Memcor Australia Pty Ltd v Zenon Technology Partnership - [2008] APO 15

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2004203855 in the name of ZENON TECHNOLOGY PARTNERSHIP

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

Action: Opposition by MEMCOR AUSTRALIA PTY LTD under section 59 of the Patents Act 1990

Decision: Issued 05 June 2008.
Abstract

The opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity. They also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B (1) had not been met.
I had found that none of the claims were shown to be lacking an inventive step in light of the common general knowledge alone and also when combined on an individual basis with the citations raised by the opponent. The terms raised by the opponent as lacking clarity were found to be clear both by the skilled addressee and when reference was had to the description and drawings. I had assessed the opposed application to determine if section 79B (1) requirements had been met and I found that AU 2004203855 was entitled to claim priority from the parent application 715364. Consequently the issue of novelty based on documents with a later priority and publication date than the parent application did not arise. The opponent has been unsuccessful on all grounds.
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.
As the opponent has been unsuccessful, 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 Zenon Technology Partnership.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2004203855 by ZENON TECHNOLOGY PARTNERSHIP and an opposition under section 59 of the Patents Act 1990 by MEMCOR AUSTRALIA PTY LTD

BACKGROUND

Zenon Environmental Inc. (now Zenon Technology Partnership-henceforth Zenon) filed patent application No 2004203855 on 13 August 2004 as a further application to patent application no 715364 (the parent) under the provisions of section 79B of the Patents Act 1990. The application claims priority from AU 715634 filed on 8 August 1996 which 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 29 June 2006.
Memcor Australia Pty Ltd (Memcor) filed a notice of opposition on 1 August 2006. A statement of grounds and particulars was filed on 31 October 2006. The filing of evidence in support was completed on 2 August 2007. The applicant indicated, by a letter dated 24 October 2007 that they would not be filing any evidence in answer. Thus the requirement of filing evidence in reply by the opponent did not arise.
A hearing to deal with the substantive opposition was held in Canberra on 4 March 2008. Matthew Swinn, partner and Carolyn Welsh, senior associate, of Corrs Chambers Westgarth, Melbourne, represented the applicant. Mr Scott Pundsack attended via telephone on behalf of the applicant. David Yates, senior counsel and Peter Heathcote, patent attorney of Shelston IP, Sydney, represented the opponent.
EVIDENCE
Evidence in support consists of declarations made by:
·Dr Gregory Lawrence Leslie, dated 1 August 2007 with annexures GLL-1 to 11. 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 states 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.
·Peter Rex Heathcote, dated 17 July 2007 with exhibits PRH-1 to 33. He states that he is a patent attorney of Shelston IP, the firm responsible for prosecuting the opposition on behalf of Memcor Australia Pty Ltd.
The applicant did not file any evidence in answer and hence evidence in reply was also not filed.
THE SPECIFICATION
The specification under opposition was advertised accepted on 29 June 2006. 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.
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.
The specification proceeds to provide a consistory statement of the invention which is similar to claim 1. This is followed by a detailed description of the invention accompanied by several drawings, and related embodiments of the invention. The specification concludes with independent claim 1 (similar to the consistory statement), two appended claims and one omnibus claim. Main claim 1 and omnibus claim 4 read as follows:
1. A microfiltration membrane device, for withdrawing permeate from a multicomponent substrate, said membrane device including a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module; a first header and a second header disposed vertically spaced apart relationship with opposed faces at a fixed distance; said first header and said second header having opposed ends of each fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate discharging face of one or both headers; permeate collection means to collect permeate sealingly connected in open fluid communication with the or each permeate discharging face; means to withdraw said permeate; said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically; each of said fibers have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber; and, through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of pressurized gas; wherein said fibers are subjectable in use to a trans-membrane pressure differential in the range of 0.7 kPa to 345 kPa created by applying a suction to the permeate collection means, and, said fibers are spaced apart to a desired lateral spacing between fibers by said potting resin, to as (sic) maintain the ends in closely spaced apart relationship.
4. A microfiltration membrane device substantially as hereinbefore described with reference to the accompanying drawings.
STATEMENT OF GROUNDS AND PARTICULARS
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 (conditional on lack of divisional status) inventive step, and section 40/lack of clarity. The opponent also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B (1) had not been met.
DECISION
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 the divisional status/priority claim of the application followed by novelty, inventive step and section 40/clarity matters.
Subsection 79B (1) Divisional status/Priority entitlement
The opponent made submissions to the effect that for the opposed application to be a divisional application it must comply with subsection 79B(1) which in effect requires:
(a) the invention (as claimed) in the divisional application must be disclosed in the specification as filed for the parent application (in this case, the specification as filed on 8 August 1996);
(b) the invention (as claimed) must fall within the scope of the claims of the accepted specification of the parent application.
In respect of subsection 79B (1)(b) the opponent stated that it involved a comparison between the opposed claims and the accepted claims of the parent to ascertain whether the invention as claimed in the former specification falls within the scope of the claims of the latter specification and that the test to be applied is apparently more stringent than the test under paragraph 102(2)(a) of the Act. The opponent asserted that the requirements of subsection 79B (1)(a) and (b) were cumulative and that if these requirements were not met then as a consequence:
(a) the opposed application is not a divisional application for the purposes of the Patents Act 1990 and the Patents Regulations 1991;
(b) Reg 3.12(1)(c) cannot apply to determine the priority date of the claims of the opposed application;
(c) The priority date of the claims of the opposed application will be the date of filing of the specification (see Reg 3.12(1)(a)) which, in this case, is 12.8.2004.
The opponent proceeded to provide detailed submissions in support of their assertions (including comparison of the relevant specifications and claims concluding that the requirements of subsection 79B(1) had not been met.
The applicant countered the opponent’s submissions indicating that subsection 79B (1) had been complied with as, “Each of the integers of claim 1 and dependent claims 2 and 3, and the omnibus claim 4, of the ‘855 application are disclosed in the accepted claims of the ‘364 application, particularly in light of the Delegate’s decision of 10 November 2006 in Zenon Environmental Inc v Memcor Australia Pty Ltd [2006] APO 36. The claims of the ‘855 application clearly fall within the scope of the accepted claims of the ‘364 application.” They further stated that, “The body of the specification of the ‘855 application is largely identical to that disclosed in the parent ‘364 specification. As discussed….above, the claims of the ‘855 application also fall within the scope of the accepted claims of the parent ‘364 application. Zenon therefore submits that there is no basis upon which Memcor can challenge the priority date of any claim of ‘855 application.”
The relevant passages of section 79B and regulation 3.12 which are applicable in determining the priority dates of further applications state:
Section 79B
(1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:
(a) disclosed in the specification filed in respect of the first - mentioned application; and
(b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.
Regulation 3.12
(1) Subject to regulations 3.13 and 3.14 and subregulation (2), the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
….
(c) if the specification is a complete specification filed in respect of a divisional application under section 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to in paragraph 79B (1)(a) of the Act -- the date mentioned in subregulation (2C);
….
(2C) The date for a specification to which paragraph 3.12 (1)(c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B (1)(a) of the Act.
As the opposed application was filed as a further application at least 3 months after the publication of a notice of acceptance of the parent patent request and specification in the Official Journal it would have to satisfy 79B(1)(a) and (b) in order to meet the requirements of a further application.
Firstly I would need to consider if the opposed application meets the requirements of 79B (1)(a). The opponent contended that the test of disclosure would not be one of determining if the claimed invention was fairly based on the disclosure of the parent specification as filed. The opponent in effect contends that there must be a precise disclosure of the embodiment that is claimed in the opposed claim. The wording of 79B (1)(a) does not support this as it refers to “…an invention disclosed in the specification”. Thus there is no requirement that it be precisely identified merely that it be disclosed. Regarding disclosure, generally, a patent specification is construed like any other document. Any purely verbal or grammatical question that can be answered according to the ordinary rules for the construction of written documents is to be resolved accordingly (Welch Perrin & Co Pty Ltd v Worrel (1961-62) 106 CLR 588). In this regard, Sheppard J summarised the Rules of Construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400 and this was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224. The specification is to be considered by the skilled addressee and a determination of the invention(s) disclosed therein would follow the Rules of Construction. From a reading of the parent specification I find that the broad features of the inventive device disclosed therein are:
(1) a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module; where the terminal ends of the fibers are potted in opposed headers in a closely spaced-apart substantially parallel relationship so as to leave their ends open, either protruding from or flush with a permeate-discharging face of at least one header depending on whether a conventional header or the “novel” header is used; wherein the opposed headers comprise a first header and a second header disposed in a vertically spaced apart relationship with opposed faces at a fixed distance;
(2) the fibers each have substantially equal length or individual lengths such that each fiber length is 1% to less than 5% greater than the fixed distance between the header faces such that the fibers are restrictedly swayable.
(3) permeate collection means held in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers.
The above device is a microfiltration device but when the above device is used with a gas-distribution means it is termed a ‘gas-scrubbed assembly’. The features of the gas-scrubbed assembly further includes ‘ a shaped gas distribution means adapted to provide a profusion of vertically ascending bubbles in a column above and in close proximity to the upper face of the lower header’. Various embodiments of the disclosed header which satisfy this requirement show gas-distribution means forming an integral part of the lower header (figures 5, 6, 9). They also show the gas distribution means having second openings in communication with a plenum below the lower header, where the plenum is adapted to be connected to a source of pressurized gas. The device/assembly is operated at a transmembrane pressure differential of 0.7kPa to 345kPa wherein suction may be applied to the permeate collection means. In arriving at the findings above I note that the applicant had directed my attention to the findings of the delegate in Zenon v Memcor (supra). I have reviewed the delegate’s findings in regard to the determination of the broadest form of the invention disclosed and I find that I have come to a fairly similar conclusion. I note that the opponent when making submissions against compliance with section 79B (1)(a) did not identify any specific features of opposed claim 1 which had not been disclosed in the parent application. They put forward the argument that a precise disclosure was required and I have rejected this argument. Both parties have provided a fairly similar breakdown of the features of opposed claim 1 which are as follows:
1. A microfiltration membrane device, for withdrawing permeate from a multicomponent substrate, said membrane device including:
(a)    a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module;
(b)   a first header and a second header disposed vertically spaced apart relationship with opposed faces at a fixed distance;
(c)    said first header and said second header having opposed ends of each fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate discharging face of one or both headers;
(d)   permeate collection means to collect permeate sealingly connected in open fluid communication with the or each permeate discharging face;
(e)    means to withdraw said permeate;
(f)     said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically;
(g)    each of said fibers have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber; and,
(h)    through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of pressurized gas;
(i)   wherein said fibers are subjectable in use to a trans-membrane pressure differential in the range of 0.7 kPa to 345 kPa created by applying a suction to the permeate collection means, and,
(j)     said fibers are spaced apart to a desired lateral spacing between fibers by said potting resin, to as (sic) maintain the ends in closely spaced apart relationship.

I note in particular that the drawings provided in the parent specification are no different to the drawings of the opposed specification. I have assessed the features of opposed claim 1 against the disclosure of the parent application and I find that all features of claim 1 are disclosed therein. See pages 3 to 12 of the parent specification and the accompanying drawings where features (a) to (j) are disclosed. I note that features (a) to (g), (j) are quite clearly revealed in the broad disclosure of the parent specification. Features (h) and (i) are revealed when regard is had to the parent disclosure covering gas-scrubbed assemblies. Certainly, some specific features are not explicitly identified in the broad disclosure of the invention but they definitely fall within its ambit and all the features of opposed claim 1 are present as embodiments of the broad disclosure when referring to a “gas-scrubbed assembly” both in the description and accompanying drawings of the parent specification. For instance in the ‘gas-scrubbed assembly”, the broad feature of ‘ a shaped gas distribution means adapted to provide a profusion of vertically ascending bubbles in a column above and in close proximity to the upper face of the lower header’ does encompass the feature of, “through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of pressurized gas”. This specific feature has been disclosed at figures 5 to 7 and the related description in the parent specification as filed. For opposed claims 2 and 3, the features of manifolds and first openings of the gas pipes defined therein are disclosed in figures 5 to 7 and the related parts of the description in the filed parent specification. Opposed claim 4 is an omnibus claim and would encompass the broadest aspects of the invention disclosed in the description of the opposed specification (Raleigh Cycle Co. Ltd. v H Miller and Co. Ltd., (1948) 65 RPC 141 and Australian Patent Office Manual of Practice and Procedures, 2.11.2.3.9). Having assessed the opposed specification I find that the consistory statement of the invention at page 4, line 27 to page 4a, line 24 accurately reflects the broadest form of the invention. The consistory statement is also similar to opposed claim 1. Thus as claim 1 of the opposed application has been disclosed in the parent application, I find that opposed claim 4 has been disclosed in the parent application. Thus opposed claims 1 to 4 satisfy the requirements of section 79B (1)(a).
I shall now determine if the opposed claims satisfy the requirements of section 79B (1)(b). This requires a determination of whether the opposed invention as claimed falls within the scope of the claims of the accepted specification. I shall now make a comparison of the opposed invention with the claims of the accepted parent application. Comparing opposed claim 1 and claim 1 of the accepted parent, the opponent contended that in the parent application the device is operating in a liquid substrate to withdraw permeate (as opposed to a device that merely has the capability to do so). The opponent has not identified how the device of the parent when in operation is different to the device of the opposed claim when it is placed in an operating environment. I shall now look at specific features where there was a dispute regarding their disclosure.
I have identified the following differences. Differences 1 to 7 are features of parent claim 1 not explicitly disclosed in the opposed claim and difference 8 is a feature of opposed claim 1 not present in parent claim 1:
1. The device must be operating to withdraw the permeate substantially continuously.
2. The fibers must be swayable in the substrate.
3. The headers must be within the substrate.
4. All open ends of the fibers must extend from a permeate-discharging face of at least one header.
5. Permeate collection means must be in open fluid communication with a permeate-discharging face of each of said headers.
6. There must be a vertical skein as defined in the specification, Each of the fibers must be substantially the same length.
7. The potting resin must extend over only each terminal portion of each of the fibers near their ends.
8. Through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of pressurized gas;
Looking at opposed claim 1, I find as follows:
Difference 1: The parent claim has referred to a substantially continuous withdrawal of permeate during operation of the device whereas the opposed claim refers to withdrawal of permeate. Neither claim has indicated any special limitation on the device per se, which confers the ability of continuous withdrawal or why non-continuous withdrawal is impossible for the parent invention. I find that difference 1 does not confer any limitation on the opposed claim in respect of the withdrawal of permeate.
Difference 2: This refers to the fibers being swayable in the substrate for the parent claim. The parent further defines the placement and lengths of the fibers and refers to “restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”. This further disclosure is present in the opposed claim. On reading the parent specification I find that the use of the terms ‘restricted displacement’ and ‘restrictedly swayable’ have been used to define the same aspect of behaviour of the fibers in a substrate (see pages 1 and 2, figures 5, 10, 11 and page 49, lines 15 to 17). Thus the feature of being swayable is merely conveying information similar to the property of restricted movement of the fibers and this property is quite clearly inherent in the arrangement of fibers disclosed in the opposed claim.
Difference 3: The opposed claim defines, “…said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate…”. Thus difference 3 of the parent is also covered in the opposed claim.
Difference 4: This feature is not covered in the opposed claim.
Difference 5: This feature in the parent claim indicates that a permeate collection means is connected with a permeate-discharging face of the top header and another permeate collection means is similarly connected to the bottom header. The opposed claim discloses, “permeate collection means to collect permeate sealingly connected in open fluid communication with the or each permeate discharging face”. This can be interpreted to include embodiments wherein, (i) there is a single permeate collection means connected to a single (‘the”) permeate-discharging face; (ii) there is a single permeate collection means connected to both (‘each”) permeate-discharging faces; (iii) there are two (permeate collection means includes more than one within its scope) collection means with each one being connected to a single permeate discharging face; (iv) there are two (permeate collection means includes more than one within its scope) collection means with both being connected to a single permeate discharging face. Thus interpretation (iii) of the opposed claim coincides with the teaching of the parent claim. Thus this feature, when correctly construed is present in both claims under comparison. Figure 11 in both specifications clearly illustrates this feature.
Difference 6: The vertical skein of the parent claim is defined in the specification as, “-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 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 to permeate from the ends of the fibers.” Most of these features are disclosed in the opposed claim except the length of the fibers being substantially equal. Thus the opposed claim does not have this feature.
Difference 7: The opposed application refers to “…opposed ends of each fiber sealingly secured therein with potting resin.” The opponent contends that there is a difference between “each terminal portion of each of the fibers near their ends” and the “opposed ends” of the claim under attack. Applying the Rules of Construction (Décor v Dart (supra)), reference may be had to the relevant description to determine the meaning/ambit of these terms in the specification. Both specifications have similar drawings and there is no indication of any difference between the “opposed ends” and “terminal portions of the fibers near their ends”. I do not find any difference between the parent and the opposed application in this regard.
Difference 8: This feature is not covered in the parent claim.
Thus differences 4 and 6 are not defined in opposed claim 1 which is therefore broader than the parent and hence its ambit falls outside the scope of claim 1of the parent application. As appended claims 2 to 4 of the parent application are narrower than its claim 1, the opposed claim will not fall within their ambit. Also opposed claims 2 to 4 do not add features which cover differences 4 and 6. Thus Section 79B (1)(b) is not satisfied in respect of opposed claims 1 to 4.
Looking at claim 5 of the parent, which defines a gas scrubbed assembly, I note that differences 4 and 6 identified above are also not defined in the opposed claim. Looking at difference 8, I note that claim 5 defines:
“-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;”
I had assessed that this feature encompassed difference 8 within its scope when assessing the gas scrubbed assembly of the parent specification with the disclosure of opposed claim 1. Thus differences 4 and 6 are not covered by parent claim 5. As appended claims 6 and 7 are narrower than claim 5 the opposed claim will not fall within their ambit. Also opposed claims 2 to 4 do not add features which cover differences 4 and 6. Thus Section 79B (1)(b) is not satisfied in respect of opposed claims 1 to 4 when assessed against claims 5 to 7 of the parent.
Of the remaining claims in the parent application, claims 8 to 14, 17, 18 define processes, methods and headers which clearly do not include the opposed claim within their ambit. I also find that opposed claims 2 to 4 do not fall within the ambit of these claims. Thus Claims 1 to 4 of the opposed application do not satisfy section 79B (1)(b) when compared to claims 1 to 14, 17 and 18 of the parent application.

Looking at claims 15 and 16, they are omnibus claims which state:
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.
I have to determine the ambit of these claims in order to assess if the opposed claim falls within their scope. These omnibus claims would encompass the broadest aspects of the invention disclosed in the description of the parent specification (Raleigh Cycle Co. Ltd. v H Miller and Co. Ltd., (1948) 65 RPC 141 and Australian Patent Office Manual of Practice and Procedures, 2.11.2.3.9)
I shall commence by determining the broadest form of the invention disclosed in the parent specification as accepted. I had determined this for the parent specification as filed. I have not found any major differences in the disclosures of the two documents and hence I find that the broadest features of the invention in the accepted parent are as follows:
(1) a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module; where the terminal ends of the fibers are potted in opposed headers in a closely spaced-apart substantially parallel relationship so as to leave their ends open, either protruding from or flush with a permeate-discharging face of at least one header depending on whether a conventional header or the “novel” header is used; wherein the opposed headers comprise a first header and a second header disposed in a vertically spaced apart relationship with opposed faces at a fixed distance;
(2) the fibers each have substantially equal length or individual lengths such that each fiber length is 1% to less than 5% greater than the fixed distance between the header faces such that the fibers are restrictedly swayable.
(3) permeate collection means held in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers.
The above device is a microfiltration device but when the above device is used with a gas-distribution means it is termed a ‘gas-scrubbed assembly’. The features of the gas-scrubbed assembly further includes ‘ a shaped gas distribution means adapted to provide a profusion of vertically ascending bubbles in a column above and in close proximity to the upper face of the lower header’. Disclosures of various embodiments of the header which satisfy this requirement show gas-distribution means forming an integral part of the lower header (figures 5, 6, 9). They also show the gas distribution means having second openings in communication with a plenum below the lower header, where the plenum is adapted to be connected to a source of pressurized gas. The device/assembly is operated at a transmembrane pressure differential of 0.7kPa to 345kPa wherein suction may be applied to the permeate collection means.
Thus, in the accepted parent, claim 15 includes all those features resident in the broad disclosure of the device set out above. Claim 16 also includes the features of the device set out above but in addition possesses those features peculiar to the gas-scrubbed assembly. I shall now compare the invention disclosed in claims 15 and 16 with opposed claim 1. I note that claim 15 in being directed to a microfiltration device does not include the gas-distribution means which forms part of the gas-scrubbed assembly. Hence opposed claim 1 does not fall within the ambit of claim 15. Looking at what is encompassed by parent claim 16, I do not find any matter defined in opposed claim 1 which is missing from the ambit of parent claim 16, in particular, the gas distribution set up incorporated in the headers and transmembrane operating pressures which are suction driven are clearly disclosed. Thus claim 16 clearly encompasses the scope of the invention defined in opposed claim 1. The features of opposed claims 2 and 3 are also disclosed within the scope of claim 16. Opposed claim 4 is an omnibus claim and I have determined previously that its scope is similar to that of opposed claim 1. As parent claim 16 clearly encompasses the scope of the invention defined in opposed claim 1, it would also include opposed claim 4 within its scope. Thus I find that the opposed invention as claimed falls within the scope of the claims of the parent specification as accepted. Thus claims 1 to 4 of the opposed application satisfy the requirements of section 79B (1)(b). As sections 79B (1) (a) & (b) have been satisfied, regulation 3.12(1)(c) is applicable to determine the priority date of the claims of the opposed application. Thus I have to determine if the claims of the opposed application are fairly based on the parent application as filed. To do this I need to insert the relevant claims in the parent application and assess if they are fairly based.
The general principle underlying fair basis is that in order for a claim to be fairly based, there must have been a "real and reasonably clear disclosure of its subject matter in the specification" - see CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079. The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004) had stated regarding “real and reasonably clear disclosure” that:
“Section 40(3) requires, in Fullagar J's words, ‘a real and reasonably clear disclosure.’ But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.”
Looking at opposed claim 1 which is the broadest claim, I have to determine if there is a real and reasonable disclosure of the claimed invention in the parent specification as filed. I had determined the broad disclosure of the invention in the parent specification and had found that opposed claims 1 to 4 had been disclosed in the parent specification. Thus opposed claims 1 to 4 are fairly based on the parent specification as there was a real and reasonable disclosure of the invention defined in these claims in the parent specification. Thus the claims of the opposed application take as their priority date, the filing date of the parent application, 8 August 1996.
Novelty
The opponent had referred to certain citations that would be relevant for the purpose of novelty if the claims of the opposed application were not entitled to claim priority from the parent application. As I have found that the opposed claims have priority entitlement from the parent application the matter of novelty consideration does not arise as the documents raised were published after the filing date of the parent application.
Inventive Step/Obviousness
The opponent indicated that if the delegate determined the opposed claims derived priority from the parent application then they submitted that, “-the invention….does not involve an inventive step and would have been obvious to the person skilled in the art in light of common general knowledge at the earlier priority date either considered alone or considered with certain prior art information.” They provided detailed submissions on the state of the common general knowledge (henceforth cgk) at the relevant date as well information which they considered satisfied the requirements of subsection 7(3).
The applicant submitted that whilst several integers of the invention were previously known in the art, the opposed invention disclosed a crucial and entirely new combination of integers. They contended that the prior art documentation raised by the opponent even if considered to be part of the cgk did not disclose the opposed invention. They further submitted that, “There is no basis in the evidence relied upon by Memcor as to cgk, that the skilled non-inventive addressee would have arrived at these aspects of the ‘855 application by only routine steps.” and “alternatively, the process which the non-inventive skilled addressee would have undertaken, based on cgk, to solve the problems in the ‘855 application is simply not described by Professor Leslie at all.”

Both parties provided detailed submissions on the inventive step issue and I shall refer to them where relevant in my decision.
Subsections 7(2) and 7(3) of the Patents Act 1990 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)
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.
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 Dr Leslie can be considered to be the non-inventive worker in the field and that his declaration clearly sets out what he considers constituted the common general knowledge in Australia at the relevant date, namely (Dr Leslie has provided a Summary of the cgk):
“…prior to August 1995 it was common knowledge in the Australian water industry that 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 employed in five separate techniques to maintain flow.”
The applicant considered that Professor Leslie had been fatally infected with 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 wherein he had been provided with the parent application. However the parent application cannot be considered to be the same (that is, identical) as the further application and no evidence has been provided to show that the parent and further application are the same. 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 have summarised Professor Leslie’s statement on cgk in Australia at the relevant date as follows:
1. 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.
2. The membranes are configured as sheet, tubes or fibres which can be bundled together and assembled into a membrane module. The membrane module 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.
3. 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.
4. 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 0.5 bar through to 4.0 bar 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.
5. 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.
6. 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 employed in five separate techniques to maintain flow.
I shall now assess the six items of alleged cgk while considering the applicant’s submissions against each item.
Item 1 has not been challenged by the applicant and I consider that it formed part of the cgk at the relevant date.
Regarding Item 2 the applicant questioned if there was any support in the evidence to show that it was well known to immerse a filtration module in a tank. I assume here that the module the applicant is referring to includes a frameless array of fibers not confined in a shell. The Sudak paper (exhibit GLL-2) referred to by Professor Leslie, at the page marked 96, left hand column, second paragraph states, “These membranes are potted in a PVC pipe which conceptually is similar to a shell and tube heat exchanger”. Quite clearly this is not a frameless array of fibers unconfined in a shell. The Tanaka paper (exhibit GLL-4) referred to also does not disclose a frameless array of membrane fiber modules immersed in an open/closed tank. I find that there is insufficient evidence to support the assertion that the use of frameless array membrane modules immersed in tanks was well known in the art. Thus Item 2 can be accepted as part of the cgk with the qualification that it does apply only to modules of fibers enclosed in shells and immersed in tanks.
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. I agree. If this feature was well known, that is part of the cgk; I would expect that textbooks, dictionaries, technical dictionaries, magazines and technical/scientific papers (see ICI Chemicals & Polymers Ltd v Lubrizol Corp 45 IPR 577) would refer to this feature as something which would be a routine part of membrane module construction. None of the papers cited by Professor Leslie disclose this aspect. I find that Item 3 has not been established as forming part of the cgk.
Item 4: The applicant challenges the operating transmembrane pressures disclosed on the basis that they refer to pressurised systems and not to suction driven systems. I agree. Professor Leslie has not made any submission regarding suction driven systems or a statement asserting that there is no operational impact on membrane modules when they change from pressure driven to suction driven and vice-versa. Thus, I find that the part of item 4 referring to the two operational modes (dead-end and cross-flow) was well known in the art. I also find that the range of transmembrane pressures identified were well known but only in respect of modules used in pressure driven systems.
Item 5: 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 papers provided by Professor Leslie do refer to 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, but quite clearly experimental in nature. I do not find that there is sufficient support to show that air scouring was part of the cgk in Australia before August 1995.
Item 6: As I have determined that air scouring was not established as part of the cgk in Australia before August 1995, the various methods of air scouring and the use of aeration to maintain flux are quite clearly not established as forming part of the cgk in Australia prior to August 1995.
I shall now assess the documents which the opponent has submitted fall within the ambit of the information defined in section 7(3) of the Act for the purposes of inventive step considerations as defined in section 7(2) of the Act. The documents are; (1) JP No. 63-143905, (2) JP No. 07-185268 and (3) JP No. 07-136470. The applicant challenged the relevance of the documents on the basis that they would not have been ascertained, understood and regarded as relevant by the skilled addressee. The opponent has provided English translations of all three documents. Neither the validity of the translations or their accuracy has been challenged by the applicant. Henceforth in referring to the documents I shall be having regard to the English translations for the text and to the Japanese specifications for the drawings which are not included in the translation. Having studied all three documents I find that they deal with hollow fiber membrane filters related to water treatment for removal of fine particles, pollutants, etc. I consider that the relevant skilled addressee when seeking a solution to the problem of the prior art would have conducted searches in this area of technology and consequently would have ascertained, understood and regarded these documents as relevant. The opponent had asserted that the opposed invention was not a patentable invention because it did not involve an inventive step and would have been obvious to the person skilled in the art in light of the common general knowledge at the earlier priority date either considered alone or considered with certain prior art information.
In the matter of assessing the opposed invention against the cgk alone I had found that not all items of information (1 to 6 above) asserted by the opponent as forming part of the cgk did actually form part of the cgk at the relevant date. Consequently I do not find that the opposed claims lack an inventive step in light of the cgk alone. In particular features such as the frameless array of fibers unconfined in a shell, air scouring during filtration, slackness of fibres between the potted ends and use of transmembrane pressures generated by suction to drive the filtration process have not been disclosed as forming part of the cgk.
I shall now assess the opposed claims for inventive step against the cgk when combined on an individual basis with the following documents:
JP No. 63-143905 (exhibits GLL-6 and 7)
The document discloses a hollow yarn membrane filter in which a plurality of bundled fibers are potted in vertically spaced-apart headers and where the length of the fibers between the headers exceeds the distance between the headers by approximately 1% to 4%. The fibers are cleaned by a combination of backwashing and air bubbling where the air is introduced below the lower potted section of the hollow fiber module. The permeate is extracted by a driving pressure across the membrane face from the dirty fluid side to the permeate side. The document does not disclose the application of transmembrane pressures for filtration by the use of suction. Further, on a given header, there is no spacing between adjacent potted fibers. The lower header does not include through passages for carrying air for discharging bubbles above the lower header. The module disclosed is not the same as the opposed module as it does not include the permeate collection means at the top and bottom headers and the fibers are bundled and secured around a vertical central support pipe. Further fig 5 of the document shows two vertically connected modules confined within a vertical pipe. Thus given the problems faced by the prior art there is no indication of whether the combination of the teaching of this document with the established cgk would lead to the claimed invention. In particular, there is no clear indication of what would persuade the skilled addressee to:- (a) use a suction driven system where suction is applied to the permeate collection means, (b) have a module unconfined in a shell, (b) ensure that the fiber bundle is potted at each header such that individual fibers are closely spaced apart, (c) provide through passages for carrying air through the lower header which have first openings adapted to discharge bubbles into the substrate above the lower header and having a second opening in communication with the a plenum below the lower header. Also, there is no clear indication of why the skilled addressee would be persuaded to try these features as the invention of the citation would appear to have addressed problems (ii) to (iv) of the prior art. I find that, given the problems of the prior art, the teaching of JP 63-143905 when combined with the cgk does not render opposed claim 1 as lacking in inventiveness.
JP No. 07-185268 (exhibits GLL-8 and 9)
The specification describes a hollow fiber membrane filtration module which has openings in the lower part of the module to provide air for scrubbing the fiber membranes to remove deposits. The module discloses vertically spaced apart fibers with slight slackness potted at opposite ends with permeate removal occurring at the top end of the module. The system is driven by external pressure that passes raw water from the outside through hollow fiber membrane bundles to the inside thereof to filter the same and remove the processed water from one end. JP 07-185268 does not disclose the application of transmembrane pressures for filtration by the use of suction. The module disclosed is not the same as the opposed module as the permeate collection means is integrated with the shell and not adapted to be immersed. Though a minimal fiber slackness is apparent, it does not appear to fall within the range defined in the opposed claim. There is no indication of the expected spacing between fibers on the same header. Thus given the problems faced by the prior art there is no indication of whether the combination of the teaching of this document with the established cgk would lead to the claimed invention. In particular, there is no clear indication of what would persuade the skilled addressee to:- (a) use a suction driven system where suction is applied to the permeate collection means, (b) have a module unconfined in a shell, (b) ensure that the fiber bundle is potted at each header such that individual fibers are closely spaced apart, (c) ensure that each fiber has a length from 0.1% to less than 5% greater than the fixed distance between the headers so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber. Further, there is no clear indication of why the skilled addressee would be persuaded to try these features as the invention of the citation would appear to have addressed problems (ii) and (iv) and partially problem (iii) of the prior art. I find that, given the problems of the prior art, the teaching of JP 07-185268 when combined with the cgk does not render opposed claim 1 as lacking in inventiveness.
JP No. 07-136470 (exhibits GLL-10 and 11)
The disclosure clearly shows a multiplicity of hollow fiber membranes unconfined in a shell of a module with top and bottom headers where permeate is collected. No indication is given if the fibers open to a permeate discharging face of a header or extend beyond the face. There appears to be some slackness of the fibers (figure 2) but no indication if it satisfies the length ranges specified in opposed claim 1. Further there is no disclosure of any lateral spacing between the fibers at each header. Aeration of the fibers is shown but the air pipes do not go through the lower header. Though suction filtration in open tanks is disclosed no suitable operating pressure range has been disclosed. When comparing the working of the device of this citation with prior art problems it appears that the features of non-confined fibers, air-scrubbing and limited sway have overcome these problems. There is no indication of what would persuade the skilled addressee to adopt the precise features of the opposed invention instead of those in the citation. Thus I do not find any factors or directions which would persuade the skilled addressee when facing the problems of the prior art to combine the teachings of the citation with the established cgk addressee to:- (a) ensure that the fiber bundle is potted at each header such that individual fibers are closely spaced apart, (b) ensure that the fibers open directly on to the permeate discharging face of the header, (c) ensure that each fiber has a length from 0.1% to less than 5% greater than the fixed distance between the headers so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber, (d) provide through passages for carrying air through the lower header which have first openings adapted to discharge bubbles into the substrate above the lower header and having a second opening in communication with the a plenum below the lower header. I find that, given the problems of the prior art, the teaching of JP 07-136470 when combined with the cgk does not render opposed claim 1 as lacking in inventiveness.
Thus claims 1 to 4 of the opposed application have not been shown to lack an inventive step in light of the established common general knowledge when combined on an individual basis with the teachings of three prior art documents.
Section 40/Lack of Clarity

The opponent submitted that the following terms used in the specification lacked clarity. The opponent had indicated in their statement of grounds and particulars that use of these terms in the claims caused a lack of clarity. The reasons stated are as follows:
(a) “unconfined in a shell”. Issues:- (i) does this require a shell or not?, (ii) what constitutes a shell?, (iii) what is the relationship or interaction or lack of interaction between the shell and the fibers, such that it can be said that the fibers are “unconfined”?
(b) “restricted displacement”. Issues:- (i) Is this the necessary and observable result of the fiber length falling within the stated range (i.e. the stated fiber length is both a sufficient and necessary cause of that result), or is a different property being referred to as an essential feature of the claim, where the essential feature is not a consequence of the stated fiber length (i.e. the stated fiber length is a necessary but not sufficient and cause)? (ii) If the latter, what is meant by “restricted displacement” and how does one know when that condition is satisfied?
The applicant responded as follows:
(a) “unconfined in a shell”. The whole phrase is “unconfined in a shell of a module”. The person skilled in the art would understand that the term means a single module which is not confined in its own shell. This is, in part, what distinguishes the invention as directed to open tank unpressurised systems as opposed to contained pressurised systems within a pressurised shell.
(b) “restricted displacement”. The meaning is clear, particularly when the specification is read as a whole, which refers to lateral movement of the fibres within limits, such limits being defined by the slack and header spacing.
The claims define the monopoly and their clarity is assessed in terms of how they are construed by the skilled addressee (see Rules of Construction – Décor v Dart (supra)). In this case the opponent’s declarant who is the skilled addressee did not raise concerns regarding the usage of these terms in the opposed specification. Considering item (a), as indicated by the applicant the feature is defined as “unconfined in a shell of a module” in the claim. If I assume that the skilled addressee had difficulty with this term then he/she could have regard to the specification (see Rules of Construction – Decor v Dart (supra)) to determine if the lack of clarity could be resolved. The term is used in relation to the placement of the hollow fiber membranes used for microfiltration. The description at page 1, lines 17 to 20 states, “The invention is…directed to 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.” The following description and drawings show several instances where the fibers are open to movement of the substrate across the fibers independently of the headers. What is shown in essence is a number of closely packed fibers in a vertical configuration with the top ends potted in a header attached to a permeate collection means and the bottom ends also potted in a header attached to a permeate collection means. There is no enclosure extending between the top and bottom header which confines the fibers within a shell. The opponent had raised a prior art document JP 07-185268, which is an example where the headers are placed in a shell which extends to cover the fibre membranes and thus form a single module. The fibres are thus confined in a shell. In the application under attack the headers are independent of each other with the fibers being the only connection between the two. There is no rigid shell or module encapsulating the headers and the fiber membranes. I do not find that use of the term “unconfined in a shell” causes the specification to lack clarity.
Looking at item (b) the relevant portion of the claim states, “…each of said fibers have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber…”. If I assume that the skilled addressee had difficulty with this term then he/she could have regard to the specification (Rules of Construction – Décor v Dart (supra)) to determine the ambit of this term, I note that at page 4a, line 31 to page 4b line 10 discloses:
The length of fibers between opposed surfaces of headers from which they extend, is in a critical range from at least from 0.1% longer than the distance separating those opposed faces to less than 5% longer….so that sway of the fibers is confined within a vertical zone of movement, the periphery of which zone is defined by side-to-side movement of outer skein fibers; and, the majority of these fibers move in a slightly larger zone than one defined by the projected area of one header upon the other”.
This is further illustrated in figures 5, 10 and 11. As indicated by the description the restricted displacement is both a consequence of the length of the fibers, the vertical placement of the headers and the vertical distance between the headers. I do not find that use of the term “restricted displacement” causes the opposed specification to lack clarity.
CONCLUSION
The opponent pursued the grounds of novelty, inventive step, and section 40/lack of clarity. They also contested the right of the opposed application to claim priority from the parent application on the basis that the requirements of subsection 79B (1) had not been met.
I had found that none of the claims were shown to be lacking an inventive step in light of the common general knowledge alone and also when combined on an individual basis with the citations raised by the opponent. The terms raised by the opponent as lacking clarity were found to be clear by the skilled addressee and when reference was had to the description and drawings. I had assessed the opposed application to determine if section 79B (1) requirements had been met and I found that AU 2004203855 was entitled to claim priority from the parent application 715364. Consequently the issue of novelty based on documents with a later priority and publication date than the parent application but earlier than the opposed specification did not arise.
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
The opponent submitted that costs should follow the event. The applicant submitted that if they were successful then costs should follow the event. However, if they were unsuccessful then only partial costs should be awarded to the opponent as the applicant had to consider an extraordinarily large number of citations in the statement of grounds and particulars as well as a large volume of material filed by the opponent’s attorney.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against Memcor Australia Pty Ltd and in favour of the applicant Zenon Technology Partnership.
Jacob Elijah
Delegate of the Commissioner of Patents
05 June 2008
Patent attorneys for the applicant : Corrs Chambers Westgarth, Melbourne
Patent attorneys for the opponent : Shelston IP, Sydney