Pacvac Pty Ltd. v Gavin Adams

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 719709 in the name of Pacvac Pty Ltd.

Title: Vacuum Cleaner

Action: Opposition under S59 by Gavin Adams.

Decision: Issued .
Abstract

This invention relates to vacuum cleaners and the efficient collection of dust matter whilst maintaining air flow to the motor and thereby preventing the motor from overheating.
The opponent pursued the grounds of lack of novelty, lack of inventive step, and lack of fair basis.
The claimed invention was found novel over the submitted prior art. A feature considered essential to preventing the motor from overheating was not present in the submitted art.
The claimed vacuum cleaner was found to lack an inventive step in the light of a known back-pack type vacuum cleaner assembly and what is considered common general knowledge in the art prior to the priority date of the claimed invention.
The claimed invention was found to lack fair basis on the matter described. In particular there was no real and reasonably clear disclosure of the functional requirements of various integers, namely "the snorkel effect" as described in the specification.
As the defects in the opposed specification could be overcome by suitable amendments the applicant was granted sixty days from the date of this decision to file suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 719709 by Pacvac Pty Ltd and opposition thereto by Gavin Adams under s59 of the Patents Act 1990.

BACKGROUND

Patent application 86165/98 was filed under the Patent Cooperation Treaty as International Patent Application PCT/AU98/00598 in the name of Mario Pezzaniti on 29 July 1998 and claimed priority from an Australian Provisional PO 8309 filed 31 July 1997.
The application was subsequently amended to proceed in the name of Fantovac Industries Pty Ltd on 6 December 1999 and was advertised as accepted application 719709 on 18 May 2000.
Gavin Adams (Adams) filed a notice of opposition to patent application 719709 on 18 August 2000. The statement of grounds was served 20 November 2000 and subsequently amended on 19 July 2002. After various extensions of time allowed to both parties, evidence in support was completed 19 June 2001, evidence in answer was completed 19 January 2002 and finally, evidence in reply completed 9 May 2002.
A Request to Amend a Patent Request or any Other Filed Documents under s104 was filed 4 June 2002 requesting the application proceed in the name of Pacvac Pty Ltd, (Pacvac) and subsequently allowed on 12 June 2002.
The substantive opposition was set down for a hearing in Perth on 25 September 2002. Mr Matthew English, assisted by Mr Paul Fong both of Watermark represented the opponent (Adams), whilst Mr Kelvin Lord, assisted by Mr Barry Newman, both of Lord & Company represented the applicant (Pacvac) at the hearing.
GROUNDS OF OPPOSITION
The grounds for opposition alleged by the opponent were that the claimed invention lack novelty and inventiveness, and that the claims also lack fair basis.
The opponent further alleged the nominated person was not entitled to the grant of a patent for the invention.
THE SPECIFICATION
The present invention relates to a vacuum cleaner.
In the art of the invention, vacuum cleaners typically include a vacuum motor and an air pervious bag for collecting material such as dust and other small particulate material. The motor induces an air flow through the bag and entrained material is collected in the bag. With known vacuum cleaners the degree of air flow generated through the bag is exemplary when the cleaner is new.
It is stated that the problem with these known vacuum cleaners is that it is often the case that the cleaners are not maintained properly, leading to a build up of accumulated matter in the bag, thereby resulting in reduced air flow and reduced efficiency of collection of particulate material.
In a backpack type vacuum cleaner the orientation, in use, of the cleaner is such that the vacuum motor locates below a collection chamber, the chamber being provided with an air pervious collection bag. The motor creates a suction force, which acts to draw air from an inlet located above the bag through the bag and the motor to an outlet located below the motor.
A similar problem occurs with this configuration. That is, as the bag fills with dust or particulate material, holes in the bag become blocked and the resistance to airflow is increased. As a result, over a period of time, the more the cleaner is used, the lower the suction force becomes and the lower the cooling effect of the air on the motor, resulting in inefficient cleaning and motor overheating problems due to poor air circulation.
The present invention seeks to alleviate the above mentioned problems by the inclusion of a perforated spacing means (hereinafter referred to as a "spacer") essentially between the bag and the motor. The bag is draped about the spacer, hence the bag has a larger operative surface area through which air can pass than a normal bag in a conventional vacuum cleaner configuration.
The specification states the present invention may be applied to any vacuum cleaner but it is particularly envisaged for use with backpack type vacuum cleaners.
In the embodiment provided, the spacer is described as a substantially bell shaped member. However the specification also envisages other shapes and describes the spacer as having any shape which enables it to perform adequately in accordance with the present invention, and gives examples such as frusto-conical, parabolic, or hemispherical shaped spacers.
The specification concludes with eight claims, including a single independent claim. These claims are as follows:
1.        A vacuum cleaner apparatus characterised in that the apparatus includes a vacuum motor, an air pervious membrane and an air pervious material collection bag, the vacuum motor being arranged to draw air downwardly in turn through the said bag, the said membrane and the motor so that, in use, the said bag retains material entrained in the air, wherein there is also provided a perforated spacing means extending, in use, upwardly of the said membrane, the said spacing means being located intermediate the said membrane and the said bag for orienting the said bag such that a first portion of a lower surface of the said bag contiguous with said spacing means locates adjacent the said membrane and a second portion of the lower surface of the bag contiguous with said spacing means is spaced from the said membrane and extends, in use, upwardly of the said membrane.
2.        A vacuum cleaner a claimed in claim 1, characterised in that the spacing means includes a perforated first end portion and an open perforated second end portion, the first end portion being located in use adjacent an air inlet of the vacuum cleaner, and the second end portion being located, in use, adjacent the said membrane.
3.        A vacuum cleaner as claimed in claim 2, characterised in that the spacing means is a substantially bell shaped member including an elongate substantially frusto-conical portion intermediate the first end portion and the second end portion, the second end portion being substantially frusto-conical shaped and being of enlarged internal diameter relative to the internal diameter of the frusto-conical portion.
4.        A vacuum cleaner as claimed in claim 2, characterised in that the spacing means is a substantially frusto-conical shaped member, a substantially parabolical shaped member or a substantially hemispherical shaped member.
5.        A vacuum cleaner as claimed in any one of the preceding claims, characterised by further including a housing having a first casing defining a collection chamber, and a second casing defining an intermediate chamber and an outlet chamber, a platform being provided at a junction of the intermediate chamber and the outlet chamber and the vacuum motor being accommodated on the platform.
6.        A vacuum cleaner a claimed in claim 5, characterised in that the second casing includes an upper perforated wall and the spacing means locates on the upper perforated wall extending upwardly thereof.
7.        A vacuum cleaner as claimed in claim 6, characterised in that the spacing means is located such that an internal portion of the spacing means aligns with an air flow generated by the vacuum motor.
8.        A vacuum cleaner as claimed in any one of the preceding claims, characterised in that the bag is formed of nylon material.
EVIDENCE
Evidence-in-support
The evidence-in-support consists of the following statutory declarations and accompanying exhibits:
·     Michael Chin QUAN, patent attorney with Watermark Patent & Trademark Attorneys, with exhibits MCQ-1 to MCQ-12.
·     Peter STEELE, Manager - Technical Support, for Hitachi Australia Limited. Mr Steele states he has 16 years experience working in service and spare parts for Hitachi Australia. Also included are exhibits PS-1 and PS-2.
·     Diane ROWE, Managing Director of Proteam Clean Pty Ltd, a company which provides contract cleaning for commercial premises. Ms Rowe states that she has 15 years commercial cleaning industry experience.
·     Tony FANTO, a person claiming to have 40 years industry experience in Western Australia owning and operating cleaning businesses and cleaning equipment manufacturing companies.
Evidence-in-answer
The evidence-in-answer comprises the following declarations and exhibits:
·     Mario PEZZANITI, inventor of the present invention and director of two companies: Fantovac Industries Pty Ltd and Pac Vac Pty Ltd, both trading under the name PacVac. Also included are exhibits MP-1 to MP-5.
·     Keith Anthony SARGENT, licensed electrician operating under the business name Cleaning Equipment Services. Mr Sergent claims to have specialised in repairs of cleaning equipment since 1975, repairing mainly commercial vacuum cleaners. Exhibits KAS-1 and KAS-2 are annexed hereto.
·     Maria BARIC, manager of a contract cleaning company trading as Golden West Corporate Total Management Pty Ltd. Ms Baric claims to have worked in the contract cleaning industry in Perth for approximately 12 years. Also provided are exhibits MB-1 and MB-2.
·     John Raymond BATTERHAM, director of a company trading as JR's Cleaning. Mr Batterham claims to have been a director of his own contract cleaning companiy for approximately 20 years.
Evidence-in-reply
The evidence-in-reply comprises a single declaration filed by the Opponent, Gavin Adams, along with exhibit GA-1.
DECISION
The grounds pursued at the hearing were novelty, inventive step and section 40/fair basis. I note that the ground of the nominated person not being entitled to the grant of a patent for the invention was not pursued at the hearing, nor was any evidence filed in respect of this matter. As a result, I shall not consider this issue in my decision. I shall now address each of the remaining alleged grounds in turn.
Before considering the issues relating to each of the respective grounds, I shall first determine which features of the claimed invention I consider essential.
Essential Features
In establishing the essential features I am directed by the following passage in Catnic Components v Hill &Smith [1982] RPC 183 :
"A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential."
Initially concentrating on claim 1, in my opinion this particular claim may be broken down into the following essential features on applying Catnic Components (supra):
A vacuum cleaner apparatus including:
1)   A vacuum motor;

2)   an air pervious membrane;

3)   an air pervious material collection bag;

4)   the vacuum motor arranged to draw air downwardly in turn through said bag then the membrane and then the motor, such that the said bag retains material entrained in the air;

5)   a perforated spacing means;
a)the spacing means extending upwardly of the said membrane;
b)the spacing means being located intermediate said membrane and the said bag in order to orientate the said bag such that:

i)    a first portion of the lower surface of the said bag being contiguous with said spacing means, locates adjacent the said membrane, and;

ii)   a second portion of the lower surface of the bag being contiguous with said spacing means, is spaced from said membrane, and extends upwardly of the said membrane.
In reaching this position, and having applied a plain meaning to the words provided, I place no restriction on the vacuum cleaner being limited to a backpack type vacuum cleaner per se. This appears to be both consistent with the description and the evidence provided by the inventor, Mr Pezzaniti in his declaration.
I also note that in giving the spacing means a plain meaning, there is no limitation on the shape of the spacer other than it be perforated. Clearly, for example, a toroidal shaped spacer then satisfies a spacer as claimed. As outlined previously, the specification makes reference to the spacer being substantially bell shaped and describes frusto-conical, parabolic, or hemispherical shaped spacers as being appropriate.
Downwardly drawn air, and the "snorkel effect"
At this point I think it is appropriate for me to address the issue of the air being drawn downwardly in turn, through the bag, the membrane and the motor. In doing so I will also address the so called "snorkel effect" referred to by both parties.
It was submitted by the opponent that:
"...In reviewing claim 1 it is not stated where the airflow enters through the spacing means so as to achieve the "snorkel effect", only that air be drawn downwardly through it. If an example of the "snorkel effect" can be shown whereby air is drawn downwardly through the spacing means but horizontally through the membrane and to the motor and still achieve the "snorkel effect" then we question
i.whether air moving downwardly through the membrane is essential;
ii.whether air moving downwardly through the motor is essential;…"
Before turning to the specification for guidance in determining whether or not the downwardly drawn air explicitly (or even implicitly) materially affects the working of the invention I wish to clarify what is meant by the "snorkel effect". In this regard, Mr Lord directed my attention to the Pezzaniti declaration for clarification of the "snorkel effect".
Of particular relevance are paragraphs 11 -14 of that declaration. Mr Pezzaniti states that as he observed his daughter playing with a diver's snorkel, he realised that the overheating problem in the vacuum cleaners could be overcome by the use of a device which functioned as a snorkel type device in the vacuum cleaner, in other words, provided a path for air to travel. He further states that the present application achieves a "snorkel effect" by:
"…having a spacer means which locates a first portion of a lower surface of a bag adjacent an air pervious membrane and locates a second portion of the lower surface of the bag upwardly of, and spaced from, the membrane. The spacing means thus functions as a snorkel by drawing air from the top of the vacuum cleaner, (my emphasis). The vacuum cleaner uses the effect that the dirt and dust are pulled to the bottom of the vacuum cleaner by a combination of the downdraft air stream and gravity. The snorkel provides a path for air to reach the engine even when the bag is nearly completely full."
As there were no submissions to the contrary, I will assume that the term "snorkel effect" used by both parties in their submissions is meant to refer to the above phenomenon.
Turning to the specification as a whole, the most relevant part describing the function of the vacuum cleaner read as follows:
"The vacuum motor is energised and thus induces an airflow downwardly in turn through the bag, the spacer means, the base portion and the motor. Material entrained in the air flow is collected in the bag around the central portion thereof in the annular portion. Since the central portion locates, in use, generally above the collection material and adjacent the inlet, even when the bag is full a substantial air flow is still allowed to pass through the central portion such that a relatively high suction force is maintained and cooling of the motor is maintained…a majority of dust or particulate material which falls on the bag on and adjacent the central portion falls to the annular portion by virtue of the suction force generated by the vacuum motor and under gravity."
In light of the disclosures made in the description, I believe the working of the invention is materially effected by the downward flow of air through the raised bag portion, through the membrane and through the motor. The downwardly drawn air and the effects of gravity cause the particulate material to be drawn to the base of the bag about the raised portion of the bag, and substantially away from the membrane covering the motor air inlet. This allows, (even when the bag is quite full of material) a substantial amount air to be drawn through the central portion of the bag (raised by the spacer), through the spacer and membrane, to the motor, for a cooling effect on the motor to occur.
In contrast, there is no evidence to suggest why the air being drawn downwardly in turn through the bag does not materially effect the working of the invention.
Consequently, in my opinion having the air drawn downwardly, in turn, through the bag, the membrane and the motor appears to materially effect the working of the invention and as such must be considered as an essential feature of the claimed invention.
Novelty
The basic test for anticipation is the " reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. What ever is essential to the invention must be read out of or gleaned from the prior publications."
In relation to novelty, whilst the statement of grounds and particulars raised three patent specifications as anticipating at least claim 1, Mr English focussed his submissions on exhibit MCQ-2, that being US patent 3 653 189 in the name of Miyake et al., published 4 April 1972.
US 3 653 189
This specification discloses a barrel type vacuum cleaner. Mr English in his submissions specifically directed me to Figure 3, which he alleges anticipates present claim 1. This figure depicts a two part barrel housing containing a substantially conically shaped filter screen, a cloth filter therein, a conically shaped spacer, and a motor all aligned along a horizontal longitudinal axis of the vacuum cleaner. The cloth filter surrounds the spacer and is affixed thereto at its apex. In addition, there is shown an air inlet marginally above said horizontal axis.

I note US '189 does not clearly disclose an air pervious membrane as well as a collection bag. Indeed, there is no disclosure of a membrane located such that air is drawn in turn through the bag, through the membrane then through the motor. If, hypothetically, one were to equate the filter to a collection bag (and this point in itself is debatable) then the only possible membrane could be the item referred to as the filter screen, which is located distally of the motor. There is no possible configuration disclosed which shows a spacing means intermediate of a bag and a membrane. Furthermore, following Catnic Components (supra) I believe in the first instance the membrane is an essential feature of the invention. It materially effects the working of the invention as a whole, primarily by further preventing any remaining particulate matter (inadvertently sucked through the bag) from being sucked in to the motor's air inlet, thereby reducing air flow and causing overheating. There has also been no evidence presented to suggest otherwise.
The submissions made by Mr English questioning whether air moving downwardly through the membrane is essential, or whether the spacing means extending upwardly of the membrane is essential, appear to be moot as there is in fact no disclosure of a membrane per se.
Consequently, on applying the reverse infringement test, the claim satisfies this test as not each and every one of the essential integers can be found. Hence I consider claim 1 to be novel.
The vacuum cleaner exhibits
Throughout the hearing, reference was made to the following physical evidence, which I shall summarise briefly, and again in more detail where required:
·     Exhibit MCQ-7: a Sanyo vacuum cleaner, Model No SC53AB, a barrel type vacuum cleaner;
·     Exhibit MCQ-8: a device within vacuum cleaner MCQ-7, which I would describe as a rectangular frame, having attached thereto a piece of cloth to loosely span the frame, the centre of the cloth having attached thereto a plastic cage, frusto-conical in shape;
·     Exhibit MCQ-9: a Hitachi vacuum cleaner, Model No. CV 2600., a barrel type vacuum cleaner;
·     Exhibit MCQ-10: a device within vacuum cleaner MCQ-9, which I would describe as a rectangular frame, again having attached thereto a piece of cloth to loosely span the frame, the centre of the cloth having attached thereto a plastic cage, parallelepiped in shape, the cage is also attached to the rectangular frame;
·     Exhibit MCQ-11: a device within the vacuum cleaner of MCQ-12. This device is commonly known as "a spaghetti strainer", and will be referred to throughout as such. The strainer is made of plastic and I would describe it as being frusto-elliptic paraboloid in shape.
·     Exhibit MCQ-12: a back pack type vacuum cleaner.
In essence, the opponent is alleging prior use. In such a case, paragraph (a)(ii) in the definition of the prior art base in Schedule 1 of the Patents requires that the relevant information has been made publicly available through doing an act in the patent area.
Adequate proof is essential where prior use is relied on. In order to be invalidating under the Patents Act, prior use must be "informative" in the sense that the necessary information (disclosing all of the essential features) is made available to the public. See Hope v Heggies Bulkhaul Ltd (1996) 34 IPR 584
The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. states:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."
MCQ-9 and Exhibits PS-1, PS-2:
(The Hitachi vacuum cleaner CV 2600, corresponding Service Manual, and an invoice of sales therefore).
At the hearing, the issue of want of novelty in the light of this vacuum cleaner was raised. The Steele declaration states the service manual of Exhibit PS-1 has printed upon it the year 1986 (in fact June 1986) indicating the year of publication, and that Mr Steele understands the manual was distributed in Australia within that year, or at least by 1987, to employees of Hitachi, as well as licensed repairers and distributors. Furthermore the invoice for the sale of such cleaners is dated October 1996.
Mr Lord asserted that Mr Steele could not be considered to be a skilled addressee as he was more of a salesman than a technical person. I am inclined to disagree with this assertion, based on the declaration provided by Mr Steele. In this he declares he has been an employee of Hitachi Australia Limited for 16 years, and worked and the area of service and spare parts, and his currently title is Manager -Technical Support area. He states this experience has given him a detailed knowledge of the features and componentry of all vacuum cleaners sold by Hitachi. I note that no contrary evidence has been provided to suggest he is primarily salesman. Consequently, I believe Mr Steele's evidence to be credible and be should be weighted accordingly.
Whilst the vacuum cleaner of the exhibit prima facie appears to have the bag, spacer and membrane of the claimed invention, to my mind the only way in which this vacuum cleaner anticipates the invention as presently claimed is by the vacuum cleaner operating in the vertical mode. (In saying this I recognise the applicant made submissions questioning whether the dust collecting means was actually a bag rather than a filter). That is to say, in use, the barrel should stand upright rather than lie in the horizontal. This is in order to meet the claimed requirement of the air being drawn downwardly in turn through the bag, spacer, and membrane to the motor's air inlet.
I note that MCQ-9 shows two distinct flat lugs at the motor end of the cleaner, which enables the cleaner to stand in the upright position. However from the present material in front of me, there is nothing to suggest this is for anything other than storage purposes, rather than operating in narrow areas such as stairwells and the like. As there is in this instance, insufficient evidence to suggest operation in the vertical mode, I cannot say the invention as claimed is not novel on applying the principles of General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 that is: the prior publication must contain "clear and unmistakable directions" to do what the patentee claims to have invented. Such a direction has not been established.
MCQ-11 and MCQ-12
Mr English alleged that claims 1, 2, and 4 to 7 lack novelty, and are consequently invalid in the light of a spaghetti strainer (MCQ-11), being used in a conventional back pack type vacuum cleaner such as MCQ-12, as was known (per the Rowe and Fanto declarations) prior to the present priority date.
In this instance, on reviewing the declarations presented, the prior public use of the back-pack vacuum cleaner of MCQ-12 containing a spaghetti strainer is not in dispute, nor was it contested at the hearing. This is primarily due to the applicant's own declaration corroborating the Fanto declaration stating that whilst managing the company Power Vac Pty Ltd, Mr Fanto sold approximately 5000 back-pack vacuum cleaners containing a spaghetti strainer therein from 1989 to 1996. That is, prior to the priority date of the present invention, Mr Pezzaniti confirms that he was aware of Mr Fanto selling such units at the time. Consequently I accept that such a back-pack was made publicly available prior to the present priority date.
However, what was strongly disputed by the applicant was the reason for the introduction of the spaghetti strainer and its ability to provide a snorkel effect. It was submitted that the exhibited back-pack cleaner is one where the motor is partially within the collection chamber, rather than external to it. It was then submitted that such a cleaner had a propensity to have the bag drawn into the motor. Hence, the applicant submitted the primary reason for Mr Fanto introducing the spaghetti strainer was to act as a guard to prevent the bag being sucked into the motor and the bag being subsequently damaged.
In determining whether or not the pack-pack vacuum cleaner of MCQ-12 anticipates the claimed invention, I observe that the cleaner, whilst appearing to have all other features of the claimed invention, again does not have an air pervious membrane as required by the claim. Therefore, for reasons similar to those outlined earlier, the prior use of back-pack vacuum cleaner MCQ-12 with the spaghetti strainer is not considered "informative" in the sense that the necessary information (disclosing all of the essential features) is not available to the public, following Hope (supra).
Inventive Step
The assertion of invalidity states that the invention claimed was obvious to one skilled in the art as of the priority date of the application, in the light of the common general knowledge in the field.
Section 7(2) provides a definition of inventive step for the purposes of the Patents Act.
"(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
[The prior art base is defined in Schedule 1 of the Act.]
It is clear that inventive step is a matter that is presumed, unless it is demonstrated that the invention is obvious. The assessment of obviousness can be made against the common general knowledge alone, or the common general knowledge together with a document (or act) of the type covered by section 7(3). Section 7(3) documents must satisfy several requirements: the document must be publicly available inside or outside Australia (see the definition of "prior art base"); and the document would have reasonably been expected to have been ascertained, understood and regarded as relevant.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (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."
In reviewing the present specification it is apparent that it is often the case that vacuum cleaners are not maintained properly. This in turn, leads to a build up of accumulated matter in the bag, thereby resulting in reduced air flow and reduced efficiency of collection of particulate material, and ultimately the motor overheating. Consequently it appears the problem to be solved is to create a vacuum cleaner, which despite having accumulated matter, still efficiently collects material and does not overheat the motor.
Common general knowledge
The opponent submitted that the invention lacked an inventive step in the light of common general knowledge alone, and that in particular US 3 653 189 forms part of this common general knowledge. However, the opponent failed to provide evidence to establish that people skilled in the art would refer to this particular foreign patent specification as common general knowledge amongst the many specifications relating to the art, prior to the priority date of the claimed invention. I am also guided by General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457, which states:
"…it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge.."
Consequently I do not accept that US 3 653 189 forms part of the common general knowledge in Australia.

In addition on the evidence presented, I do not believe that one can state unequivocally that the “various matters” raised in this instance are well known, and readily form part of the common general knowledge. For example, upon reading various conflicting declarations, I do not consider that a bag and a filter are interchangeable terms in the art, nor that pull-along vacuum cleaners function precisely the same as back pack cleaners having the same inlet bag and motor arrangement. There is insufficient evidence to show these matters for example, are accepted and "generally regarded as a good basis for further action" by the bulk of those engaged in the art in Australia, as would be required for them to be considered common general knowledge. (See General Tire & Rubber Company v Firestone Tyre and Rubber Co Ltd (1972) RPC 457.
In determining whether the claimed invention lacks an inventive step based on common general knowledge alone I refer to Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253, at page 293.
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. The opening of a safe is easy when the combination has been already provided."
As a result I believe that it is improper to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. One must also establish that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem. In this instance, whilst I accept that a bag, spacer, and membrane prior to a motor may be pieces of common general knowledge, I do not believe sufficient evidence has been presented to establish that such a selection, as claimed, is obvious without some inventive faculty being required.
US 3 653 189
Mr English also submitted that claims 1 to 8 lack an inventive step and would have been obvious to a person skilled in the art upon reading US '189 in combination with the common general knowledge as it existed before the priority date of these claims.
It was then submitted that as the patent was issued by the US Patent Office on 4 April 1972 it could have readily been ascertained and understood as relevant. It was further submitted that there was evidence (Fanto declaration) to show that at least one person had recognised the value of the spacing means in a pull-along vacuum cleaner and adapted this to a back-pack vacuum cleaner, and that both these types of cleaners are common general knowledge. Mr English consequently submitted that US 3 653 189 met the test of relevance under Section 7(3).
Mr English continued by submitting that not only were the structural features as disclosed in the claims known in the prior art, but the invention as described (but not claimed) was also disclosed 25 years prior to the priority date, rendering the application invalid through want of an inventive step.
Mr Lord countered with the following relevant submissions:

(a)    Firstly, the opponents had not provided specific evidence of publication in Australia.
(b)   Secondly, pull-along vacuum cleaners were irrelevant to the present invention as they don't have the same type of problems the back pack vacuum cleaners do. In particular, in US '189 the airflow is generally parallel to the ground and not a downdraught arrangement.
(c)    Thirdly, the nub of the invention is the combination of the spacing means and the bag. As there is no vacuum cleaner bag present given the plain meaning of “bag”, the citation is irrelevant.
(d)   Finally the only prior art which is relevant is that relating to downdraught cleaners, such as the Fanto vacuum cleaner (MCQ-12), as there is no possibility of a snorkel effect with horizontal pull along cleaners.

Following the well established principles set out by the problem/solution approach, I consider the person skilled in the art to be a designer/manufacturer of vacuum cleaners. I agree that in the context of the problem, this document given that it was issued in April 1972, could reasonably have been expected to be ascertained, and understood by such a skilled person. I also believe it would be considered as relevant. The document itself discusses problems associated with early clogging and obstructed air flow through a cleaner and the resultant reduced air suction capabilities.
In saying this I do not agree with the applicant’s submission that only prior art relating to downdraught cleaners is relevant. In particular the claimed invention makes no mention of a snorkel effect allegedly only afforded by such cleaners. It is possible that if horizontal pull-along cleaners were to be stood on their end whilst operational, that air may be drawn in a downwardly manner. Whether this vertical mode of operation is considered common general knowledge or not, is another issue.
Setting aside the issue of whether or not the cloth filter of the citation is indeed a bag or not (as disputed by the applicant), I am again drawn to the fact there is no membrane present such that a spacing means is located intermediate said membrane and a “bag”. (As outlined earlier in my comments in respect of novelty.)
I do not believe that the person skilled in the art, would in the context of the problem, consider it obvious to include such a membrane in this instance. The citation itself appears to teach away from including such a feature. It specifically discusses the disadvantages of spaced two-stage filtering systems, (which is essentially what is provided by a bag, spacer, and membrane system). US'189 lists as a primary object the provision of a two–stage filtering system entirely enclosed in a single detachable dust collecting case without such spacing, thereby avoiding the difficulties associated with removing collected dust from a second filtering member (eg a membrane).

In the light of this, even if I were to readily accept that the filter is a bag, and that it is common general knowledge to use a pull-along vacuum cleaner in the vertical mode, I cannot say with certainty that the present invention lacks an inventive step over US patent 3 653 189 when combined with common general knowledge. Therefore I find the invention of claim one does not lack an inventive step in the light of US patent 3 653 189.

MCQ-11 and MCQ-12 (The back pack cleaner including a spaghetti strainer therein)

Before addressing the issue of whether or not a person skilled in the art would have taken, as a matter of routine, whatever steps might have led from the prior art to the invention, as per Wellcome Foundation (supra), I shall first take stock of what information may actually be gleaned from the use of this device.
Clearly the device includes an air pervious collection bag, a spacer (the strainer) and motor, all arranged such that the air is drawn downwardly in turn through the bag and the spacer before reaching the motor's air inlet. Similarly the spacing means orients the bag such that a portion of the bag is spaced upwards towards the air inlet and away from the motor. There is no membrane present.
As noted earlier, one of the issues of contention revolved around the reason for the placement of the spaghetti strainer in the back pack cleaner. Mr Fanto in his declaration asserts he started using a strainer after becoming aware of similar shaped devices in Japanese cleaners placed between the filter and the motor. He continues by stating that by using a strainer, he was able to increase the efficiency of the cleaner by having a greater surface area in which to catch dust. He states a spaghetti strainer was specifically selected for its ability to fit within the collection chamber of existing back pack vacuum cleaners.
I note Mr Adams, in his declaration, also states the primary purpose of the spaghetti strainer was as a spacer to increase the surface area of the bag. Furthermore Mr Adams (in his declaration) states that the problem of the vacuum cleaner bag being drawn into the motor was solved by the use of a gauze or mesh over the inlet orifices of the motor. He also states the use of such an air permeable layer, as well as protecting the bag from being drawn in, also provided a secondary or final filter for air prior to entering the motor.
Mr Lord submitted, (and I concur), that the opponent is not in a position to determine Mr Fanto's motivation for including a strainer in back pack cleaners. Mr Adams himself states he has only operated the Powervac business for five years, without providing any indication of his knowledge of the art prior to this. However, Mr Fanto states he first included the strainers in 1989.
Obviously, as outlined earlier, Mr Pezanitti believes the strainer was introduced as a means for preventing the bag from being drawn into the motor and thereby damaged. He also recognised there was a bonus effect of increasing the surface area of the bag. However he claims the spaghetti strainer does not provide the snorkel effect.
Whilst Mr Pezanitti states he was aware of Mr Fanto's activities in the industry at the time, like Mr Adams, there is nothing to suggest he knew of Mr Fanto's reasons for including a spaghetti strainer in the back pack vacuum cleaners he was manufacturing.
As there is no evidence to suggest otherwise, (beyond mere speculation) I accept that Mr Fanto is a person skilled in the art and that he primarily included the spaghetti strainer to increase the efficiency of the cleaner. That is, maintaining good air flow through the system despite the accumulation of particulate matter in the bag. He has thereby arrived at the inventive solution to the problem faced in the present invention as a matter of course by copying what was done in the Japanese cleaners. I note that even if his motivation for including the strainer were different, the effect of including the strainer would still arrive at the invention albeit through different steps to that of the inventor, and the Wellcome Foundation (supra) test remains satisfied.
Furthermore there is nothing before me to suggest the inclusion of the strainer does not provide a snorkel effect as it clearly falls within the scope of a spacer as defined and in fact satisfies one of the preferred shapes of spacer claimed in claim 4, (I refer to the discussion on fair basis below).
Concatenating all of this information, I believe the essential question that needs to be answered is would the inclusion of a membrane intermediate the spacer and motor be common general knowledge to the skilled person? In my view the inclusion of an intermediate membrane is something readily within the common knowledge of a skilled person. I note for example, exhibits PS-1, MCQ-1, MCQ-3 all show such a membrane intermediate a spacer and motor, (prior to the motor air inlet) acting as a secondary filter to particulate material. Further, whilst according little weight to Mr Adams statement in regards to the reasons for including the strainer, as noted previously, it is apparent he knew of the use of a gauze or mesh over the inlet orifices of the motor and its effect as a secondary filter.
Whilst these examples are not definitive in setting out what is common general knowledge in the art, I am satisfied that the inclusion of a membrane between a motor and spacing means was common general knowledge to the person skilled in the art at the priority date of the claimed invention.
Consequently I believe the invention defined in claim one lacks an inventive step in the light of exhibits MCQ-11, MCQ-12 and what is considered common general knowledge to the skilled person.
The dependent claims
In addressing the dependent claims, I find that the features of spacing means of claim 2 can be directly read onto the spaghetti strainer. Claim 3 further defines a bell shaped spacer, which I believe is a variation well within the common general knowledge of the skilled person. Again the features claim 4 can be directly read onto the strainer. Consequently I believe these additional claims defining variation to the spacer lack an inventive step.
Claim 5 relates to constructional aspects of a back-pack type cleaner, in particular motor location and is considered a mere workshop variation on the exhibited back pack cleaner. Claim 6 defines a casing having perforations on the upper surface rather than circumferential as shown in the exhibit. Again I consider this to be a mere workshop variation. Similarly for claim 7, I find the alignment of some internal portion of the spacer with an air flow generated is common general knowledge. Finally claim 8 defines the bag as being nylon, which again, I find a work shop variation and common general knowledge to a skilled person in the art.
As a result I do not believe the dependent claims further contribute an inventive step to the invention of claim.
Section 40 - Fair Basis
The general principle underlying fair basis is that, in order to be fairly based, there must have been a "real and reasonably clear disclosure of its subject matter in the specification" - see CCOM v Jeijing Pty Ltd, 28 IPR 481 and (1994) APIC 91-079, and Sartas No 1Pty Ltd v Koukourou & Partners and Nicola Leonardis, 30 IPR 479 and (1995) AIPC 91-121. The question of whether there has been a "real and reasonably clear disclosure" must be approached through the eyes of the person skilled in the art and bearing in mind the common general knowledge.
Mr English argued that Atlantis Corporation Pty Ltd v Peter Schindler [1997] FCA 1105 was particularly relevant to the matter at hand, and directed me to the following passage:
"In my opinion, a perusal of the body of the specification leads plainly to the conclusion that the invention concerns the provision of adequate drainage by artificial means with particular application in the area of landscape gardening. The invention is a particular kind of drainage cell and no other structure with application in the field of drainage and no other field.
What the claims assert is not a particular kind of drainage cell but a structure, which has certain defined features which may or may not be adapted for the purpose of drainage. The invention covers any article which incorporates the claimed structure."
He then submitted that if one were to substitute into the above recitation the words "snorkel effect" for " a particular kind of drainage cell" and then substitute "spacing means" for the word "structure" we would arrive at a similar situation to the present case.
The counter position offered by Mr Lord is that the claimed combination is fairly based on figure 1, the other drawings, and the description. Also, the nub of the invention is a combination of the bag and the spacing means, which is present in claim 1. He continued by stating the Atlantis case (supra) included a claim to some sort of plastic structure without reference at all to its intended field of use, although the specification was directed to a drainage arrangement, so the claim was far wider than the disclosure. The present claim is consistent with the disclosure, as we are only concerned with vacuum cleaners, which operate in a "downdraft" mode. The claim is not even trying to cover horizontal pull along, or barrel type cleaners.
It is clear from a fair reading of the specification as a whole that the invention is directed to a vacuum cleaner having means for preventing engine overheating and providing efficient suction even when the bag is relatively full. Although the exact terminology is not explicitly stated in the description, the inventive solution provided is the so called "snorkel effect" as referred to earlier in my decision. The function of the snorkel effect is however described throughout the description. For example:
"…the central portion locates, in use, generally above the collection material and adjacent the inlet, even when the bag is full a substantial air flow is still allowed to pass through the central portion such that a relatively high suction force is maintained and cooling of the motor is maintained (my emphasis)…a majority of dust or particulate material which falls on the bag on and adjacent the central portion falls to the annular portion by virtue of the suction force generated by the vacuum motor and under gravity."
That is to say the spacer is of a construction such that even when the vacuum cleaner contains a substantial amount of accumulated material, substantially unimpeded air flow is achieved through the central portion of the bag. The spacer is primarily described as being a substantially bell shaped member, thereby allowing the central portion of the bag to be adjacent the air inlet as described.
I believe the present independent claim does not reflect this functional requirement, and includes within its scope spacers, which merely support the bag and do not meet the requirements of the invention. I also note the applicant on numerous occasions made submissions stating that the spaghetti strainer (exhibit MCQ 11) does not provide the snorkel effect of the present invention. However the spaghetti strainer clearly falls within the scope of the term "a spacer" used in claim 1 and furthermore clearly falls within the scope of the shapes of spacers defined in claim 4.
Consequently I find the invention defined in claims 1 and 4 not fairly based on the matter described in the specification, as they include material beyond the scope of that described matter.
CONCLUSION
The invention as presently claimed in the independent claim is novel over the prior art citations as there is no clear disclosure of an essential feature of the claimed invention, namely a membrane located between a perforated spacing means and a vacuum motor, in these documents. Hence the conditions of the reverse infringement have not been met.
The invention is not considered to involve an inventive step over the exhibited back-pack vacuum cleaner incorporating a spaghetti strainer as was known in the art, when combined with common general knowledge prior to the priority date claimed. The dependent claims as presently set out are considered to be obvious to the person skilled in the art

100. Claims 1 and 4 are not fairly based on the matter described, as the term "spacer" in these claims is not limited to the functional requirements needed of the spacer in order to perform the invention. (i.e assist in providing a "snorkel effect").
101. However despite these faults I believe there is sufficient material in the specification to readily overcome the above defects, and as such I grant the applicant sixty days from the date of this decision to file suitable amendments.
COSTS
102. In matters before the Commissioner costs usually follow the event. I see no reason why I should not follow the usual practice, therefore accordingly I award costs against the applicant, Pacvac Pty Ltd.
Delegate of the Commissioner of Patents
Lars Koch
Patent attorneys for the applicant : Lord & Company, Perth
Patent attorneys for the opponent : Watermark Patent & Trademark Attorneys, Perth

[2003] APO 5

12 February 2003