John Richard Gumley v E F International S.A

[1991] APO 65

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Application no 580698 by John Richard GUMLEY and opposition by E F INTERNATIONAL S.A.; and

An application for special leave to adduce further evidence by John Richard Gumley.

BACKGROUND

On 19 December 1985, and 15 August 1986, John Richard Gumley lodged applications accompanied by provisional specifications.  On 12 December 1986, he lodged an associated complete specification.  The office advertised acceptance of the application on 27 January 1989.

On 3 February 1989, E F International S.A. lodged a notice of opposition under section 59 of the Patents Act 1952. On 2 May 1989, the opponent applied for an extension of time to lodge evidence-in-support. The applicant objected to this extension. After a hearing on 19 June 1989, an extension of time to 3 August 1989 was allowed. A further one day extension was allowed and the opponent completed lodgement of its evidence-in-support. The applicant lodged evidence-in-answer, the opponent lodged evidence-in-reply, and the office set down a hearing in Canberra on 15 May 1991.

On 10 April 1991, the applicant applied for special leave to lodge further evidence.  The opponent objected.  This matter was dealt with first at the hearing.

APPLICATION FOR SPECIAL LEAVE TO ADDUCE FURTHER EVIDENCE

At the hearing, both attorneys addressed the application for special leave.  I then gave the following decision on the special leave application.

`I allow the application for special leave to adduce further evidence.  My reasons are as follows.

The evidence-in-reply does raise new matter, going both to the credibility of the applicant's witnesses and to the ground of obtaining set out in the notice of opposition.

Mr Christiansen's declaration of 10 April foreshadows further evidence which is material to the issues, both to the credibility of witnesses and to obtaining.  This foreshadowed evidence is thus material to the matters in issue in the substantive opposition.

Considering the issues that are relevant to any application to adduce further evidence, the balance of convenience is in favour of allowing the further evidence.  Allowing the further evidence will not cause any major further delay to the determining of the substantive opposition.  We should have before us the best available evidence relating to the grounds of the opposition.  The allowance of the leave to adduce further evidence would not cause any injustice to the opponent.  On the contrary, from the indicated nature of the evidence, it may prevent a potential major injustice being done to the applicant.

I reserve my decision on the costs of the application for special leave to adduce further evidence.

During the substantive hearing, I do not expect the opponent to address the matters raised in the further evidence.  The opponent does have the opportunity to put in evidence in response to this further evidence.'

Having allowed the application for leave to adduce further evidence, the hearing moved on to the substantive opposition.

ISSUES IN THE SUBSTANTIVE OPPOSITION

Although the Notice of Opposition recites seven grounds, the matters which were pursued at the hearing concerned `obtaining', `prior claiming', `lack of novelty', `obviousness' and `section 40'.

THE SPECIFICATION

The invention relates to improvements in lightning conductors.

The specification discusses the prior art `Franklin Rod', as follows:

`It is generally agreed that Benjamin Franklin invented the conventional lightning conductor.  Prior to 1752 he and three friends showed, through experiments, that electricity was attracted to sharpened pieces of metal.  In 1753 Franklin wrote a detailed description of a lightning conductor.  Since that time conductors in the nature of sharp pointed rods, located on the top of structures, to capture lightning discharges, have been commonly known as Franklin Rods.'

The specification then discusses a number of `perceived improvements to Franklin rods'.  Those improvements are summarised as:

`1.   Multiple points fanning out from a single rod.

2.Radioactive emissions to enhance air conductivity around the point.

3.A solar or battery powered spark generator to create ionization.

4.Spark generators which derive energy from the natural electric field which exists during a thunderstorm and preceding a lightning stroke.'

The specification also summarizes some specific previous inventions, in the following terms:

`In US-A-4,540,844, there is described a single-point Franklin Rod which is brought to a high tension potential by a generator to produce and maintain at its maximum a corona discharge.  The ions generated by the corona discharge form a column of ionized air above the point of the rod, to facilitate the occurrence of lightning by increasing the conductivity of the atmospheric air.

US-A-4,518,816 discloses a lightning conductor which uses a piezoelectric device to create a corona effect and atmospheric ionization.

In GB-A-2146851A, there is disclosed a single-point rod connected to an accelerator consisting of radially arranged metal deflector plates and needles on a dielectric plate in register with apertures in the metal plate.  The rod and plates are positively charged and the needles are negatively charged, the resulting electric field creating ionization.'

The specification then states that:

` ... despite the apparent logic of the prior art ionizing rods, a more effective arrangement is needed, one which would respond dynamically to the appearance of a lightning down leader.'

Then follows three consistory statements substantially identical to independent claims 1, 3 and 9.  Each of these independent claims defines `A passive lightning attracting device.'  Independent claim 7 differs from claim 1 primarily in defining `A passive lightning conductor' rather than `A passive lightning attracting device'.  There is no consistory statement corresponding to independent claim 7.  The construction and theory of operation of the preferred embodiment are described with reference to eight figures.  Most discussion at the hearing centred on claim 1 which reads:

`A passive lightning attracting device, said device including at least one electrically conductive surface element insulated from an earth element, a high impedance drain connected between said or each surface element and said earth element, there being an air gap between said or each electrically conductive surface element and said earth element such that under particular atmospheric conditions, when the approach of a lightning down leader creates an electric field in the vicinity of the device, said device responds to said down leader, in that arcing takes place between said surface element or one of said surface elements and said earth element, the arcing leading to plasma creation and upward leader formation.'

The specification also addresses the theory of operation of lightning conductors, by cross-reference to US patent 4,518,816:

`Before commencing a detailed description of the embodiments of this invention, reference should again be made to US-A-4,518,816 in particular column 1, lines 14 to 26 thereof.  In that section of the patent specification, mention is made of a downward precursor, (or down leader) which consists of charged particles, being directed towards the ground.  It is stated that the approach of this down leader creates an intense electric field near the ground, and this in turn creates upward discharges or upward tracers or leaders.  The first upward tracer which meets a down leader will close the `circuit' and cause the lightning discharge.  Thus, it can be of great benefit to be able to close the circuit and attract the lightning discharge to a preferred location.'

THE EVIDENCE

Summary

Before analysing the evidence in detail, I will summarise the salient points which that evidence addresses.

Mr Gumley, who is the present applicant, and Mr Invernizzi, who is the principal of the opponent company, are both highly qualified electrical engineers.  Mr Invernizzi is the inventor of Australian patents 465821 (`An Installation for Protecting Buildings and Vessels Against Atmospheric Discharges') and 564606 (`Lightning rod Installation').

E F Australasia Pty Limited was associated with both Mr Invernizzi and Mr Gumley (the present applicant).  E F Australasia had a licensing agreement with E F International S.A.  There was disagreement between Mr Gumley and Mr Invernizzi as to the efficacy of the E F International products.  Mr Gumley terminated his active involvement with E F Australasia.  He also filed the present patent application.

There is also evidence from various technically qualified persons as to how the invention works, the interpretation of the complete specification, and the prior art.

Evidence-in-Support

The evidence-in-support is a statutory declaration by Cesare Giulio Invernizzi.  Mr Invernizzi is founder and president of E F International S.A., which is the present opponent.  In this declaration, Mr Invernizzi states his qualifications and lists two patents for related technology of which he was the inventor.  He mentions license agreements between the opponent and E F Australasia Pty Limited and includes a copy of this licence agreement (as exhibit CGI 2).  He notes that John Richard Gumley (the present applicant and inventor) was at the time the managing director of E F Australasia Pty Ltd.  He refers to transfer of `know-how' between E F International S.A. and E F Australasia Pty Ltd.  In this context, Mr Invernizzi refers to exhibit CGI 3 to his declaration.  The papers in that exhibit are copies of various pieces of correspondence between E F Australasia and E F International.

Mr Invernizzi then says that J R Gumley had breached the agreement by applying for his patent.  Mr Invernizzi makes comparisons between his second patent and Mr Gumley's patent.  He asserts that various components are equivalent and that the high impedance drain (recited in, for example, claim 1 of the present application) is well known in the art.

Exhibit CGI 4 to Mr Invernizzi's declaration is a copy of a fax from Professor Giorgio Baldo to Mr Invernizzi.  Professor Baldo reasons that `[Mr Gumley's] proposal does not differ from the device which is produced by E F International.'

Evidence-in-Answer

The evidence-in-answer consists of statutory declarations by John Richard Gumley, Stephen John Gumley, John Christiansen, and Phillip Richard Tompson.

Mr J R Gumley commences his declaration with details of his technical qualifications and work experience in the field of lightning protection.  He states that E F Australasia was formed to market E F International products and details how those products were tested.  He says that Mr Invernizzi's device was unsatisfactory.  He compares the construction and operation of his device with that of Mr Invernizzi's device.  He also includes three supporting statements from Professor Nguyen, Mr F Matthews, and Dr D Mackerras.  He then offers specific rebuttals against many of the statements in Mr Invernizzi's declaration in the evidence-in-support.

Dr S J Gumley's declaration is a summary of his own technical qualifications, his observations of J R Gumley's work, and his own engineering experiences with lightning protection.  Dr Gumley also addresses a number of the issues which are raised by the evidence in support.

Mr J Christiansen in his declaration points out that J R Gumley has been granted a corresponding United States patent, even though the prior art citations relied upon by the opponent were before the US examiner.  Mr Gumley has also been granted a New Zealand patent.

In his declaration, Mr P R Tompson describes performance tests that he did to compare the Gumley device (`the Dynasphere') and the Invernizzi device (`the E F terminal').

Evidence-in-Reply

The evidence-in-reply consists of statutory declarations by Cesare Invernizzi and Anthony Stokes.  Mr Invernizzi's declaration rebuts many of the statements made in the evidence-in-answer.  Exhibit CGI 8 to Mr Invernizzi's declaration is a letter in which Professor Baldo addresses a number of technical issues.  Professor Stokes declares that he believes that `the Gumley device provides no improvement over the prior art lightning conductors.'

Further Evidence

The further evidence consists of statutory declarations by John Richard Gumley and Stephen John Gumley.  These give details of their employment history and refute some allegedly defamatory remarks by Mr Invernizzi.  In the context of the issue of entitlement to a patent for the present invention, the further evidence gives details of the amount of Mr J R Gumley's time that was billed to E F Australasia.

SUBMISSIONS FOR THE OPPONENT

The opponent was represented by Mr P F Kildea.

The main grounds of the opposition are obtaining, prior publication, novelty, obviousness, and non-compliance with section 40.

Mr Kildea commenced by reading extensively from the specification of application 580698.  He drew attention to the term, `high impedance drain'.  He also alleged that there is lack of clarity in the specification with regard as to whether C2 in figure 4 is meant to be the high impedance drain.

Mr Kildea then considered claim 1.  He stated that he considered that `passive' in this context means passive under normal conditions but dynamic during a storm.  He also noted that there is no indication in the claim of the shape or spacing of the elements.  In summary, all that claim 1 defines is two spaced elements, a surface element and an earth element, and a high impedance drain.  The claim covers a multitude of shapes for the surface element and one or more surface elements.

Mr Kildea then addressed the meaning of `high impedance drain'.  He observed that the specification refers to a `static' high impedance drain but he offered no suggestion as to what limitations this might imply.  The specification does not answer what is meant by `high'.  The specification does not make clear whether the impedance is resistive, capacitive, or reactive.  He also contended that the term `particular atmospheric conditions' is inadequately defined.

He said that the difference between the device of claim 1 and that disclosed in specification 564606 depends solely on the high impedance drain.  As the sole difference, the high impedance drain is the crux of the invention.  As such, it should not be obvious to a man skilled in the art.  Hence, the argument that this term would be understood by a man skilled in the art is invalid if this feature is to confer novelty.

Mr Kildea went on to further discuss cited specification 564606.  In particular, he drew attention to insulator 4 which by definition has a high impedance and thereby constitutes the equivalent of the high impedance drain.  He read in detail from the subject specification and the earlier specification and concluded that both work in the same way.  Comparing the citation to claim 1, he said that the citation has surface and earth elements and the high impedance drain is constituted by the insulator and air gap.

Turning to the evidence-in-support, this comprises a statutory declaration by C G Invernizzi.  Mr Kildea read paragraphs 4 and 5 which refer to a licence agreement.  The agreement is between E F Australasia and E F International.  He then read:

article 5 of this agreement which says that the licensee will not contest the validity of the patent;

article 6 in which the licensee commits itself to consider as professional secrecy any information provided by the licensor;

article 8 which says that the licensee will not manufacture or market competitive products;

article 12 which says that both parties would exchange improvements; and

article 15 which covers resolution of disputes.

Paragraph 7 of Mr Invernizzi's declaration refers to transfer of know-how and to a series of letters showing technical discussions between the parties.  Mr Kildea said that part of this know-how was specification 564606.  Paragraphs 9 to 13 compare the Invernizzi device with the Gumley device.  Mr Invernizzi states that the high impedance drain does not add novelty since capacitors are well known for this purpose.  Comparing the preferred embodiments, Mr Invernizzi further claims that there is no difference in the principle of operation of the different shaped surface elements.  Mr Kildea completed his consideration of the evidence-in-support by reading exhibit 4 which is a letter by Professor Giorgio Baldo.  Professor Baldo discusses theoretical aspects of lightning formation and lightning protection.

Mr Kildea then addressed the evidence-in-answer.  Referring to Phillip Tompson's declaration, he noted that the two tested devices are not necessarily representative of the two claimed inventions.  There is nothing in claim 1 of Mr Gumley's patent about the earth being a blunt tip and claim 1 is not restricted to a semi-spherical dome.  The other tested device is not necessarily representative of the Invernizzi device.  Mr Kildea also commented that this was a laboratory test which is not indicative of what happens in the field.  Therefore, little weight should be given to this declaration.

In respect of S J Gumley's declaration, Mr Kildea refuted the assertion that J R Gumley worked independently of E F Australasia.  As managing director, he cannot be independent.  He must promote the interests of E F Australasia and improve their products.

Mr Christiansen's declaration advises that the corresponding US specification has been accepted.  Mr Kildea noted that acceptance of a patent application in the United States depends on all sorts of circumstances.  Acceptance of a US application does not guarantee that a corresponding Australian patent would be valid.

The final part of the evidence-in-answer is a declaration by J R Gumley.  Mr Kildea observed that paragraph 8 of this declaration shows that there were technical discussions between Mr Gumley and Mr Invernizzi.  Mr Kildea said the declaration lacks details of specific evidence to back up the general statements of paragraphs 10, 11, 13, and 15 which concern the testing of devices.  Paragraph 17 says the spherical air terminal was unique.  Other paragraphs and some of the exhibits also refer to the spherical terminal.  But Mr Kildea pointed out that this feature was not in the claims.  Mr Kildea also pointed out that in paragraph 21, the `Gumley device' is more restricted than the device as defined in claim 1 of the subject specification.  He notes also that in paragraph 28.3, J R Gumley gives his resignation date as 24 November 1986 (registered on 25 February 1987).  He was therefore still managing director when the application was made.  Mr Kildea then read from exhibits JRG9, JRG10, and JRG14 which are assessments by expert witnesses.  He noted the different interpretations that they made on `high impedance drain', and that they referred to features, especially the spherical shape, which are not in claim 1.

Then, Mr Kildea considered the evidence-in-reply.  He drew particular attention to exhibit CGI/8 which is another letter from Professor Baldo.  Professor Baldo contends that even without a specific component, there will be a finite and measurable impedance which may be regarded as the high impedance drain.  He also alleges that the high impedance drain does not contribute to the working of the device.  He claims that a device proposed by T E Broadbent in 1960 is the same as Gumley's device.  The evidence-in-reply also includes a statutory declaration by Professor Stokes stating that he believes the Gumley device is no improvement over the prior art.

In summary, Mr Kildea said the Invernizzi and Gumley devices are the same, but if Gumley had made any improvement, he should have given it to E F International under the licensing agreement.

SUBMISSIONS FOR THE APPLICANT

The applicant was represented by Mr J Christiansen.

Mr Christiansen addressed the grounds of opposition in two groups - firstly, prior publication, novelty, and section 40, and secondly, obtaining.

The prior art started with reference to radioactive terminals eg 465821.  Such terminals were never allowed to be used in Australia.  Radioactive source devices are completely active devices because the source creates permanent ionization about the rod.

The next stage of development was Australian patent 564606.  This device is active over long periods of time, ie several hours, while a storm is in the area.  During that time, it is continually producing arcing.

Mr Christiansen firstly considered obviousness.  Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253, sets down certain criteria for establishing obviousness. There is no person skilled in the art giving evidence of common general knowledge. The only expert statement provided by the opponent comes from Professor Baldo whose qualifications are unstated, who was not in Australia at the priority date, or aware of the state-of-the-art in Australia on that date.

Mr Christiansen noted that the opponent made reference to a `Broadbent switch'.  However, there is no evidence of it being known or available in Australia.  Even so, Mr Christiansen said that the Broadbent switch is not relevant since it is a device for simulating lightning in a high voltage laboratory.  It is in effect the opposite of a lightning protection device.

In reply to the allegation of prior publication, Mr Christiansen said that the claims had features which are not present in the prior art.  All claims define a high impedance drain.  The claims also partially `define by result' and none of the description on how the device works is present or suggested in the prior document.

Mr Christiansen then sought to clarify some terms which were queried by the opponent.  With regard to the definition of the high impedance drain, the evidence-in-answer shows that persons skilled in the art in Australia (Mackerras, Matthews, Tompson) were able to understand the term (and the specification in general).  The term `particular atmospheric conditions' is defined by the words following it in the claim, ie `when the approach of a lightning down leader creates an electric field in the vicinity of the device'.

The subject invention is passive.  It only operates in the presence of a lightning down leader.  This device operates differently from the prior art.  The prior art (564606) operates continuously during a storm producing upward leaders whether or not a down leader is present.  The subject device is activated only by a down leader and is therefore fundamentally different in operation.

In summary, Mr Christiansen said that Australian patent 564606 does not anticipate the subject invention because:

a thin rod cannot be considered a surface element;

an insulating support cannot be considered a high impedance drain;

the high impedance drain is an important difference; and

the definition by result is not addressed at all by the prior art.

Mr Christiansen made further comment about the high impedance drain and the alleged lack of clarity with respect to the reference to C2 in the specification.  He explained that this figure was schematic and associated only with a discussion of the theory.

Mr Christiansen then commented on the declaration by Professor Stokes.  He said that Professor Stokes gave no detail or evidence to support the opinions he gave when comparing the devices in his declaration.

Mr Christiansen then went on to the second part of his submission addressing the issue of obtaining.  There are two possibilities for obtaining.  These are:

1.The subject matter was derived from the opponent by the provision of know-how (ie J R Gumley was not the inventor); or

2.Mr Gumley was the inventor but the rights to the invention belongs to E F Australasia and pass to E F International by the licensing agreement.

With respect to the first possibility, no evidence has been presented that anyone other than Mr Gumley was in possession of the subject invention.  There is no evidence of any specific know-how related to the subject invention being transferred.

With respect to the second possibility, Mr Christiansen discussed the history of E F Australasia.  He said that E F Australasia did not deal solely in E F International products.  A business agreement was made with E F International after an approach from Mr Invernizzi because of the applicant's pre-existing activity and knowledge in the field.  The applicant was only ever a part time director.  But anyhow the managing director is not necessarily responsible for promoting a particular product.  The applicant contends that he made this invention because of his own expertise in lightning protection and not in the role of managing director of E F Australasia.

Mr Christiansen referred to Gabriel and Hope v Alfred Hospital (1979) 49 AOJP 1887 which stated that section 34 of the Patents Act 1952 gives the actual inventor unfettered rights to apply for a patent.

In the present opposition, the alleged obtaining requires a tortuous path from the opponent to the applicant.  An important link in the chain is the licence agreement between E F International and E F Australasia.  Article 15 of that agreement states that Swiss law will be applicable to this agreement.  Therefore, this Australian hearing cannot arbitrate on this agreement.

In any event, there has been no establishment of any flow of rights between the applicant and E F Australasia.  The applicant's employment history at the time is contrary to E F Australasia having exclusive rights and at no stage did he have a contract of employment.  Mr Christiansen further argued that the agreement only applied to the EF-LCT.  Since the Gumley device is not an improvement of the EF-LCT, it is not included in the agreement.

Mr Christiansen referred to EPM Concrete Pty Ltd v Space Cell Systems (Aust) Pty Ltd (1979) 49 AOJP 2018 and Massey v Noack (1988) 11 IPR 632, which set out the requirements for establishing obtaining. The opponent must show:

what the invention is that has been obtained;

who owned the invention when the obtaining occurred;

the claim includes within its ambit the obtained invention; and

the applicant actually obtained the invention from the opponent.

The burden of proof rests heavily on the opponent.  In the present case, the opponent has failed to prove these points.

DECISION

The `high impedance drain' and the `high impedance static drain'

The meanings of the terms `high impedance drain' and `high impedance static drain' are material to most of the grounds of opposition.

The consistory statements and the independent claims recite a `high impedance drain'.  In contrast, the detailed descriptions of the preferred embodiments variously describe a `high impedance static drain', a `high impedance network', a `high impedance' and a `static drain arrangement'.  Below I quote the relevant parts of the specification in detail.

Each of the consistory statements on pages 3 and 3a of the specification refer to `a high impedance drain' connected between various conducting elements.  Different passages from the descriptions of the preferred embodiments are as follows:

`[Page 5]  Figure 1 shows one embodiment 10 to the lightning attracting device of this invention. ...  A high impedance static drain 20 is connected between element 14 and rod 12.

In Figure 2, the embodiment 22 of the lightning attracting device ...  There is a high impedance static drain 30 connected between element 26 and rod 24.

[Pages 6/7]  With the present invention, in the presence of high electric field strengths, without dynamic lightning producing circumstances, the device remains passive as stated, the surface 14 or 26 is insulated from its support rod 12 or 24 but connected to it by a high impedance network 20 or 30.  Under normal static electric field conditions, both surface and rod are effectively grounded.  The shape of the whole assembly precludes the generation of corona discharges which can lead to formation of a space charge. ...

On the approach of a lightning down leader, however, the device accordingly responds dynamically by causing electric field intensification and generating electric arcing to form plasma at the top of the conductive surface element.  The plasma and the associated electric field effect will create ideal conditions for establishment of a streamer, which then converts to an upward leader which intercepts the down leader.  ...

Figure 4 shows diagrammatically the two effective capacitors C1 and C2 which exist, between the surface 14 and the rod 12, and between the surface 14 and the down leader 34, when the down leader approaches, conveying a charge of, typically, 0.5 to 20 coulombs at 105 ms-1.

Since a high impedance 20 exists between rod 12 and surface element 14, the element will rise in voltage.  The high impedance static drain 20 restricts fast moving discharge currents. ...

[Page 9]  In ... Figure 7 ... A static drain arrangement 50 is provided, similar to the high impedance static drain 30 of Figure 2. ...'  [Emphasis added.]

The evidence contains various observations which are material to the meanings of these terms.  Paragraph 12 of Mr Invernizzi's declaration of 15 June 1989 says:

`The inclusion of "a high impedance drain" in claim 1 of the specification in suit does not add novelty to the claim as capacitors are well known for this purpose.'.

Mr Matthew's statement which is exhibit JRG 10 says:

`The Invernizzi device ... is intended to operate in a static electric field of strength sufficient to create corona at the collector arms.

The Gumley device on the other hand is intended to be passive in a static electric field, its spheriod [sic] shape reducing the electric field enhancement normally associated with a Franklin Rod.  Furthermore, a high impedance static drain is provided to pass naturally collected ions to ground.  In such a static field, the outer sphere remains at ground potential, so that no discharge take [sic] place.'.

Dr Mackerras's statement of 30 October says:

`The device described in [Mr Invernizzi's patent] is intended to respond to the presence of an electrically charged thundercloud by causing corona current to be emitted from the sharp points (8, 9, 10), resulting in a potential difference between 12 and 2, with resultant sparking between these points.  This is intended to occur in a quasi-continuous manner while the charged cloud is nearby.

In contrast, the device described in [the present application] is intended to be capacitively coupled to the charge on the downward leader discharge, in such a manner that potential difference only exists between points 18 and 13 (Figure 1 ... ) when the electric field is increasing rapidly during the approach of a downward leader discharge.  Thus there is a significant difference in the intended modes of operation. ...

[The Gumley device] has a finite impedance (presumed to be an inductor with finite series resistance) between the insulated parts and the central conductor whereas [the Invernizzi device] has only insulation between the central conductor and the surrounding parts.  This is an important difference in the design and specification of the two devices, a difference that is ignored in Professor Baldo's report. ...  This is the main weakness in that report.  This difference in circuit arrangement corresponds to the difference in the intended modes of operation noted above.

Differences in external form

The two devices are distinctly different in external form in that the [Invernizzi device] has several sharply pointed electrodes at its extremities, whereas the [Gumley device] presents a rounded, more-or-less spherical external surface.

I am assuming here that the principal embodiment of the [Gumley device] is that shown in Figure 1.

Difference in effectiveness

The two devices may differ in effectiveness in that evidence has been published indicating that blunt air terminations perform better than pointed ones.  Evidence from high-voltage laboratory tests has been published that large spherical air termination electrodes perform better than rod-type electrodes.  Thus the [Gumley device] may possibly perform better than the [Invernizzi device].

Conclusion

My own views on this class of air termination device are well known and have been published, and presented at conferences.  Nevertheless, irrespective of the merits (or lack of merit) of the two devices, I find that there are distinct differences between the two devices, as described above.

I also find that Prof. Baldo's report overlooks an important difference between the two devices, in that one device has an finite impedance between the central conductor and the outer parts, and the other device does not.'

Exhibit CGI 8 is a further statement by Professor Baldo, dated 10 January 1990.  Among other things, Professor Baldo says:

` ... the description made for the Dynasphere [ie the Gumley device] holds perfectly for EF Terminal [ie the Invernizzi device].  The identification of the supporting resin structure of EF device with a high impedance element is correct, according to this description, for two reasons.

Firstly because in order to have a finite impedance between two electrodes it is certainly not necessary to insert between them a "specific" component.  Mr. Gumley, at point 28.7 Para 13, says "an insulator should have infinite impedance while a high impedance is measurable".  Mr. Mackerras, in exhibit JRG 14, states that in my report I overlooked "an important difference between the two devices, in that one device has a finite impedance between the central conductor and the outer parts, and the other device does not."  I completely disagree with these statements.  According to Mr. Gumley "an insulator should have infinite impedance" but, in fact, this is not true.  It has generally a quite high resistance, never infinite and always measurable, whereas its impedance, associated with the capacitance between the two electrodes, depends on frequency and its value can be quite low even at frequencies not very high.  This value, however, can be defined as low or high only according with the function it has in the circuit.

Secondly because in the dynasphere proposed by Mr. Gumley the introduction of this specific component is completely unimportant.  The proposed dynasphere, in a time varying electric field, works quite well even if the so called "high impedence" element is removed.  This can be theoretically demonstated [sic] and it can be easily observed experimentally.  A system like dynasphere has been proposed in 1960 by T. E. Broadbent ... and used as triggered gap in high voltage impulse generators during the firing phase.  The resistance between the two main electrodes, foreseen in Broadbent's device, which works quite well even without it, has a specific function in an impulse generator whereas it is unimportant in this application.  By the way, Mr. P. Thomson, in his Declaration, refers that in a fast time varying electric field also E.F. terminal was observed to arc, due to capacitive coupling.'

Mr J R Gumley's declaration of 9 April 1991 addresses Professor Baldo's statement which is exhibit CGI/8.  Mr Gumley says:

`In paragraph 9 a letter from Prof Baldo is cited and submitted as Exhibit CGI/8.  In this Exhibit, clever use is made of the word "impedance" but is mistaken in the context of the invention.  Now shown to me is Exhibit JRG/9 which comprises telex correspondence, and which shows that the writer detected that the EFI product would malfunction if a D.C. drain existed due to moisture.

Now shown to me is Exhibit JRG/10 which are telex responses in which Mr Invernizzi confirms the problem, and describes how he placed a teflon liner around the central finial to eliminate any D.C. drain.  The Exhibit clearly states that the purpose fo the teflon is to make it "perfectly insulated even in strong rain". ...

Thus, the EFI device fails to operate if a D.C. drain exists, whereas the "Gumley" device deliberately creates a static drain to prevent continuous pre-leader discharges.  [Emphasis in original]

Where Prof Baldo misunderstands the operation of the device of Australian patent application serial no. 580698 lies in his perception that the high impedance static drain is capacitive in nature.  It is not.  It is inductive.  In the presence of a rapidly changing electric field on the approach of a lightning down leader, only an inductive format for the drain offers the necessary high impedance.

The voltage division afforded by capacitors C1 and C2 in Fig 4 of the Patent application will not develop adequate voltage levels if C2 has excessive capacitance or, if a low impedance shunt path allows ready passage of displacement currents on the approach of the downleader.  The embodiment of the invention clearly states that the purpose of the drain is two fold:-

a.To pass any collected atmospheric ions to ground and maintain the sphere at ground potential in the relatively steady D.C fields which exist prior to a downleader commencing its descent.  The spherical geometric shape minimises collection of ions which is opposite in objective to that of prior art.

and,

b.To dimension the high impedance drain in a manner which will restrict fast discharge currents which occur under dynamic conditions.  This will then allow the sphere to rise to the arc-over voltage.  The triggering arc occurs with the minimum predischarge ionisation.'

I think it is clear that the `high impedance drain', the `high impedance static drain', the `high impedance network', the `high impedance' and the `static drain arrangement' which are referred to in various parts of the description are something separate from, and in addition to, the insulating material which is between the two conducting elements of the invention.  For example:

the passage which I quote above from pages 6/7 says that `the surface 14 or 26 is insulated from its support rod 12 or 24 but connected to it by a high impedance network 20 or 30'; and

figures 1 and 2 of the drawings clearly show that the elements 20 and 30 are quite separate from, and in addition to, the insulating supports 16 and 28.  [Emphasis added.]

I also think it is clear that the capacitance C2 which is shown in figure 4 is quite separate from the element which is variously referred to as the `high impedance drain', etcetera.

First, page 7 of the description says that:

`Figure 4 shows diagrammatically the two effective capacitors C1 and C2 which exist, between the surface 14 and the rod 12, and between the surface 14 and the down leader 34, when the down leader approaches .... '

I think that it is clear from the context that capacitor C2 represents the coupling capacitance which naturally exists between two adjacent conductors, and not a discrete circuit element.

Secondly, I think it is also clear that a capacitance could not be a `static drain' or a `static drain arrangement'.  The whole thrust of the description is that, normally, the conducting elements of the structure do not carry a charge.  For example, page 7 says that

`Under normal static electric field conditions, both surface and rod are effectively grounded.'

Assuming that capacitor C2 was the `static drain' or `static drain arrangement', then it would work to ensure that the outer conducting element of the invention did carry a charge in the normal static electric field associated with thunder clouds.  This result is inconsistent with the description of the invention as a whole, so it must be wrong.  In addition, the `static drain' and `static drain arrangement' of various parts of the description clearly work in the same manner as do the `high impedance network' and the `high impedance' of other parts of the description.  It thus follows that the capacitance C2 similarly could not provide this `high impedance' or `high impedance network'.

In summary, the context of the description forces me to conclude that this element which is referred to by varying terms in the descriptions of the preferred embodiments:

is not capacitive in nature;

nor is it merely any leakage resistance provided by the insulating supports which separate the conductive elements of the invention.

I appreciate that these conclusions are contrary to the expert evidence from Professor Baldo.  However, I believe that Professor Baldo has tended to interpret terms in the specification in isolation from the description as a whole.  I believe that the conclusions in the expert evidence from Dr Mackerras are a more accurate interpretation of the specification as a whole.  Dr Mackerras, in a passage which I have previously quoted, says:

`[The Gumley device] has a finite impedance (presumed to be an inductor with finite series resistance) between the insulated parts and the central conductor whereas [the Invernizzi device] has only insulation between the central conductor and the surrounding parts.  This is an important difference in the design and specification of the two devices ... '

However the independent claims recite a `high impedance drain'; whereas the specification recites a `high impedance static drain', or a `high impedance', or a `static drain arrangement'.  I have to decide whether this disconformity of terminology results in any `lack of clarity' or `lack of fair basis' in the claims.

`Clarity' and `fair basis'

The terminology of `drain' which is used in the claims seems to me to be inapt to describe any `drain' other than a drain of static charge.  This raises the issue of whether or not, to the `skilled addressee' of the specification, the terms `high impedance drain' and `high impedance static drain' would be synonymous.  This is an issue which the opponent's evidence does not address.  I am caused to wonder whether, to a `skilled addressee', the terms `high impedance drain' and `high impedance static drain' would, or would not, be synonymous.  I am also caused to wonder what disconformity, if any, the `skilled addressee' would find between such terms as:

`high impedance network',
`high impedance',
`static drain arrangement', and
`high impedance static drain'.

The opponent's evidence does not address these issues.  There is one paragraph in Professor Baldo's second statement which correctly points out that an insulator cannot have infinite impedance, and that the impedance of a capacitance depends on frequency.  That paragraph does not help me in resolving these issues.  The state of the opponent's evidence is such that I cannot resolve these issues either way.  In patent opposition cases, for the opponent to succeed, the state of the evidence must be such that the opposition is proved on the balance of probabilities.  The `onus is on the opponent to show that the patent if granted would be clearly bad on the ground alleged.'  [See the authorities cited in paragraph 1.2 of the Patent Office Hearings Manual.]  The state of the evidence is such that the opponent has not met the onus of proof necessary to show that the term `high impedance drain', where it appears in the claims, is either

(a)lacking clarity; or

(b)not fairly based on the matter described in the specification.

The clarity of the expression `particular atmospheric conditions' which appears in the independent claims was also the subject of some criticism at the hearing.  I agree with Mr Christiansen's submission that the meaning of this term is defined by the words following it in the claim, ie `when the approach of a lightning down leader creates an electric field in the vicinity of the device'.

Prior publication, novelty and obviousness

The opposition under these grounds was based primarily on the disclosure in Mr Invernizzi's patent 564606.  There are some differences between that patent and the present application.  The main functional difference between 564606 and the present application is in the relation between two conducting elements.  Patent 564606 discloses an assembly in which conducting elements are separated by `a coaxial insulator'.  In the present application, the conducting elements, in addition to being separated by insulating supports, are connected by the `high impedance drain'.  I have already decided (above) that this `high impedance drain' is not merely any leakage resistance provided by the insulating supports which separate the conductive elements of the invention.  It follows that the claims of the present application are not prior published by the disclosure in patent 564606.

I also find that the claims of the present application do not lack novelty in the light of the disclosure in patent 564606.  The weight of the independent expert evidence is to the effect that the inventions in 564606 and the present application will work differently.

In paragraph 12 of his declaration of 15 June 1989, Mr Invernizzi says:

`The inclusion of a "high impedance drain" in claim 1 of the specification in suit does not add novelty to the claim as capacitors are well known for this purpose'.  [Emphasis added.]

However, I have already decided (above) that the `high impedance drain' of the claims is not capacitive in nature.

Professor D T Nguyen, in a statement dated 12 October 1989, says that:

In Mr Invernizzi's device, the function of the conductive part (6) with its sharp points (8), (9), (10) and (12) is to clear out the local atmospheric potential in the vicinity of the lightning rod (1) by means of momentary discharging arcs (dynamic) between (12) and the sharp rod tip (2).

In Mr Gumley's device, the function of the spherical conductive part (14) with the high impedance static drain (20) is the same as above but by means of a continuous drain of charge (static) through (20).  [Emphasis in original.]

Mr Matthews, in a statement dated 20 October 1989, says that:

`I find that the claims concerning two devices differ in basic principles.  The Invernizzi device is a modified earthed rod with outrigger collector arms insulated from the rod and which are designed to collect atmospheric ions and discharge the resulting electric charge at points near the earthed finial.  The device is intended to operate in a static electric field of strength sufficient to create corona at the collector arms.

The Gumley device on the other hand is intended to be passive in a static electric field, its spheriod shape reducing the electric field enhancement normally associated with a Franklin Rod.  Furthermore, a high impedance static drain is provided to pass naturally collected ions to ground.  In such a static field, the outer sphere remains at ground potential so that no discharge take place.'  [My emphasis.]

In his second statement, dated 10 January 1990, Professor Baldo says:

` ... in the dynasphere proposed by Mr. Gumley the introduction of this specific element [ie, the high impedance drain] is completely unimportant.  The proposed dynasphere, in a time varying electric field, works quite well even if the so called "high impedence" element is removed.  This can be theoretically demonstated [sic] and it can be easily observed experimentally.  A system like dynasphere has been proposed in 1960 by T. E. Broadbent ... and used as a triggered gap in high voltage impulse generators during the firing phase.  The resistance between the two main electrodes, foreseen in Broadbent's device, which works quite well even without it, has a specific function in an impulse generator whereas it is unimportant in the application.'

Professor Baldo's statement is a little ambiguous.  On the one hand, he could be saying that, in a time varying electric field, the `dynasphere' works quite well even if the "high impedance" element is removed.  On the other hand, he could be saying that the merit of the Gumley device and the Invernizzi device is the same in both static electric fields and time varying electric fields.  Whichever interpretation I apply, this statement is not helpful in determining the issue of novelty.  To oversimplify the issue to some extent, the objection of lack of novelty requires an investigation of whether the Gumley device works differently from the Invernizzi device, rather than an investigation of whether it is better than the Invernizzi device.

In a declaration dated 1 February 1990, Professor Stokes says, among other things:

`I am of the opinion that the device claimed in Australian Patent Application No. 580698, the Gumley device, provides no improvement over the prior art lightning conductors, such as a Franklin rod.  I note that Mr Mackerras, in exhibit JRG14, in his conclusions refuses to comment on the merit of the Gumley device.'

Again, this evidence goes to the relative efficacy of the Gumley device, not to the issue of whether it operates differently from the Invernizzi device.  In this paragraph which I have quoted from Professor Stokes' declaration, he refers to Dr Mackerras's statement in exhibit JRG14.  This is the statement of 30 October, which I have already quoted extensively.  It is the statement in which Dr Mackerras concludes that, primarily because of the `high impedance drain', the Gumley and Invernizzi devices will operate differently.

In summary, the weight of the expert evidence is to the effect that because of the `high impedance drain' which is included in the claims of the application, the present invention should work differently from the Invernizzi device.  Thus I cannot find that the `high impedance drain' makes `no substantial contribution to the working of the thing', and I cannot find that the invention as claimed lacks novelty.  [See Griffin v Isaacs, (1942) 12 AOJP 739.]

The evidence does not establish that the invention as claimed is obvious.  The evidence most material to the objection of obviousness is in Professor Baldo's statement of 10 January 1990, where he refers to the `Broadbent switch'.  I have previously quoted that evidence in this decision.  I agree with Mr Christiansen's submissions in relation to the `Broadbent switch'.  He submitted that there is no evidence of it being known or available in Australia.  Because of this, I cannot take the `Broadbent switch' into account in deciding whether or not the present claims are anticipated.  Even if there had been evidence showing that the Broadbent switch was known in Australia, there is no evidence to show that it would be obvious to incorporate features of the Broadbent switch into a lightning conductor.

Obtaining

I completely agree with Mr Christiansen's submissions, summarised earlier in this decision, on the issue of obtaining.

The opponent has given no evidence of or even suggested that anyone other than Mr Gumley invented the present device.  Therefore, this ground relies on the rights to the invention having been devolved from Mr Gumley to E F International.  The opponent relied heavily on a licensing agreement between E F International and E F Australasia to claim rights to the invention.  Without a corresponding transferral of rights from Mr Gumley to E F Australasia, the validity of this licensing agreement is of only academic interest.

The opponent argued that Mr Gumley's position of managing director obliged him to pass on rights to any invention to E F Australasia.  No evidence was given of any contract assigning invention rights was given.  The decision in Gabriel and Hope v Alfred Hospital (1979) 49 AOJP 1887 supports the actual inventor having an unfettered right to apply for a patent in the absence of a specific assignment.

Accordingly, the ground of obtaining is unproven.

I find that the opposition fails on all grounds, and that a standard patent should be granted.

Costs

I award costs, including the costs of the application for special leave to adduce further evidence, in favour of the applicant.

Allen Evans
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant:  Carter Smith & Beadle, Melbourne

Patent attorneys for the opponent:        Davies Collison Cave, Sydney