Orenco Systems, Inc v Everhard Industries Pty Ltd

[1999] APO 68

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 692032 in the name of Orenco Systems, Inc

Title:          Septic Tank Effluent Filtering Method

Action: Opposition under section 59 of the Patents Act 1990 by Everhard Industries Pty Ltd

Decision:          Issued            .

Abstract

The claims are fairly based on the specification as filed, at least insofar as they are disclosed in WO 96/17669.  The claims therefore do not lack novelty over WO 96/17669.

The claims are fairly based on the specification as amended and define the described invention.  Therefore the specification complies with section 40.

Subject to any appeal against this decision, the application is in a form suitable to proceed to sealing.

Costs awarded against the opponent, Everhard Industries Pty Ltd.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 692032 by Orenco Systems, Inc and Opposition under Section 59 of the Patents Act 1990 by Everhard Industries Pty Ltd

BACKGROUND

Orenco Systems, Inc (Orenco) filed patent application 692032 (43666/96) on 20 November 1995.  The application was filed under the provisions of the Patent Co-operation Treaty and was allocated international application number PCT/US95/15065 and international publication number WO 96/17669.  The international publication date is 13 June 1996.

Amendments to the complete specification were filed during examination of the application on 29 August 1996 and 2 April 1998.  The application was advertised accepted on 28 May 1998.

Everhard Industries Pty Ltd (Everhard) filed an opposition to the grant of the patent.  The opponent served evidence in support of the opposition on 26 February 1999.  The applicant did not serve evidence in answer.

I heard the parties in Canberra on 27 July 1999. Mr Adrian Ryan of counsel, assisted by Mr Raymond Hind, patent attorney of Davies Collison Cave, represented the applicant.  Ms Katrina Howard of counsel, assisted by Mr Peter Fisher, patent attorney of Fisher Adams Kelly, represented the opponent.

GROUNDS AND PARTICULARS OF OPPOSITION

The grounds and particulars of the opposition are as follows:

“1.0 GROUND 1 - Section 59(b)

That the invention, so far as claimed in any one of claims 1-16, is not novel when compared with the prior art base as it existed before the priority date of the claims.

1.1 PARTICULARS

1.1.1 The claimed invention is disclosed in International Patent Application No. WO 96/17669 which was made publicly available on 13 June 1996 and claims 1-16 have priority dates which are after 13 June 1996.

2.0 GROUND 2 Section 59(c)

That the specification filed in respect of the complete application does not end with claims that are clear and succinct or are claims that are fairly based on the matter described in the specification, or are claims that define the invention.

2.1 PARTICULARS

2.1.1 Claims 1-16 are not fairly based on the complete patent specification as filed as the essential feature of a “plurality of apertures” is not included in the claims.  The “plurality of apertures” allow a horizontal layer of liquid to pass into the housing and then through a filter.  This is the only way of performing the invention as described in the complete specification as filed and the priority document.”

EVIDENCE

The evidence in support of the opposition comprises a declaration dated 24 February 1999 by Selwyn Davis.  Mr Davis is currently the permanent governing director and a shareholder of Everhard Industries Pty Limited.

Mr Davis states that he was concerned that a septic tank filter Everhard was intending to produce was close to that described in Australian patent application 43666/96.  He was advised by his patent attorneys that his device did not infringe the claims of the specification as filed as his product did not have a plurality of apertures in the housing and that there was no basis in the specification to make a change which could cover a simple open bottom in the housing.  His patent attorneys maintained a watch on the application.  After the application proceeded to acceptance, Mr Davis’ attorneys advised that Everhard’s product could potentially infringe the claims as the accepted claims were not limited to a plurality of apertures in the housing.

Mr Davis also makes certain observations on application 692032.  I will refer to these were necessary in my decision.

THE SPECIFICATION AS FILED

The specification commences with a discussion of the technical field and background art.  The invention relates to a method of treating wastewater and more particularly to a method of filtering solids from the effluent of a wastewater collection container.  In the wastewater container the solids distribute into an upper horizontal scum layer and a lower horizontal sludge layer with a relatively clear horizontal liquid layer therebetween.  Liquid from the relatively clear layer is intermittently discharged while the solids remain to be decomposed by the action of bacteria.  However, some solids are discharged because gas is produced as decomposition of the solids proceeds.  Bubbles of gas attach to some solids, which causes these solids to migrate from the sludge layer to the scum layer.  The gas-lifted solids return to the sludge layer when the gas bubbles are released.  These migrating solids may become entrained in the effluent discharged from the container, degrading the quality of the effluent and increasing the extent to which the effluent requires secondary treatment.  Prior art attempts to overcome this problem have resulted in various screens and filters.  According to the specification these screens are subject to clogging or collapse.

The specification then sets out consistory clauses corresponding to claims 1 and 7.  Following the consistory clauses, the specification gives a brief description of the drawings then describes a number of embodiments of the invention.  Each of these embodiments describes a housing that is “essentially impervious to the passage of liquid to its interior except through an encircling series of apertures 30 in the vertical wall of the housing” (page 4 lines 16 to 19).  The apertures are located so that liquid flows from the relatively clear horizontal layer through the apertures and then through a screen filter contained within the housing.  The specification states at page 5 line 32:

“Thus, in operation, solids are excluded from the effluent, first by the apertures 30 in the vertical wall of the housing 12 and then by the filtering surfaces of the tubular filter enclosures 44.  The large surface area provided by the multiple filter enclosures 44 efficiently excludes from the effluent any solids which may enter the housing 12.”

Similarly, page 6 line 35 states;

“Solids are excluded from the liquid effluent by the apertures 30 and the mesh filtering surfaces.”

The specification as filed included 11 claims.  The independent claims were as follows:

1. A method of treating wastewater, comprising:
(a) flowing wastewater having a concentration of waste solids into a wastewater collection container and allowing said solids to distribute into a lower horizontal sludge layer and an upper horizontal scum layer with a horizontal layer of liquid therebetween;
(b) immersing a mesh screen filter, having a mesh screen surface area, in said wastewater within said container;
(c) surrounding said filter with a housing within said container, said housing having an interior surface area less than said mesh screen surface area, and exposing the interior surface area of said housing to said horizontal layer of liquid through a plurality of apertures in said housing;
(d) flowing liquid from said horizontal layer through said apertures into said housing and thereafter flowing said liquid from one side of said filter to an opposite side thereof through said mesh surface area; and
(e) thereafter flowing said liquid through a liquid effluent outlet of said container.

7. A method of treating wastewater, comprising:
(a) flowing wastewater having a concentration of waste solids into a wastewater collection container and allowing said solids to distribute into a lower horizontal sludge layer and an upper horizontal scum layer with a horizontal layer of liquid therebetween;
(b) immersing a filter, having multiple filtering surfaces forming multiple enclosures, in said wastewater within said container;
(c) surrounding said filter with a housing within said container, said housing having an interior surface, and exposing the interior surface area of said housing to said horizontal layer of liquid through a plurality of apertures in said housing;
(d) flowing liquid from said horizontal layer through said apertures in said housing and thereafter flowing said liquid from one side of said filter to an opposite side thereof in parallel through said multiple filtering surfaces; and
(e) thereafter flowing said liquid to a liquid effluent outlet.

I have highlighted the references to the apertures in the claims.

THE SPECIFICATION AS ACCEPTED

The technical field and background art discussed in the specification as accepted is the same as in the specification as filed, apart from the deletion of some headings.  The consistory clauses appearing in the specification as filed have been replaced with new consistory clauses corresponding to the amended independent claims 1, 8 and 13.

Certain headings have been deleted from the specification and the preamble to the preferred embodiments has been altered.  The following paragraph has been added at page 8 lines 14 to 17:

“In the embodiments described the multiple filtering enclosures are particularly resistant to clogging and thus to collapse, and require cleaning only as often as the container requires pumping to remove the accumulated sludge.”

This appears to have been added to link the preferred embodiments back to the deficiencies in the prior art and the problem to be overcome.

The only other alteration to the description is the addition of a paragraph referring to the word “comprises”, added to the end of the description.

The specification as accepted includes 18 claims.  The independent claims are as follows:

1. Apparatus for treating wastewater, comprising:
(a) a wastewater collection container for containing wastewater having a concentration of waste solids distributed into a lower horizontal sludge layer and an upper horizontal scum layer with a horizontal layer of liquid therebetween;
(b) a filter, having a mesh screen filter, within said container so that in use the filter is immersed in said wastewater;
(c) a housing within said container surrounding said filter, said housing having an interior surface area; and
(d) means permitting liquid to flow from said horizontal layer into said housing, and thereafter to flow from one side of said filter to an opposite side thereof through said mesh surface area, and thereafter to flow through a liquid effluent outlet of said container;
(e) the totality of the interior surface area of said housing being less than the totality of said mesh screen surface area.

8. A method of treating wastewater, comprising:
(a) flowing wastewater having a concentration of waste solids into a wastewater collection container and allowing said solids to distribute into a lower horizontal sludge layer and an upper horizontal scum layer with a horizontal layer of liquid therebetween;
(b) providing a filter having multiple filtering surfaces in said wastewater within said container, said filter being surrounded by a housing within said container, said housing having an interior surface which is exposed to said horizontal layer of liquid, and said multiple filtering surfaces having a total surface area wherein said housing has a total interior surface area less than said total surface area of said multiple filtering surfaces;
(c) flowing liquid from said horizontal layer through into said housing and thereafter flowing said liquid from one side of said filter to an opposite side thereof in parallel through said multiple filtering surfaces;
(d) thereafter flowing said liquid to a liquid effluent outlet; wherein
(e) said multiple filtering surfaces form multiple enclosures and, during step (c0, said liquid flows in parallel through said multiple enclosures with the liquid within each of said enclosures being separated from the liquid within the others of said enclosures by means of said filtering surfaces.

13. Apparatus for treating wastewater in a wastewater collection container having a concentration of waste solids distributed into a lower horizontal sludge layer and an upper horizontal scum layer with a horizontal layer of liquid therebetween, said apparatus comprising:
(a) a filter, having a mesh screen surface area, adapted to fit within said container so that in use the filter is immersed in said wastewater;
(b) a housing adapted to fit within said container surrounding said filter, said housing having an interior surface area; and
(c) means for permitting liquid to flow from said horizontal layer into said housing, and thereafter to flow from one side of said filter to an opposite side thereof through said mesh screen surface area, and thereafter to flow through a liquid effluent outlet of said container;
(e) the totality of the interior surface area of said housing being less than the totality of said mesh screen surface area.

DECISION

The opponent’s objection to the grant of a patent on the application is based on the broadening of the claims between filing and acceptance of the application.  The opponent says that this means that the claims have a later priority date than the date on which the specification was originally filed.  The claims as originally filed required a plurality of apertures through which liquid flowed into a housing.  Following amendment, the claims only require means for permitting liquid to flow into the housing.  According to the opponent, the later priority date results in the claims lacking novelty in light of WO 96/17669, which is equivalent to the opposed specification as filed.

Priority dates, generally, are determined under section 43 of the Patents Act 1990 and the Patent Regulations. Section 114 of the Act and regulation 3.14 govern the priority date of certain amended claims.

“SECT 114 Priority date of certain amended claims
(1) Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.

(2) Objection cannot be taken to a patent request or complete specification, and a patent is not invalid, on the ground that the invention, so far as claimed in a claim mentioned in subsection (1), does not involve an inventive step having regard to any publication or use of the invention after its disclosure in the complete specification as filed.”

“REG 3.14 Priority dates: certain amended claims
If subsection 114 (1) of the Act ("priority date of certain amended claims") applies to a claim of a specification, the priority date of the claim is: …

(b) … — the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114 (1) of the Act.”

The phrase “in substance disclosed” is used not only in section 114, but also in section 102.  Section 102(1) provides that an amendment to a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not “in substance disclosed” in the specification as filed.  Although the allowability of the amendments is not a ground of the current opposition, case law on section 102 is of relevance to the meaning of “in substance disclosed”.

The courts have treated the test for “in substance disclosed” as being the same as the test to determine whether a complete specification is “fairly based on matter disclosed” in a provisional specification.  Ms Howard directed me to a number of decided cases on fair basis, namely Re Application by AB Volvo (1983) 1 IPR 554; Re Application by Rosen (1989) 17 IPR 33; Hoechst Aktiengesellschaft v American Home Products Corporation (1990) 21 IPR 121; Dearborn Chemical Co Ltd v Rohm and Haas Co (1995) 31 IPR 121; AC Components Pty Ltd v Mizzi (1997) 40 IPR 598; and Merck & Co, Inc v Sankyo Co Ltd (1992) 23 IPR 415.

In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353, the Full Court left open the question of whether the test for “in substance disclosed” was the same as the test for fair basis of a complete specification upon a provisional specification (at pages 354-355 and 362). However, the Court applied the fair basis test as enunciated in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 281 and in Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 at 40. That is, whether there has been a “real and reasonably clear disclosure”. See also Gibbs J in Hoffman-La Roche & Co AG v Commissioner of Patents (1971) 123 CLR 529 at 538-539.

The Courts have also applied the Mond Nickel Rules as set out by Lloyd-Jacob J in Re Mond Nickel Co Ltd’s Application [1956] RPC 189 at 194. The Mond Nickel Rules were adopted by Gibbs J in Hoffman-La Roche & Co AG v Commissioner of Patents, above, at 538-539.

The opponent has said that the claims have been broadened from a device having a “plurality of apertures” through which liquid flows into a housing, to any means for flowing liquid into the housing.  The opponent says that as a result of this broadening, the claims are not fairly based on the specification as filed.  The opponent says that therefore the claims should be allocated a priority date according to regulation 3.14.

Mr Davis, the only expert to provide evidence in this opposition, states (in relation to the specification as filed):

“By reviewing the description and drawings, in my opinion, the phrase “a plurality of apertures to allow liquid to flow from a horizontal layer into the housing” has the meaning that “apertures are located around the side wall of the housing between the upper and lower ends so that wastewater from the middle of the septic tank can enter the housing.”

I do not agree with this construction.  The claims as originally filed did not require the apertures to be located around the side wall of the housing.  Neither did the invention as broadly described, for example in the consistory statements at pages 2 and 3.  The invention as originally described and claimed only required that the interior surface of the housing is exposed to the horizontal layer of liquid through a plurality of apertures.  Although the preferred embodiments show the apertures in the side of the housing, this is not a requirement of the broadest form of the invention.  It is clear that the apertures could be located elsewhere, so long as the interior surface of the housing is exposed to the horizontal layer of liquid.

In relation to the claims as accepted, Mr Davis states:

“In my opinion, the term “means” can include one or more holes located in the base or side of the housing, one or more horizontal or vertical slots located in the housing or a mesh wall or foraminous wall.”

Ms Howard pointed out that Orenco has chosen not to put in any expert evidence.  She said that this inferred that such evidence would not have assisted the applicant in demonstrating that the amended claims were “in substance disclosed” in the original specification.  Ms Howard referred me to Dearborn v Rohm and Haas (supra), where I said at page 124:

“As there is no evidence as to how a skilled addressee would interpret the specification, I have relied on the ordinary meaning of the language used in the specification in conjunction with the general rules of construction as set out in Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385. If the applicant believes that there is something implied in the specification which was not obvious from the ordinary language used, it would have been in their own best interests to file expert evidence to that effect.”

In the present case the invention is not technically complex.  There was no suggestion by the applicant, or the opponent for that matter, that there was any reason to depart from the ordinary meaning of the language used in the specification.  In particular, there was no suggestion by the parties that the term “apertures” had any special meaning in the context of the specification.  “Aperture” has been variously relevantly defined as:

A hole, slit, crack, gap or other opening - The Macquarie Dictionary

An opening; a gap, cleft, chasm, or hole - The Shorter Oxford English Dictionary

An opening or open space; hole - Webster’s Dictionary

All of the “means” noted by Mr Davis appear to be arrangements that include apertures consistent with these definitions, although not necessarily a plurality of apertures as originally defined in the claims.  It is arguable whether some of the means described by Mr Davis are “in substance disclosed” in the specification as filed. The amendment to broaden the claims to include all “means” for flowing liquid into the housing may well result in some of the “means” not being entitled to an earlier priority date.  However, it does not follow that the claims lack novelty in light of WO 96/17669.

The opponent’s argument in effect is that the amended claims are disclosed in the originally filed specification for the purposes of assessing novelty, but are not disclosed for the purposes of fair basis as they have been broadened beyond what was described.  Although the tests for fair basis and novelty are not the same, I have difficulty with the logic of this argument.

A similar argument was put to me in Firebelt Pty Limited v MacDonald Johnston Engineering P/L [1994] APO 67 (25 November 1994) in considering the fair basis of a petty patent on a provisional application. In that case, I said that either the claims were fairly based on the earlier application, in which case the claims were entitled to the earlier priority date, or if there was such a discernible shift away from the provisional application such that the claims were defining a different invention, there would be no lack of novelty.

One line of argument put forward by Ms Howard was that the amendments did not satisfy the Mond Nickel rules, as the invention defined in the amended claims was not broadly described in the specification as filed, because the invention broadly described was different.  If that is the case, it is difficult to see how the claims could lack novelty in light of the earlier disclosure.

The opponent has also argued that the “plurality of apertures” was an essential feature of the invention in the specification as filed.  Ms Howard referred me to a number of decisions where it has been found that an amendment to a claim to remove a feature that is essential to the invention described in the specification can be construed as claiming of matter not in substance disclosed.  In particular, I was referred to the Australian Patent Office Manual of Practice and Procedure – National, paragraph 22.8.2.3 and the decisions International Playtex Corporation’s Application, (1969) RPC 362 and Garrod’s Application, (1968) RPC 314, as well as Re AB Volvo (supra), Re Rosen(supra) and Dearborn (supra).

In my view the amendments do not result in an essential feature being omitted from the claims.  As stated by Mr Davis, the “means” defined in the amended claims include a number of holes or slots, that is, a plurality of apertures.  Rather than omitting a feature, the amendment results in a broadening of the claims to also include other means of flowing liquid into the housing.

Mr Davis states in his declaration that the changes to the description and claims change how the invention can work.  In my opinion, Mr Davis appears to be overstating the extent of the changes.  The claims still require that the filter is surrounded by a housing.  Liquid must still enter the housing from the horizontal layer of liquid between the sludge layer and scum layer.  All that has changed is that the means for flowing liquid into the housing has been defined in broader terms.

Section 43(3) of the Act deals with the priority date of a claim that defines more than one form of the invention.

SECT 43 Priority dates
(1) Each claim of a specification must have a priority date.

(2) The priority date of a claim is:

(a) the date of filing of the specification; or
(b) where the regulations provide for the determination of a different date as the priority date--the date determined under the regulations.

(3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.

(4) The priority date of a claim of a specification may be different from the priority date of any other claim of the specification.

Mr Davis has identified a number of “forms” that the means for flowing liquid into the housing can take.  In particular the ““means” can include one or more holes located in the base or side of the housing, one or more horizontal or vertical slots located in the housing or a mesh wall or foraminous wall.”  Any form of means that includes a plurality of apertures (such as a number of holes or slots) is clearly fairly based on the specification as filed.  As I stated above, it is arguable whether there is a real and reasonably clear disclosure of all “means” of flowing liquid into the housing.  However if these particular arrangements are not disclosed in the application as filed, there can be no lack of novelty over that document.

I find that there is no lack of novelty based on patent application WO 96/17669.

Section 40

The opponent argued that the claims did not satisfy section 40 because they were not fairly based on the description and that the claims did not define the invention.

Regarding fair basis, the opponent’s submissions were basically the same as those addressed above.  However, section 40 only requires that the claims be fairly based on the matter described in the specification.  There is no requirement under section 40 that the claims be fairly based on the specification as filed.  I note that the description was amended at the same time as the claims so that there is conformity between the description and the claims.  The description includes broad statements of the invention that are consistent with what has been claimed.  The description broadly sets out the invention, which includes means for flowing liquid into the housing.  The description then sets out a number of preferred embodiments of the invention.  In each of these preferred embodiments, the means for flowing liquid into the housing comprises a plurality of apertures located in the side of the housing.

Mr Ryan stated that the opponent is seeking to force the applicant to limit its claims to a particular embodiment of the invention.  Mr Ryan said that the Full court of the Federal Court rejected such an approach in Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 393 where Lockhart J said:

“It was submitted by counsel for the applicants that, assuming the claims are not limited to closures the centre main wall of which contains a fluted, corrugated or plated area, then the claims are invalid because … they are not fairly based on the essence of the invention described in the specification; …

As to the first of those submissions, in my opinion the claims do not go beyond the invention described in the body of the specification. A complete specification must fully describe the invention including the best method of performing it which is known to the applicant; s 40(1)(a) of the Patents Act 1952. Claims do not have to be limited to the preferred embodiment of the invention.”

I agree with Mr Ryan on this point.  In my view, the claims are fairly based on the matter described in the specification.

The opponent also argued that the plurality of apertures has a critical role to play in the method of the invention.  That is, to allow liquid only to pass from the horizontal layer (and not from the scum layer or the sludge layer) and to operate as a first course filter in the filtering system.  As I have noted above, the amended claims still require that liquid flows from the horizontal layer into the housing.

In relation to the apertures forming a first course filter, the specification describes in the preferred embodiments, that solids are excluded from the effluent, first by the apertures in the housing and then by the filtering surfaces.  The description states that the apertures may vary in size, and in a preferred embodiment the apertures are circular, having a 1-3/8 inch diameter.  It seems to me that the extent to which the apertures are effective as a first course filter will depend on the size of the apertures and possibly the location and shape and number of the apertures.  These are clearly only preferred features of the invention.  The specification also states that any solids entering the housing are excluded from the effluent by the filtering surfaces, and that the large area provided by the multiple filter enclosures efficiently excludes from the effluent any solids which may enter the housing.

Mr Ryan submitted that while the apertures may have a further beneficial effect of acting as a coarse filter, there is no requirement for the applicant to claim this further feature.  I agree.  While the preferred embodiments describe the apertures excluding some solids, there is no requirement for this in the broad description of the invention, either as amended or as originally filed.  There is nothing in the specification to say that this is an essential requirement of the invention.

I find that the claims are fairly based on the matter described in the invention, and that the specification ends in claims defining the invention.  The specification complies with section 40.

CONCLUSION

The claims are fairly based on the specification as filed, at least insofar as they are disclosed in WO 96/17669.  The claims therefore do not lack novelty over WO 96/17669.

The claims are fairly based on the specification as amended and define the described invention.  Therefore the specification complies with section 40.

Subject to any appeal against this decision, I find that the application is in a form suitable to proceed to sealing.

COSTS

The opponent has been unsuccessful in establishing its grounds of opposition.  I award costs against the opponent, Everhard Industries Pty Ltd.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Fisher Adams Kelly, Brisbane