Hunter Wire Products v Fioris Pty Limited

[1997] APO 59

official noticE

decision of a delegate of the commissioner of patents

Application  :          No. 627919 in the name of  Hunter Wire Products

Title:          modular screen panel

Action: Opposition by Fioris Pty Limited under section 59 of the Patents Act 1952

Decision:          Issued            .

Abstract

The grounds of opposition of want of novelty, obviousness and not a manner of manufacture found not to have been established.

Only one of the claims defining the invention was found to be not fairly based, only in so far as the claim was the only disclosure. The specification did not teach away from that claim. All the rest of the claims were found to be fairly based.

The specification had been amended during the opposition, largely as the result of the opposition. Cost awarded against the applicant up to the date of acceptance of the last of the  section 104 amendments No costs were awarded after that date.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No 627919 by Hunter Wire Products Limited and Opposition thereto by Fioris Pty Limited under section 59 of the Patents Act 1952.

background

Hunter Wire Products Limited  filed patent Application No 60947/90 ( 627919) on 30 August 1990, which claims priority from provisional application  PJ 5978 filed on 25 August 1989.

After an ex parte hearing into examiner’s objections [decision issued on 10 April 1992] various amendments were made to the specification. The application was finally advertised accepted on 3 September 1992. Fioris Pty Limited filed a notice of opposition on 3 December 1992 and a statement of grounds and particulars on 22 December 1992.

Whilst evidence was being served three separate amendment actions under section 104 were commenced. The amendments started on 26 August 1993 and 4 March 1996 respectively were both allowed. The amendment action started on 21 September 1994 was initially opposed by Fioris, but was  subsequently withdrawn by the applicant on 22 April 1997.

The normal evidentiary cycle on the section 59 opposition was completed on 15 November 1994. The matter could not be set down for hearing until the section 104 amendment action started on 21 September 1994 was resolved. After the applicant had withdrawn their request the matter was set down for hearing, and was heard in Sydney on 20 October 1997. Hunter were represented by Mr. Chris Owens, patent attorney of F.B.Rice, Sydney. Fioris was represented by Mr Tony Smeeton, patent attorney  and assisted by Mr Damon Henshaw both of Davies Collison Cave , Sydney.

As the application was filed before, but accepted after, the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 applies to the grounds of opposition. Chapter 5 of the Patents Regulations 1991 applies to the opposition procedures.

THE SPECIFICATION

The specification, as amended by the two sets of section 104 amendments, relates to an industrial screen  assembly and more particularly to an improved modular industrial screen system.

The specification which is quite short [only 6 pages] relates prior art problems with large heavy and cumbersome screen panels. It then goes on to describe a modular industrial screen system. The system is described in terms of a number of elongated rails of a particular cross section, on to which modular screen panels having a longitudinally extending recess and a resilient skirt are able to be clipped. This is to enable worn screen panels to be replaced quickly and easily. There are three drawings that help in the understanding of the invention claimed.

The specification then ends with 10 claims, only one of which is independent. The 10 claims as amended after acceptance are:

1. A screen assembly comprising:

   a plurality of elongated rails so arranged as to be generally parallel, co-extensive and transversely spaced, each rail having a pair of longitudinally extending protrusions which are transversely spaced;

   a plurality of screen panel modules to be mounted on the rails in side-by-side relationship, each  module having side portions to extend longitudinally of adjacent rails so as to be supported thereby, with adjacent side portions of adjacent modules co-operating to secure the modules to the rails, each side portion having a longitudinally extending reinforcing bar and a longitudinally extending recess located outwardly of the reinforcing bar so that each side portion has a longitudinally extending resilient skirt, and a longitudinally extending  groove projecting from the recess; wherein each protrusion has a transverse cross-section complimentary to its associated recess and groove and is positioned securely  therein so as to be  engaged between  opposing portions of its associated module, with the adjacent skirt portion of  adjacent modules abutting to aid in retaining the modules in position secured to the rails.

1. The screen assembly of claim 1, wherein each protrusion of each rail is provided with spaced cutouts and each panel has a portion arranged to co-operate with a corresponding one of the cutouts to restrain the module against longitudinal movement.

1. The screen  assembly of claim 1 or 2, wherein each module is provided with one or more transverse reinforcing bars.

1. The screen assembly of claim 1,2 or 3, wherein the protrusions snap engage with the recess.

1. The screen assembly of claim 1,2,3 or 4, wherein the grooves of adjacent panels project towards each other transversely of the rail.

1. The screen assembly of claims 1 to 5, wherein the protrusions have a lip at their extremity which is received within the groove.

1. The assembly of any one of claims 1 to 6, wherein the rails are adapted to be secured to support bars.

1. The assembly of any one of claims 1 to 7, wherein the modules are moulded from plastics material and the rails are also moulded from plastics  material to facilitate resilient deformation of the modules and the rails during assembly of the modules on the rails.

1. The screen assembly of any one of claims 1 to 8, wherein the recesses of each  module have a maximum transverse width which is less than the maximum transverse width of the protrusions so that the protrusions snap engage with the associated recesses.

2. A screen assembly substantially as hereinbefore described with reference to the accompanying drawings.

EVIDENCE

The evidence in support consists of statutory declarations by:

• Barry Christopher Allwood, who states he is and has been since 1976 a consulting engineer with CKA Pty. Limited. He points out that he has an extensive knowledge of equipment associated with the mining industry including ore and mineral screening systems. There are 5 exhibits to this declaration including one of the particularised documents.

• William Rutherford, who states that he is the managing director of Fioris Pty Limited the opponent. He states that he has had a long association with the mining industry and has an intimate knowledge of the development and use of ore and mineral screening systems. There are 9 exhibits to this declaration. They  include all of the 9 patent documents particularised and also a physical example of an alleged prior art screen [the Polylok Panel].

The evidence in answer consists of a single statutory declaration by :

• Robert Ian Johnstone, who states that for 32 years  he was a coal washery manager. He has been involved in numerous testing of both Fioris and Hunter wire modular polyurethane screening systems. There is one exhibit to this declaration.

The evidence in reply consists of a single statutory declaration by:

• William Rutherford. This is a second declaration by Mr  Rutherford, there is one exhibit.

SUBMISSIONS

Both parties made submissions at the hearing and also provided me with written summaries of their submissions. I will refer to the submissions where appropriate in my decision.

PROCEDURAL MATTERS

During the hearing one procedural matter arose:

Mr Smeeton provided written submissions dealing with the question of the fair basis of the claims as amended. In the course of providing oral submissions on this ground Mr Owens objected that this was not a ground identified in the statement of grounds and particulars. Mr Smeeton pointed out that the Office was required to assign a priority date to each claim in order to determine the issue of  want of novelty, which was particularised,  especially since the claims had been amended since acceptance. Mr Owens pointed out that the opponent had had the opportunity to oppose the amendments and had not availed themselves of it. He conceded that the delegate nonetheless had to determine priority dates and that Mr Smeeton could address this issue.

I note that despite assertions to the contrary, the Statement of Grounds and Particulars at page 3 recites the ground that;

“Claim 1 is not clear and succinct and is not fairly on matter described in the specification”.

I notice that the word “based” is missing, but I am convinced that it was intended. Although this statement was under the heading Section 59(1)(I), it referred to the claims as accepted not as they now are after section 104 amendments, I have no hesitation in considering the issue of fair basis. Also I need to accurately determine the priority date of the claims in order to determine their novelty.

FAIR BASIS/PRIORITY DATES

In determining matters under section 40 I will have to have regard to the provisional specification, the complete specification as  filed, as accepted and in its present form as amended under section 104. In this regard I also have to give due weight to the matter disclosed in the drawings, which were all filed at the original filing date. [Page two of the drawings was originally informal but this was rectified before examination].

I am asked by the opponents to find that claims 1,2 and 8 in particular lack fair basis and were not entitled to the priority date of the filing of the provisional.

The specification as filed  contains the phrase on page 3  “Further screen members 1 being formed of plastics material may be reinforced with reinforcing bars 16 extending longitudinally and/or transversely therein” [emphasis added]. This exact phrase is also present in the provisional specification.

The complete specification as filed then goes on to claim this particular feature in claim 5:

“Apparatus of Claim 4 wherein the screen panel module is provided with reinforcing bars extending longitudinally and/or transversely  therein” [emphasis added]

Figure 3 of the drawings clearly shows this feature and also its position, inward of the longitudinally extending recess [these drawings accompanied the provisional specification].

Claim 1 in its present form is essentially only claim 5 as filed promoted to claim 1. The only feature in current claim 1 which is apparently new is the feature that the recess has a longitudinally extending resilient skirt.[Emphasis added]. The extension of the skirt and its relationship to the recess is clearly shown in figure 3. The fact that it is resilient is merely reiterating the properties of the plastics material from which it is made.

In determining the fair basis of the claims I refer to  Mond Nickel Co.’s Appln, (1956) RPC 189.
According to this case a claim is fairly based on matter disclosed in a provisional application when each of the following tests is satisfied:

• the matter claimed is broadly described in the provisional specification

• the claim includes nothing inconsistent with the disclosure of the provisional specification

• the claim includes no feature characteristic of the invention on which the provisional   specification is wholly silent.

In my view claim 1 meets all these tests and I thus find claim 1 in its present form is fairly based and therefore entitled to the priority date of the filing of the provisional namely, 25 August 1989.

Claim 2  is allegedly not fairly based due to the inclusion of the phrase “..and each panel has a portion arranged to co-operate with a corresponding one of the cut-outs...”.

However I find support for this feature at line 38 on page 2 of the specification as filed,[although the provisional specification is silent on this feature] which states:

“Cut-outs 17 are provided in rail member 6 to provide means by which movement in       directions B and C of panels 1 is prevented”.

This is backed up by figure 1 of the drawings [the first drawing figure of the provisional specification is different and does not disclose this feature].

I thus find that claim  2 in its present form is fairly based on the complete specification as filed but not on the provisional specification. It is thus only entitled to the priority date of the filing of the complete specification, namely 13 August 1990.

Claim 8 is asserted by the opponent not to be fairly based because it introduces the feature that “..the rails are also moulded from plastics material to facilitate resilient deformation of the modules and the rails during assembly of the modules on the rails” [emphasis added]. The applicant argued that the rails were originally claimed as being made of any suitable material and that merely limiting them to being made of resilient material was within the scope of the claims as originally filed.

I could agree with this argument if that is all that has been claimed. However the specification as filed is totally silent on the feature of resilient deformation of the rails during assembly. However I do not believe that the specification actually teaches away from this. I note that the physical exhibit of the Polylok screen[accompanying the Rutherford declaration] has resilient rails to which screen modules are attached. I believe that a skilled addressee would contemplate that the rails could be made of any suitable material. Clearly rails made of a plastics material would be subject to resilient deformation.

On this basis I find that claim 8 is not fairly based, only in so far as there is no support for it in the description.

PRIOR USE

The opponent alleged that the Declaration by Robert Ian Johnstone establishes prior use of the Hunter product. They based this on three particular paragraphs in the Johnstone declaration, namely 6 and 8 which establish that Johnstone was manager of Saxonvale Colliery from 1989 to 1992 and 16 which states that he has been involved with the testing of both the Hunter screen system [the subject of the patent in suit] and the Fioris system [the subject of alleged anticipating patent number 559443].

The argument put to me by the opponent is that if the claims are not entitled to the priority  date of 13 August 1989, this statement by Johnstone establishes prior use. I cannot accept this argument. The Johnstone declaration does not accurately establish the date of first use of the Hunter system but loosely puts it sometime between 1989 and 1992 when he was at Saxonvale colliery. Therefore having determined that claim 1 has a priority date of 25 August 1989 and claim 2 has a priority date of 13 August 1990, I cannot clearly determine that the Hunter product was used at Saxonvale colliery prior to either of these dates. Thus I find that the patent in suit is not anticipated by prior use.

SUFFICIENCY OF DESCRIPTION

The opponent has argued that because the specification did not disclose the support means for the modular screen panels, the invention was not fully described. I disagree, the invention is merely the modular screen deck assembly. A person skilled in the art would know that this is to be mounted on a known screening machine. Thus not describing or claiming the screening machine itself does not render the description insufficient.

NOVELTY

a) The relevant law

The test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aicken J in Meyers TaylorPty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235:

“ 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”

The test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517:16 IPR 545 at page 549)

b) The essential features

Although a number of documents were particularised by the opponent they chose to rely chiefly on the disclosures in the Fioris patent [Australian Patent 559443 referred to earlier]. I have looked at all the other documents particularised and am of the opinion that none of them contain all the essential features of claim 1. The Fioris specification is the closest. The evidence included a physical sample of the Fioris screen system that goes under the name of the “Polylok” system. It is best exemplified by figure 7 of the drawings in the Fioris specification. It has all the features of claim 1 of the Hunter specification except for the feature of the longitudinally extending reinforcing bar and a longitudinally extending recess located outwardly of the reinforcing bar.

At the hearing Mr Smeeton, for the opponent, argued that this feature was not essential since it was not described as such in the specification as filed. He correctly pointed out that even during the course of the earlier ex-parte hearing and the subsequent amendments prior to acceptance this feature was not included in claim 1. In fact he argued that the feature was only promoted to claim 1 when the state of the prior art became known during the serving of evidence phase of  the opposition.

Although that may be true, I am bound to observe that the whole purpose of patent claims drafting with dependent claims is to allow claims to be promoted when citations render the broadest form of the claim not novel.

It is well established that patent claims are to be given a purposive construction, and the initial assumption is that all features of an independent claims are essential (Catnic Components v Hill & Smith Ltd [1982] RPC 183). A feature can be regarded as not essential if it does not appear to make any difference to the inventive concept.

Mr Owens for the applicant has argued that the reinforcing bar gives advantages over the prior art. To support his argument  he pointed out that  Mr Johnstone in his declaration at point 21 states:

“..From the test work at Saxonvale the Hunter screen modules with the longitudinally extending recess being located outwardly of the longitudinally extending reinforcing bar enabled the reinforced portion of the modules to be supported on supporting bars 3 and to span between the longitudinal support bars with greater strength and rigidity.

The Fioris modules on the other hand, lacked this rigidity and support module failures were experienced during the test period.”

This to me is clear evidence that the feature of the longitudinally extending reinforcing bar and a longitudinally extending recess located outwardly of the reinforcing bar is an essential one.

Since this feature is not present in any of the alleged anticipating documents I find that claim 1 is novel. Since all the other claims are appended to claim 1, I find that they are also novel.

OBVIOUSNESS

As section 59 of the Patents Act 1952 applies to the grounds of this opposition, the question I have to ask, in relation to obviousness, is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art in Australia at the priority date.

Person skilled in the art

The art is clearly that of  industrial screening of minerals. I believe that all the declarants are skilled in this art. I am of the view that Mr Rutherford, as he has been named as an inventor in three earlier Australian patents, may be overqualified as a non imaginative skilled workman and consequently I will give his evidence less weight than the other declarants.

Common General Knowledge

In determining the extent of the common general knowledge in this matter, I am guided by the judgement of Aickin J. in Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited 144 CLR 253, in which he stated:

“The notion of common general knowledge itself involves the use of that which is known or used in the relevant trade. It forms the background knowledge and experience available to all in the trade in the considering of the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge”

Mr Smeeton, for the applicant, argued that the “Polylok” screening system  [the subject of the Fioris patent] was part of the common general knowledge. He referred me to the declaration of Mr Rutherford at paragraph 15 where sales of this product are detailed.

The nature of common general knowledge is discussed in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited (1972) RPC 457 at 482 as follows:

“The common general knowledge is imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury’s Laws of England, Vol 29 , para. 63. A regards patent specifications it is the somewhat artificial (per Lord Reid in the Technograph case (1971) FSR 188 at 193) concept of patent law that each and every specification , of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee-, the sort of man, good at his job, that could be found in real life.”

In the light of this case law I cannot agree with Mr Smeeton’s  argument. Sales to 4 customers, of  some 40 units, about two months before the priority date of the claims of the Hunter specification, hardly proves common general knowledge.

The opponent also asserted that to reinforce screen panels with a longitudinally extending reinforcing bar was also common general knowledge. The Rutherford declaration at paragraph 13 (f) states that because reinforcing plastic moulding is disclosed in 6 patent specifications it is common. Note that Rutherford does not assert that it is part of the common general knowledge in the patent sense. Therefore I believe that the opponent has not managed to prove that the  common general knowledge at the priority date of the claims included reinforcing screen modules with a longitudinally extending bar.

It is clear to me that the Fioris product had a weakness as regards strength. Hunter have come up with an invention that not only increases the strength of the screen panel, but does it in such a way as to retain the flexibility required to enable a snap lock fitting of the panels to the screening machine. This it does by the arrangement of the longitudinally extending recess, the reinforcing bar and the resilient skirt. Although the Fioris patent shows a similar construction, it does not have the reinforcing bar and there is nothing in the evidence that leads me to conclude that it would have been obvious to add it, and thus come up with the claimed invention.

Thus I do not believe the opponent has established that the claimed invention would have been obvious to a person skilled in the art of industrial screens used in the mineral industry at the priority date of 627919.

MANNER OF MANUFACTURE

Mr Smeeton, for the opponent, argued that a number of separate features claimed in the specification in suit were individually well known, as evidenced by a number of patent specifications particularised. He submitted that all of claim 1, apart from the actual positioning of the reinforcing bar was disclosed in the Fioris Patent. He further argued that the positioning of the reinforcing bar was a mere design choice and as such was not a patentable manner of manufacture; and that as all the features  of claim 1 were individually well known, the claim amounted to no more than a collocation of known integers.

Having considered Mr Smeeton’s submissions, it is not apparent on the face of the present specification that the subject matter of the claims, is by reason of the necessary quality of inventiveness, not a manner of manufacture for the purpose of the Statute of Monopolies (Phillips v Mirabella 32IPR 449). In Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256 the court stated that a combination patent may be valid even if each integer , when considered separately, is well known; but in that case the combination itself must be new, and cited the following passage from Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels Plc 26 IPR 565 at 570:

“There can be no subject matter. in a mutual relation which is already known; the inventiveness must lie, if at all, in the improvements which it is claimed to have been effected in respect of one of the integers. Only if a change to integers so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct  to see the improved result as a new combination”.

I have already found that the feature of the arrangement of a longitudinally extending recess, the reinforcing bar and the resilient skirt, when applied to modular screen panels is both novel and non obvious. It therefore follows that this feature introduces a new element into the combination claimed by the present application, such as to amount to  a new combination in the sense discussed in the Ramset case (supra).

I therefore find that the invention claimed by Hunter is a Manner of Manufacture.

CONCLUSION

I find that the opposition fails on the grounds of want of novelty, manner of manufacture and obviousness.

I find that only claim 8 lacks fair basis. I find that claim 2 is only entitled to a priority date of 13 August 1990.

I allow the applicant 60 days from the date of this decision in which to propose suitable amendments directed towards overcoming my findings.

COSTS

The power to award costs, which is based on section 210 and regulation 22.8, is discretionary and consequently I must take all relevant considerations into account.

At the hearing I invited submissions as to costs and Mr Smeeton for the opponent drew my attention to the fact that applicant had amended the specification during the opposition proceedings.

This opposition has not succeeded on any grounds bar one of minor significance. However I believe that the amendments that were made by the applicant were prompted by the opposition. The effect of the amendments is to narrow the scope of the accepted claims.

In the circumstances I award costs against the applicant up to the acceptance of the final set of amendments [ie 17 September 1996]. For actions after that date I make no award of costs

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :F.B.Rice and Co, Sydney. 

Patent attorneys for the opponent :Davies Collison Cave, Sydney: