Inter Aqua Advance A/S v Bent Urup Holding ApS
[2018] APO 43
•4 July 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
INTER AQUA ADVANCE A/S v Bent Urup Holding ApS [2018] APO 43
Patent Application: 2014267768
Title:Plant for fish farming and its use
Patent Applicant: Bent Urup Holding ApS
Opponent: INTER AQUA ADVANCE A/S
Delegate: Isaac Tan
Decision Date: 4 July 2018
Hearing Date: 22 March 2018 in Sydney, NSW
Catchwords: PATENTS – fish farming plant based on a recirculated aquaculture system - opposition to the grant of a patent under section 59 – request to consult additional material under regulation 5.23 – ground of manner of manufacture under section 18(1)(a) – ground of inventive step under section 7 – grounds of clarity and support under section 40(3) – ground of enabling disclosure under section 40(2)(a) – the claims define the invention in accordance with section 40(2)(b) – none of the grounds have been made out – opposition unsuccessful – costs awarded against the opponent – application to proceed to grant
Representation:
Applicant:
Katrina Crooks, Counsel for the Applicant
Scott Philp, Patent Attorney of Shelston IP
Natasha Faigenbaum, Solicitor of Shelston IP LawyersOpponent:
Jeremy Dobbin, Patent Attorney of FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014267768
Title:Plant for fish farming and its use
Patent Applicant: Bent Urup Holding ApS
Date of Decision: 4 July 2018
DECISION
The Opposition is unsuccessful.
Costs awarded against INTER AQUA ADVANCE A/S
Subject to appeal, I direct that the Application proceed to grant.
REASONS FOR DECISION
Background
Australian patent application 2014267768 was filed on 2 May 2014 in the name of Bent Urup Holding ApS (the “Applicant”) as international application PCT/DK2014/000022 filed under the Patent Cooperation Treaty (“PCT”) with an international filing date of 2 May 2014 and claiming a priority date of 14 May 2013.
On 27 February 2016, a first patent examination report was issued. The application was subsequently accepted on 8 March 2016 and advertised in the Supplement to the Australian Official Journal of Patents on 14 April 2016.
On 14 July 2016, a Notice of Opposition was filed by INTER AQUA ADVANCE A/S (the “Opponent”) followed by the Statement of Grounds and Particulars on 14 October 2016.
A hearing was held in Sydney, NSW on the 22 March 2018, at the office of Shelston IP. The Opponent appeared by written submissions only.
Applicable Law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the “Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
Thus the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
Evidence and Submissions
Evidence in Support consists of:
·A declaration by Jeremy Michael Mark Dobbin (“Dobbin”) dated 16 January 2017 with Exhibits JMD-1 to JMD-3.
·A declaration by Tony Rumbold (“Rumbold #1”) dated 11 January 2017 with Exhibits TR-1 to TR-2.
Evidence in Answer consists of:
·A declaration by Gavin John Partridge (“Partridge”) dated 13 April 2017 with Exhibits GP-1 to GP-14
Evidence in Reply consists of:
- A declaration by Simon Declan Dunn (“Dunn”) dated 15 June 2017 with Exhibits SD-1 to SD-2
The Opponent filed written submissions on 9 March 2018 (“Opponent’s first submissions”) and 20 March 2018 (“Opponent’s second submissions”).
The Applicant filed written submissions on 15 March 2018 (the “Applicant’s submission”).
The Grounds of the Opposition
The Statement of Grounds and Particulars identifies the following:
·Not a manner of manufacture within the meaning of section 6 of the Status of Monopolies under Section 18(1)(a)
·Lack of inventive step under Section 18(1)(b)(ii)
·The specification filed in support of the complete application does not comply with Section 40(2)
·Lack of clarity and support under Section 40(3)
Regulation 5.23 Request
Regulation 5.23 sets out that the Commissioner may consult documents:
(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a) notice of the Commissioner's intention to do so; and
(b) a copy of, or access to, the document; and(c) an opportunity to give evidence or make representations about the document.
On 7 August 2017, the Applicant filed the following request under regulation 5.23:
“We hereby request leave to file material for consideration under Regulation 5.23 of the Patents Regulations 1991. Such material, as attached hereto, comprises a declaration by Gavin Partridge dated 4 August 2017 (Partridge 2). This declaration is made in response to new exhibit SD-1 attached to the declaration of Mr Simon Declan Dunn, dated 15 June 2017 (the Dunn Declaration)”
The Applicant relies on Reflex Instruments Asia Pacific Ltd v Minnovare Limited [2017] APO 8 which sets out the following factors to be considered with regard to a Regulation 5.23 application:
1. The circumstances leading up to the evidence not being filed earlier;
2. What the evidence shows;
3. Whether the information is likely to be crucial to the Delegate’s decision;
4. The public interest in having the information considered;
5. The balance of convenience of the parties if the information is considered.
In Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16, the delegate noted:
“If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition.”
Applying the above factors to the present case, the Applicant submits that:
“In this case, the Evidence in Reply consists of a declaration from a Mr Dunn, who did not make any declaration in the Evidence in Support. Mr Dunn introduces a new Exhibit, SD-1, which was not included in the Evidence in Support, nor the Opponent’s Statement of Grounds and Particulars. Accordingly the Applicant has had no opportunity to date to comment on SD-1, and hence could not have filed the evidence it now seeks to file any earlier.
Partridge 2 provides comments solely on SD-1. At paragraph 13 of the Dunn Declaration, Mr Dunn raises SD-1 in the context of comments made by Mr Partridge in his declaration dated 13 April 2017 filed as Evidence in Answer. Partridge 2 provides evidence relevant to Mr Dunn’s comments in this respect, and well as evidence relevant to SD-1 generally as prior art. It is submitted that if SD-1 is relied upon by the Opponent these matters are very relevant to the Delegate’s decision.”
On 16 August 2017, a Delegate responded and considered that “[a]t present, the Applicant’s explanations are insufficient and I am not satisfied that the Commissioner should consult the declaration by Gavin Partridge dated 4 August 2017 under regulation 5.23.”
Following a response from the applicant on 25 August 2017, the Delegate stated on 30 August 2017 that:
“If the Applicant still believes that Partridge 2 should be considered under regulation 5.23, they might wish to consider raising the issue with the Hearing Officer at the hearing. The Hearing Officer will consider the importance of Partridge 2 for their decision and if they decide to rely on it, they will provide the parties an opportunity to give evidence or make representations about Partridge 2 under subregulation 5.23(2).”
At the hearing, I noted that the Opponent does not appear to rely on SD-1 as a prior art document in their final submissions. At best, SD-1 relates to issues of common general knowledge and can be addressed based on evidence already on file. In this regard, I do not agree that Partridge 2 meets the requirements of regulation 5.23 and should be brought into the present opposition.
Applicant’s comments on Opponent’s Second Submission
On 21 March 2018, the Applicant submitted comments in relation to the Opponent’s second submission. The Applicant’s position is that the Opponent’s second submission should not form part of the present proceeding as the Applicant has not been provided a reasonable period in which to respond.
However, the hearing notice dated 6 September 2017 contains the following provision:
NOTE 1
The opponent must file, in Objective Connect, a summary of submissions at least 10 business days before the hearing and the applicant must file a summary of submissions at least 5 business days before the hearing.NOTE 2
If appearing by submissions only, a summary of submissions is due as stated in NOTE 1, final submissions must be filed by C.O.B. 2 business days before the hearing.On this basis, it is clear that the Opponent’s second submission forms part of the present proceeding.
The Priority Application
The Opponent’s second submission relies primarily on the disclosure of the two priority applications P1 (DK2013000291) and P2 (DK20130000634) which are originally published in Danish. The Opponent submits that:
First, the figures and description of P1 and P2 do not form part of the opposed patent application.
Second, as will be explained in more detail below, the prior art which was admitted in P1 and the common general knowledge implicitly admitted in P1 as assumed knowledge by the Applicant, appear now to be the very reasons for the alleged inventiveness of the claims of the opposed application, which clearly cannot be correct.
In more detail, the granted claims recited in the opposed Australian patent application 2014267768 contain a number of integers that have been added since the filing of the first priority application P1 (DK2013000291), and were further developed in the second priority application P2 (DK20130000634) before the filing of the PCT application, from which the opposed Australian patent application 2014267768 is derived.
As an initial matter, I note that the priority documents P1 and P2 were not originally filed in evidence. I will admit that this is an unusual statement as information contained in a priority document typically forms part of the complete specification. However the distinction here is that the only reference to P1 and P2 in the Statement of Grounds and Particulars concerns the priority date. However even if the priority date is found to be invalid, this would have no impact on novelty or inventive step.
The Opponent’s submissions in relation to P1 and P2 are in relation to information that may constitute common general knowledge. However, I note that the abstracts and accompanying translations are provided without context and it is not stated where the translation originates from. It is worth noting that information contained within a publication does not always constitute common general knowledge.
However, this is not to say that I am required to completely disregard this information merely because it is contained within a publication. Rather, as will be made clear below, I will consider each piece of information on its merit, as allowable by the evidence available to me, to determine the appropriate weight which should be attributed.
The specification
The invention of the present opposition relates to a fish farming plant which the applicant describes as follows[1]:
[1] The Applicant’s Submission at [17]; Specification at Page 1 Lines 3 - 27
“[t]he invention is said to relate to a fish farming plant comprising a central tank and one or more surrounding tanks, preferably circular and with the same centre, where the central tank is used for water treatment, including biofiltration with a biofilter, and where the one or more surrounding tanks are used for fish farming of preferably kingfish, salmon fish, groper fish, barramundi and mahi mahi. The fish farming plant is further equipped with flow applicators, whereby the flow rate of the water in the surrounding tanks is independent of the water exchange rate. The surrounding tanks are divided into several tank sections, with movable permeable traverse walls that separate the individual tank sections. This makes continuous adjustments of the size of the individual tank sections possible, which means that the fish concentration can be kept optimal during the entire fish growth process.”
The specification goes on to describe[2] the use of Recirculated Aquaculture Systems (“RAS”) which is said to be a generally used term in the aquaculture industry for closed fish farming plants, where a fish production plant with land based tanks is connected with a water treatment plant that cleans the water, so that a very high degree of recirculation can be achieved. In contrast to traditional pond farming, RAS allows complete control over the water quality and temperature[3]. However in contrast to traditional systems[4], “the purpose of the present invention is said to provide a plant suitable for fish breeding, of the RAS type, which has a number of advantages over the current technology.”
[2] The Specification as filed at Page 2 Lines 20 - 29
[3] Ibid at Page 3 Lines 5 - 11
[4] Ibid at Page 11 Lines 10 - 12
One possible layout for the fish farming plant is shown in Figure 1 which has been reproduced below. According to the specification[5]:
[5] Ibid at Page 15 Lines 18 - 23
“Fig. 1 shows a possible layout for the fish farming plant. Here consisting of the central tank and two surrounding circular tanks, which each is divided in several tank sections by permeable traverse walls, of which most are movable. Only the traverse walls around the tank section with inlet and outlet and flow applicators are fixed.”
As shown in Figure 1[6]:
[6] Ibid at Page 17 Lines 8 - 20
“After the water has been through the circular fish tanks 2 it is brought to particle filtration 13, as a first step in the water treatment. Hereafter it is brought to the central tank 3, where biofiltration 6 (primarily conversion of NH3/NH4 to NO3) takes place. Before the water is brought further on from the biofiltration 6, the bio-medium is separated from the water with band filters 7 or another mechanical separation. After the water has been through biofiltration 6 it is brought to the last step in the water treatment, CO2-stripping 5. Finally water is brought back to the circular fish tank 2. The main pumps 9 in the system can advantageously be installed right below inlet 29 to the fish tanks 2, outside the circular structure.”
It is also worth noting that[7]:
[7] Ibid at Page 18 Lines 8 - 14
“Each of the circular tank 2 is equipped with several movable permeable traverse walls 12. These are unique in function and are one of the most important differences from earlier RAS-plants. The walls are characterized in that they are steplessly movable, are adjustable in their width, and that the separation between the two adjacent tank segments remains intact during the moving.”
The claims
The specification contains 1 independent claim and 17 dependent claims. Independent claim 1 is reproduced below:
Claim 1
Fish farming plant (1) comprising a central tank (3) and one or more surrounding tanks (2), preferably circular and with the same center, where the central tank (3) is used for water treatment, including biofiltration at a biofilter (6), and where the one or more surrounding tanks is/are used for fish farming of fish preferably kingfish, salmon fish, grouper fish, barramundi and mahi mahi, and that the fish farming plant (1) further is equipped with flow applicators (8), whereby the flow rate of the water in the surrounding tanks (2) are individually independent of the water exchange rate, characterized in that:
- the fish farming plant (1) comprises several movable permeable section walls (12) in each of the surrounding tanks (2) wherein each surrounding tank (2) becomes divided in several tank sections,
- and that each surrounding tank (2) is equipped with one or two outlets (30) and one or two inlets (29), irrespective of the number of tank sections,
- and wherein a substantially horizontal/laminar flow structure of the water, of potentially individual adjustable horizontal rate in each of the surrounding tanks (2) is provided in said fish farming plant (1).
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified the skilled addressee as[8]:
[8] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481;71 IPR 615 at [16]
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated[9]:
[9] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [70]
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
However in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30, the High Court noted that[10]:
[10] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
As set out above, evidence in the present opposition is provided by Mr Partridge, Mr Rumbold and Mr Dunn. The Opponent did not express any concerns in relation to any of the declarant’s suitability to give evidence of the person skilled in the art. The Opponent submits that the subject matter of the present application relates to fish farms, which is a global art, and the knowledge of those working in this art in Australia and outside Australia is the same. In relation to Mr Rumbold and Mr Dunn, the Opponent notes[11]:
[11] The Opponent’s first submission at [18]
“Both of the Opponent’s experts Tony Rumbold and Simon Dunn are clearly persons skilled in the art. Tony Rumbold has been involved in fish farms since 1987 and has attended numerous trade shows in Europe and Australasia (see para 11 of his declaration). Simon Dunn’s extensive experience is set out in paragraph 2 to 7 of his declaration and is extensive and includes working in the art in Denmark and New Orleans.”
Mr Rumbold‘s background[12] is as follows:
[12] Rumbold at [4]-[5]
“I am a chartered secretary (ACIS), have a diploma in Business Administration from Auckland University of Technology, MNZIFST. I have been working very actively in the field of aquaculture since 1987. My activities have involved the design and supply of fish farms, in collaboration with others. I currently work for my own company Scanz Technologies (Scanz) which I started in 1988. Scanz is a specialized supply company serving the Australasian food industry with a particular emphasis on aquaculture technology for land-based, offshore and intensive recirculation fish farms and hatcheries.
In the fish farms I have helped design systems using both flow through and RAS (recirculation aquaculture systems).”
Mr Dunn[13] graduated as a civil engineer (M.Sc.Eng.) in Biotechnology and Aquaculture from Aalborg University in 2001. During this period, and in the years following graduation, Mr Dunn has had significant experience in the design and development of RAS systems. Since 2004, Mr Dunn has worked for Inter Aqua Advance in a number of positions. Mr Dunn currently holds the role of Sales Manager at Inter Aqua Advance.
[13] Dunn at [2]-[5]
In contrast, the Applicant’s position is that the evidence of Mr Partridge should be preferred to that of the Opponent’s declarants, Mr Rumbold and Mr Dunn. The Applicant sets out Mr Partridge’s background as follows[14]:
[14] The Applicant’s Submission at [44]-[45]; Partridge at [1]-[6]
“Mr Partridge sets out his considerable experience in the aquaculture industry before the Relevant Date in his declaration. His academic background is specifically in aquaculture, culminating in a PhD in inland saline aquaculture obtained from Murdoch University in 2008.
Since 1997, Mr Partridge has been employed at the Australian Centre of Applied Aquaculture Research (ACAAR) which is focused on conducting applied research and development projects to assist the Australian aquaculture industry to increase its productivity and market competitiveness. He is currently the Principle Research Scientist at ACAAR, as well as holding a number of academic posts. He has published and presented widely in the field of aquaculture.”
Mr Partridge also sets out in his declaration, a number of examples where he has been involved on projects designing and reviewing designs of RAS systems[15].
[15] Partridge at [7]
The applicant expressed concerns[16] regarding Mr Rumbold’s lack of detail as to his precise roles in RAS projects, and his lack of relevant technical qualifications.
[16] The Applicant’s submission at [48]
Mr Partridge also notes that[17]:
[17] Partridge at [149]
“As I understand it, SCANZ primarily sells equipment such as graders for aquaculture use, rather than designing aquaculture systems. The design of aquaculture systems is quite a specific area of expertise. It is one thing to advise on, and provide equipment for use in an aquaculture system. It is another to design a system from scratch, taking into account not only the mechanical requirements but also matters which as engineering constraints and hydrodynamics relating to water flow and waste removal, amongst other things.“
I am inclined to agree with the Applicant that Mr Rumbold is not ideally placed to give evidence of the person skilled in the art. It is clear, due to Mr Rumbold’s lack of relevant technical qualifications that his knowledge and experience representative of the art stems primarily from his duties while at Scanz. Although Mr Rumbold does state that he has helped design systems using both flow through and RAS, he does not clearly set out the extent of his involvement. While I am prepare to accept that Mr Rumbold is well placed to advise on equipment for use in an aquaculture system, this advice would be provided with a high degree of generality based on information made available by the equipment manufacturer.
In relation to Mr Dunn, the Applicant submits[18] that Mr Dunn’s status as an employee of the Opponent should be taken into account in assessing his evidence.
[18] Ibid at [52]
The Applicant submits that[19]:
[19] Ibid at [53]; Rumbold at [13]; Dunn at [1], [8]
“It is also important to note that before giving the evidence at [14] onwards of his declaration, Mr Rumbold had read the Application, and before giving his evidence, Mr Dunn had read the Partridge Declaration which discloses the patent claims. Accordingly, the views expressed by these witnesses, particularly on matters related to obviousness, are bared on hindsight knowledge of the patent claims (leaving aside what knowledge Mr Dunn may also have had though his employment with the Opponent).”
To illustrate the dangers of hindsight, the Applicant pointed to Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 and GlaxoSmithKline Consumer Healthcare Investments (Ireland) No. 2) Limited v Apotex Pty Ltd [2016] FCA 608.
I am satisfied that both Mr Partridge and Mr Dunn possess relevant experience and can provide evidence of what was known in the art. Although I do not agree that the same could be said for Mr Rumbold, some of his evidence may still be relevant. I am also mindful that evidence provided by Mr Dunn and Mr Rumbold may have been provided with the benefit of hindsight.
Consequently where there is a point of contention, I will have regard to the above considerations when determining what weight I should attribute to the evidence.
Clarity and Claim Construction
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228[20]:
[20] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification".
In Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451, Middleton J stated[21]:
[21] Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229[22]:
[22] Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229 at [81]
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”
The Opponent submits that the scope of claim 1 is indeterminate due to the lack of clarity of the following terms:
“Preferably”
The term “preferably” appears in two instances in claim 1:
1.and one or more surrounding tanks (2), preferably circular and with the same center,
2.fish farming of fish preferably kingfish, salmon fish, grouper fish, barramundi and mahi mahi, and that the fish farming plant
Dealing first with the term “preferably”, the Opponent submits[23] that it is not clear whether the integers following this term is intended to be a limitation of the claim. The Applicant submits[24] that it is clear that the plain English meaning of the word “preferably” is not limiting. I also note that this is consistent with the definition given in the Macquarie Dictionary which defines “preferably” as “more desirable”
[23] The Opponent’s First Submission at [58]-[59]
[24] The Applicant’s Submission at [72]
In this regard, it is clear that the list of different types of fish listed in instance 2 above is simply an indication of the ideal types of fish for which the invention can be used and is not a limitation of claim 1.
In relation to instance 1, the Opponent submits[25] that it is unclear “…as to whether the feature of the tank being circular and or the feature of the tank having the same center is a feature of the claim or not due to the use of the word “preferably”. The Applicant submits[26] that “…a common sense reading of the claim makes clear that the word ‘preferably’ relates to the feature of the tank being circular but does not relate to the tanks having the same centre.”
[25] The Opponent’s First Submission at [58]
[26] The Applicant’s Submission at [68]
In his declaration, Mr Partridge explains[27] that “[t]he use of each of the tanks in the system is explained and the fact that the tanks have the same centre indicates that the central tank sits within the surrounding tanks (as opposed to having series of tanks sitting entirely separate from the central tank but positioned around it). The tanks are described as “preferably circular” because the description of the document explains at page 14, lines 26-28 that they can be comprised of short rectangular sections (“linear elements”) which results in an essentially circular, but not perfectly circular, tank;”
[27] Partridge at [107]
I have reviewed the specification and it is clear that the surrounding tanks must have the same center. While the claims could be written in a clearer manner with the use of an oxford comma, I am reasonably satisfied with Mr Partridge’s explanation that the term “preferably” only applies to the surrounding tanks being circular.
“Flow applicators”
The claim states that the fish farming plant is “further is equipped with flow applicators.” While the claim and specification does not specify exactly what form the flow applicator should take, I note the figures[28] depict the flow applicators as a propeller.
[28] Item 8 of Figure 3
Mr Partridge further states[29] “…I understand the flow applicators to be a general description of what I have described as propellers. The claim does not require a particular form for the flow applicator mechanism. I understand that this term would include any mechanism which pumps the water to create velocity.”
[29] Partridge at [107 b]
Mr Dunn does not appear to disagree and states[30] “If I had been told that the “flow applicators” were large propellers that would not be inconsistent with a device for providing water flow, however there are many means for providing water flow apart from “large propellers”.
[30] Dunn at [14]
Therefore it is clear that the flow applicators as defined in the claim refer to any mechanism which pumps water to create velocity or water flow.
“The water exchange rate”
The Opponent submits that[31]:
[31] The Opponent’s First Submission at [60]
“…the expression ‘…are individually independent of the water exchange rate,…’ lacks clarity as there is no antecedent for the water exchange rate and further no definition of the water exchange rate or indication as to where and how the water is being exchanged and with or what the water is being exchanged for in claim 1.”
This expression is defined within claim 1 as “whereby the flow rate of the water in the surrounding tanks (2) are individually independent of the water exchange rate.” Claim 1 also specifies that the central tank is used for water treatment, and includes biofiltration at a biofilter.
Mr Partridge explains that[32] “…in this context I understand the term ‘water exchange rate’ to refer to the rate at which the water passes through the filtration plant. In this case, the flow rate of the water is independent of the water exchange rate as a result of the use of the flow applicators. The flow applicators create a separate velocity (or flow rate) and because the water can pass circularly around the entire tank (that is, some water can bypass the filtration system), that velocity is not constrained by the amount of water which can pass through the filtration system at any given time.”
[32] Partridge at [107 c]
Similarly, Mr Dunn confirms that[33] “…water velocity can also be increased/decreased by adjusting tank water exchange rate which would involve adjusting the pumps. It would seem to me to be obvious to anyone within the field who wished to increase the water flow within a tank to create a secondary internal flow pattern.”
[33] Dunn at [19]
Based on the above, it is clear that the water exchange rate refers to the rate at which the water passes through the filtration plant of the central tank.
“Substantially horizontal/laminar flow”
The Opponent submits that this term is unclear due to the following points[34].
[34] The Opponent’s First Submission at [61]-[63]
1.…there are no structural/technical features recited to in the claim which achieve this aim, but merely a statement about a flow structure that potentially would be desirable. Hence this claim recites mere desiderata and lacks clarity.
2.…horizontal is two dimensional and it is not clear if the flow is radial e.g. from the centre of the plant or tangential.
3.The expression laminar flow structure of the water is in any case unclear as it is confusing to refer to a liquid such as water having a structure and water does not have a laminar structure.
4.…the expression ‘horizontal/laminar flow structure’ which suggests two alternatives. The first alternative is that it means horizontal or laminar flow. The second alternative is that it means horizontal and laminar flow. The claims should be amended to pick one or other alternative.
The Applicant submits that[35] “…it is clear that patent claims may be limited by result and that it is not necessary to recite the technical features which would achieve such result in the claim. A patent claim feature is not unclear merely because it recites a result to be achieved by the system. Further, the term ‘substantially horizontal/laminar flow’ is not in the nature of a broad speculative claim by result.”
[35] The Applicant’s Submission at [80]
Mr Partridge explains that[36]:
[36] Partridge at [104]
“A laminar flow is where the water moves around the tank substantially as one body. The water is also moving in a substantially horizontal direction and is not turbulent. I understand from reading the specification that horizontal/laminar flow is optimised in this case by the use of the propellers/flow applicators in combination with the returned water from the filtration system. A body of water is pushed around the tank in a substantially horizontal manner. The propellers/flow applicators provide the ability to control and optimise the velocity, according to the fish’s requirements.”
and that[37]:
[37] Ibid at [107 f]
“The flow is required to be ‘substantially’ horizontal/laminar, because from an engineering perspective, it will not be possible to achieve perfectly horizontal flow when there are fish moving in the tank. The flow rate of the water is individually adjustable through the use of flow applicators. This could, for example, be by way of variable speed settings and/or multiple propellers so that the number of propellers can be selected to achieve the desired velocity. The system allows each tank to operate with different water speed.”
In contrast Mr Dunn provides a technical explanation of laminar flow and submits that[38]:
[38] Dunn at [38]
In other terms, ‘substantially’ laminar would imply that there would be ‘almost’ no lateral mixing and ‘almost’ no cross-currents perpendicular to the direction of the flow. As this is also deemed practically unachievable due to the presence of moving fish in the water column, the invention should either stipulate substantially horizontal flow (which would not be a new feature/invention in such a system) or decidedly laminar in a horizontal direction, which should be described clearly how this would be obtained in the given intended use of the application to ensure this to occur. The technical distinction for a laminar flow is very clear and governed by the Reynold’s number and thus either-or whereas horizontal can more readily be described as substantially vertical/horizontal.
While I do not entirely disagree with Mr Dunn, terms which are imprecise within a claim do not always give rise to a lack of clarity if it is possible to ascertain whether an act would fall within the scope of the claim[39]. A patent specification should also be given a purposive construction rather than a purely literal one[40]. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use[41]. In this regard, I find Mr Dunn’s interpretation of the term to be unduly limiting.
[39] Glaverbel SA v British Coal Corp [1994] RPC 443; Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59
[40] Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
[41] Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; 77 IPR 229 at [81]
Consequently, I am inclined to adopt Mr Partridge’s definition of the term “substantially horizontal/laminar flow” as it would be near impossible to achieve a perfect laminar flow with the presence of fish in the system.
“Movable permeable walls”
Claim 1 recites: “the fish farming plant (1) comprises several movable permeable section walls (12) in each of the surrounding tanks (2) wherein each surrounding tank (2) becomes divided in several tank sections.”
The Opponent submits that[42] “[c]laim 1 is also unclear as to the meaning of the term ‘movable’. In particular does movable encompass ‘removable’? Or does it mean movable within the tank. Is a partition which can be removed and replaced in the tank in another position encompassed?”
[42] The Opponent’s First Submission at [64]
The Applicant disagrees and submits that the term ‘movable’ is distinction from ‘removable’ by referring to the specification which states that[43] “[t]he walls are characterized in that they are steplessly movable, are adjustable in their width, and that the separation between the two adjacent tank segments remains intact during the moving.”
[43] The Specification as filed at Page 18 Lines 11 - 14
Mr Partridge appears to agree stating[44]:
[44] Partridge at [107 d]
“However the claim does not restrict the manner in which the walls are movable. I do however understand the word ‘movable’ as used in the claim to indicate that the walls can be moved around within the tank without the need to remove them entirely. There is a distinction between ‘movable’ and ‘removable’ in this respect. However the walls can be removed if needed.”
Mr Dunn disagrees with Mr Partridge and stating that[45] “[t]here is nothing in the patent that indicates to me that the word ‘movable’ is limited to walls which can be moved within the tank without the need to remove them. Indeed the features that facilitate this movement within the tank appear to be the rails which are recited in claims 2 and 6, not claim 1.”
[45] Dunn at [26]
For completeness, I note that the Macquarie Dictionary defines “movable” as “capable of being moved; not fixed in one place, position, or posture.”
Based on the above, I am inclined to agree with the broader interpretation provided by the Opponent. Claim 1 does not specify that the walls cannot be removed and placed in a different position. Mr Partridge further acknowledges that the walls can be removed if needed. While I accept that in a preferred embodiment, the walls are movable so that separation between two adjacent tank segments remains intact during the moving, it would not be permissible for me to incorporate this additional feature into claim 1.
I do not agree with the Opponent that this interpretation would result in claim 1 to be unclear. Claim 1 is clear in this regard.
Claims 3, 4 and 14
The Opponent submits that claims 3, 4 and 14 lacked clarity for a number of reasons[46]. However, I note that none of the declarants expressed any difficulties or concerns with any of these claims.
[46] The Opponent’s First Submission at [66]-[69]
The Opponent submits that it is not clear that “med hinges” are. The relevant part of claim 3 states “…a section in each side is attached to the rest of the movable permeable section wall (12) med hinges (28), equipped with flexible mechanism.” The Applicant submits[47] that this is a typographical error and should read “with”. I note that the term “med” is the Danish word for “with” and consistent with the relevant passage in the specification[48]. Therefore I find that claim 3 is clear when read in context of the specification.
[47] The Applicant’s Submission at [89]; Partridge at [110]
[48] The Specification as filed at Page 18 Lines 33 - 35
The opponent submits that claim 4 does not add any additional limitation to claim 2. I disagree. The relevant part of claim 4 states “…preferably by comprising a double telescopic rod.” Firstly, the fact that two claims overlap in scope does not give rise to a lack of clarity. Claim 2 does not contain this integer and, claim 4 adds the possibility that the rod may be adjustable using a double telescopic rod.
The Opponent also submits that claim 4 lacks clarity as there is no antecedent basis for “the width of the tank.” In this context, the relevant tank in question is the “one or more surrounding tank” as defined by claim 1. The term “width” has a standard meaning and it is clear, when referring to a tank, which aspect corresponds to the width, length and depth. .
The Opponent submits that claim 14 is not clear “…whether the one or two outlets of each surrounding tank is already disclosed in claim 1 or other outlets in all tanks (the central tank, the one or more surrounding tank and the purge tank) are meant, rendering the claim unclear.” The relevant part of claim 14 states “…the fish farming plant (1) comprises outlets (30) in the entire width of the tank/tanks (2), which outlets (30) are equipped with valves (19)…”
Claim 1 states that each surrounding tank is equipped with one or two outlet, irrespective of the number of tank sections. This is consistent with the specification which states[49]:
[49] Ibid at Page 14 Lines 20 - 24
“In a preferred embodiment the fish farming plant comprises outlets in the entire width of the tank/tanks, which outlets are equipped with valves for adjustment of the outlet rate across the width of the tank. The outlet goes from the bottom of the tank to a height beneath the water level.”
The specification does not refer to outlets in the central tank, or the purge tank. In this respect, I find that both claim 1 and claim 14 refer to the same outlets. I also note that both claim 1 and claim 14 indicates that each outlet refers to item 30. While I understand that such reference within a claim is considered to be non-limiting, it does however support my understanding that both claim 1 and claim 14 refer to the same outlets.
Consequently, I find that claims 1, 3, 4 and 14 are clear.
Inventive Step
Section 7(2) provides that:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; 148 CLR 262, Aickin J stated[50]:
[50] Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 at [45], 148 CLR 262 at 286
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, the High Court accepted[51] the approach taken by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157[52]
[51] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398 at [53]
[52] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187].
“Would the notional research group at the relevant date, in all the circumstances...directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?”
Where the invention involves a combination of integers, obviousness is to be determined by reference to the combination as a whole and not each integer individually[53]:
[53] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398 at [41]
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Problem to be Solved and Common General Knowledge
As an initial matter, I note that there has been very little discussion on the problem to be solved, or what is to be considered common general knowledge in the art. The Opponent’s position[54] is that the application contains many deficiencies stemming from it claiming technical features with no interrelated technical effect. The Opponent submits[55] that “[t]he stated object of the invention is somewhat nebulous and simply states providing an RAS type plant which has a number of advantages over the current technology, and without really addressing any specific problem or problems.”
[54] The Opponent’s First Submission at [8]
[55] Ibid at[7]
The crux of the Opponent’s argument for lack of inventive step appears to stem from two points. Firstly, addressing missing distinguishing features separately with a different problem to be solved, and secondly, by referring to external documents to establish common general knowledge.
The Applicant submits that it is not permissible to determine a problem based on the description of the invention in the specification, including any reference to a problem in the specification itself, and to do so would contradict the decision of the High Court in AstraZeneca AB v Apotex Pty Ltd [2009] FCAFC 99[56]. The Applicant’s position is that there is no evidence that the Opponent’s characterisation of the problem to be solved formed part of the common general knowledge. Rather, the test that should be applied is the Cripps question[57] which can be simplified to:
[56] AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[209]; upheld on appeal in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30
[57] Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187]-[188]; The question was endorsed in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 as a “reformulation of the Cripps question”
“Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?”
In relation to common general knowledge, the Applicant submits that it is not possible to establish common general knowledge solely by reference to a publication. Rather, it must be shown that the information contained in the publication formed part of the common general knowledge. The Applicant relies on the following principle set out by Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 where Middleton J stated[58]:
[58] Ranbaxy Laboratories Limited v AstraZeneca AB [2013] FCA 368 at [217]-[218]
“As I noted in Eli Lilly [2013] FCA 214, information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films(1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605 [39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is “‘generally accepted without question”‘ or “‘generally regarded as a good basis for further action”‘ by the bulk of those in the art.”
During the hearing, this was reiterated by the Applicant with reference to Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 where in relation to common general knowledge, Beach J stated[59]:
“There is also a further point to be made concerning common general knowledge. There is no general principle permitting admissions in the specification of a patent to be used to establish in and of themselves that information is common general knowledge. Whether information has become so widely assimilated that it forms part of common general knowledge must be determined on the evidence, although admissions can be considered as part of that evidence.”
and that[60]
“MLA further contends that where the specification itself describes matters as being known, I should proceed on the basis that such an admission is correct (see Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316; (2000) 97 FCR 524 at [30]) and indeed accept that to be common general knowledge. That submission overreaches. I would make two brief observations consistently with what I have already intimated. First, for the patentee to say that something is known as at the priority date does not necessarily entail that it was common general knowledge in the context of applying the statutory concept in s 7(2). Second, if an admission does arise, it is only part of the evidence for me to consider, attributing to the admission what I consider to be its appropriate weight. Statements in a specification cannot be definitive of the question.”
[59] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [688]
[60] Ibid at [696]
100. To firstly address the question of what is the problem to be solved, I agree with the Opponent that the specification does not explicitly state what problem the invention is said to address. However it would appear from various statements in the specification that the invention seeks to provide a generalised approach for providing a more effective fish farm.
101. The Applicant concedes with the caveat that[61] “the invention does not address a single problem but rather provides a more effective fish farming plant which is cost efficient to build.”
[61] The Applicant’s Submission at [123]
102. While I agree with the initial part of the Applicant’s statement, I do not agree that the problem to be solved could be said to address the issue of what the fish farming plant would cost to build. Claim 1 includes no such limitation and the only reference to cost in the specification relates to the rationale between why one would seek to utilise round vessels or longitudinal flow vessels.
103. Therefore I find that the problem to be solved should be generally stated as to provide a more effective fish farming plant.
104. Next in relation to common general knowledge, I agree with the Applicant that it is not possible to establish common general knowledge solely by reference to a publication as set out in the case law above. However this does not mean that I am require to completely disregard information contained within a publication. Rather, I will consider each piece of information on its merit, as allowable by the evidence available to me, to determine the appropriate weight which should be attributed.
105. On this point, I note that Mr Rumbold[62] was provided with a copy of the specification prior to being asked to provide comments on the general background as it relates to the design of fish farms, and a discussion on the various aspects of the present invention. Similarly, Mr Dunn[63] was provided with and commented on various sections of Mr Partridge’s declaration.
[62] Rumbold at [13]
[63] Dunn at [8]
106. In contrast, Mr Partridge[64] was not provided with any documents prior to being asked to provide an account of what he understands to be the nature of aquaculture systems, including sea and land based aquaculture systems; and his knowledge of RAS aquaculture systems in particular. Mr Partridge[65] begins by providing an explanation of the advantages of RAS systems over using sea cages, and traditional tank and pond constructions. When designing an RAS system, some consideration must be provided as to the physical configuration of the system and the filtration mechanism.
[64] Partridge at [15]
[65] Ibid at [25]-[37]
107. Mr Partridge explains that an RAS system can take a number of physical configurations. This can take place using a long rectangular shaped tank known as a raceway, a round tank, or a D shaped raceway which consists of two straight sections with a curved section joining each end.
108. Mr Partridge was then asked to describe what he would consider to be optimal design features of an RAS system as at 2013. On this point, Mr Partridge[66] begins with the caveat that “[t]o a certain extent this would depend on the particular species of fish as some fish have particular requirements. Kingfish have a high metabolism and are sensitive to carbon dioxide. This requires a higher tank specification, so I would consider a system designed for kingfish to be an optimal system. Any other fish would also be able to use such a system.”
[66] Ibid at [38]-[39]
109. Mr Partridge explains that he would consider using a large round tank with a central waste removal system for removing waste as quickly as possible. To promote energy efficiency[67], “the optimal tank would make maximum use of gravity with the waste flowing downwards into a drum filter and a biological filtration system. The tank would require very efficient oxygen injection and multiple carbon dioxide de-gassing columns. I would also include a UV filter.”
[67] Ibid at [40]
110. Similarly, Mr Dunn[68] and Mr Rumbold[69] both agree that biological and mechanical filtration are primarily methods in RAS technology, and that biofiltration forms just one of a limited number of known filtration techniques, with the other alternatives being drum filteration and U/V treatment.
[68] Dunn at [6]
[69] Rumbold at [28]
111. The system would also consist of multiple tanks to allow the fish to be moved during the different stages of the life cycle[70]. For example, fish that are bought from a hatchery would enter a quarantine room for a few weeks to allow the fish to grow out, and a purge tank as[71] “[f]ish raised in RAS have a reputation of having a muddy flavour or taint inside the flesh. This is often caused by bacteria that builds up over time in these systems. Purging gets rid of this flavour.”
[70] Partridge at [41]-[42]
[71] Ibid at [45]
112. While on the point of common general knowledge, I believe that it is worth briefly discussing passive grading systems for fish farms. Mr Rumbold explains that[72] “[p]assive systems are grid systems with usually a plastic mesh which is size to allow some fish (i.e. smaller fish) pass through into an adjacent location, while preventing the passing of fish larger than the mesh size.” However[73], “…partitions walls are typically only used to segregate fish with different growth rates. Such partitions are usually made of a solid material and are modular and can be removed, if necessary.” Mr Partridge appears to agree[74] stating that graders are generally intended to be removed from the system after use, and he cannot see anything in the concept of graders in general which would lead someone in the field to adopt the concept of a movable permeable wall.
[72] Rumbold at [24]
[73] Ibid at [26]
[74] Partridge at [146]
113. Overall, Mr Partridges states that in putting an RAS system in effect, some of the main objectives he would be trying to achieve are[75]:
a)“Minimising capital costs and operating costs;
b)Removing tank waste as quickly as possible;
c)Maximising fish density – the difficulty of managing this system is that when a group of fish enter a tank it is necessary to allow room for them to grow within the tank. This means that at the beginning there is a very low density of fish and there is not economical use of the space. Finding ways of moving the fish around in such a system to optimise space would be a big advantage;
d)Minimising stress and maximising fish welfare, including having good water quality.”
[75] Partridge at [46]
114. Therefore it is clear from Mr Partridge’s declaration that as a minimum, a RAS system can consist of a number of different physical configurations and a number of different biofiltration systems. I am also satisfied that Mr Partridge’s objectives broadly fall in line with the problem of providing more effective fish farming plant.
Obviousness in light of Common General Knowledge alone
115. Although the Opponent did not press this issue in their submissions, the Applicant has provided some comments which I believe are worth a brief consideration.
116. The Applicant’s position is that:
“There is no evidence from any witness which supports this contention. The Opponent’s witnesses started from a point of knowledge of the Application and the prior art and still provided no evidence that showed they would be directly led to the invention. Their evidence does not even establish that individual features of the invention were obvious, let alone the combination of features claims;
Mr Partridge clearly was not directly led to the invention when asked to describe the optimal design features of an RAS system as at 2013; see Partridge Declaration [38]-[46].”
117. Ultimately the Applicant’s argument, which I agree with, is that the Opponent’s evidence falls short of establishing that all of the individual integers of the claim are known as common general knowledge. Even if all the integers are known, there is no evidence which establishes that the person skilled in the art would be directly led to the precise combination of features claimed.
118. The Opponent has not established that the claims lack inventive step in light of common general knowledge.
Obviousness in light of common general knowledge and prior art
119. The Opponent refers to the following documents to establish lack of inventive step:
·PL1: DE 2829496 A1
·PL2: US 2005/012970 A1
·PL3: US 5353745 A
·PL5: WO 1992/012627 A1
·PL6: EP 1763995 B1
120. PL1 and PL2 are used as primary citations while PL3, PL5 and PL6 are used either to establish common general knowledge, or in combination with PL1 or PL2.
Inventive Step in light of PL1
121. PL1 is a German document and is accompanied by a machine translated English version provided by Espacenet. PL1 is best depicted in figure 1 which is reproduced below:
122. According to the English translation, PL1 refers to a device for breeding aquatic creatures, preferably fish. The device comprises one or more containers to process these aquatic creatures by cleaning and optionally controlling the temperature of the water. While these devices are known in the art, PL1 states that the main disadvantages of these known devices is that having a plurality of containers would require a sizeable footprint, and each container would require expensive walls which are self-supporting in order to withstand the hydrostatic pressure of the water.
123. PL1 resolves this by providing a single main reservoir (1) with individual containers (4, 5, 6) formed by partition walls (7) as shown in Figure 1 above. Water is treated in the inner circular rings (8, 9, 10) via a series of stages before being directed to a centrally arranged filter (11). From here, clean water is delivered to the individual container (4, 5, 6) via a circulation pump (12) via a pipe (depicted as an elongate pipe connecting sections 4, 5, 6 to the circulation pump 12). A separate smaller length of pipe is also present which connects each individual container to the outermost of the inner circular rings (8). Movement of the water may also be facilitated via the use of stirrers (13). During operation, fish is grown in one of the individual containers. At a certain point in the growth cycle, the fish may be brought from one of the individual containers to the next larger one by removing the partition wall separating them.
124. PL1 differs from claim 1 is that it does not disclose that:
1.filtration is performed using a biofilter;
2.the use of flow applicators whereby the flow rate of the water is independent of the water exchange rate;
3.that the movable walls are permeable;
4.one or two inlets and outlets in PL1 irrespective of the number of tank sections; or
5.a substantially horizontal/laminar flow structure, of potentially individual adjustable horizontal rate is each of the surrounding tanks is provided.
125. Regarding point 1, it is clear from my discussion above on common general knowledge that biological and mechanical filtration are primarily methods in RAS technology, and that biofiltration forms just one of a limited number of known filtration techniques, with the other alternatives being drum filteration and U/V treatment. The type of filtration system selected would be dependent on the type of fish. In this respect, I find that the use of a biofiltration system would not be considered inventive.
126. Regarding point 2, it is worth noting that claim 1 refers to flow applicators in the plural sense while PL1 only discloses a single circulation pump. Nevertheless as I described above, the water exchange rate is the rate at which the water passes through the filtration plant of the central tank. PL1 does not describe any other mechanism which could be interpreted as a flow applicator. Rather, water is pushed via the circulation pump to the individual containers, which then flows through the inner circular rings before being directed to a centrally arranged filter. Therefore it is clear that the water in the surrounding tank is not independent of the water exchange rate.
127. PL1 also discloses that movement of the water may also be facilitated via the use of stirrers. Mr Partridge explains that in his opinion[76]:
“These ‘stirrers’ appear to be randomly positioned relative to the inlet and outlets … [i]t appears that the stirrer can either help move the waste off the bottom of the tank and keep it in suspension so that it goes down the waste pipe 16, or add aeration, degas carbon dioxide, or add a little current … [i]t appears to me that the primary purpose is to move the water vertically to prevent the fish waste from settling on the tank floor.”
and that[77]:
“PL1 refers to what are described as ‘stirrers’ in the translation. As I have discussed above at paragraph 79, I understand these stirrers to be creating vertical water movement, so the flow will not be substantially horizontal/laminar. Also, because of the design of PL1 the flow rate is not independent of the water exchange rate, nor does the document describe the flow rate being individually adjustable in each tank.”
[76] Ibid at [79]
[77] Ibid at [132]
128. In this respect, although vertical water movement is created by the stirrers, this is intended to keep waste from settling on the bottom of the tank and keep it in suspension. This movement does not appear to be sufficient that it would impact the horizontal flow rate such that the flow rate of the water is independent of the water exchange rate.
129. Additionally, there is no evidence on file which suggests that a person skilled in the art would find it obvious to add flow applicators to the system of PL1, so that the flow rate of the water is independent of the water exchange rate.
130. Point 3, 4 and 5 are related. With point 3, although PL1 does not indicate whether the movable walls are permeable, Mr Partridge is of the view[78] that there would be no reason for the walls to be permeable as each section has its own outlet and inlet. Without any evidence to the contrary, I am inclined to agree with Mr Partridge.
[78] Partridge at [131]
131. Regarding point 4, it is clear from figure 1 that PL1 contains three inlets and three outlets.
132. Regarding point 5, there is a question as to whether a substantially horizontal/laminar flow structure is present in PL1. As noted in my discussion for points 3 and 4, if the movable walls are not permeable, then there would be a separate flow structure within each of sections 4, 5, 6. As the water would not flow between each section, a substantially horizontal/laminar flow structure cannot be present.
133. Additionally, PL1 does not describe any mechanism which would allow the horizontal rate in each of the surrounding tanks to be individually adjustable. While PL1 does describe the use of stirrers, these stirrers only create vertical water movement.
134. Consequently, noting the number of differences between PL1 and claim 1, there is no evidence on file which would allow me to conclude that it would be obvious for the person skilled in the art to have been directly led to the claimed solution, with the expectation of success.
135. I find that claim 1 does not lack an inventive step in light of PL1. It follows that the same consideration also applies to all of the dependent claims.
Inventive Step in light of PL2
136. PL2 is a United States patent document and is best represented by figure 1 reproduced below:
137. As shown in figure 1 above, PL2 describes a scalable fish rearing raceway system (10) which consists of two elongated fish channel raceways (12, 14). The system incorporates an inner water treatment zone (20) where a secondary detritivore fish species, such as tilapia or carp, may be stocked to remove particulate matter. At each end of the inner water treatment, hydrocone structures (22, 24) are provided with overflow trays (23, 25) to direct the water from the top of the hydrocone structures to the inner water treatment zone.
138. At one end of the system, a harvesting/grading channel (26) is located which includes a partition wall (27) located along a portion of the midline. The harvesting/grading channel is connected to the rest of the system via a portal area (28) located at the distal end of a permanent stationary grader panel (30) which can be raised out of the water when not in use for continuous grading. The system also includes paddlewheels (40, 42) at the proximal end of each of the elongate fish channel raceways for removing carbon dioxide from the water. Fresh water enters the system via an inflow fresh water pipe (44), and effluent water is removed by drain boxes (46, 48) connected to effluent pipes (50, 52). Water is pumped through the system with a U-tube oxygenation system (60). The water enters the fish zone via water jet outlets (34, 36) and the water velocity is controllable by spoilers (38, 39). In practice, the spoilers are normally set to provide water current that keeps the waste particulate matter from settling, and to provide quick final removal by the drains (56, 58).
139. PL2 differs from the claim 1 in that it does not disclose several movable permeable walls, wherein each surrounding tank becomes divided in several tank sections. There is also a question as to whether the paddlewheels or spoilers could be said to be flow applicators, and if there is a substantially horizontal/laminar flow structure.
140. To firstly address the several movable permeable wall, it is clear that PL2 discloses a non-movable partition wall (27) and a grader panel (30). There is a question as to whether a grader panel could be said to constitute a permeable wall. Mr Partridge opinion is that there is a difference. He explains that[79] “[t]he purpose of a grader is to separate some fish from others. The size of the vertical bars and the space between them is set accordingly. In other words, by their nature some fish will be able to swim through the grader or it would not serve any purpose. By contrast the permeable walls of AU’768 are designed to allow water to flow through but not fish. Their purpose is precisely to segregate the fish from one another.”
[79] Partridge at [146]
141. Mr Dunn disagrees[80] stating that a grader will be water permeable by its very nature because it contains open spaces of a given size and that graders are also used to keep fish separated.
[80] Dunn at [35]
142. In PL2, the grader panel is raised out of the water when not in use. During use, the grader panel is mechanically lowered into the water to sort fish by size on a continuous basis. This is better shown in figure 3 reproduced below.
143. Figure 3 shows the grader panel (30) connected to the harvesting/grading channel (26) via grader gates (76, 78). The grader gates provide continuous mechanical sorting of fish into the harvesting/grading channel. In another embodiment (not shown), two elongated oval raceway systems may be constructed adjoining one another, connected to a common harvesting/grading channel.
144. Although PL2 does not elaborate further on what these grader gates are, claim 3 of PL2 does indicate that the passageway leading into the harvesting/grading channel may include insertable solid barriers which prevent all fish from travelling to the harvesting/grading channel, or insertable mesh or bar barriers which selectively allow fish of varying size to pass into said harvesting/grading channel.
145. Therefore PL2 comprises several movable permeable walls consisting of the grader panel, and the grader gates. However it does not follow that these movable permeable walls could be said to divide the tank into several tank sections. Referring to figure 1, the tank section consists of two elongated fish channel raceways (12, 14) and two hydrocone structures (22, 24) and the harvesting/grading channel is considered to be a separate structure. In this respect, the grader panel is the only permeable wall situated within the tank section.
146. In order for the tank of PL2 to be divided, there needs to be at least two permeable section walls situated within the tank section. There is nothing in the disclosure of PL2 which suggests that a plurality of grader panels could be installed. In this respect, it has not been established, that it would be obvious to implement a plurality of grader panels such that the tank of PL2 is divided into several tank sections.
147. The Applicant submits that in addition to the movable permeable section walls, PL2 further lacks the following[81]:
“a) PL2 does not have flow applicators whereby the flow rate of the water is independent of the water exchange rate. The flow rate will be primarily determined by the water exchange rate;
b) There are not one or two inlets and outlets in PL2 irrespective of the number of tank sections. Rather each tank section is divided off with a solid wall which requires that each section has its own inlet and outlet (34 and 36 and 56 and 58);
c) PL2 does not result in a substantially horizontal/laminar flow structure of the water at least due to ‘spoilers’ which redirect the water to a more upward flow”
[81] The Applicant’s Submission at [145]; Partridge at [84], [136]
148. In relation to points a) and c), Mr Partridge states that[82]:
“With reference to the flow, I understand that the water exchange rate will be the primary driver of the water flow in this system. The system does include paddlewheels which are noted to remove carbon dioxide from the water (see [0068]). However I do not find any mention in the document that they are intended to generate or contribute to flow. I note from paragraph [0062] that the paddle wheels can alternatively be located within the inner water treatment area, suggesting that they are not considered an integral part of the flow establishment in the primary fish rearing system. I also note that paragraph [0064] of PL2 states that the water velocity in the fish zone is a function of the water returning from the inner water treatment zone.
In terms of the nature of the flow, PL2 describes the use of spoilers … [t]he effect of spoilers will be to create turbulence in the system so that there will not be a substantially horizontal/laminar flow. This is an intended feature of PL2 which is thought by the inventors to be for the benefit of the small fish in the system.”
[82] Partridge at [136]-[137]
149. I agree with the Applicant is relation to points a) and b), but disagree in relation to point c). Regarding point a), as stated above, flow applicators as defined in the claim refers to any mechanism which pumps water to create velocity or water flow. Paddlewheels are used to remove carbon dioxide from the water, and there is nothing in PL2 which suggests that the paddlewheels contribute to or control the flow rate of the water. Similarly, spoilers merely redirect the flow of the water which acts to provide water current that keeps the waste particulate matter from settling. In this respect, I do not consider the paddlewheels or spoilers to be flow applicators.
150. As for point b), the Applicant refers to water jet outlets (34, 36) and drains (56, 58). I note that PL2 does not mention whether there items 34 and 36 each refer to a single water jet outlet, or a plurality of water jet outlets. Nevertheless, I note that the tank of PL2 is not divided into a number of tank sections as PL2 does not disclose section walls. Rather, only a single tank section is present and is also the only tank section. On the assumption that items 34 and 36 refers to only a single water jet outlet, claim 1 only requires that each surrounding tank is equipped with one or two outlets and one or two inlets, irrespective of the number of tank sections. In this respect, it is clear that PL2 only contains two outlets and two inlets. However in the event I am incorrect on this point, it makes no difference as PL2 is not divided into several tank sections.
151. In relation to point c), the system does not need to achieve perfect laminar/horizontal flow but rather, simply needs to be substantially laminar/horizontal. In this respect, a substantially laminar/horizontal flow can still be achieved even with the presence of the spoilers.
152. Consequently, noting that PL2 is not divided into several tank sections via a plurality of permeable section walls, there is no evidence on file which would allow me to conclude that it would be obvious for the person skilled in the art to have been directly led to the claimed solution, with the expectation of success.
153. I find that claim 1 does not lack an inventive step in light of PL2. It follows that the same consideration also applies to all of the dependent claims.
Inventive Step in light of PL1 or PL2 in combination with PL3, PL5 or PL6
154. In addressing the question of whether a permeable movable wall section would be obvious to a skilled addressee or part of the common general knowledge, the Opponent refers to the disclosure of PL3, PL4, PL5 and PL6. The Opponent’s position is that it would be obvious to modify the system of PL1 with PL3, PL5 or PL6, or the system of PL2 with PL6.
155. PL3 describes a plurality of wall tank dividers which are movable partially though a tank to allow isolated sections of a tank to be varied in size to accommodate the size or volume of the primary cultured species. Nozzles allow liquid to flow and circulate within the sections of the tank, and may be adjusted to create an appropriate movement of the aqueous medium within a section to simulate waves or current helpful or necessary for the development of particular primary fish species. It is clear that PL3 refers to solid walls rather than permeable walls.
156. PL5 is a French document and is accompanied by an English machine translation. The invention refers to a device consisting of a retaining grille with openings closable by doors, which allows passage in a single direction only if said occupants meet a specific selection criteria. In one embodiment, the device may also consist of walls connecting two retaining grilles so that it resembles a tunnel. Mr Partridge considers[83] that PL5 is not directed towards a RAS tank design but rather, relates specifically to a mechanism selecting or sorting fish within a raceway system. Mr Partridge notes[84] that PL5 does not with the flow of the water, how the water is treated or processed and how the waste is removed.
[83] Partridge at [143]
[84] Ibid at [58]
157. PL6 is a German document and is accompanied by an English machine translation. It shows a robot which drives around the tank in order to push the fish towards a panel which consists of grated bars allowing only smaller fish to swim through the gaps in the bars. Mr Partridge notes[85] that the robot is removable and is not intended to stay in the water permanently.
[85] Ibid at [65]
158. The Applicant submits that the Opponent has not established that the skilled addressee would be reasonably expected to combine the teachings of any of the cited documents. Nevertheless, it is worth noting that only PL3 refers to a wall tank divider which allows isolated sections of a tank to be varied in size. PL5 and PL6 are primarily concerned with a grading system. It is also clear that each of PL3, PL5 and PL6 are designed to operate with a specific tank layout and therefore, a significant degree of work would be required in order to implement the system of PL3, PL5 or PL6 in either PL1 or PL2.
159. In considering whether there is any motivation to combine any of the above documents, there is no problem stated in either PL1 or PL2 which would be solved by implanting any one of PL3, PL5 or PL6, and there is no evidence from any of the declarants which suggests that, when faced with the problem of providing a more effective fish farming plant, would be motivated to combine any of these pieces of prior art.
160. Consequently, it has not been shown that there is a lack of inventive step in light of PL1 when combined with PL3, PL5 or PL6, or with PL2 when combined with PL6.
Section 40
161. Section 40(2) and 40(3) provides that:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent--end with a claim or claims defining the invention;
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
Section 40(2)(a)
162. Section 40(2)(a) requires that the specification must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.”
163. The requirement of disclosure can be summarised simply[86]: "The heart of the test is: 'Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?’”
[86] Novartis AG v Johnson & Johnson Medical Limited [2010] EWCA Civ 1039 at [74]
164. In Biogen v Medeva [1997] RPC 1 (“Biogen”), Lord Hoffmann explained the concept of an enabling disclosure[87]:
“… the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the [specification] discloses a principle capable of general application, the claims may be in correspondingly general terms. The [applicant] need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the [applicant] must enable the invention to be performed in respect of each of them.”
[87] Biogen v Medeva [1997] RPC 1 at [48]
165. In Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 (“Eli Lilly”), Kitchin J approved the following approach[88]:
"The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result."
[88] Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 at [241]
166. In order to decide whether there is sufficient disclosure in any particular case, the general approach was explained by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9[89]:
[89] Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 at [103]
"The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it."
and by Kitchin J in Eli Lilly[90]:
[90] Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 at [239]
"The specification must disclose the invention clearly and completely enough for it to be performed by a person skilled in the art. The key elements of this requirement which bear on the present case are these:
(i) the first step is to identify the invention and that is to be done by reading and construing the claims;
(ii) in the case of a product claim that means making or otherwise obtaining the product;
(iii) in the case of a process claim, it means working the process;
(iv) sufficiency of the disclosure must be assessed on the basis of the specification as a whole including the description and the claims;
(v) the disclosure is aimed at the skilled person who may use his common general knowledge to supplement the information contained in the specification;
(vi) the specification must be sufficient to allow the invention to be performed over the whole scope of the claim;
(vii) the specification must be sufficient to allow the invention to be so performed without undue burden."
167. The delegate in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”) summarised the approach to be taken as follows[91]:
i) construe the claims to determine the scope of invention as claimed,
ii)construe the description to determine what it discloses to the person skilled in the art, and
iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
[91] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [95]
168. The Opponent raised[92] concerns with the manner in which claim 1 defines that the flow rate is individually independent of the water exchange rate as there are no structural or technical features recited in the claim, but mere desiderata reciting a flow structure that potentially would be desirable.
[92] The Opponent’s Submission at [71]-[73]
169. The Opponent relies on Mr Rumbold who states[93] “I have been asked whether the construction described in the patent would generate a laminar flow in each tank, as claimed. This would have to be tested and the hydraulic results reviewed for me to give a definite answer. While it is theoretically possible, history shows that linear tanks are more effective in this regard.” Mr Rumbold then explains that he does not consider the specification to be very clear as to define how the laminar flow is achieved.
[93] Rumbold at [17]
170. In a similar vein, Mr Dunn’s position[94] is that there is no proper disclosure of how laminar flow is achieved, or measured. Further, there is no indication what deviation from perfect laminar flow remains covered by the patent.
[94] Dunn at [30]-[33]
171. The Applicant submits that[95]:
“The claim specifies the means by which the substantially horizontal/laminar flow is achieved, namely the use of flow applicators in combination with the water exchange system which utilizes one or two inlets and one or two outlets per tank, and the concentric tank shape described.”
[95] The Applicant’s Submission at [160]
172. Mr Partridge elaborates further[96]:
“I understand from reading the specification that horizontal/laminar flow is optimised in this case by the use of the propellers/flow applicators in combination with the returned water from the filtration system. A body of water is pushed around the tank in a substantially horizontal manner. The propellers/flow applicators provide the ability to control and optimise the velocity, according to the fish’s requirements.”
[96] Partridge at [104]
173. In relation to Mr Rumbold’s concerns, the Applicant submits[97] that “…Mr Rumbold understands the method by which the Application claims to achieve substantially horizontal/laminar flow – he knows what he would construct and test. His only point is that he would have to carry out hydraulic tests to confirm that the laminar flow is present. The need to carry out routine tests after the fact to confirm whether a feature is present is not sufficient to create a lack of enablement. Importantly Mr Rumbold provides no specific reason why he believes substantially horizontal/laminar flow would not be achieved.”
[97] The Applicant’s Submission at [161]
174. In relation to Mr Dunn, the Applicant’s position is that “…Mr Dunn in his declaration appears more concerned with the meaning of ‘substantially’ laminar rather than how it is achieved in the inventive system of Application.”
175. To firstly address the issue of achieving a perfect laminar flow, it is clear that this would be near impossible to achieve with the presence of fish in the system and claim 1 does not require that the horizontal/laminar be perfect. Rather, claim 1 only requires that there be a substantially horizontal/laminar rate.
176. It is also clear that the specification is sufficient to allow the invention to be performed without undue burden. Although Mr Rumbold does express concerns as to whether the claimed system would achieve a substantially laminar/horizontal flow, it is clear that this uncertainty could be resolved by conducting hydraulic tests. The specification states that a horizontal/laminar flow is achieved via the use of flow applicators, and there is no evidence to suggest that this could not be performed without imposing an undue burden on the person skilled in the art.
177. Consequently, I am not satisfied that an objection under section 40(2)(a) has been made out.
Section 40(2)(b)
178. Section 40(2)(b) requires that for a standard patent, the specification must “end with a claim or claims defining the invention.” This requires that the claims define the monopoly for which application has been made. in AMP v Utilux (1971) 45 ALJR 123, McTiernan J stated[98]:
"The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."
[98] AMP v Utilux (1971) 45 ALJR 123 at page 128
179. The Opponent submits[99] that the invention as claimed in claims 1 – 18 does not comply with section 40(2)(b). The Opponent notes that claim 1 requires there to be tanks surrounding the central tank and for the flow rate of water in the surrounding tanks to be individually independent of the water exchange rate. However, the opponent notes that the specification discloses only one embodiment of this system, and that discloses includes stop gates before the outlet and after the inlet. Therefore, the Opponent submits that the tank must contain a radial section that is void of fish and this indicates that the tanks clearly do not surround the central tank. In this regard, the Opponent submits that claim 1 should at least be limited or restricted in scope and recite that each surrounding “circular tank” has at least one restriction preventing circular swimming of a fish.
[99] The Opponent’s First Submission at [57]
180. In order to comply with section 40(2)(b), the question is not whether there is an inconsistency between the invention claimed and the invention described. Rather, it is whether the claim fulfils the statutory purpose of ‘defining an invention’, including an alleged invention. In this respect, an objection under section 40(2)(b) will only be made out if the claim bears no relationship to anything described in the specification. The claims clearly bear a relationship.
181. Consequently, I am not satisfied that an objection under section 40(2)(b) has been made out.
Section 40(3)
182. Section 40(3) requires that the “claim or claims must be clear and succinct and supported by matter disclosed in the specification.”
183. The requirement of "supported by matter disclosed" was introduced as a replacement for the former requirement of fair basis. The purpose of this change is explained in the Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) (“the Explanatory Memorandum”) which states[100]:
"This item is intended to align the Australian requirement with overseas jurisdictions' requirements (such as the UK). Overseas case law and administrative decisions in respect of the 'support' requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision."
[100] Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) at page 49
184. The corresponding provisions in the UK legislation (i.e. section 14(3) of the Patents Act 1977 (UK) in relation to disclosure and section 14(5)(c) in relation to support) have been considered many times by UK courts.
185. In Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 (“Generics”), a decision of the House of Lords, Lord Walker explained that a combination of the two concepts “spell out the need for an ‘enabling disclosure’ ” and that[101]:
“The disclosure must be such as to enable the invention to be performed (that is, to be carried out if it is a process, or to be made if it is a product) to the full extent of the claims. The question whether there is sufficient enabling disclosure often interacts with a question of construction as to the extent of the claims.”
[101] Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [20]
186. The requirement of support was considered in Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (“Exxon”) can be summarised as the scope of the claims[102] "should correspond to the technical contribution to the art".
[102] Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 at [659]
187. In Generics, Lord Walker quoted with approval from the decision of the Technical Board of Appeal in Exxon. The Technical Board stated[103]:
“the claims must be supported by the description, in other words it is the description of the invention in the claims that needs support. In the Board's judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention”[158] (emphasis in the original)
[103] Ibid at [659]-[660]
188. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics[104]:
"The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. 'Inventive concept' is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case."
[104] Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [30]
189. An important question will often be whether the technical contribution to the art is a general principle or the specific examples in the specification. Lord Hoffmann gave some examples in Biogen[105]:
“Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.”
[105] Biogen v Medeva [1997] RPC 1 at [49]
190. In order the answer the question of support, the general approach is as stated in Schering Biotech Corporation’s Application [1993] RPC 249 by Aldous J[106]:
"to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed."
[106] Schering Biotech Corporation’s Application [1993] RPC 249 at [252]
191. The delegate in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 summarised the approach to be taken as follows[107]:
“i) construe the claims to determine the scope of the invention as claimed,
ii) construe the description to determine the technical contribution to the art, andiii) decide whether the claims are supported by the technical contribution to the art.”[107] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115]
192. The Opponent submits that the claims are not supported by matter disclosed in the specification for a number of reasons.
193. Firstly, the Opponent submits[108] that claim 1 should at least be limited or restricted in scope and recite that each “circular tank” has at least one restriction preventing circular swimming of fish for similar reasons to that set out under section 40(2)(b) above. The Opponent also refers to figure 7 of the specification to illustrate that the surrounding tanks or circular tanks do not surround nor encircle the central tank. Figure 7 is reproduced below:
[108] The Opponent’s First Submission at [70]
194. The Applicant submits a radial section void of fish is only one of a series of preferred embodiment and is specifically included in claim 11. Claim 11 states:
“Fish farming plant (1) according to one or more of the claims 1 – 10, characterized by being made with one or more radially through-going tank sections without fish farming, for placement of flow applicators (8) and piping of pipes to outlet (30), inlet (29) and water treatment.”
195. Accordingly, the applicant submits that[109] “…the Application further describes how the design of the water treatment, inlet and outlet remove the need for piping under the floor of the tank. It is then stated: ‘but even if they were placed beneath the bottom level of the tanks – which would be possible, the very simple piping concept of the plant would still result in a significantly reduced capital investment and time.’ It is specifically contemplated therefore that piping might be used below the tank floor, which might be necessary if no radial section void of fish were included.”
[109] The Applicant’s Submission at [177]-[178]
196. I am inclined to agree with the Applicant. The specification makes it clear that a radial section void of fish is only present in a preferred embodiment, and there is nothing to suggest that the invention as claimed could not function without this void section. I will also briefly note that figure 7 is a flow diagram of the fish farming plant and is designed to illustrate the path of water through the system.
197. Secondly, the Opponent submits that claim 1 is not supported as it is silent as to how the flow rate is individually independent of the water exchange rate. However claim 1 and the specification indicates that this is achieved by flow applicators, is limited as such, and there is no evidence to suggest that there would be any difficulty in order to perform the invention over the full scope of the claim. Therefore, I find that claim 1 is supported.
198. Thirdly, the Opponent submits that a horizontal/laminar flow structure is not supported. However as set out in my discussion under section 40(2)(a) above, a substantially horizontal/laminar flow structure is achieved by use of flow applicators in combination with the water exchange system which utilizes one or two inlets and one or two outlets per tank, and the concentric tank shape as described. There is no evidence to suggest there would be any difficulty in achieving a horizontal/laminar flow as claimed. Therefore, I find that claim 1 is supported.
199. Lastly, the Opponent submits that the following integers of claim 1, 2 and 11 lack support as the specification only discloses one way in which these integers can be implemented[110]:
[110] The Opponent’s First Submission at [75]-[77]
·“Claim 1 defines the feature ‘section walls’ broadly in terms of its ‘stepless movable function’. However, the description and drawings (see page 21, lines 8-31; and figure 2) indicate that this function can only be carried out in a particular manner, namely by providing each section wall with ‘an upper rod’, ‘wheels’ on each end of the upper rod, and ‘rails’ on which the wheels rest and which are installed on top of the walls between the tanks, and no alternative means are envisaged or suggested. Hence claim 1 is not supported by the description.”
·“Claim 2 lacks support as it defines that ‘a frame and/or an upper rod is automatically adjustable in the width of the tank, a permeable face is also automatically adjustable in the width of the tank”. There are no technical features in claim 2 that provides this effect of automatic adjustment.”
·“Claim 11 is not supported by the description as it defines ‘one or more radially through-going tank sections without fish farming’. According to the description (page 19, lines 21-24; page 17, lines 25-28), it is clear that the features ‘the flow applicators are placed above an inlet and an outlet’ and that ‘before the outlet and after the inlet there are installed stop grates which prevent fish from coming into the tank section with flow applicators and the inlet and outlet’ are essential for the safety and well-being of fish being cultivated in the fish farm having such tank sections without fish farming“
200. To address the Opponent’s concern with claim 1, I previously construed the term ‘movable’ to encompass ‘removable’. In this regard, the Opponent’s concern is rendered moot. Claim 2 and 11 are set out as follow:
Claim 2
Fish farming plant (1) according to claim 1, characterized in that the movable permeable section walls (12) are made with a frame and/or an upper rod (23) that is automatically adjustable in the width of the tank (2), a permeable face (24) that also is automatically adjustable in the width of the tank (2) and that leads from the upper edge/rod (23) of the frame down to the bottom of the tank (2), and wherein lower and upper wheels (25) are placed at the bottom of the permeable face (24) and in the ends of the rod (23).
Claim 11
Fish farming plan (1) according to one or more of the claims 1 – 10, characterized by being made with one or more radially through-going tank sections without fish farming, for placement of flow applicators (8) and piping of pipes to outlet (30), inlet (29) and water treatment.
201. In relation to claim 2, the specification states[111] that the automatic adjustment can be achieved with a double telescopic rod, and sections that are attached to the permeable face with hinges. However, the technical contribution to the art is in that the width of the permeable wall may be automatically adjustable in the width of the tank. The use of an automatically adjustable movable permeable section wall is a preferred embodiment, but it is not the technical contribution to the art. I accept that there would be other means of achieving this automatic adjustment. However there is no evidence on file to suggest that the person skilled in the art could not envisage other possibilities, or that they would experience any difficulties to perform this invention over the full scope of claim 2. Consequently, I find that claim 2 is supported.
[111] The Specification as filed at Page 18 Lines 33 - 35
202. In relation to claim 11, I cannot find anything in the specification which indicates that it is essential that the flow applicators are placed above an inlet and an outlet, or that stop grates are installed to prevent fish from coming into the tank section with flow applicators, the inlet, and the outlet. In this respect, claim 11 refers to a preferred embodiment. There is no evidence on file to suggest that the specification does not provide sufficient directions for a person skilled in the art to perform the invention across the full width of claim 11 without undue burden. I find that claim 11 is supported.
203. Consequently, the claims comply with section 40.
Manner of Manufacture
204. The Opponent submits that[112]:
“Claim 1 is overall a mere collocation more or less unrelated prior art features with no clearly defined working inter-relationship and therefore the claimed invention is not for a manner of manufacture as defined in section 6 of the Statute of Monopolies. Claim 1 also fails the manner of manufacture test as it relies extensively on the recitation of mere desiderata, without reciting the essential integers of the alleged invention which allow those desired outcomes to be achieved.”
[112] Ibid at [51]
205. A collocation comprises a number of known integers, process steps, or the association of materials or substances in such a way that no working interrelationship or potential working interrelationship exists between its various constituent parts. That is, each part performs its normal function, and is not functionally dependent on any other part.
206. A collocation is only unpatentable if all its integers are known. In this context, "known" means publicly available. This situation relies on a "collocation" of items of prior art, rather than a "mosaic" thereof in the patent law sense[113].
[113] Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd and Anor (1996) 34 IPR 256
207. Where one of the integers or steps is new and otherwise patentable, the inclusion of such an integer or step in a collocation is not objectionable under sec 18(1)(a). In B.U.S.M. v. Fussel 25 RPC 631, Fletcher-Moulton LJ stated[114]:
"......if a patentee could rightly claim a general grant, but he limits that grant in any way - limits it, not extends it - no such limitation can destroy the validity of his grant. Supposing the Patentee was entitled to claim this first group by itself, i.e., generally, and he chose only to claim it when used in combination with a special operating mechanism, his so claiming it has limited, and not extended, his grant; and no such limitation which amounts to a present to the public of his invention, excepting when used under such circumstances, can possibly injure the validity of the grant, though it may prevent doubts arising as to the validity of the grant."
[114] B.U.S.M. v. Fussel 25 RPC 631 at page 649
208. During the hearing, the Applicant referred to Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 where it was stated[115]:
“Further, let me deal with another point raised by MLA concerning claim 1 and inventive step. MLA says that where one is dealing with a combination of elements, it is their interaction which is the essential requirement of invention (Aktiebolaget Hässle at [6] and [41]). So much may be accepted. But MLA seeks to draw too much from the notion of interaction in suggesting that the integers of claim 1 do not interact. One is dealing with a method claim which has “component” parts. But the parts do not need to interact like a physical locking mechanism in order for the component parts to interact in a relevant sense to form a new invention. Each component is necessary to, and the combination is sufficient for, the invention as claimed. In the relevant sense they interact.”
[115] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [796]
209. To my mind, although the individual integers of the claimed system may be known, there is clearly a working interrelationship between the integers. On this point, the Applicant submits[116]:
“…the invention is the selection of a series of concentric annular tanks which allows the use of permeable movable walls across the width of the tank to segregate fish groups without disturbing the substantially horizontal/laminar flow which is optimized by use of the flow applicators. If permeable walls were not used the tank could not be constructed with one or two inlets and one or two outlets, since a separate inlet and outlet would be required for each section.”
[116] The Applicant’s Submission at [101]
210. It is also clear that the movable permeable walls and the specific arrangement of the tank allow the tank to be divided into several tank sections of varying sizes while maintaining a substantially horizontal/laminar flow.
211. I am not satisfied that there is no working interrelationship between the elements of the claimed combination.
212. Consequently, claim 1 is directed towards a manner of manufacture.
Conclusion
213. The Opposition is unsuccessful. None of the grounds have been made out.
Costs
214. It is usual in matters before the Commissioner that costs should follow the event and I see no reason to depart from this approach. Bent Urup Holding ApS has been successful in this matter.
215. I will award costs according to Schedule 8 against INTER AQUA ADVANCE A/S.
Isaac Tan
Delegate of the Commissioner of Patents
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