Ocean Farm Seafoods Pty. Ltd. v. the State of Victoria and the Minister for Conservation, Forests and Lands, Victoria

[1985] APO 28

In the Matter of the Patents Act 1952 - and - In the Matter of an Application under Section 68B for an Extension of the Term of Petty Patent 533828 in the Name of OCEAN FARM SEAFOODS PTY. LTD. and - In the Matter of a Notice under Sub-Section 68B(3) Lodged by THE STATE OF VICTORIA and THE MINISTER FOR CONSERVATION, FORESTS AND LANDS, VICTORIA.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Application 18964/83 for a petty patent was lodged on 8 September, 1983 in the name of Edward Ernest Gaddings as a divisional of 17948/83, lodged on 7 December, 1982 as PF7143. Petty patent 533828 was sealed on the application on 5 January, 1984 in the name of Mr. Gaddings. Ocean Farm Seafoods Pty. Ltd. has since been registered as patentee by right of assignment. On 5 December, 1984 the patentee lodged an application under sub-section 68B(l) for the grant of an extension of the term of the petty patent. On 21 January, 1985 the Crown Solicitor for the State of Victoria, on behalf of the State of Victoria and the Minister for Conservation, Forests and Lands, Victoria ("the informants"), lodged a notice under sub-section 68B(3) informing the Commissioner of facts which it was asserted establish the grounds set out in paragraph 100(l)(a), (d), (e) and (g) of the Patents Act. .(If those grounds are, in fact, established then I cannot grant an extension of the term of the petty patent). On 4 February, 1985 the Crown Solicitor lodged an application under sub-section 160(2) for an extension of the time (from 4 December, 1984 to 4 February, 1985) in which to lodge the notice under sub- section 68B(3). By my unreported decision of 14 May, 1985 I allowed that extension of time.

At the hearing on the sub-section 688(3) notice in Canberra on 1 August, 1985 the informants were represented by Mr. McCaw of Counsel, instructed by Mr. Janson of the Crown Solicitor's Office; and the patentee was not represented. Mr. McCaw, in addition to addressing the issues raised by the sub-section 68B(3) notice, submitted that the patentee's application for extension of term was lodged outside the time allowed by sub- section 68B(2).

The petty patent specification is entitled "Apparatus for Underwater Farming". The material parts of that specification are as follows:

"The present invention relates to apparatus for underwater farming, and more particularly to the farming of mussels.

In shallow waters, sea creatures and sea growing plants may be sown in prepared beds and later harvested by hand methods. Advantage may be taken of tides to uncover such beds. In deeper waters harvesting may be carried out by dredging but considerable wastage results.

Also in deeper waters farming may be carried out by placing sea creatures or plants to be farmed on a platform, submerging the platform for a period of time and recovering the platform by floatation means controllable from the surface, this method is particularly suited to the farming of oysters.

Another method of underwater farming in deeper waters may be carried out hy having a number of surface floats connected to a common cable or rope, the floats being connected to the common cable or rope equidistant to each other thus forming a string, each end of the common cable or rope being connected to an anchoring sinker in a fashion that causes the string of floats to form a straight line. Sea creatures or plants to be farmed are attached to ropes or other substrates which are suspended vertically from the common rope or cable. This method of underwater farming is particularly suited to the farming of mussels.

Those skilled in the art of underwater farming know that the latter method works well, but it has been found in practice to be prone to considerable wear and tear over the whole structure caused by constant movement from surface waves and storms. It has also been found in practice that the surface floats which are usually constructed of moulded plastics material suffer deterioration due to the action of the sun's rays on the plastics material. Also extremes in temperature encountered in summer and winter deform or damage the plastic floats. It has also been found in practice that seventy five percent of the buoyancy in the surface floats is wasted due to the fact that if more than twenty five percent of the volume of the float is immersed in the water the ability of the float to ride over a wave starts to be lost, force from the motion of the wave is transmitted to the structure as a whole imparting strains which accelerate the wear and tear of the apparatus.

It has also been found in practice the need to use very heavy mooring sinkers to prevent the structure drifting during heavy storms.

According to the present invention there is provided apparatus for farming mussels, comprising float means, a rigid, substantially horizontal, beam suspended beneath the said float means, a plurality of anchor means on the water bed, mooring lines extending from the anchor means so as to anchor the float means and beam relative to the water bed, and several elongate culture substrates supported by the float means via said beam, the arrangement being such that said mooring lines hold the float means fully submerged at a depth such that the float means is not subject to wave action on the surface of the water.

Preferably each anchor means comprises a mooring sinker.

In a preferred form, the substrates are suspended from the beam whereby the substrates hang generally vertically, the lower ends of the substrates preferably terminating short of the water bed.

In another preferred form, the beam forms an upper horizontal side of a substantially vertically oriented rigid rectangular frame having opposed vertical sides and a lower horizontal side, and the substrates extend substantially horizontally between the vertical sides of the frame.

The apparatus and method to be particularly described herein permits underwater farming where conditions are suitable without wear and tear on the apparatus due to wave action or storm damage. Buoyancy floats are not affected by sunlight or by extremes of temperature in summer or winter. The apparatus also permits one hundred percent of the buoyancy to be utilised, whereby a lesser volume of floats are needed to buoy up a given amount of apparatus complete with the shell- fish it holds. Heavy sinkers are no longer required to prevent the structure drifting in storms.

One especially preferred embodiment comprises a submersible beam maintained in a horizontal position by connecting each end to a separate mooring line, the beam being buoyed up by connecting it to one or more floats. The underside of the beam is provided with hooks for the connection of vertically hanging ropes or other substrates to which sea creatures or sea growing plants are attached or attach themselves and grow.

Embodiments of the invention will now be described .....

THE CLAIM DEFINING THE INVENTION IS AS FOLLOWS:

1. apparatus for farming mussels, comprising float means, a rigid, substantially horizontal, beam suspended beneath the said float means, a plurality of anchor means on the water bed, mooring lines extending from the anchor means so as to anchor the float means and beam relative to the water bed, and several elongate culture substrates supported by the float means via said beam, the arrangement being such that said mooring lines hold the float means fully submerged at a depth such that the float means is not subject to wave action on the surface of the water."

The invention as described and claimed utilises a rigid beam to support culture substrates, together with what could be described as "sub- surface flotation", by which the floats which provide buoyancy are fully submerged. The claim is directed to apparatus in situ, with the "float means" fully submerged and the "anchor means" in place on the bottom. The specification describes considerable advantages which accrue from the use of sub- surface flotation, but does not describe any particular advantages in using a rigid beam for the suspension of culture substrates. The priority date of the claim is 7 December, 1982.

At the hearing, Mr. McCaw submitted that the evidence lodged proved anticipation of the invention as claimed. That evidence is in the form of declarations by Colin Edward John Sumner (a marine biologist with the Tasmanian Department of Sea Fisheries), Neil John Hickman (a marine biologist employed by Marine Science Laboratories at Queenscliff, Victoria) and Christopher Joseph Twickler (a mussel farmer and director of Mussel Co. Australia Pty. Ltd.). I consider that evidence below in chronological order.

The declaration by Mr. Twickler states, in paragraph 12, that:

"The principle of sub-surface flotation for fishing systems has been known for very many years prior to December 1982. It has been used for deep water fishing using either lines or nets to avoid excessive use of netting or lines. For example, shark mesh netting systems have used a net anchored on the sea floor and floated at its top end a desired distance above the sea floor and below the surface. Similarly shark lines carrying hooks have been set from ropes connected to sub-surface buoys and anchored to the sea floor. In each case the system is of course designed to ensure that fishing gear of no greater depth than is required for the purpose is used."

The declaration by Mr. Hickman states, in paragraph 7, that:

"The principle of sub-surface flotation was well known to me .before December 1982. I was aware of its use, for example, in deep sea fishing by use of lines or nets where the object was to keep to a minimum the line or net designed to be used in the fishing operation near the sea floor."

On the basis of this evidence I find that sub-surface flotation to support fishing gear was part of the common general knowledge of commercial fishermen at the priority date of the claim.

The evidence also establishes that what could be described as a "sub- surface flotation longline" was publicly used by Mr. Twickler late in 1978 and by the Tasmanian Department of Sea Fisheries in 1981. Paragraph 2 of Mr. Twickler's declaration states that he

"began mussel farming off Beaumaris using a sub-surface flotation longline rig in late 1978. ... It used a series of "longlines", that is 16mi to 20mm diameter ropes moored at each end to a mooring block and stretched relatively taut under the surface of the water. 25 litre drums were attached along the length of the longline and served as sub-surface floats which were held in position by sinkers at the end of lines attached to the drums. Catching ropes or "droppers" were tied to the longline between the drums for the purpose of collection of mussel spat."

Paragraph 2 of the declaration by Mr. Sumner states that:

"A large sub-surface long-line a sketch of which is now produced and shown to me marked 'CEJS l' has been in continuous use by the Department of Sea Fisheries in Tasmanian waters since 1981 for the collection of scallop spat. This rig was later published in Fintas ... and in Australian Fisheries ...The rig has since ifs installation in 1981 been open to ....-inspection and has been inspected by members of the fishing industry."

The claim differs from the apparatus shown in exhibit CEJS 1 by the substitution of a rigid beam for a line.

The evidence also establishes the public use, before the priority date of the claim, of a rigid beam apparatus suspended by surface flotation.

Paragraph 4 of Mr. Hickman's declaration states that:

"the next stage in the program involved the design and use of experimental rigs suspended beneath surface buoys. Now produced and shown to me marked "NJH 2" is a sketch of that experimental rig. One such rig was installed at each of the locations shown below on the dates shown below: Grassy Point, 29 April, 1982; ... Clifton Springs, 23rd June, 1982."

Exhibit NJH 2 referred to in this extract shows 5 floating long-line buoys on a line. Mooring chains are attached to each end buoy. A timber beam is suspended below the water level by chains attached to the second, third and fourth buoys. If this entire apparatus was to be pulled underwater so that what were the surface floats became "fully submerged at a depth such that the float means is not subject to wave action on the surface on the water", then the apparatus would fall within the claim of the petty patent.

Other evidence shows that the attachment of culture substrates to fixed, sub-surface beams was also known before the priority date. Exhibit NJH 1 to Mr. Hickman's declaration shows an experimental mussel culture rig installed by Marine Science Laboratories at four locations in Port Phillip Bay during 1980. The exhibit shows mussel culture ropes suspended from a timber beam; the beam in turn is suspended underwater hy attachment to an existing fixed pile structure, presumably an existing navigational aid.

There is some evidence that "during the course of 1982 and before December 1982" (i.e. before the priority date of the claim) Mr. Giddings, the inventor, discussed with Mr. Hickman "a proposal to pull a mussel farming surface flotation rig under water". There is however no evidence as to whether this proposal related to a rigid beam surface flotation rig (as used by Mr. Twickler and the Tasmanian Department of Sea Fisheries) or whether it related to a long-line surface flotation system (as described as known prior art in the petty patent specification).

There is evidence that Mr. Twickler developed a steel-frame sub- surface flotation rig between August and December 1979. This rig utilised a rectangular steel frame designed to be supported by sub-surface flotation with the frame in a horizontal plane and anchored by heavy blocks or anchors. Mr. Twickler states in his declaration that:

"By either December 1979 or January 1980 I had ( ... the steel framed rig ...) floating on drums at the end of Beaumaris Pier ready for installation off shore. I intended to use it with either tram wheels or concrete blocks as anchors.

The main reason why the rig I have used since late 1978 and the newly designed steel framed rig were sub-surface flotation rigs was that the Ports & Harbours Authority would not, I believed, allow the use of a large number of objects on the surface of Port Phillip Bay. Accordingly the use of a surface flotation system would, I believed, be viewed with disfavour by the Ports & Harbours Authority.

In approximately January 1980 I was informed that the application for a permit I had made in August 1979 (for a surface flotation system) was likely to be approved within the next few weeks. In those circumstances I did not proceed to install or use the steel frame rig shown in sketch "CJT 2". Instead I began to use a rope longline system similar to that shown in exhibit "CJT 2 but using surface rather than sub-surface floatation."

I quote these paragraphs in full first to show that although the rig shown in CJT 2 was designed with a view to using it in a sub-surface flotation rig, it was never used for that purpose. Secondly, these paragraphs contain some evidence that there was a belief in the fishing industry that the Ports & Harbours Authority would not approve the use of rigs which constituted a hazard to surface navigation. Evidence to the same effect appears in Mr. Hickman's declaration, where he states:

"At that time (i.e. mid 1980) I recall discussing with other officers of Marine Science Laboratories and perhaps also with Messrs. Twickler and McLean an alternative of using piles driven into the sea floor to which horizontal ropes would be attached with floats to keep the ropes buoyant and from which vertical ropes or droppers would be attached for collection of mussel spat and growth of mussels. I recall that this system was not seriously pursued because of the difficulties fixed structures of this kind involved with the Ports and Harbours Authority."

The final piece of relating art is a sub-surface flotation rig utilising lengths of hooked steel rods from which culture substrates were suspended. This is described in Mr. Twickler's declaration, where it is stated that:

"During 1982 I designed a further rig system in which the rope longline was replaced by lengths of hooked steel rods adapted to be linked together. The rods consisted of 1 inch steel bar and were in relatively short lengths to facilitate handling. ... I believe that this system was used experimentally by me prior to December 1982. Subsequently on 3rd December 1982 delivery was made of 100 rod lengths which I had had made up for use as a result of the experimental rigs which had been used. Because at that time I had the benefit of a permit from Ports & Harbours Authority which enabled surface flotation to be employed I did not use the linked rod design as part of a sub-surface flotation rig. It was however suitable for that purpose if it was desired so to use it. ... I recall discussing the linked rod design (depicted in exhibit "CJT 3") with another fisherman, Mick Cook, during 1982 and before December 1983. Cook is, I believe, now using a linked rod sub-surface flotation rig."

Although Mr. Twickler states that this system was "used experimentally", he also states that he "did not use the linked rod design as part of a sub-surface flotation rig" I take this as meaning that Mr. Twickler experimented with the use of linked rods, but that he did not use those rods as part of a sub-surface flotation rig. Accordingly the quoted passages do not establish use of a sub-surface rig with rigid beams.

My findings on the evidence, as set out above, can be summarised as follows. At the priority date of the claim the use of sub-surface flotation to support fishing gear underwater but off the bottom was part of common general knowledge of the commercial fishing industry. In that industry, or at least in some parts of that industry subject to the jurisdiction of the Victorian Ports & Harbours Authority, there was a belief that the use of a surface flotation or fixed structures to support fishing gear would not be approved. Long-line rigs utilising sub-surface flotation had been published as had rigid beam rigs utilising surface flotation. Although Mr. Twickler's rectangular steel framed rig was designed for sub-surface flotation and was available for public inspection, it was never used. Mr. Twickler's sub-surface flotation hooked rod design had not been used, but had been published to Mick Cook.

I find that the invention defined in the claim lacks novelty in the light of the known sub-surface flotation long-line rig. The invention as defined in that claim differs from the long-line flotation rig only in the substitution of a rigid beam for the long line. This difference does not contribute to the working of the claimed invention and, in my opinion, the merit of the claimed invention is the same as that of the long-line rig. I am also of the opinion that the invention defined in the claim would be obvious to the addressee of the specification in the light of the surface flotation rigid beam rig. That addressee is the commercial fisherman engaged in the scallop or mussel culture industries, and equipped with tie knowledge that sub-surface flotation can be used to suspend fishing gear underwater. The addressee would also be aware that a surface flotation rig, or indeed any substantial object floating on the surface, constitutes a hazard to surface navigation and could, conversely, be damaged by surface vessels. I conclude that it would be obvious to the addressee to attempt to overcome these disadvantages of the surface flotation rigid beam rig by adopting that rig to sub-surface flotation.

I am satisfied of the existence of the grounds mentioned in paragraphs 100(l)(e) and (g) of the patents Act, and do not believe that those grounds could be overcome by amendment. If there was an effective application for extension of the term of the petty patent before me, I would refuse to grant that extension. Mr. McCaw however submitted that the application for extension of term was lodged out of time and is thus ineffective. This submission goes to the wording of sub-sections 6BB(l) and (2) of the Patents Act and sub-section 35(1) of the Acts Interpretation Act. However, if the submission is correct and there is no effective application for extension of term before me and I cannot either grant or refuse to grant an extension of term.

This is because the powers to grant or to refuse to grant an extension of term conferred by sub-sections 68B(5) and (6) are conditional on sub-section 688(4) which requires that "an application for an extension of the term" has been made. In these circumstances, as I have decided that I would not extend the term of the petty patent if I had power to do so, I need not proceed to a conclusion on Mr. McCaw's submission.

I award the informants their costs on the application for extension of the time under section 160 and on the present proceedings.

(A.J. EVANS)

Supervising Examiner of Patents

10 OCT 1985