlier Urriola patent does not disclose a load bearing box like module and that the drainage cell cannot be considered to have sidewalls as such.  I have already noted that the drainage cell is load bearing.  The drainage cell of earlier Urriola patent comprises two planar members spaced apart.  The structure itself inherently gives rise to side walls due to the presence of spacer members.  Mr Taylor further submitted that the term "box like" is a limitation by result.  I think this is misplaced.  The result of the claim resides in the ability of the system to allow water to flow into and out of the storage and/or piping through the perforated walls not that it is box like.  Hence, I consider that the drainage cell of the earlier Urriola patent is capable of forming a load bearing box like module.

However this does not mean that claim 1 lacks novelty as there is no suggestion in the earlier Urriola patent that the drainage cells are joined together to form a tank or a pipe.  Nor is there any suggestion of the use of a water permeable geotextile.  There is no disclosure of a system that will achieve the objects of the invention.  Hence as the earlier Urriola patent does not disclose all of the essential features of the invention, claim 1 and appended claims are novel.

Mr Bizannes further submitted that the present application lacks an inventive step, as it is merely an industrial design or a mere reconfiguration of the previous patent.  He states

"In essence the claims describe the use of 2*2 perforated wall panels structured to form a box wrapped in geotextile for underground drainage.

The heart of the unit lies in the perforated wall panels"

In other words, he submitted that forming a tank or a pipe from the Urriola drainage cell is an obvious development by being a simple reconfiguration of the drainage cell.  Whereas, Mr Taylor submitted that forming an underground drainage system involved an inventive step when compared with the disclosures of the earlier Urriola patent.

To emphasise their respective points of view, both Mr Bizannes and Mr Taylor brought along to the hearing a tank constructed of drainage cells as defined in the earlier Urriola patent.  Mr Bizannes suggested that it was obvious, just by visual inspection, that the tank was just an obvious reconfiguration of the earlier drainage cells.  Whereas, Mr Taylor submitted that it would involve an inventive step to arrive at the underground drainage system solely on the basis of the drainage cell of the earlier Urriola patent.  It should be noted that the present claims define a system, one preferred element of which includes the drainage cell.  But it does not follow that a tank or pipe made of drainage cells would, of necessity, render the claim to a underground drainage system as lacking in novelty as the former is directed to one feature of the claim while the later contemplates the invention as a whole.

The declaration of Mr Urriola is important at this point.  Mr Urriola suggested that the next development of the drainage cell was illustrated in the Atlantis pamphlet and that the present invention arose out of the failure of the stacked array of drainage cells as shown in the pamphlet.  Hence, Mr Urriola is suggesting that the obvious development would be the stacked array of the Atlantis pamphlet and not the box-like configuration.

I will deal with the Atlantis pamphlet shortly.  However in relation to the development from a single or interconnected mat of drainage cells to a tank or pipe constructed of drainage cells, it seems to me that this involves at least a 'scintilla of inventiveness'.  I note that there is no evidence from any person skilled in the art that the invention lacks an inventive step based on the disclosures in the earlier Urriola patent.  Furthermore, when I consider the fact that the claimed invention also uses a geotextile as one of its essential features and with no evidence that this feature is common general knowledge, I cannot accede to the argument that the claims lack an inventive step. 

In the particulars, Mr Bizannes made a number of allegations related to common general knowledge.  He stated.

"In Sydney alone, there are a number of tank manufacturers, drainage cell manufacturers and suppliers, as well as direct competitors of the applicant using:

1.   plastic (and other materials) in sub soil drainage;

2.   perforated panels to allow for drainage;

3.   capacity to click together panels;

4.   using geotextile for wrapping.

In effect, a milk crate also made of extruded plastic and similarly wrapped would have the same effect laid row to row.

What seems to be the heart of the application is the attempt to patent a void in the panelling wrapped in the geotextile but widely used in the drainage industry."

There is simply no evidence to suggest that a person skilled in the art would, as a matter of course, realize that the drainage cell of the earlier Urriola patent could be used in the underground drainage system as defined in the present claims. 

Mr Bizannes also pressed the fact that the Federal Court had revoked the previous Urriola patent and thus any further use of the drainage cell will necessarily lack inventiveness. 

"The essence of the product is found in the current application in the wall panels described in claims 1 and 2 which are a revisiting of the original failed patent in the form now of a box where the same type of wall panels or units that were discredited in the litigation now re appear as the heart of the new application."

However, the fundamental issue before the courts was one of claim construction.  The Court by finding that the claims were directed to a rigid cell structure that was not limited by use or purpose concluded that the claims were invalid.

"It was central to his Honour's reasoning that Claim 1 did not state the purpose of the specific feature last mentioned in Claim 1 and he resorted to the body of the specification to reach the conclusion that Claim 1 was limited to the use of the structure there defined for the purpose of drainage.  In my opinion, it was not permissible to do this since there is no ambiguity to be resolved."  (per Lockhart J in Atlantis v Schindler (supra))

"In our opinion, the Patent claims should be construed in the manner which is now common ground between the parties, that is to say, as 'apparatus' or 'product' claims, not confined by reference to the purpose of drainage found in the body of the specification.  The learned trial Judge, no doubt because of the position taken by Atlantis-Urriola before him, 'read down' the claims by reference to that purpose.  But in our view, there is no ambiguity or lack of clarity in the claims to make resort to the body of the specification permissible."  (per Wilcox, Lindgren JJ in Atlantis v Schindler (supra))

There is no similar issue here as all claims are directed to an underground drainage system.  Furthermore Mr Bizannes's argument appears to be suggesting that the later Urriola application is not novel or inventive because it includes the essential feature of the earlier Urriola patent.  Mr Bizannes asserted that the only difference between the disclosure and the claims lies in the erection of a box from the drainage cells coupled with a number of spacer members.  He further asserted that the erection of a box and the use of spacer members are clearly matters of common general knowledge.  In my view the present claims are directed to a combination, as the features defined in the claims possess an interworking relationship.  Hence the mere fact that the claims contain or include within their scope an essential feature that is not novel per se does not take away from the inventiveness of the invention as claimed. 

Mr Taylor submitted that the fate of the earlier Urriola patent is irrelevant to the novelty or otherwise of the present application.  He also pointed out that the earlier Urriola patent forms prior art to the present application. 

In my discussion of the invention, it is clear that the invention does not reside in using the drainage cell of the earlier Urriola patent.  The drainage cell as disclosed in the earlier Urriola patent is not an essential feature of the main claim.  In fact the closest the specification comes to describing the drainage cell is in relation to figure 7 and claim 4.  There are clear differences between the drainage cell as defined and the modular structure as disclosed.  However, it is also clear that the drainage cell can form the external wall of the present invention.  At the hearing, Mr Taylor stated that the invention in practice utilises the Urriola drainage cell.  However this fact does not imply lack of invention.  It merely suggests that the drainage cell is useful for the current invention.  Thus the fact that the Federal Court revoked the earlier Urriola has no bearing on the novelty and inventiveness of the current application.

In conclusion, the claims are novel and involve an inventive step over the earlier Urriola patent.

Rosemeier Patent

The document was the subject of discussion in the court cases.  From this discussion and from my reading of the English translation of the document, I find that this document is no better than the earlier Urriola patent.  This document does not render the claimed invention as lacking novelty or inventiveness.

Page 210 from the Appeal Book

There is nothing of relevance in this 1 page document as it is basically directed to describing the effect that movement of Mr Urriola's business had on locating documents and files.

Page 748 from the Appeal Book

This single page lists the current and potential uses of Atlantis drainage cells and is dated October 1988.  Although a sump is listed as one of its uses, there is no disclosure of its structure.

Atlantis pamphlet: Novelty and Inventive Step

The Atlantis pamphlet is undated but Mr Bizannes stated that it was produced and distributed in 1992.  He indicates that the use was not secret.  Therefore, he contends that the claims are not novel in view of the applicant's own brochure.

Of the photocopies in this brochure that were put into evidence only pages 1 and 2 are relevant.  Page 1 of the brochure illustrates a tank/sump constructed of a plurality of the Atlantis Drainage cells.  Page 2 illustrates drainage logs that are wrapped in a geofabric that is described as " a non-woven continuous filament, spun bonded, needle punched geotextile".  Further, deck and wall panels that are made up of a drainage cell overlain with a geofabric are also illustrated.

Mr Humberto Urriola in his evidence-in-answer states that "the pamphlet was produced in early 1992 in a batch of 1000.  Some of these were distributed to customers and the rest destroyed as they showed a retention tank that was not commercially viable."  Anthony Bennett who was a salesman with Humberto Urriola and is now Technical Customer Support for Atlantis Corporation Pty Ltd confirms the distribution of the pamphlets.  Hence, the brochure was in the public domain before the priority date of the application.

Mr Bennett describes the devices illustrated in the pamphlet.

"The pamphlet clearly shows a number of 'Atlantis drainage cells' stacked one the other and wrapped in a water impervious covering, to form a retention tank.  The forming of the retention tank by stacking 'Atlantis drainage cells' was never used in practice as it was not viable because of the amount of plastics used to from a tank, and the lack of means to secure the drainage cells together.  These factors would have produced a prohibitively expensive product, and hence apart from one release of a small number of pamphlets, there never was any such product produced, and no further pamphlets, showing such a technique, were ever produced."

Both Mr Urriola and Mr Taylor make substantially similar statements.  There is no dispute that the pamphlets were published before the priority date of the present application.  This being the case, the only decision to be made is whether the disclosure of the Atlantis tank in the pamphlet renders the claims as lacking in novelty and / or an inventive step.

Claim 1 is directed to an underground drainage system comprising a plurality of load bearing box like modules.  The pamphlet discloses a single box like module.  In the claim, the modules are arranged adjacently and wrapped in water permeable geotextile, while in the pamphlet, the module is wrapped in water permeable geotextile.  In the claims (in claim 4), the modules are in fact made up of modular wall panels similar to that disclosed in the modules that are stacked together to form the products disclosed in the Atlantis pamphlet.

Mr Taylor pressed the point that the claim defines a box like structure while the pamphlet discloses a layered arrangement of drainage cells.  He argued that a layered arrangement of drainage cells does not define a box like structure.  However, as one of the illustrations is of a tank/sump in which the layered arrangement of drainage cells forms a box like structure, such an argument is not sustainable.

An essential element of the claim is its reference to a plurality of load bearing box like modules.  These modules make up the underground drainage system.  There is no claim to the module per se.  There is no disclosure in the pamphlet of interconnecting modules.  Hence claim 1 is novel over the disclosures in the Atlantis pamphlet.

Given the publication of the pamphlet before the priority date, the next question to answer is whether in view of the pamphlet the invention defined by claim 1 would be obvious. 

Mr Urriola in his declaration made the following comments:

"Thus the concept of having load bearing box modules to be stacked together to form a storage void surrounded by water pervious geotextile, came about, in order to overcome the shortcomings of the stacking of 'Atlantis drainage cells'."

"In the preferred commercial form, as sold by Atlantis Corporation Pty Ltd, the box modules are formed from external walls modules that are joined together to form the box modules.  This provides for a low volume storage and transportation of the box modules in their unassembled condition."

These comments suggest the presence of an inventive step.

I have already noted that there is no evidence from any person skilled in the art that could attest to the common general knowledge in the art in Australia before the priority date.  I find that I am unable to construct any argument that would bridge the gap between the disclosures in the Atlantis pamphlet and the invention as defined.  In coming to my decision, I reviewed the various tests for inventive step including consideration of the problem/solution approach.  I conclude that the Atlantis pamphlet does not deprive the application of inventiveness.

Gerrit Jorna Declaration

As foreshadowed in my opening remarks, I have decided to review this declaration, although it is not strictly in reply.  The declaration comments upon selected paragraphs of the declarations filed in answer.  I have reviewed these comments and find that they repeat comments and submissions made by Mr Bizannes.  This being the case, I see no further point in discussing this declaration.

Manner of manufacture

One final argument raised by the submission of Mr Bizannes related to manner of manufacture. 

In the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that that sec 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.

In reviewing the specification, I cannot see that "on its face" there is a lack of invention.  Indeed, none of the traditional principles seem to apply. 

Furthermore, the fact that the claim defines a method does not necessarily render the claim as lacking manner of manufacture.

Hence, the invention as defined is directed to a manner of manufacture.

Conclusion

I have found that the invention is both novel and involves an inventive step.  Thus, no ground of opposition has been made out.  Hence, I direct that the application be sealed after 30 days from the date of this decision.  If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

Costs

Costs normally follow the event.  I can see no reason to depart from this practice on this occasion.  Hence, costs are awarded against Australian Drainage Modules Pty Ltd and Peter Schindler.

G.M.Cox
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Paul R Taylor & Associates Sydney

Solicitor for the opponents: Victor Bizannes Sydney