Kingston Bond v Wickham Gensol (Aust) Pty Ltd

[1999] APO 33

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 676803 in the name of KINGSTON BOND

Title:          Demountable Vehicle Wash Structure

Action: Opposition under section 59 of the Patents Act 1990 and also a request under section 32 of the Patents Act for a determination of the Commissioner as to the name or names in which the application is to proceed, by WICKHAM GENSOL (AUSTRALIA) PTY LTD

Decision:          Issued            .

Abstract

This matter began as a section 59 opposition, in which one of the grounds was that the nominated person was not entitled to the invention. After the serving of evidence in support, the applicant filed a section 104 request to amend the specification. As this would have resulted in matter to which the opponent had alleged entitlement being excised from the claims, it filed a section 32 request for a determination by the Commissioner as to the name in which the application was to proceed. The opponent also sought a determination deferring consideration of the amendment request until the section 32 action was resolved, since if it had gone ahead the opponent may have been denied its rights in relation to its entitlement. This direction was given as sought.

The section 32 and section 59 actions were heard together. The finding on the section 32 action was that the opponent had no entitlement to any of the matter disclosed in the specification. The applicant had not been an employee of the opponent, and there was no evidence that any matter in the specification not published at the priority date of the claims had been in the possession of the opponent. The fact that the applicant gained background knowledge and expertise as a result of his professional relationship with the opponent did not confer upon the opponent entitlement to an invention made by the applicant. The section 32 request was denied.

With the agreement of the parties, the section 59 action was heard in relation to the specification as proposed to be amended. No ground of opposition was upheld. The applicant was found to have entitlement on the same basis that the section 32 request had been denied. It was found that the invention was novel and had an inventive step, and the specification complied with section 40. Final disposition of the opposition was deferred until the amendment action ran its course.

Costs in the section 32 action were awarded against the opponent. Costs in the section 59 action up to filing the amendment request were awarded against the applicant, and thereafter against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 676803 by Kingston Bond, and an opposition under section 59 of the Patents Act 1990 and a request under section 32 of the Patents Act for a determination of the Commissioner as to the name or names in which the application is to proceed by Wickham Gensol (Australia) Pty Ltd.

BACKGROUND

Patent Application 676803 entitled "Demountable Vehicle Wash Structure" was filed on 12 July 1995 by Kingston Bond as application 24956/95, and associated with Provisional Application
PM 6808 filed on 13 July 1994.  Mr Bond is also the inventor.  Application 24956/95 was advertised accepted on 20 March 1997 and given the six-figure number 676803.

A notice of opposition to application 676803 was filed on 20 June 1997 by Wickham Gensol (Australia) Pty Ltd. The notice of opposition was accompanied by a statement of grounds and particulars which relies upon four grounds of opposition under the Patents Act, namely: the nominated person is not entitled to a grant of a patent for the invention, the invention is not novel, the invention is lacking in an inventive step and non-compliance with section 40 of the Patents Act.

The evidence in support was served on 22 December 1997.  On 4 February 1998 the applicant filed a request to amend the complete specification.  The effect of the amendment was to narrow the claims and delete all of those appended claims directed to a specific apparatus, namely, a settling tank.  This settling tank is merely ancillary to, and does not form part of, the inventive concept of the present invention.

Upon being invited under Regulation 10.2(7) to comment on the amendments, the opponent stated, in part:

"In the circumstances therefore, it seems inappropriate to allow the proposed amendments for the time being, since the ownership of any residual invention is in dispute.  It would therefore seem prudent to disallow the amendments given the outcome of the opposition might involve surrender of the application (such as it might then be) to the opponent, in which case the opponent might be prejudiced by the necessary restriction of the claims, notwithstanding that the opponent's case is based very much on those claims lacking any invention (with the possible exception of the settling tank referred to above)."

A delegate of the Commissioner then advised the opponent as follows:

"In the present situation, the only available ground for non-allowance of the section 104 amendments is that the amendments are not allowable under sec 102. However, given the grounds of opposition under section 59(a) raised by the opponent, if the opponent were to make a request under the provisions of section 32, the Commissioner would consider a deferral of the section 104 amendment action would be an appropriate course to take by way of a determination by the Commissioner."

On 12 June 1998 the opponent filed a request under section 32 asking the Commissioner:

"to determine -
the person who may proceed with [the] application
the manner of proceeding with that application."

In an accompanying letter, the opponent also asked the Commissioner to consider whether a deferral of the section 104 amendments would be an appropriate course of action in the circumstances.  The Commissioner subsequently agreed to defer consideration of the section 104 matter.

The applicant served his evidence in answer in the opposition on 18 June 1998, and filed his evidence in support in the section 32 proceeding in two stages on 21 and 27 August 1998. The opponent relied upon its evidence in support in the opposition as its evidence in support in the section 32 matter. Evidence in reply in the opposition was filed on 21 September 1998 and evidence in response in the section 32 matter was filed by the opponent on 27 October 1998, and by the applicant on 2 December 1998.

Both matters were heard on 3 March 1999 in Sydney.  The applicant was represented by Mr Greg Turner, patent attorney of the firm Spruson & Ferguson, Sydney, assisted by Mr Ryan Curnick, and the opponent was represented by Mr Garry Wilson, patent attorney of the firm Wilson & Young, Sydney.

THE SPECIFICATION

As accepted, the invention in broadest form comprises an elevated platform for supporting a vehicle while it is washed, with ramps on each side of the platform serving as on-ramps and off-ramps and a collection tray with drainage means being beneath the platform.  An additional feature of this "vehicle wash structure" - as it is referred to in the specification - is that it is "demountable".  As an optional feature of the invention, the specification describes the drainage means as being connected to a settlement tank of particular construction.

The accepted claims are:

"1. A demountable vehicle wash structure comprising: a mid bay, on and off ramps to/from the mid bay, a collection tray or trays beneath at least the mid bay, the tray(s) being provided with drainage means, and wherein the mid bay, on/off ramps, and collection tray(s) are demountable for relocation.

2. The demountable vehicle wash structure of claim 1 wherein the wash bay is raised.

3. The demountable vehicle wash structure of claim 1 or claim 2 wherein the on and off ramps and/or the mid bay comprise gratings upon which a vehicle is to traverse, thus inducing vibrations in the vehicle to aid in shedding water from the vehicle.

4. The demountable vehicle wash structure of any one of the preceding claims wherein electronic sensors are provided at the on ramp and/or mid bay and/or off ramp such that a vehicle traversing the same will actuate motor driven pumps and sequentially actuate valves directing sprays fastened to the on ramp and/or mid bay and/or off ramp.

5. The demountable vehicle wash structure of any one of the preceding claims further comprising a vehicle guard rail and spray retarding walls laterally adjacent to the mid bay.

6. The demountable vehicle wash structure of any one of the preceding claims wherein further guard rails are provided laterally adjacent to the on and off ramps.

7. The demountable vehicle wash structure of any one of the preceding claims wherein the mid bay is supported upon a transversely extending cross beam or beams.

8. The demountable vehicle wash structure of any one of claim 7 wherein each cross beam or beams is/are mounted upon an excavated and/or consolidated ground surface.

9. The demountable vehicle wash structure of any one of the preceding claims wherein the remote distal ends of the on and off ramps are supported upon transversely extending cross beams.

10. The demountable vehicle wash structure of any one of the preceding claims wherein the mid bay comprises parallel, spaced apart runways.

11. A settling tank when used with the demountable vehicle wash structure of any one of the preceding claims, the settling tank comprising an essentially flat base, an outer wall extending upwardly from the base and provided in segments for assembly and disassembly, and an inlet means for connection to the drainage means of the demountable vehicle wash structure.

12. The settling tank of claim 11 further comprising an inner segmented wall extending upwardly from the base, said wall separating the settlement tank into inner and outer settlement regions, the inner wall comprising a weir over which liquid from the outer region may pass into the inner region.

13. The settling tank of claim 12 wherein the inner and outer walls are fabricated from galvanised corrugated iron or flat steel sheets.

14. The settling tank of any one of claims 11 to 13 wherein the base is formed in four flat galvanised iron segments for assembly and dis-assembly.

15. The settling tank of claim 13 wherein the galvanised corrugated iron flat steel segments of each wall are joined with pop rivets and lapped joints sealed with sealant such as silicone

16. The settling tank of any one of claims 11 to 15 being adapted to stand on a sand base.

17. The settling tank of claim 12 wherein the outer region comprises a vertical dividing wall bolted to the inner and outer walls nearby the inlet means.

18. A demountable vehicle wash structure substantially as hereinbefore described with reference to the accompanying drawings.

19. The settling tank when used with the demountable vehicle wash structure of any one of claims 1 to 10, or claim 18, the settling tank being substantially as hereinbefore described with reference to the accompanying drawings."

The section 104 amendment action which is pending would have the effect of deleting claims 11 to 17 and 19 (that is, those directed to the settling tank) and introducing into claim 1 most of the integers defined in claim 4 and deleting the latter claim.  The new claim 1 reads as follows, with changes shown in italics:

"A demountable vehicle wash structure comprising: a mid bay, on and off ramps to/from the mid bay, a collection tray or trays beneath at least the mid bay, the tray(s) being provided with drainage means, washing apparatus including water spray nozzles at the on ramp, mid bay and off ramp and adapted to direct water at a vehicle traversing the structure, sensors at the on ramp and/or mid bay and/or off ramp and adapted to sequentially actuate said washing apparatus at the on ramp, mid bay, then off ramp in response to said vehicle traversing the structure, and wherein the mid bay, on/off ramps, and collection tray(s) are demountable for relocation."

EVIDENCE

The evidence in support of the opposition is a statutory declaration by David Bebb, a director of the opponent company.  Mr Bebb states that Mr Bond was contracted to work for Mr Bebb's company as a consultant civil engineer from about 1989 to the early 1990's to undertake civil engineering design work for a number of vehicle wash plants installed at BHP Port Kembla, and during this time

"was privy to all the technology and know-how relating to the construction of vehicle wash units installed by my company."

He goes on to say:

"In my view, Bond could not have developed his application without any prior knowledge of information obtained from my company."

Mr Bebb then refers to three engineering drawings produced by Mr Bond for the opponent company and annexed to the statutory declaration.  In particular Mr Bond is said to have designed a settling tank for the opponent company "of substantially similar design and concept" to that defined in present claims 11 to 17 and 19.  Mr Bebb compares the remainder of the claims with the content of the engineering drawings and a promotional video tape entitled Wickham Autowash (also annexed to the statutory declaration) made by his company in 1990, and dismisses any differences in such terms as "could easily be arrived at by the application of routine engineering skills", "an obvious engineering design choice" and "well known in the public arena".

Other items of prior art which are annexed to the Bebb declaration and discussed  in relation to the present invention are a copy of UK patent specification GB 2239848 and copies of two advertisements in A to Z of Mine and Quarry Plant yearbook for 1993.

The Bebb declaration concludes by drawing attention to a number of alleged instances of non-compliance with section 40 by the specification.

The evidence in answer is a statutory declaration by Mr Bond.  It should be noted that while Mr Bebb's evidence in support was filed before the presently pending section 104 amendments were filed, the evidence in answer was filed after the section 104 amendments were filed, and addresses the claims as proposed to be amended.

Mr Bond relies on two features of his claimed invention as giving novelty and inventive step.  They are:

(a)Sensors and sequential actuation of washing apparatus as the vehicle traverses the structure, and

(b)The ramps and collection tray being demountable for relocation.

In his evidence, Mr Bond, places heavy reliance on the first of these features.  This feature was not in claim 1 as accepted.

As well as Mr Bebb's assertions concerning lack of novelty and inventive step, Mr Bond disputes a number of other assertions contained in the Bebb declaration.  In relation to Mr Bebb's statement that Mr Bond was contracted to work for the opponent as a consultant civil engineer, Mr Bond states that this is not correct, and that he is merely the Manager of Kaybond Pty Ltd, and the opponent was really a client of Kaybond Pty Ltd.  Also, he rejects as speculation Mr Bebb's assertion as to his background knowledge in the field of the invention prior to his association with the opponent company.

The evidence in reply consists of a second statutory declaration by David Bebb. This declaration is apparently also intended to constitute the opponent's evidence in support of its section 32 request. The only significant new evidence contained in this declaration is the contention that the opponent company's truck washers have utilized sequential control of the various operations through which the trucks pass.

The applicant's evidence in support in respect of the section 32 request consists of two statutory declarations - another declaration by the applicant and one by Ian Alexander Miller, a patent attorney. Mr Bond's declaration elaborates somewhat on his previous one, but introduces no new significant evidence. The only evidence introduced by Mr Miller's declaration is of there having been no patent applications filed in Australia in the name of the opponent.

The opponent's evidence in response in the section 32 matter consists of yet another statutory declaration by Mr Bebb - his third. A considerable portion of the evidence of this declaration is not directly relevant to the section 32 issue, as it seems to go more to the novelty and inventiveness of the present invention. Aside from this, the declaration reiterates previous evidence that Mr Bond has used know-how he obtained while he was employed as the applicant company's consultant, and that the design work in relation to the settling tank was undertaken for the benefit of the opponent company. According to Mr Bebb, development work in relation to the present invention

"was undertaken whilst contracted to undertake design work for my company, and were not made after he resigned from my company."

and

"any developments made by Bond/Kaybond whilst he was contracted to work for my company belong to my company."

The applicant's evidence in response is a third declaration by Mr Bond which is confined to taking issue with a number of minor details of the opponent's evidence in response.

Further details of the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

In his submissions at the hearing, Mr Wilson stated:

·    the opponent's case basically is that the claimed invention is lacking in novelty and/or an inventive step, but if it is determined that there is patentable subject matter then it belongs to the opponent

·    the applicant designed the settling tank under contract to, and specifically for, the opponent

·    the applicant was otherwise privy to all the technology and know-how relating to the construction of vehicle wash units installed by the opponent

·    the invention as claimed at acceptance was anticipated by UK patent GB 2239848, the A to Z of Mine and Quarry Plant yearbook of 1993 and the Wickham Autowash promotional video which are in the evidence in support, as the pending proposal to amend the specification would indicate

·    the novelty of the claimed invention comes back to what is meant by demountable, and whether it simply means that it can be absolutely formed to be demountable or whether it means demountable in the manner of most of the washers that the opponent manufactures

·    the three engineering drawings in the evidence in support were already in the public domain having been installed and made operational at least at Port Kembla and elsewhere

·    the alleged invention as described in the specification is no more than a simple adaptation of the technology utilised by the opponent prior to the priority date of the present application, adapted to allow the wash unit to be a little more portable or demountable by using an above ground structure and steel ramps in generally known fashions.

Mr Turner submitted that:

·    of critical importance is the sequential activation of the washing apparatus with respect to the on ramp, mid bay and off ramp as the vehicle traverses the structure, and the demountable construction using a tray

·    the word "tray" is used in its normal sense, that is, a flat shallow type of vessel, something akin to a dish

·    in order to establish that Mr Bond was not entitled to apply for the invention, the opponent would need to establish that Mr Bond was not the inventor or that some other party was entitled to the invention by way of agreement or assignment

·    the evidence of the opponent establishes that the invention was devised by Mr Bond, well after contact between the patent applicant and the opponent ceased

·    there is no evidence of any agreement in which Mr Bond, for some consideration, agrees to transfer any invention to the opponent or any other person

·    the opponent uses concrete structures for the floor over which the vehicle being washed passes, and there is no evidence the opponent was interested in having Mr Bond devise a demountable structure

·    it is acknowledged by the opponent that the vehicle wash structure shown in the three engineering drawings in the evidence in support is not specifically demountable

·    none of the prior art cited by the opponent satisfies the reverse infringement test, and apart from the UK patent there is no evidence that the documents were published before the priority date of the present claims

·    the opponent has not provided any evidence as to the common general knowledge or mechanical equivalents

·    Mr Bebb has not provided any substantiation for his vague assertions that his company's vehicle washers have used sequential control.

I will relate the submissions made by the parties in more detail, where material, later in my decision.

DECISION

In proceedings such as these before the Commissioner, in reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). However, the onus rests with an opponent (or person making a request under section 32) to clearly establish its case. As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992).

Section 32 request

As Mr Turner correctly observed, if the opponent is to succeed in its claim that it is entitled to any of the subject matter of the present application, it appears it can only do this by establishing one of two things: either Mr Bond obtained the invention from the applicant, or there was some contract or agreement, express or implied, between Mr Bond (or his company), and the opponent which entitled the opponent to the invention. In its evidence and submissions the opponent seems to focus on one particular aspect of the subject matter of the present application, namely the settling tank of claims 11 to 17 and 19, but it would seem that its claims as to entitlement do, in fact, encompass the entirety of the present application. However, this is immaterial to the determination of the section 32 request.

Obtaining

Mr Turner cited Space-Cell Systems v EPM Concrete (1979) 49 AOJP 2019 in submitting that in considering obtaining it is necessary to establish:

(a)  what is the invention that has allegedly been obtained;

(b)  whose invention it is when the alleged obtaining occurred;

(c)  that the claim defines, or includes within its ambit, the invention allegedly obtained; and

(d)  that the applicant actually obtained the invention from someone.

On my assessment, the opponent has not even satisfied the first of these criteria.  There is evidence that the opponent was in possession of certain prior art, but the evidence also indicates that that prior art was in the public domain well before the priority date of the present claims.  Indeed, at the hearing Mr Wilson conceded that this had been the case.

The video tape was clearly intended for dissemination to the public, while Mr Bebb in his declaration which constitutes the evidence in support states:

"By the time the Bond application was filed, namely 13 July 1994, wash units of the type shown in the aforementioned drawings were already available to the public having been installed and made operational at least at BHP Port Kembla and elsewhere as evidenced by the aforementioned video."

As well as the prior art for which documentary evidence exists, there are also instances of prior art declared to by Mr Bebb which are not supported by any documentary evidence.  At no time, however, does he suggest that this was not public knowledge before the priority date of the present claims.

Thus, while the applicant might have a case to answer on the basis of anticipation by this prior art, I find no basis upon which an allegation of obtaining could be sustained.

Contract or agreement

The fact that Mr Bond acquired certain knowledge in the art of vehicle washers by his association with the opponent does not prevent him from using that knowledge unless there is a contract or agreement between the parties to that effect.  There is no evidence of there having been a contract or agreement in writing between the parties, although at the hearing Mr Wilson claimed to have a copy of an unsigned contract dated 1993.  Conceivably, at one time there may have been an implied obligation of confidence on the part of Mr Bond, even though there is no evidence of that having been the case.  Even so, if there had been an implied obligation of confidence the fact that all the potentially confidential information appears to have become public knowledge before the priority date of the claims would appear to have released Mr Bond from that obligation (see, for example,  O. Mustad & Son v Dosen [1963] RPC 41).

The opponent's main claim to entitlement seems to be founded upon the existence of an employer-employee or master-servant relationship between Mr Bond as inventor and the opponent.  The question of whether a person is in an employee relationship is a question of whether he or she has a "contract of service", and is thus an employee, or whether he or she has a "contract for services" and is thus an independent contractor.  This is a question of fact, and no one test is determinative.  A test proposed by Denning LJ in Stephenson, Jordan and Harrison Ltd. v Macdonald and Evans (1952) 69 RPC 10 is:

"One feature which seems to run through the instances is that, under a contract of service, a man is employed as part of the business, and his work is done as an integral part of the business; whereas, under a contract for services, his work, although done for the business, is not integrated into it but is only accessory to it."

As noted by Denning LJ in the same decision, the test usually applied is whether the employer has the right to control the manner of doing the work.  However, this becomes less significant the greater the skill required for the work, and other factors come into play such as whether the person works in close association with other persons engaged by the employer and the manner in which the person is remunerated.

I think all the evidence in this matter points away from the relationship between the opponent and Mr Bond being that of an employer-employee one.  Mr Bond (or, more correctly, his company Kaybond Pty Ltd) appears to have been paid on a fee for service basis (the opponent in its evidence has provided copies of monthly invoices from Kaybond over a two year period from July 1990 to June 1992) and thus had no direct control over the manner in which Mr Bond did his work.  The opponent was only one of several clients of Kaybond, and Kaybond has the appearance of being a separate entity from the opponent.

At the hearing Mr Wilson "tabled", as he put it, a copy of a letter from Kaybond to the opponent dated 28 August 1994 (that is, after the priority date of the present application).  Upon an objection by Mr Turner to this evidence being considered in the hearing, Mr Wilson indicated he was not formally applying to have this evidence admitted as further evidence, and I ruled that the evidence was not admissible.  I will observe, however, that although Mr Wilson referred to this document as a "resignation", that word does not appear in the document.  The document instead refers to a "professional association".  There does not seem to me to be anything in the document which is inconsistent with a finding that Mr Bond was not an employee of Wickham Gensol (Australia) Pty Ltd.  The document could only be taken to be a resignation of employment if the existence of an employer-employee relationship was prior-established.

Accordingly I find that Wickham Gensol (Australia) Pty Ltd is not a person entitled under section 15(1)(b) of the Patents Act to the grant of a patent upon this application.

As a consequence of my findings that Kingston Bond did not obtain the invention from Wickham Gensol (Australia) Pty Ltd and that Wickham Gensol (Australia) Pty Ltd is not a person entitled under section 15(1)(b) of the Patents Act to the grant of a patent upon this application, it follows that Wickham Gensol (Australia) Pty Ltd is not an eligible person in relation to any of the subject matter disclosed in application 676803.

Section 59 opposition

It is convenient in considering this matter to consider the claims in the form in which they are presently proposed to be amended.  It is these claims which, by agreement of the parties, were before the hearing.  Thus, where in the following a reference is made to "the present claims", "the claimed invention", and the suchlike, it is to be taken that the claims referred to are those as proposed to be amended.

Entitlement (section 59(a))

My previous findings in regard to the section 32 request also apply in respect of this ground of opposition. I therefore find that this ground of opposition has not been established

Construction of the claims

The claims are relatively straightforward in their construction.  Only three aspects of claim 1 are possibly worthy of mention.  They are:

·    it is clear from the specification that the word "bay" is used in the sense of "parking bay" and the suchlike

·    the reference to "sensors at the on ramp and/or mid bay and/or off ramp" encompasses a situation where there are only sensors at just one of the stated locations

·    the claim is limited to a vehicle wash in which the on ramp, mid bay, off ramp and collection tray(s) are demountable, and I take this to mean they are at least able to be dismantled from each other.  The Macquarie Dictionary definition of "demountable" is "able to be dismantled", and "dismantled" in turn is defined as "1. To deprive or strip of apparatus, furniture, equipments, defences, etc.: to dismantle a ship or a fortress.  2.  to pull down; take apart; take to pieces".  To construe "demountable" as simply meaning that the whole structure of the on ramp, mid bay, off ramp and collection tray(s) is portable would be to ignore the sense of "able to be dismantled" conveyed by "demountable".

Section 40

The opponent raised a number of section 40 issues in its statement of grounds and particulars, which the applicant has endeavoured to address in its proposed amendments. In my opinion there never was much to the issues set out in the statement of grounds and particulars, but in any case at the hearing the Mr Wilson indicated that in light of the amendments the opponent no longer held any significant concerns in relation to the ground of section 40.

I find that the application fulfils the requirements of section 40 of the Patents Act.

Novelty

The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).

The invention defined by present claim 1 is, as I perceive it, of the combination type, and therefore prima facie all of the integers of the combination are essential (Catnic Components v Hill & Smith Ltd (1982) RPC 183). Mr Wilson did not make any submissions on this point. I will therefore proceed on the basis that all features of claim 1 are essential.

The first item of prior art cited by the applicant in relation to novelty is UK patent GB 2239848.  This comprises two ramps (functioning as an on ramp and an off ramp on either side of a "water bath" (basically a tray containing water).  There is no mid bay having a demountable tray, and nor are there spray nozzles actuated by sensors.  However, Mr Bebb states in his evidence in support:

"Bond's invention is lacking in novelty, having regard to the UK specification and what was otherwise known at the time of making the application, particularly having regard to what was known and practiced by my company."

This is clearly the making of a mosaic in a manner which the law does not permit, as was explained by Aickin J in Minnesota Mining and Manufacturing Co. and 3M Australia Pty. Ltd. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253:

"The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them unity and then alleging that such mosaic reveals the very thing claimed.  That is an understandable, though not permissible process."

Thus the claimed invention is novel in light of this disclosure.

The second item of prior art is the two advertisements from the A to Z of Mine and Quarry Plant yearbook of 1993.  There is no evidence given of when this document was published, and the fact that it is a 1993 yearbook may well mean that it was published in 1994, which is the year in which the priority date of the present claims falls.  The lack of evidence as to publication precludes a finding that this document anticipates the claimed invention.  Even so, neither of the items of prior art disclosed in this document has a demountable tray, and while the second advertisement shows a portable vehicle wash with sprays which would seem to be demountable to some extent, that extent is not specified, and nor are the sprays disclosed as being sensor actuated.  The claimed invention is novel in light of this disclosure.

The third item of prior art cited is the promotional video.  Mr Bebb states that this was "recorded" in 1990, but no evidence is provided as to its publication.  However, the opponent has clearly relied upon it as a prior publication, and as the applicant has not contested the video's status as a published document, I will proceed on the basis that it was published before the priority date of the present claims.  The video shows five basic types of vehicle washers made by the opponent: the "Jetwash", the "Jet Clense", the "Tempest", the "Hurricane" and the "Monsoon".  The evidence of the video to some extent converges with the evidence of the three engineering drawings and the evidence of prior use arising from the actual realizations of the installations depicted in the drawing, in that these utilize the Tempest and Monsoon washers.  The evidence also indicates that there was prior use of the Hurricane washer in similar installations.  I note that the opponent has not particularized the engineering drawings or the prior use in relation to the ground of novelty.  In respect of the drawings, there is no evidence as to their publication, and so it must be presumed that that is the reason for not citing them in relation to novelty.  So far as the prior use is concerned, the rationale for not relying on this as an anticipation is less clear, but I presume that the prior use adds nothing to the disclosure in the video.

The vehicle washer arrangements described in the video include ones that appear to be sensor actuated.  They are also said by Mr Bebb to be demountable.  Since they look to me as though the washing mechanisms themselves would indeed be capable of being dismantled and reassembled elsewhere, I accept Mr Bebb's evidence in this regard.  However, the evidence also suggests that rather than having demountable on and off ramps and a demountable tray beneath the mid bay, the prior art arrangements have (non-demountable) concrete driveways and ramps.  Also, rather than having a demountable tray beneath the mid bay they appear to utilize drains in the form of channels or pipes, and possibly also a (non-demountable) pit covered by a grating.  The evidence is, however, quite vague in this aspect.

This divergence between the prior art and what is defined by the present claims was pretty much conceded by Mr Bebb in his evidence, and based on the reverse infringement test referred to above the defined invention cannot be considered to be not novel in light of that prior art.  Approached from a slightly different direction, in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra), is stated the well known dictum that:

"to anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented……….  A signpost, however clear, upon the road to the patentee's invention will not suffice."

The content of the video clearly falls far short of being of being clear and unmistakeable directions to do the present invention, and does not anticipate the present invention.

There was one further item of prior art in the opponent's evidence, namely a UK brochure for a device called "Spraywash".  This evidence was not particularized and only first appeared in the evidence in reply, so is not admissible.  However, there is no evidence of its publication (Mr Bebb merely states that the "product predates the application") and it does not disclose the "sensor" feature of the present claims, and thus it does not deprive the claims of novelty.
In light of the foregoing I find that the opposition on the ground of novelty does not succeed.

Inventive step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)   common general knowledge; or

(b)   common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

Thus an essential element in establishing lack of an inventive step is to establish the common general knowledge upon which the determination as to the existence of an inventive step is to be grounded.

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (supra):

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  The only exception to this which can arise if the tribunal has first hand knowledge of the art in question, but this is not the case here.  A precursor to determining the common general knowledge is ascertaining the sort of person who would constitute the (hypothetical) person skilled in the art.

In the present matter all the evidence for the opponent comes from a single person, Mr Bebb.  The evidence from Mr Bebb establishes that at the date of making his first declaration (20 June 1997) he was the managing director of the opponent company.  The evidence does not establish what his position, if any, was at the relevant time, that is, before the priority date of the present claims, or even if he was present in Australia.  Thus, there is no evidence to establish whether Mr Bebb was in a position to know what sort of background knowledge would have been possessed by the person skilled in the art.  On top of that must be taken into account that he is not independent of the opponent, and his evidence must be viewed in that light.  Thus I believe that very little weight can be attached to Mr Bebb's evidence going to common general knowledge (such as it is), the result being that I do not really have before me any evidence on this point having probatory value.  It must be borne in mind in this regard that, as I have already stated, the onus is on the opponent to make its case.

But in any case, there does not really appear to be much in Mr Bebb's evidence which addresses the common general knowledge anyway.  The evidence in this area seems rather to be concerned with asserting lack of innovation or invention in the subject matter of the claims, heavily coloured by ex post facto analysis.  Evidence of prior background knowledge seems confined to what was known by the opponent company.  While that evidence is significant, it does not alone provide a basis for a finding that the background knowledge in question is common general knowledge.

There is only one document which meets the requirement of being one which the person skilled in the art could "reasonably expected to have ascertained" contained in subsection 7(3) of the Patents Act, and that is the UK patent GB 2239848. That disclosure lacks the sensor actuated sequentially actuated washing apparatus at the on ramp, mid bay and off ramp defined by claim 1, and, for the reasons I have given above, I do not regard the evidence of Mr Bebb as satisfactorily establishing that form of washing apparatus to be common general knowledge in the art. Thus the present invention cannot be said to lack an inventive step in light of GB 2239848.

There is an indication in the evidence that installations such as are shown in the three engineering drawings have been installed in at least eight sites around Australia.  Even so I do not think there is sufficient evidence upon which to find that this prior use is one which the person skilled in the art could "reasonably be expected to have ascertained".  However, putting aside that difficulty for the moment, the question then arises whether it would have been common general knowledge to substitute demountable ramps, mid bay and a tray for the concrete ramps and pit arrangement of this prior art.  Mr Bebb in his evidence in support declares in relation to this that:

"For example, the concrete on and off ramps could be replaced by removable metal ramps.  In my view, each such removable or demountable component could easily be arrived at by the application of routine engineering skills to design each respective component with a view to making it demountable.  In my view, the substitution of a concrete ramp by a removable metal ramp would be, and would have been at the time of the Bond application, an obvious engineering choice.  Metal ramps are well known in the public arena for access to weigh bridges, batching plants, shipping containers etc. and were well known at the date of Bond's application."

While I am prepared to accept that demountability per se is a common general knowledge engineering technique, and that metal ramps for vehicles are also common general knowledge in most arts concerned with vehicle maintenance, the invention has more to it than this.  The vehicle washer of the present invention is demountable to the extent of having two ramps, a mid bay and a tray which are all demountable.  The opponent has not put forward any evidence to establish that such a structure is common general knowledge, either in the field of vehicle washers or some other wider field.

Accordingly I find that the evidence in this matter does not establish that the claimed invention is lacking in an inventive step.

CONCLUSION

I have found that Wickham Gensol (Australia) Pty Ltd is not an eligible person in relation to any of the subject matter disclosed in application 676803, and therefore I refuse to grant its section 32 request.

By a determination of the Commissioner dated 22 June 1998, the processing of the section 104 request was deferred pending resolution of the section 32 request. As the section 32 matter has now been resolved, I direct that the normal processing of the section 104 request be resumed.

I have found that none of the grounds of the opposition filed by Wickham Gensol (Australia) Pty Ltd have been established in respect of the claims as proposed to be amended by the section 104 request dated 4 February 1998.  However, before I can give effect to my findings by dismissing the opposition, it will be necessary for the section 104 amendment to have been allowed.  Therefore I defer a final disposition of the opposition until the section 104 amendment process has run its course.

COSTS

It is normal in matters such as these for costs to follow the event. Therefore in relation to the section 32 proceeding I award costs in accordance with Schedule 8 of the Patents Regulations against the requestor, Wickham Gensol (Australia) Pty Ltd. In the opposition, however, an extraordinary circumstance exists, namely, the extensive amendment which the applicant has been led to make to the application as a result of the opposition. Therefore, in relation to the section 59 opposition proceeding I award costs in accordance with Schedule 8 of the Patents Regulations against the applicant, Mr Kingston Bond, up to the filing of the section 104 amendment request, and thereafter I award costs in accordance with Schedule 8 of the Patents Regulations against the opponent, Wickham Gensol (Australia) Pty Ltd.

E J Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Wilson & Young, Sydney