Macdonald Engineering Company Pty Ltd v Firebelt Pty Ltd

[2000] APO 37

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 683691 in the name of MACDONALD ENGINEERING COMPANY PTY LTD

Title:          Improvements relating to Refuse Truck Split Bin Loading Systems

Action:          Opposition by FIREBELT PTY LTD under Section 59 of the Patents Act 1990

Decision:          Issued            .

Abstract

The issue of whether the Commissioner is as a matter of law bound to exclude evidence which is not properly in reply did not arise for consideration since the evidence purportedly in reply filed by the opponent would, even if admitted, have no bearing on the outcome of the opposition.

Sonotone Corporation v Multitone Electric Co Ltd (1955) 72 RPC 131 does not stand for the proposition that the recital of prior art in a specification ought to be taken as expressing the state of common general knowledge as argued by the opponent. The court in that instance simply considered the question of whether as a matter of construction the language used in the specification amounted to an admission of the existing state of the common general knowledge. The court did not express a concluded view, and instead noted "… it is, we think, necessary to see what the state of knowledge [on the evidence] was."

Opposition only successful on a relatively minor section 40 issue.  Costs awarded against the opponent due to the manner in which their evidence had been presented.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 683691 in the name of MACDONALD ENGINEERING COMPANY PTY LTD and opposition by FIREBELT PTY LIMITED under Section 59 of the Patents Act 1990

BACKGROUND

Patent application 683691 in the name of MacDonald Engineering Company Pty Ltd (MacDonald) was filed on 27 September 1994 as PCT/AU94/00576 with a claimed priority date of 28 September 1993.  The application was advertised accepted on 20 November 1997.

Firebelt Pty Limited (Firebelt) filed a notice of opposition to the grant of a patent on 20 February 1998 followed by a statement of grounds and particulars on 20 May 1998.  No evidence in support was filed which precipitated a request by MacDonald on 27 April 1999 that the opposition be dismissed.  On 7 May 1999 MacDonald was advised that the Commissioner considered dismissal to be inappropriate where (as in the present case) a statement of grounds and particulars had been filed to establish a basis of an opposition.

The request for dismissal was accompanied by written submissions entitled "Reply to the Statement of Grounds and Particulars" which, although not strictly in accordance with regulation 22.13, were with the agreement of both parties treated as evidence in answer.  This enlivened the provisions of regulation 5.8(4) and on 30 August 1999 Firebelt filed evidence in reply comprising a declaration by Trevor James Dredge, patent attorney of Intellpro, together with Exhibits TJD-1 to TJD-9.

On 22 September 1999 MacDonald filed a request for directions under regulation 5.10(1) that certain parts of the evidence in reply be disregarded, and subsequently requested that this matter be considered together with the substantive opposition which had been set for hearing in Canberra on 9 December 1999.  Firebelt did not object to this later request.

MacDonald was represented by Mr Colin J Oberin, patent attorney of McMaster Oberin Arthur Robinson & Hedderwicks, who appeared by telephone.  Firebelt did not attend the hearing and instead chose to rely on written submissions filed by Mr Dredge on 7 December 1999.

THE SPECIFICATION

The specification commences by indicating that the invention relates to a refuse vehicle for use in refuse collection systems particularly those involving separation of recyclable materials using multi-compartment wheeled bins.  These are known as mobile garbage bins (MGB's) or "wheelie bins".

One of the problems perceived with the collection and separation of different types of refuse in the refuse collection vehicle is the differing volumes of refuse and the possibility of inadequate utilisation of refuse vehicle storage volume in the collection of such refuse.  Furthermore different types of refuse usually require differing levels of compaction in the loading compartment of the refuse vehicle.  For example, relatively low compaction forces are desirable for glass bottles and similar recyclable materials to avoid breakage.  However, it has been found difficult to achieve adequate compaction in long vehicle body volumes and similar problems occur in achieving removal or discharge of the compacted material from the vehicle storage compartments.

The invention primarily aims to provide a split compartment refuse vehicle in which the effective use of compartment volumes is maximised.  The specification ends with fourteen claims in all, of which the independent claims read as follows:

"1. A refuse collection vehicle having at least two separate refuse storage compartments, at least two of the refuse storage compartments each having a compactor device including a paddle that is adapted to move refuse from a refuse entry portion into the respective refuse storage compartment, each paddle being connected to a common drive shaft, the paddle associated with one of the refuse storage compartments having a different length to at least one paddle associated with another refuse storage compartment so that paddles of different length exert different compaction forces on refuse by virtue of their different lengths.

7. A refuse collection vehicle having at least two separate refuse storage compartments, at least two of the refuse storage compartments each having a compactor device that is adapted to move refuse from a refuse entry portion into the respective refuse storage compartment, sensor means associated with the compactor device and control means for controlling the compactor device responsive to said sensor means whereby to provide different degrees of compaction of refuse in said at least two refuse storage compartments."

In a more specific embodiment of the invention, the vehicle is divided into upper and lower storage compartments each having a compactor paddle adapted to pivot through an arc that extends over an angle of approximately 180^o.  The upper paddle is relatively short so as to apply less force during compaction of refuse collected in the upper compartment which may comprise fragile material such as glass bottles.  The lower paddle is longer for applying a greater compaction force to material collected in the lower compartment which is usually putrescible household refuse.

It is an additional preferred feature to incorporate electronic control means able to sense actual compaction pressures at different points of travel of the paddles to enable "on demand" operation of the paddles during a refuse loading operation.

STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars lists four grounds of opposition: non-compliance with paragraph 18(1)(a) (manner of manufacture), paragraphs 18(1)(b)(i) (novelty) and (ii) (inventive step), and section 40.  The particulars in support of the grounds of opposition relating to paragraphs 18(1)(b)(i) and (ii) refer to a number of patent specifications, as well as the alleged common general knowledge in the field.  Specifically, the particulars contend that the claimed invention is not novel and lacks an inventive step when compared with Australian patent specifications 651031 and 22410/92.  The particulars also set out a number of deficiencies said to exist in the description and claims in support of the grounds of opposition relating to section 40.     

EVIDENCE

Firebelt did not serve any evidence in support of the opposition despite being granted a three month extension of time in which to do so.  As indicated earlier, MacDonald's written reply to the statement of grounds and particulars was treated as evidence in answer.  In short, this reply refutes the assertion that the specification fails to satisfy section 40, and observes that Firebelt have not led any evidence to establish that the claimed invention lacks novelty or an inventive step.

In his declaration filed as evidence in reply, Mr Dredge states that he is a registered patent attorney who has prosecuted numerous patent applications on behalf of Firebelt which relate to divided waste collection vehicles and compactor devices of the type disclosed by the present application.  On the basis of this experience he claims that:

"Since 1987 to date I have developed a knowledge of the workings and operations of waste collection vehicles and apparatus including loading devices and compaction units and tanks utilised in waste collection and, in particular, the development of so called divided bin/divided tank systems of the type described in the opposed patent application and have an understanding of the mechanical operation and also the trends in the industry from 1987 to date."

Although I am not a mechanical engineer and have not worked directly in the industry I have found that the mechanisms employed do not involve any high level of complexity requiring any high level specialist knowledge to understand."

Mr Dredge goes on to discuss the following documents which were exhibited to his declaration:

• Australian patent specification 552878 (Exhibit TJD-2)

• Australian patent specification 22410/92 (Exhibit TJD-3)

• Australian patent specification 651031 (Exhibit TJD-4)

• A Federal Court decision by Dowsett J (Exhibit TJD-5)

• Australian patent specification 665612 (Exhibit TJD-6)

• Australian patent specification 60230/90 (Exhibit TJD-7)

• European patent specification 0314238 (Exhibit TJD-8)

REQUEST FOR DIRECTIONS

MacDonald have requested the Commissioner to direct that the following portions of the evidence in reply are inadmissable and, consequently, may not be considered for the purposes of the opposition:

(a)    exhibits TJD-2 to TJD-9; and

(b)   paragraphs 5 and following in Mr Dredge's declaration

In support of the request for directions, Mr Oberin submitted that the material at issue had been presented in an attempt to remedy deficiencies in Firebelt's case or to adduce new evidence, rather than to contradict the evidence in answer.  He pointed out that the documents comprising Exhibits TJD-2, TJD-5, TJD-6 and TJD-8 were not particularised in the statement of grounds and particulars and had been adduced for the first time at the evidence in reply stage of the proceeding.  The remaining exhibits were also said to demonstrate that Firebelt had attempted to serve evidence in support "by the back door" as evidence in reply.  In addition, Mr Oberin contended that the matters discussed in paragraph 5 and following in Mr Dredge's declaration, and in Exhibit TJD-9, went beyond the evidence in answer.

Mr Dredge responded to these submissions in the following terms:

"The opponents case relies on information already provided by MJE [MacDonald Johnston Engineering].  The only question is whether the opponent has to make available additional copies of patent specifications acknowledged as prior art by the applicant or to refile MJE's evidence in 651031 for the convenience of the delegate and the patent applicant by way of Evidence in Support.  There is no statutory requirement for this but … [i]f it is the case that the opponent is required to submit copies of acknowledged prior art or admissions by the patentee as evidence in support then this is a lamentable failure of procedure … There has been no failure of procedure in the present case, due to the nature of the opponents submissions there is no requirement for evidence in support."

I note by way of explanation that the documents which comprise Exhibits TJD-2, TJD-3 and TJD-7 have been acknowledged as prior art by the present specification, while the above-mentioned "admissions by the patentee" partly refers to material relied on by MacDonald in the reverse opposition to Firebelt's patent application 651031 (Exhibit TJD-4).  However, aside from Exhibit TJD-8, it is evident from a perusal of the opposition case file that the other documents exhibited by Mr Dredge do not constitute material filed by MacDonald against application 651031.  Whatever the case may be, I totally reject Mr Dredge's submission that Firebelt was not obliged to file evidence in support in the present proceeding.

It is well settled that the statement of grounds and particulars must properly inform the applicant of the case to be met.  Consistent with this requirement is the expectation that any evidence filed by the opponent must be confined to the issues raised by the statement of grounds and particulars.  By the same reasoning, the opponent is unable to argue their case with reference to a document identified in the statement but not filed in evidence, nor rely on the availablity of the document in the Patent Office (per Coal Corporation of Victoria v David William Hinkley and Brian AlanNugent [1993] APO 56 (17 September 1993)).

Mr Dredge has argued that as the material filed in the reverse opposition is readily accessible, Firebelt was relieved of any duty to provide additional copies of that material as evidence in support for the purposes of the present proceeding.  However, this line of argument completely overlooks the fact that the reverse opposition is a separate action involving separate issues and, as a consequence, any material put forward in that proceeding does not constitute evidence which has been served in the present opposition in accordance with regulation 5.8.  Further, while it is true that some of the documents exhibited by Mr Dredge constitute acknowledged prior art, it would be perverse given the restraints imposed by the statement of grounds and particulars to suggest that MacDonald should be placed in the position of having to anticipate what documents were going to be relied on by Firebelt in addition to those already particularised (cf. Stevelift Pty Ltd v Formark PtyLtd 29 IPR 154).

For completeness I observe that Exhibits TJD-2 and TJD-5 are documents which Mr Dredge contends reflect common general knowledge in the field of the invention.  Neither document has been particularised but I note from Cooper Industries Inc v Metal Manufactures Ltd 29 IPR 106 that documents which are purported to establish common general knowledge need not be identified in the statement of grounds and particulars. Exhibits TJD-3, TJD-4 and TJD-7 have, as indicated earlier, been particularised under the grounds of novelty and inventive step. Nonetheless, as with all other documents exhibited to Mr Dredge's declaration, these have been filed only in response to MacDonald's assertion that through their failure to provide evidence in support Firebelt have not made out the grounds of opposition pursued. On this basis I agree with Mr Oberin that Firebelt has sought to adduce evidence at this stage of the proceeding in an attempt to strengthen their case.

This brings me to the essence of Mr Oberin's submissions in this matter, namely, that parts of the evidence filed by Firebelt are not confined to matters strictly in reply and, accordingly, are  inadmissable. 

Mr Oberin has relied for support on the judgement in Ernest Scragg & Sons Ltd's Application [1972] FSR 219 where Graham J endorsed the following statement in Halbury's Laws of England:

"When the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case"

as a sound principle which applies to oppositions, and I note here that this principle has been followed in a line of office decisions.  For his part Mr Dredge took me to the decision in Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666 which confirmed that an administrative tribunal is entitled to act on any material which is logically probative.

It is clear from this decision that the Commissioner is not restricted by the rules of evidence or procedure applicable in a court, and thus it is arguable whether the Commissioner is as a matter of law bound to exclude evidence which is not properly in reply.  On the other hand, it seems to me that if (as Mr Dredge appears to be suggesting) the Commissioner was required to act on any evidence, this would effectively allow an opponent to circumvent the operation of regulation 5.10(4) whereby that evidence could be considered only if its admission into the opposition proceeding was found to be appropriate in all the circumstances.  As shown for example by Ferocem v The Commissioner of Patents (1994) AIPC 91-057, the circumstances to be taken into account embrace a number of competing factors including the interests of the applicant and the public. However, this is not an issue on which I need to express a concluded view since, as will become apparent later, my decision would stand irrespective of whether or not the evidence purporting to be in reply was admitted. To use the language of Pochi, the evidence in question is of no probative value.

Accordingly, I do not intend to have further regard to MacDonald's request for directions.

FURTHER EVIDENCE

The written submissions relied on by Firebelt for the purposes of the hearing were accompanied by a copy of a statutory declaration made by David J Browning which was filed as evidence in support of the reverse opposition against application 651031.  In a letter dated 13 December 1999 Mr Dredge was advised by the office that:

"this declaration was introduced outside of the time provided by regulation 5.8(4) and, consequently, is inadmissable as evidence in reply.

Furthermore, the opponent cannot rely on regulation 5.11 to have the Commissioner treat such material as part of the present opposition - the Commissioner will not use that regulation to allow a party to bypass the times set out in regulation 5.8 for filing evidence, or the requirements of regulation 5.10(4) for filing further evidence.

Accordingly, the only option available to the opponent if the Browning declaration is to be treated as part of the present opposition is to make a request under regulation 5.10(4) to serve that declaration as further evidence." 

On 12 January 2000 Firebelt applied to serve the Browning declaration, together with a copy of the decision by Dowsett J in Firebelt Pty Ltd v Brambles Australia Ltd & Anor [1998] FCA 1737 (24 December 1998), as further evidence. However, a copy of this decision has already been filed at the evidence in reply stage of the proceeding (see Exhibit TJD-5) and, consequently, what follows is confined to the Browning declaration.

Regulation 5.10 confers a broad discretion which must be exercised only after taking account of all relevant considerations, including the public interest that opposition proceedings be determined on their merits.  In order to do this, it is necessary for the Commissioner to consider the nature of the evidence sought to be adduced and the significance of that evidence for the opposition proceeding (per A Goninan & Co Ltd v Commissioner of Patents and Another 38 IPR 213). Although relating to applications for extensions of time under regulation 5.10(2), these principles clearly also apply to a determination under regulation 5.10(4) (see eg. Nalco ChemicalCompany v W R Grace and Co-Conn [1998] APO 65 (23 November 1998)). Thus, on 2 February 2000, the parties were advised in writing that to expedite matters the fate of the application to serve further evidence would be held in abeyance pending a decision on the significance of the evidence sought to be adduced by Firebelt.

In deciding this issue I am guided by what Sackville J said in the Goninan case at pages 225-6:

"I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits.  But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper can be given to the public interest in having such proceedings being determined on their merits."

This approach is not inconsistent with the general principles arising from the Pochi case referred to above, and is similar to the one adopted in GS Technology Pty Ltd v Commissioner of Patents (1998) AIPC 91-387 where the Federal Court found that it was inappropriate to apply a test of substantive relevance but that what was required was that the material in question was "on reasonable grounds, arguably relevant to the issues in the litigation."

Mr Browning is an employee of MacDonald and is in fact named as sole inventor in respect of the present invention.  The only portions of his declaration to which Mr Dredge's written submissions refer are paragraphs 18 and 20-23 which address the ground of inventive step.  In the first of these Mr Browning states that refuse compactor devices conventionally include a single oscillating blade or paddle, and this evidence is therefore merely confirmatory of what the specification itself has acknowledged.  He subsequently expresses the opinion that the transition from the rear loader disclosure of European specification 0314238 (see Exhibit TJD-8) to a side loader having the same general features is a matter of mere workshop practice.  However, this opinion goes to the claims under consideration in the reverse opposition which are directed to a side loading refuse vehicle, and perhaps not surprisingly says nothing of the features which actually characterise the claims of the present specification where the mode of loading is immaterial.  Furthermore, the opinion expressed by Mr Browning does not provide direct evidence on the common general knowledge, but rather is more concerned with the question of whether the claimed invention is obvious.  It is well recognised that this is a "jury question" which falls for determination by the Commissioner, and not by expert witnesses.

In view of the foregoing, I do not consider that Mr Browning's evidence is likely to be important to the ground of inventive step in the present case.  Mr Dredge has submitted that "[i]f Mr Browning is to be given any credibility in the other oppositions then the present application must be refused.  If the present application is allowed then so must 651031."  I totally reject this submission since, as indicated earlier, the reverse opposition is a separate action involving separate issues.

Consequently, and in light of the written advice previously given to the parties, the question of whether Firebelt's application to serve further evidence should be granted becomes a moot point.  The amended statement of grounds and particulars (which includes particulars relating to the proposed further evidence) filed on 24 February 2000 is also rendered otiose.  The practical effect of this is that I will not pay further regard to Mr Browning's declaration.

I now turn to the substantive issues to be decided.

DECISION  

Novelty

The test for novelty is whether an alleged anticipation is the same in substance as the claim in suit so that the alleged anticipation would, if the patent were valid, constitute an infringement (MeyersTaylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228). In applying this well-known "reverse infringement test" I must ascertain whether the alleged anticipations relied on by Firebelt disclose all the essential features of the invention as claimed (Rodi and Wienenberger AG vHenryShowell Ltd [1969] RPC 367).

The written submissions and declaratory evidence presented by Mr Dredge do not address this ground of opposition.  However, the statement of grounds and particulars indicates as mentioned earlier that Firebelt relies on Australian patent specifications 22410/92 (Exhibit TJD-3) and 651031 (Exhibit TJD-4) to sustain the allegation of lack of novelty.  Both alleged anticipations disclose a refuse collection vehicle having at least two separate refuse storage compartments, and  a plurality of refuse transfer mechanisms adapted to move refuse from a refuse entry portion into a respective storage compartment.  Specification 651031 utilises an oscillating blade or paddle as the primary transfer mechanism which alternately sweeps and compacts refuse in one storage compartment, and an endless conveyor assembly which functions as an auxiliary transfer mechanism for moving refuse to another storage compartment.  In specification 22410/92 the primary transfer mechanism comprises a slide packer as opposed to an oscillating paddle.

It is clear from this analysis that neither document discloses the multiple paddle arrangement of claim 1.  According to the statement of grounds and particulars, any differences between claim 1 and the alleged anticipations merely involve the substitution of mechanical equivalents, and so do not confer novelty.  I am not persuaded by this line of argument.  In Nicaro Holdings Pty Ltd v MartinEngineering Co 16 IPR 545, Gummow J states:

"Where in a case such as the present, the question is whether one or more integers of a claimed combination is not disclosed in an alleged anticipation, and it is said that what is disclosed does not sufficiently reveal that integer within the principles of Hill v Evans*, it will not be helpful to ask whether variations between the anticipation and the claimed combination answer the description "workshop improvement".  Perhaps recognising this, in reply counsel for the appellants put his case simply on the alternative basis that the differences represented no more than the substitution of mechanical equivalents, thereby bringing his case back to the legal mainstream.  But, as will later appear, to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a "mechanical equivalent".  The reasoning in the infringement cases … suggests the contrary."

* Hill v Evans (1862) 6 LT 90

In the present case it is evident from the specification that the employment of multiple compactor devices including a paddle which each serve a respective one of the storage compartments is essential to the invention claimed by claim 1.  Given the absence in both alleged anticipations of a feature which is clearly essential, it is inappropriate in terms of the reverse infringement test to dismiss this feature as a mere mechanical equivalent.  More relevantly, the alleged anticipations are wholly silent in relation to the feature of providing different degrees of compaction which is not only essential but central to the invention claimed by claims 1 and 7.

The statement of grounds and particulars additionally asserts that specifications 22410/92 and 651031 may be read together to establish lack of novelty.  Some guidance of when two or more documents constitute a single source of information is given in Nicaro Holdings at page 570 where Gummow J stated:

"What degree of lack of connection between two or more documents will make them "independent" and so forbid the making of a mosaic to destroy novelty, will be very much a question of the particular case.  Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date … Plainly, the degree of connection which is stated to exist in the documents themselves will be important."

The evidence before me concerning the nature of the art is of little assistance here but even if the alleged anticipations were regarded as forming a single source of information despite the absence of any cross-reference between them, there would in my view be no more disclosure of the claimed invention than as already stated for the alleged anticipations taken individually.

On the basis of the foregoing I find that Firebelt have not established this ground of opposition.

INVENTIVE STEP

Mr Dredge submitted that the claimed invention was obvious in the light of common general knowledge.  The essential nature of common general knowledge has been defined by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (1980) 144 CLR 253 as follows:

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

The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from suitably qualified experts of what was known by the person skilled in the relevant art.  In his declaration filed as evidence in reply Mr Dredge appears to draw the inference that he may be regarded as a suitably qualified expert based on the knowledge he has developed since entering the patent attorney profession.  However, whilst Mr Dredge's declaration serves as prima facie evidence that he may have acquired a reasonably competent knowledge in the field of the invention, it is clear given his lack of qualifications in a practical sense that he is not in a position to state what "forms the background knowledge which is available to all in the trade."

As an apparent fall-back position, Mr Dredge submitted that the decision in Sonotone Corporationv Multitone Electric Co Ltd (1955) 72 RPC 131 stood for the proposition that acknowledged prior art should be regarded as common general knowledge. On this basis he said that compaction paddle devices were on MacDonald's own admission commonly known in the art.

However, I am not convinced that Sonotone can be read as widely as Mr Dredge has urged since the court in that instance simply considered the question of whether as a matter of construction the language used in the specification amounted to an admission of the existing state of the relevant common general knowledge.  The court did not express any concluded view on this question, noting that "… it is, we think, necessary to see what the state of knowledge [on the evidence] was."

Nonetheless, it seems to me that when fairly construed the statement on page 3 of the present specification that single paddle systems are well known is suggestive that these systems are indeed common general knowledge, and this much appears to be confirmed by the findings of Dowsett J (Exhibit TJD-5).  Indeed, the full Federal Court in Bristol-Myers Squibb Co v F HFaulding & Co Ltd [2000] FCA 316 (22 March 2000) has indicated that this is how a specification would ordinarily be read on its face. The common use of longitudinally divided refuse storage compartments also was not in dispute in the former proceeding. The specification further states that "double paddle systems are known to applicant, for example as disclosed by the Geesink refuse collection machinery." This machinery is disclosed in European specification 0314238 (Exhibit TJD-8). In my opinion it does not necessarily follow that an acknowledgement of what is known to MacDonald (viz. the applicant) is tantamount to an admission of the state of knowledge among all those engaged in the field of the invention, but even if I am wrong in this I note that specification 0314238 does not disclose paddles of different length which exert different compaction forces on the refuse in accordance with claim 1.

Mr Dredge dismisses this feature as:

"… an inevitable consequence arising from the nature of a paddle packer [compactor] which occupies the space of a semi-cylinder according to its blade length.  The non-inventive unimaginative person in the art presented with the problem of building a two level side loading … waste collection vehicle equipped with upper and lower paddle packers  … would have inevitably been faced with the problem of the upper paddle packer obstructing flow of waste into the lower paddle packer if he tried to make the blades the same length and mount them on a common shaft.  He would also have to take account of road transport limitations on vehicle width that would not be a problem with a rear loader of the GEESINK type.  He would these problems [sic] by making the upper paddle shorter so there would be space … This is simple logic that inevitably flows from the simple geometry in an obvious way."

However, not only are these submissions uncorroborated by expert testimony, they clearly represent an ex post facto dissection of the invention which has so often been criticised by the courts (see eg. Minnesota Mining at page 293). Mr Dredge has as a result failed to demonstrate that the person skilled in the art would have been led as a matter of routine to select the particular combination of features claimed by claim 1. This is also the case with the combination of claim 7 which Mr Dredge has totally ignored.

In view of the foregoing I find that Firebelt have not established this ground of opposition.   

MANNER OF MANUFACTURE

In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 the majority of the High Court concluded that the words "a patentable invention" in section 18(1) retain a threshold requirement that the alleged invention be a manner of new manufacture. The court also held that this threshold requirement will, notwithstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claim is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture.

Although not argued by either party, there is in light of my discussion under the preceding ground of opposition nothing on the face of the specification to suggest that the threshold requirement of inventiveness has not been met.  Accordingly, I find that the claimed invention is directed to a manner of new manufacture.

SECTION 40

Firebelt have raised a number of issues under this ground but in my opinion only some of these potentially affect the validity of the specification and claims.

First, it is said by the statement of grounds and particulars that there is no description of the features claimed by claims 5, 6 and 7 as regards the sensor means or control means and, as a consequence, these claims are not fairly based.  Mr Oberin countered that the features of claims 5 and 6 are described in paragraphs appearing on page 4 of the specification.  The features of claim 7, which combine features defined by claims 5 and 6, are also described in the same paragraphs.  In response Mr Dredge submitted that it was apparent from the specification that MacDonald sought to rely on a cross-reference to 60230/90 to support claim 5, and general statements on page 4 to support claims 6 and 7.  He said there is no disclosure in this reference of the features of claim 5, and no provision to vary the amount of compaction in the sense claimed by the latter claims.

Having reviewed the specification I am satisfied that pages 4 and 7 provide a "real and reasonably clear disclosure" of the features claimed by claims 6 and 7 (per Nicola Leonardis vSartas No 1 Pty Limited (1996) AIPC 91-239). However, I do not accept that 60230/90 (see Exhibit TJD-7) provides a corresponding disclosure of the features of claim 5. This specification relates to a single paddle compaction system wherein the paddle is moved by a pair of power cylinders. The system includes a control mechanism having a sensor responsive to movement of the paddle which provides a signal to control the power cylinders and thereby vary the speed and pressure applied by the paddle during its movement stroke. There is, however, no suggestion that the control mechanism operates in the dual mode specified by claim 5. Accordingly, I find that claim 5 lacks fair basis.

The second issue concerns the following passage on page 7:

"The upper and lower paddles 12,13 best shown in figures 4 and 5 are commonly mounted on a vertical shaft 30 driven by a hydraulic motor or the like 31.  The upper paddle is of shorter dimension and thereby applies less forces during compaction of the upper compartment which may contain fragile material such as glass bottles.  The lower compartment destined to collect crushable and compressible general household and putrescible refuse has a larger dimension paddle 13 adapted to apply a greater compaction force to the refuse material and therefore achieve greater compression of the refuse material …"

I note at the outset that this issue does not extend to claim 1 which simply refers to paddles of different lengths exerting different compaction forces.

Mr Dredge has contended that because the same torque is applied to each paddle, the shorter paddle would apply a greater compaction force rather than the longer paddle as stated above.  Mr Oberin pointed out that in situations where similar refuse materials are being compacted, the fact that the longer paddle acts on a greater amount of refuse than the shorter paddle inevitably means that the former will exert more force as it will move more refuse with each stroke.  Mr Dredge asserted that this submission confused the volume of refuse displaced with the force respectively applied by the paddles.  He said that when the paddles are under load the shorter paddle will crush glass bottles before the longer paddle for the same load because the paddles are on a common shaft and the same force is being distributed over a smaller area.

The force needed to produce a given torque in a body is by definition inversely proportional to the distance of the line of action of the force from the rotational axis of the body, and on this basis Mr Dredge contends that the torque applied to the common drive shaft (and hence the paddles) translates to the exertion of a greater force on the refuse by the shorter paddle.

Although initially appealing, this submission is logically flawed in assuming that the same torque acts on each paddle.  It is known from established laws of motion that the torque acting on a rotating body is equal to the rotational inertia of the body multiplied by its angular acceleration.  The rotational inertia is in turn defined as the sum of the products obtained by multiplying each mass element of the body by the square of its distance from the rotational axis of the body.  In the present case the paddles are connected to a common shaft, and thus rotate with the same angular acceleration.  This means that a greater torque acts on the longer paddle due to its higher moment of inertia.  More relevantly, and returning to the objection raised by Mr Dredge, the force exerted by each mass element of the paddles is (using the basic principle upon which he relies) equal to paddle torque divided by the distance of the element from the rotational axis with the result that the elemental force is directly proportional to this distance.  The total force exerted by the paddles is calculated by integration of the elemental forces over the respective paddle lengths, and thus the longer paddle must as stated by the specification exert a greater force than the shorter paddle.   

The third issue also goes to the full description of the invention which Firebelt assert has been calculated to skew the description away from the most relevant prior art by the omission of any reference to specifications 651031 and 22410/92.  I do not understand this assertion since, as submitted by Mr Oberin, the Act does not require the specification to describe the invention with the assistance of an appraisal of the prior art.  Furthermore, and as discussed earlier, both items of prior art in question fall well short of disclosing all the essential features of the claimed invention and thus I cannot see how the omission of any reference to them could possibly "contrive the description and claims to mislead as to the true nature of the invention" as alleged.

Finally, it is argued that claim 13 is not fairly based in defining "chute means having a mouth with divider adapted to interengage with a divider of a refuse bin" since the specification only refers to abutment between these features which is not a form of interengagement.  I disagree entirely since it is plainly stated in the final paragraph appearing on page 6 that the above-mentioned "mouth" includes a cushion edge which is adapted to interengage with the edge of the refuse bin together with its central divider.

The remaining issues raised either do not affect an understanding of the specification when read as a whole, or rely on a strained rather than a purposive construction, and so will not be considered further.

However, I note of my own volition that it is not clear whether the shorter paddle performs any compacting function at all since as described on page 6 the upper storage compartment is provided with a reciprocating rake means to push loose recyclable material such as glass bottles towards the rear of the refuse collection vehicle.  It thus seems that the shorter paddle functions as a so-called refuse transfer mechanism (cf. Exhibits TJD-4 and TJD-5) which merely pushes material from the refuse entry portion into the path of the rake means in like fashion to the conveyor arrangement disclosed in specification 22410/92 (see page 6 lines 16-26).  In this context, the shorter paddle prima facie does not exert a "compaction" force.  I therefore find that the specification does not describe the invention fully or, in the alternative, that claim 1 lacks fair basis.

CONCLUSION

I have found that the opposition does not succeed under the grounds of novelty, inventive step or manner of manufacture, but is successful under the ground of non-compliance with section 40.  As the deficiencies identified under this ground can in my view be overcome, I allow MacDonald 60 days from the date of this decision to propose amendments accordingly.

The power of the Commissioner to award costs is discretionary, so I must take account of all relevant considerations (per American National Can Company v W R Grace & Co-Conn 29 IPR 292). In actions before the Commissioner, costs usually follow the event. In the present case Firebelt have only succeeded in establishing a relatively minor section 40 issue, and therefore are not in my opinion entitled to an award of costs.

Furthermore, I have earlier expressed concerns regarding the manner in which Firebelt have conducted their case.  Their failure to file material in support of the opposition in the first instance led to the filing of new evidence purportedly in reply, and further evidence was sought to be introduced under the cover of written submissions.  This clearly has imposed considerable inconvenience on MacDonald as well as the Commissioner who is charged with the orderly conduct of proceedings brought before her.  In these circumstances I believe Firebelt should have costs awarded against them.

Accordingly, I award costs against Firebelt.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  McMaster Oberin Arthur Robinson & Hedderwicks,

Melbourne

Patent attorneys for the opponent  :  Intellpro, Brisbane