New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd

[2003] APO 9

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 728958 in the name of New Clear Water Pty Ltd

Title:          Apparatus for use as a disposal field

Action: Opposition under section 59 of the Patents Act 1990 by Atlantis Corporation Pty Ltd

Decision:          Issued            .

Abstract

Substantive opposition; claims found to lack clarity and not to be fairly based. Although prima facie relevant, there was some doubt that an untranslated French language patent specification actually disclosed the invention to the required level of certainty; F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 applied. Grounds of opposition in relation to novelty and inventive step dismissed.

Costs awarded against the applicant up to the date of advertisement of allowance of the amendment sought following the service of evidence in support.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 728958 by New Clear Water Pty Ltd and opposition thereto by Atlantis Corporation Pty Ltd under section 59 of the Patents Act 1990.

BACKGROUND

1. Patent application 728958 (97123/98) was filed by the applicant New Clear Water Pty Ltd (NCW) on 15 December 1998, being associated with earlier provisional applications, PP0943 and PP6078. The application was advertised accepted on 25 January 2001 and a notice of opposition was filed by Atlantis Corporation Pty Ltd (Atlantis) on 26 April 2001.

1. A statement of grounds and particulars was not served in the time allowed and an extension of time was sought by Atlantis under section 223. It is sufficient at this point to refer to the decisions of the Deputy Commissioner in New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [200] APO 48 and [2000] APO 59 and to note that the extension of time was allowed but in circumstances that NCW submits are relevant to the question of costs.

1. The statement of grounds was served on 21 August 2001 and evidence in support on 26 October 2001. On 14 January 2002 NCW requested amendment of the specification under section 104 stating in their request that this was done "in an effort to overcome an opposition presently underway". The amendments were ultimately allowed on 13 August 2002.

1. The evidentiary process was completed on 12 August 2002 and the matter came to hearing in Canberra on 12 December 2002. NCW was represented by Mr Peter Caporn, patent attorney of Wray & Associates, Perth, by telephone. Atlantis was represented by an employee of the company, Mr Paul Taylor, in person.

SPECIFICATION

1. The field of the present invention is in relation to disposal field apparatus and more particularly apparatus that disposes or disperses liquid, such as storm water run-off, into a volume of soil that surrounds the disposal field apparatus. Existing apparatus is said to include apertured concrete cylinders into which water to be dispersed is fed. The disadvantage of these structures is that the apertured surface area is low (about 11%) and they are difficult and costly to manufacture and install. Moulded plastic structures have been used with an improvement in ease of construction and handling, but at a higher cost.

1. Consequently, the object of the invention is said to be to "overcome substantially" the problems of the prior art. A consistory statement of the apparatus and method of the invention follows in the same terms as the claims which read as follows:

   "1.   An apparatus for use as a disposal field, the disposal field apparatus comprising two end panels, an intermediate panel and at least one layer of geotextile cloth material, the panels when interconnected define a substantially enclosed space into which a liquid to be dispersed may be fed, each of said panels in turn comprising a framework of ribs defining in said panels a plurality of apertures, the apertures comprising greater than 80% of the surface area of said panels, the geotextile cloth being arranged with respect to the panels such that water may pass therethrough but the passage of soil therethrough is prevented, wherein the end panels and the intermediate panel are formed in a manner allowing them to be interlocked to form the disposal field apparatus, such that weight borne by the intermediate panel is supported by the end panels and acts to strengthen the interconnection therebetween.

2.    An apparatus according to claim 1, wherein the end panels are provided in triangular form.

3.    An apparatus according to claim 1 or 2, wherein the intermediate panel is provided as a sheet in which is provided a substantially right angle about a mid-line thereof to form a tented structure having two side walls and an uppermost substantially right angle apex.

4.    An apparatus according to any one of the preceding claims, wherein the ends of the intermediate panel are provided with integrally formed connecting tabs able to be bent over the end panels at each end thereof.

5.    An apparatus according to claim 4, wherein each end panel has a broad base member provided on one side thereof.

6.    An apparatus according to any one of claims 3 to 5, wherein one or more reinforcing members are provided to space apart the side walls of the intermediate panel.

7.    An apparatus according to any one of the preceding claims, wherein the panels are formed from metal mesh.

8.    An apparatus according to claim 7, wherein the mesh comprises a plurality of ribs which in turn define the framework of ribs and the plurality of apertures.

9.    A method of dispersing water, said method comprising the method steps of:

•preparing an excavation in a surface;

•assembling a disposal field apparatus according to any one of claims 1 to 8;

•placing a geotextile cloth over the panels of the disposal field apparatus;

•placing the disposal field apparatus within the excavation with a base thereof resting on a bottom surface of the excavation;

•arranging piping to divert water to be dispersed to the disposal field apparatus;

•refilling the excavation; and

•directing water to be dispersed to the disposal field apparatus.

10.  An apparatus for use as a disposal field, the apparatus being substantially as hereinbefore described with reference to the accompanying drawings

11.  A method of dispersing water substantially as hereinbefore described with reference to the accompanying drawings."

1. The dispersal field apparatus illustrated in the figures is in the general shape of a triangular prism having triangular end panels and an intermediate panel with a 90^o fold forming the apex and two sides of the prismatic shape with the apex, in use, being uppermost in the soil excavation. That is, a "tented structure " is formed as defined in claim 3. The effect of this is said to be that no surface area of the field is wasted by lying substantially adjacent and parallel to the surface of the excavation. Weight bearing on the inclined side walls will also be transferred to the triangular end panels to accentuate the interlocking of the panels which is achieved through connecting tabs formed from extensions of the mesh of the intermediate panel. The panels are all formed from galvanised steel mesh and covered, when assembled, with a geotextile sheet material.

DECISION

1. Atlantis in this opposition allege that the claimed invention is not patentable because it does not comply with subsection 18(1)(b), that is, it is not novel and lacks an inventive step, and that the specification does not comply with section 40. The ground of non-compliance with subsection 18(1)(a), "manner of manufacture", was also mentioned in the statement of grounds however it was not pursued at hearing.  On the other hand, section 40 matters raised at the hearing by Atlantis were not particularised and were objected to by Mr Caporn.

1. In relation to section 40 matters not particularised or addressed in evidence, it has long been the practice of the Commissioner to hear the parties and consider those matters so long as the proceedings are conducted so as not to result in a denial of natural justice (see for example, Allan Noel Porter v Arbortech Investments Pty Ltd [1994] APO 55, Vaw Aluminium AG v Alcan Deutschland GmbH [1994] APO 68, Kabushiki Kaisha Universal v Ainsworth Nominees Pty Ltd [1996] APO 19, Abb Power T&D Co Inc v Electrowatt Technology Innovation Corp [2000] APO 75, Atsuko Parr v Sontaria Holdings Pty Ltd [2001] APO 23). Procedural fairness is also addressed by taking the circumstances into account when apportioning costs and I will adopt this approach in the present case.

Section 40

1. Lockhart J in Décor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385 conveniently summarised the principles that apply to the interpretation of patent specifications:

"It is well established that there are no special rules for the interpretation of patent specifications, which are to be interpreted in the same way as any other written document upon ordinary principles of interpretation. The words used in a specification are to be given the meaning which the normal person skilled in the art would attach to those words, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification: British Thomson-Houston Company Ltd. v. Corona Lamp Works Ltd. (1922) 39 RPC 49 per Viscount Haldane at 67, per Lord Shaw at 89; Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 per Stephen J. at 60.

In one sense it is right to say that the specification must be read as a whole, but the specification is a whole made up of several parts and those parts have different functions. It is not legitimate to reduce or enlarge the meaning of the words of a Claim by glosses derived from other parts of the specification, or to confine the scope of the Claims by reference to some limitation which may be found in the body of the specification but is not expressly or by inference reproduced in the Claims themselves. In ascertaining the width of a particular claim it is not permissible to vary or qualify the plain and unambiguous meaning of the Claim by reference to the body of the specification: Welch Perrin & Co. Pty. Limited v Worrell (1961) 106 CLR 588 per Dixon C.J., Kitto and Windeyer JJ. at 610. However, if an expression in the Claim is not clear, it is then permissible to resort to the body of the specification in order to define or clarify the meaning of words used in the Claim without infringing the rule that clear and unambiguous words in the Claim cannot be varied or qualified by reference to the body of the specification: Electric and Musical Industries Limited v Lissen Limited (1938) 56 RPC 23; Rosedale Associated Manufacturers Limited v Carlton Tyre Saving Co. Limited (1960) RPC 59 per curiam at 69; Interlego A.G. v Toltoys Pty. Limited (1973) 130 CLR 461 per Barwick C.J. and Mason J. at 479."

I also note the rules for constructed articulated by Shephard J in the same case, which I apply with some caution given that in the present matter I have very little expert evidence that addresses the appropriate interpretation of the claims.

1. In comparing the scope of the claims with the prior art, Mr Caporn and, to some extent, NCW's experts, focus on the wording "disposal field apparatus comprising" in claim 1 and argue that the prior art is not relevant because it does not disclose apparatus used as a disposal field. Mr Capon further submitted that, even though "for use" terminology is used in the claim, the further limitation of "Apparatus" in the first line to "disposal field apparatus" was significant.

This is a rather opportunistic position and one that does not bear close scrutiny. Claim 1 is not, on any reasonable interpretation, what is sometimes describes as a "concealed method claim" but is clearly limited to apparatus (see Thurston Catton's Application, (1978) AOJP 3666, L'Aire Liquide Societe Anonyme pour L'Etude et L'Exploitation des Precedes George Claude, (1932) 49 RPC 428). Hence, any apparatus having the defined features will fall within the scope of the relevant claims so long as it is capable of carrying out the function of a disposal field.

1. A perhaps more significant issue is what is meant by the reference to an "intermediate panel" where in connection with it, and the two end panels, the claim indicates that " the panels when interconnected define a substantially enclosed space". The term "panel" can be used in many different ways but generally in engineering it has the connotation of a sheet-like surface or structure that may be either planar, angled or curved. In this regard I believe the addressee would be able to ascribe meaning to this limitation of the claim assuming "substantially" in this context was understood in a narrow sense. If in any doubt they would turn to claim 3 and to the specification and conclude that the intermediate panel is intended to include a variety of shapes that, with the end panels, tend to enclose a volume.

To the extent that it may be relevant elsewhere, I interpret the defined apparatus as being limited to three panels since it is the two end panels and, clearly, a single intermediate panel that "define" the "substantially enclosed space" and these "are formed in a manner allowing them to be interlocked to form the disposal filed apparatus". Hence I disagree with Atlantis' suggestion that the claim encompasses disposal field apparatus having a plurality of intermediate panels.

1. Returning to the term "substantially", I note that the use of that imprecise qualification is not objectionable provided it conveys the necessary meaning, in the sense that it means sufficient or close enough for the applicant's purpose - see Leonardis v Sartas [1996] 449 FCA 1 and Blanco White, Patents for Inventions (5th ed., 1983) Section 2-112 at page 21. In the present case, however, I do not think the specification clearly provides that meaning. From the description it appears what is important is that the panels, together with the bottom surface of the excavation on which they are installed, define a three dimensional space. Hence, in the tented structure disclosed, one whole side of the prismatic space is not defined by the intermediate panel, amounting to a large percentage of its surface area. Other configurations conceivably would require different extents of definition or enclosure to operate effectively and in this regard much depends on the particular configuration of the panels and their orientation in use, of which the claims are essentially silent. Consequently, "substantially enclosed" used in the context of the claims is indefinite and claim 1 is not clear.

1. Atlantis otherwise objects on the basis that claim 1 is not fairly based because the apparatus defined does not achieve the stated objectives of the invention. Given the very general statement " … has one object thereof to overcome substantially the abovementioned problems associated with the prior art" and the brief description of the prior art it is perhaps difficult to determine what result is to be considered essential to the inventive concept. However, on balance, I believe the specification as a whole tends to suggest that a structure having a high level of exposure of the available surface area to the surrounding soil is essential for efficient water dispersal and hence is an important aspect of the invention. This seems to be the effect of the paragraph at page 3/1 lines 3-7 and page 9 lines 14-28. It may be debatable as to what constitutes a "high level of exposure" but, based on the passage at page 3/1, it would seem to exclude disposal fields with square or rectangular cross-sections, at least when installed in the usual way, and conceivably would exclude other cross-sections where the disposal field, in use, presents a substantially horizontal upper surface. As the claims, excluding perhaps claim 3, are not restricted to configurations that achieve a high level of exposure to the soil of the available surface area I find that they lack fair basis.

1. Consequent on the above, I find that the complete specification does not comply with section 40 for the reasons indicated. Atlantis objected to a number of other aspects of the claims and particularly the way in which the interlocking of the panels is defined. I believe, however, that this aspect would be readily understood by a skilled addressee and is fairly based on the description. Similarly, the other matters raised by Atlantis would not in my view amount to grounds of invalidity.

Novelty

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

1. Although I have identified section 40 deficiencies in the claims, it is apparent that an essential feature is that each end and the intermediate panel are formed by a framework of ribs and that the ribs define in the panels apertures comprising greater than 80% of the surface area of each panel. This being the case, most of the alleged disclosures referred to in the evidence of Mr Urriola and Mr Taylor for the opponent are entirely irrelevant since, even were it shown that the panel elements referred to were formed into apparatus having the characteristics claimed, and indeed were published by use or otherwise before the relevant priority date, they would still not meet this 80% requirement. In particular, the original Atlantis panel referred to would apparently only present a 55% aperture area on its supporting planar surface and the Nordrain apparatus (HU3), on my rough measurement, just over 60%. Even the Atlantis strip filter pipe which is said to have a "void surface area of 80%" would seem to have less than 80% aperture area on the upper support surface and appears to rely on the significantly more open side structure to meet the total open area measurement indicated. Consequently, the opposition on the grounds of lack of novelty must fail in relation to the allegations of publication in relation to the promotion, sale or use of the products referred to in Mr Urriola's declaration.

1. Most of the published patent documents can be dismissed on similar grounds excepting perhaps EP 768432 (Boissie et al) 16 April 1997 which requires closer attention, at least in relation to the invention defined by claim 1. The English abstract and my limited understanding of the French language suggests that this disclosure relates to a drainage cell or bag of porous geotextile material or perforated "polyene" which is supported by an internal frame or basket and, in use, is filled with a porous volcanic rock. It seems clear in this case that the 80% aperture requirement is met by the mesh dimensions given at pages 4 and 6 of the citation. However, if, as I have concluded, the claims are limited to apparatus having only three panels, or at least three panels that substantially enclose a volume, it would seem uncertain that this would be disclosed by the parallelepipedic examples discussed. Certainly the example of figure 1 can not be said to disclose such an arrangement. Nevertheless the cylindrical basket example in figure 4 is a different matter and would seem prima facie to disclose a single intermediate sheet bent into a cylindrical form and supported by two circular end panels. I would add here that contrary to the views expressed by the applicant's experts, the placement of rocks within the space enclosed by the appertured panels is totally irrelevant to the present apparatus claims since the apertures are defined therein only in the context of the rib framework and not with reference to the enclosed space or any flow characteristics to or through that space.

1. While there is perhaps many ways of interconnecting intermediate and end panels with the effect that weight borne by the intermediate panel tends to strengthen the interconnection, there is little explicit information apparent from the citation as to how the panels of the figure 4 embodiment are to be interconnected. Such a method of interconnection may or may not be readily apparent to a person skilled in the art but, as the requirement is for "clear and unmistakable directions" (Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428), I think in the end the disclosure must be considered to fall short of what is required to sustain the ground of lack of novelty. In this I am also mindful of the degree of certainty to which I am required to reach before finding that a ground of opposition has been made out. As the current application was accepted prior to the commencement of the Patents Amendment Act 2001, I clearly should have regard for the considerations expressed by Emmett J in F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 with the effect that I should be "clearly satisfied that the patent if granted would not be valid" (see the discussion in Micromass Limited v Varian Inc [2002] APO 31). The opponent in this case has not bothered to provide me with a translation of the French or other foreign language patent specifications it provided in evidence nor otherwise provided detailed evidence as to what a skilled addressee would understand from it. Consequently I am left with a significant degree of doubt as to what is implicitly or explicitly disclosed to a person skilled in the art and I must resolve those doubts in favour of the applicant. As a result the opposition on this ground is dismissed.

Inventive Step

1. The opponents case as to a lack of inventive step or obviousness is somewhat unclear and seems to be based largely on the proposition that it would be obvious to produce an improved disposal field by taking known drainage cells and enlarging the aperture size. On any reading of the evidence before me I do not believe the opponent's case has any prospect of success. In particular, Mr Urriola and Mr Taylor are not well placed to provide objective evidence as to what was common general knowledge in the art of water dispersal and what the skilled person may do with it in addressing the problem of the application because in significant respects they are either over or under qualified and are, in any event, intimately associated with Atlantis and the drainage products it produces.

1. The substantive content of their evidence is also clearly insufficient to support the case Atlantis seeks to make. It is simply not good enough to say that a claimed combination is obvious because its features can, with the benefit of hindsight, be plucked or adapted from elements of common general knowledge. The question is rather "was the combination obvious in the light of the relevant knowledge and information as it existed at the priority date?" and in this regard:

"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."

Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286

1. This question is not answered by the evidence in any real sense and on the state of the art at the priority date I am inclined to prefer the apparently independent evidence of Mr Fimmel. That being the case I dismiss the opposition in relation to this ground also.

CONCLUSION

1. I have found that the application does not comply with section 40 but have dismissed the opposition in relation to the grounds of lack of novelty or inventive step. As there is clearly patentable subject matter within the complete specification, I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the defects identified.

COSTS

1. NCW asked that were the opposition to be successful on any grounds I should still award costs against Atlantis considering late service of the statement of grounds and particulars, the inadequate particularisation of grounds, the serving of unexecuted evidence and what was said to be the frustration of the applicant's attempts to settle the matter. There seems to be no evidence on the last point on which I could possibly take it into account but to the other circumstances I would add that the applicant has taken steps to amend the application subsequent to the filing of the notice of opposition and the serving of evidence in support.

1. As the amendment appears to be substantial in nature and directly related to the opposition, I will follow the normal practice and award costs against the applicant up to, and including, the date of advertisement of allowance of the amendment. To this extent I do not believe the circumstances relating to the section 223 matter were overly prejudicial to the applicant in terms of delay and additional expense and hence they do not require special consideration in the award of costs. I would note also that NCW were awarded costs in the section 223 matter despite the granting of an extension of time to Atlantis.

1. As to costs subsequent to the advertisement of the amendment, including the costs associated with the hearing, I believe it is most appropriate to make no award of costs. While Atlantis was successful on section 40 grounds these were not particularised and it was not successful on all other grounds.

P M Spann

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :      Wray & Associates, Perth