Inax Corp v Caroma Industries Ltd

[1994] APO 48

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 562626 in the name of
INAX CORPORATION

Title:    Forming drain-cast hollow articles

Action: Opposition under section 59 (Patents Act 1952) by CAROMA INDUSTRIES LIMITED; hearing.

Decision:    Issued            .

Abstract:    Novelty, obviousness and s.40 matters considered.  Admissibility of evidence in reply also considered.

Grounds of opposition not established.  Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 562626 by INAX CORPORATION and opposition thereto under section 59 of the Patents Act 1952 by CAROMA INDUSTRIES LIMITED.

background

Patent application 562626 for an invention entitled "Method for obtaining drain-cast hollow articles for ceramic ware and apparatus therefor" was filed by Ina Seito Co Ltd on 26 May 1983 and was allocated the application number 15022/83.  The application is now proceeding in the name of Inax Corporation ("Inax").  The application claims priority from an application filed in Japan on 27 May 1982.  The application became open to public inspection on 8 December 1983.

Acceptance of the application and complete specification was advertised on 18 June 1987, the accepted application being then renumbered as serial number 562626.  A notice of opposition was filed by Caroma Industries Limited ("Caroma") on 18 September 1987.

The evidence stages of support, answer and reply for the opposition were completed by 18 January 1990, 14 October 1991 and 15 February 1993, respectively.  During the evidence stages the applicant made two requests to amend its complete specification, and these amendments were advertised allowed on 21 February 1991 and 9 July 1992, respectively.

The matter was set down for hearing in Sydney on 12 October 1993.  Inax was represented by Mr C Carew, patent attorney of Griffith Hack & Co and Caroma was represented by Mr F Old, patent attorney of Spruson & Ferguson. 

As the application was advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable.

The notice of opposition states that the grounds of opposition are those specified in paragraphs (a), (c) through (i) of section 59 of the Patents Act 1952. At the hearing submissions were only directed to the grounds of prior publication, lack of novelty, obviousness and non-compliance with section 40, i.e. grounds specified in paras (e), (g), (h) and (i). There is no material before me relevant to those grounds of opposition not canvassed at the hearing and I formally dismiss them.

THE SPECIFICATION

The invention relates to drain-casting hollow articles which can then be burned to produce substantially hollow ceramic or porcelain ware such as sanitary ware and the like. 

The specification describes the background to the invention by referring to some known methods where inherently porous molds (eg. made from gypsum) or molds incorporating a porous drainage conduit have been used to form hollow articles.  In the latter case, a method disclosed in US Patent 3156751, compressed air is applied to the conduit to drive absorbed water out of the used mold for drying.  These known methods are however said to be slow to produce articles or otherwise impractical to use.  A further method, disclosed in US Patent 3243860, concerns molding a solid article but it is not possible to drain the undeposited slip from the apparatus and difficulties in demolding the article are said to arise.

The specification indicates that the present invention solves problems associated with prior methods due mainly to the nature of the mold used and the way drainage water is removed from the article, and the manner of demolding.  It refers to several objects thus:

"It is an object of the present invention to provide a method for drain-casting a slip effectively and efficiently by using a mold repeatedly to obtain a substantially hollow molded article for ceramic or porcelain ware.

It is an object of the present invention to minimize the time required for molding the article  and for removing the molded article from the mold without deformation or damage."

The specification indicates that "the term `drain-casting' used herein refers to the operation of cast-molding a slip into a hollow article by draining the undeposited slip remaining in a mold cavity."

The specification as amended following acceptance ends with 23 claims.  Claims 1 and 10 are independent claims to a method and an apparatus.  Reproduced below are a number of the claims.

"1.A method for drain-casting a slip to obtain a substantially hollow molded article, by the use of an apparatus comprising a mold including at least two divisible mating mold portions to form a mold cavity, each mold portion including a pressure-proof air-tight vessel and a filter member inside the vessel, the inner surface of said filter member defining the shape of the article to be moulded (sic), said filter member containing a water-drainage means which is more porous than the filter member, said water-drainage means being communicated with the openings outside of the vessel, one of said mold portions having an overflow duct communicated with the outside of the vessel, and one other mold portion having a slip supply duct; which method comprises the steps of
(a) supplying slip through the slip supply duct to the mold cavity until the supplied slip overflows the overflow duct,
(b) closing the slip supply duct and pressurizing the slip through the overflow duct to facilitate deposition of the slip onto the filter members of the mold to a desired thickness, (c) begining to depressurize the water drainage  means in the time period from 1/3 to 19/20 course of the deposition step, drained water being taken away from the mold,
(d) changing the connection of the slip supply duct for downward flow and draining the undeposited slip remaining in the mold cavity through the slip supply duct,
(e) depressurizing the water-drainage means of one mold portion to create a vacuum between said one mold portion and the resulting article, (f) applying compressed air to the water-drainage means of the other mold portion to exude some water between the filter member and the resulting molded article, (g) and removing said other mold portion from the molded article, and then
(h) hanging the molded article attracted into said one mold portion over a stand, (i) applying compressed air to the water-drainage means of the mold portion to exude some water between the filter member of said one mold portion and the molded article, (j) and safely demolding the molded article onto the stand.

2.The method according to claim 1, in which the water-drainage means is a water-drainage conduit.

.....

10.An apparatus for drain-casting a slip to obtain a molded article, which comprises;
(a) a mold including at least two divisible mating mold portions cooperating to form a mold cavity, (b) each mold portion including a pressure-proof air-tight vessel and (c) a filter member inside the vessel, (d) the inner surfaces of said filter members defining a shape of the article to be molded, (e) said filter member containing a water-drainage means which is more porous than the filter member, (f) said water-drainage means being communicated with openings outside of the vessel, (g) and one of said mold portions having a slip supply duct and (h) one other mold portion having an overflow duct which ducts are communicated with the outsides of the vessels;
(i) a slip tank, valves and a pump connected through tubing with the slip supply duct of the mold portion;
(j) an air compressor connected via a multi-way valve and an overflow tank with the overflow duct of the mold portion;
(k) an air compressor and a suction pump connected via multi-way valves through tubing with the openings of each water-drainage means;
(l) supporting means to support each of the mold portions, (m) at least one of the mold portions being supported movably; and
(n) a moving stand to receive a molded article thereon safely."

I have inserted in claims 1 and 10 above alphabetical references in brackets to aid subsequent discussion about features of the claims.

Claims 11 to 21 append to claim 10 and further characterise the apparatus.  Claims 22 and 23 are typical omnibus claims to a method and an apparatus for drain-casting a slip which refer to certain figures of the drawings to the specification.

Various embodiments of the invention and preferred features are described with reference to drawings.  The specification indicates that the filter member can be formed of filter materials known in the art, eg. gypsum, porous plastics etc, and that the water-drainage means can be tubes or cords of porous material.

EVIDENCE

For Caroma, evidence in support comprised declarations by
    . Fraser Patison OLD (2 declarations)
    . Jerry TONKOVIC with exhibit JT-1.

Inax's evidence in answer comprised declarations by

. Frank OSTERLUND with an Annexure 1

. Kuniyoshi KOMURA with an Annexure 1.

Caroma filed as evidence in reply a declaration by
    . David A TAYLOR with an Annexure.

A summary of the main aspects of the evidence follows.

Evidence in support

TONKOVIC states that he is a Ceramic Engineer and a member of the Ceramic Society of Australia.  In paragraph 2 he states:

"I joined Doulton Australia in 1972 and have been continuously employed by that organisation, or its successor, ever since.  About 1980 the sanitary ware business of Doulton Australia was purchased by Caroma Industries Limited."

The opposed specification, TONKOVIC observes, is concerned with "pressure casting which is essentially a speeded up procedure relative to conventional casting methods used in Australia before 1982.  The conventional method may conveniently be termed battery casting since a battery consisting of a large number of plaster moulds are used."  TONKOVIC states in paragraph 9 that the essential aim of pressure casting is to speed up the time taken for the deposition of the slip material.  In paragraph 10 he mentions that "most research work conducted prior to 1982 was concerned with the nature of the material used to form the mould itself", and goes on to mention certain other research efforts at times unspecified.  He concludes paragraph 10 by referring to Exhibit JT-1 which "is a copy of a progress report regarding pressure casting supplied to Doulton Australia by the English Doulton Research Limited and entitled PROGRESS REPORT TO THE PRESSURE CASTING STEERING COMMITTEE.  This report is dated 29th May, 1968."  In paragraph 14 TONKOVIC says the author of the report, Alan W Norris, "kept Doulton Australia up to date with what was happening in the UK and was familiar with the work of the British Ceramic Research Association", which association is referred to in the report.

In paragraphs 18 to 43, TONKOVIC compares the disclosures of 5 UK or US Patents with the (accepted) claims of the opposed specification.

Mr Old's declarations give accession dates in the Australian Patent Office for the Patent specifications referred to by TONKOVIC.

Evidence in answer

OSTERLUND also states that he is a Ceramic Engineer and a member of the Ceramic Society of Australia.  He indicates that he has been managing director of a company manufacturing ceramic articles since 1981.  Between 1965 and 1981 OSTERLUND was employed by Doulton Potteries Pty Ltd, subsequently taken over by Caroma, initially as a technical manager and finally as a technical director.  In paragraphs 4 to 9 OSTERLUND mentions his work activities and knowledge of research activities concerning pressure casting up to 1981.

In paragraph 10 OSTERLUND states what he understood was the best available method of manufacturing hollow wash basins prior to 1983, namely using a particular battery casting system, but he also mentions drawbacks with such a system.  In paragraph 11 he indicates his "understanding that high pressure slip casting techniques were required in order to gain any productivity advantage in producing cast articles.  However, prior to 1983, it was not known how to overcome problems associated with moulds breaking when utilizing high pressure slip casting techniques."

OSTERLUND in paragraphs 13 to 16 reviews the opposed specification, and in paragraph 17, covering pages 9 to 32 of his declaration, he addresses points raised by TONKOVIC in his declaration and comments in depth on the disclosures of the UK and US Patents identified by TONKOVIC.

KOMURA is a Ceramic Engineer having graduated in March 1979.  He has been employed by Inax since April 1979, and at the time of making his declaration (July 1991), was chief of production.  He says he has been involved with the development and utilization of the invention to produce sanitary wares. 

In paragraph 5 KOMURA says that prior to the present invention "the conventional method for drain-casting a slip involved a procedure called 'bench casting'".  KOMURA's description of bench-casting appears to relate to a method which is either identical with, or very similar to, the battery casting methods referred to by TONKOVIC and OSTERLUND.  The bench casting method is said by KOMURA to have problems, mainly due to the time taken to produce a cast article and the large floor area needed to mass produce articles.  He says that in practicing the present invention those problems are much reduced.

Evidence in reply

TAYLOR is managing director of a company trading as Taylor Ceramic Engineering and a member of both the Australian Ceramic Society and the Ceramic Society of the USA.  He indicates more than 25 years experience in the ceramics industry.  In paragraph 2 he lists various, apparently current, professional activities relating to business, government and universities, and in paragraphs 4 to 11 mentions various specific developments and other activities with which he has been involved without indicating any dates for those matters.  The developments mentioned include processes for "advanced ceramics", a ceramic alumina production plant, "bio-medical ceramics", etc.

In paragraphs 13 to 58 TAYLOR relates his "experience in Australia prior to 1982" concerning slip casting of large articles and discusses features of the claims based on his activities and what he states was "commonly known and in general use in Australia before 1982".  TAYLOR has annexed to his declaration (a) photographs which are said to be the remains of apparatus he used to form large articles, (b) diagrams illustrating various apparatus he used including that said to be shown in the photographs, and (c) an extract from the book "Ceramics for the Artist Potter" by F H Norton, which TAYLOR says he has had since 1969, illustrating a pressure casting arrangement where slip is both supplied by, and drained via, a single conduit at the base of the mold.

In paragraphs 59 and 60 TAYLOR states that he is "generally in favour of the sentiments expressed" in TONKOVIC's declaration and "not in agreement with the views expressed" in OSTERLUND's declaration.

I will discuss other relevant parts of the evidence where appropriate in the decision.

SUBMISSIONS AND DECISION

Whether declarants are skilled in the art

At the hearing Mr Carew questioned the standing of opponent's declarant TONKOVIC as an expert in the art.  He contrasted TONKOVIC's brief statement of experience in paragraph 2 of his declaration with OSTERLUND's detailed experience statements.  He said there was nothing to indicate exactly what he did, thus the question arose as to his skill in the art.  It was an important issue, he said, since OSTERLUND had in his evidence fully responded and disputed much of TONKOVIC's evidence, there was no reply evidence from TONKOVIC, and thus there is a question of whose evidence to prefer.

TONKOVIC says he qualified as a ceramic engineer in Yugoslavia but does not indicate when, and says nothing about relevant experience before joining Doulton Australia.  I agree with Mr Carew that it is not clear what work he performed with Doulton Australia.  It is thus not evident whether he has the background experience to qualify as a person skilled in the art, and even if he is so qualified, it is not apparent to what time period this might apply.  In his declaration he makes statements about things "well known in Australia prior to 1982", but in the absence of evidence of his precise work experience such statements must be given little weight.

Regarding OSTERLUND, it is clear from his experience resume that he has had a technical involvement in the ceramics field in Australia since 1965, and has travelled overseas on several occasions to study the state of the art of sanitary ware manufacturing.  His standing as a person skilled in the art has not been challenged.

Mr Carew also questioned the standing of declarant TAYLOR and whether he was an expert in the art of pressure casting ceramic wares at the priority date (1982).  TAYLOR's experience resume is devoid of dates.  He does say that his "experience in Australia  prior to 1982 includes the slip casting of large articles weighing up to 25kg each" and describes the method and apparatus that he says he employed, but again no dates are given concerning these activities.   Repeatedly TAYLOR refers to his activities, or matters commonly known or in use, "prior to 1982" without being specific as to dates or it being clear what the nature of his activities or experiences specifically were before 1982 in order to provide the basis for his statements or conclusions.   Against this background I agree with Mr Carew that there is a doubt about TAYLOR's expertise at the priority date and, as with TONKOVIC, statements in his evidence need to be treated with caution. 

Admissibility of evidence in reply

Mr Carew submitted that TAYLOR's evidence included new evidence and was not confined to evidence strictly in reply.  He indicated that the applicant had not had an opportunity to counter the new evidence if that evidence were to be relied upon.  He submitted that it should not be admitted into, or not have a bearing on, the proceedings.  He referred to Ernest Scragg & Sons Ltd's Application [1972] FSR 219 in support of his submission. Mr Old made the point that the specification had been amended after the opponent had filed its evidence in support.

Whilst amendments were effected to the claims after acceptance, I do not think that those changes have really affected the opponent's case.  Amended claim 1 now bears a limitation originally in claim 3 at acceptance and the independent apparatus  claim is unchanged.  Thus evidence raised to the original claims would also apply to the amended claims.

I am in no doubt that TAYLOR's declaration includes new evidence and basically this embraces his entire declaration.  TAYLOR refers to certain methods and apparatus which he used in casting articles (paragraphs 13 to 27), refers to a book in paragraphs 28 and 29, and in paragraphs 30 to 58 discusses features of the claims, frequently concluding that features were "commonly known and in general use in Australia before 1982".  All of the material just mentioned is "new" evidence.  In paragraph 59 TAYLOR says he is "generally in favour" with TONKOVIC's sentiments, and in paragraph 60 expresses general disagreement with OSTERLUND's views concluding "My reply to that Declaration (OSTERLUND's) is as indicated above in the description of my experience in Australia in this field".  The majority of OSTERLUND's declaration (paragraph 17, pages 9 to 32) analyses the prior patent specifications raised by TONKOVIC.  In paragraphs 10 to 12 OSTERLUND makes some general comments about casting systems before 1983 and in paragraphs 13 to 16 refers to the opposed specification, listing without commenting thereon features of the claims (paragraph 15) and features of the preferred embodiment (paragraph 16).   KOMURA's evidence is of a general nature referring to features of the present invention.  If TAYLOR's evidence is strictly reply evidence, one should be able to identify portions of his evidence which can be directly linked to statements or opinions expressed by OSTERLUND or KOMURA, but there are no such links.  At best TAYLOR repeats the listing given by OSTERLUND of the features of the claims and appears to agree with it.  TAYLOR does not even mention the prior patent specifications closely analysed by OSTERLUND over 24 pages.  In my view TAYLOR's evidence is not strictly evidence in reply and is new evidence.

Thus TAYLOR's evidence is strictly inadmissible to the proceedings as evidence in reply.  Had I been of the opinion that this evidence was critical in determining the opposition I would have had to reject it.  As will appear later from my comments in this decision I do not consider this evidence decisive to the opposition grounds alleged.

Section 40

Mr Old raised a number of matters relating to the requirements of section 40.  Firstly he referred to a difference between a statement on page 6, "In accordance with the present invention ...",  and the definition in present claim 1 and submitted a lack of fair basis of the claim.  The difference concerns a feature promoted by amendment after acceptance to claim 1 from accepted claim 3.  The relevant portion of the claim reads:

"begining to depressurize the water drainage means in the time period from 1/3 to 19/20 course of the deposition step".

I note that the only references to this feature in the description, on pages 4 and 22, imply it to be a preferred step of the method, whereby water exuded from the deposited slip during the deposition step can be more readily removed via the water drainage means.  Considering the specification overall I do not agree that the difference referred to causes a lack of fair basis under section 40.

Secondly, Mr Old further referred to the same feature in claim 1 and the related statements on page 22 and raised two points.  The first was that the term "course" was not a term of art and rendered the claim definition unclear, and the second was that the specification as filed referred to different ratio ranges.  As to the first point, I note that TONKOVIC suggests the term is unclear whereas OSTERLUND and KOMURA have no difficulty with its meaning and the surrounding definition.  In the context used the meaning seems clear enough to me and accords with what KOMURA says with regard to claim 1, namely the "time period commencing after 1/3 of the period for the deposition step has expired until 19/20 of the period for the deposition step has expired".   Concerning the second point, this arises from an amendment made to the ratio range at the time of acceptance of the application.  The original ratio range in then claim 3 was included thus:

"... the depressurization of the water-drainage means is conducted in the later about 2/3 to about 1/20 course of the deposition step". 

The description on page 22 was also amended at acceptance, the original text reading, with the amended ratio ranges indicated in brackets:

"It may be said that it is effective to conduct the depressurization of the conduits only in the later about 2/3 to 1/20 (1/3 to 19/20) and preferably in the later about 1/2 to 1/10 (1/2 to 9/10) course of the deposition step."

The basis for these amendments and their allowance at the time is not evident from the file documents.  I note that the amendment in the claim, but not page 22, has introduced reference to the "time period ...".  My reading of the specification on page 22 as filed clearly suggests that the depressurization of the conduits be preferably conducted during a later phase of the deposition step and the original ratio ranges are clearly intended to specify periods within the later phase.  It seems to me that what is stated in claim 1 is really a rewording of the original definition to better convey the intended timing of the step concerned.  The ultimate issue here is whether by amendment the claim is directed to matter not in substance disclosed in the specification as filed, because if it is then the priority date of the claim would be determined under s.114.  In view of my assessment of the amendments, I do not consider that claim 1 claims any matter not originally disclosed.

Lack of novelty

In deciding whether a claimed invention lacks novelty, the courts have used the so-called "reverse infringement test".  For example in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228, the test was stated at page 235 as follows:

"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.

Furthermore in Yamazaki Mazak v Interact Tools 22 IPR 79 it was stated at page 91:

"Where the patent under challenge claims a combination and the alleged anticipation does not incorporate the integers of the combination claim, so that the alleged anticipation would not constitute an infringement, there is no anticipation."

The opponent relies on a number of specifications to support its lack of novelty attack on the claims.  I will review the specifications cited to compare their disclosures with the main method and apparatus claims.  In so doing I note the evidence of TONKOVIC and OSTERLUND where they refer to these disclosures, noting also that TONKOVIC, given the date of his declaration,  addressed the method of accepted claim 1.

UK 1205952 (opi 1970)

This specification deals with pressure casting and appears to principally address the material composition of the filter member forming the mold.  Whilst the general nature of the mold portions, slip supply and overflow ducts to the mold portions as claimed are disclosed, there is no mention that the filter member for each mold portion contains "a water-drainage means which is more porous than the filter member" (feature (e), claim 10).  The filter member disclosed is merely inherently porous so as to allow liquid from the deposited slip to be drained away.  There is no disclosure of an "overflow duct" (feature (h)), the tanks, valves, pumps etc for the supply of slip or compressed air, and no details concerning support for the mold portions or molded article (features (i) to (n)).  Regarding the claimed method, this prior specification lacks disclosure of most of the steps as specifically defined including those of features (a) to (e).

UK 1295055 (opi 1973)

This specification also deals with pressure casting, the apparatus including means to conveniently handle and position the mold portions.  There is no mention that the mold portions have  filter members as defined by feature (e), claim 10.  There is a reference to making "provision .... for the drainage of surplus slip from the cast product in routine manner" but no mention of an overflow duct from one mold portion (feature (h)) nor then feature (j).  Features (i), (l) to (n) are in my view disclosed.  Regarding the claimed method, features (a) to (d) at least are not disclosed by this specification.

UK 1359684 (opi 1984)

Whilst this patent specification was published by the UK Patent Office in July 1974, Mr Old declares that it "was accessioned in the Australian Patent Office Library on 10 October, 1984", ie. after the priority date. 

Pressure casting of ceramic articles is also disclosed in this specification.  The apparatus disclosed allows convenient handling of the molds and cast articles.  There is no mention that the mold portions have filter members as defined by feature (e), claim 10.   There is no disclosure of an "overflow duct" (feature (h)) nor then feature (j), but there is mention of a "drain orifice" to allow removal of surplus slip.  This drain orifice is clearly separate from the slip supply "duct 20".  Features (l) to (n) are disclosed.  Like the previous specification, there is no disclosure of method features (a) to (d), at least.

US 3659994 (opi 1973)

This specification discloses injection molding apparatus for making ceramic articles.  Primarily the disclosure concerns means to enable ease and convenience of handling the carrier elements which hold the mold portions ("mold and core") and to clamp one mold portion to the other, but features of the mold portions and slip delivery are also discussed.  A support frame enables a top carrier associated with the core to be lifted clear of the mold and its carrier.  Apparatus claim features (a) to (d), (g), (l) and (m) are clearly disclosed.  There is no "overflow duct" disclosed as per feature (h) nor then feature (j); to help removal of undeposited slip, fluid pressure can be injected into the cavity in the cast ware via a fitting in the mold portion which also has the slip supply duct, namely the "mold".  The mold portions are made of plaster or other porous material.  The specification states that

"Tubes as shown at 74 and 76 may be provided within the core and mold for purposes that are conventional, and well known in the art, and, therefore, will not be dwelt on herein."

The figures to the specification show rows of tubes, in cross section, adjacent the slip depositing surface of each mold portion.  There is no indication that these tubes are connected together and no connections to outside the mold carriers are evident from these tubes.  From the specification itself it is not apparent what "conventional purpose" these tubes serve.

Regarding the claimed method, features (a) to (c) at least are not disclosed.

US 3663681 (opi 1973)

The invention in this specification is stated to be an improvement in an injection molding apparatus of the type described in [US patent 3659994] by the same inventor.  It has a similar figure 1 to the earlier patent and the representation of the mold portions is similar.  It is primarily concerned with an improvement to handling the mold portions or their carriers, particularly enabling the top carrier and core mold portion with cast article attached or held thereto to be lifted from the lower mold, translated laterally, and then rotated through 90 degrees in order to discharge the cast article onto a movable platform.   As with patent 3659994, mention is made of "tubes" shown at 74 and 76 "within the core and mold for purposes that are conventional and well known in the art".  The drawings suggest that in the core mold portion there is a single tube 74 of spiral configuration.  The description mentions that "fluid is forced into tubes 74 ... and this causes the release of the cast ware 60 from the mold cover 50".  This patent discloses the same apparatus features as the previous US patent with the addition of feature (n). 

At the hearing Mr Old submitted that the disclosures of the two US patents could be combined given the cross reference in US 3663681.  Given the several references to the earlier patent document there is some basis for the view that a reader of US 3663681 is directed to the other document for details or elaboration of certain features of the invention.  However, even if the disclosures of the two US patents are consider a single disclosure, in my view there is no more disclosure of the claimed apparatus then as already stated for US 3663681 and most features of the claimed method remain undisclosed.

I have mentioned that both US patents refer to tubes 74 and 76 in the mold portions "for purposes that are conventional".  TONKOVIC, in paragraph 35 states that these tubes "are the drainage arrangement [feature (e) of the apparatus] which at column 2 lines 21-23 are dismissed as being entirely conventional.  These tubes must be connected to the exterior of the pressure vessel thus disclosing [feature (f)]."  TONKOVIC does not explain the basis for his statement that the tubes of the US patent are the water-drainage means of the present apparatus; there is an inference that because they are said to be for "conventional" purposes this meaning naturally follows.  In paragraph 36 TONKOVIC refers to an unnumbered tube in the upper mould portion (Fig 3, US 3659994) and states that this tube "is presumably used to firstly apply a vacuum and then compressed air directly to the interior mould surface during the de-moulding operation".  In answer to these statements, OSTERLUND refers to the fact that a use is given for tube 74 in US 3663681 and then says:

"Therefore, from the combined disclosure of both US patents, it appears that the only purpose for tubes 74 and 76 is for fluid pressure to be introduced therein to help with the release of the cast ware from the mould cover.  Neither US patent makes any disclosure of utilizing tubes 74 and 76 during pressurization of the slip so as to remove water which enters the mould."

Regarding the unnumbered tube in Fig 3, OSTERLUND says this about TONKOVIC's presumption:

"Such a presumption however, is pure speculation as there is no disclosure of what this unnumbered tube is for."

It is well settled law that a publication must be construed as at its date of publication as it would be by a reader skilled in the art having regard to the state of knowledge in such art at that time (see General Tire & Rubber Company v. Firestone Tyre & Rubber Company (1972) RPC 457 at page 485). In determining the disclosure of these US patents the evidence before me in these proceedings is of limited assistance. Neither TONKOVIC nor OSTERLUND indicate the common general knowledge in the art as of early 1973, and consequently it is not apparent what "conventional" purpose the tubes 74 and 76 would have served. Furthermore I note that TONKOVIC joined Doulton Australia in 1972 and thus his statements about these US patents may not represent those of a person who was clearly skilled in the art at the relevant time. Given OSTERLUND's comments about the tubes I am led to conclude that the tubes are for introducing fluid pressure to aid release of the cast article rather than being a water-drainage means as required by the present invention. The purpose of the unnumbered tube is to me uncertain, since it could be as TONKOVIC presumes, or it could be associated with tube 74 although this appears unlikely from the representation of the figure. In view of these considerations I find that the US patents do not provide a disclosure of apparatus features (e) or (k) nor method features involving the water-drainage means as claimed.

Summary of prior patent specifications

In summary, my conclusions regarding the prior patent specifications relied upon by the opponent is that none of them provide a disclosure of the combination of features of the claimed invention.  Accordingly the claimed invention does not lack novelty in view of these prior patent specifications.

Other material

Several other pieces of evidence deserve some mention at this point regarding the issue of novelty of the invention.  Firstly there is the report regarding pressure casting supplied to Doulton Australia by the English Doulton Research Limited and entitled PROGRESS REPORT TO THE PRESSURE CASTING STEERING COMMITTEE.  This report is dated 29 May 1968.  It is not entirely clear whether this report was publicly available and if so when.  In any event the report only gives "a broad outline" of the position on pressure casting at the time and those technical details mentioned do not constitute a disclosure to render the present invention not novel.  Secondly, TAYLOR's evidence refers to some casting methods and apparatus he says he used to make large pots etc.  From the details given in this evidence I do not consider that these methods and the apparatus used bring the novelty of the present invention into doubt.

Obviousness

The test for obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date: see The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270. Furthermore the inventiveness or otherwise of the alleged invention must only be judged against the background of proved common general knowledge in Australia at the relevant time: see eg. The Wellcome case, supra, at 284, and Minnesota Mining and Manufacturing Co v. Beiersdorf (Aust) Ltd (1979-1980) 144 CLR 253 at 295.

(See also the judgement in Winner & Anor v. Ammar Holdings Pty Ltd (1993) AIPC 90-971 where the law on obviousness is reviewed.)

Thus before considering the obviousness issue I need to ascertain the common general knowledge in the art at the priority date.  The relevant knowledge will be that possessed by all skilled addressees in the art as a general body of knowledge.  It is clear from reported cases that documents in existence, or other matters of public knowledge available, at the priority date can not be considered in the determination of the obviousness question unless they are proven as forming part of the common general knowledge amongst those in the trade at that time.  In reviewing the evidence I need to be mindful of my earlier conclusions doubting TONKOVIC and TAYLOR as skilled addressees in the art in Australia as of the priority date.

There is no evidence which establishes that the prior patent specifications discussed above were part of the common general knowledge.  The opponent's declarants are silent on this issue.  Whilst applicant's declarant OSTERLUND refers to being "responsible for maintaining a technical library including patents and journals ..." when at Doulton Potteries Pty Ltd (1965-1981), he declares that he does not "recall seeing any patents" by Erlich of the USA.  (The US patents mentioned above were by Erlich.)  If these patents had been part of the common general knowledge I would have expected at least OSTERLUND to have known of them and their teachings.   There is also no evidence to establish that other documents referred to in evidence, such as the "PROGRESS REPORT TO THE PRESSURE CASTING STEERING COMMITTEE" mentioned by TONKOVIC or the text book "Ceramics for the Artist Potter" mentioned by TAYLOR formed part of the common general knowledge.

TONKOVIC says in para 11 that "It was well known in Australia prior to 1982 that in order to de-mold a pressure cast article, reverse pressure was applied to one part of the mould, .... to drive the water at the mould surface back into the cast article".  In para 12 he says "It was also well known in Australia prior to 1982 that the supply of compressed air to one of the mould portions would release that mould portion from the article ...".  Against these statements OSTERLUND says that "as far as I am aware" the demoulding procedures mentioned by TONKOVIC had not been used in "pressure casting or battery casting prior to 1983".  In view of my earlier expressed doubts about TONKOVIC's standing as a skilled addressee and given OSTERLUND's response to TONKOVIC's statements, without collaborating evidence I am not satisfied that TONKOVIC's statements represent matters of common general knowledge.

TAYLOR, in his evidence, identifies and refers to features which are included in the claims.  For instance, with regard to the independent apparatus claim, his breakdown of features is virtually identical to my breakdown references.  Insofar as the features of apparatus claim 10 is concerned, TAYLOR concludes that in the casting art each feature identified "was commonly known and in general use in Australia before 1982".  He gives a similar conclusion in relation to most of the other features of the apparatus or method claims, although in several instances he says the feature would have been tried by workers in Australia in this field prior to 1982.  Whether by his references to "commonly known and in general use" TAYLOR means these matters were part of the common general knowledge is not clearly apparent.  In any event, as I have mentioned earlier in this decision, I have doubts about TAYLOR's expertise at the priority date and thus of his ability to identify what was common general knowledge in the art at the time.  I note that in paragraph 59 he states that "... I am of the general opinion that Australian Patent Specification No 562626 does not disclose any advance of sufficient merit to warrant the grant of a patent."

Where obviousness is alleged, it is ultimately for the Commissioner to assess and decide the issue in the light of his or her understanding of the invention and the art.  The onus is on the opponent to support its obviousness allegation by providing evidence concerning the surrounding facts and to clearly identify and establish the common general knowledge in the art.  It is essentially from this evidence that the Commissioner can gain the necessary understanding.  My comments about the evidence of TONKOVIC and TAYLOR in the preceding paragraphs leaves me uncertain of matters that may have formed part of the common general knowledge in the art.  This uncertainty would be sufficient to dispose of the obviousness ground without further consideration.  However I feel it is appropriate to make some brief comments on the obviousness issue on the assumption that the individual features identified by TAYLOR were common general knowledge.

Regarding a combination patent, in Nicaro Holdings v Martin Engineering 16 IPR 545 Lockhart J said at page 553:

"Each of the integers of a combination patent may not be novel.  They may be part of the prior art, but it is the interaction of the combined integers to produce a new result which constitutes the invention the subject of a combination patent."

Lockhart J made those remarks in the context of considering novelty, but I believe those remarks also have relevance to any consideration of obviousness or lack of inventive step.  (See also the Minnesota Mining  v. Beiersdorf case, supra, at page 293.)  Thus where the invention concerns a combination, the question to consider is whether the non-inventive worker in the art would have arrived at the combination of features claimed.  The fact that all the individual features may be known does not of itself make an alleged invention obvious.

As I understand it, the present invention provides a method and apparatus for drain-casting which allows a somewhat speedier cycle than via conventional battery casting systems and enables demolding without damage or deformation.  There is no evidence to suggest that the hypothetical non-inventive worker in the trade seeking to overcome problems with the conventional battery casting systems would have been led as a matter of course to the particular combination of features claimed.  There is therefore, in my view, insufficient justification to conclude that the invention is obvious.

CONCLUSION

I have found that on all grounds the opposition has not been established.  I therefore dismiss the opposition and direct that the application proceed to sealing, subject of course to any appeal being filed to this decision.
On the question of costs, the usual practice is that costs follow the event.  Mr Old submitted that irrespective of the overall outcome on the opposition, the opponent should be entitled to its costs given the fact that applicant amended its specification after evidence in support was filed.  In my view the amendments were of a minor nature and had no bearing on the overall outcome.  As the opposition has been unsuccessful, the applicant is entitled to its costs.  Accordingly I award costs in accordance with Schedule 8 against Caroma Industries Limited.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant    : Griffith Hack & Co,

Sydney

Patent attorneys for the opponent     : Spruson & Ferguson,

Sydney