Memcor Australia Pty Ltd v GE BetzDearborn Canada Company - [2010] APO 18

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18

Patent Application: 715364

Title:Vertical Skein of Hollow Fiber Membranes and Method of Maintaining Clean Fiber Surfaces

Patent Applicant: GE BetzDearborn Canada Company

Opponent: Memcor Australia Pty Ltd

Delegate: Jacob Elijah

Decision Date: 8 September 2010

Hearing Date: 8 and 9 June 2010, in Canberra

Catchwords: PATENTS - opposition to grant – whether claim 1 lacks novelty in light of citation raised – lack of novelty of claim 1 not established – whether claims 1 to 18 (excluding claims 9 to 14, 18) are obvious in light of the common general knowledge at the relevant priority date, either considered separately or taken with the relevant available prior art information - lack of inventiveness of claims 1 to 18 not established – whether opposed claims 1 to 18 comply with the requirements of section 40(3) of the 1990 Act due to lack of clarity of a particular term – particular term shown not to lack clarity hence non-compliance of opposed claims with section 40(3) of 1990 Act not established – opponent unsuccessful on all grounds pursued for the substantive opposition
Representation: Patent applicant: Matthew Swinn, partner and Faisal Mian, of Corrs Chambers Westgarth, Melbourne, represented the applicant.
Opponent: Stephen Burley, senior counsel, Hamish Bevan, counsel,
instructed by Rebekah Gay and Peter Heathcote (both partners),
patent attorneys of Shelston IP, Sydney, represented the opponent.

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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 715364

Title:Vertical Skein of Hollow Fiber Membranes and Method of Maintaining Clean Fiber Surfaces

Patent Applicant: GE BetzDearborn Canada Company

Date of Decision: 8 September 2010

DECISION

The opponent pursued the grounds of novelty, inventive step and section 40. The opponent has been unsuccessful on all grounds.

I had found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined with the citations raised by the opponent against inventive step. The issues raised by the opponent regarding lack of clarity were not supported as the claims and specification did not present any construction issues which could not be resolved by the skilled addressee.

Costs awarded against the opponent Memcor Australia Pty Ltd

I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

REASONS FOR DECISION

BACKGROUND

Zenon Environmental Inc. (now GE BetzDearborn Canada Company – henceforth GE) filed patent application No 715364 under the provisions of the Patent Cooperation Treaty (PCT) on 8 August 1996. The application claims priority from two US patent applications 08/514119 and 08/690045 filed on 11 August 1995 and 31 July 1996 respectively. The application under opposition was examined and advertised accepted on 3 February 2000.

Memcor Australia Pty Ltd (Memcor) filed a notice of opposition on 2 May 2000. A statement of grounds and particulars was filed on 3 August 2000. This was subsequently amended a few times

with the most recent amended statement of ground and particulars being allowed on 20 May 2010. The filing of evidence in support, evidence in answer, evidence in reply and further evidence including the related evidence in response was completed on 13 May 2010.

A hearing to deal with the substantive opposition was held in Canberra on 8 and 9 June 2010. Matthew Swinn, partner and Faisal Mian, of Corrs Chambers Westgarth, Melbourne, represented the applicant. Mr Scott Pundsack (Canadian attorney) attended via telephone on behalf of the applicant. Stephen Burley, senior counsel, Hamish Bevan, counsel, instructed by Rebekah Gay and Peter Heathcote (both partners), patent attorneys of Shelston IP, Sydney, represented the opponent. Gary Ganzi (via phone) and Matthew Roper attended on behalf of the opponent.

The opponent’s submissions were combined to address a substantive section 59 action against Patent Application No. 2004203856, which is the divisional application of the parent application being considered in this decision. The applicant is the same for both the parent and the divisional application and had no objection to the joint submissions for addressing both opposition actions. For the record the Patent Office by a communication dated 8 October 2009 had stated,

“The evidence served and filed in respect of the opposition to patent application 715364 is to be treated as having been served and filed in respect of the opposition to patent application 2004203856 and vice versa.”

I shall proceed to list the evidence for the current action (patent application 715364 – parent) followed by a brief summary of the evidence for the parallel action on the divisional (patent application 2004203856)

EVIDENCE (patent application 715364)

Evidence in support consists of declarations by:

·Professor Anthony G. Fane, dated 9 August 2001 with exhibits AGF-1 to 12. He states that he is currently a Professor at the UNESCO Centre for Membrane Science and Technology, School of Chemical Engineering and Industrial Chemistry, University of New South Wales, Sydney. His declaration indicates that he has a PhD and D.I.C. from the Imperial College, London. The declaration further indicates that he has extensive research and consulting experience in water treatment, water reclamation and membrane processes and technologies for the same.
·Peter Rex Heathcote, dated 9 January 2001 and 10 August 2001 with annexures PRH-1 to 16. He states that he is a patent attorney of Baldwin Shelston Waters (now Shelston IP), the firm responsible for prosecuting the opposition on behalf of Memcor Australia Pty Ltd.

Evidence in answer consists of declarations by:

·John David McCormack, dated 1 June 2004 with exhibits JMC-1 to 27. He states that he is a Principal (patent attorney) of Griffith Hack, Patent and Trade Mark attorneys, the firm representing the applicant (Zenon Environmental Inc.).
·Richard W. Baker, dated 8 September 2004 with exhibits RB-1 and RB-2. He states that he has a PhD in Physical Chemistry from the Imperial College London and has been involved in the membrane research community for several years. He further states that he is currently the President of Membrane Technology and Research, Inc., which he founded in 1982.
·Vincenzo Cinanni, dated 16 December 2004. He states that he has a B.Sc. in Environmental Chemistry and a B.Sc. in Extractive Metallurgy, both from Murdoch University. He further states that he has over 20 years experience in the mining, metal processing, chemical processing and water and wastewater treatment industries. He indicates that he is currently employed by Burns and Roe Worley as a Project Manager and Business Manager – Water WA

Evidence in reply consists of declarations by:

·Dr Gregory Lawrence Leslie, dated 14 April 2009 with exhibits GLL-1 to 16. He states that he is currently Associate Professor of the School of Chemical Sciences and Engineering at the University of New South Wales (UNSW). His declaration indicates that he has a PhD in Chemical Engineering from UNSW and he further indicates that he has had extensive experience in the field of fibre membrane filtration systems, microfiltration, ultrafiltration and reverse osmosis filtration systems using membrane technology as a researcher, consultant, adviser, teacher and project manager.
·Warren Thomas Johnson, dated 11 May 2009 with exhibits WJ-1 to 5. He states that he has an Honours degree in chemical engineering from the University of New South Wales. He further indicates that he has extensive experience in the field of membrane technology related to water and sewage treatment plants. His declaration indicates that he is currently the Global Director R&D, Memcor Products Siemens.

First lot of further evidence consists of a declaration by

·Peter Rex Heathcote, dated 28 May 2009 with exhibits PRH-1 to 28

10. First lot of evidence in response to further evidence consists of a declaration by:

·Katerina Craven, dated 2 October 2009 with annexure KC-1 consisting of four exhibits. She states that she is a solicitor of Corrs Chambers Westgarth, the solicitors for the applicant.

11. Second lot of further evidence consists of declarations by:

·Peter Rex Heathcote, dated 5 March 2010 with exhibits PRH-1 to 28
·Dr Gregory Lawrence Leslie, dated 2 March 2010 with exhibits GLL-17 to 28

12. Second lot of evidence in response to further evidence consists of declarations by:

·Jeff Cumin, dated 30 April 2010. He states that he is currently the UF/MBR Ideation Manager for GE Water and Process Technologies Canada, which is related to GE BetzDearborn Canada Company.
·Henry Behmann, dated 3 May 2010 with exhibits HB-E to HB-J. He further indicates that he had made a declaration in the matter of an opposition to Australian Patent Application no 2004203856 on 11 September 2008. He further indicates that he has retired since then although he still accepts contracts in the areas of patent searching and membrane research.
·Richard W. Baker, dated 5 May 2010.

EVIDENCE (patent application 2004203856)

13. Evidence in support consists of declarations by:

·Dr Gregory Lawrence Leslie, dated 18 December 2007 with exhibits GLL-1 to 12.
·Peter Rex Heathcote, dated 5 December 2007 and with exhibits PRH-1 to 33.

Evidence in answer consists of declarations by:

·Pierre Cote, dated 11 September 2008 with exhibits A to F.
·Henry Behmann, dated 11 September 2008 with exhibits A to D.

Evidence in reply consists of declarations by:

·Dr Gregory Lawrence Leslie, dated 27 February 2009 with exhibits A to E.
·Warren Thomas Johnson, dated 13 March 2009 with exhibits WJ-1 to 5.

First lot of further evidence (second lot for application no 715364) consists of declarations by:

·Peter Rex Heathcote, dated 5 March 2010 with exhibits PRH-1 to 28
·Dr Gregory Lawrence Leslie, dated 2 March 2010 with exhibits GLL-17 to 28

First lot of evidence in response to further evidence (second lot for application no 715364) consists of declarations by:

·Jeff Cumin, dated 30 April 2010.
·Henry Behmann, dated 3 May 2010 with exhibits HB-E to HB-J.
·Richard W. Baker, dated 5 May 2010.

THE SPECIFICATION

14. The specification under opposition was advertised accepted on 3 February 2000. The specification is directed to relatively large systems for the microfiltration of liquids. It indicates initially that the invention relates to (i) a membrane device which is an improvement on a frameless array of hollow fiber membranes, (ii) a method of maintaining clean fiber surfaces while filtering a substrate to withdraw a permeate, and (iii) a method of forming a header for a skein of fibers. The specification defines the term skein as referring to an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted (secured within a resin) the opposed terminal portions of the fibers so as to leave their ends open; and (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers. This combination of structural elements is not confined in a rigid shell or module. This integrated combination of structural elements is immersed, along with several others in a large tank of multicomponent substrate such that the substrate is in fluid contact with the outer surfaces of the membrane fibers. The flow into the inner hollow part of the membrane is initiated by the application of suction pressure at the permeate collection end. In order to stop the outer surfaces of the membranes from clogging/fouling air scouring is provided from below the vertical integrated structure to scrub the fibers. This is followed by a discussion and comparison of the current invention with the prior art consisting of three patent specifications and two technical papers.

15. Some improvements identified are:-

the doing away with the need to form a module in which the fibers are confined.
the fibers are in a vertical skein and do not present an arcuate configuration above a horizontal plane through the horizontal centre line of a header. As a result, the path of the rising bubbles (used for scrubbing the fibers to remove deposited material) is generally parallel to the fibers and is not crossed by the fibers of a vertical skein. Yet the bubbles scrub the fibers.
The restrictedly swayable fibers, because of their defined length, do not get entangled, and do not abrade each other excessively. This is because the each of said fibers has a length from 0.1% to less than 5% greater than the fixed distance between the headers, which holds the fibers in a vertical configuration.
The side-to-side displacement of an intermediate portion of each fiber within the “zone of confinement” or “bubble zone” is restricted by the fiber’s length. The defined length of the fiber minimizes (i) shearing forces where the upper fibers are held in the upper header, (ii) excessive rotation of the upper portion of the fibers, as well as (iii) excessive abrasion between fibers.
The swaying motion of the fiber of the invention is distinct from the vibration which occurs when a fiber is taut, that is, when the length of the potted fiber exposed to substrate is not longer than the distance between the opposed faces of the upper and lower headers holding the fiber. Unlike the fibers of the prior art modules, there is essentially no tension on the fibers of the current application because the opposed faces of the headers are spaced apart at a distance less than the length of an individual fiber.

16. The specification then identifies three aspects of the invention. The first relates to a microfiltration membrane device. The second is directed to a “gas-scrubbed assembly”. The third relates to a header for a skein of a multiplicity of fibers. This is followed by a detailed description including reference to the drawings for various embodiments of the invention. The specification then provides six examples of the invention followed by a glossary of terms. The specification concludes with 18 claims including 5 independent claims and four omnibus claims. As claims 9 to 14 are not under attack by the opponent under any grounds I shall not list them here.

17. The independent and omnibus claims read as follows:

1. A microfiltration membrane device, for withdrawing permeate substantially continuously from a multicomponent substrate, said membrane device including:

·    a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
·    a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;
·    said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers extending from a permeate-discharging face of at least one header;
·    permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers; and,
·    means to withdraw said permeate;
·    said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;
·    each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;

wherein said fibers are subject to a trans-membrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.

5. A gas-scrubbed assembly including a microfiltration membrane device in combination with a gas-distribution means to minimize build-up of particulate deposits on the surfaces of hollow fiber membranes (“fibers”) in said device, and to recover permeate from a multicomponent liquid substrate while leaving particulate matter therein, said membrane device including:

a multiplicity of fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;
a first and second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance, each header being formed with a potting resin cured in a resin-confining means;
said first header and second header having opposed terminal end portions of each fiber sealingly secured therein, all open ends of said fibers extending from a permeate-discharging face of at least one header;
permeate collection means to collect said permeate through at least one of said headers sealingly connected in open fluid communication with a permeate-discharging face of each of said headers;
means for withdrawing said permeate; and,
said fibers, said headers and said permeate collection means together forming a skein wherein said fibers are essentially vertically disposed;
said gas-distribution means is located within a zone beneath said skein, said gas-distribution means having through-passages therein adapted to have sufficient gas flowed therethrough to generate enough bubbles flowing in a column of rising bubbles between and around said skein fibers, to keep surfaces of said fibers awash in bubbles;
said fibers, said headers and said permeate collection means together forming a skein wherein said fibers are essentially vertically disposed;
each of said fibers having substantially the same length, said length being from at least 0.1% greater, to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;

wherein

said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and said fibers of each said header are spaced apart with potting resin extending over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship;
said through-passages discharge a cleansing gas in an amount in the range from 0.47 – 14 cm3/sec per fiber in bubbles which rise vertically substantially parallel to, and in contact with said fibers, movement of which is restricted within said column;
whereby said permeate is essentially continuously withdrawn while concentration of said particulate matter in said substrate is increased.

8. A process for maintaining the outer surfaces of hollow fiber membranes substantially free from a build-up of deposits of particulate material while separating a permeate from a multicomponent liquid substrate in a reservoir, said process including:

submerging skein fibers in substantially vertical configuration within said substrate said fibers being unconfined in a modular shell and securely held in vertically opposed, upper and lower headers spaced-apart at a fixed distance, said fibers having substantially the same length and from at least 0.1% greater, to 5% greater than said fixed distance, said fibers being swayable in said substrate;

flowing a fiber-cleansing gas through a gas-distribution means proximately disposed relative to said skein, within a zone beneath said skein, and contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up;
maintaining an equilibrium flux initially obtained after commencing operation of said process;
collecting said permeate in said collection means; and,
withdrawing said permeate;
introducing said cleansing gas in an amount in the range from 0.47 – 14 cm3/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers;
restricting movement of said fibers to said vertical zone defined by lateral movement of outer fibers in said skein;
vertically gas-scrubbing said fibers’ outside surfaces with bubbles which flow upward in contact with said surfaces, said fibers having a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to about 345 kPa (50 psi);
simultaneously, substantially continuously, withdrawing said permeate while increasing the concentration of said particulate material in said substrate.

15. A microfiltration membrane device for withdrawing permeate substantially continuously from a multicomponent liquid substrate substantially as herein described with reference to the accompanying drawings.

16. A gas-scrubbed assembly substantially as herein described with reference to the accompanying drawings.

17. A process for maintaining the outer surfaces of hollow fiber membranes essentially free from a build-up of deposits of particulate material substantially as herein described with reference to the accompanying drawings.

18. A method of forming a header for a skein of a multiplicity of fibers substantially as herein described with reference to the accompanying drawings.

STATEMENT OF GROUNDS AND PARTICULARS

18. The opponent raised grounds of novelty, inventive step, manner of manufacture and section 40/fair basis/lack of clarity. At the hearing the opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity.

DECISION

19. Both parties made oral submissions at the hearing as well as filing written submissions. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision. I shall commence with consideration of novelty followed by inventive step and section 40/clarity matters.

Novelty

20. The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235 states:

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

The reverse infringement test teaches that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).

21. Before considering the documents raised by the opponent against novelty, I shall proceed to determine the features of the invention set out in claim 1 of the specification. The opponent has not been able to establish that any of the features of the independent claims are inessential. Consequently I shall assume that all features of the independent claims are essential (See Catnic Components v Hill & Smith Ltd, (1982) RPC 183 at page 227). The features of claim 1 are:-

(a) A microfiltration membrane device, for withdrawing permeate substantially continuously from a multicomponent liquid substrate, said membrane device including:

(b) A multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;

(c) A first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;

(d) Said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers extending from a permeate-discharging face of at least one header;

(e) Permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers; and,

(f) Means to withdraw said permeate;

(g) Said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;

(h) Each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;

(i) Wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and,

(j) Said fibers of each said header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.

The opponent had submitted that some of these features formed part of the common general knowledge in Australia at the relevant date. I shall consider these submissions when assessing the disclosure of each feature. I shall now proceed to assess the novelty of the challenged claims against the citations raised by the opponent.

JP 63-143905 (Kunio) (Leslie Declaration 18 December 2007, Exhibits GLL-7 and 8)

22. The opponent submitted that claim 1 of both the Parent and the Divisional lacked novelty in light of this document. Exhibit GLL-7 is a copy of the original Japanese publication and GLL-8 is a copy of a certified translation in English of the Japanese document of GLL-7. I shall refer where relevant to the text of the English translation and to the drawings if required in the Japanese document. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The invention also requires that the length of the fibres exceed the vertical distance between the headers by a specified range (1 to 4% excess). The apparatus carries out continuous microfiltration wherein the permeate is collected in the lumens of the fibres and backwashing is carried out once the transmembrane pressure differential exceeds a certain value.

23. Feature (a): - The difference between opposed claim 1 and the citation lies in “withdrawing permeate substantially continuously”. The citation discloses a back washing step in addition to the filtration step but I note that when filtration is occurring there is no indication of any interruptions to this process. Filtration continues until a certain pressure difference is exceeded indicating that backwashing is required. Professor Leslie indicated that such filtration with periodic backwashing was considered to be substantially continuous. The applicant has not challenged Professor Leslie’s submission. I note that opposed claim 1 states, “A …membrane device, for…, said membrane device comprising.” This indicates that the device must be suitable for a particular purpose but the device is not limited to that purpose. I find that feature (a) is disclosed in the citation.

24. Feature (b): - Figures 1 and 2 of the citation disclose a multiplicity of fibers unconfined in a shell of a module. Figure 5 of the citation shows the fiber arrangement wherein the fibers are partially covered by a protecting tube open from the bottom, but definitely not confined in a shell of a module. The description of GLL-8, at page 8, indicates that the fibers can oscillate to a certain extent (swayable). I consider that feature (b) is disclosed in the citation.

25. Feature (c): - This feature is clearly disclosed from Figures 1 and 2 of the citation.

26. Feature (d): - This feature is clearly disclosed from figures 1and 2 and the related parts of the description (pages 2 and 3) in the citation.

27. Feature (e): - The citation fails to show a permeate collection means, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers. The citation at figure 5 shows several modules wherein the top headers are connected via a common diaphragm to a common permeate collecting zone. There is no disclosure of a single module wherein the top header of that module is sealingly connected to a permeate collection means. There is no permeate collection means disclosed for the bottom header. I consider that feature (e) has not been disclosed in the citation.

28. Feature (f): - The means to withdraw the permeate is disclosed in the citation at figure 5 which shows the pipe 11 for removal of permeate from the upper collection chamber 1b. Thus feature (f) is disclosed.

29. Feature (g): - The vertical skein composed of fibers, headers and permeate collection means would seem to have been disclosed in figure 5 of the citation but it is missing the permeate collection means as clearly defined in feature (e). However the feature of a vertical skein assembly is disclosed. I consider that feature (g) is disclosed.

30. Feature (h): - The description and drawings (figures 1 to 4) show an excess length of fiber (compared to the length between the vertically opposed headers) of 1 to 4%. The opposed claim discloses an excess length of 1 to less than 5% with the additional requirement that it “permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”. As the citation has disclosed an excess length lying within the range of 1 to 5%, I consider that it would “permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”. Thus feature (h) has been disclosed in the citation.

31. Feature (i): - The citation at page 3 merely indicates that the membrane fibres are subject to a differential pressure. No specific range or actual differential pressure is disclosed. The opponent contended that Professor Leslie’s evidence showed that the pressure ranges of 0.7kPa to 345kPa were known to lie within the normal operating ranges of both submerged and pressurised microfiltration systems, which were known to the person skilled in the art at the relevant priority date. Exhibit GLL-4 (Membrane Handbook edited by Ho and Sirkar, chapter 13, page 457, published 1992) of Professor Leslie’s declaration of 18 December 2007 supports this assertion and this was not challenged by the applicant. I find that feature (i) has been disclosed via the common general knowledge of the person skilled in the art at the relevant priority date.

32. Feature (j): - The opponent contended that the citation had identified that one of the defects of the prior art was the dense packing of the fibers and further that the included figures also depicted that the fibres were spaced apart. The opponent also stated that Professor Leslie indicated that at the relevant priority date he and others working in the field understood that within a bundle of fibres, the packing density of the fibres could be varied in order to optimise the efficiency of operation and to optimise the costs associated with making and operating the device. No published material was provided to support the assertions of Professor Leslie. The citation does not indicate any spacing between the fibres at the headers, which is what feature (j) is clearly defining. In particular what is defined is that the ends of the fibres must be maintained in a closely spaced apart relationship. The citation is focussed on the excess length of the fibers between the headers and indicates how a particular excess length range needs to be selected to avoid problems in terms of damage to the fibres, backwashing and filtration. The citation shows spacing between the fibres at points away from the header (and not at the header) and close to the intermediate point of the fibres (Fig 1). I find that feature (j) has not been disclosed in the citation.

33. Looking at features (a) to (j) of opposed claim 1, I find that features (e) and (j) are not disclosed in the citation. Consequently claim 1 of the opposed application does not lack novelty when assessed against the disclosure of JP 63-143905. The opponent did not challenge the novelty of the other claims of the opposed application hence I consider that all claims have not been shown as lacking in novelty in light of JP 63-143905.

Inventive Step

34. The opponent stated, “…the invention as claimed is obvious when compared with the common general knowledge as at the priority date, either considered separately or taken with the relevant available prior art information. This applies to the broadest claim, claim 1, as well as to all remaining claims of the Parent and the Divisional, save for claims 9 to 14.” I note that the reference to claims 9 to 14 includes both the Parent and the Divisional. The opponent and applicant have made fairly detailed submissions with regard to inventive step and I shall refer to them where relevant in my assessment of inventive step.

I note that the filing date of the opposed application is 8 August 1996. Thus Subsections 7(2) and 7(3) of the Patents Act 1990 (prior to 1 April 2002) indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:

(a) common general knowledge in the art; or

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

Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at page 286:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:

• a determination of the problem sought to be solved by the opposed patent specification
• a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
• a determination of the common general knowledge in Australia at the priority date (8 August 1996)

35. In order to determine the problem that the invention sought to solve I shall have regard to the opposed specification. Though there is no single statement outlining the defects of the prior art, the introductory part of the specification at pages 1 to 3 identifies the following matters:

• capability of usage in relatively large systems for the microfiltration of liquids, and capitalizes on the simplicity and effectiveness of a configuration which dispenses with forming a module in which the fibers are confined.
• Usage of vertical placement of fibers in a skein so that the path of the rising bubbles for scrubbing the fibers is generally parallel to the fibers and is not crossed by the fibers.
• The restrictedly swayable fibers because of their defined length do not get entangled and do not abrade each other excessively. The defined length of the fiber minimizes (i) shearing forces where the upper fibers are held in the upper header, (ii) excessive rotation of the upper portion of the fibers, as well as (iii) excessive abrasion between fibers.
• There is essentially no tension on each fiber because the opposed faces of the headers are spaced apart at a distance less than the length of an individual fiber.
• The prior art devices did not realize the critical importance of maintaining flux by aerating a skein of fibers from within and beneath the skein and the necessity of thoroughly scrubbing substantially the entire surfaces of the fibers by flowing bubbles through the skein to keep the fibers awash in bubbles

Thus the problems of the prior art were (i) the usage in large systems of modules in which fibers were confined, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process.

36. The opponent was of the view that the opposed specification identified the starting point as US 5248424 and that there was a desire on the part of the applicant to improve the combination described in that patent. The specification commences by stating, “This invention relates to a membrane device which is an improvement on a frameless array of hollow fiber membranes and a method of maintaining clean fiber surfaces while filtering a substrate to withdraw a permeate, which is also the subject of US 5248424; and to a method of forming a header for a skein of fibers.” The description does not precisely identify the defects of US 5248424 nor does it then confine itself to those defects (whatever they may be). The description provides (as I have indicated above) a fairly detailed description outlining the defects of the prior art. Thus I shall not confine myself solely to the defects of US 5248424 for an assessment of inventive step considerations.

37. The non-inventive worker in the field would be a water treatment expert (chemical engineer/industrial chemist) with specialised knowledge of membrane filtration systems. The opponent has submitted that their declarants, Prof Fane, Assoc Prof Leslie and Mr Johnson qualify as a person skilled in the relevant art.

38. I note that Mr Johnson has provided information on the technology he was working on at Memtec and how he kept up to date with the latest developments in the art. However he has not provided any specific statement on what learning he considered as being part of the common general knowledge (henceforth cgk) in the art at the relevant date.

39. I note that Professor Fane’s experience in the area of membrane technology is mostly in the academic field with some consultancy services provided to industry. I shall consider his submissions on cgk while seeking to ensure that they are supported by published material wherever these assertions are challenged by the applicant. Professor Fane has clearly set out what he considered constituted the cgk in Australia at the relevant date (see below): -

The arrangement of fiber membranes in a vertical skein between opposed headers with the fibers secured in potting resin.
The application of a transmembrane pressure in the range 0.7 kPa to 345 kPa was well within the normal operating range of such systems.
The use of permeate collection means to collect filtrate or permeate from the ends of the fibers.
Spacing fibers at their ends within the respective end pots.
The use of bubbles to clean surfaces of membranes.

40. Associate Professor Leslie indicates that he has had extensive experience in the field of fibre membrane filtration systems, microfiltration, ultrafiltration and reverse osmosis filtration systems using membrane technology as a researcher, consultant, adviser, teacher and project manager. Prof Leslie has also set out in his declaration of 18 December 2007 what he considered to be cgk in Australia at the relevant date. As his submissions are rather detailed I have provided a summary of the same in my detailed consideration of cgk later on in this section.

The applicant considered that Professor Leslie had been affected by hindsight and that his evidence could not assist the Commissioner to determine the relevant steps which the skilled addressee would have taken as a matter of routine from the prior art. This submission was based on the involvement of Professor Leslie in a previous hearing (Memcor Australia Pty Ltd v Zenon Technology Partnership [2008] APO 15 (5 June 2008)) wherein he had been provided with the parent application and claims submitted on 28 October 2004 in a Request to Amend the Parent Application, wherein the 28 October 2004 claims largely overlapped with the claims of the current Divisional Application. However the parent application and the claims submitted on 28 October 2004 cannot be considered to be the same (that is, identical) as the Divisional application and no evidence has been provided to show that the parent and divisional application are the same. I note that there is a great deal of similarity in the description and drawings but that there are some major differences between the claims. Thus I shall proceed to consider Professor Leslie’s evidence on its merits. The applicant has raised concerns regarding Professor Leslie’s evidence on several grounds and I shall address these as I proceed to establish the cgk at the relevant date.

I shall now assess the submissions of the applicant’s declarants regarding cgk.

41. Dr Baker has extensive overseas experience in the area of membrane technology including having several published papers and patents in the field. As Dr Baker is an inventor in the field his submissions will not be those of the ordinary person skilled in the art. However I can give due consideration to any of his submissions which provide a view of the state of the art at the relevant priority date. Dr Baker asserted that the state of knowledge in the membrane filtration field did not differ significantly between the United States, Australia and many European or other countries. His submissions were clearly similar to Items 1 and 3 of Professor Fane with the added information that the membrane fibers were enclosed in a shell. He also indicated that horizontal and vertical arrangements of the fibers were known. He strongly challenged the submissions of Professor Leslie which asserted that certain published technical papers and patent documents had formed part of the cgk at the relevant date.

42. Mr Cinanni has qualifications in chemistry and metallurgy and has acquired knowledge of membrane filtration technology while working for industry. Mr Cinanni has published several papers on membrane technology but I note that these were published after the relevant priority date. However his experience clearly shows that he worked in the relevant field before the earliest priority date of the opposed application. I shall consider his assertions on cgk while seeking evidence which supports them. Mr Cinanni indicates that hollow fibre membranes were not an accepted technology for all applications as they had problems with fouling of the membranes. He indicates that the hollow fibre membrane equipment available did constitute a bundle of fibres with headers enclosed in a shell where cleaning of the fouled fibres was carried out by backwashing. The filtration occurred from the outside of the fibre to the inside and backwashing was carried out in the reverse direction. He indicated that the fibres were not intentionally slackened to any specific range.

43. Dr Cote has extensive overseas experience in the area of membrane technology including having several published papers and patents in the field. As Dr Cote is an inventor in the field his submissions may not be those of the ordinary person skilled in the art. However I can give due consideration to any of his submissions which provide a view of the state of the art at the relevant priority date. Dr Cote’s submissions are consistent with the cgk asserted by Mr Cinanni and Dr Baker, that is, microfiltration was carried out using a hollow fibre membrane bundle with the fibers potted at both ends in headers and enclosed in a shell. Removal of material adhering to the fiber surfaces after filtration was carried out by stopping filtration and backwashing with a clean fluid flowing in the reverse direction. In support of his submissions Dr Cote provided excerpts from two textbooks published in 1996 which supported his assertions. The relevant excerpts from the textbooks listed below were provided as Exhibits A and B to his declaration dated 11 September 2008.

1.Microfiltration and Ultrafiltration: Principles and Applications – Leos Zeman, Andrew Zydney, published 1996
2.Industrial Membrane Separation Technology, edited by K. Scott and R. Hughes, published 1996.

44. Mr Behmann is not a skilled addressee in the relevant art and has not made any submissions on cgk.

45. Mr Cumin has experience in the area of membrane technology but has not provided any submissions on the cgk in Australia at the relevant date.

46. As Professor Leslie has made the most extensive submission on cgk I shall commence by assessing his submissions and while doing so I shall refer to the submissions of the other declarants wherever relevant. I note that Professor Leslie did not include items 3 and 4 from Professor Fane’s list and I shall address those after dealing with Professor Leslie’s submissions. I have summarised Professor Leslie’s statement on cgk in Australia at the relevant date as follows:

The use of liquid phase, pressure driven membrane separation processes employing microporous membranes to remove suspended solids such as clays, microorganisms, small particles and colloids as well as dissolved solids from water and wastewater was well known.
The membranes are configured as sheet, tubes or fibres, which can be bundled together and assembled into a membrane module. The membrane module, with the membranes vertically aligned, can be housed in a pressure vessel or immersed in a tank. The feed side (dirty side) of the membrane is hydraulically separated from the filtrate side (clean side) of the membrane by “potting” or securing the microporous membrane in a material (usually resin) that is not permeable to water.
In the case of fibres that are potted at both ends, the tension placed on the fibre is optimised by providing a small amount of slack that allows the fibre to absorb movement. This is done by making the length of the fibre slightly longer than the exposed length of the module.
Membrane systems may be operated in the “dead-end mode”, where the flow of the solution to be filtered is normal to the membrane surface or in the “cross-flow mode” where the flow of the solution to be filtered is at a tangent to the membrane surface. Filtrate is forced across the membrane in both the “dead-end” or in the “cross-flow mode” by a pressure differential between the feed side and the filtrate side of the membrane. The pressure differential is often referred to as the transmembrane pressure (TMP). Typical TMPs for systems using either microfiltration or ultrafiltration in water applications range from 7 kPa through to 400 kPa depending on the type of membrane, the way the membranes are assembled into modules, the nature of the feedwater and the temperature of the feedwater. A text reference (exhibit GLL-4) disclosed transmembrane pressures ranging from 1 psi (6.89 kPa) to 50 psi (344 kPa).
Material removed from solution during filtration accumulates on the surface of the membrane or within the pores of the membrane hindering further filtration. The deposited material can be removed in different ways, for instance by backwashing or reversing fluid flow on the membrane surface or by using a scouring action on the feed side of the membrane surface. A gas liquid or solid phase may be used for cleaning purposes where a shear force may be generated in the membrane system to remove the retained material. The shear force may be applied under five possible different scenarios including the continuous application of force at the membrane surface to remove retained material concomitantly with the production of filtrate.
Aeration could be used to maintain flux in the membrane filtration applications. The action of the bubbles increases turbulence at the membrane surface. The increase in turbulence enhances the removal of material deposited on the membrane during filtration thereby decreasing the resistance to flow. The air bubbles can be introduced via five separate techniques to maintain flow.

47. I shall now assess the six items of alleged cgk while considering the applicant’s submissions against each item. Before I proceed to assess the various documents I shall refer to the following teaching of the courts regarding the determination of whether material disclosed in various patents does or does not constitute common general knowledge. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294 it was stated:

"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. Examples are provided by Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtalds Ltd (1933) 50 RPC 259 at page 280."

48. I have considered the declarations of the persons skilled in the art in Australia to determine if they had acquired knowledge of the features constituting the alleged common general knowledge through various means including study/knowledge of the patents and other technical/scientific texts/papers. My determination is based on the teaching from British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250,

"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."

and

"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."

This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482 with the qualification that "without question" should read "generally regarded as a good basis for further action".

In terms of textbooks cited by the applicant and opponent I note that in ICI Chemicals & Polymers Ltd v Lubrizol Corp 45 IPR 577, Emmett J stated:

"The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:

·    standard texts and handbooks;
·    standard English dictionaries;
·    technical dictionaries relevant to the field;
·    magazines and other publications specific to the field"

49. Item 1 has not been challenged by the applicant and I consider that it formed part of the cgk at the relevant date.

50. Item 2:- The opponent indicated that “…neither the specification nor many of the claims are limited to submerged systems”. As long as this aspect has relevance to a single claim, which is being challenged for the purpose of inventive step, I have to consider whether or not it was part of the cgk at the relevant date. I shall now assess the documentation raised by the opponent and applicant to support the assertions of their declarants regarding disclosure of item 2 as cgk in the art at the relevant date.

1. MBR module design and operation – T Buer and J Cumin; Desalination (250 (2010) at 1073-1077, particularly at 1074 and Table 1) (Leslie declaration of 2 March 2010, exhibit GLL-23)

This paper discusses the development and application of Membrane Bioreactors. It was published in 2010 and thus would not be available to the skilled addressee at the relevant dates. It would give some indication of what may have happened around the priority date but it does not clearly establish what was the cgk at the time. I note that the applicant’s declarant Mr Cumin has clarified that the statements in the article regarding research in Japan in the 1980s and 1990s are based on research done for the article and do not represent the knowledge that he and Mr Buer had in August 1995. I shall not have regard to this document for the purpose of determining the cgk.

2. Environmental Sanitation Review (ESR), No. 31, June 1991 – Part VIII (CFMF in Domestic Wastewater Treatment Process, pages 105-116) (Leslie declaration dated 14 April 2009, exhibit GLL-4)

3. International Membrane Science and Technology Conference (10 – 12 November 1992) Proceedings – Extended Abstracts – Effect of Temperature on Nitrogen Removal in Membrane Separation Bioreactor - Paper by C. Chiemchaisri and K. Yamamoto (Leslie declaration dated 14 April 2009, exhibit GLL-5)

4 to 8. EP A1 0598909, US 5248424, WO 93/02779, JP 07-136470, JP 63-143905

9. Microfiltration and Ultrafiltration: Principles and Applications – Leos Zeman, Andrew Zydney, published 1996 (Cote, exhibit A)

I have considered these documents 2 to 8 separately from document 1 as these were clearly published before the earliest priority date. I note that five of these documents are patent specifications. In terms of how patent applications are treated for disclosure of cgk I refer to Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (supra), which indicated that where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants.

Having looked at the patent specifications (4-8) listed above I am satisfied that they have individually disclosed item 2, that is, the membrane module assembly and its use in a closed pressure vessel or immersed in a tank. Consequently I find that item 2 constituted part of the cgk at the relevant date.

Documents 2 and 3 are technical papers and papers reviewing the state of the art. As such their disclosures would not of their own accord establish that their teaching was, “generally known and accepted without question by the bulk of those who are engaged in the particular art”, as per the teaching of British Acoustic Films Ld v Nettlefold Productions (supra). I shall not therefore consider their disclosures for determining the state of the cgk in Australia at the relevant date.

Document 9 though published soon after the relevant priority date gives some idea of the state of the art prior to 1996. As such this disclosure (Chapter 6, figure 2) supports the finding that item 2 was part of the cgk at the relevant date.

51. Item 3 refers to the slackness of the membranes and the applicant contends that there is no supporting evidence which discloses this feature as well known in the art. The applicant has referred to two text books (of which I have listed one). The opponent has referred to several documents, which it says establishes this as being cgk in the art. The documents raised by both parties are:-

1. Proceedings of the 1994 MIE International Forum and Symposium on Global Environment and Friendly Energy Technology – Integrated Membrane-Filtration Activated-Sludge Wastewater Treatment System – A paper by Osamu Futamura et al (Fane, exhibit AGF-11)

2. Microfiltration and Ultrafiltration: Principles and Applications – Leos Zeman, Andrew Zydney, published 1996 (Cote, exhibit A)

3 to 7. EP A1 0598909, US 5248424, US 4876006, JP 61-149208, JP 63-143905

The Futamura paper discloses at page 366 that the hollow fiber membranes can sway up/down, right/left but no specific excess length of fibres is disclosed. As this is a technical paper its disclosure would not of its own accord establish that its teaching was, “generally known and accepted without question by the bulk of those who are engaged in the particular art”, as per the teaching of British Nettlefold (supra). I shall not therefore consider its disclosure for determining the state of the cgk in Australia at the relevant date.

Excerpts from the Microfiltration textbook (chapter 6, figure 2) do not show any slackness of fibers in the microfiltration fiber module.

The EP ‘909 document discloses slackness between the ends of the fibres but there is no specific range defined and also the fibre arrangement is horizontal.

The US ‘424 patent at column 4, line 30 and column 10, line 43 discloses slackness of the fibres between the headers holding the fibres but there is no disclosure of a vertical arrangement of the fibres. The opponent makes reference to Figure 11 but I note that this shows a semi–arch rather than a vertical arrangement.

The US ‘006 patent at column 5, lines 2 to 4 states, “…the bundles 1a are not tightly stretched between the upper and lower fiber bundle plates 2 and 3, so as to allow vibration to occur when subjected to air scrubbing. While the bundles 1a are being vibrated, they are not entangled or broken because there is no free end as in the prior art, but rather the opposite ends thereof are secured to the fiber bundle plates.” The disclosure clearly states that the fibres are not tightly stretched, which indicates that they are stretched and therefore there is no slackness in the fibres. This document therefore does not disclose a slackness of the fibres.

The JP ‘208 patent at page 3 of the translation indicates that in the vertical arrangement shown, the fibres possess a moderate degree of flexure but no specific length of slackness of fibre has been specified.

The JP ‘905 patent specifies an excess length of 1 to 4% beyond the vertical distance between the headers in which the fibres are secured.

I do not find any consistent disclosure of a specified length of slackness of fibres between the headers. At the most one may conclude that there is some teaching of maintaining slackness of fibres between the fibre headers but there is no established cgk of a specified excess length of fibres between the headers.

52. Item 4: The applicant challenges the operating trans-membrane pressures disclosed on the basis that they refer to pressurised systems and not to suction driven systems. I agree. The opponent contended that Professor Leslie’s evidence showed that the pressure ranges of 0.7 kPa to 345 kPa were known to lie within the normal operating ranges of both submerged and pressurised microfiltration systems, which were known to the person skilled in the art at the relevant priority date. Exhibit GLL-4 (Membrane Handbook edited by Ho and Sirkar, chapter 13, page 457, published 1992) of Professor Leslie’s declaration of 18 December 2007 supports this assertion in respect of pressure driven systems. I find that item 4 (when restricted to pressure driven systems) has been disclosed as forming the cgk of the person skilled in the art at the relevant priority date. I also find that the range of transmembrane pressures identified was well known but only in respect of modules used in pressure driven systems. Thus Item 4 is considered to form part of the cgk in respect of those claims not restricted to suction driven systems.

53. Items 5 and 6: The applicant did not challenge the disclosure of cleaning of the membrane using liquid and solid scours but clearly stated that air scouring had not been disclosed in the documents cited by Professor Leslie nor was it used in any of the water treatment plants listed in the declaration. I find that the information provided on the water treatment plants does not refer to air scouring. The documents referred to by Professor Leslie however do disclose air scouring.

The Taniguchi paper (Exhibit GLL-3) refers to air cleaning of membranes but only as a backwash.

The Tanaka paper (Exhibit GLL-4) refers to air scouring under certain conditions. In particular air scouring was carried out when permeate collection was temporarily halted. The paper refers to other researchers trying out air scouring during permeation. The Tanaka paper and other papers referenced therein are research papers. There is no indication that the scouring carried out was routine and well accepted in the art, hence quite clearly it was experimental in nature.

The two Chiemchaisri et al papers published in 1992 and 1993 (Fane, AGF-7, 9) and referenced in the ESR publication (Leslie declaration dated 14 April 2009, exhibit GLL-4) disclose application of jet aeration to the membrane modules during filtration. The papers indicate that the process and equipment set up was experimental. There was no teaching that the use of jet aeration was the accepted thing to do for that particular set up or that jet aeration was a standard part of the microfiltration process in domestic wastewater treatment. I cannot conclude that the teachings therein were part of the cgk in Australia. Further there is no clear evidence to show that the relevant skilled addressee in Australia at or prior to the relevant date had accepted and applied the teaching of these papers without question. I cannot conclude that air scouring as disclosed in these papers was part of the cgk in Australia at the relevant date.

The opponent also made reference to the following patents as disclosing air scouring: -

US 5248424, US 4876006, WO 93/02779, US 5151191 and US 5192456.

US 4876006 and US 5151191 disclose use of bubbling/aeration to remove deposits from the outer surface of membranes but this is done when filtration has been stopped. WO 93/02779 discloses use of air for backwashing, which also occurs when filtration has stopped and involves supply of air to the membrane lumens wherein the air travels through the wall of the fibre to push the deposits off the outer membrane surfaces. US 5248424 and US 5192456 disclose air scouring of the external surfaces of membrane fibers while filtration is occurring. However the ‘424 patent does not disclose a vertical arrangement of fibres. Based on the variation of disclosures in the various patents one can conclude that air scouring to remove deposits while filtration was occurring was not established as cgk in the art at the relevant date. I do not find that there is sufficient support to show that air scouring to maintain flux while filtration was occurring was part of the cgk in Australia at the relevant date.

54. I have determined that Items 1 and 2 formed part of the cgk in Australia at the relevant date. For Item 3, I found that the slackness of fibres was part of the cgk but there is nothing to show that a specific range of excess length of fibre had been established as forming part of the cgk in Australia. Item 4 when restricted to pressure driven systems was considered to form part of the cgk in the relevant art in Australia. Regarding Items 5 and 6 I have concluded that air scouring while filtration was occurring was not shown to be part of the cgk in Australia at the relevant date.

55. The opponent also submitted that the feature of fibres being spaced apart was part of the cgk in Australia (see Professor Fane’s list of cgk, item 4) and cited the following documents in support: -

EP 0598909, JP 07-178320, JP 63-143905, US 5248424.

I note that JP 63-143905 does not show any spacing between the fibres at the headers. The other three patent documents show some spacing between the fibres at the headers. Two of these (JP 07-178320 and EP 0598909) have Mitsubishi Rayon Co Ltd as the applicant. As there are only two applicants amongst these three patents, I do not consider that the disclosures therein are sufficient to establish that a considered spacing between fibres was cgk in the art. In fact in US 5248424 there is reference to, “…a frameless array of fibers each greater than 0.5 m long, opposed ends of which are essentially free from fiber-to-fiber contact….”. The teaching here is that the fibers should not touch each other but apart from that there is no indication of a specific spacing or range of spacing between fibers. Thus one may conclude that a fixed spacing between the fibres was not part of the cgk at the relevant date.

56. I shall now consider Professor Fane’s item 3 of cgk which was, ‘The use of permeate collection means to collect filtrate or permeate from the ends of the fibers’. Most of the documentation provided by the opponent does show some arrangement for the collection of permeate but this is not necessarily the same as the specific arrangement defined in the claims of the opposed application. I find that the use of a permeate collection means to collect permeate was part of the cgk but I do not find that the specific arrangement (permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers) set out in the opposed claims formed part of the cgk in Australia at the relevant date.

57. Thus as not all items of cgk asserted by the opponent were established as forming part of the cgk in Australia at the relevant date, I do not find that the opposed claims lack inventiveness in light of the common general knowledge alone.

The opponent has referred to documents which in their opinion when combined individually with the cgk render the opposed invention as lacking an inventive step. I have clearly set out what I consider to be the established cgk in Australia. I shall now consider the disclosure of each document when combined with the cgk alone against the opposed claims. These documents (unless stated otherwise) have publication dates, which were clearly before the relevant priority date. In terms of their disclosures I find the art relevant to the technology of the opposed application. Therefore at this stage I agree that these documents would have been ascertained and understood by the person skilled in the art for the purposes of inventive step.

EP A1 0598909 (Mitsubishi Rayon Co., Ltd.) (exhibit AGF-4)

58. The document shows membrane modules with U-shaped fibres wherein the legs of the inverted U are embedded in a rectangular structure, which forms the base of the module. The module has a large number of upturned U shaped membrane fibres with their legs embedded in a rectangular structure (headers). Other embodiments show horizontal membrane fibers with their ends embedded in structural supports which also collect the permeate (integrated structure functioning as a header and permeate collection means). The structural supports may be movable horizontally with respect to each other so as to shorten the distance between them, which imparts slackness to the fibers. There is no suggestion that the horizontal arrangement may be placed vertically. The module including the fibers is immersed in polluted liquid and suction is applied to the fibers to draw the liquid through the outside of the fibers to the inside where the clean permeate is received and collected for onward movement to another collection means. The module may also be operated under a pressure filtration mode where the module is placed in a sealed vessel and the water to be treated is pressurised to cause water to pass through the hollow fiber membrane. Cleaning of the membrane surfaces is carried out concurrently with filtration. The cleaning may be carried out continuously or intermittently, depending on the rate at which blockage of the membrane surfaces proceeds. Cleaning may be carried out with the aid of, a water current, air, vibration, ultrasonic waves and the like.

59. The problems of the prior art were identified as (i) the usage in large systems of modules in which fibers were confined, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process.

60. Assessing the disclosure of EP 0598909 it seems to have addressed these problems. Consequently this document would have been regarded as relevant by the skilled addressee. I note however that there is no disclosure of a vertical arrangement of fibers wherein the fibers are not in the shape of a U. Vertical fiber arrangements with looped fibers are disclosed in Figures 1 and 4. Figure 16 seems to have a vertical arrangement of single fibers but the related description at page 9, line 47 onwards indicates that each fiber is looped. The description further indicates that this vertical arrangement did not perform as effectively as the horizontal arrangement. Hence there is no motivation for the skilled addressee to provide a vertical arrangement of fibers (which are not looped and secured at both ends – top and bottom in headers) for microfiltration. I note that the cgk does disclose use of a vertical module of fibres. However there is no indication of why the skilled addressee when combining the teaching of this document with the cgk, would be persuaded to discard the looped vertical fibres for the non-looped vertical fibres and also pot the fibres at both ends. Also there is no disclosure of permeate collection means (as a separate entity) attached to the headers. Further there is no indication of a selection of a specific spacing between fibres and the cgk does not disclose this either. I shall now assess this disclosure against the various independent claims (excluding claims 9 to 14).

61. Claim 1 is directed to a modular microfiltration apparatus which does not possess the feature of air bubbling for external scouring of the fibres. The citation does not disclose the features of (a) a permeate collection means not integrated with the header, (b) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers, (c) selection of a specific spacing between the fibres and (d) vertical orientation of the fibres. The established cgk teaches that the module of fibres (non-looped) maybe vertically oriented but there is no motivation for the skilled addressee to add this feature as the citation teaches that the vertical looped fibres in combination with the other features of the citation overcome the defects of the prior art. There are a number of features not disclosed in the citation. No evidence has been provided to show what would motivate the skilled addressee, when facing the problems of the prior art, to discard certain features of the citation and substitute the missing features. I find that claim 1 does not lack an inventive step in light of EP 598909

62. Claim 5 covers similar ground to claim 1 and is directed to a gas-scrubbed assembly. In comparison with claim 1 it includes the feature of external air/gas scouring of the fibres and variations of the gas tubes for the same. The citation does not disclose the features of (a) a permeate collection means not integrated with the header, (b) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers, (c) selection of a specific spacing between the fibres and (d) vertical orientation of the fibres. The established cgk teaches that the module of fibres (non-looped) maybe vertically oriented but there is no motivation for the skilled addressee to add this feature as the citation teaches that the vertical looped fibres in combination with the other features of the citation overcome the defects of the prior art. There are a number of features not disclosed in the citation. No evidence has been provided to show what would motivate the skilled addressee to discard certain features of the citation and substitute the missing features to solve the problems of the prior art. I find that claim 5 does not lack an inventive step in light of EP 598909

63. Claims 8 is directed to a process for maintaining the outer surfaces of hollow fiber membranes substantially free from a build-up of deposits of particulate material while separating a permeate from a multicomponent liquid substrate in a reservoir. It discloses external scouring of the fibres. The claim does not disclose a permeate collection means attached to the header, a specific spacing of the fibres and independent movement of the fibres though the fibres are swayable. The citation does not disclose the features of (a) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers, (b) vertical orientation of the fibres, (c) flowing a fiber-cleansing gas through a gas-distribution means proximately disposed relative to said skein, within a zone beneath said skein, and contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up and (d) introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers. Regarding features (c) and (d) even though the use of air scouring is disclosed to clean the external surfaces of the membranes while filtration is occurring the requirements of, “contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up” and “introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers” has not been disclosed. The established cgk teaches that the module of fibres (non-looped) maybe vertically oriented but there is no motivation for the skilled addressee to add this feature as the citation teaches that the vertical looped fibres in combination with the other features of the citation overcome the defects of the prior art. There are a number of features not disclosed in the citation. No evidence has been provided to show what would motivate the skilled addressee to discard certain features of the citation and substitute the missing features to solve the problems of the prior art. I find that claim 8 does not lack an inventive step in light of EP 598909.

64. Claims 9 to 14 have not been challenged regarding their inventiveness. Regarding the omnibus claims, claim 18 defines the invention covered in claims 9 to 14 and I shall not assess it for inventiveness. Claims 15, 16 and 17 define inventions which are similar to the inventions defined in Claims, 1, 5 and 8 respectively. As I have found claims 1, 5 and 8 do not lack an inventive step I conclude that the inventions defined in claims 15 to 17 and the claims appended to claims 1, 5 and 8 do not lack inventiveness.

JP 63-143905 (Toshiba Corporation), (exhibit GLL-8, first Leslie declaration)

65. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The invention also requires that the length of the fibres exceed the vertical distance between the headers by a specified range (1 to 4% excess). The apparatus carries out continuous microfiltration wherein permeate is collected in the lumens of the fibres. Filtration is stopped and backwashing is carried out once the transmembrane pressure differential exceeds a certain value. During back washing bubbling is provided from below the module to clean the fibres.

66. The problems of the prior art were identified as (i) the usage in large systems of modules in which fibers were confined, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process.

67. The document at hand has dealt with the problems identified in (i), (iii) and (iv). This document does not suggest a manner in which fibres may be cleaned effectively during microfiltration as it does not contemplate providing air externally to the fibres while microfiltration is occurring (my emphasis). It provides for air scouring of the external surfaces of the fibres while the fibres are being backwashed with gas supplied to the inside of the fibres. Thus this document would not provide a solution to the identified problem of the prior art. Further the feature of air scouring the fibres externally when filtration is occurring has not been established as forming part of the cgk. I also note that this document does not disclose the close spacing of the fibres as required by some of the opposed claims. There is nothing to indicate if the cgk alone or this document when combined with the cgk would suggest such a spacing of the fibres. Having established what has been disclosed in the citation and the teaching of the cgk I shall now proceed to assess the independent claims (except claims 9 to 14) of the opposed application on an individual basis.

68. Claim 1 is directed to a modular microfiltration apparatus which does not possess the feature of air bubbling for external scouring of the fibres. The citation does not disclose the features of (a) a permeate collection means sealingly connected in open fluid communication with a permeate discharging face of each of said headers and (b) selection of a specific spacing between the fibres. I have discussed the lack of disclosure of these features in detail under the heading of Novelty. I consider that this document would have been regarded as relevant by the skilled addressee as it did provide some solutions to the problems of the prior art. In terms of looking for an apparatus to address the problems of the prior art there is no indication of what would motivate the skilled addressee to seek out features (a) to (b) above when provided with the cgk combined with the teaching of the citation. I do not find claim 1 as lacking an inventive step.

69. Claim 5 is directed to a gas-scrubbed assembly. In comparison with claim 1 this claim includes the feature of external air/gas scouring of the fibres and variations of the gas tubes for the same. The citation does not disclose the features of (a) a permeate collection means sealingly connected in open fluid communication with a permeate discharging face of each of said headers and (b) selection of a specific spacing between the fibres. I have discussed the lack of disclosure of these features in detail under the heading of Novelty. I consider that this document would have been regarded as relevant by the skilled addressee as it did provide some solutions to the problems of the prior art. Therefore the skilled addressee would turn to the cgk to look for solutions to the problem of cleaning the fibres while microfiltration was occurring. There is no cgk which addresses this issue; in particular the cgk does not show external scouring of the fibres while filtration is in progress. Further, I do not see how the skilled addressee, when confronted with the problems of the prior art, and having the cgk and citation at hand would arrive at the invention of this claim by supplying the two missing features (see (a) and (b) above). I do not find that claim 5 lacks an inventive step.

70. Claims 8 is directed to a process for maintaining the outer surfaces of hollow fiber membranes substantially free from a build-up of deposits of particulate material while separating a permeate from a multicomponent liquid substrate in a reservoir. It discloses external air scouring of the fibres. The claim does not disclose a permeate collection means attached to the header, a specific spacing of the fibres and independent movement of the fibres though the fibres are swayable. Considering the citation, it does not disclose the features of (a) flowing a fiber-cleansing gas through a gas-distribution means proximately disposed relative to said skein, within a zone beneath said skein, and contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up and (b) introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers (c) vertically gas scrubbing the fibres’ outside surfaces while simultaneously, substantially continuously withdrawing the permeate while increasing the concentration of the particulate material in the substrate. Regarding features (a) and (b) even though the use of air scouring is disclosed to clean the external surfaces of the membranes while filtration is stopped and backwashing is in progress, the requirements of, “contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up” and “introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers” has not been disclosed. Also in the citation, quite clearly the scouring step only occurs during backwashing and not while filtration is in progress. This is quite different to the assertion by Professor Leslie of the continuous nature of the filtration, which is supposed to include stops for backwashing. The claim under attack has no backwashing and does not envisage stopping of filtration for short periods. I consider that this document would have been regarded as relevant by the skilled addressee as it did provide some solutions to the problems of the prior art. Therefore the skilled addressee would turn to the cgk to look for solutions to the problem of cleaning the fibres while microfiltration was occurring. There is no cgk which addresses this issue; in particular the cgk does not show external scouring of the fibres while filtration is in progress. In view of the features not disclosed in the citation, I do not see how the skilled addressee, when confronted with the problems of the prior art and having the citation and cgk at hand would arrive at the features of claim 8. I do not find that claim 8 lacks an inventive step.

71. Claims 9 to 14 have not been challenged regarding their inventiveness. Regarding the omnibus claims, claim 18 defines the invention covered in claims 9 to 14 and I shall not assess it for inventiveness. Claims 15, 16 and 17 define inventions which are similar to the inventions defined in Claims, 1, 5 and 8 respectively. As I have found claims 1, 5 and 8 do not lack an inventive step I conclude that the inventions defined in claims 15 to 17 and the claims appended to claims 1, 5 and 8 do not lack inventiveness.

US 5248424 (Cote et al) published 28 September 1993 (Leslie declaration 14 April 2009, exhibit GLL-10)

72. This discloses a frameless array of fibers unconfined in a modular shell with the ends of the fibers potted in headers attached to a permeate collection means. The array may be arranged so that the fibers are arched in a vertical plane or placed in relatively flat parabolic arcs in a vertical plane (figures 9 and 10). There is no disclosure of the headers being arranged in a vertically spaced apart arrangement. In use the array of fibers is scrubbed by gas bubbles supplied from directly below the array. The scrubbing occurs during filtration. The arched arrangement permits the fibers to sway in the substrate. There is no disclosure of the spacing between the fibers other then a requirement that fibre to fibre contact be avoided. In terms of vertical orientation of the fibres the specification (column 8, line 3 to column 10, line 12) discusses the attempts of the prior art in this regard concluding that the results obtained therein were not better than the current arrangement disclosed in the citation. When assessing the teaching against the problems of the prior art I find that this invention has resolved the problems of the prior art. The skilled addressee would not proceed any further to seek use of the cgk or other documents when confronted by the problems of the prior art. This document either alone or in combination with the cgk does not suggest or teach a vertical arrangement of fibres, a specified range of fibre slackness or a specified spacing between fibres. Although the vertical arrangement of fibres is an option available to the skilled addressee as part of the cgk, the teaching of the citation would not direct the skilled addressee to try such an arrangement. In fact the citation teaches against such an arrangement. Thus when facing the prior art problems the skilled addressee on combining the cgk with the teachings of this citation would not arrive at the invention of the opposed claims. Hence I find that the opposed claims 1 to 8 and 15 to 17, all of which disclose a vertical arrangement of fibres and a specified range of fibre slackness, do not lack an inventive step in light of this document either on its own or when combined with the cgk. Claims 9 to 14 and (hence 18 which is the related omnibus claim) have not been challenged by the opponent as lacking inventiveness.

JP 07-178320 (Mitsubishi Rayon Co Ltd) published 18 July 1995 (Leslie declaration 2 March 2010, exhibit GLL-18)

73. It discloses a frameless array of fibers potted in vertically spaced apart headers wherein it specifies a range of values (100 to 1.2) for the ratio of A to B wherein: -

A is the area of the fixing member face on the side where the hollow fiber membranes are exposed by the fixing member;
B is the area of the fixing member end face where the hollow fiber membranes are open.

The document refers to the use of an air diffusion pipe for scrubbing and cleaning with air bubbling to be carried out in parallel with filtration operations. There is no precise disclosure of the actual length of the fibers measured against the vertical distance between the headers nor is there any indication of the spacing between the fibers. The description does disclose, however, the distance between the sheets of fibers as lying between 5 to 100mm. The precise location of the air scrubbers with respect to the module is not disclosed. The description at page 11, paragraph 43 states, “…the module in this Invention has had an air diffusion pipe fixed and integrated into the module, making mounting in the vessel or treatment tank easy and allowing suitable scrubbing and cleaning to continue during filtration”. Further, it is not clear if there is a permeate collection pan attached to the headers. When assessed against the problems of the prior art this disclosure does not seem to be lacking in providing solutions for overcoming the problems of (i) the usage in large systems of modules in which fibers were confined – these are freestanding modules which can be immersed in large tanks, (ii) the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring – the use of an air diffusion pipe in the membrane module and scouring during filtration addresses this problem, (iii) the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers – some of the figures show that there is slackness in the fibres which would address this problem; and (iv) the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process – this has been addressed by the air scouring during filtration and/or intermittent cleaning of the fibers when filtration is temporarily halted. Thus the skilled addressee on seeking a solution to the problems of the prior art would find that this document has provided the solution. There would be no motivation to apply the cgk to arrive at the combination of features of the opposed invention. In particular I find no teaching which would persuade the skilled addressee to have a specified range of fibre slackness, a permeate collection means attached to the header and a specified fibre spacing of around 0.6 to 6.0 mm. The citation discloses a spacing range of 5 to 100 mm between sheets of membranes but has not specified the distance between tubular membrane fibres. Further, though the citation shows a permeate collection means for membrane sheets it is not clearly specified if this is integral with the header or if it is a separate unit attached to the header. I note that no such arrangement is shown for the tubular membrane fibres. I shall now assess the independent claims against the disclosure of this citation.

74. Claim 1 is directed to a modular microfiltration apparatus which does not possess the feature of air bubbling for external scouring of the fibres. The citation does not disclose the features of (a) a permeate collection means not integrated with the header, (b) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers and (c) selection of a specific spacing between the membrane fibres as opposed to a spacing between membrane sheets. There are a number of features not disclosed in the citation. No evidence has been provided to show what would motivate the skilled addressee, when armed with the relevant cgk, to discard certain features of the citation and substitute the missing features to solve the problems of the prior art. As discussed above the citation has overcome the identified problems of the prior art. I find that claim 1 does not lack an inventive step in light of JP 07-178320

75. Claim 5 covers similar ground to claim 1 and is directed to a gas-scrubbed assembly. In comparison with claim 1 this claim includes the feature of external air/gas scouring of the fibres and variations of the gas tubes for the same. The citation does not disclose the features of (a) a permeate collection means not integrated with the header, (b) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers and (c) selection of a specific spacing between the fibres as opposed to a spacing between the membrane sheets. There are a number of features not disclosed in the citation. There is no evidence before me to show what would motivate the skilled addressee, when armed with the relevant cgk, to discard certain features of the citation and substitute the missing features to solve the problems of the prior art. As discussed above the citation has overcome the identified problems of the prior art. I find that claim 1 does not lack an inventive step in light of JP 07-178320.

76. Claim 8 is directed to a process for maintaining the outer surfaces of hollow fiber membranes substantially free from a build-up of deposits of particulate material while separating a permeate from a multicomponent liquid substrate in a reservoir. It discloses external scouring of the fibres. The claim does not disclose a permeate collection means attached to the header, a specific spacing of the fibres and independent movement of the fibres though the fibres are swayable. The citation does not disclose the features of (a) 0.1 to less than 5% excess length of fibres compared to the vertical distance between the headers, (b) flowing a fiber-cleansing gas through a gas-distribution means proximately disposed relative to said skein, within a zone beneath said skein, and contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up and (c) introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers. Regarding features (b) and (c) even though the use of air scouring is disclosed to clean the external surfaces of the membranes while filtration is occurring the requirements of, “contacting surfaces of said fibers with sufficient physical impact of bubbles of said gas to maintain essentially the entire length of each fiber in said skein awash with bubbles and essentially free from said build-up” and “introducing said cleansing gas in an amount in the range from 0.47 – 14 cm³/sec per fiber to generate a column of said bubbles alongside and in contact with outer surfaces of said fibers” has not been disclosed. There are a number of features not disclosed in the citation. There is nothing to indicate what would motivate the skilled addressee, armed with the relevant cgk, to discard certain features of the citation and substitute the missing features to solve the problems of the prior art. I find that claim 8 does not lack an inventive step in light of JP 07-178320.

77. Claims 9 to 14 have not been challenged regarding their inventiveness. Regarding the omnibus claims, claim 18 defines the invention covered in claims 9 to 14 and I shall not assess it for inventiveness. Claims 15, 16 and 17 define inventions which are similar to the inventions defined in Claims, 1, 5 and 8 respectively. As I have found claims 1, 5 and 8 do not lack an inventive step I conclude that the inventions defined in claims 15 to 17 and the claims appended to claims 1, 5 and 8 do not lack inventiveness.

WO 93/02779 (Memtec Limited) (Johnson declaration 13 March 2009, Exhibit WJ-2)

78. The document discloses a bundle of fibre membranes held between opposing headers in a vertical orientation wherein the fibres are secured by a potting resin in the headers. The apparatus carries out continuous microfiltration wherein the permeate is collected in the lumens of the fibres. The microfiltration is stopped and backwashing is carried out once the transmembrane pressure differential exceeds a certain value. Embodiments are provided wherein the fiber bundle is immersed in an open tank or may be enclosed within a shell. The backwashing uses air for removal of particulate matter lodged on the fiber surface. The air is provided on the lumen side of the membrane. No external air scouring is disclosed. Further as the fibers seem to be strictly vertical there is no disclosure of the excess length of the fibers in comparison to the distance between the vertically spaced headers. Further the spacing between the fibers in the header is not specified. I have compared the disclosure of the citation with the problems of the prior art below:-

(i)the usage in large systems of modules in which fibers were confined – these are freestanding modules which can be immersed in large tanks,
(ii)the fibers were not capable of being cleaned very effectively while the microfiltration process was occurring – the microfiltration is stopped for backwashing and cleaning by air.
(iii)the placement of the fibers in a module did not allow for the microfiltration to occur without subjecting the fibers to adverse effects of tension, shear, rotation and abrasion which shortened the useful life of the fibers – the specification does not identify any such issues and the excess length of the fibers compared to the vertical distance between the headers is not disclosed.
(iv)the filtration capability of the fibers was compromised by the ineffective removal of the solid matter including animate/inanimate particles during the microfiltration process – this disclosure indicates that microfiltration must be stopped for cleaning to occur.

79. Out of the four problems previously outlined at the most the citation teaches a freestanding module which can be immersed in a large tank. It does not teach: - (a) cleaning of the fibre membranes while filtration is occurring; (b) the excess length of the fibres - the fibres are stretched between the headers which does not address the problem of adverse effects of tension, shear, rotation and abrasion; (c) the effective removal of the solid matter including animate/inanimate particles during the microfiltration process. I do not think that this is sufficient to persuade the skilled addressee that the teaching of the citation would provide a solution to the problems of the prior art. Further the remaining three problems are not ones which would be solved by applying the common general knowledge. Thus the skilled addressee would ascertain and understand this document but would not find it relevant for solving the problems of the prior art. I find that this document does not render the opposed claims 1 to 8 and 15 to 17 as lacking in inventiveness. The inventiveness of claims 9 to 14, 18 has not been challenged.

MBR module design and operation – Desalination 250 (2010) 1073-1077 (Leslie declaration of 2 March 2010, exhibit GLL-23)

80. I had indicated previously that this document was published after the relevant priority date. I do not have any material before me, which definitely established the disclosure alleged by the opponent of the apparatus called ZEEWEED 150 in the public domain at the relevant priority date. I shall therefore not consider this document for the purpose of an inventive step assessment of the opposed claims.

Section 40 – Lack of clarity

81. The opponent submitted that, “…the term ‘so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber’ lacks clarity, such that the claims of the Parent and the Divisional do not satisfy the requirement s 40(3) of the 1990 Act”. In support of this assertion the opponent argued as follows:-

1. The Macquarie Dictionary defines “independent” to mean “autonomous, free” and “not influenced by the thought or action of others”.

2. The Specification identifies that “the number of fibers in a singly (sic) array is arbitrary typically being the range from about 1000 to about 10000” (p 12, l 6), and the packing density is such that there are preferably “from 4 to 50 fibers/cm²” (p 12, l 13). At such density, the movement of a fibre could not be “independent of the movement of another fibre”, in the sense that the movement of the fibre would not be “free”, “autonomous” or “not influenced by the movement of another fibre”. The term, as used in the claims, is therefore unclear.

82. The specification is directed to the skilled addressee and if the skilled addressee when applying the established cgk at the relevant date is unable to determine the ambit of the claim or the meaning of certain terms in the claim they may have recourse to the specification to determine the meaning to be given (the Rules of Construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400). The opponent alleges that the specification does not provide any assistance in this particular case as the disclosed packing density would not favour one fibre’s movement independently of another fibre’s movement.

83. The specification discloses (pages 11, 12) that outer diameter of the fibres typically ranges from 0.1 mm to 2 mm. Thus the area covered by the outer diameter of a single fibre (Area of a circle is calculated using the formula πr², where r = outer radius of the fibre) ranges from approximately 0.08 mm² (diameter of 0.1 mm) to 3.14 mm² (diameter of 2 mm). For four fibres the area ranges from 0.32 mm² to 12.56 mm², which area can easily be accommodated within the specified area (100 mm² = 1 cm²). For 50 fibres the area ranges from 4 mm² to 157 mm². Thus one can see that 157 mm² (50 fibres of 2 mm diameter) cannot be accommodated within 100 mm². The specification at page 12, lines 11 to 13 states, “The packing density of fibers, that is, the number of fibers per unit area of header preferably ranges from 4 to 50 fibers/ cm² depending upon the diameter of the fibers. Thus the skilled addressee would adjust the number of fibers per unit area dependent on the diameter of the fibres to allow for the independent movement of the fibres. I do not find a lack of clarity in the specification as alleged by the opponent. Further, I also note that none of the opponent’s declarants have expressed any difficulty with construing the term relating to the independent movement of the fibers. The claims of the parent and divisional application do not lack clarity for the use of the term ‘so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber’.

CONCLUSION

84. The opponent pursued the grounds of novelty, inventive step and section 40. The opponent has been unsuccessful on all grounds.

85. I had found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined with the citations raised by the opponent against inventive step. The issues raised by the opponent regarding lack of clarity were not supported, as the claims and specification did not present any construction issues, which could not be resolved by the skilled addressee.

86. I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

87. The opponent and the applicant submitted that costs should follow the event.

88. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. In terms of the substantive opposition, the opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the opponent Memcor Australia Pty Ltd and in favour of the applicant GE BetzDearborn Canada Company.

Jacob Elijah
Delegate of the Commissioner of Patents