John Willian Ryan v Ralph McKay Ltd

[1985] APO 16

In the Matter of the Patents Act 1952

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In the Matter of Application No. 528237 for Letters Patent by JOHN WILLIAN RYAN

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In the Matter of Opposition thereto under Section 59 by RALPH McKAY LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application No. 528237 was lodged on 7 August, 1978 by John William Ryan under the provisions of sub‑section 51(1) of the Act in respect of an invention disclosed in the complete specification of application No. 38716/78, thus acquiring a priority of 9 August, 1977.  Advertisement of acceptance appeared in the Official Journal of 21 April, 1983 and notice of opposition was lodged by Ralph McKay Ltd. on 21 July, 1983.
         The matter was heard in Canberra on 6 May, 1985, the applicant being represented by Mr. J. Forster, patent attorney of Griffith, Hassel & Frazer, Sydney, and the opponent being represented by Dr. J.McL. Emmerson of Counsel, instructed by Mr. D.B. Mischlewski, patent attorney, of Edwd. Waters & Sons, Melbourne.
         Although the grounds of opposition stated on the notice are those specified in paragraphs (c) to (i) of sub‑section 59(1), the submissions made at the hearing were limited to the grounds specified in paragraphs (e), (g), (h) and (i); i.e. prior publication, obviousness, lack of novelty and non‑
compliance with section 40.

Preliminary Submissions
         Mr. Forster raised two preliminary matters prior to the commencement of the hearing proper.  Firstly, he brought to my attention that, on 3 May, 1985 the applicant had lodged, at the Sydney sub‑office, a request to amend the complete specification under section 77.  As the request had not yet been placed on the case file, Mr. Forster supplied me with a copy of the proposed amendments, which affected only claim 1.  He requested that the hearing be allowed to proceed on the basis of the proposed claim 1.  After a brief consideration of the request, I formed the opinion that the proposed amendments could not affect any findings which I might make, and I directed that the hearing would proceed on the basis of the complete specification in the form in which it was accepted.  Secondly, Mr. Forster submitted that a portion of the opponent's evidence‑in‑reply, in particular, the evidence in the declaration of William Meredith Johnson, contained new matter.  He tendered a schedule of the new matter for consideration and applied to have that matter deleted from the evidence‑in‑reply.  In response, Dr. Emmerson rebutted the points raised in relation to the matter listed in the schedule and drew my attention to the requirements of the regulations regarding evidence‑in‑reply.
         I agree with Dr. Emmerson.  The bulk of the matter to which Mr. Forster objected is concerned with ploughing tests done with points constructed in accordance with the specification in suit and with a selection of prior art points.  It seems to me that this matter is fairly presented in response to claims made in the evidence‑in‑answer, albeit not appearing particularly relevant to the grounds of opposition.
The Specification
         The specification commences by stating that the invention "relates to plowing apparatus and more particularly to digging points and their method of attachment to plow shanks".  It then lists certain "disadvantages" in relation to conventional apparatus used for ploughing as follows:

"Conventional apparatus used for plowing have several major disadvantages in that they are usually designed to make several passes of the same piece of ground and/or are designed to invert the soil before the seed and/or fertiliser is deposited below the soil surface.  This known method results in breaking up of the soil structure which is detrimental to new growth resulting from germination of the newly planted seed.  It is also a disadvantage that the worked soil loses it's moisture.

A further disadvantage of conventional plowing apparatus is that the shank, the clamp attaching the shank to the plow tool bar, and the digging point are not all formed separately in that frequently the shank is formed integral with the clamp while the digging points, the parts subjected to greatest wear are not easily removed or replaced.  Accordingly known apparatus are expensive by way of replacement parts and tend to be tedious and time consuming when parts have to be replaced."

Accordingly, the stated object of the invention is:

"to ameliorate the above disadvantages by providing an improved digging point which in the described embodiments assists plant germination and growth whilst making best use of fertilisers applied to the soil during seeding."

The specification continues by describing four different embodiments of the invention and ends with twenty‑six claims defining the invention, two of which are independent claims, namely claims 1 and 17 which read as follows:

"1.A digging point for removable attachment to a generally vertically extending plow shank so that in use the digging point is drawn through soil to cultivate the soil, said digging point comprising an adaptor and a digging blade attached thereto, said blade in use geing generally horizontally oriented and having an upper earth working surfact to which said adaptor is attached so that said surface is located below said adaptor, said surface being arcuate in transverse cross‑

section so as to have downward sloping sides, said adaptor having a forwardly tapering first recess which receives and generally encompasses the lower extremeity of the shank.

17.Plowing apparatus comprising, in combination an elongated plow shank which in use, extends generally vertically and a plow digging point removably attached to the lower extremity of said shank so as to be drawn through soil thereby to cultivate the soil, said digging point including a digging blade and an adaptor, said blade having an upper earth working surface arcuate in transverse cross section so as to be generally convexed with downwardly sloping sides, said adaptor engaging said blade to releasably secure said blade to said shank and having a forwardly tapering recess which receives and generally encompasses said lower extremity of said shank, said adaptor and said blade having co‑operating means for releasably securing said adaptor to said upper earth working surface of said blade, said adaptor and said co‑operating means being configured so that said upper earth working surface is rear‑

wardly upwardly inclined by from 5o to 15o with respect to the horizontal, said blade being located below said lower extremity of said shank to thereby enable said blade to present a low forward facing rounded profile."

Section 40
         Dr. Emmerson submitted that the claims of the specification were unclear, and not fairly based.  In this respect he referred to the definition of the upper surface of the digging blade (claims 1 and 17) which is required to be arcuate in transverse cross‑section so as to have downwardly sloping sides.  He pointed out that only the embodiment depicted in Figures 12 and 13 would satisfy this definition; the other embodiments of the digging blade comprised flat surface portions in transverse cross‑section.
         In rebuttal, Mr. Forster contended that although all the embodiments do not exhibit an arcuate surface, it is not a requirement of section 40 that the claims have to be fairly based on all the embodiments.  He submitted that in any case Figures 5 and 7 show a digging blade with a surface having chamfers and that this configuration falls within the broad definition of arcuate.
         Regarding Mr. Forster's second point, the Shorter Oxford English Dictionary gives the meaning of "arcuate" as "curved like a bow", "arc‑shaped" and "arched".  What the figures 5 and 7 show is a blade the upper surface of which in transverse cross‑section appears as three straight lines, with the outside lines being depressed a few degrees out of alignment with the centre line.  Clearly, such an appearance does not fall within the dictionary definition.  The problem with the specification then is that the claims define only the embodiment of Figures 12 and 13.  It could not really be said that as a consequence these claims are not fairly based: nor is the term "arcuate" in the context of the claims unclear.  However, the specification does represent the apparatus of the other figures as being embodiments of the invention.  Consequently, the specification does not fully describe the invention, or, expressed another way, the specification is ambiguous.
Anticipation
         The grounds under this heading are based on two prior art points known respectively as the "Marlow" and the "Yeomans" points.  The Marlow point was first published in Australian Patent Specification 106027 which appears as exhibit JT1 of the statutory declaration of John Baden Thomas of the evidence‑
in‑support.  The Yeomans point is the subject of Design No. 63366 which was published on 8 October, 1973.  In addition, there is evidence of usage of both points (to the extent that at least the Marlow point has become part of common general knowledge) and publication thereof in agricultural literature before the priority date of the present specification.  None of this was contested.  In my view the evidence shows that the Yeomans point lacks a feature of claim 1 which is clearly essential thereto.  That feature is:

"... said surface (i.e. the upper earth working surface) being arcuate in transverse cross‑section so as to have downward sloping sides ..."

The Yeomans point has a substantially flat upper surface apart from a central fin which merges into a socket for receiving a tine.  Consequently the Yeomans point does not anticipate claim 1 (or any of the other claims) and I will make no further reference to it.  The Marlow point is typically winged and is arcuate in transverse cross‑section, so that the upper surface thereof is clearly arcuate.  It has an adaptor in the form of a tapered socket member extending rearwardly from the working surfaces of the point for receiving a complementary shaped tine for mounting thereon.  The socket is longitudinally split, the edges adjacent the split being inturned.  The point may be fixed to the tine in a preferred way by the use of a bolt to affix a wedge‑shaped member complementary to the socket shape and of a width and depth to cause its lower edges to engage the inturned edges of the socket.  The specification represents this way as preferred as it does not require the tine itself to conform in shape to the socket, and consequently, this enables the point to be fitted to existing as well as new tines; also (according to the specification) it enables a very exact fit to be obtained.
         Clearly, the Marlow point has all the structural features defined in claim 1 of the Ryan specification.  However, Mr. Forster has submitted that there is no disclosure in the Marlow specification of the feature:

"said blade in use being generally horizontally oriented and having an upper earth working surfacr to which said adaptor is attached so that said surface is located below said adaptor."

He also pointed out that the evidence showed that the Marlow point was not, and in fact, could not properly be used in a generally horizontally oriented attitude as a consequence of the angle between its uppermost working surfaces and the centreline of its socket adaptor, and having regard to the normal orientation of a tine shank when in use, to which the point must be fixed.
         Dr. Emmerson countered this submission by expressing the view that the feature in question was actually a method step and not a constructional characteristic of the point being defined.  In any case, he said, the Marlow point clearly, in use, has its working surface below the adaptor ‑ it would be an unusual point if it did not, as this would mean that the lower end of the tine to which the point was attached would be below the digging level of the point.  Further, he contended that the Marlow point in use, would have its blade "generally horizontally oriented", at least in the terms of claim 1.  While I do not entirely agree with this latter contention, I do agree with the rest of Dr. Emmerson's view on this aspect of claim 1.  In my opinion, the requirement that, in use the blade is generally horizontally oriented has no effect in the present circumstances.  Certainly, if the alleged anticipatory point was so constructed that it could not possibly be used with its blade generally horizontally oriented, there could be no anticipation.  This is obviously not so with reference to the Marlow point, and Mr. Forster's assertion that it would not normally be used in such an orientation is of no relevance.  I find therefore that claim 1 is prior published by Australian Patent Specification 106027.  I find also that claim 1 is prior published in the agricultural literature to which I have previously referred, and by prior use of the Marlow point.  Claims 2 to 16 are appended directly or indirectly to claim 1.  Some of these claims add little or nothing of construction to claim 1, having regard to the Marlow point as an anticipation.  Thus claim 3 recites that the blade is fixed to the adaptor (as it is in the Marlow point) and claims 15 and 16 are concerned with the angle of the blade, in use, to the horizontal, a matter upon which I commented in relation to claim 1.  However, others of these claims introduce concepts which require further consideration. The first is that the adaptor includes clip means enabling the point to be releasably secured to a tyne or plough shank ‑ see for example claim 2.  However, in my view, the Marlow point also anticipates this claim.  The wedge shaped member used in what the Marlow specification describes as the preferred method of attaching the point to the tyne constitutes "clip means", in my opinion.  In fact, some of the literature exhibited to the evidence‑in‑support of the opposition shows the Marlow point to have been advertised as the "Marlow Share and Clip", the latter term being used to describe the wedge shaped member.
         The second of the two concepts involves a construction in which the blade and the adaptor are separate integers releasably secured together ‑ see for example claim 4, which defines this arrangement in just such few terms.  The only evidence relating to this is a statement by John Baden Thomas in paragraph 13 of his declaration dated 20 December, 1983.  Mr. Thomas is a graduate in Mechanical Engineering from the University of Adelaide, he is a Member of the Institute of Engineers, Australia, and he has had 20 years engineering experience in Australia with the agricultural implement manufacturers, John Shearer Limited and Massey Ferguson (Aust.) Ltd.  He deposes to the effect that the choice of forming the blade to be detachable from the adaptor is one which was available to any designer of digging points prior to 1977; to his knowledge no such points were made because the disadvantages outweighed the advantages ‑ the advantages relating to the cost‑
saving for the replaceable part (i.e. the blade), the disadvantages relating to the weakening of the attachment of the blade to the adaptor, and of course, the increased manufacturing costs.  Even without Mr. Thomas' uncontradicted deposition, I would have difficulty seeing any novelty in claim 4, as it is a matter of common knowledge in many facets of engineering that machine parts may be integrally or sectionally constructed.  Having regard to Mr. Thomas' state‑
ments, I am in no doubt at all that claim 4 lacks novelty, and any invention in relation to this construction must reside in a particular manner of carrying it out.
         I note that the applicant for the patent, Mr. John William Ryan, has made it clear in his declaration of 19 February, 1984 (evidence‑in‑answer) that the primary invention is not the means of attachment of the adaptor to the blade nor the means of attaching the adaptor to the plough shank.  Consequently, I will not pursue the question of the novelty of these appended claims further.
         I turn now to a consideration of claim 17.  This claim is somewhat more limited than claim 1.  Thus it recites four features which are additional to those recited in the earlier claim:

(i)the claim is directed to the combination of an elongated plough shank and a point (claim 1 is directed to a point per se); the shank is said to extend "generally vertically in use";

(ii)the adaptor and the digging blade have co‑operating means for releasably securing the adaptor to the upper earth working surface of the blade;

(iii)the adaptor and the co‑operating means (see (ii) above) are configured so that the upper earth working surface of the blade is rearwardly upwardly inclined by from 5o to 15o to the horizontal; and

(iv)the blade being located below the lower extremity of the shank to enable the blade to present a low forward facing rounded profile.

Upon careful perusal of the above features it is clear that the only feature not disclosed by the Marlow specification (and by the associated agricultural literature) is that set out in item (ii) ‑ and this feature I have already dealt with in relation to claim 4.  The feature set out in item (iv) is clearly a characteristic of the Marlow disclosure, and I have made passing reference to it when dealing with Dr. Emmerson's submissions on claim 1.  As to the features set out in items (i) and (iii), it might be thought that irrespective of the angle of inclination of the plough shank in use, the combination of these two features specifies an angle between the axis of the shank and the upper blade surface, or between the latter and the axis of the "forwardly tapering recess (of the adaptor) which receives and generally encompasses said lower extremity of the shank".  This is not so.  Firstly, the form of the plough shank is not defined.  Usually, the shank would have a substantially straight portion, which in use would be "generally vertically" oriented.  (The opposed specification describes this portion as being at 75o to the horizontal).  The end of the shank upon which the point is fitted extends sharply forwardly of the shank.  Consequently, even if the orientation of the plough shank is specified as a limitation of the claim, unless its form is also defined the orientation of the working surface of a point relative thereto is not established.  Secondly, claim 17 suffers from the same problem as does claim 1 in this respect.  That is, the qualification of the orientation of the plough shank by reference to use does not restrict the combination defined to a specific construction except within broad limits.  In my view therefore claim 17 lacks novelty over the Marlow point for the same reasons as I have expressed with respect to claims 1 and 4. This lack of novelty is a problem obviously shared by some claims appended to claim 17, e.g. claim 25, which, insofar as it appends directly to claim 17 specifies the angle of the working surface of the blade as being at 8o to the horizontal.
Obviousness
         The determination of obviousness is a matter dependant upon the common general knowledge in the field of the invention.  (See the judgement of Aicken J. in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd. 144 CLR 253).
         To ascertain what was the common general knowledge, I must rely on the evidence adduced in this opposition.  The only evidence in this regard is to be found in the declaration of William Meredith Johnson, of the evidence‑in‑
support, in which he states at paragraph 5 that he estimates that, prior to August 1977, Ralph McKay Ltd. (the opponent) and its predecessor in business sold at least three million components of the type disclosed in patent 106027, i.e. Marlow points.  Further, exhibits WMJ1 and WMJ2 to Johnson's declaration are copies of extracts from early farm equipment catalogues advertising Marlow points.

         I am of the opinion that Marlow points were in fact common general knowledge prior to 1977 in the art of ploughing, however, I am not convinced that a non‑inventive worker in the field of ploughing, equipped with the Marlow point would have evolved the idea of using a Marlow point so that its upper working surface is at an angle of between 5o and 15o for deep tillage, as appears to be a requirement of the invention described.  This conclusion is reinforced by a consideration of paragraph 6 of Johnson in which he states that sweeps (of the Marlow type) can be used so that their working surfaces are at angles of about 5o‑15o to the horizontal, (my underlining) i.e. he does not declare that he is aware of them actually being used at these angles.  In addition, the declaration of John William Ryan in evidence‑in‑answer states, at paragraph 7, that in his experience in designing, manufacturing and using farm machinery, he has found that sweeps of the Marlow type are used at angles of approximately 40o.
         There is some evidence to show that the Yeomans points had been used prior to 1977 with the upper working surfaces at angles of 5o‑15o to the horizontal.  However in my view there is insufficient evidence on file to show that usage of these points in that fashion was common general knowledge.
         Overall, I do not think that the evidence‑in‑support of the opposition on obviousness adds anything to that in support of anticipation, and I will not consider it further except to point out that much of the evidence from both parties concerns the utility of the invention in relation to deep tillage and angle of ploughing surfaces to the horizontal and is of little or no relevance to the determination of the question of obviousness of the claims under consideration.
Conclusion
         I have found that the opposition succeeds on grounds under Section 40, prior publication and lack of novelty.  However, there is clearly patent‑
able subject matter disclosed in the specification; consequently I allow the applicant 60 days in which to propose amendments with a view to claiming that matter.  I award costs against the applicant.

(J.L. ROVETA)