Karl-Heinz Stasch v Dynamic Plastics Limited

[1994] APO 61

official notice

decision of a delegate of the commissioner of patents

Application        :  No.613837  in the name of Karl-Heinz Stasch

Title:  A Ventilation System

Action: Opposition under Section 59 of the Patents Act 1952 by Dynamic Plastics Pty Limited; an application to serve further evidence, filed at the hearing of the opposition

Decision:  Issued            .

Abstract:  Application to serve further evidence not granted. Opponent held to have locus standi despite going into liquidation after the hearing. Obtaining, paper anticipation, public prior use by the inventor and communication of the invention by the inventor to a member of the public not established. Nine-tenths of costs awarded against opponent.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 613837 by KARL-HEINZ STASCH, opposition thereto under section 59 of the Patents Act by DYNAMIC PLASTICS LIMITED and an application to serve further evidence.

background

Patent application 613837 was filed on 31 July 1990 by Karl-Heinz Stasch (the applicant) as application 60020/90, which was a complete after provisional application in respect of cognate provisional applications PJ 5500 and PJ 5501 filed on 31 July 1989.

Acceptance was advertised on 8 August 1992, and on 7 February 1992 a notice of opposition was filed by Dynamic Plastics Pty Limited (the opponent) after an extension of time (initially subject to an objection from the applicant, but subsequently withdrawn) was granted in which to do so.  A statement of grounds and particulars was served on 6 March 1992.  Service of the evidence in support was completed on 6 July 1992 after an extension of time of one month, service of the evidence in answer was completed after an extension of time of three months, and service of the evidence in reply took place on 6 April 1993.  The matter was set down for hearing in Sydney in the week of 13 October, 1993, but on 20 August 1993 the applicant filed an application to serve further evidence.  The opponent indicated that it had no objection to the applicant being permitted to serve further evidence, and permission was granted.  On 29 November 1993, the opponent served its evidence in reply to the further evidence.

The hearing was reset for 11 March 1994 in Sydney, and took place on that day and the following day.  The applicant was represented by Mr Chris O'Sullivan of Griffith Hack and Co., and the opponent was represented by Kerry Moore Chrysiliou of Chrysiliou Moore Chrysiliou.  At the commencement of the hearing the applicant applied to serve additional further evidence.  This decision is in respect of that matter as well as the substantive opposition.

On 28 June 1994 advice and evidence was received from the applicant that the opponent company had been placed in the hands of an Administrator.  On 26 July advice and evidence was received from the applicant that on 12 July the Administrator had been appointed as Liquidator of the opponent company.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is in substance determined in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952, but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991.

The statement of grounds and particulars gives three grounds of opposition: obtaining, prior publication and obviousness, that is, the grounds set down in paragraphs 1(a), 1(e) and 1(g) of section 59 of the Patents Act 1952.

the specification

The specification commences by stating that the present invention relates to ventilation systems including ventilation systems associated with fume cupboards.  While the specification goes on to say that the invention is not limited to its use in fume cupboards, and may also be applicable to enclosed spaces receiving conditioned air for maintaining predetermined conditions, the invention is described almost wholly in terms of its application to fume cupboards.

Fume cupboards are normally employed in enclosed spaces such as chemical laboratories.  According to the specification:

"A fume cupboard provides a partially enclosed work space for minimising the dispersion of fumes to protect operators, other personnel and the local room air.  This is generally achieved by extracting the fumes through associated exhaust ducting.  Furthermore, fume cupboards also include selectively movable sashes for providing access to the partially enclosed workplaces."

The specification continues:

"Strict and detailed specifications are set by the Standards Associations of most countries with respect to the minimum safe capture velocity or inflow velocity in the partially enclosed workplace which allows for sufficient removal of the fumes."

From the specification it would appear that a more efficacious operation of the fume cupboard results if, as well as achieving the minimum safe capture velocity, the inflow velocity is maintained as constant as possible for all operating conditions, such as the position of the sash and the presence or absence of an operator at the opening.  Therefore, there needs to be some means of controlling the airflow velocity which counteracts the effect of altered operating conditions.  The present invention addresses that problem of control.

It is explained in the specification that it is known in the prior art to utilize auxiliary passages to supply a varying external airflow to a main exhaust duct which extends from the fume cupboard.  The flow of air in the auxiliary passage dilutes the fumes in the main exhaust duct.  Furthermore, according to the specification, a number of arrangements for varying this auxiliary airflow are also known from the prior art, one approach being to control the flow in direct relationship with the position of the sash.  However, these arrangements do not take into account ambient conditions to which the fume cupboard is subjected.

The invention as described utilizes one or more velocity sensors which sense the air velocity within a fume cupboard compartment and the signal generated by the sensor or sensors controls damper means which in turn control the amount of air admitted via an auxiliary exhaust duct in order to maintain a predetermined air velocity within the compartment.

The specification concludes with twenty claims, two of which - claim 1 and claim 20 - are independent and are as follows:

"1.A fume cupboard including:

a housing defining both a work compartment and an opening for providing access to said compartment;

a[sic] exhaust duct extending from said compartment;

an extraction fan co-operable with said duct to extract air from said compartment;

a movable sash operable for closing predetermined portions of said opening;

at least one velocity sensor for providing a signal indicative of the air velocity in said compartment;

at least one auxiliary duct communicating with said exhaust duct between said compartment and said extraction fan for providing said exhaust duct with external air; and,

at least one damper means responsive to said signal for selectively admitting said external air into said exhaust duct to maintain a predetermined air velocity in said compartment."

"20.A ventilation system for a chamber having at least     one opening provided with a selectively operable closing means, ducting connected to supply or remove air from said chamber, fan means co-operable with said ducting to effect said removal or supply; at least one velocity sensor disposed to provide a signal indicative of air velocity within      said chamber; and at least one damper means        responsive to said signal to control the removal or supply of air and maintain a substantially constant  predetermined air velocity."

evidence

Evidence in support

The evidence in support consists of the following:

·a statutory declaration by Norman Hewitson, who is a director of the opponent company; this declaration details dealings between the opponent company and the applicant, and between the opponent and two other companies, Hamerest Pty Limited and Voltec, and comprises as exhibits a number of prior art documents contended by the opponent to be of relevance in this matter, items of correspondence between the parties and a copy of a confidentiality agreement between the parties.

·a statutory declaration by Ronald Edmond Lucas, whose company Nordsands Pty Limited is a competitor of both the opponent and the applicant; this declaration consists of evidence as to the state of the prior art in relation to the present invention, supported by several exhibited prior art documents.

·a statutory declaration by Jean Jacques Nicholls, who and whose company Hamerest Pty Limited are the subject of certain aspects of Mr Hewitson's declaration; this declaration confirms those aspects of Mr Hewitson's declaration, and is mainly of interest because of a copy of a drawing (henceforth onwards referred to as the "Hamerest sketch") based on another drawing that the opponent had given to Nicholls in 1988 while endeavouring to obtain a controller for a fume cupboard system it was proposing to manufacture.

·a statutory declaration by Anna Marie Chrysiliou, which mainly consists of two exhibits of prior art documents, these being extracts from Heating/Piping/Air Conditioning (February 1985 edition) and ASHRAE Journal (March 1988 edition).

Evidence in answer

The evidence in answer consists of two "statements" in writing by Mr Stasch. It should be mentioned at this point that at this stage of the opposition procedure (that is, when the evidence in answer was filed) Mr Stasch appears to have been without the aid of professional assistance - he only acquired the services of Mr O'Sullivan a matter of days before the hearing on this matter took place. Mr Stasch had been represented by another patent attorney from the time of lodging his application 60020/90, but appears to have dispensed with the services of that patent attorney on or about 27 July 1992.

The first statement consists of reply to much of the evidence in support, and gives Mr Stasch's version of events.  There are a number of "attachments" to this statement, some of these being originals or copies of documents already in evidence in the evidence in support.  There are also some new documents, consisting of correspondence from the opponent (to be) to the applicant and from the opponent's patent attorney to the applicant's patent attorney, as well as documents which Mr Stasch refers to as "selling documents", but I think may be more aptly described as a "flyers", and which originate from the opponent.

The second statement consists of discussion of attachments consisting of several photographs of a fume cupboard which were taken at a public exhibition in 1990 and a brochure produced by the opponent.

Evidence in reply

The evidence in reply consists of the following:

·a statutory declaration by Donald Kitchen, who is a director of the opponent company; this declaration confirms aspects of the Hewitson declaration, contradicts aspects of the Stasch statements and details dealings with the opponent; there are a number of exhibits to this declaration, consisting of correspondence between the applicant, the opponent and its patent attorney, and a draft agreement between the applicant and the opponent.

·statutory declarations by Ngaire Ann Pettit-Young and Kerry Moore Chrysiliou establishing the publication dates of certain documents.

Further evidence served 19 August 1993

This further evidence is by the applicant, and consists of the following;

·a written statement by Kevin H. Knowles detailing development of the present invention and dealings between the applicant and the opponent.

·a written statement by Krista Stasch, wife of the applicant, detailing development of the present invention and dealings between the applicant and the opponent.

·a statutory declaration by Andrew Schneller, to the effect that, when an employee of Honeywell Ltd, he supplied the applicant with a Honeywell Mass Airflow Sensor of the AMW series.  [In fact, I think that from what is stated in the description of the preferred embodiment in the present specification and from some subsequent evidence, "AMW" should read "AWM".]

·a statutory declaration by John Jeffrey Kennedy, who is the author of a document relating to fume cupboards (from henceforth onwards referred to as "the Kennedy report") which the opponent has cited as a prior publication.

·a statutory declaration by the witness to the signing of the  confidentiality agreement between the parties, confirming the circumstances of that signing.

Evidence in reply to further evidence of 19 August 1993

This evidence in reply consists of the following:

·a second statutory declaration by Norman Hewitson, replying to the statement of Karla Stasch and the declaration of John Jeffrey Kennedy.

·a second statutory declaration by Ronald Edmond Lucas, replying to the statement by Kevin H. Knowles and comprising some exhibits concerning a draft article by the applicant submitted for publication in the magazine "Laboratory News"; the article is about the applicant's fume cupboard and is alleged to be defamatory by solicitors for a company called McNeall Engineering Pty. Limited, who were apparently involved in the manufacture of fume cupboards, and Lucas.

·a second statutory declaration by Donald Kitchen, replying to the statements by Kevin H. Knowles and Krista Stasch; there is one exhibit to this declaration, which is a copy of an article by Knowles in "Laboratory News".

·a statutory declaration by Todd Lawrence, who is an employee of the opponent; this declaration details dealings between the opponent company and the applicant.

Further evidence served at the hearing

This further evidence is by the applicant, and consists of the following:

·a statutory declaration by Kevin H. Knowles, detailing dealings between the applicant and the opponent.

·a statutory declaration by Mr Stasch, concerning the development of the invention and detailing dealings between himself and the opponent; this declaration consists of twenty-five exhibits, Exhibits 1 to 9 being copies of some of the "attachments" in the evidence in answer, Exhibit 10 being a time-line of events from April 1989 to March 1991 constructed from the applicant's records, Exhibits 11,14,17 and 20 being  photographs of a fume cupboard in the applicant's possession between 13 July 1989 and 31 July 1989, Exhibit 23 being the installation instructions for the Honeywell AWM Mass Airflow Sensor (supra), Exhibit 24 being a copy of two pages of the applicant's visa, and the remaining exhibits consisting of various technical specifications, catalogues, dockets and invoices.

I will discuss the evidence in more detail, where appropriate, in the decision.

Submissions and Decision

Admissibility of the second written statement of the evidence in answer

The opponent served its evidence in support on 6 July 1992.  On 1 September 1992 a letter from the applicant was received by the Patent Office seeking information about the "next step in this process".  This information was provided.  On 1 October 1992 the applicant sought an extension of time to 6 January to serve his evidence in answer.  On 10 November the Office advised the applicant of deficiencies in the application for an extension of time, and gave the applicant 21 days in which to remedy these deficiencies.  The applicant served evidence in answer on 2 December 1992 (the "first statement").  The accompanying letter began:

"Please accept my response to the objection lodged by Dynamic Plastic P/L [sic] to the issue of a Patent on my application no 613837"

and concluded:

"I look forward to your decision on the validity of my application"

The clear inference from this was that the accompanying evidence comprised the whole of the applicant's evidence in answer.

On 14 December 1992 the Office wrote to the applicant acknowledging receipt of the evidence, and advising him that his application for an extension of time until 6 January 1993 to serve his evidence in answer had been granted.

On 22 December the opponent acknowledged receipt of the applicant's evidence of 2 December, and gave notice, in accordance with reg 5.8(4)(a), of its intention to file evidence in reply.  However, on 6 January 1993 the applicant filed more evidence in answer (his "second statement").  This drew the following response from the opponent in a letter received on 13 January 1993:

"While we do not concede that the further material qualified as part of the evidence in answer, we assume that you will treat the further material served on us on 6 January, 1993 as part of the evidence in answer but would appreciate your confirmation.  We also assume that we should reissue our notice in accordance with regulation 5.4(4)(a) [this should read 5.8(4)(a)] and we have done this in our acknowledgement of service as per the attachment."

The opponent was subsequently advised that its date for serving evidence in reply was to run from 6 January 1993.

At the hearing the opponent objected to the applicant's second statement being admitted as evidence, on the basis that when filing his first statement the applicant had indicated that that comprised all the evidence in answer.  However, the opponent also stated that it was prepared for the hearing to proceed on the basis that the second statement was admissible.  In view of this, I reserved my decision on the issue of the admissibility of the second statement, and the hearing proceeded on the basis that the whole of the evidence in answer was available for consideration.

The time limit for serving evidence in answer is set down in reg 5.8(2)(a):

"(2) Subject to subregulation (3), if an applicant intends to rely on evidence in answer to the evidence in support of the opposition, the applicant must:

(a) serve on the opponent a copy of any evidence in answer to the evidence in support of the opposition referred to in paragraph (1)(a) within three months after the end of the period prescribed in that paragraph".

Paragraph (1)(a) prescribes a period of three months after filing the statement of grounds and particulars for serving the evidence in support.

In the case at hand the applicant had sought and obtained an extension of three months to the period for serving his evidence in answer, giving him until 6 January 1993.

The time limit for serving evidence in reply is set down in 5.8(4)(a) and (b):

"(4) Subject to subregulation (5), if an opponent intends to rely on evidence in reply to the evidence referred to in paragraph (2)(a) or 3(a), the opponent must:

(a) within 1 month of being served by the applicant with a copy of:

(i) the evidence in reply; or

(ii) any notice of intention to file evidence in reply; and

(b) if the applicant has been served with a copy of a notice of intention to file evidence in reply, serve the applicant with a copy of the evidence within 3 months of being served with a copy of the evidence under paragraph (2)(a) or (3)(a)".

Clearly, the date on which service of the evidence in answer is completed is central to the timing constraints that will apply to the evidence in reply, and it is Office practice that where evidence in answer is filed, unless the evidence is clearly stated to be "part evidence", the parties will be advised that the next evidence stage applies.  However, this practice appears not to have been followed in the present case, and, indeed, the Office letter to the applicant acknowledging receipt of his first statement appears rather to create the impression that it would be permissible to file more evidence up until 6 January 1993.

Normally, it will be in the interest of the party serving evidence in answer to indicate when service of its evidence is complete, since this will "set the clock ticking" in relation to service of the evidence in reply. 

The opponent referred me to the decision in Micronair (aerial) Ltd v Waikerie Co-operative Producers Ltd. (1986) AIPC 90-325 as being relevant to the present matter. The facts are somewhat similar, in that in that case notification from the Office of an extension of time to serve evidence in support and two declarations accompanied by a covering letter stating that the evidence in support had concluded crossed in transit. [Note that under the regulations in force at that time, the period for serving evidence in answer was calculated from the date on which the evidence in support was served.] The opponent subsequently attempted to serve more evidence in support, but was prevented from doing so, and had to obtain special leave to adduce further evidence.

The facts of the present matter diverge from those in Micronair v Waikerie in that in that case the Commissioner had informed both parties that reg 56 [of the regulations to the Patents Act 1952], which set the clock ticking for evidence in answer, applied. As I have already observed, in the present case the letter acknowledging receipt of the applicant's evidence instead went on to say that the applicant had until 6 January 1993 to serve its evidence in answer.

As I have also already observed, for an applicant to indicate when its evidence in answer is complete will normally be in its own interest by triggering the start of the period available to the opponent for serving its evidence in reply.  However, it will be to the applicant's detriment if at some subsequent time it wishes to provide more evidence, and is precluded from doing so.  Nonetheless, it seems generally inappropriate that a party which has flagged that its evidence is complete should be able, in a sense, to have it both ways by then being able to retract this and serve more evidence.

In the present instance, I see the following factors as supporting the admitting of the evidence in question:

·it is not entirely clear that the applicant has not complied with the letter of the law by using the full time available to him to serve his evidence in answer, particularly in view of the Office response to his first statement impliedly giving him the go-ahead for this.

·it would take reasonable account of the interest of the applicant.

·it is in the public interest that evidence should not be shut out due to a failure in procedure (Kaiser Aluminium& Chemical Corp. v Reynolds Metal Co. (1969) 120 CLR 136).

·it allows evidence already available to be taken into account (Ferocem Pty Limited v Commissioner of Patents (1994) AIPC 91-057).

There do not appear to be any significant factors weighing against admitting the evidence in question.  The opponent has suffered a minor inconvenience, but, to its credit, has conceded that there has been no impairment of its ability to present its case.  And, as I have indicated above, although generally-speaking it is undesirable for a party who has flagged that its evidence is complete to be allowed to put in further evidence unless it does so under the provisions of reg 10.4, there are strong mitigating circumstances involved in the present situation.

Accordingly I find the second statement of the applicant's evidence in answer to be admissible evidence available for consideration in this opposition

Application to serve further evidence

The nature of the further evidence and the grounds for making the application were both given orally at the hearing.  Having allowed Mr O'Sullivan to put submissions as to why the application to serve further evidence should be allowed, I granted a short adjournment to allow Ms Moore Chrysiliou to peruse the evidence and consider her position.  On recommencing, Ms Moore Chrysiliou stated that the opponent objected to the application.  I then took submissions from Ms Moore Chrysiliou and, following this, allowed Mr O'Sullivan to reply.  At this stage, I indicated that I would reserve my decision on the application to serve further evidence.  It was agreed by both parties that we should continue with the hearing of the substantive opposition, but without the further evidence, and if I eventually decided to allow in the further evidence it would be necessary to reconvene the hearing to consider that evidence.

At the conclusion of the hearing I allowed the applicant 21 days in which, if they wished to do so, to put in written submissions on the application to serve further evidence and/or ask for a hearing on the matter.  I put it to Mr O'Sullivan that his side had had sufficient opportunity to present its case, and in the event of the other side not requesting a hearing the applicant need not be given another opportunity to be heard or provide written submissions.  When Mr O'Sullivan appeared to demur on the latter, I indicated that I would give further consideration to that if and when I received submissions from the opponent.  I did receive submissions from the opponent, but no request for a hearing, and in the upshot I allowed the applicant to provide a written response to those submissions.

At the hearing, Mr O'sullivan referred me to several authorities on applications to serve further evidence.  It is well established law that three criteria must be fulfilled before an application to serve further evidence may be granted.  These are:

·it must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.

·the evidence must be such that, if given, it would probably have an important influence on the outcome of the case.

·the evidence must be such as is presumably to be believed, that is, it must be apparently credible, though not necessarily incontrovertible.

Two other factors also need to be taken into account, namely:

·would allowance of the application to serve further evidence cause unnecessary protraction of the opposition.

·would allowance of the application result in any injustice done to the other party.

See, for example, Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (No 2) (1993) AIPC 91-013

As regards the first of these criteria, it was more or less conceded by Mr O'Sullivan that the applicant had had the further evidence in his possession prior to commencement of the opposition.  However, it was Mr O'Sullivan's submission that the applicant still met the first criterion when account was taken of the fact that the applicant had had no professional assistance at crucial stages in the opposition procedure.  According to Mr O'Sullivan, this in effect prevented the applicant from bringing forward the evidence now being brought forward as further evidence.  The applicant, according to Mr O'Sullivan, was "throwing himself on the mercy of the Patent Office".

I cannot agree with this submission.  While there is a substantial body of law that indicates that failure of procedure, in certain circumstances, should not prevent a case from being argued on its merits (for example, Kaiser Aluminium v Reynolds, supra), the present situation appears rather to involve purported misjudgement on the part of the applicant on how best to advance his case. [In fact, as will become apparent when I address the second criterion, I am not convinced that there has been any misjudgement by the applicant.]  In my view, it is implicit in the first criterion that when assessing whether this criterion is met the assumption is to be made that the value of the further evidence as evidence would have always been apparent to whomever is now seeking to adduce that evidence.  Even so, it is clear from the history of this matter that the applicant was aware of the professional assistance which was available to him, and, indeed, has in the past recognized the potential value of that assistance by availing himself of it.  Having failed to do so in the present action until late in the proceedings, it seems somewhat inappropriate for the applicant to seek the indulgence he now does on the basis that he has exercised reasonable diligence. It should also be remembered that if a party in opposition proceedings believes it can mount a better case than it has done which may have altered the outcome of the opposition, it is open to that party to appeal the decision on the opposition.

As for Mr O'Sullivan's plea for "mercy" from the Patent Office, beyond the outcome he sought to achieve I am not entirely sure what Mr O'Sullivan contemplated by this.  I am, of course, bound by the rules of natural justice, which, inter alia, require that I act fairly to all parties, and decide each issue (here, whether to allow the applicant to serve further evidence) on its merits.  I am precluded from exercising any "mercy" if it does not conform to the rules of natural justice.

Turning now to the second criterion, I have considerable difficulty in seeing the further evidence having an important influence on the outcome of the case.

The declaration by Mr Knowles is extremely short. Its evidentiary content consists of the following:

" 2. By the end of April 1989 I introduced Karl-Heinz Stasch to Donald Kitchen and Norm Hewitson from Dynamic Plastics while visiting their factory at Brookvale. This was a few days before Karl-Heinz left for Germany."

The specifics of this evidence have no bearing on the opposition.  Its value can only lie generally in establishing the greater credibility of the applicant's evidence.  Since I can come to this conclusion without the aid of this evidence, I see no significance as attaching to the Knowles declaration.

While the declaration by Mr Stasch is the only declaratory evidence by him, I do not perceive there to be anything of relevance in it over what is contained in the previous evidence.  Most of what it sets out to establish is not disputed by the opponent, and the remainder, at least that which is of relevance, I have been inclined to resolve in favour of the applicant on the basis of the evidence already in the opposition.

Annexed to Mr Stasch's declaration is a number of exhibits.  Exhibits 1 to 9 of these are provided elsewhere in the previous evidence (but not necessarily in declaratory form).  At no stage has the applicant contended that these are not what they purport to be, and given Mr Stasch's unfamiliarity with evidentiary procedures, I do not draw any significant adverse conclusions from the form of the evidence as originally provided.  I do not see exhibits 1 to 9 as being of greater weight, effectively, than the evidence already in.

Exhibit 10 (a time line) contains nothing of relevance that cannot be gleaned from the evidence provided previously

Exhibits 11 to 22 and 25 consist of photographs taken between 13 and 31 July 1989 of the fume cupboard which is the subject of this application, and numerous technical specifications, catalogues, dockets, invoices, etc. relating to component parts of the fume cupboard.  The only photographs of any interest are exhibit 20, which show a piece of elbow pipe said to contain an airflow sensor. Exhibit 21 is an invoice for the pipe.  While these exhibits are relevant to certain of the issues in this opposition, they do not affect my findings on those issues.

Exhibit 23 is the most interesting item of evidence of the further evidence.  One of the difficulties of this case, in my view, is the distinction to be drawn between pressure sensors on the one hand, and velocity sensors on the other, and there is a paucity of expert evidence from both sides on this point.  Exhibit 23 is the installation instructions for the particular velocity sensor stated in the preferred embodiment of the present invention (Honeywell AWM Series), although the evidence suggests that the inventor did not alight upon this particular device until after the priority date of the claims.  Exhibit 23 throws a little light on this issue of the distinction between velocity sensors and pressure sensors, and one side-benefit of allowing the application to serve further evidence would be that it may elicit further evidence on this.  However, this is not a factor in considering the evidence itself as having an important influence on the case.  In any case, because this specific form of sensor which is the subject of exhibit 23 is referred to explicitly in the specification in suit, I believe that I am entitled on that basis to have regard to the information contained in the exhibit to ascertain the essential nature of the sensor.  As it turns out, as observed by the opponent in its submissions on the further evidence, it appears the content of Exhibit 23 may, if anything, hinder rather than help the applicant's case.

Exhibit 24 (copies of two pages of Mr Stasch's visa) can, like the Knowles declaration, only have any value as evidence by establishing the general point that the applicant's evidence is more credible than the opponent's.  As I have already said when discussing the Knowles declaration, I have come to that conclusion without the benefit of this further evidence.

In light of the foregoing, I conclude that the further evidence meets neither the first or second of the three criteria which must be established before an application to serve further evidence can be allowed.  The third criterion is satisfied. 

As a final consideration, I note that the applicant has already been allowed one opportunity to file further evidence, and if allowed another opportunity it is likely that significant protraction of this matter would result.  This would be contrary to the public interest, which requires the correct and expeditious determination of opposition actions.  I think that the words of Graham J. in his judgement on Owens-Corning Fibreglass Corporation's Patent, (1972) RPC 684, in circumstances comparable to those of the present, are apposite:

"It seems to me that the applicants here have really brought the matter on themselves and, when they plead that their interest must be adequately safeguarded, one must also have in mind the fact that it is their conduct which has put them in the position in which they now find themselves.  I consider.....that there would be undue delay caused in these proceedings if they are allowed to drag on any further.  The actual time which might be required for additional evidence may or may not be small, having regard to the time which has already elapsed; but, in all these cases where delay is of importance, there comes a time where one must draw the line or exercise one's powers with the hatchet and say : 'This has gone on long enough'."

Accordingly, I refuse to permit the serving of further evidence.

Locus standi of the opponent

Approximately two months after the hearing of this opposition and before a decision could be issued, the applicant informed the Office by correspondence that an administrator had been appointed for the opponent company and it was to be wound up, and, in later correspondence, that a liquidator had been appointed and the company was in liquidation.  The applicant has questioned whether the opponent still has locus and whether the opposition should be regarded as withdrawn.

It is irrelevant whether the applicant still has locus, since the requirement is that the opponent have locus at the date on which the notice of opposition is filed, see Rhone-Poulenc Chimie v Sumitomo Chemical Company, Limited, a Patent Office decision dated 7 September 1994 in relation to patent application number 579248, unreported.

The question of locus when the opponent has gone into liquidation arose in the decision of the UK patent Office in American Cyanamid Company (Yarrow's) Application (1967) FSR 79, in which it is stated:

"....if the locus standi of the ..... opponent at the time of opposition is established, the Comptroller is required to decide the case whether or not the opponent takes any further part in the proceedings.  It follows that the liquidation, occurring as it did some nine months after filing of the opposition should not of itself destroy the locus standi of the opponent."

In that case the hearing officer went on to find that there was no locus because of the factor of liquidation combined with other factors. In the present case there are no such other factors present, and there is no question that the opponent had locus when the notice of opposition was filed. 

On the question of withdrawal, withdrawal can only take place by the opponent filing a notice of withdrawal in writing.  No written notice of withdrawal has been filed.

Accordingly, I find that I am required to decide this opposition, notwithstanding that, as it appears, the opponent is now in liquidation.

The substantive opposition

Preliminary Issue

The fate of this opposition is, in large measure, dependent on what distinction is drawn between, on the one hand, air velocity sensors and, on the other hand, air pressure sensors.  On the face of it would seem that, because they measure different parameters, they may be readily differentiated.  However, a slightly more detailed analysis indicates that the actual situation is not quite so clear cut.

It is basic physics that air pressure and air velocity are physically interrelated.  The relevant equations are:

total pressure = static pressure + dynamic pressure

dynamic pressure = mass density x (velocity)2

2

The nexus between air velocity and air pressure is given practical effect in some air velocity sensing devices.  For example, Ms Moore Chrysiliou drew my attention at the hearing to the description of a device called a "flow traverse probe" in the "Heating/Piping/Air Conditioning" extract in evidence.  I agree with Ms Moore Chrysiliou that this is a device that is an air velocity sensor by another name.  This device appears to operate by measuring total air pressure and static air pressure, and deriving the air velocity from those parameters.  Moreover, in the air velocity sensor employed in the preferred embodiment of the present invention (the Honeywell AWM series), the primary measurement is of electrical resistance, from which may be derived air flow velocity, average channel flow velocity or dynamic differential pressure, depending on the way the device is calibrated.  Indeed the specification itself states:

"The velocity sensors detect any ambient conditions in the air velocity or pressure resultant from changes in these conditions in the surrounding laboratory containing the fume cupboard."

The opponent contends that on the basis of the foregoing any apparent distinction between air velocity sensors and air pressure sensors is illusory.  This is said to be particularly the case with the Hamerest sketch, where the sensor there is stated to be a "proportional pressure sensor......to pick up differential pressure" ("differential pressure" I take to mean dynamic pressure).

While the opponent's arguments on this have considerable force, I am not convinced that such a rigorous theoretic approach along these lines is really determinative of this issue, insofar as it bears upon novelty or obviousness.  It seems to me that the correct approach is to ask whether to the person skilled in the art of the invention air velocity sensors and air pressure sensors would be identifiably different contrivances?  In answering that question, I observe that the onus is on the opponent to establish its case and in order to fulfil that onus the situation would appear to require persuasive expert evidence.

In fact, such expert evidence is lacking.  Of the opponent's declarants, none can be considered independent, and only Mr Kitchen provides evidence which clearly supports the opponent's position.  He states:

".....the sensors described [in a prior art document] are flow traverse probes.  I say these are the same as velocity sensors, or pressure sensors, which I regard as interchangeable terms".

Mr Hewitson's evidence is inconclusive on this point, while the evidence of Mr Lucas, like much of the documentary evidence, appears to go the other way by making separate reference to velocity sensors and to pressure sensors.

Therefore, in deciding this matter I have adopted the approach that air velocity sensors and air pressure sensors should be interpreted on their face value as being identifiably different contrivances.

Prior publication and novelty in respect of prior art documents

The law on novelty requires application of the so-called "reverse infringement test", as was set down in Meyers Taylor v Vicarr Industries, 137 CLR 228, Aickin J. stating:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would, if the patent were valid, constitute infringement."

In Rodi & Wienenberger v Henry Showell, (1969) RPC 367, it was held that infringement of a claim occurs where

"each and every one of the essential features of that claim has been taken".

The present invention is of the combination type, and accordingly each and every integer of the claim is essential. Therefore, in order to constitute an anticipation of the present invention, a prior art disclosure will have to disclose all features of the claimed invention, including, in accordance with my conclusion above, a specific disclosure of an air velocity sensor.

I will consider now each document in the opponent's evidence which the opponent alleges to be an anticipation of the present invention and which involve the use of velocity sensors.

Mr Hewitson's first declaration has annexed to it an Australian Construction Services document entitled "Mechanical Engineering Branch Report 34 - Fume Cupboards" (the Kennedy report).  After discussing a number of ways of achieving constant velocity across the sash opening of a fume cupboard, the report goes on to say:

"AS 2243.8 requires that air flow control be automatic and this is usually achieved with position sensing on the sash.  Experimental cupboards have been reported using pressure or velocity sensing across the sash opening but the cost at present is prohibitive in most applications."

This document does not specifically disclose velocity sensing as a means of controlling dampers in the exhaust ducting of a fume cupboard such as is claimed by the present application, even though it does disclose such damping as one of the number of ways of achieving constant velocity across the sash opening.  As such, it appears to be a classic case of a "signpost upon the road to the invention" (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457), without actually being a disclosure of the invention.

Apart from this shortcoming, this document is in any case fatally flawed as a prior publication citation, in that there is insufficient evidence to establish its publication before the earliest priority date of the present claims.  Mr Hewitson declares that the report "was received by my Company in 1988".  Be that as it may, the version of the report in evidence has prominently marked on its cover the words "Commercial in Confidence".  In light of that I think some firmer evidence than that provided by the opponent is needed to establish the fact of publication.  I note in this context that both parties seem to have had ready access to the author of the report (the Mr Kennedy who contributed a statutory declaration to the further evidence served 19 August 1993), who one would have thought ought to have been able to provide substantiation of that publication if it had occurred.

At the hearing Ms Moore Chrysiliou referred to the list of acknowledgements in this document, and submitted that, on the balance of probabilities at least some of those people would have had the document published to them before the priority date of the present claims.  In my opinion that is no more than pure speculation, and does not amount to evidence of publication.

Also annexed to Mr Hewitson's first declaration is the specification of Australian patent application 585163 by the same Mr Lucas who is a declarant for the applicant in this matter.  In discussing the prior art, this specification states:

"The use of a pressure, temperature or velocity sensor in order to achieve automatically fan speed adjustment might be possible, but the principle disadvantage would be cost and/or lack of effectiveness",

where the fan in question is in the exhaust duct of a fume cupboard.

The specification then goes on to describe a preferred embodiment of the invention in which the position of axially rotatable dampers located within a main duct and an auxiliary duct are controlled directly by the position of the fume cupboard sash.  Once again, this is a signpost on the way to the invention and not a disclosure of the invention itself.

Another patent specification annexed to the first Hewitson declaration is United States Patent Number 4,706,553.  When describing the prior art, this disclosure refers to dampers in the exhaust ducting of a fume cupboard as being controlled by air flow sensors.

The specification later gives as a preferred embodiment of a flow sensor a hot wire mass flow sensor.  As I have already indicated, I am prepared to extend to the applicant the benefit of the doubt where there is no specific disclosure of an air velocity sensor.

Also annexed to the first Hewitson declaration are two sets of brochures, the first by Voltec Control Systems and the second by, inter alia, Anemostat Products Division of Dynamics Corporation of America.  These documents appear to have originated in the United States. In my view, there is insufficient evidence to establish that either of these documents was published in Australia before the priority date of the present claims.  It would seem from Mr Hewitson's evidence that the Voltec brochures only came into his possession after the priority date of the claims.  The mere statement, even though contained in a statutory declaration, that the brochures are "a set of brochures published in Australia prior to 31 July, 1989" is insufficient evidence to substantiate that fact.  Similar comments apply in relation to the Anemostat brochure.

Neither of these citations would, in any case, anticipate the invention defined in claim 1.  I do not consider that the Voltec document discloses an arrangement where a velocity sensor providing a signal indicative of the air velocity in the fume cupboard compartment controls a damper means for selectively admitting external air via an auxiliary duct to an exhaust duct.  The Anemostat document does not have any disclosure of the auxiliary duct feature.  Both these citations would, however, have anticipated claim 20, had there been sufficient evidence of their date of publication in Australia before the priority date of that claim.

Mr Lucas' first declaration has annexed to it two prior art documents.  In neither case has a publication date been adequately established for these documents.  In relation to the first, entitled "Bradford Air Ventitech", Mr Lucas declares

"I have made enquiries of Bradford Air and have been informed that the pamphlet.......was available in Australia at least by March, 1988.  Now shown to me at the time of making this Declaration and marked "Exhibit REL 2" is a copy of a fax to this effect sent to me on 18 June, 1992."

The facsimile in fact does not appear to make any reference to the date of availability of the pamphlet.

In relation to the second document, entitled "Emsa Flow Variator", Mr Lucas declares that he has determined from the records of McNeall Engineering Pty Limited, a company with which he is associated, that the document was received in the McNeall library in March 1984.  He provides no details of the nature of this library.

Clearly, the evidence in the case of both documents falls well short of establishing the publication date of these documents as being before the priority date of the claims of the present application.

In regard to the disclosures of these documents, they merely relate to the use of velocity sensors to control motorised dampers in air conditioning systems.  The function of the velocity sensors appears to be to measure air flow velocity within ducting, etc, as distinct from the chamber served by the ducting, as in the present case.  As such, the Lucas documents would not seem to anticipate the present invention.

Annexed to the declaration of Anna Marie Chrysiliou are extracts from two trade journals, both of which I am satisfied were published in Australia before the earliest priority date of the present claims.

The first, from "Heating/Piping/Air Conditioning, does not anticipate the present invention, since although it uses velocity sensors, these are not used to control dampers.

The second extract is from the "ASHRAE Journal" of March 1988. In its evidence and submissions, the opponent focussed on Figure 7 of the article contained in the extract.  This disclosure is quite close to the invention defined in claims 1 and 20.  Figure 7 illustrates a fume cupboard with an exhaust duct and an auxiliary duct having a variable damper.  The only difference between the cited device and the present invention is that in the citation the damper is under the control of the combined effect of the exhaust duct air flow velocity and the sash position, whereas in the present claimed invention the dampers are only controlled by the air velocity within the fume cupboard compartment itself.

At the hearing, Ms Moore Chrysiliou submitted that this did not really amount to a difference at all, as the effect of the prior art arrangement was to give a measurement of the air flow velocity within the compartment.  While I agree that the effect in each case is probably similar, the means of achieving that effect is clearly not the same.  Although velocity sensors are utilized in both instances, the particular air velocities they measure are distinctive, and this distinction is accentuated by the further utilization in the prior art of a sash position sensor.

I am satisfied that the difference between the present invention and the ASHRAE device has the potential to impact on the way the invention works, and of itself constitutes an essential feature of the invention.  In accordance with Meyers Taylor v Vicarr Industries (supra), I believe its effect is to eliminate the prior art represented by the ASHRAE device from within the scope of the present claims.

I find that the claimed invention is novel over the prior art documents in evidence in this matter.

Obviousness

A determination of whether an invention is obvious requires that, firstly, the state of the common general knowledge in the art be ascertained.  The common general knowledge is that which would be attributable to the person skilled in the art (see, for example, Minnesota Mining and Manufacturing and 3M Australia v Beiersdorf(Australia), 144 CLR 253).

At the hearing the parties differed as to what background an appropriate person skilled in the art of the present invention would have.  The applicant, as might be expected, argued the narrower view that the invention was confined to the art of fume cabinet design, whereas the opponent contended that the art in question was the general field of air ventilation systems.  I am inclined towards the latter point of view.  In describing and claiming his invention the applicant has spread his net widely enough to encompass ventilation systems in general, from which it may only be inferred that the appropriate person skilled in the art must come from this technological background.  This person would be someone with an appropriate engineering background involved in the design of ventilation systems.

In my view the question of whether or not the present invention is obvious must turn upon whether or not velocity sensors are common general knowledge in the applicable art.

The opponent has provide very little evidence in relation to common general knowledge.  Such evidence as there is comes from Mr Lucas.  In his first declaration he states:

"At least by July, 1986, it was well known in Australia to use one or more velocity sensors or pressure sensors to control a motorised damper in air conditioning systems",

and later,

"Because by July, 1986, it was well known in Australia to use velocity sensors to control dampers in air conditioning systems, it was obvious to me that the same sensors could also be used in fume cupboard systems to control the damper in the exhaust duct."

Mr Lucas is not an independent expert, since he has conceded that he would have opposed this application if he was aware of it.  Also, in saying that "it was well known" it is not clear if he is referring to common general knowledge or not, or even if he is familiar with the concept.  However, the fact that Mr Lucas' Australian patent 585163 refers specifically to velocity sensors does provide confirmation that he himself had knowledge of them.  On the other hand, the clear evidence of his inventiveness means that his evidence on obviousness (as distinct from common general knowledge) carries no weight, as was conceded by Ms Moore Chrysiliou.

At the hearing, Ms Moore Chrysiliou drew my attention to some items of indirect evidence of the common general knowledge relating to velocity sensors in the art, namely, the Bradford Air Ventitech and Emsa Flow Variator pamphlets.  Neither of these assist the opponent's case to any significant extent, since there is a doubt as to whether the pamphlets have been published, let alone whether the products they illustrate have been commercially available.

Ms Moore Chrysiliou also drew my attention to the fact that the applicant had not countered the opponent's evidence on common general knowledge, and that this should be seen as conceding the point.  While that argument may have some basis under normal circumstances, I do not accept it as being valid in the present circumstances, given Mr Stasch's status as, as Mr O'Sullivan put it, a "layman".

As I have already pointed out, in these matters there is an onus on the opponent to substantiate its case.  The state of the common general knowledge is not an exception to this, and I am dependent upon the expert evidence which has been provided to me in order to decide whether, as a question of fact, the opponent has discharged that onus in relation to the common general knowledge, as for example was noted by the Vice Chancellor in the UK Court of Appeal in Mölnlycke AB v Procter & Gamble Ltd, (1994) RPC 49:

"The Act requires the court to make a finding of fact as to what was, at the priority date, included in the state of the art and then to find again as a fact whether, having regard to that state of the art, the alleged inventive step would be obvious to a person skilled in the art.

In applying the statutory criterion and making these findings the court will almost invariably require the assistance of expert evidence.  The primary evidence will be that of properly qualified expert witnesses who will say whether or not in their opinions the relevant step would have been obvious to a skilled man having regard to the state of the art."

In the case at hand, the evidence can be summarised as follows: there is the direct evidence of Mr Lucas which, for the reasons I have stated, needs to be treated with considerable caution and is of low probative value; and there are some items of indirect evidence which seems to me to be substantially devoid of probative value.

Accordingly, I think that there is insufficient evidence to justify my concluding that velocity sensors were common general knowledge in the art at the priority date of the claims.

I find that the ground of obviousness has not been established.

Obtaining, prior use, prior publication by communication

It will be convenient to treat these three issues together, since, as I understand it, the opponent is presenting me with a set of alleged facts and asking me to conclude that either the invention has been obtained from the opponent, or else, failing that, that the applicant disclosed the invention to the opponent before the earliest priority date of the claims.

The opponent's version of the events leading up to the lodging of this application for a patent commences in 1987.  The evidence, in the form of a patent application by the opponent, establishes that at that time it was seeking solutions to the problem of controlling face velocity in the fume cupboards manufactured by the opponent company.  Its solution in that case involved controlling fan speed in the exhaust duct in accordance with the sash position.  In 1988 the Kennedy report was, in the words of Mr Hewitson, "received by my company".  This apparently stimulated "the company" to focus on controlling face velocity with a sensor controlled auxiliary or bypass duct.  According to Messrs Hewitson and Kitchen, they had in mind as a sensor an air velocity sensor.  However, there is no hard evidence to confirm this. On the contrary, such evidence as there is suggests they had in mind pressure sensors.

According to Hewitson and Kitchen, they were first introduced to the applicant in late 1988, and they maintain that from the outset their interest in the applicant was to have him design and make a prototype controller for the fume cupboard system having the sensor controlled auxiliary or bypass duct they were currently interested in.  They provided the applicant with a copy of the Lucas patent specification which I have already referred to, drawings of a fume cupboard system having an auxiliary or bypass duct with a damper operated, firstly, in response to sash movement and, secondly, in response to air pressure within the cupboard, a fume cupboard, valued at about $5000, and $2000 for parts.  It is not contended by the opponent that an employer-employee relationship ever existed between the parties.

Initially the fume cupboard was located in the opponent's factory, where the applicant carried out his development work on it.  On 13 July it was moved to the applicant's residence.  On 31 July 1989 the applicant lodged his application for a patent, and on the same day showed Hewitson and Kitchen his finished prototype after getting them to sign a confidentiality agreement.  The applicant did not reveal to the opponent details of his patenting activity until March 1991.  According to Hewitson and Kitchen, while this work was going on on the fume cupboard the applicant at times sought their advice on technical aspects of his work on it.  Hewitson and Kitchen also claim they saw prototypes of the cupboard of the invention both in their factory prior to 13 July 1989, and at the applicant's residence between 13 and 31 July 1989.

Mr Stasch's recollection of these events is somewhat different.  According to Mr Stasch, the parties first met on about April 24 1989, and the reason for their meeting was not related to fume cupboards as such.  When Mr Stasch became aware of the other party's interest in fume cupboards, he asked to see one.  This led to a suggestion from Mr Stasch to motorize the fume cupboard sash, and by Mr Stasch's account this was taken up by the opponent about a month later, with Mr Stasch being commissioned to design the system.  It would appear to be the applicant's contention that in the course of carrying out this work he invented the present invention.  Mr Stasch states in his evidence that he "strongly denies that any help was provided in the innovative or mechanical design sense or any other sense".

After 31 July 1989 relations between the parties deteriorated quickly.  It appears that the applicant Mr Stasch continued to develop prototypes until early 1991, but priced himself out of the market and then tried to enforce his patent rights.

The standard of proof required in these proceedings as to the primary facts is the civil standard, that is, the balance of probabilities: see Dunlop Holding Ltd.s Application, (1979) RPC 523.

It is not easy to arrive at a concluded view of the facts involved here.  Both sides emphasised that the events concerned pre-dated the evidence relating to them by some years.  Also, while the situation seemed to lend itself to oral evidence and cross-examination, neither of these was used.  In general, Mr Stasch's recollection of events seems the most reliable, but this is only to be expected in view of the fact that, in contrast with the opponent's declarants, he probably had forewarning of the possible future significance of those events.

Obtaining

Where obtaining is alleged, there is an onus on the party alleging obtaining to substantiate its case.  It must establish, inter alia, that the applicant actually obtained the invention from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney, prior to the priority date of the claim (Space-Cell Systems (Aust.) Pty. Ltd. v E.P.M. Concrete Pty. Ltd.., (1979) 49 AOJP 2018).

In the present matter the opponent contends that it was in possession of the invention and that it communicated it to the applicant.  Apart from unsubstantiated assertions to this effect from the opponent, there is no hard evidence supporting either of these contentions.  Indeed, as I have already indicated, such hard evidence as there is on this from the opponent in relation to the period before 31 July 1989 seems to point the opposite way.

In addition, there is one particularly important document in evidence from after 31 July 1989, and that is a draft agreement between the parties drawn up by the opponent but never signed. (This document is an exhibit to the first Kitchen declaration.)  In defining the fume cupboard concerned in the agreement, the agreement refers to "the use of a pressure sensor inside the fume cupboard to [control] an electric motor fitted to a bypass system in a duct system".  This appears to be consistent with the applicant's contention that the opponent had not even been aware that the applicant was using a velocity sensor to control damper means so as to selectively admit external air into the exhaust duct via an auxiliary duct, let alone had itself devised the invention.

Accordingly, I find that the ground of obtaining is not established.

Prior use

The question of whether the applicant has prior published himself by prior use turns on whether there is sufficient evidence to find that the applicant's fume cupboard was complete, in the sense of having all the features of the claimed invention, while still in the opponent's factory or if Messrs Hewitson and Kitchen viewed the cupboard in this completed form at the applicant's residence.  They have declared affirmatively to both of these.  Mr Stasch, on the other hand, has said nothing on this.

Of considerable bearing on this is Exhibit 8 to Hewitson's first declaration.  This is a "fax" from the applicant to the opponent, dated 13 July 1989, and states in part:

"Tomorrow, Friday, 14th of July, before lunch, I would like to come to the factory to get the following items

·

·

·

2) The velocity meters"

At the hearing Ms Moore Chrysiliou submitted that these "velocity meters" may be panel meters of some type.  However, it seems to me more likely that what are actually being referred to here are velocity sensors.  If so, there is a strong inference from this that the velocity sensors were not yet in situ, so the inventive fume cupboard could not have been seen in the opponent's factory.  The "draft agreement" to which I have already referred would appear to confirm that the opponent did not have any inkling of the applicant's invention.

As well, I have some doubt as to the level of credence to be given to the Hewitson's and Kitchen's evidence.  In one instance they contradict each other (in relation to whether Hewitson and Stasch travelled to Canberra together to see Mr Kennedy) and in other instances their evidence is contradicted by Stasch, whose evidence, as I have said, seems the more reliable.

I conclude that there is insufficient evidence of there having been prior use of the invention.

Communication of the invention to the public

It is long-standing law that an invention will be prior published so long as the invention is communicated to a member of the public, and in this regard Ms Moore Chrysiliou drew my attention to the decision in Jos Schlitz v Containers Ltd, 8 IPR 491. Another case in point is Humpherson v Syer, 4 RPC 407, wherein Bowen L.J. stated

"I put aside the questions of public use, and treat this as a question of whether there has been a prior publication; that is, in other words, had this information been communicated to any member of the public who was free in law or equity use it as he pleased."

In that case the information had been communicated orally.

In the case at hand, the evidence points to Hewitson and Kitchen having had revealed to them by the applicant all bar one of the essential features of his invention, the exception being the function of the velocity meter/sensor in the fume cupboard of the invention.  The evidence clearly establishes that the applicant had disclosed to the opponent that an air velocity sensor was to be employed in the fume cupboard that the applicant was developing, but there is no other evidence apart from that of Hewitson and Kitchen that they or anyone else had been told the precise purpose to which it was to be put.  And, as I have indicated previously, I consider that I should not place very much weight on the uncorroborated evidence of Hewitson and Kitchen.  It is of interest to note in this context that in Humpherson v Syer Bowen L.J. appeared to criticize the judge in the lower court for his finding of fact in relation to the evidence on communication of the invention.  Bowen L.J. stated:

"But the learned Judge below was asked to consider that there was a prior publication in respect of what was done between Widmer and his employer.  We are dependent for the materials from which we draw the inferences as to what passed between Syer and Widmer very much on the evidence of those two gentlemen, and I cannot help feeling that with regard to the evidence one is not bound to accept their memory as an absolute correct and full statement of all that took place, and that, it being for the Defendent in this case to make out that there was a prior publication to Widmer, the onus resting on him, the Court might well, upon the materials which are before it, hesitate before it came to the conclusion that the Defendant has sustained that onus."

In that case, one of witnesses, Widmer, was ostensibly independent, whereas in the present case neither Hewitson or Kitchen fall into that category.

I conclude that there is insufficient evidence to establish, on the balance of probabilities, that the applicant communicated the totality of his invention to a member of the public.

Conclusion

I have found that none of the grounds of the opposition have been established, and so I dismiss the opposition filed by Dynamic Plastics Limited.  I direct that the application proceed to sealing, subject, of course, to any appeal being filed to this decision.

Costs

Costs in these matters normally follow the event.  Although the opponent was unsuccessful in its opposition, it was successful in its objection to the application to file further evidence made at the hearing.  Having regard to all the circumstances, I award nine-tenths of the applicant's costs against the opponent.

E. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Chrysiliou Moore Chrysiliou, Sydney

Patent attorneys for the opponent   :  Griffith Hack and
  Co, Sydney