Pprth Pty Limited v Richard James Larsen
[1999] APO 42
•9 July 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 686985 in the name of PPRTH Pty Limited
Title: Rotary Trash Harrow
Action: Application under Section 69 for an extension of term of the petty patent and a notice under Section 28 by Richard James Larsen.
Decision: Issued
Abstract
The claims were restricted to an arrangement in which only one helix was defined. The claims were clear and fairly based.
It was found that a person skilled in the art of rotary harrows would not interpret the disclosures of the prior art as including a spiked roller having only one helix. Further, there was no evidence to suggest that a person of ordinary skill in the art would understand that a single helix would solve the problems of clogging in prior art harrows. Furthermore, the earlier prior art harrows did not provide an enabling disclosure. It was considered that inventive ingenuity would be needed to arrive at the patentee’s invention from the prior art. Hence, the claims were found to be novel and to possess an inventive step.
The extension of term of the petty patent was granted.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 686985 by PPRTH PTY Limited for an extension of term under section 69 and Notice by Richard James Larsen under section 28.
BACKGROUND
Petty Patent Application 35293/97 was filed by Gary John Brown on 28 August 1997 as a divisional of AU 16348/97 filed 14 March 1997. This application claimed priority from Australian Provisional Applications PO0081 filed 27 May 1996 and PO01180 filed 23 July 1996. An associated application AU 27577/97 filed 23 May 1997 as the national phase application of PCT/AU97/00315 has as its priority document Australian Provisional PO0081 filed 27 May 1996. On 15 December, PPRTH Pty Ltd filed a request for the transfer of interest from Gary John Brown to the present patentee.
On 31 August 1998, Richard James Larsen filed a section 28(1) notice accompanied with statutory declarations. On 8 January 1999, PPRTH Pty Ltd filed an application for an extension of term under section 69. On 22 February, the patentee filed a declaration by Gary John Brown.
The matter was set down for a hearing in Canberra for 28 May 1999. Alf Tatlock, patent attorney of A. Tatlock & Associates, appeared on behalf of the patentee. Greg Turner, patent attorney from Spruson & Ferguson, appeared on behalf of the informant.
THE INVENTION
The invention relates to a rotary trash harrow. The specification states that:
“Known harrows have cultivating members, for example spikes, spring teeth or discs arranged to be drawn over the ground to pulverise and smooth the soil. When the ground has stubble, weeds or other trash on its surface, the cultivating members become clogged so that it is necessary to cease cultivation and clear away the trash.”
The purpose of the invention is to provide harrows that are less liable to clogging than those presently available.
As filed, the consistory statement and claim 1 related to a harrow in which the essential feature was the angle between the spiked roller and the direction of travel.
The claims as filed
“1. Harrows comprising a main beam, means for attaching the main beam to a prime mover to be drawn at right angles to the direction of travel, at least one sub-frame fixed to the main beam and extending rearwardly of the main beam, each sub-frame supporting a spiked roller at an angle of between 500 and 550 to the direction of travel.
2. Harrows according to claim 1 wherein there are two or more sub-frames, at least one sub-frame supporting a spiked roller at an angle of between 500 and 550 clockwise from the direction of travel, and at least one sub-frame supporting a spiked roller at an angle of between 500 and 550 anti-clockwise from the direction of travel.
3. Harrows according to either claim 1 or claim 2, wherein the spikes on each roller are fixed to the roller at locations lying on a helix around the surface of the roller and wherein the helices on all rollers run in the same direction.”
The specification was, at that stage, internally consistent.
With the amendments proposed during examination, the feature of the helical arrangement of spikes that was present in claim 3 became an essential feature of claim 1, and the feature of the angle between the spiked roller and the direction of travel became inessential as it was deleted from the main claim. The specification was amended to reflect the fact that the angle between the spiked roller and the direction of travel was a preferred feature. However, there was no consequential amendment, apart from a new consistory clause, to reflect the fact that the helical arrangement was essential.
Specification as accepted
The specification contains a consistory clause drafted in the same terms as claim 1. The specification states that:
(a) “The preferred angle between each roller and the direction of travel lies between 500 and 550, preferably 530.”
(b) “The spikes on each roller are preferably located on a helical line around the surface of the roller with the helices on all rollers running in the same direction. The angle of such a helix to the axis of the roller is between 500 and 550, preferably 530. [underlining mine]
(c) “The spikes are preferably located so that the angle between the axis of the spike and the axis of the roller is between 500 and 550 and is most preferably 530.”
(d) “It is also preferred that the angles: between the roller and the direction of travel; and between the axis of the spike and the axis of the roller, are chosen such that the axes of the spikes are substantially parallel to the direction of travel when the spikes at the trailing edge of the roller pass through a horizontal plane.”
In the description of the preferred embodiment, the specification states:
“Spikes 20 are fixed to the outer surface of the roller 19 at locations lying on a helix. The helices on all the rollers run in the same direction. The angle of the helix to the axis of the roller is 530. Each spike protrudes from the roller such that its axis is at an angle of 530 to the axis of the roller.”
Other embodiments of the invention were described but they related to other features of the invention that were not claimed. Two sheets of drawings accompanied the description. In figure 2, a helical arrangement of spikes is clearly shown.
The claims at acceptance
“1. Harrows comprising a main beam, means for attaching the main beam to a prime mover to be drawn at right angles to the direction of travel, at least one sub-frame fixed to the main beam and extending rearwardly of the main beam, each sub-frame supporting a spiked roller at an angle to the direction of travel, the spikes on each roller are fixed to the roller at locations lying on a helix around the surface of the roller.
2. Harrows according to claim 1 wherein there are two or more sub-frames, at least one sub-frame supporting a spiked roller at an angle of between 500 and 550 clockwise from the direction of travel, and at least one sub-frame supporting a spiked roller at an angle of between 500 and 550 anti-clockwise from the direction of travel.
3. Harrows according to either claim 1 or claim 2, wherein the helices on all rollers run in the same direction.”
In referring to the use of the harrow of the invention, the specification states that:
“In use, as the harrows are drawn across the ground the rollers 19 rotate as a result of engaging with the ground. Trash caught up in the spikes is pushed laterally towards the outer edges of the area traversed."
Prima facie, the helical arrangement of spikes on the roller must be considered an essential feature. However, in stating this, I note that it is not entirely clear from the ‘in-use’ statement, what combination of features gives rise to the benefit of the movement of trash and hence the prevention of clogging of the spikes. As originally drafted, the implication from the consistory statement was that the angle between the spiked roller and the direction of travel was responsible for the movement of trash. And, therefore it could be argued that the feature of the helical arrangement of spikes is an inessential feature because it does not materially affect the way the invention works. However, this implication can be rebutted. In this case, there is nothing in the specification to suggest that the feature of the helical arrangement of spikes could not intrinsically assist in the performance of the object of the invention and it seems reasonable for it to do so. Therefore, the implication is rebutted.
This situation can be factually distinguished from the case of Ryan v Lum 14 IPR 513 at page 512, where Young J. held that the ‘essential’ feature of the claim was not “of great significance”.
“Neither in the specification nor anywhere else is it claimed that it is the holes themselves which are important in the process. Indeed, the fact that the specification is so general about the number and types of holes that are needed negates to my mind the view that the holes are of great significance to this invention."
In my view, the helical arrangement of spikes is a feature of “great significance” because it, prima facie, appears to be relevant to the fulfilment of the object of the invention. I note that Mr Tatlock, when responding to the first adverse report of the examiner, stated that the helix was “critical to the invention”, thereby implying its essentiality.
Therefore, I am of the view that the helical arrangement of spikes on the outer surface of the roller as defined in claim 1 is an essential feature of the claimed invention.
SECTION 28(1) NOTICE
In the notice, Richard James Larsen asserted that:
“(a) the patentee was not entitled to be granted the Petty Patent; and
(b) the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b).”
The matter of entitlement was not pursued at the hearing.
THE EVIDENCE
Evidence filed in support of his section 28(1) notice is as follows:
Declaration filed by Rex Bril accompanied with exhibit RB-1. Exhibit RB-1 is a recent photograph of a harrow purchased from Ard Parts [Points] on 26 December 1991.
Declaration filed by James Larsen accompanied with exhibit JL-1. Exhibit JL-1 is an extract from a Rural Research Report published in February 1996 entitled “Harrows and Press Wheels”.
Declaration filed by Richard James Larsen accompanied with exhibits RJL-1 to RJL-4. Exhibit RJL-1 is a sale docket dated 30 April 1996 for 10 large modular rolling harrows. The sale was subsequently cancelled. Exhibit RJL-2 is a photograph of one of the harrows taken on 30 April 1996. Exhibit RJL-3 is an invoice dated 5 July 1996 for a sale of a light rotary harrow and exhibit RJL-4 is a photograph of a harrow of “exactly the same specifications” to that sold.
Declaration filed by Lyall Kenneth Todd accompanied with exhibits LTK-1 to LTK-3. Exhibit LTK-1 is a photograph of a rotary harrow sold on 8 September 1992. Exhibit LTK-2 is a copy of the invoice supporting that sale. Exhibit LTK-3 is a lodgement receipt for a provisional, which Mr Todd filed on 20 June 1991.
Declaration filed by Kimberley James Thompson accompanied with exhibits KTJ-1 to KTJ-2. Exhibits KTJ-1 and KTJ-2 are photographs of a rotary harrow purchased on 19 March 1993 from Ard Points.
Declaration filed by Geoffrey James Whillans accompanied with exhibits GJW-1 to GJW-2. Exhibits GJW-1 and GJW-2 are photographs of a rotary harrow purchased from Ard Points on 1 October 1991.
The patentee filed a declaration by Gary John Brown accompanied with exhibits GJB-1 to GJB-3. Exhibit GJB-1 is a videotape that illustrated the roller of the invention and the K-Line harrow roller of the prior art. Exhibits GJB-2 and GJB-3 are promotional materials, which have become recently available from K-line and AgMaster of Western Australia.
SECTION 40
Mr Turner submitted that claim 1 lacked clarity because it fails to clarify whether “the surface of the roller” referred to the end surface of the roller or the longitudinal peripheral surface of the roller. Mr Tatlock submitted that roller harrows are well known and a person skilled in the art would realise that the term “the surface” referred to the longitudinal peripheral surface. I agree with Mr Tatlock.
Mr Turner stated that the claim refers to “a spiked roller” and then refers to “the spikes”. Hence, Mr Turner suggested that the claim includes a construction in which the harrow is provided with 2 spikes. In reply, Mr Tatlock stated that a harrow possesses a multitude of spikes and that a roller having only two spikes would not be called a harrow. I agree with Mr Tatlock.
Mr Turner stated that the expression “the spikes on each roller are fixed to the roller at locations lying on a helix around the surface of the roller” would encompass an arrangement in which the spikes were located on a plurality of helices and an arrangement in which not all of the spikes lay on a helix.
This is an important point. Mr Turner emphasised that the claim does not state that all of the spikes lie on a single helix. He again emphasised that Mr Brown in his declaration agreed that “taken literally”, the K-line harrow illustrated spikes located on more than one helix. Mr Turner pointed out that claims should be read literally. In response, Mr Tatlock stated that the words in the claim were clear and if reference were made to the description, this fact would be apparent.
I note that expressions used by Mr Brown in his videotape and in his declaration cannot be found in the specification. In the videotape, Mr Brown referred to the spikes as forming a “continuous spiral”. In his declaration, he referred to the arrangement as similar to a screw thread. Further statements in his declaration refer to a “single helix” with the spikes being located on this helix.
While I agree that there is no overt statement in the claims that define a single helix per roller, it is my opinion this can be inferred from the words of the claim. I came to this conclusion because the words in the claim interrelate “the spikes” with “the roller” and with “a helix”.
However, even if I am incorrect in my assessment of the claims per se, when I review the description, this lack of clarity is resolved. In figure 2 of the drawings, the spikes are arranged in a helical pattern. The specification in a number of passages refers to a roller and a helix in the singular. I can find no teaching in the specification that multiple helices are intended. I can find no teaching in the specification that some spikes need not lay on a helix. From my reading of the drawings in the light of the specification, there does not appear to be any scope for more than one helix.
Sheppard J. summarises the rules for construing claims in Decor Corp v Dart Industries, 13 IPR 385:
“In summary, the relevant rules of construction which may be distilled from the authorities referred to are as follows:
(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
(2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
(3) Nevertheless, in approaching the task of construction, one must read the specification as a whole.
(4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
(6) A patent specification should be given a purposive construction rather than a purely literal one.
(7) In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
(8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in carrying out the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
(9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
(10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”
In summary, reading the claims in the context of the specification and giving them a purposive construction, the claims define an arrangement in which only one helix is defined.
I do not agree with Mr Turner’s other point about some of the spikes not being located a helix. Given the claims a purposive construction, all of the spikes follow a helical arrangement.
Therefore, the claims are clear and fairly based.
NOVELTY
The test for determining whether the invention lacks novelty is the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235 where Aiken J stated:
“The basis test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement”
From General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486.
“‘if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim.’ This circumstance demonstrates that the patentee’s claim has in fact been anticipated.”
The informant alleged that the information contained in the prior art harrows as documented in the declarations renders the claims as lacking novelty.
Rex Bril Declaration
In his declaration, Mr Bril asserted:
“Although the spikes on each of the rollers shown in Exhibit RB-1 appear to be aligned longitudinally, a helix could nevertheless be drawn around the roller to intersect with the spikes.”
Further, in his declaration Mr Bril asserted in relation to claim 3 that:
“Helices could be drawn around all of the rollers of the apparatus of Exhibit RB-1 to extend in the same direction and still pass through the spikes.”
Mr Turner in his submission stated:
“…each roller having a row of spikes. The rows of spikes are further arranged in groups, with each group lying on a circle around the periphery of the roller. Because the spikes are arranged at regular intervals both longitudinally and angularly about the roller, there must be a plurality of individual rows of spikes, with each row lying on a helix.”
Therefore, according to Mr Bril and Mr Turner, the harrow of this exhibit discloses a plurality of helical arranged spikes.
James Larsen Declaration
In this declaration, I was directed to pages 34 and 35 of the exhibit. Page 34 illustrated the Woolford prickle chains and the Pederick rotary harrow. Mr Turner asserted that the Pederick rotary harrow was similar to that shown in the Bril declaration.
Richard James Larsen Declaration
Mr Larsen is the proprietor of K-Line industries, a manufacturer of rotary harrows
In relation to the harrow as seen in Exhibit RJL-2, Mr Larsen stated:
“…The individual sub-fames to which the black harrows are rotatably mounted, each extend at an angle between 45 and 60 from the line of travel of the prime mover…
Each of the black rolling harrows included spikes extending from the longitudinal central axis of 530.
The spikes on each rolling harrow shown in Exhibit RJL-2 follow a helix around the harrow drum. The helix angle follows an angle of 420 as measured from the longitudinal axis of the rolling harrow.”
From these statements, Mr Turned concluded that the claims are not novel.
Mr Turner also asserted that the claims were not entitled to their earliest priority date of 27 May 1996. Consequently Mr Turner held that the sale of the harrow on 5 July 1996 (refer to Exhibits RJL-3 and RJL-4 rendered the claims not novel.
Mr Turner further asserted that the harrows (hereinafter referred to as K-Line harrows) illustrated in the photographs to his declaration are no different to those already put into evidence. That is, they disclose a plurality of individual rows of spikes in the form of a plurality of helices fixed about the surface of the roller.
Lyall Kenneth Todd Declaration
Mr Todd is the proprietor of Ard Points. The rotary harrow exhibited in LKT-1 is “no different from previous harrows.”
Kimberley James Thomson and Geoffrey James Whillians declarations
Again in these declarations, the harrows merely provide further examples of the same harrows previously referred to in the abovementioned declarations. All harrows were purchased from Ard Points.
Gary John Brown Declaration
Mr Turner referred to the Brown declaration and observed that Mr Brown considered that the invention lay with “an arrangement in which there is a single helix, and all the spikes lie on that helix.” Mr Turner also pointed out that Mr Brown accepted that the prior art harrows had numerous spikes arranged in rows about their periphery.
Summary of informant’s submissions
Mr Turner submitted that the declarations filed with the notice established that Mr Bril, Mr Kimberley and Mr Geoffrey Whillians (who were all in possession of Ard Points harrows), Mr Lyall Todd (who manufactured Ard Points harrows) and Mr Richard Larsen (who manufactured K-Line harrows) possessed harrows in which the spikes “were arranged in at least one spiral around the roller”.
Mr Turner emphasised the informant’s submissions as follows:
“An inspection of the various exhibits reveals that the spikes are arranged about the periphery. An inspection of the various exhibits reveals that the spikes are arranged in rows not only about the periphery but longitudinally of the roller. As the spikes are arranged at regular intervals about the periphery as well as regular longitudinal positions, they must fall on a helical path.”
On this basis, Mr Turner argued that the claims were not novel.
Patentee’s submissions
Gary John Brown was the only declarant on behalf of the patentee. Mr Brown is the inventor and director of PPRTH Pty Ltd. In his declaration Mr Brown explained that the harrow is provided with a spiked roller with the spikes acting as a “screw thread or an auger which has an Archimedean screw.”
It is this construction:
“which permits the harrow to clear itself of any build up of trash in the spike and provide a self cleaning arrangement which permits effective operation of the harrow.”
In relation to the prior art harrows, Mr Brown stated:
“The spikes, or even the U-shaped web between pairs of spikes are not fixed to the roller at locations lying on a helix around the surface of the roller.”
However, Mr Brown acknowledges that theoretical helices could be drawn around the roller of the prior art harrows.
“What I understand Mr Richard Larsen to say, is that any point on any cylindrical member could be on a helix and if a number of members are connected to a cylindrical member, than they could each be on a helix, although not necessarily the same helix.”
“Mr Larsen is no doubt correct if his statement is taken literally, but the claim actually states, “at locations lying on a helix”. This includes that there is a single helix and the spikes are fixed to the roller on this helix.”
And in relation to the Ard Points harrows, Mr Brown commented:
“ it would appear quite clear that they [the spikes] are not on a helix as defined in the claim, although it is possible to say, as has been said in the Declarations that any point can be on a helix, but this does not mean that any two or indeed any large number of points lie on a single helix, nor do they give the arrangement of operation of the construction claimed.”
In summary, the position of the patentee is that the claim defines a harrow having a single helix with the spikes lying on this helix and it is this construction which confers the benefit described. The patentee is also of the view that none of the prior art harrows, the disclosures of which were acknowledged at the hearing, confers the benefit described.
Conclusion
From general principles, the information detailed in the exhibits must be, for the purposes of "practical utility", equal to the present invention. There must be sufficient disclosure in the prior art harrows for the skilled addressee to recognise the invention and to put it into practice.
“Whatever, therefore is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication ... the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery and to carry the invention into practical use.” See Hill v Evans, (1862) 6 LT 90.
Lord Westbury in Hill v Evans (supra), elaborating on the issue of disclosure, commented that:
"The antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able to apply the discovery without the necessity for further experiments."
Although these quotes relate to documents, they apply equally to the prior art devices. Viewing the photographs and the videotape, I have difficulty in seeing a helix in the prior art harrows. It seems to me that a person skilled in the art would not describe the arrangement on the prior art as demonstrating helices. Furthermore, it seems to me that these devices would not function as a helix in use. Certainly, that is the observation made by Mr Brown.
I am not inclined to accept the evidence of the informant on this matter. Mr Tatlock pointed out that all of the declarations, by supposedly independent persons, used almost identical expressions when describing the prior art harrows. While I can accept the disclosure of the prior art harrows, I have difficulty in accepting the description of the harrows as disclosing to a person skilled in the art, a number of helical arranged spikes. This is contrary to any observation of the harrows. It does not require an eye of an expert to establish that the prior art harrows do not disclose helically arranged spikes. Although mathematically the prior art harrows may be described in terms of a number of helically arranged spikes, it is a very complex way of describing such a simple device.
As the Federal court stated in Nicola Leonardis v Sartas No 1 Ltd and Olympic General Products Pty Ltd (Trading as RMAX) [1996] 449 FCA 1 (13 June 1996):
“…. it would not be right to hold that a drawing alone could not provide fair basis for a particular integer of a claim. It is a matter of interpretation of the drawing. In principle, the problem for the Court is not different from the problem arising when words are examined in order to determine whether they provide fair basis for a particular integer of a claim. But, just as technical words or scientific concepts may require the assistance of experts to enlighten the understanding of the Court so as to put it in a position to determine such a question, so, in the case of the interpretation of a drawing, the Court may need assistance. There is no rigid rule, since whether guidance is required must always depend upon the particular issue and the particular drawing. But where a close analysis of drawings, or indeed of descriptions, in patent documents is called for, the Court may need the assistance of those with the appropriate technical expertise: C. Van der Lely N.V. v Bamfords Limited (1963) RPC 61 at 71(photographs); Vax Appliances Limited v Hoover plc 1991 FES 307 at 310 (videofilms); Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 542 (drawings and descriptions); Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Ltd (1991) 22 IPR 79 at 89 (drawings); CCOMPty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 284; The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Limited (1972) RPC 457 at 485.”
Again, the court stated:
“The question is not whether the drawings have the appearance of a revelation to a layman or to the Court, but what is their effect when viewed by the skilled person to whom they are addressed."
Although this was a case dealing with the interpretation of a drawing, it is equally applicable to the interpretation of photographs. In my opinion, the skilled person in the art of harrows would not interpret the disclosures as comprising only one helix having spikes affixed thereon.
I cannot see how a disclosure of spikes arranged longitudinally and circumferentially around a cylinder would lead to a skilled but non-inventive worker in the art to arrive at a solution of using spikes arranged on a single helix. There is no information that would lead me to conclude that the prior disclosures would lead the skilled addressee rather than could lead the skilled addressee to produce all the essential integers of the claim.
As the court stated in Canadian General Electric Co., Ltd v Fada Radio Ltd, (1930) 47 RPC 69 at page 90:
"Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent. The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation. Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specifications contain clear and unmistakable directions so to use it. It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own."
As previously stated, a disclosure must be "for the purposes of practical utility" (Hill v Evans supra), the same as the later claim. It follows that even if the skilled addressee is "clearly and unmistakably" directed to the invention from the prior art, there has to be sufficient disclosure in the prior art to enable the skilled addressee to put the invention into practice. That is, the disclosure must be an 'enabling' disclosure.
The Court in Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at page 549 held:
“The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication.”
I cannot see how the earlier harrows provide an enabling disclosure.
Hence, the invention defined by the claims is novel over the prior art harrows.
I note that there was no evidence from the informant that prior art harrows would remove the trash in the manner as stated in the specification. In his submissions, Mr Tatlock stated that the K-line harrow does not operate in the same way as the harrow of this invention. In the videotape, Mr Brown demonstrated the differences between the K-line harrow and his harrow. In particular, Mr Brown emphasised that in the harrow of his invention a spiral action can be seen when the roller is rotated whereas in the K-Line harrow no such spiral action was evident when its roller was rotated. The point that the patentee emphasised in the videotape and at the hearing was that the K-line harrow and by implication the Ard Points harrows may be described in terms of helical arrangement of spikes but that in use no such spiral action was evident. What the evidence establishes is that the sum total of all these helices is a regular pattern of spikes. This pattern is observed. There was no evidence from the informant that contradicted this evidence of Mr Brown. Therefore, I am of the opinion that the prior art harrows put into evidence by the informant do not describe harrows having effectively a helical arrangement of spikes located around the outer surface of the roller.
INVENTIVE STEP
Neither party made submissions regarding lack of inventive step. However, it is still necessary to consider the issue whether, on the basis of the evidence filed, the invention as defined by the claims possesses an inventive step.
The basis of lack of inventive step has been considered in a number of cases.
The Court in Nicaro Holdings v Martin Engineering, (supra) at page 563 stated:
“…a disclosure will fall short of an anticipation by description of an effective means by which a combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity...”
From General Tire & Rubber Co (supra) at page 486:
"To anticipate the patentee’s claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
And in relation to anticipation from a photograph the case of C Van der Lely NV v Bamfords Ltd [1963] RPC 61 at page 71 is important. In that case, the court said:
“There is no doubt that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language. It was argued that the same applied to a photograph. I do not think so.”
“The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence. Where the evidence is contradictory, the judge must decide. But the judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance.”
“The photograph must be looked at through the eyes of the typical addressee of the appellants’ specification-the kind of person who would be expected to make a machine of this kind.”
“…if the photograph is to be held to prove anticipation it must be possible for that man to work from the photograph, and, without himself adding a scintilla of invention ... to produce a workable machine which incorporates all the integers in the appellants' claim 1.”
I can find no evidence to suggest that the disclosures of the prior art would lead to the invention as claimed. I cannot see how a person of ordinary skill would perceive and understand that a single helix would solve the problems of clogging in prior art harrows. It seems to me that inventive ingenuity would need to be exercised for the skilled addressee to arrive at the claimed invention. Hence, based on the information before me, the invention as defined by the claims possesses an inventive step.
Priority dates
As previously stated the present application is a divisional of AU 16348/97 that claims priority from Provisional Applications PO0081 filed 27 May 1996 and PO1180 filed 23 July 1996.
Mr Turner asserted that PO0081 does not disclose the feature of spikes on a helix. Indeed, Mr Turner asserts that the subject matter of neither claim 2 or 3 was disclosed in the first provisional.
However, this issue of priority dates was only relevant if I construed the claims of the specification to include spikes arranged in more than one spiral. Because of my decision under S40 and novelty, there are no priority issues for me to consider.
Decision
I have found that the claims are clear, novel and define the invention described. I grant the extension of term of the petty patent.
Costs
Costs follow the event. I see no reason to depart from the normal award of costs. Hence, I award costs against Richard James Larsen.
Geoffrey Mark Cox
Delegate of the Commissioner of Patents
Patent attorneys for the patentee: A. Tatlock & Associates, Melbourne
Patent attorneys for the informant: Spruson & Ferguson, Sydney
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