Load and Move Pty. Ltd. v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited
[2017] APO 23
•18 May 2017
IP AUSTRALIA AUSTRALIAN PATENT OFFICE
Load and Move Pty. Ltd. v Australian Mobile Mining Equipment Systems and Accessories Pty.
Limited [2017] APO 23
Patent Application: 2012253221
Title: Cargo container
Patent Applicant: Australian Mobile Mining Equipment Systems and Accessories Pty.
Limited
Opponent: Load and Move Pty. Ltd.
Delegate: Dr W.E. Guinea
Decision Date: 18 May 2017
Hearing Date: 23 February 2017, in Canberra
Catchwords: PATENTS – section 59 – opposition to the grant of a patent – bulk
cargo container – novelty – inventive step – clarity – fair basis – priority date – manner of manufacture – opposition successful – some claims found to lack novelty – some claims found to lack inventive step under s7(2) – all other grounds unsuccessful.
Representation: Counsel for the Applicant: Ian Horak
Patent Attorney for the Opponent: Geoff Davidson and Keith Borg of Halfords IP
IP AUSTRALIA AUSTRALIAN PATENT OFFICE
Patent Application: 2012253221
Title: Cargo container
Patent Applicant: Australian Mobile Mining Equipment Systems and Accessories Pty.
Limited
Date of Decision: 18 May 2017
DECISION
The Opposition is successful. Claims 1, 2, 3, 4, 5, 6, 9, 10 and 11 were found to lack novelty.
Claims 1, 2, 3, 4, 5, 9, 10 and 11 were found to lack inventive step under s7(2) of the Act. The Applicant is given two months from the date of this decision to propose amendments that address those claims found to lack novelty and/or inventive step. Costs according to Schedule 8 of the Regulations are awarded against the Applicant, Australian Mobile Mining Equipment Systems and Accessories Pty. Limited.
REASONS FOR DECISION
Background
Patent application 2012253221 (“the opposed application”) entered national phase in Australia on 28 March 2013 from PCT application PCT/AU2012/000498.
Australian Mobile Mining Equipment Systems and Accessories Pty. Ltd. (“the Applicant”) requested examination on 28 March 2013, and the opposed application was advertised as accepted on 28 May 2015.
A notice of opposition was filed by Load and Move Pty. Ltd. (“the Opponent”) on 28 August 2015. The Opponent filed a statement of grounds and particulars (the “original SGP”) on 30 November 2015.
Evidence in support (“EIS”) was filed on 29 February 2016. This comprised:
·a statutory declaration dated 27 February 2016 by Mr Keith Borg (“Borg”) with supporting exhibits KB-1 to KB-8;
·a first statutory declaration dated 29 February 2016 by Mr Matthew Chalmers (“Chalmers1”) with supporting exhibits MC-1 to MC-22;
·a statutory declaration dated 27 February 2016 by Mr Lex Court (“Court”) with supporting exhibits LC-1 and LC-2;
·a statutory declaration dated 26 February 2016 by Mr Stephen Fleming (“Fleming”) with supporting exhibits SF-1 to SF-10; and
·a statutory declaration dated 29 February 2016 by Mr Andrew Reid (“Reid”) with supporting exhibits AR-1 to AR-9.
Evidence in answer (“EIA”) was filed on 1 June 2016. This comprised:
·a statutory declaration dated 1 June 2016 by Mr William Hunter (“Hunter”) with supporting exhibits BH-1 to BH-38.
Evidence in reply (“EIR”) was filed on 3 August 2016. This comprised:
·a second statutory declaration dated 3 August 2016 by Mr Matthew Chalmers (“Chalmers2”) with supporting exhibits MC2-1 and MC2-2.
The Opponent filed a request to amend the SGP (the “SGP”) on 29 February 2016. This amendment was allowed on 18 March 2016.
A hearing for this matter was set for 23 February 2017. The Opponent’s written submissions (the “Opponent’s written submissions”) were filed on 9 February 2017. The Applicant’s written submissions (the “Applicant’s written submissions”) were filed on 16 February 2017.
The Invention as Described
The opposed application relates to a cargo container used in the shipping or transporting of bulk materials such as ore, grain, coal etc. At [0006] of the opposed application it is stated that “the invention relates to a cargo container having side walls and a base including:
·an outer framework; and
·an inner liner to hold bulk material therein.”
The opposed application identifies a number of advantages bestowed by various embodiments of the invention, and indicates at [00026] that “traditional container design was not suitable for use with a container rotation device such as the ROTAINER® container-handling apparatus…”
10.Two principal aspects of the invention are identified in the consistory clauses at [0006] to [0017]. These are:
i. that “the outer framework of the cargo container includes a plurality of support ribs to strengthen the structure of the container for substantial weight-bearing support (at [0008]); and
ii.the upper edges of the side walls of the cargo container include a bevelled section with a gradient sloping downward toward the wall’s outer surface such that the height (from the container base) of the inner perimeter of said bevelled section is greater than the height (from the container base) of the outer perimeter of said bevelled section, the terms “upper” and “downward” being defined with respect to the container being positioned with its base residing on a horizontal support surface” (at [00014]).
11.Besides these “aspects” a variety of preferable features are apparent in the consistory clauses and also throughout the rest of the opposed application. These include, in a list that is by no means exhaustive, such things as an openwork framework, apertures in the support ribs, the support ribs being wider at the base than toward the top thereof, a removable lid, a sloping inner liner wall and the walls of the inner liner being recessed such that there is a gap between the outer surface of the wall of the liner and the corresponding outer perimeter of the outer framework.
12.The nature of the opposed application is perhaps best understood by reference to figures 1 to 8, all of which are reproduced below. Figures 1 to 6 illustrate a first embodiment, while figures 7 and 8 illustrate a second embodiment.
13.As can be seen from figures 1 to 6 the first embodiment comprises a rectangular container 10 having two longitudinal side walls 12 and two end walls 13, with the longitudinal side walls being longer than the end walls. The container also comprises an outer openwork framework 16, this being comprised of top rails 19, side rails 21, bottom rails 20, base rails 22 and support ribs 17. At [00022] it is indicated that the support ribs are in accordance with the first aspect of the invention, the support ribs preferably also having cut outs or apertures 18 which are said to reduce weight and cost while not compromising the strength of the support ribs.
14.The first embodiment also comprises an inner liner 15, which has a sloping longitudinal side wall 12a. The sloping longitudinal side wall tapers towards the liner base 14a. The liner also has end walls 13a. At [00025] it is noted that the shape of the liner assists in preventing material from being caught within the container when emptying the container.
15.The first embodiment also comprises bevelled or angled sections 23 on the upper edges of the top rails 19, this feature being commensurate with the second aspect of the invention. This assists in ensuring that any material that spills onto the edge of the container during loading falls off prior to transportation. This embodiment also comprises a number of other features, including: a removable lid 11, a lid latch 27, lid locks 28, ladders 29, hand holds 30 and twist lock pockets 31.
16.The second embodiment is largely similar to the first embodiment, but with some structural modifications. Principally the support ribs 17 extend between a sloping section 19a near the top of the container and a corresponding sloping section 20a near the bottom of the container. The support ribs (at [00030]) are said to be tapered such that they follow the shape of the inner liner 15, though I note this appears to be the case with first embodiment as well as demonstrated by figures 2 to 4. The second embodiment is also said to have load rated tyne pockets 20b, though again these appear to exist in the first embodiment (see the bottom of figure 2 where the tyne pockets are circled in red).
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The Opposed Claims
17.The opposed application as accepted ends with 13 claims, of which claim 1 is independent and claims 12 and 13 are omnibus claims. The claims are reproduced below. For convenience throughout the rest of this decision I have labelled the integers of claim 1 using the numbering system as shown below.
1. (1.1) A cargo container having side walls and a base and including: (1.2) (a) an outer framework;
(1.3) (b) an inner liner to hold bulk material therein; and (1.4) (c) a plurality of twist lock pockets;
(1.5) the upper edges of the side walls including a bevelled section, the gradient of which slopes downwardly from the inner perimeter to the outer perimeter of said bevelled section, the terms "upper" and "downwardly" being defined with respect to the container being positioned with its base residing on a horizontal support surface; and
(1.6) wherein at least one of the walls of the inner liner is recessed such that there is a gap between the outer surface of that wall of the inner liner and the outer perimeter of the corresponding section of the outer framework of the container.
2. A cargo container according to Claim 1, wherein the outer framework is an openwork framework.
3. A cargo container according to Claim 1 or Claim 2, said container being substantially rectangular with the side walls comprising two longitudinal side walls and two end walls, and wherein, for each of the end walls, there is a gap between the outer surface of that end wall of the inner liner and the outer perimeter of the corresponding section of the outer framework.
4. A cargo container according to any one of Claims 1 to 3, wherein the outer framework includes a plurality of support ribs to strengthen the structure of the container for substantial weight-bearing support.
5. A cargo container according to Claim 4, wherein the support ribs are substantially perpendicular to the base.
6. A cargo container according to Claim 4 or Claim 5, wherein each support rib is wider at its base than toward the top thereof, to thereby provide increased load- bearing capacity of the container where required, toward the base of the container (the "base" and "top" of the support rib being defined with respect to the container being positioned with its base residing on a horizontal support surface, with the "base" of the support rib corresponding to the "base" of the container).
7. A cargo container according to any one of Claims 4 to 6, wherein some or all of the support ribs have at least one cut-out portion which form one or more apertures in the support rib.
8. A cargo container according to Claim 7, wherein there are three apertures in each support rib.
9. A cargo container according to any one of Claims 4 to 8, wherein the support ribs connect bottom rails at the base of the outer framework to top rails at the top of the outer framework (the "base" and "top" of the outer framework being defined with
respect to the container being positioned with its base residing on a horizontal support surface).
10. A cargo container according to any one of Claims 4 to 8, wherein a corresponding pair of support ribs on either side of the container is connected by an interconnecting base rail passing beneath the base of the liner such that the combination of support ribs and interconnecting base rail forms a substantially U- shaped element which provides support to both the side walls and base of the inner liner.
11. A cargo container according to any one of Claims 1 to 10, being an ISO container.
12. A cargo container, which optionally includes a removable lid, substantially as described herein with reference to the accompanying Figure 5 together with one or more of accompanying Figures 1 to 4, 7 and 8.
13. A cargo container according to any one of Claims 1 to 11, which optionally includes a removable lid, substantially as described herein with reference to the accompanying drawings.
The Opposition
18.In the SGP the Opponent pursued grounds under:
·s18(1)(a) – the invention is not a manner of manufacture;
·s18(1)(b)(i) – the invention as claimed is not novel;
·s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;
·s18(1)(c) – is not useful;
·s18(1)(d) – the invention was secretly used in the patent area before the priority date of the claims;
·s40(2)(a) – the specification does not describe the invention fully; and
·s40(3) – the claims are not fairly based on matter described in the specification and that the claims are not clear.
19.Notably some of the particulars relating to the grounds under s18(1)(b) and s18(1)(d) are contingent upon assertions by the Opponent that the claims are not entitled to their earliest priority date.
20.In contrast to the SGP, only grounds under s18(1)(a), s18(1)(b)(i), s18(1)(b)(ii) and s40(3) (clarity and fair basis) have been specifically pursued in the Opponent’s written submissions. The Opponent also maintained that the claims were not entitled to their earliest priority date. Consequently I have confined this decision to the grounds of clarity, fair basis, novelty, inventive step and manner of manufacture.
Onus of Proof
21.As examination was requested prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the Opponent will only succeed if they can convince the Commissioner that it is
clear or practically certain that the patent is invalid; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of
Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v
Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].
The Skilled Addressee
22.The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
23.I consider that the skilled addressee is a person or team of persons involved in or interested in the design, manufacture and the use of cargo containers for handling bulk materials.
24.At the hearing and in the written submissions there was some disagreement amongst the parties at to which of the expert declarants could better represent the notional skilled addressee. At page 2 of their written submissions the Opponent asserted that their experts (Mr Reid, Mr Chalmers, Mr Court and Mr Fleming) are able to provide evidence at to what the skilled addressee knew in preference to the Applicant’s expert, the Opponent stating that Mr Hunter “…has no direct experience in the field of bulk material cargo containers…” (Opponent’s written submissions at page 2).
25.The Applicant at [15] to [18] of their written submissions proffers Mr Hunter as the skilled addressee. Questions were also raised as to the ability of the Opponent’s experts to represent the skilled addressee, the Applicant asserting that: Mr Reid does not appear to be wholly independent from the Opponent ([20]); Mr Court has no qualifications in the field ([21]); that Mr Chalmers is employed by an entity related to the Opponent and that Mr Borg is a patent attorney for the Opponent ([23]).
26.I will briefly consider the issues raised by the parties with regard to the skilled addressee below.
27.With regard to Mr Hunter it is apparent from his Curriculum Vitae at BH-1 that Mr Hunter has extensive experience in the engineering and design of a wide variety of mechanical applications including consumer goods, transport, machinery and scientific instruments. It is true, as pointed out by the Opponent, that Mr Hunter has little direct experience with regard to the manufacture or use of bulk cargo containers, the closest Mr Hunter coming to this being the design of a lightweight container for airline freight (BH-1, bottom of page 4). Despite this I consider that Mr Hunter, by virtue of his extensive engineering experience and knowledge, is at least able to represent what a skilled addressee would do in the design and manufacture of a cargo container for bulk materials.
28.It is apparent that Mr Chalmers (Chalmers1 at [9] and [10]), Mr Fleming (Fleming at [3]) and Mr Reid (Reid at [3] to [8]) have at least several years’ experience in the design and
manufacture or use of bulk cargo containers. It follows that they are in a position to represent the views of the skilled addressee.
29.With regard to Mr Court he does not appear to have direct experience in the design or manufacture of bulk cargo containers. However it is apparent from Court at [3] that he would be very familiar with bulk cargo containers through his experience in installing material handling apparatus and as a crane operator. I therefore consider that Mr Court is able to provide information on what features were known amongst bulk cargo containers.
30.Although he has qualifications as a mechanical engineer, it is apparent from his declaration that Mr Borg is not in a position to represent the skilled addressee. Commensurate with this I note that at the hearing Mr Davidson indicated Mr Borg gave evidence in a factual capacity, rather than as an expert witness.
31.Where the declarants disagree on a factual point that I intend to rely upon, it will be up to me to weigh each declarant’s evidence accordingly in view of the particular context concerned. Similarly it will be up to me, as the decision maker, to determine if any particular part of any of the declarant’s evidence that I intend to rely upon is tainted by hindsight or bias, and to weigh such evidence accordingly.
Claim Construction
32.I will now construe claims 1, 2, 3, 4 and 6, noting that the construction of these claims, and in particular claim 1, is crucial to this decision. For convenience I will also construe claims 12 and 13, these being omnibus claims. Where appropriate I will also consider the construction of terms put forward by the parties, but ultimately rejected in view of the construction I have taken. While construction of the claims will have a direct bearing on the clarity arguments put forward by the Opponent I will delay consideration of the Opponent’s clarity arguments until later in this decision.
Rules of Construction
33.Rules of construction have been conveniently summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. These include, from (Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc [1988] FCA 399), cited at [249] of Pfizer:
“1. The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2. It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.
4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
6. A patent specification should be given a purposive construction rather than a purely literal one.
7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”
34.Three additional principles were also cited in Pfizer (at [250]) from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:
“1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).
2. The Court should avoid too technical or narrow a construction of claims.
3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”
Construction of Claims 1, 2, 3, 4, 6, 12 and 13
Claim 1
35.(1.1) A cargo container having side walls and a base and including:
I take this to define a container or receptacle for carrying or transporting goods having side walls and a base. In view of item 1.3 I take the cargo container to be one that is intended for use with bulk materials.
(1.2) (a) an outer framework;
I take this to mean that the structure that supports the cargo container (“framework”) is provided on the external regions of the cargo container.
(1.3) (b) an inner liner to hold bulk material therein; and
I take this to mean that there is a liner forming part of the cargo container and which is intended to contain bulk material.
(1.4) (c) a plurality of twist lock pockets;
It is apparent from the evidence that a “twist lock pocket” would be understood by the skilled addressee to mean a corner casting or fitting for a cargo container having an aperture for the purposes of receiving corresponding twist locks for transporting or lifting the container and/or for the tipping or rotation of the container for the discharge of the container contents; see Chalmers1 at [56c)] and [56e)], Fleming at [17] and [19] and Reid at [13].
(1.5) the upper edges of the side walls including a bevelled section, the gradient of which slopes downwardly from the inner perimeter to the outer perimeter of said bevelled section, the terms "upper" and "downwardly" being defined with respect to the container being positioned with its base residing on a horizontal support surface; and
Firstly I note the recital of “the upper edges of the side walls including a bevelled section…” (emphasis added). I take this to mean that every side wall of the container comprises an upper edge with an inclined surface, noting that a reference to “the side walls” includes every wall that a skilled addressee would consider to be a side wall. In taking this construction I note that I take “the upper edges” to refer to the upper or higher margin or edge of each of the side walls. This means that each upper edge of each side wall need only comprise a bevelled section, not that the entire upper edge of each side wall is a bevelled section.
I take it that the inclined or bevelled section slopes downward from the border or perimeter of the inclined or bevelled section situated further towards the inner surface of the side wall to the border or perimeter of the inclined or bevelled section situated further towards the exterior surface of the side wall. In coming to this construction I note that it is not immediately apparent what is meant by the “inner perimeter” as opposed to the “outer perimeter” of the inclined or bevelled section. However in the absence of any explicit reference point, I consider that the interior and the exterior surfaces of the side wall concerned provide suitable reference points for determining the “inner perimeter and “outer perimeter” of the inclined or bevelled section. I note that this is the construction that has been taken at [00014] and [00036] the opposed application, and in figure 4.
It is apparent to the skilled addressee that the “upper” and “downward” directions are defined by reference to the container base or bottom resting on a flat surface, as recited in the claim.
(1.6) wherein at least one of the walls of the inner liner is recessed such that there is a gap between the outer surface of that wall of the inner liner and the outer perimeter of the corresponding section of the outer framework of the container.
I take this to mean that one or more of the walls of the inner liner are offset from the outer perimeter of the corresponding section of the outer framework such that there is a gap or interval between the wall(s) of the inner liner and the outer perimeter of the corresponding section of the outer framework.
36.The Applicant has submitted, at [34] to [39] of their written submissions, that the terms “cargo container” and “framework” should be given a particular construction based on Mr Hunter’s interpretation of these terms. In particular the Applicant asserts that the cargo container is restricted to “…a particular type of cargo container which: (a) is for the handling of bulk materials; (b) is for rotation (and subsequent emptying) by a container rotation device; and (c) must necessarily have a removable lid fitted to it” (Applicant’s written submissions at [36]). These assertions are virtually identical to Mr Hunter’s interpretation of the term “cargo container” at [48] of Hunter.
37.In a similar vein, the Applicant’s interpretation of “framework”, at [38] of their written submissions, is a verbatim recital from Mr Hunter at page 3 of BH-20:
“The term "outer framework" for a bulk commodities container needs to be interpreted with the aid of the opposed Patent specification. In the latter, it is clear that the "outer framework" is integrally connected with and structurally supports the liner of the container during handling and rotation.” (emphasis in original)
38.It is apparent that Mr Hunter has approached construction of claim 1 by glossing in additional limitations from the description which are simply not present, either explicitly or implicitly, upon a fair reading of the same. Consequently it is clear why there are differences between my construction of claim 1 and Mr Hunter’s, and why I cannot accept Mr Hunter’s construction where it diverges from my own. Notably Mr Hunter persistently approaches construction in a similar manner throughout his analysis of the prior art in the annexures to his declaration, to which I will make reference where appropriate.
39.The Applicant has also suggested at [45] of their written submissions that a plain English reading of “upper edges of the side walls including a bevelled section” means that the bevelled section is on the side walls and not on another component such as a rail. I see no reason to read such a limitation with respect to the bevelled section, as it is perfectly reasonable to believe that a rail can comprise part of a side wall. Indeed it is apparent that the upper rail 19 in figures 1 to 6 of the opposed application (best viewed by reference to figures 3 and 4) is bevelled as per the claim and indeed forms part of the side wall.
Claim 2
40.A cargo container according to Claim 1, wherein the outer framework is an openwork framework.
The Macquarie Dictionary Online, 2017, Macquarie Dictionary Publishers, an imprint of Pan Macmillian Australia Pty Ltd, (“Macquarie Dictionary Online”) defines “openwork” as “any kind of work, especially ornamental, as of metal, stone, wood, embroidery, lace, etc., showing openings through its substance.” I therefore take claim
2 to require that the framework has openings or spaces between the various members that constitute the framework.
Claim 3
41.A cargo container according to Claim 1 or Claim 2, said container being substantially rectangular with the side walls comprising two longitudinal side walls and two end walls, and wherein, for each of the end walls, there is a gap between the outer surface of that end wall of the inner liner and the outer perimeter of the corresponding section of the outer framework
I take claim 3 to mean that the cargo container is substantially rectangular with two longitudinal side walls and two end walls, and for each of the end walls the end walls of the liner are offset from the outer perimeter of the corresponding section of the outer framework in a similar manner as defined in claim 1.
Claim 4
42.A cargo container according to any one of Claims 1 to 3, wherein the outer framework includes a plurality of support ribs to strengthen the structure of the container for substantial weight-bearing support.
I take claim 4 to mean that the outer framework has several support ribs or members that provide support to the container so that it is suitable for accommodating substantial weight or mass.
Claim 6
43.A cargo container according to Claim 4 or Claim 5, wherein each support rub is wider at its base than toward the top thereof, to thereby provide increased load-bearing capacity of the container where required, toward the base of the container (the “base” and “top” of the support rib being defined with respect to the container being positioned with its base residing on a horizontal support surface, with the “base” of the support rib corresponding to the “base” of the container).
I take claim 6 to mean that the support ribs or members are wider towards the base of the container than at the top, resulting in comparatively greater support for weight bearing towards the base of the container.
Claim 12
44.Claim 12 reads as follows:
A cargo container, which optionally includes a removable lid, substantially as described herein with reference to the accompanying Figure 5 together with one or more of accompanying Figures 1 to 4, 7 and 8.”
45.The essential features of the invention are apparent from the consistory clauses at [0006], [0008] and [00014] of the opposed specification, as well as from the detailed description at [00022] and [00036]. These features are commensurate with features 1.1, 1.2, 1.3 and 1.5 of claim 1. Figure 5 illustrates a form of features 1.2 and 1.3 such that the inner liner is offset or spaced by an interval or gap from the outer perimeter of the outer framework. Consequently I consider that claim 12 also comprises feature 1.6 of claim 1. The specified form of the invention in figure 5 also shows that the outer framework comprises a plurality of twist lock
pockets, and I therefore consider that claim 12 also comprises feature 1.4. This means that the scope of claim 12 at least includes all the features of claim 1. As the lid is recited as being optional I need not consider it in construing claim 12.
46.However claim 12 also refers to figure 5 together with one or more of figures 1 to 4, 7 and 8. This presents some constructional difficulties as (apparent from [00018] of the opposed specification) figures 1 to 4 all exemplify the same container of the first embodiment, while figures 7 and 8 exemplify the same container of the second embodiment. In practical terms I take this to mean that a reference to any one of figures 1 to 4 will import the requisite features from the remainder of figures 1 to 4, while a similar consideration applies to figures 7 and 8. Similarly a reference to one of figures 1 to 4 and to one of figures 7 to 8 will, in effect, import all the requisite features of all of figures 1 to 4, 7 and 8 as appropriate. Consequently I consider that in reality claim 12 recites three possible alternatives: a reference to figure 5 when considered with figures 1 to 4; a reference to figure 5 when considered with figures 7 and 8; and a reference to figure 5 when considered with figures 1 to 4, 7 and 8, this last alternative comprising a combination of the first and second embodiments.
47.A final difficulty to consider is that figure 5 is explicitly stated as referring to the same container as figures 1 to 4. This begs the question as to how much of the first embodiment is imported into the second embodiment when reference is only made to either or both of figures 7 and 8. In practical terms I consider that the specific form of the essential features of the invention as illustrated in figure 5 are imported into the second embodiment, but nothing else, this being by virtue of the specific reference to figure 5 in the claim.
48.Upon taking the above into account it is clear that claim 12 defines a specific form of the outer framework comprising: a plurality of vertical rib members that each comprise three apertures (as can be seen for example on figures 2 and 7) which have a varied thickness profile that follows the shape of the inner liner, such that the rib members are wider at their base than at the top; the rib members being substantially perpendicular to the base; the bottom rail also comprising two tyne pockets; the inner liner has a profile that tapers towards the base such that it is narrower near the base than at the top of the container; the outer framework is an openwork framework; the container is substantially rectangular with two longitudinal side walls and two end walls, with a gap between the outer surface of that end wall of the inner liner and the outer perimeter of the corresponding section of the outer framework; and the rib members connect bottom rails at the base of the outer framework to top rails at the top of the outer framework.
49.The features I have discussed at [45] and [48] are common to all the potential forms of the container encompassed by claim 12. From these passages it is apparent that claim 12 encompasses all the features of claims 1, 2, 3, 4, 5, 6, 7, 8 and 9, with the addition of tyne pockets in the bottom rail.
50.Other additional features will be introduced depending on the different forms of the container falling within the scope of claim 12, for example whether one considers the figures relating to the first embodiment (figures 1 to 4) or the second embodiment (figures 7 and 8) or a combination of the two embodiments. For convenience I do not consider it necessary to enumerate these features here, though I will consider these features if this proves necessary in relation to novelty and inventive step.
Claim 13
51.Claim 13 reads as follows:
A cargo container according to any one of Claims 1 to 11, which optionally includes a removable lid, substantially as described herein with reference to the accompanying drawings.
52.Broadly speaking it is apparent that claim 13 will at least comprise all the features of claim 1. Via reference to the figures I consider that claim 13 will also at least comprise the features of claim 12 that I identified at [49] of this decision. Similar to claim 12, I again consider it convenient to not enumerate all the potential features encompassed within claim 13 at this point in time, but will however revisit such features if this proves necessary in relation to novelty and inventive step.
Clarity
53.The statutory basis for clarity is given at s40(3) of the Patents Act 1990 (the “Act”) which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (“Austal Ships”):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, commonsense manner… Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection...”
54.Where terms in claims are unclear, recourse may be made to the specification to resolve the ambiguity; see Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14]; (1974) 130 CLR 461 at 479 (“Interlego”):
“If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification…”
The Opponent’s Clarity Arguments
55.In their written submissions, at pages 6 to 9, the Opponent asserted that claims 1, 2, 3, 4 and 6 are not clear. I will consider these arguments below.
Claims 1 and 3
56.In their written submissions the Opponent takes issue with respect to the clarity of feature 1.6 from claim 1, with the same argument being put with respect to claim 3 as well. In particular the Opponent states, at page 6, of their written submissions that:
“Firstly, it is noted that this feature may refer to any of the side walls of the container, e.g. either the longitudinal side walls or the end walls.
At least one wall of the inner liner is “recessed” – but there is no definition of what it is recessed in relation to, and no reference to this term in the specification other than at (amended) paragraph [00032] which recites in essentially the same terms as the claim so does not assist.
The liner wall is recessed such that there is a gap between the outer surface of the liner wall and the outer perimeter of the outer framework.
If it is assumed arguendo that this ‘gap’ refers to an offset or displacement between the outer wall of the liner and the outer perimeter of the framework, then it must be noted that this is a consequence of there being an inner liner and an outer framework, i.e. the standard container
construction as defined in the preamble to claim 1. It is not caused by the liner wall being “recessed” as required by the claim.” (emphasis in original)
57.It should be apparent from my construction of claims 1 and 3 above that I do not consider feature 1.6, or the recital of similar features in claim 3 to be unclear. I also note that, to the extent there is any doubt as to the interpretation of feature 1.6, this can be easily resolved by recourse to the specification as per Interlego. On doing so the offset of the inner liner with respect to the outer perimeter of the outer framework is apparent on all the figures, but especially so on figures 4 to 6, with no other potential interpretation being supported by the opposed application.
58.I note that the Opponent has supported their contentions of lack of clarity based on apparent confusion amongst the expert declarants as to the nature of feature 1.6. However it is clear that most of the expert declarants were able to arrive at a construction of feature 1.6 commensurate with my own construction (see Court at [24], Fleming at [54], Reid at [23] and Hunter at [56]), even if there were some difficulties for Mr Court, Mr Fleming and Mr Reid along the way. However these difficulties for the expert declarants appear to lie in the simplicity of what feature 1.6 is defining, as best illustrated by Reid at [23]:
“My Comments – In the context of the claim section only of the patent specification, I consider the expression to be nonsensical. Taken literally, it may mean nothing more than that the liner is offset from the exterior of the framework by the thickness of the supporting ribs. But as this is present in the standard construction of virtually every bulk material cargo container, of either of the two general types I mention above, I consider that the patent specification must be intending to recite something more than this.” (emphasis in original)
This simplicity would seem to have induced some of the declarants, perhaps not being familiar with the rules of construction, to consider that the feature must mean more than it is on a fair reading of the claims.
59.Mr Chalmers, for his part, (Chalmers1 at [12] and [13]) arrives at various constructions of feature 1.6 that do not include the construction I have taken above. However it is apparent from Chamlers1 at [12] that Mr Chalmers, in construing feature 1.6, has adopted an interpretation of “gap” and “recessed” that pays no attention to the use of these terms in the context of the other elements of feature 1.6:
“The specification and claims make reference to “a gap”, and the expression “is recessed such that there is a gap” is also used. The Macquarie Dictionary definition of the word “GAP” has a primary definition of “a break or opening, as in a fence, wall, or the like; breach” and a secondary which read: “a vacant space or interval”. By these ordinary meanings of the word “gap” I would expect to be able to see a void or vacant space in the drawings around the rim of the container illustrated in the patent application, as the patent application at paragraph [00033] instructs that the “gap” assists “in preventing material being unloaded from the container from coming into contact with the arms of the ROTAINER container –handling apparatus.” Notwithstanding that I am unable to see a “gap” or void at this location, I am unable to determine from the description and drawings of the patent application, how the liner could be recessed to provide such a “gap” or void or vacant space.”
Consequently I am unable to agree with Mr Chalmers’ construction, in view of my own and in view of the fact that the other declarants were ultimately able to arrive at a similar construction to my own.
60.It follows from the above, and my earlier construction of claims 1 and 3, that I am not satisfied that claims 1 and 3 are lacking in clarity.
Claim 2
61.At page 8 of their written submissions the Opponent suggests that there are a variety of different meanings attributed to “openwork framework” by each of the declarants, thereby leading to lack of clarity. In reality the constructions adopted by most of the declarants (see Reid at [31], Hunter at [60], Fleming at [56] and Court [25]) are in fact merely different ways of expressing the construction I have come to above. In contrast Mr Chalmers considers that there are variety of possible interpretations for an “openwork framework” at [14] of Chalmers1:
“In regards to the use of the word “openwork” in the specification and claims, with claim 2 reading on from claim 1, the framework is indicated as being “openwork”. The Macquarie Dictionary defines “openwork” as being “any kind of work, especially ornamental, as of metal, stone, wood, embroidery, lace, etc., showing openings through its substance”. As items
a) and b) from paragraph 13 (of Chalmers1) are voids or openings which are commonly known in the construction of bulk material containers, I can only assume that the “openwork” feature can only be referring to the apertures in the ribs used in the construction of the framework, and or the openings as respectively mentioned in items d) and c of paragraph 13 above. If the “openwork” framework is not a reference to items c) and d), then it will be those of items a) and b) from paragraph 13, yet items a) and
b) are openings in framework which are present on practically all bulk
material containers where ribs are present in the walls.” (italics added for context)
62.I consider that Mr Chalmers’s considerations are not commensurate with the established rules of construction, in particular his apparent emphasis on seeming to make something more of an “openwork framework” than would ordinarily be understood due to the apparent ubiquity of this in the art.
63.It follows from the above, and my earlier construction of claim 2, that I am not satisfied that claim 2 is lacking in clarity.
Claim 4
64.At pages 8 to 9 of their written submissions the Opponent argues that claim 4 is not clear. These arguments are based on Mr Chalmers’s difficulties with claim 4 at [17] of Chalmers1:
“Concerning claim 4, I note that it has the expression “to strengthen the structure of the container for substantial weight–bearing support” has been used. I am unable to determine from the claim what “substantial weight –bearing support” is supposed to mean. Such intermodal containers, and bulk material containers are routinely designed for payloads of from 22000 kilograms to 45000 kilograms. This is done by routinely modifying existing container designs by increasing frame cross sections, size and strength of frame components.”
65.It would seem that Mr Chalmers difficulty with claim 4 results from the fact that no precise weight limit has been enumerated. However given the nature of bulk cargo containers I consider that a skilled addressee would have no difficulty in ascertaining what is a substantial weight in the context of the claim and in ensuring the support ribs provide sufficient strength to the container to allow for support of this weight. I also note that none of the other declarants had any difficulty in understanding claim 4.
66.It follows from above, and my earlier construction of claim 4, that I am not satisfied that claim 4 is lacking in clarity.
Claim 6
67.At page 9 of their written submissions the Opponent argues that claim 6 is not clear as “it is not clear what the comparison point for the increased load bearing capacity is, noting that the rib may be designed to any width to start with.” The Opponent apparently cites Chalmers1 at [18] to [19], Hunter at [68] to [73] and Chalmers2 at [21] to [24] in support of their clarity contentions.
68.I consider that the Opponent is failing to take into account the allegedly unclear features from claim 6 when read in the context of claim 6 as a whole. When one does so it is apparent that the width of the support ribs are wider at the base in comparison to the top so as to allow for increased load bearing towards the base of the container.
69.I also note that while Mr Chalmers had some difficulties with claim 6 (Chalmers1 at [18]) these seem to stem from not knowing the direction in which the ribs are wider. However it was clear that Mr Chalmers was able to appreciate the meaning of the claim by recourse to the specification. His remaining difficulties lie with criticisms as to whether having wider ribs
would increase the strength of the rib, as this would also depend on other factors. Similar criticisms are made by Mr Fleming at [58] of his declaration, where he points out that “…the overall load-bearing capacity, whether at the base or elsewhere is largely dictated by the top and bottom rails which are responsible for the ultimate strength of the container”.
70.While I have no reason to doubt the legitimacy of these points, they do not of themselves give rise to difficulties in interpreting claim 6. Claim 6 is merely making a requirement about the width of the ribs in the context of providing increased support towards the base of the container. In this regard it is not intended, nor required to be, a complete engineering solution with respect to the structural integrity of the ribs and/or the container, as apparently required by Mr Chalmers and Mr Fleming. Though not directly pertinent to the issue of clarity, I note that neither of Mr Fleming and Mr Chalmers has suggested that it is beyond the ability of the skilled addressee to implement the features of claim 6 so as to create a usable bulk cargo container.
71.It follows from the above, and my earlier construction of claim 6, that I am not satisfied that claim 6 is lacking in clarity.
Clarity – Conclusion
72.I am not satisfied that claims 1, 2, 3, 4 and 6 are lacking in clarity. The Opponent has been unsuccessful in making out this ground of opposition.
Fair Basis
73.The statutory basis for fair basis is given at s40(3) of the Act, which states that the claims must be fairly based on the matter described in the description. The requirement for the claims to be fairly based has been treated by the authorities as a requirement for consistency between the invention outlined in the description and the invention as claimed in the claims, as noted in Kimberly-Clark Australia Pty. Ltd. v Arico Trading International Pty. Ltd. [2001] HCA 8 at [25] (“Kimberly-Clark”) at [15]:
“... where the issue is one under s 40(3) of ''fair-basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly ...”
74.This requirement for consistency between the invention claimed and the invention as described has been expressed in the following terms in Rehm Pty Ltd v Websters Security Systems and Others [1988] FCA 162 at [54]; 81 ALR 79 at 95 (“Rehm”), this being endorsed by their Honours in Lockwood Security v Doric Products [2004] HCA 58 at [69] (“Lockwood”):
“…the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
75.Notably it is perfectly acceptable for drawings alone to provide fair basis for the features of a claim; see Leonardis v Sartas No 1 Pty Ltd and Another [1996] FCA 449; (1996) 67 FCR 126; (1996) 35 IPR 23 at 35 (“Leonardis”).
The Opponent’s Fair Basis Arguments
76.These are presented at page 9 of the Opponent’s written submissions. Here the Opponent asserts that “there is no recessing of the liner described in the specification which causes a gap achieving the objective of preventing material contacting the arms of the container handling apparatus”. This argument is based on a flawed construction of feature 1.6 of claim 1, which does not require in any sense that the gap prevents material contacting the arms of the container handling apparatus.
77.Contrary to the Opponent’s assertions, I consider that there is real and reasonably clear disclosure with respect to my construction of feature 1.6 from figures 4 and 5. I have provided annotated copies of these figures below, which demonstrate that the walls of the inner liner (highlighted in green) are offset with respect to the outer perimeter of the corresponding sections of the outer framework (highlighted in red) in the manner defined in claim 1.
Fair Basis – Conclusion
78.I am not satisfied that the claims lack fair basis. The Opponent has been unsuccessful in making out this ground of opposition.
Priority Date (External Fair Basis)
79.The issue of priority dates is dealt with in s43 of the Act, which requires that each claim of a specification must have a priority date. Importantly s43(2) indicates that the priority is either the filing date of the specification or as provided for by the Regulations. Notably r3.12 provides for determining the earliest priority date of claims, with r3.12(b) reading as follows:
“if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed”.
80.It has been accepted by the authorities that the recital of “fairly based on matter disclosed” in r3.12 is commensurate with “real and reasonably clear disclosure” as endorsed by the High Court in Lockwood, as indicated in Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21 (“Multigate”) at [188]:
“The parties agreed that whether a claim is “fairly based on matter disclosed” depends upon whether there was “a real and reasonably clear disclosure” in the ancestor (cf Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 (Lockwood No 1) at [69] per Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ). We have proceeded on the basis that this is the practical test to be applied.”
Although their Honours in Multigate were considering r3.12(c), the language “fairly based on matter disclosed” is identical to that in r3.12(b) and as such is apposite to r3.12(b).
81.There are some subtle differences between “fair basis” in s40(3) and “fair basis” as used in r3.12, due to differences in the precise language used in each of s40(3) and r3.12. These differences have been discussed in Multigate at [189] (and references therein), however as nothing in the present opposition turns on these differences I do not consider it necessary to go into these for the purposes of this decision.
The Opponent’s Priority Date Arguments
82.The Opponent has argued that the priority date of the claims is 28 April 2015, rather than 9 May 2011. This is said to be due to the inclusion of feature 1.6 in the claims, as presented at page 9 of their written submissions:
“The first time that the claimed feature of “at least one of the walls of the inner liner is recessed such that there is a gap between the outer surface of that wall of the inner liner and the outer perimeter of the corresponding section of the outer framework of the container” was introduced was 28 April 2015.
We submit that this is the priority date of all claims.” (emphasis in original).
83.The Opponent also provides some exposition on the sequence of intervening amendments made prior to the present claims at pages 3 to 5 of their written submissions. As pointed out by the Applicant at [58] of their written submissions, the correct comparison is between the claims as they stand and the disclosures of the priority documents. Consequently the Opponent’s ruminations on the sequence of the amendments are not relevant in determining whether the claims are entitled to take priority from the provisional applications.
84.The opposed claims nominally receive their earliest priority date via two provisional applications, being AU 2011901731 and AU 2011901729. I note that both provisional documents were amended to correct an apparent typographical error with regard to a gap between the liner and the outer framework to approximately 300mm or 350mm rather than 3500mm as in the provisionals as originally filed. Both in written submissions and at the hearing, the Opponent has asserted that this amendment cannot be considered for the purposes of determining priority dates by virtue of the wording of r3.13C(2). It is not apparent that this amendment would have any effect in determining the priority date of the claims as they stand,
however in any case r3.13C(2) was introduced as part of the RTB reforms and as such does not apply to the opposed application. Consequently the correct regulation is r3.12 as in force prior to 15 April 2013, as discussed above.
85.Both provisionals were filed on 9 May 2011. Inspection of the provisionals indicates that figures 4 and 5 from each provisional are identical to figures 4 and 5 of the opposed application. Given the discussion above with regard to (internal) fair basis, it is apparent that there is a real and reasonably clear disclosure in the provisionals of the subject matter at the heart of the Opponent’s priority date assertions.
86.There is no contention by the Opponent that any of the other features of the claims, besides feature 1.6, are not entitled to the earliest priority date, nor do I consider that any of the other features of the claims are not entitled to the earliest priority date. In conclusion I am not satisfied that the priority date of the claims is invalid.
Novelty
87.The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“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 anticipation would, if the patent were valid, constitute an infringement.”
88.In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated ... 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.”
89.In circumstances where the question of novelty is considered in view of doing an act (“prior use”) the authorities have indicated that the test for novelty is the same as in Meyers Taylor, as per Von Doussa J in Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 (“Old Digger”) at [152]:
“In order to deprive a patented invention of novelty, the use relied upon must be a use in public which discloses to a person skilled in the relevant art all the essential features or integers of the invention the subject of the challenged patent. The information must enable the notional skilled addressee at once to perceive and understand, and be able to practically apply the discovery, without the necessity of making further experiments: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71 at 75. The
use must be such that the public were free to do whatever they wished with the information derived from that use. A disclosure to a person under an obligation of confidence, who is not free in law or equity to make use of the information acquired for their own purposes, is not use in public: Fomento Industrial SA, Biro Swan Ltd & Anor v Mentmore Manufacturing Co Ltd [1956] RPC 87at 99 per Lord Evershed.”
90.I also note that alleged prior uses need to be strictly proved as per Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 (“Aspirating IP”) at [199] and [200]:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
The Opponent’s Novelty Submissions
91.In their written submissions, at pages 12 to 13, the Opponent asserts that the claims lack novelty in view of a number of documents. The Opponent has also placed into evidence a large number of photographs that relate to purported prior uses that allegedly deprive the claimed invention of novelty, and the Opponent has generally referred to these in written submissions and at the hearing. I will initially consider novelty in view of the documents pressed and then consider the alleged prior uses.
Novelty in View of Documentary Evidence
92.The principal documents pressed in written submissions were: US 7240936 (D1); JPH 07061760 (D2); Xlercoil (or Doric) Brochure (D3); WO 2012139156 (D4) and AU 2010100649 (D5). At the hearing Mr Davidson indicated that the Opponent’s arguments in relation to these documents could be taken as per the novelty tables in MC-8. Later in the hearing Mr Davidson expressly abandoned D2 for the purposes of novelty.
93.The Opponent also pressed lack of novelty in view of additional documents (labelled D7 to D12). However the use of these documents was predicated on an earliest priority date of 28 April 2015, when in fact I have established that the earliest priority date for the claims is 9 May 2011. I observe that all of D7 to D12 comprise registered designs that were lodged after the earliest priority date. It follows that I will give no further regard to any of these documents.
94.Accordingly I will now consider the novelty of the claims in view of each of the D1 and D3 to D5. I note that both the Opponent and the Applicant have provided their own novelty tables. I will initially consider claim 1 and will only consider the remainder of the claims if this proves necessary with respect to each of the documents.
US 7240936 (D1)
95.D1 deals with a lid locking device for engagement (and locking) of a lid with a bulk cargo container; see the abstract and column 1, lines 13 to 15. Consequently D1 primarily deals with the mechanism used to achieve the engagement of the lid with the bulk cargo container. However in doing so a bulk cargo container as such is disclosed in D1, which is perhaps best illustrated by figures 1, 3 to 6 and 8A to 8B. I have reproduced these figures below.
96.As can be seen from the figures, D1 discloses a cargo container 10 comprising side walls 24A, 26A, a base (unlabelled), an outer framework 27, an inner liner to hold bulk material 20 (see also column 1, lines 13 to 15) and a plurality of twist lock pockets (the upper twist lock pockets being circled in red on figure 1).
97.It is apparent from my discussion at [95] that D1 discloses many of the features of claim 1. However I do not consider that D1 discloses feature 1.5, for reasons that I will discuss further below.
98.Notably feature 1.5 recites “the upper edges of the side walls including a bevelled section…” (emphasis added). I take this to mean that every side wall of the container comprises an upper edge with a bevel, noting that a reference to “the side walls” includes every wall that a skilled addressee would consider to be a side wall, as observed earlier in my construction of claim 1. I note the distinction in D1 where there are “end walls” 26A and “sidewalls” 24A; however it is clear that the language of claim 1 is referring to all sidewalls in a general sense without distinction between “end walls” or “sidewalls”. This is further reinforced by the language of claim 3 which indicates that the side walls comprise two longitudinal side walls and two end walls.
99.Having made this observation, it is apparent that D1 does disclose bevelled edges as per feature 1.5, but only explicitly for sidewalls 24A. This is apparent from figures 8A and 8B which comprise cross sections through the toprails 27 of the side walls 24A. In figures 8A and 8B it is clear that the top rails 27 are bevelled with a gradient that slopes downwardly from the inner perimeter to the outer perimeter of the bevelled section. However the figures and the discussion in D1 with regard to the bevelled top rail 27 are exclusively with respect to side walls 24A, B; see column 13, line 41 to column 14, line 28. There is no disclosure in
these passages that the top rails 27 of the sidewalls 26A, B are similarly bevelled. In addition I cannot clearly infer from the figures alone or elsewhere from D1 that the top rails 27 of sidewalls 26A, B are bevelled in the manner prescribed by feature 1.5. It follows that I cannot be satisfied that D1 discloses feature 1.5.
I note that in MC-8 Mr Chalmers has indicated that D1 discloses feature 1.5, as has Mr Fleming at [66] of his declaration and Mr Hunter in BH-25. However it is apparent that Mr Chalmers and Mr Hunter have not considered the full limitations provided by feature 1.5, nor it would seem has Mr Fleming based on the generality of his statements at [66] of Fleming.
In view of the above it follows that I cannot be satisfied that D1 comprises clear and unmistakeable directions with respect to any of the claims.
Xlercoil (or Doric) Brochure (D3)
Before discussing D3 in detail I consider it pertinent to address whether D3 was publicly available before the priority date.
It is apparent that D3 comprises a promotional brochure for Xlercoil steel. In that regard I consider it reasonable to infer on balance that D3 was made publicly available at some point in time, this being the point of such brochures. However it is not entirely clear, at least on a superficial inspection, when D3 was first made publicly available. The date given at the front of the brochure is May 2006, however there is no evidence that indicates that it was actually distributed to the public at this point in time. Notably the last paragraph on the first page of the brochure reads as follows: “Work on both projects began in April 2004 and the first nickel production from the expanded Yabulu refinery is expected in late 2007”. This indicates that the brochure would have been at least compiled before late 2007. The use of future tense with respect to production in late 2007 on balance suggests that the report would have become publicly available sometime before late 2007, since one could expect that the past tense would be used if the intention was for D3 to be circulated after this date. It would also seem unusual for material from May 2006 that was intended to form part of a promotional brochure was not in fact made publicly available in brochure form until after 9 May 2011. Consequently while I cannot determine the precise date that the brochure became publicly available, on balance I consider that it did so between May 2006 and late 2007. Hence D3 comprises prior art information for the purposes of assessing novelty of the claims of the opposed application.
Returning to the disclosure of D3, it is apparent that it covers the construction of 2000 shipping containers by Doric engineering, for the purposes of transporting a mixed nickel and cobalt hydroxide product; see page 2 of D3. The nature of D3 is best understood by reference to the figures which are reproduced below, where I have added figure numbers for convenience. With regard to the figures it can be seen that the container comprises an external or outer framework and has an inner liner for holding bulk material, as indicated by the annotations provided on the figures.
Claim 1
It is apparent from my discussion of D3 above that D3 discloses features 1.1, 1.2 and 1.3 of claim 1. With regard to feature 1.4, a plurality of twist lock pockets are apparent on figure 3, as indicated by the annotations on that figure. To the extent that there is any doubt about this I note that both Mr Chalmers (in MC-8) and Mr Hunter (in BH-24) agree that the container of D4 comprises a plurality of twist lock pockets.
30
With regard to feature 1.5, I consider that this is disclosed in D3 based on the corners of the container circled in red on figure 1. These corners indicate that there is a bevel as per feature
1.5 on at least one of the longer sidewalls of the container and on one of the shorter (or end walls) of the container. Figure 1 does not allow a view of the other end wall, and it would seem that the upper part of the other longer side wall is yet to be completed at the time figure 1 was created. However it is clear from figure 3 (and the text of D3) that the containers were built to accommodate a lid, and under these circumstances I consider it practically certain that
a bevel would be present on the remaining two side walls so as to facilitate the mounting of the lid. In further support of this I note that the lid of figure 3 appears to be symmetric which further suggests that an identical bevel would be applied to all sides of the container. I am therefore satisfied that D3 discloses feature 1.5.
I note that Mr Hunter asserts at BH-24, as does the Applicant at [111] of their written submissions, that D3 does not disclose features 1.2, 1.3 and 1.5 of claim 1. However I observe that Mr Hunter’s considerations, where his conclusions on novelty differ from my own, are based on a construction of terms at variance with my construction of the claims. This is due to the glossing in of features into the claims by Mr Hunter as discussed earlier in this decision.
With regard to feature 1.6, it is apparent from figures 2 and 3 that the liner is offset from the outer framework such that there is a gap or interval between the liner and the outer perimeter of the corresponding section of the outer framework. I note that both Mr Hunter (BH-24) and Mr Chalmers (MC-8) agree that feature 1.6 is disclosed in D3.
In view of the above I am satisfied that D3 provides clear and unmistakeable directions with regard to claim 1.
Claim 2
It is apparent from figures 2 and 3 that there are openings between the members that constitute the outer framework. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 2.
Claim 3
It is apparent from figures 1 to 3 that the container is rectangular with two longitudinal side walls and two end walls with, where for each of the end walls, there is a gap between the outer surface of that end wall of the inner liner and the outer perimeter of the corresponding section of the outer framework. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 3.
Claim 4
It is apparent from figures 2 and 3 that there is a plurality of support ribs in the outer framework; these can be seen along the sidewalls of the container in figures 2 and 3. Given that these form part of the outer framework, I consider it inherent that these support ribs strengthen the structure for substantial weight-bearing support, and I note that a similar observation has been endorsed by Mr Chalmers in MC-8. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 4.
Claim 5
It is apparent from figures 2 and 3 that the support ribs are substantially perpendicular to the base of the container. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 5.
It is apparent from figures 2 and 3 that the support ribs are of substantially the same width at their top as at their base. Therefore I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to claim 6.
Claim 7
It is apparent from figures 2 and 3 that none of the support ribs comprise cut outs or apertures as per claim 7. I note that Mr Chalmers (from MC-8) considers that these features are disclosed in D3 via what appear to be tyne pockets or the like in the bottom rail, as can be seen from the annotation on figure 2. Mr Fleming at [73] clearly considers that the support ribs are commensurate with those I have identified with regard to claim 4, and does not consider that D3 discloses the features of claim 7. Similarly Mr Hunter’s consideration in
BH-24 suggests that he did not consider the bottom rail of D3 to comprise a support rib in the sense of claim 7. In that respect Mr Fleming does not appear to consider the bottom rail with lift pockets comprises a “support rib” in the sense of claim 7. Although Mr Reid and Mr Court do not directly consider D3 in their declarations, it is apparent at [15] of Reid and [11] of Court that they each consider support “ribs” to be distinct from the top and bottom rails.
The Macquarie Dictionary Online provides a number of definitions of “rib” of which the following are most relevant for present purposes:
“noun 1. one of a series of long, slender, curved bones, occurring in pairs, more or less enclosing the thoracic cavity, and articulated with the vertebrae…3. some thing or part resembling a rib in form, position, or use, as a supporting or strengthening part…5. a structural member which supports the shape of something: an umbrella rib.” (emphasis in original)
It might be that one could take the bottom rail in D3 to comprise a rib based on definition 5 from the Macquarie Dictionary Online. However I consider that that would be stretching the application of “rib” as commonly understood in general usage. It also would go against the weight of expert opinion, where Mr Reid, Mr Hunter, Mr Fleming and Mr Court do not consider the bottom rails to comprise a “rib” for the purposes of claim 7. Of the declarants only Mr Chalmers considers that the bottom rail is commensurate with a rib as per claim 7.
In view of the weight of expert opinion and the common usage of the word “rib” I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to the features of claim 7.
Claim 8
In view of the fact that I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to claim 7, it also follows that I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to claim 8.
Claim 9
It is apparent from figures 2 and 3 that D3 discloses the support ribs connecting bottom rails at the base of the outer framework to top rails at the top of the outer framework. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 9.
D3 does not disclose a corresponding pair of support ribs on either side of the container being connected by an interconnecting base rail passing beneath the base of the line such that the combination of support ribs and interconnecting base rail forms a substantially U-shaped elements which provides support to both the side walls and base of the inner liner.
In relation to claim 10, I note that Mr Chalmers has suggested, at MC-8, that the features of this claim are disclosed in D3 if the corner posts are considered ribs. I see two difficulties with this interpretation. Firstly I do not consider that the corner posts can be considered “ribs” in the ordinary sense of the word (see my discussion with regard to claim 7). Secondly even if the corner posts can be considered “ribs” in the sense of the claim, it is not clear from figures 2 and 3 that the associated bottom rail actually passes beneath the base of the inner liner.
It is apparent from the above that I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to claim 10.
Claim 11
It is apparent from Mr Chalmers’s evidence that an ISO container is one that is manufactured to ISO standards for the purposes of carrying freight over a variety of different transportation platforms; see Chalmers1 at [19]. Although no precise characterisation of an ISO container has been supplied by the declarants, all of the experts who provide an opinion on D3 agree that it discloses an ISO container; see MC-8, Fleming at [72] and BH-24. In view of this I am satisfied that D3 discloses an ISO container. I am therefore satisfied that D3 provides clear and unmistakeable directions with regard to claim 11.
Claims 12 and 13
In view of the fact that I cannot be satisfied that D3 provides clear and unmistakeable directions with regard to claims claims 6, 7 and 8, it follows that I cannot be satisfied that D3 provides clear and unmistakeable directions for claims 12 and 13.
In summary I am satisfied that claims 1, 2, 3, 4, 5, 9 and 11 lack novelty in view of D3. WO 2012139156 (D4)
At the outset I note that D4 was published on 18 October 2012 with a filing date of 11 April 2012, both of these dates being after the priority date of the opposed application (9 May 2011). However the earliest priority date of D4 is 11 April 2011, thus predating the priority date of the opposed application.
Notably s7(1)(c) of the Act provides for prior art information for the purposes of “whole of contents” novelty by referring to subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1 of the Act. This subparagraph provides criteria that determine whether a document may be used for the purposes of whole of contents novelty as follows:
“(b) in relation to deciding whether an invention is or is not novel:
………
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was container in the specification on its filing date and when it was published.”
The Applicant has contended at [113] of their written submissions that D4 is not relevant for the purposes of assessing novelty. These assertions are based on the fact that the Opponent has not put either the priority document concerned (AU 2011901357) or the specification of D4 as originally filed into evidence. On this basis the Applicant asserts that it cannot be established that D4 is entitled to a priority date of 11 April 2011. Notably the Applicant has not actually asserted that D4 is not entitled to its earliest priority date.
While I note the Applicant’s submissions, I do not agree that the priority date cannot be established. The Opponent has supplied the A1 publication of D4. An inspection of this indicates that no amendments were made between filing and publication. Consequently it is apparent that the Opponent has in fact supplied a copy of D4 as filed. Simple inspection of the priority document reveals that the disclosure of D4 that is prima facie pertinent to novelty of the present claims (notably figures 2 to 8 and the accompanying text) has remained unchanged between the filing of the provisional and the publication of D4. For that matter D4 is substantially identical to the provisional and only varies with respect to details that are not relevant to the present matter. I therefore consider that on balance D4 comprises prior art for the purposes of whole of contents novelty.
D4 is primarily concerned with a bulk container discharge device, and the majority of the specification is taken up with describing this device, see for example the abstract. Nevertheless a bulk container is apparent from the text and especially the figures of D4. The nature of this container is best understood with reference to figures 2 to 6, which are reproduced below.
Thus [19] and [56e] of Chalmers1 suggests that ISO containers comprised twist lock pockets, and that a large majority of containers were in fact ISO containers. When this is considered in conjunction with [13], [14], [56b] and [56f] of Chalmers1, one gets the impression that items i
to iv, vi, vii, ix, xi and xiii were collectively known as CGK, noting that item i must be inherent.
Further Mr Chalmers, at [66] of Chalmers1, refers to a Heggies container from MC-20 as comprising “…a method of construction that I am familiar with and have seen been used by CIMC productions dating before 2010”. I have reproduced photos 22 to 28 from MC-20 below. It is apparent from these photos that the construction that Mr Chalmers is familiar with comprises items i to iv, vi to xi and xiii.
With regard to Mr Fleming it is instructive to repeat [15] from his declaration below:
“Containers were commonly known to be manufactured by lining the framework with a liner, or they can be made by inserting a liner bin or tub. Such a liner bin or tub was then welded at lines of contact with frame members of the container, including the ribs, the top rails, the bottom rails if present, the base and corner posts or pillar.”
This statement by Mr Fleming suggests that features i, ii, iii, vi and ix were collectively CGK. I also consider that [19] of Fleming supports a conclusion that the presence of twist lock pockets is indicative of a container being an ISO container:
“It was commonly known for open top cargo or bulk material containers to conform to ISO standards in respect of the containers, the corner castings for lifting of such containers using a twist-lock mechanism, and other features of such containers such as the length, the width, the height and many other aspects of containers.. (sic)”
In view of my discussion above I therefore consider that Mr Chalmers’ evidence supports Mr Reid’s statements in relation to items i to iv and vi to xi collectively comprising CGK. Although a similar inference cannot be drawn directly from Mr Fleming’s evidence, it is clear that his evidence still supports many of these features being collectively known as CGK and otherwise I see no fundamental conflict between Mr Fleming’s evidence and drawing a conclusion that items i to vi and vi to xi were collectively CGK before the priority date based on Mr Reid’s and Mr Chalmers’s evidence.
I also consider that Mr Fleming’s statements at [19] of his declaration generally support a conclusion that items i to iv, vi to xi and xiii were CGK in view of Mr Chalmers’s evidence, there again being no fundamental conflict with Mr Reid’s evidence. I therefore conclude that items i to iv, vi to xi and xiii were collectively CGK before the priority date.
As a final observation on this I note that there is nothing in either Mr Court’s or Mr Hunter’s evidence that bring into question my conclusions above on CGK.
The Opponent’s s7(2 ) Ar guments
At page 12 of their written submissions the Opponent asserts that “all the claimed features in claim 1 are part of the CGK”. It is apparent from my assessment of the CGK that this is indeed the case. However claim 1 comprises a combination of features, and to establish lack of inventive step in view of the CGK as per Aktiebolaget Hassle, one must establish that it is the combination of features that it is obvious, not each individual feature. This was observed by the Applicant in their written submissions at [135]. It follows that an argument of this type is insufficient to make out lack of inventive step under s 7(2).
However the Opponent goes further at page 12 to assert that “the combination of an inner liner, outer framework and twist lock pockets was the standard construction for bulk material containers”. Mr Davidson made similar submissions at the hearing, suggesting that “every
integer except the bevel is the standard construction”. I will now consider whether any of the claims lack inventive step in view of CGK.
Claim 1
None of the expert declarants directly consider what they would do when faced with the problem at hand. However the problem presupposes the existence of a bulk cargo container,
i.e. any type of bulk cargo container. I note from my discussion on CGK above that it follows that a bulk cargo container (“container A”) including features 1.1, 1.2, 1.3, 1.4 and 1.6 of claim 1 comprised CGK before the priority date. The evidence also shows that the inclusion of bevels for preventing the accumulation of material on the side walls was CGK before the priority date. I therefore consider it a matter of routine for the skilled addressee to add bevels to each of the upper edges of the side walls of container A when faced with the problem at hand.
The remaining question relates to the precise nature of the bevel. Would it be routine to have such a bevelled section sloping in the manner defined by claim 1? The evidence below indicates that it would be:
“As I will explain later in my statement, we commonly place a bevel section onto the upper edges of the top rails, usually by inverting an angle piece so that it is of an “inverted V” shape, that is, the otherwise free ends of it extend along the inboard and outboard edges of the top rails.” (Chalmers1 at [16])
“It was commonly known that, as stated in SF-1 at paragraph [0004] “the upper edges of the walls of the container are preferably shaped to reduce the risk of accumulation of dust, water, spillage, waste material etc.”… Further, such shaped upper edges of the walls were commonly known to be readily made by overlying a piece of angle iron onto the top rail, either in an “L” or “inverted V” orientation, and this is welded to the top rail.” (Fleming at [18])
“The framework commonly included a horizontal top rail along each wall, and these top rails often had a triangular formation formed on their top surface, in order to: a. Help provide a good seal with the lid; and b. Help prevent material sitting on the top rail.” (Reid at [16])
In view of the above it follows that I am satisfied that the skilled addressee would, as a matter routine, arrive at the invention of claim 1 on starting with the problem at hand in view of the CGK.
Claims 2, 3, 4, 5, 9 and 11
The evidence as discussed above, indicates each of the additional features introduced by these claims forms part of container A as known from CGK before the priority date. With regard to claim 4, I note that it is apparent that the support ribs will inherently strengthen the structure of the container for substantial weight bearing support. It follows that I am satisfied that the skilled addressee would, as a matter routine, arrive at the invention of claims 2, 3, 4,5,9 and 11 on starting with the problem at hand in view of the CGK.
Claim 6
The closest the evidence comes to suggesting that it was CGK as such for the support ribs to be wider at their base than toward the top thereof is at [11] of Chalmers2, where Mr Chalmers discusses Mr Hunter’s declaration:
“With regard to paragraph 17(c), tapering of the inner liner walls to improve flow and prevent sticking of the material was commonplace before the priority date. I have shown many examples of tapered side walls and tapered ribs in my earlier Declaration. I note also the EZ containers in the Declaration of Stephen Fleming in the evidence in support. By way of further example attached hereto as Annexure MC2-1 are photos I took in Port Kembla approximately early 2014 of an open top bulk container manufactured by Doric Manufacturing in Tasmania in November 1995, having tapered liner side walls. These containers are still in operation between North Parkes copper mine and Port Kembla, NSW, and are discharged via side tipping with a tippler.”
I observe that Mr Chalmers has directly asserted that tapering of the inner liner is CGK, with a similar assertion repeated at [29] of Chalmers2, and being supported by [56j] of Chalmers1. No direct assertion of this type has been made with regard to tapered support ribs by Mr Chalmers anywhere in his evidence. It would seem that Mr Chalmers points to examples from Chalmers1 to support a contention that tapered ribs were CGK. The examples alluded to are the “Cronos Half Height” brochure at MC-9 and the Orange “Heggies” container at MC-
17. While both of these exhibit tapered or angled side walls, neither demonstrates a support rib according to claim 6. In addition there is no publication date for the Cronos Half Height brochure. This is clearly insufficient to support an allegation of CGK.
A further example is given at MC2-2 (AU patent 749848) which does exhibit support ribs falling within the scope of claim 6. Another example is the EZ container at SF-3, which clearly comprises support ribs as per claim 6. However even if I were to accept that the EZ container was available via prior use before the priority date, a mere two examples is hardly supportive of an allegation of CGK.
Mr Chalmers does indicate at [12] of Chalmers2 that “tapered ribs are also commonly used in rail design and construction, the wagons being discharged via side tippers.” It is not entirely clear from this passage, in view of the way it follows on from [11] of Chalmers2, whether Mr Chalmers considers railway wagons to comprise bulk cargo containers as understood by the skilled addressee. If so it is not entirely clear why Mr Chalmers did not simply state that tapered support ribs were CGK as he did for a tapered liner at both [11] and [29] of Chalmers2 and [56j] of Chalmers1. It is thus difficult to conclude from Mr Chalmers’ evidence alone that having support ribs of the type defined in claim 6 was CGK before the priority date.
The only evidence that might support such a conclusion is Reid at [20]:
“Reviewing the design of the container in AR-2 I note that the only design feature which I considered to perhaps not already be routine prior to 2011 was the apertures in the vertical support ribs, which I do not recall seeing before specifically in the context of bulk material cargo containers of this type. I have however seen this done in other types of containers, for
example mobile grain hoppers and road trailers, and for large structural beams in industrial sheds.”
However the very generality of this statement means that I consider it is insufficient to support Mr Chalmers’ allegations of CGK.
I do note the following statement at [37] of Chalmers2:
“Further, not all containers designed for tipping require a tapered liner. The selection between a tapered wall or straight wall is specific to the product which the container is designed to transport, rather than to the container design itself. For example, coal, iron ore and grain flow quite easily and do not require a taper. Whereas bulk materials with high moisture content such as copper concentrate do not flow as well and may require a tapered liner wall, as per prior art containers.”
This provides a consistent rationale for Mr Chalmers’ assertions that tapered liners were CGK. This statement is also generally supported by Mr Reid at [18] of his declaration:
“In designing a bulk material cargo container, whether prior to 2011 or now, the design is specific to the material being transported and the equipment with which the container is to be used. Design criteria are developed based on the client brief.”
Similarly Mr Hunter’s design considerations with regard to achieving the alleged advantages of the opposed application over the prior art, including an ability to be emptied quickly (Hunter [81]) resulted in the following statements at [83] of Hunter:
“By way of an example on how advantages (i)-(iv) might have been tackled by a designer from the outset, if a container having a reasonably tapered liner structure was to be designed (which would assist with the free flow of materials being emptied) then such a container would ordinarily have a reduced internal volume capacity (compared to a container liner of the same plan area, but having vertical side walls).”
In view of the above I accept that it was CGK to have tapered inner liners before the priority date.
However having accepted that tapered inner liners were CGK, it is another matter to consider how this would be achieved by the skilled addressee. There is very little evidence that specifically elaborates on this point. At [58] of his declaration Mr Fleming states that:
“From my experience, it was obvious that if a container needed inclined walls, that the supporting ribs would either have to be so inclined or provide such an incline for example by being tapered, in order to provide appropriate support to the wall. This is just engineering common sense and I believe that the EZContainer is a good example of this from around 30 years ago.”
Mr Fleming repeats these sentiments at [64], [66], [68], [73] and [74] of his declaration. These statements appear to indicate that it would be routine for the skilled addressee to implement the supporting ribs such that they are inclined or tapered when implementing a tapered inner liner. However Mr Fleming’s statements are quite general and do not address what types of support ribs are well-known in the art and whether both of his suggested
approaches are suitable for the well-known types of support ribs. Mr Fleming does not consider this elsewhere in his evidence, nor does Mr Reid or Mr Court for that matter.
In this regard Mr Chalmers’s evidence at [34] of Chalmers1 appears to indicate that it was well known to use of RHS or SHS sections to form the support ribs:
“An (sic) difference between the container of the patent application and that of Cronos containers CRTU084847-6 and IMXU1000000, or those made to a similar design such as the ones my company provides, is that the container of the patent application has its ribs constructed of rolled and or formed sheeting or plate, with the rolling or forming to improve the moment of inertia of the sections. Whereas the Cronos containers, and those my company arranges manufacture of, generally use RHS or SHS to form the ribs.”
This is supported by Mr Hunter at [102] of his declaration:
“Most of the bulk containers I have seen utilise RHS (rectangular hollow section) or SHS (square hollow section) for reinforcement along their side walls (as described in Mr Chalmers declaration), not portions of formed sheet metal plate. For example, in all the prior art containers under consideration in this matter, only the "EZ" container above utilises ribs formed from steel plate.”
In view of the above I conclude that it was CGK to use RHS or SHS sections for support ribs before the priority date, noting that there is nothing in Chalmers2 that would detract from this conclusion. While it is conceivable that other types of support ribs were available, there is no evidence as to what these were and to the extent these were known (for example the steel plate from the EZ container.
In relation to the tapering of SHS or RHS sections it is instructive to repeat [84] of Mr Hunter’s declaration:
“Because conventional SHS and RHS sections used in conventional bulk commodities containers for vertical lifting cannot be tapered, the Applicant has adopted a unique solution by making the tapered ribs by formation from steel plate.”
I observe that there is nothing in the evidence of the other declarants that disputes this statement. Consequently the evidence collectively suggests that the only rib members demonstrated to be CGK cannot be tapered to facilitate a tapered inner liner. While claim 6 does not necessarily require tapering per se (only wider at the base than toward the top thereof) there is no evidence that suggests that RHS or SHS support ribs could or would be made as precisely defined in claim 6. In the absence of such evidence, the inability to taper RHS or SHS sections suggests that it would not be CGK to construct RHS or SHS sections so as to comply with claim 6.
In view of the above it follows that I cannot be satisfied that the skilled addressee would, as a matter routine, arrive at the invention of claim 6 on starting with the problem at hand in view of the CGK.
Claims 7 and 8
With respect to this claim the evidence indicates that it was CGK, as a general engineering proposition, to form apertures in frame members to reduce weight of structures while maintaining structural integrity as per Fleming at [59]:
“In respect of claims 7 and 8 of AU2012253221, while the Container does not have apertures in the ribs, it was a widely known and common structural technique to put apertures in frame members to reduce the overall weight to the member and to maintain an appropriate amount of strength.”
Mr Fleming makes similar statements at [64], [66], [68], [73] and [76] of his declaration.
While Mr Reid confirms the above statements by Mr Fleming at [20] of his declaration, he does not consider apertures in vertical support ribs to be CGK before the priority date:
“Reviewing the design of the container in AR-2 I note that the only design feature which I considered to perhaps not already be routine prior to 2011 was the apertures in the vertical support ribs, which I do not recall seeing before specifically in the context of bulk material cargo containers of this type. I have however seen this done in other types of containers, for example mobile grain hoppers and road trailers, and for large structural beams in industrial sheds.”
Mr Reid’s conclusion with respect to the apertures is supported by Mr Hunter at [102] of his declaration:
“Cutting apertures into RHS or SHS sections would be very problematic as the result would be that water and pollutants would leak into the hollow sections and cause corrosion, and hence this approach is not practically possible. In relation to the "EZ" container, the ribs do not have apertures cut into them, yet I would have thought it would still have been desirable 30 years ago to reduce the tare weight of the container. Consequently, I question Mr Fleming's assertion that such a step was an obvious thing to do. Indeed, as shown in Diagram 7 above, the "EZ" container ribs do not have a wide flange, so any weight saving derived from cutting apertures into such flange would be likely to be minimal.”
I note that there is no evidence disputing Mr Reid’s or Mr Hunter’s conclusions.
In view of the above it follows that I cannot be satisfied that the skilled addressee would, as a matter routine, arrive at the invention of claim 7 or claim 8 on starting with the problem at hand in view of the CGK.
Claim 10
Of the declarants only Mr Fleming has considered this feature at [21] of his declaration:
“While the above construction and features of containers are commonly known, other types are also quite well known, including containers which have top rails, U shaped frame members having upwardly extending pairs of ribs and a base interconnecting them, with liner plate being welded to the frame members and ribs and base.”
It is apparent that statement, if accepted, means that the features of claim 10 were CGK before the priority date. There is no conflicting evidence from the other declarants and I have no other reason to doubt Mr Fleming’s statements. I therefore accept that it was CGK before the priority date for bulk cargo containers to have U shaped elements as per claim 10. It follows that I am satisfied that the skilled addressee would, as a matter routine, arrive at the invention of 10 on starting with the problem at hand in view of the CGK.
Claims 12 and 13
In view of the fact that I cannot be satisfied that none of claims 6, 7 and 8 would be arrived at by the skilled addressee in view of the problem to be solved and the CGK, the same conclusion equally applies to claims 12 and 13.
Lack of Inventive Step in View of Common General Knowledge (s 7(2)) – Conclusion
In summary I am satisfied that claims 1, 2, 3, 4, 5, 9, 10 and 11 lack inventive step in view of the CGK alone.
Lack of Inventive Step in View of Common General Knowledge and Prior Art (s 7(3))
This argument is put at page 13 of the Opponent’s written submissions. The Opponent has relied upon the cited art both for the purposes of s7(3) in their written submissions and at the hearing. It is not entirely clear what is meant by the cited art, however I consider this to be as for novelty, i.e. D1 to D3 and D5 and the prior uses, noting that D4 cannot form part of the prior art base for the purposes of s7(3). I will consider each of these for the purposes of s7(3) below.
Ascertained, Understood and Regarded as Relevant
Under s7(3) it is necessary for prior art information to have been ascertained, understood and regarded as relevant by the skilled addressee before it becomes available for the purposes of assessing inventive step. I will now consider this in relation to D1 to D3 and D5 and the prior uses.
The issue of “ascertainment” was considered in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 (“Emperor Sports”) at [25] to [35]. In particular their Honours, in citing Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd [1980] HCA 9, stated at [31] to [33] of Emperor Sports:
“31 Section 7(3) does not assume an ascertainability by any and all skilled persons, of whatever description, of all publicly available prior art documents anywhere in the world. Nor does it assume that the skilled person has found the document in question, so that the only question is whether he or she has understood it and regarded it as relevant. Such a construction ignores the elements of expectation and reasonableness, as applied to the particular skilled person.
32 In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the
81
Commissioner and the Court. In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.
33 In Minnesota Mining Aikin (sic) J said at 294-295 (citations omitted):
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. But this is not so in all fields or in all countries. There was no evidence in the present case that those working on Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in those fields in Australia.
The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time."
Of course, that case was decided under the pre-1990 law which did not make provision for documents which only became part of the prior art information as a result of s 7(3) ascertainment. Nevertheless the statement confirms that when identification of the relevant prior art is in dispute it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office.”
I observe that in the present circumstances there is some dispute as to whether the skilled addressee would have ascertained the documents and prior uses relied upon by the Opponent for the purposes of inventive step. Notably at [147] to [150] of their written submissions the Applicant asserts that:
“There is no evidence that any person skilled in the art would have undertaken a search for relevant documents. The field of relevance is a highly practical field and it has not been shown that a person would undertake a literature search, much less that the person would search patents, or even further, have identified the patents and other documentation relied upon without knowing the solution.
It also appears that in the present case the experts were provided with the documents along with a table prepared by the Opponent's attorney. See Reid #1, Fleming #1 and even Chalmers #1. The experts were guided to those documents and it cannot be assumed that they much less the hypothetical person skilled in the art would have ascertained them at the priority date.
This field is in contrast to a drug development chemist seeking to identify a new drug or a chemical engineer seeking to create a new chemical plant or such equipment and in the absence of positive evidence to support reliance under subsection 7(3) of the Act then the delegate cannot be so satisfied that those documents can be relied upon.
The evidence does not show any expert would have conducted any searches for patents or existing containers. For example, Mr Reid does not indicate that he would ''understand, ascertain or regard as relevant" any patent specifications or other documents now sought to be relied upon.
See Reid # 1 [19].”
On review of the evidence it would appear that the Applicant is correct with respect to the documentary evidence, in that Mr Fleming (Fleming at [65]) and Mr Chalmers (Chalmers1 at [20]) were given D1 to D5 for their consideration in providing evidence. Mr Reid makes no mention of D1 to D5 in his declaration, though I note that he was supplied with the opposed application for his consideration. Mr Hunter indicates at [10] of his declaration that the first time he had seen the prior art documents was when they were given to him for his consideration in giving evidence.
In relation to the prior uses I consider it reasonable to infer that the skilled addressee would have been aware, at least in a general sense, of bulk cargo containers. However with respect to the bulk cargo containers the subject of the prior uses, it is apparent from the evidence that where these were considered by the Opponent’s declarants, this was done so well after the priority date. For Mr Chalmers, Mr Reid and Mr Fleming it would also seem that they considered the relevant prior uses after analysing the opposed application. This state of affairs generally supports the Applicant’s contentions with regard to ascertainability as far as these apply to the prior uses.
The Opponent has made assertions of ascertainment at page 13 of their written submissions. However these are unsupported by any evidence that any of D1 to D3, D5 and the asserted prior uses could have reasonably been ascertained by the skilled addressee before the priority date of the claims in suit. This represents a failure by the Opponent to discharge their onus of proof in relation to ascertainment and has directly led to the surprising result, peculiar to the present circumstances, that I cannot conclude that the skilled addressee would have ascertained any of D1 to D3, D5 and the asserted prior uses. It follows that none of D1 to D3, D5 and the asserted prior uses comprise prior art information under s7(3) for the present matter. Consequently the Opponent’s allegation of lack of inventive step under s7(3) is unsuccessful.
Inventive Step – Conclusion
I am satisfied, in view of the evidence before me, that claims 1, 2, 3, 4, 5, 9, 10 and 11 lack inventive step under s7(2) of the Act. The Opponent has been successful in making out this ground of opposition.
Manner of Manufacture
The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:
“an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”
Notably Schedule 1 to the Act comprises a Dictionary which defines invention as follows: “‘invention’ means any manner of new manufacture the subject of letters
patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention”.
In particular it has long been held that the mere collocation of known integers that have no working interrelationship, or potential working interrelationship, is not a manner of manufacture; see British Celanese Ltd. V Courtaulds Ltd. 52 RPC 171 (“British Celanese”) at 193-194:
“It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old
integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers.”
The Opponent’s arguments with respect to manner of manufacture were supplied at pages 10 and 11 of their written submissions. The primary thrust of the Opponent’s arguments is given at page 10:
“The invention as claimed in all claims is not a manner of manufacture, as being a mere collocation of known integers lacking threshold inventiveness on the face of the specification.
A patentable combination is a new combination of old integers having a working interrelationship or a potential working interrelationship.”
The difficulty for the Opponent’s arguments here is that even if the individual integers of the claims are known, it is beyond question that there is a working interrelationship between those integers. As claimed the integers function together to provide a bulk cargo container. To that extent the claims cannot be characterised as a mere collocation in the sense defined in British Celanese.
However I do note the Opponent’s use of “a new combination” at page 10 and similar wording in British Celanese (emphasis added), as well as the allegation that the invention lacks “inventiveness on the face of the specification”. At a superficial level one could take the wording of British Celanese to result in the incorporation of the requirements of novelty and inventive step from s18(1)(b) into an amorphous test along with manner of manufacture from s18(1)(a). That, in a general sense, is not the case.
The degree to which “newness” is imported into s18(1)(a), due to the wording of that subsection and the definition of invention as given in the Act has been considered by Brennan, Deane and Toohey JJ in NV Philips Gloeilampenfabrieken v Mirabella International Pty. Ltd. (“NV Philips”) 183 CLR 655; [1995] HCA 15 at [9]:
“The effect of those opening words of s 18(1) is that the primary or threshold requirement of a "patentable invention" is that it be an "invention". Read in the context of s 18(1) as a whole and the definition of "invention" in the Dictionary in Schedule 1, that clearly means "an alleged invention"(18), that is to say, an "alleged" "manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies"(19). In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of "an alleged invention" will, notwithstanding an assertion of "newness", remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of "an alleged invention" corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”
In the present case this means that, for the purposes of manner of manufacture, one need not go any further if it is apparent that the claims in suit lack inventiveness on the face of the specification. I see no reason to make such a conclusion based on the opposed application. I am therefore satisfied that the claims meet the threshold requirement for manner of manufacture as outlined in NV Philips.
Having considered the threshold requirement from NV Philips, it is a further question as to whether the claimed invention is a mere collocation. As noted above I do not consider this to be the case. Any further questions of “newness” properly belong to the realm of s18(1)(b), as outlined in NV Philips.
In view of the above it follows that I am not satisfied that any of the claims lack a manner of manufacture.
Manner of Manufacture – Conclusion
None of the claims were established to lack a manner of manufacture. This ground of opposition is unsuccessful.
Conclusion
The Opposition is successful. Claims 1, 2, 3, 4, 5, 6, 9, 10 and 11 were found to lack novelty. Claims 1, 2, 3, 4, 5, 9, 10 and 11 were found to lack inventive step under s7(2) of the Act. The Applicant is given two months from the date of this decision to propose amendments that address those claims found to lack novelty and/or inventive step.
Costs
Costs normally follow the event. I see no reason to do otherwise here. I award costs against the Applicant, Australian Mobile Mining Equipment Systems and Accessories Pty. Limited, according to Schedule 8 of the Regulations.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
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