Precision Measures Limited v ITW New Zealand Limited

[1997] APO 63

official notice

decision of a delegate of the commissioner of patents

Application:  No. 661832 in the name of  PRECISION MEASURES    LIMITED

Title:  Dispenser

Action: Opposition under S.59 of the Patents Act by  ITW NEW   ZEALAND LIMITED. 
  Substantive opposition, and amendment to the Statement of   Grounds and Particulars under R.5.9. 
  Hearing.

Decision:  Issued            .

Abstract:Substantive opposition successful.

The specification did not comply with Section 40 because  the “control means” feature in claim 1 was not fully described and because claim 1 was not fairly based and did not define the invention described.

Applicant’s evidence failed to explain or resolve deficiencies in the specification.

Amendment of the Statement of Grounds and Particulars allowed.

Amendment proposed after all evidence had been served, but it had no apparent effect on the preparation of the applicant’s evidence.

patents act 1990

decision of a delegate of the commissioner of patents

Re:  Patent Application No. 661832 in the name of  PRECISION MEASURES LIMITED,substantive opposition under S.59 of the Patents Act by ITW NEW ZEALAND LIMITED  and amendment to the Statement of Grounds and Particulars under R.5.9.

background

Patent Application No.661832 was filed on 24 December 1991 (90032/91).  It has an earlier priority date based on a provisional application filed on 24 December 1990. The application was advertised accepted on 10 August 1995, a notice of opposition was filed on 10 November 1995, a Statement of Grounds and Particulars was filed on 9 February 1996, and the opposition evidence stages were completed by 4 March 1997.  On 19 May 1997 the opponent filed a request to amend the Statement but this was objected to by the applicant.

Both the substantive opposition and the objection to the proposed amendment were heard in Melbourne on 7 August 1997; the applicant was represented by Mr Keith Callinan, patent attorney, and the opponent was represented by Mr Terry Collins, patent attorney, assisted by Mr Brad Fitzpatrick.  Both parties filed written submissions at the hearing and further written submissions after the hearing.

the specification

The specification indicates that the invention relates to fluid dispensing devices and particularly to alcoholic spirit dispensers, as used in hotels and clubs for example, and specifically, dispensers which feed spirit from a bulk source and thereby avoid the use of bottles. The specification indicates that “the use of bottles is expensive, time-consuming and is open to security abuse” and because dispensers using bottles are usually located above the bar, they “may be unsightly and intrusive on the working space of the bar attendants”.

There are 18 claims defining the invention; claim 1 reads as follows:

“1.      A fluid dispenser including:

(a)a reservoir having an inlet and an outlet, the reservoir being adapted to receive the fluid through the inlet prior to the fluid being dispensed through the outlet, the outlet being adapted to dispense the fluid to

(b)a metering means to dispense a predetermined volume of the fluid and to thereby control the amount of the fluid dispensed through the outlet;

(c)monitoring means to monitor the level of the fluid in the reservoir at a plurality of levels, the monitoring means being adapted to produce a first signal when the level of the fluid in the reservoir falls below a first predetermined level, and being adapted to produce a second signal when the level of the fluid in the reservoir rises above a second predetermined level, the second predetermined level being above the first predetermined level;

(d)said reservoir and said monitoring means being adapted to maintain a constant head of the fluid;  and

(e)control means adapted to prevent the fluid from being dispensed from the metering means when the level of the fluid in the reservoir is below the first predetermined level for a predetermined time.”

The specification further indicates that “the use of a reservoir ensures that there are substantially constant conditions (such as fluid pressure and temperature) acting on the fluid, particularly relating to a controlled head of fluid being provided for [the] metering means to maintain its integrity. In doing so, the traditional use of a bottle to fulfil this need is eliminated and a bulk source of fluid can be utilised to supply the reservoir without the current difficulties associated with plumbing and electrical interlocks.”

A preferred form of the monitoring means is a set of electrical probes of varying length and arranged to extend to various depths in the reservoir to monitor the fluid level, as indicated in paragraph (c) of claim 1.

the evidence

The evidence-in-support comprises the following:

Declarations dated 8 May 1996 and 10 May 1996 by Terrance John Collins, the opponent’s patent attorney, and exhibits TJC-1 to TJC-26. Mr Collins declares his interpretation of the present specification and earlier provisional specification, he suggests, inter alia, that the invention is a mere collocation, and he summarises the disclosures in prior art specifications.

A declaration dated 30 May 1996, by Donald Osborne, an electronic engineer and consultant to the opponent, and exhibits DO-1 to DO-3. Mr Osborne declares that information on “floatless” level controllers, or “probes”, as used in the present invention, is readily available in many electrical handbooks and other publications, and that he has used such controllers.

Mr Osborne also refers to what is known to the opponent as a “bottle lock-out” feature. This feature is used to describe the legal requirement of  Rule 4.2.2 of the Design Rules for Liquor Dispensers of the Australian National Standards Commission, which reads as follows:

“4.2.2 Operation
A delivery, once started, shall not be able to be stopped until delivery is complete, and a new delivery shall not be possible until the measuring chamber is completely full.”

Mr Osborne also declares that he was involved in the production of a dispenser made by the opponent in late 1991 known as the “ETN-4” which had a single probe liquid level detector and bottle lock-out features; and in 1993 he developed a similar dispenser for bulk liquids. He declares that he used known technology to develop the dispenser, that he was unaware of the applicant’s device, and that there is “nothing surprising” in the present specification.

A declaration dated 5 June 1996 by William Alan Kerr, general manager of the opponent company, and exhibits WAK-1 and WAK-2. Mr Kerr declares that ITW, the opponent, used the idea of a bottle lock-out feature before Precision Measures, the present applicant.

A declaration dated 5 June 1996 by Andrew Nicholson Wrigley, product development manager at ITW, and exhibits ANW-1 to ANW-3. Mr Wrigley declares that the “large expansion chamber” in the ETN models “was a deliberate design feature to allow for the provision of either a bottle fitting as in the first ETN model, or a constant head reservoir ... as is the case with the current bulk ETN dispenser.”  He also comments that the opponent’s real work on its bulk dispenser commenced in 1993, and that there is little difference between the present invention and ITW’s current bulk dispenser.

A declaration dated 5 June 1996 by Hermanus Vandermeel, ITW’s marketing manager in Sydney, and exhibit HV-1. Mr Vandermeel declares that whilst he was working for another company in 1985 he was aware of the development of an ice making machine which used probes to control the water level in a reservoir, “because they were a standard way of regulating the level of liquid in a reservoir and providing electrical signals if the liquid level fell below the lower limit, or rose above an upper limit.”

Mr Vandermeel also declares that he was involved in selling bulk liquor dispensers in the 1980’s, that when he joined ITW in 1993 he was aware that it had plans to introduce a bulk liquor dispenser and that it was a logical development of the existing ETN bottle-fitting dispenser, and that the Precision Measures dispenser is “very similar” to the ITW dispenser.

The evidence-in-answer comprises a declaration dated 9 December 1996 by Malcolm Reeve, and exhibits MR1 to MR6. Mr Reeve is the actual inventor of the present invention and director of Precision Measures Limited. He discusses in some detail the history and development of the present invention, eg. he indicates that the dispenser would only be able to dispense exactly the required volume, which is referred to as the “predetermined volume” in the specification.  Referring to the device described in the provisional specification, Mr Reeve states in paragraph 13 of his declaration:

“It was not able to dispense a short measure. To achieve this probes were located in the reservoir. From the specification, and in particular the drawings, it can be seen that there is a lengthy probe extending well into the reservoir. When the lower end of the probe is exposed, there remains within the reservoir sufficient spirit for three dispensings. However, if the probe remains exposed for a predetermined period, and the period disclosed in the specification of the application is 2 seconds, the control circuitry is such that any dispensing which is taking place at that time can be concluded. One is now able to include that one further dispensing can take place. That would still leave enough fluid in the reservoir for two further dispensings. Generally, the reservoir would hold sufficient spirit for 9 dispensings.”

In paragraph 14 of his declaration Mr Reeve discusses how the probes, similar types of which were used in the past in large containers, were developed for the relatively small reservoir in the present invention. In paragraphs 23 to 35 Mr Reeve discusses in some detail the specifications cited in Mr Collins’ declarations; Mr Reeve suggests that none of the citations disclose all the features in the present claims; and in paragraphs 36 to 39 he discusses the S.40 objections to his specification.  In paragraphs 40 to 42 Mr Reeve suggests that his invention was the first to incorporate a “last-nip-lockout” feature and that it was later applied to bottle mounted units to comply with the Standards Rule 4.2.2. (ie. the “bottle lockout” feature described by the opponent’s declarants).

grounds of opposition

The Statement of Grounds and Particulars, filed on 9 February 1996, includes 5 grounds of objection and 8 pages of particulars which include the citing of 23 prior art specifications. One ground and many of the particulars were not pursued at the hearing, so I will not deal with those matters. The opponent submitted a 3-page summary of the opponent’s case at the hearing; it seems to be a convenient summary of the important matters in this case and it formed the basis of the opponent’s submissions at the hearing, so it is reproduced as follows:

“GROUND 2

2.1The invention as claimed in any claim of the application is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies because each claim of the application is directed to a mere collocation as distinct from a true combination.  In particular:

(a)there is no apparent working interrelationship between the "signals" of part (c) of claim 1 and any other integer or feature of claim 1, and

(b)there is no apparent working interrelationship between the "control means" of claim 1 and any other integer or feature of claim 1.

2.2For reasons explained in the detailed submissions the "control means" is the only feature of claim 1 which has the potential to distinguish over the prior art.  It is the feature which the applicant has identified as lying at the heart of the invention, but there is no working interrelationship between that control means and the other parts of the dispenser referred to in claim 1.

2.3The control means feature does not provide a new method of using a known dispenser so as to serve a new purpose.  The control means could be a simple manually operated valve, or a manually operated switch which disables the dispenser in a known way to achieve a known result.

2.4As a result, claim 1 does not define a patentable invention, for the reasons given in Innovative Agriculture Products Pty Ltd v Cranshaw 35 IPR 643 at

654.

2.5    The defect in claim 1 is not corrected by any appended claim.”

“GROUND 3

3.1The invention according to claim 1 is anticipated by AU 618043 (TJC 9), AU 607440 (TJC 10), AU 594938 (TJC 12) and U.S. 3891123 (TJC 26).

3.2Other exhibits such as TJC 11, 13 and 17, which may not be construed as disclosing "control means", are nevertheless relevant to the ground of lack of novelty.  The control means does not have any special characteristics in order for it to perform the stated function, and there is no indication that inventive ingenuity was required to adapt control means to a known dispenser so as to disable that dispenser under certain fluid level conditions - see Shell lnternationale 4 IPR 439 at 443.

3.3If it is accepted that the correct priority date of claim 1 is 9 June 1995, claim 1 is invalid for lack of novelty given the prior disclosure of the Precision Measures product (Reeve, paragraph 15) and prior disclosure of the ETN bulk supply dispenser (Vandermeel, paragraph 9).

3.4Not one of the appended claims 2 to 17, nor the omnibus claim 18, adds a novelty conferring feature to the dispenser of claim 1.”

“GROUND 4

The invention as claimed in claim 1 of the application is obvious and does not involve an inventive step because each of the following formed part of the common general knowledge in the industry in Australia concerned with fluid dispensers, before the relevant priority date of claim 1:

(a)metering means for dispensing a predetermined volume of fluid,

(b)connection of such metering means to the outlet of a reservoir,

(c)the use of detection systems, such as probes, floats, etc., to detect the level of fluid in a reservoir and generate a signal under appropriate circumstances,

(d)the need to ensure that a predetermined volume of fluid is accurately dispensed if the dispenser is to be used with spirits, and

(e)the need to disable the dispenser if the fluid supply is exhausted or near exhaustion.”

“GROUND 5

5.1The control means, which is the central feature of the invention, is not adequately explained in the specification.  The specification does not explain either the construction or the function of the control means to the extent necessary for the public to practice the invention.

5.2According to the inventor, Reeve, the control means is nothing more than a signal, audio or visual, which alerts an operator to the existence of a low fluid level condition.  The specification does not make that clear to the reader, nor does the specification explain how an operator will disable the dispenser once apprised of the low level condition.

5.3The specification does not say whether the control means interacts with other parts of the dispenser, and if so how that interaction is effected.

5.4The specification generally fails to meet the standards concerning disclosure of the best method of performing the invention.  The specification fails to meet those standards for reasons similar to those stated in Innovative Agriculture Products Pty Ltd v Cranshaw 35 IPR 643 at 666 and 667.

5.5The invention according to claim 1 is not fairly based on the matter described in the specification because there is no description of control means which is adapted to prevent fluid being dispensed from the metering means when the liquid level in the reservoir remains below a predetermined level for a predetermined period of time.  In particular, there is no disclosure in the body of the specification of control means which responds to those circumstances so as to automatically prevent fluid being dispensed, or so as to automatically remove an interlock or some other bar to operation such that the dispenser can be disabled.

5.6The invention according to claim 1 is not fairly based on what is described in the body of the specification because the specification does not describe a dispenser in which a constant level of fluid is maintained within the reservoir.”

decision

Section 40

I will first deal with S.40 matters, including those referred to in the “ground 5” section of the Summary of the opponent’s case.

Re the CONTROL MEANS and the METERING MEANS.

The “control means” is the feature referred to in paragraph (e) of claim 1, ie. it is “adapted to prevent the fluid from being dispensed from the metering means when the level of the fluid in the reservoir is below the first predetermined level for a predetermined time.” The function of the control means is associated with the function of the “metering means” which is that feature referred to in paragraph (b) of claim 1, ie. it is “to dispense a predetermined volume of the fluid and to thereby control the amount of the fluid dispensed through the outlet”.

I think the first issue to consider in relation to the control means is whether claim 1 defines a dispenser which achieves the “last-nip-lockout” object of the invention. It is apparent from the evidence and submissions that this object of the invention is important; the object is that “a delivery, once started, shall not be able to be stopped until delivery is complete, and a new delivery shall not be possible until the measuring chamber is completely full.” 

Paragraphs 22 and 40-42 of Mr Reeve’s declaration suggest that his invention is characterised by means for achieving this feature, and Mr Callinan submitted that feature (e) in claim 1 defines the last-nip-lockout feature. However, Mr Collins argued that the last-nip-lockout feature is not defined in the specification, and Mr Wrigley declares in paragraph 18 of his second declaration: “there is absolutely nothing in the patent specification to suggest that the flow termination operation of claim 1 part (e) is dependant on a full measure being dispensed by the metering means”.

In my view, features (b) and (e) in claim 1 relate to last-nip-lockout. Feature (b) indicates that “a predetermined volume” is dispensed by a metering means; this I think covers the requirement for a “full measure”, a pre-requisite for last-nip-lockout.  Feature (e) is adapted to prevent the metering means dispensing fluid “when the level is below the first predetermined level for a predetermined time”. The word “prevent” is important here (compared to other words which could have been used: “stop” or “cease” for example). I construe this feature to mean that, after the predetermined time, the metering means is prevented from dispensing, and since a predetermined volume is normally dispensed according to feature (b), it is implied that the metering means is prevented from beginning dispensing, and a part measure would therefore not be delivered. Claim 1 certainly does not include the words of the Australian National Standards Commission definition of last-nip-lockout, but in my view a skilled addressee, familiar with the concept of  last‑nip‑lockout, would construe the claim as adequately defining apparatus which dispenses a full measure, or, under the stated circumstances, is prevented from beginning to dispense a full measure. Thus claim 1 adequately defines apparatus which is capable of achieving the abovementioned object of the invention.

The next issue relating to the control means is whether the feature is fully described in the specification. In his second declaration Mr Wrigley states that “the nature of that control means is not clearly revealed in the specification.” In paragraph 37 of his declaration, Mr Reeve discusses the control means: he refers to page 7 line 6 of the specification where it is stated:

“The electronics panel 9 and associated electrical equipment control the entire function of the dispenser 3.”

Mr Reeve suggests that a person skilled in the art would construe this as referring to a control means. He also refers to the paragraph on page 6 from lines 18 to 25 in this matter: this paragraph discusses how an audio and/or visual signal is displayed on the electronics panel 9 after a predetermined period of 2 seconds after the low level probe signals that the reservoir requires replenishment.

At the hearing, the disclosure on page 4 of the specification was discussed; paragraphs 3-5 on page 4 read as follows:

“Certain probes are preferably also adapted to send a signal to signal means to notify an operator of the conditions in the reservoir, such as, when the level fluid in the reservoir goes above or below predetermined levels.  In particular, the signal means may be sent a signal when the level reaches a predetermined maximum level (overflow condition) or goes below a low level of the reservoir.  Preferably, the signal means is an audio and/or visual means which may preferably be adapted to operate only if, after a predetermined period of time (such as 2 or 3 seconds) has elapsed, the condition giving rise to the signal has not been rectified.

In a further preferred aspect of the invention, the dispenser includes metering means to control the amount of fluid dispensed through the outlet.  Preferably, the metering means is adapted to receive fluid and dispense a predetermined volume of fluid. This feature will normally be adopted when the fluid is high-cost fluid such as spirits.

The dispenser may be further adapted so that when the fluid level falls below a predetermined low level and, optionally, remains there for a predetermined period (eg. a few seconds), the dispenser is adapted to prevent fluid being dispensed. This may be achieved by adapting the metering means to prevent fluid issuing from it or by adapting the outlet of the dispenser to become obstructed so that no fluid may pass through the outlet. In this condition, the monitoring means may cause the signal means to operate.”

The fifth (and last) paragraph on page 4 is of interest because it is the only part of the description which refers to preventing the fluid from being dispensed after a predetermined period; which is the purpose of the “control means” in paragraph (e) of claim 1. Mr Collins indicated that this last paragraph on page 4 is not mentioned by Mr Reeve when discussing the disclosure of the control means. I think this is a good point raised by Mr Collins; it is not clear to me why Mr Reeve has seemingly ignored this part of the specification. The part he refers to on page 7 certainly suggests that the electronics panel and associated electrical equipment have a “controlling” function, but there is no mention there of preventing the fluid from being dispensed from the metering means. Conversely, the last paragraph on page 4 seems to be referring to the function of integer (e) in claim 1, but makes no reference to a “control means” performing that function, if that is meant to be the case.  The explanation in Mr Reeve’s declaration does not resolve this confusion. His lack of reference to the last paragraph on page 4 of the specification suggests that in his mind the “adapting” referred to in the last paragraph on page 4 is not something which is associated with the control means.

The last paragraph on page 4 reads as though it is the metering means, not the control means, which is adapted so that when the fluid level falls below a predetermined low level and remains there for a predetermined period fluid is prevented from being dispensed. This seems to be confirmed by paragraph 19 of Mr Reeve’s declaration, apparently referring to the adaptation of the metering means, the initial part of which reads as follows:

“In this regard, I note that the System of my Company uses an electric motor to control the valves. These operate in conjunction with a cam. When dispensing is initiated, the motor commences to turn the cam shaft, which then opens the outlet valve. Before the outlet valve is opened, the inlet valve is closed. If there is an electrical supply interruption, the motor will stop. Once the outlet valve is open at least in part, it will remain open, and the inlet valve will remain closed. Therefore the dispenser will be able to dispense the entire contents.”

Thus in my view, the description of the invention indicates that it is the metering means, not the control means, which is “adapted” to prevent the fluid from being dispensed when the level is below the first predetermined level for a predetermined time.  I conclude therefore the specification does not comply with S.40(2)(b) because claim 1 does not define the invention described in the specification.

Furthermore, I think after a fair reading of the specification, an addressee would not have a clear understanding of which parts of the description of the invention relate to the control means feature in claim 1. There is in fact no text in the description specifically referring to a control means which prevents dispensing when the fluid in the reservoir is below the first predetermined level for a predetermined time, and there is nothing to link the separate references to “adapting” the dispenser on page 4 and to “controlling” the dispenser on page 7, if that is how the specification is supposed to be construed. I note also that none of the appended claims 2-17 in the specification elaborate on feature (e) in claim 1.

Generally, if a claimed feature was found to be inessential or even essential to the claim but not particularly significant say with regard to the prior art, then a lack of description of that feature may not always be objectionable. However, in the present case, feature (e) in claim 1 seems to be at least one of the improvements of the invention over the prior art. Under these circumstances it is incumbent upon the applicant to ensure that there is no guesswork associated with the purpose and function of such a feature. See Vidal Dyes Syndicate v Levinstein (1912) 29 RPC 245.

In my view the specification is confusing and leaves too much to the imagination with regard to the “control means” feature. Therefore I conclude that the specification does not comply with S.40(2)(a) because the nature of the invention in its broadest form is not fully described.

In the preferred embodiment of the invention described in the specification there is no integer described which can be construed as a control means adapted to prevent the fluid from being dispensed from the metering means when the level of the fluid in the reservoir is below the first predetermined level for a predetermined time. The “electronics panel 9”, which according to the applicant is supposed to be the control means, is described as interacting with the probes, LED visual indicators and a digital counter, but there is no reference as to how it could be involved in adapting the metering means to prevent fluid from issuing from it.

Mr Callinan submitted that, although it could be argued that not all of the details of the “commercial product” have been described in the specification, there is still a best method of performance of the invention.  I agree that a commercial product would require a more detailed specification than a patent specification; materials and dimensions at least would have to be specified; but in this case I don’t think the specification before me is sufficient to allow a reasonably competent workman to manufacture the control means of the invention without some further creative input on his part. In paragraph 19 of his declaration, referred to above, Mr Reeve discusses some components of his apparatus which are involved in the last-nip-lockout function; prima facie, it seems to me that this sort of information should have been in the specification.

Thus I conclude that the specification does not comply with S.40(2)(a) because the best method of performance is not fully described.

Along with his submissions on the “control means”, Mr Collins submitted that the “metering means”, feature (b) in claim 1, is also not fully described in the specification. Prima facie, the specification gives little detail of the metering means, but in my view the issue of whether it is fully described is tied to the abovementioned issues relating to the control means, because of the interaction between these two features. I suspect that if the control means was fully described then an addressee would have no difficulties with the metering means.

Another issue relating to the control means is whether claim 1 is fairly based on matter described in the specification. In this case I have decided that feature (e) in claim 1 has not been fully described, so it follows in these circumstances that the claim cannot be fairly based since there is no fully described matter which forms a basis for the claimed feature.

A further issue relating to the control means is whether feature (e) in claim 1 is disclosed in the provisional specification and in the complete specification as filed.

The complete specification filed is the same as the accepted specification in its lack of reference in the description to a control means which prevents dispensing, but there is such a reference in claim 18 of the specification as filed, and, although the control means in claim 18 does not include the “predetermined time” feature, when claim 18 is read in the light of the disclosure in the last paragraph on page 4, I think there is sufficient disclosure for the basis of feature (e) in accepted claim 1. Even though the specification as filed has no reference to a control means which specifically prevents dispensing when the fluid in the reservoir is below the first predetermined level for a predetermined time, I think there is enough in the specification to disclose a primeval form of the concept of the control means. I distinguish this requirement of disclosure from the requirement of fully describing the invention as discussed above.

The provisional specification has a shorter description than the complete specification, and no claims; and in my view there is no disclosure whatsoever of a control means or any other integer which performs the function of feature (e) in claim 1 as accepted.

I conclude therefore that claim 1 as accepted is not entitled to priority from the provisional application but is entitled to priority from the date of filing of the complete specification, ie. 24 December 1991.

Re the CONSTANT HEAD OF FLUID

Paragraph 5.6 of the opponent’s summary  alleges that “the invention according to claim 1 is not fairly based on what is described in the body of the specification because the specification does not describe a dispenser in which a constant level of fluid is maintained within the reservoir.” However, I think the objection in this form is misleading because it implies that the claim includes a feature where “a constant level of fluid is maintained within the reservoir”, which is not the case since feature (d) of claim 1 refers to maintaining “a constant head of the fluid”.

The objection as discussed at the hearing and as set out in the opponent’s evidence is that “constant head” in feature (d) of claim should read “controlled head”. Mr Collins suggested that “constant head” is not correct because the fluid level moves up and down in the reservoir. Mr Wrigley discusses the matter in paragraphs 5 and 7 of his second declaration. In paragraph 5 he states: 

“I cannot see how a constant head is maintained in the Reeve system. A head of fluid is maintained within the reservoir by means of the probes, but that head varies between wide upper and lower levels and is therefore a “controlled head” as opposed to a “constant head”...”

In paragraph 7 he states:

“A true constant head is critical to achieving accurate dispensing of a pre-determined volume in liquor dispensers. It seems that the probes of Reeve’s system simply ensure that the reservoir retains a sufficient quantity of fluid to feed the metering means as required, and that the quantity of fluid retained in the reservoir can vary over a large range between upper and lower limits determined by the probes. It is the constancy of the head level that determines the accuracy of the dispensed volume... “

Mr Callinan directed me to paragraph 36 of Mr Reeve’s declaration in this matter, viz:

“In paragraph 2.2 of his second declaration Mr Collins refers to the constant head referred to in claim 1 of the application as accepted. When one is dealing with constant head one is referring to the pressure exerted by the volume [of] fluid above the relevant level.  It is perhaps best exemplified by a watering can where the volume of water in the watering can is reduced as the can is tipped and the garden watered.  The spray from the watering can remains constant due to the head of water above the spout.  Near the very end it will diminish due to the reduction in the head of pressure exerted by the water in the watering can.  It is a term which would be understood by those skilled in the art and it is a term which I understand, being a person skilled in the art.  Furthermore, in paragraph 4.6 of his first declaration, Mr Collins has been critical of the specification of the opposed application in relation to the lack of reference to a "constant head". I refer to page 3, lines 4 to 10 of the specification as accepted.  This explains the general requirements, including that of a controlled head of fluid.  A controlled head of fluid is a constant head achieved by the replenishing of the fluid in the reservoir from the remote source, as is described in the specification of the application.”

I agree with the applicant’s submissions in this matter. In my experience, the word “head” can be used to mean either pressure in a (usually vertical) body of liquid, or the height or level of liquid required to maintain a desired pressure. In this case I think the skilled addressee would have no difficulty in interpreting “constant head” in feature (d) of claim 1 to mean “constant pressure” when read in light of the description of the invention. I am satisfied that there is no S.40 objection associated with this feature.

Re the MONITORING MEANS

Mr Collins submitted that claim 1 was too broad because feature (c) defined means other than the probes discussed by the inventor as being a significant aspect of his invention. Mr Reeve comments in paragraph 14 of his declaration for example that

“although other devices such as floats could be used, they were generally not of sufficient reliability to be able to be used.”

However, after some deliberation, I do not consider claim 1 to be not fairly based for the reason that feature (c) is defined too broadly.  An applicant is allowed to claim a monopoly broader than the best method of performance, and in this case the invention in its broadest form is a bulk fluid dispenser, with the features of claim 1, which accurately dispenses a predetermined volume of fluid by overcoming the prior art problem of pressure variation, and which also prevents dispensing under certain conditions. In my view it is within the scope of the invention in its broadest form that monitoring means other than probes may be used but it is clear that probes are the best method of performing the invention.

Novelty

I will first deal with each of the four specifications cited in paragraph 3.1 of the Summary of the Opponent’s case.

AU 618043  (TJC-9):
This specification relates to an orange juice dispensing system where juice concentrate is mixed with water before dispensing. The description in relation to figures 7 and 8 in particular were discussed at the hearing. The specification makes several references to dispensing selectable portions by volume, and on page 11 there is reference to high and low level indicators and to a microcontroller controlling the level of concentrate in a reservoir. However, in my view there is no feature disclosed which is equivalent to feature (e) in claim 1. The evidence and submissions suggest to me that the control means should be construed as an essential feature of claim 1.  I note also that in paragraph 3 of Mr Collins’ second declaration, where he discusses this prior art, he does not allege that feature (e) is disclosed in the citation.

AU 607440 (TJC-10):
At the hearing Mr Collins acknowledged the applicant’s objection that this specification was not mentioned in the Statement of Grounds and Particulars, and he indicated that he would not pursue a novelty objection based on this citation.

AU 594938 (TJC-12):
This specification relates to a device for delivering predetermined quantities of water to a dough tub in a bakery. There are features in this specification which are within the scope of most of the features as defined in present claim 1.  Also a “throttle valve 24” is disclosed which is set to allow a lower reservoir to empty slower than an upper reservoir, which empties into the lower reservoir, so that there is an uninterrupted discharge from the latter. It is possible that, with some skill, this valve could be used to achieve the purpose of feature (e) of present claim 1, but in my view the level of disclosure is well below that required for anticipation. I note also that in paragraph 5 of Mr Collins’ second declaration, where he discusses this prior art, he does not allege that feature (e) is disclosed in the citation.

US 3,891,123 (TJC-26):
This specification relates to a commercial washing system with a series of reservoirs and level probes. It demonstrates the principle of constant head but does not appear to have means to monitor a plurality of levels in any one reservoir, and therefore fails to disclose feature (c) of present claim 1. Mr Collins makes no detailed discussion of this citation in his declarations.

Many other specifications are referred to in the opponent’s evidence. Mr Reeve discusses all these specifications in some detail in paragraphs 23 to 35 of his declaration, he distinguishes them from his invention, and I note that there is no evidence-in-reply to Mr Reeve’s evidence on this matter. Mr Reeve’s comments on these other specifications appear to be logical and relevant so I consider the present claims to be novel in the light of these other cited specifications.

The opponent’s evidence relating to its own products, ie. the “ETN” dispensers, is of low probative value; it is difficult to determine exactly what features of various models were disclosed before the priority date, which I have determined to be 24 December 1991. However, I think it can be said that there is no disclosure of any one product with all the features of present claim 1. When considering Messrs Wrigley’s and Osborne’s evidence along with Exhibits TCJ-19 (AU 630377) and ANW-1 (US 5,097,991) for example, I cannot conclude that any of the ETN devices had means for preventing a short measure and a bulk reservoir and a metering means as defined in present claim 1.  Of particular relevance is Mr Wrigley’s comment that “the first ETNs were sold in Australia in 1990, but they did not have a ‘bottle-lockout feature’”.

Inventive step

The specification indicates that the invention in its broadest form is a bulk fluid dispenser which accurately dispenses a predetermined volume of fluid by overcoming the prior art problem of pressure variation, and which also prevents dispensing under certain conditions.

I have little evidence before me on the state of the common general knowledge of bulk fluid dispensers at the priority date of the application. The major thrust of the opponent’s submissions and evidence on this ground amount to an attempt to prove that each of the features in claim 1 was a matter of common general knowledge. Such an approach however is not sufficient for me to conclude that there is a lack of inventive step, since the law indicates that it is not appropriate to dissect a claim in this way; see Minnesota Mining and Manufacturing Co v Biersdorf (Australia) Limited, (1980) 144 CLR 253 at 293. For a lack of inventive step it must be shown that it was obvious to combine the various features to form the whole dispensing device as claimed, and no such evidence is before me. Messrs Osborne and Vandermeel for example declare that floatless level controllers are well known, but they do not say why it would be obvious to use these with a bulk fluid dispenser having features (a), (b) and (e) of present claim 1.

The opponent submitted that the present invention is an obvious workshop variation of known spirits dispensers; but this submission has not been supported by much evidence: Mr Osborne for example declares that there is “nothing in the specification that is surprising”. However, Mr Reeve declares, in paragraph 14 of his declaration, that he experienced some difficulty in the design of the probes because of the relatively small reservoir in his device; he states that

“Considerable effort was involved in designing probes that had the required degree of accuracy and reliability, and which were able to fit into the required space. Furthermore, the probes had to be of a size that they did not affect the volume of the spirit. Although other devices such as floats could be used, they were generally not of sufficient reliability to be able to be used.”

In my view the variable pressure problem of the prior art has been addressed by the inventor: paragraphs (c) and (d) in claim 1 define features which overcome the said problem, and Mr Reeve has indicated how some ingenuity on his part was required in developing working embodiments of the monitoring means claimed in feature (c). I am satisfied that on the balance of evidence, the invention as claimed does involve an inventive step and defines an improvement over the prior art.

Manner of manufacture

The Opponent has alleged that the invention is not a manner of manufacture because there is no working inter-relationship between some integers in the claims. I comment on paragraph 2.1 of  the Summary of the Opponent’s Case as follows:
(a)  The “signals” are produced by the monitoring means which is defined in feature (c) as having a working inter-relationship with the reservoir defined in feature (a). Also, the purpose of the signals becomes apparent in the appended claims.
(b)   The control means in feature (e) of claim 1 has a working inter-relationship with the metering means, which is feature (b) of claim 1.
Thus the claims are not directed to a mere collocation of integers.

Paragraph 2.3 of the opponent’s Summary seems to suggest that the invention is a mere use of a known device, but then speculates as to what that device could be.  This to me seems to be a rather muddled approach; for an objection of mere use of a known device to be sustained the nature of the known device must be an indisputable starting point.  I do not construe claim 1 to be a mere use of the control means since, inter alia, there are other significant features in the claim, as discussed above.

In my view the claims are directed to a manner of manufacture.

Amendment of the Statement of Grounds and Particulars

The proposed amendment to the Statement involves inserting two new paragraphs under Ground 5, which is that the specification “is generally ambiguous and fails to clearly and fully describe the invention ...”  The proposed paragraphs object that the nature and construction of the “metering means” in claim 1 “is not explained in the text of the specification”, including the manner in which it “dispenses a predetermined volume of fluid”.

The opponent’s request for the amendment indicates that Mr Reeve’s declaration in the evidence‑in-answer refers to details of the metering means, and that it had thus become evident “that the construction and function of the metering means is much more critical than is indicated by the specification”.

The opponent submitted that neither the applicant or the public will be prejudiced by the amendment because:

• The issue is simple and does not require in-depth enquiry or further evidence from the applicant.

• The opponent had been led to believe that the applicant was going to amend the specification to address the abovementioned deficiencies but no amendments were made.

The applicant submitted that the Statement should not be amended because:

• The opponent delayed requesting the amendment after being served the applicant’s evidence-in-answer.

• The amendment process would cause further delay.

• The issue could have been addressed in the evidence-in-support because, if there is a problem with the specification, it should have been apparent when it was first construed by the opponent.

• The opponent’s evidence goes against the reasons stated for the amendment, re the need for accuracy of measurement of the volume dispensed and last-nip-lockout.

• The applicant did not seriously consider an amendment to claim 1 relating to this issue.

Regulation 5.9(2) of the Patents Regulations in force under the Patents Act 1990 indicates that a Statement of Grounds and Particulars cannot be amended, inter alia,  if a person will be unduly prejudiced by the amendment.

Whether an amendment will unduly prejudice a person will depend upon the facts of each case.  Some guidance is provided by the decision in Diamond Scientific Company v CSL Limited (1992) AIPC 90-927, viz:

(a)it is the responsibility of the opponent to explicitly specify in the statement of grounds and particulars those documents on which it relies in an opposition;

(b)any amendment that changes the case the applicant has to answer is potentially prejudicial to the applicant;

(c)       an amendment of particulars will unduly prejudice a person if:

(i) the amendment is detrimental or disadvantageous to the person, and

(ii) the circumstances surrounding the amendment cause the degree of detriment or disadvantage to be unwarranted, excessive, improper, inappropriate, or unjustified;

(d)where an opponent actively pursues further particulars in the opposition after having filed its statement, the applicant will be unduly prejudiced by any resultant change to the case it has to answer if the statement is amended;

(e)extra particulars that arise incidental to the preparation of the case which:

(i) do not result in any protraction of the preparation of the case, and

(ii) are included by way of amendment of the statement of grounds and particulars at the earliest reasonable opportunity, and

(iii) do not substantially change the case the applicant has to answer in the opposition,

will not prima facie give rise to the applicant being unduly prejudiced by the relevant amendments; see Abundant Lawn Grass Industries v Crancrove (1993) AIPC 90-973

(f)    where:

(i) the applicant objects to an amendment, and

(ii) the amendment of the statement can be said to prejudice the applicant (such as by the addition of extra particulars), and

(iii) the circumstances are such that there is a reasonable inference that the prejudice is undue - such as by the time at which the amendment is sought, or the nature or extent of the amendment sought;

there is a reasonable basis for the Commissioner to prima facie conclude that the applicant will be unduly prejudiced by the amendment.  In this event, for the Commissioner to allow the amendment the opponent has the onus of demonstrating that its activities have not been such as to have unduly prejudiced the applicant.

Other factors that are likely to be relevant to determining whether undue prejudice would occur are:

(g)       how far has the opposition progressed towards its finality?

(h)was the applicant previously aware of the issues sought to be incorporated by the amendment?

1. does the amendment have the effect of reintroducing a ground of opposition that has previously been dismissed?

(j)is the amendment one which would clearly be determinative of the opposition? See, for example, Porter v Arbortech Investments, unreported decision on application 633978, dated 20 Sept. 1994,

(k)for amendments requested after service of the evidence in support, has a corresponding request to serve further evidence been made in respect of any new particulars? See also Sumitomo Electric Industries v BICC Plc & Anor (1993) AIPC 90-988 and Biosys v Ecogen Australia Ltd (1993) AIPC 91-001.

It is clear from many recent decisions of the Commissioner that amendment of the Statement of Grounds and Particulars is usually not justified when the opposition is well advanced. See for example The Royal Postgraduate Medical School v Immunex Corporation (1995) 33 IPR 662 and Porter v Arbortech Investments Pty Ltd: Commissioner’s decision of 20-9-94 on application 633978, where it was decided that (i) after the applicant has served its evidence-in-answer, it has answered the opponent’s case, therefore any extra material which has to be considered thereafter is bound to change the case, and (ii) the case would be protracted because the applicant would want to file further evidence. In the former case I stated:

“The Statement of Grounds and Particulars was introduced into the 1990 Act to streamline the process of opposition by giving the applicant a good idea early in the process of the case it had to answer. The process will not be streamlined if, after the opposition is well progressed, an opponent is allowed to amend the Statement every time a new piece of evidence comes to light. If this was so there would be no point in having the Statement.”

In this case the amendment to the Statement was proposed after all the evidence in the opposition was served. My prima facie reaction to the proposed amendment is that it should not be allowable because it has been proposed so late in the opposition procedure, and it seems unnecessary because the applicant has already determined the nature of the case it has to answer. In other words, the Statement has no useful function once the applicant has become aware of the opponent’s evidence, so it is a waste of resources of all parties to be considering amendments to the Statement at such an advanced stage in the opposition process.

Nevertheless, the opponent has requested amendment of its Statement and I am bound to determine whether the amendment is allowable, with the significant criterion being “whether a person will be unduly prejudiced by the amendment”.  In this case the nature of the amended particular is an additional S.40 objection to the specification. As far as I can determine, having to deal with this additional objection has not unduly prejudiced the applicant, or any other party, because the objection is based primarily on the construction of the specification, it is relatively straight forward, it is not one which relies on new evidence and it has not been determinative of the opposition. As stated above, the amendment was proposed very late in the opposition, but the nature of the amendment is such that it has not led to the applicant having to adduce any further evidence or to reconsider its evidence-in-reply, since the latter had already been served. The applicant submitted, without much elaboration, that the proposed amendment “has placed an additional cost burden upon the applicant”, but this I consider not to be undue prejudice, especially since some of the costs would be associated with the applicant’s own objection to the amendment. Also, there is nothing before me which suggests that the proposed amendment has caused any significant delay to date, and it seems most unlikely that allowing the amendment at this stage would cause any delay in the opposition. The Patents Act allows an amendment to the Statement anytime, and in cases such as this one where the amendment has had no effect on the applicant’s preparation of evidence it may not matter if the amendment occurs at an advanced stage of the opposition process.

I do not think the reasons for the amendment conflict with the evidence, as suggested by the applicant’s written submissions on this matter. Both parties seem to have been aware of the general need for accurate dispensing and last-nip-lockout, but the reasons for the amendment are specifically directed to the particular invention described in the present specification and the possible insufficiencies suggested to the opponent by Mr Reeve’s declaration.

Thus when considering the nature of the proposed amendment, and taking all relevant matters into account, I conclude that the amendment is allowable under R.5.9(2) and the opponent’s request to amend the Statement should be complied with.

conclusion

The opposition to grant of a patent for application No. 661832 is successful because I have found that the specification does not comply with the requirements of Section 40: claim 1 is not fairly based and does not define the invention described and the “control means” feature in claim 1 has not been fully described.

However, in my view, there is patentable subject matter in the specification, so I allow Precision Measures Limited 60 days from the date of this decision to propose amendments to overcome the objections to the specification.

The applicant’s objection to the proposed amendment to the Statement of Grounds and Particulars is not successful; I have found that the amendment would not be prejudicial to the applicant or any other party because, inter alia, the amendment has had no effect on the applicant’s preparation of evidence.

costs

On the matter of the substantive opposition, the applicant submitted that it has suffered because it had to deal with the following matters:

(1) Ground 1 of the Statement of Grounds and Particulars, relating to entitlement of the invention, which was not pursued at the hearing.
(2) There are more than 10 prior art documents cited against at least one ground in the Particulars, and there is insufficient detail given of these documents. (See ICI v Irenco & Ors 26 IPR 154)
(3) Some of the prior art referred to in the Particulars has not been pursued and included in the opponent’s evidence.
(4) The opponent argued at the hearing included reference to possible priority dates in 1995, but this matter is not included in the Statement.

The opponent made the following submissions with regard to costs in the substantive opposition:

(1) It does not matter that the opponent did not pursue Ground 1 in the Statement, because no evidence was adduced on that ground.
(2) The applicant did not seek directions for further and better particulars; implying that it was satisfied with the Statement. Mr Collins referred me to the decisions in Arx Pty Ltd v Lockwood Australia Pty Ltd, unpublished Office decision on application 625160 dated 3 November 1995, and  in Mowbay Corp v Dow Chemical Co (1992) AIPC 90-895 at 38,466, 24 IPR 379 at 392 in this matter.

Both parties argued for full costs in the substantive opposition. Mr Collins submitted that an opponent is entitled to all its costs if successful on one ground of its opposition, but Mr Callinan submitted that under these circumstances pro-rata costs may be appropriate, depending on how successful an opponent had been.

I have decided that the specification does not comply with Section 40. The abovementioned S.40 objections I consider to be serious because they relate to the “control means” feature which is one of the important features which distinguishes the invention from the prior art. Therefore my prima facie conclusion on costs relating to the substantive opposition is that costs should follow the event and be awarded against the applicant.

I comment on the additional matters referred to in the abovementioned submissions on costs as follows:

(1) The applicant’s evidence does not indicate that it has been concerned with the said entitlement issue, so this is not an issue in my consideration of costs.

(2) I am somewhat sympathetic to the applicant’s submissions on the prior art specifications cited in the Statement and in the opponent’s evidence; it is not clear to me which documents are considered by the opponent to be the most significant, and it is evident from Mr Reeve’s declaration that he has devoted some time to responding to the opponent’s objections based on many of these prior art specifications. Also, one document in the evidence, TJC-10, is not mentioned in the Particulars.

(3) On the matter of  the applicant not seeking directions for further and better particulars, and the criteria for the “consequences of inadequate particulars” set out in Mowbay v Dow, supra, I am rather uneasy with the concept of the onus being on the applicant to “police” the particulars or take some action at the pre-evidence stage, as set out in that decision. Having to police the particulars at that stage may be a burden on the applicant since it would involve some action like seeking directions for further and better particulars under R.5.10(1), or dismissal, which may involve substantial costs and certainly would involve delays in the opposition. The remedies set out in that decision may not be the only appropriate ways of dealing with inadequate particulars.

(4) Nevertheless,  the law as it now stands does envisage the applicant indicating at an early stage in the opposition that it is not satisfied with the Statement of Grounds and Particulars, and in the present case it is not clear to me why the applicant did not object to the Statement at some stage before the hearing.

Taking all these additional matters into account, I am inclined to make an adjustment to my prima facie conclusion on costs; I think an adjustment of 20% is appropriate in these circumstances. Thus on the matter of costs relating to the substantive opposition I award 80% of costs against the applicant Precision Measures Limited.

On the matter of the amendment of the Statement of Grounds and Particulars, I have decided that the Statement should be amended. The usual practice of costs following the event would lead me to awarding costs against the applicant.

However, the applicant submitted that, even if I decided that the amendment was allowable, it still should be entitled to its costs because of the late timing of the request to amend. I agree that the applicant has incurred some minor inconvenience in this matter so I think an adjustment of 20% in the applicant’s favour is appropriate. Thus on the matter of costs relating to the amendment to the Statement of Grounds and Particulars, I award 80% of costs against the applicant Precision Measures Limited.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :   Freehills Patent Attorneys

Patent attorneys for the opponent  :   Phillips Ormonde & Fitzpatrick