Ray Sue & Annett Marie Sue v Arthur Charles Carpenter
[1991] APO 54
•19 November 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No 560731 by RAY SUE and ANNETTE MARIE SUE and Opposition to the Grant of a Patent thereon by ARTHUR CHARLES CARPENTER
Background
Application 560731 for an invention entitled "Tool to remove meat from shells" was lodged on 21 July 1983 accompanied by a provisional specification. The application was completed following the lodgement of a complete specification on Monday 23 July 1984. Acceptance of the application was advertised in the Official Journal on 16 April 1987 and on 15 July 1987 ARTHUR CHARLES CARPENTER lodged a notice of opposition under s.59 of the Patents Act 1952 to the grant of a patent on the application.
Following the completion of the evidence stages, the matter was set for hearing. A hearing took place in Canberra on 10 December 1990. Mr John Forster, patent attorney of Griffith Hack & Co appeared for the applicants and Mr Ken Hamilton, patent attorney of Phillips Ormonde & Fitzpatrick appeared for the opponent.
The notice of opposition lists eight of the grounds of opposition available under s.59 but the evidence and submissions at the hearing were confined to the grounds of lack of novelty, obviousness and non-compliance with s.40.
The Specification
The specification describes as the invention a device to effect the removal of meat from shells. Its use for that purpose in relation to trochus shells is particularly mentioned.
The specification refers to two prior ways to extract meat from trochus shells in these terms:
"Traditionally meat has been removed from the trochus shell by first boiling the shell then pulling the meat from the spirally wound cavity of the shell. The shell is finally cleaned by inserting in the shell a spiral tube which delivers water under pressure to the apex of the shell. In order to obviate the need of boiling the shell attempts have been made to deliver water under pressure to the apex of the shell in order to force the meat from within the shell cavity. This particular method and apparatus has several disadvantages the first of which is that the apparatus is generally unreliable and secondly the shells are not entirely cleaned."
The present invention is then described with reference to two drawing figures. The specification ends with five claims. These are as follows:
"1.A tool to remove meat from the cavity of a shell of spiral configuration, said tool being formed of an elongated member with one end spirally wound and terminating in a blade, said blade being positioned so as to sever a connection between the meat and the shell, and a barb to engage the meat so as to enable removal thereof upon severing the meat from the shell.
2.The tool of claim 1 wherein said one end has several convolutions with said barb spaced about half a convolution from said blade.
3.The tool of claim 1 or 2 wherein said blade is positioned at the extremity of said member.
4.The tool of any one of claims 1 to 3 wherein said one end defines a generally cylindrical configuration.
5.A tool substantially as hereinbefore described with reference to the accompanying drawings."
The claimed invention is relatively simple. It comprises a tool formed of an elongated member with three features of construction, namely:
(a)one end spirally wound;
(b)a blade at the terminal end of the spiral portion; and
(c)a barb.
The features of "blade" and "barb" are characterised in relation to their intended functions.
Section 40
At the hearing Mr Hamilton drew my attention to the definition of claim 3 and compared it to that in claim 1. In my view if one end of the member is spirally wound and terminates in a blade (claim 1) then the blade is at an extremity of the member. In that case, claim 3 would be redundant in the light of claim 1.
The opponent's evidence also suggests claims 2 and 4 are ambiguous or lack clarity. With regard to claim 2 it is suggested that the term "convolutions" causes uncertainty. I am inclined to agree with that view since "convolutions" could relate to the windings of the spiral portion or be a further constructional feature of the tool. There is however no fair basis in the description for the latter possibility and consequently an amendment is needed to the claim so that it clearly defines the invention. Regarding claim 4 it is suggested that the definition "generally cylindrical configuration" renders the claim ambiguous. I cannot agree. It seems to me that the cylindrical configuration arises from the fact that the elongated member at one end is spirally wound. In my opinion, what claim 4 does not encompass is a tool wherein the portion which is spirally wound has a tapered spiral form.
There is, in my view, a further significant defect in the claims and this concerns the "barb" feature. Whilst it is clear that the blade is associated with the spirally wound portion of the elongated member, the definition of the "barb" in
claim 1 is such as to place no clear limitation on its location. In fact it need not even be on the spiral portion. It is clear from the description, however, that the barb is formed on the spiral portion of the elongated member so that after inserting the tool in the shell and severing the meat from the shell with the blade, withdrawal of the tool causes the barb to engage the meat and thus enable its removal.. Consequently claim 1 and claims 3 and 4 when directly appended to claim 1 are not fairly based.
In considering the remaining opposition grounds I will assume that the tool defined by claim 1 has the barb on the spiral portion and is spaced from the blade.
Evidence
The opponent's attack on the application on the grounds of lack of novelty and obviousness is based primarily on the following:
(a)The publication of the opponent's own patent specification 83242/82 (now 534141) on 19 May 1983 and alleged use of the tool described therein before the priority date of the opposed application.
(b)The use of a piece of helically coiled wire with the end portion formed with a hook by fishermen before the priority date to remove cooked meat from trochus shells.
Before referring to the opponent's evidence in this regard I will briefly refer to the disclosure in AU 534141.
(i) AU 534141
This specification discloses a tool for removing an animal from a shell and specific mention is made of trochus
shells. The tool comprises a tubular substantially helical portion joining an attachment portion. Fluid can be introduced to the interior of the helical portion via the attachment portion and an outlet adjacent the free or terminal end of the helical portion permits egress of that fluid. On page 4 at line 7 the following paragraph appears:
"The terminal end 2 may be provided with or adapted to form a cutting edge. The cutting edge may be provided as a separate item attachable to the terminal end of the apparatus. Alternatively the cutting edge may be formed integral with the terminal end of the main portion to provide an integral cutting edge. The terminal end of the main portion may be sharpened or otherwise reduced to a fine edge. The cutting edge ensures that it is relatively easy to insert the apparatus into the trocas shell either through the animal or between the shell and the animal."
The following description from page 5 indicates the intended method of use of the apparatus:
"The method of the invention comprises inserting the apparatus into the mouth of a shell and rotating the apparatus and/or the shell until the terminal end is placed adjacent the apex of the shell. Once the terminal end is adjacent the apex of the shell a source of high fluid pressure is supplied to the attachment portion of the apparatus. The fluid under pressure is forced through the tubular apparatus and into the shell at the apex thereof. The high pressure fluid when introduced in this manner into the shell tends to urge the animal out of the shell."
[Carpenter's application 534141 (formerly 83242/82) was itself subject to opposition action by Raymond Sue but proceeded to grant when the opposition was dismissed.]
(ii) Opponent's evidence
The opponent's evidence in this matter comprises two declarations by Carpenter, the second being filed as further evidence in this matter. The first declaration has two exhibits, namely a copy of the opposed specification and a copy of
Carpenter's specification 534141 as laid open to public inspection. Carpenter's second declaration includes three exhibits each being a copy of a statutory declaration filed in the opposition to AU 534141 and respectively made by:
(i)Mr Tony Irelandes ("Irelandes second Declaration"), dated 17 May 1985
Mr Raymond Sue ("Sue Declaration") dated 20 May 1985
Mr Irelandes ("Irelandes first Declaration"), dated 14 June 1984.
In his first declaration Carpenter declares that he is "a professional fisherman and businessman" having concentrated his activities on the fishing industry since late 1978. He also declares as follows:
In late 1979 I sailed to Darnley Island which is approximately 110 miles north east of Cape York Peninsular. I spent about three months at Darnley Island and during that time I saw how the meat was traditionally extracted from trochus shells. Basically the shell was boiled and then a piece of helically coiled wire with the end portion formed as a hook was inserted into the shell to hook the meat and remove it. Attempts were then made to remove the remaining pieces of meat by flushing the shell with water ejected at low pressure from a flexible hose. This method of hooking the meat was commonly used and well known by trochus fishermen in Australia well prior to July 1983.
10.On page 4 lines 7 to 16 of Australian Patent Application No 83242/82 is described a cutting edge. In my opinion the cutting edge as described is identical in form and purpose as the blade portion defined in claim 1 of the opposed specification. Further I would like to state that this feature was common to the trochus fishing industry prior to July 1983.
11.From my knowledge of the art, the admitted prior art and the publication of Australian Patent Application 83242/82, I consider that prior to July 1983 that all the features of claim 1 of the opposed specification were disclosed and that the combination of these features would have been obvious to me."
Turning to Carpenter's second declaration, in paragraph 9 he states:
"... that the tool as described in Australian Patent Application 83242/82 was used in Australia by myself and others in the trochus fishing industry prior to July 1983."
He also declares:
... I refer to paragraph 11 of the Irelandes second Declaration which indicates that the spiral tool referred to by Mr Irelandes and exhibited in his Declaration dated 14 June 1984 was used prior to the filing date of Australian Patent Application 534141.
...I refer to paragraph 9 of the Sue Declaration which indicates that Mr Raymond Sue has declared to be aware of the use of spiral tubing including a leading apex provided with a cutting edge prior to the filing of Australian Patent Application 534141.
16.... I refer to paragraph 2 of the Irelandes first Declaration which describes prior art methods of removing trochus meat from trochus shells. In particular the first method referred to indicates the use of a copper tubing in a spiral form which was used to remove "trailings" which remain in the shell after the main "mussel" meat has been removed by a wire hook.
17.From my personal knowledge of the art I understand from this paragraph that Mr Irelandes is referring to the traditional method of removing the meat from the trochus shell by using a piece of helically coiled wire with the end portion formed as a hook.
18.I consider that the traditional method of using a hook at the end of a helically coiled wire is equivalent to the barb referred to in claim 1 of the opposed specification.
19.I consider that all of the features of claim 1 of the opposed specification, namely, the blade portion and the barb on a spiral tool were well known and in common use in the trochus fishing industry prior to July 1983.
20.Further I consider that it would have been obvious to combine these features on the one instrument prior to July 1983."
At this point, I see no need to discuss the Irelandes or Sue declarations referred to by Carpenter. It is worth noting however that Mr Irelandes of Mackay, Queensland, declared that he had been a Trochus fisherman for some eight years at the time of his June 1984 declaration.
(iii) Applicants' evidence
The evidence lodged on behalf of the applicants comprises a statutory declaration by Raymond Sue, co-applicant and inventor of the invention claimed in the opposed application. This declaration was filed as evidence in answer to the further evidence of Carpenter (his second declaration). Mr Sue declares as follows:
The purpose of the blade defined and claimed in claim 1 of patent application 560731 is "to sever a connection between the meat and the shell". This purpose and use is completely different from the purpose of the cutting edge referred to on page 4 of application 83242/82 as defined by Mr Carpenter himself.
It is therefore a contradiction for Mr Carpenter to say that in his opinion the cutting edge described in Australian patent application 83242/82 is identical in purpose to the blade portion of the opposed specification. By his own admission, the purpose of Mr Carpenter's tool referred to on page 4 of application 83242/82 is to ensure that it is relatively easy to insert the apparatus into the trochus shell. Mr Carpenter's opinion, as expressed in paragraph 10 of his declaration dated 27 June 1990 appears to have been reached solely in hindsight having read the description and claims in patent application 560731.
In paragraphs 17 and 18 of his declaration of 27 June 1990, Mr Carpenter refers to the traditional method of removing meat from the trochus shell by using a piece of helically coiled wire with the end portion formed as a hook and states that he considers this traditional method to be equivalent to the barb referred to in claim 1 of the opposed specification.
The traditional method using a piece of helically coiled wire with the end portion formed as a hook was always used on shells which had been boiled to cook and soften the meat contained within the shell. It is extremely difficult to remove the raw meat from a trochus shell using the traditional method. There is no market for cooked meat and the invention defined in application 560731 is directed to a tool for removing raw meat from the cavity of a shell. This is achieved by using a combination of a cutting blade and a barb on the tool.
The barb defined in the claims of patent application 560731 is different in purpose (to remove raw meat) from the hook used in the traditional method, and there is therefore no basis for Mr Carpenter's opinion that he considers the traditional method of using a hook at the end of a helically coiled wire to be equivalent to the barb referred to in claim 1 of the opposed specification.
Turning to paragraph 19 of the Carpenter declaration, I refute that a barb of the type defined in claim 1 of patent application 560731 was known or used in the trochus fishing industry in Australia prior to July 1983 and I also refute that a blade "positioned so as to sever a connection between the meat and the shell" as defined in claim 1 was known or used in the trochus fishing industry in Australia prior to July 1983.
Referring to paragraph 20 of the Carpenter declaration, as the hook used in the traditional method was only used on cooked meat, and as the barb defined in claim 1 of 560731 is not equivalent to this hook, I refute the allegation that it would have been obvious to combine these features on the one instrument prior to July 1983. Furthermore, as the tool defined in application 560731 does not require the use of high pressure water it is considerably cheaper to use for removing raw meat than the prior art methods. If the tool were simply an obvious combination of known features it would have been used by those in the trochus fishing industry before July 1983."
Anticipation
Whilst the submissions on behalf of the opponent at the hearing presented an argument that the claimed invention lacked novelty, I am unable to arrive at that conclusion on the basis of the evidence before me.
The opponent has referred to a number of matters in support of its allegation that the claimed invention lacks novelty. The first is the disclosure in the Carpenter specification 534141 of the tool he developed. The Carpenter tool, whilst having a spiral form with a blade at its extremity, has no barb. High pressure fluid introduced into the shell through the tool "tends to urge the animal out of the shell".
The second matter relied upon is the tool used to effect the so-called "traditional method" of meat extraction from a shell of spiral configuration. According to the evidence, such tools consisted of a helically coiled wire with the end portion formed as a hook. Such a tool had no blade to sever a connection between the meat and the shell. Specification 534141 was first laid open to public inspection before the priority date of the present claims and the evidence indicates that the tool used as part of the "traditional method" was known and used in Australia before the priority date. The evidence of Carpenter in paragraph 16 (second declaration) refers to a further tool comprising a copper tubing in a spiral form. This was a tool developed by Irelandes similar to the Carpenter tool without any hook or barb and apparently available before the priority date. It is therefore no more relevant than the Carpenter tool and I need not consider it further.
Thus the evidence before me does not indicate a prior disclosure or prior device which possesses all the features of the tool claimed. The invention claimed is a tool with a spiral portion having both a blade and a barb.
If the so-called "reverse infringement test" is considered for the purposes of a test for novelty (see Meyers Taylor v Vicarr Industries 13 ALR 605), then clearly neither the Carpenter device nor the traditional hook device would constitute an infringement of the invention claimed. Thus on this test, the claimed device does not lack novelty.
Alternatively, using the test of novelty from Griffin v Isaacs [1942] AOJP 739, I arrive at the same conclusion.
Compared to the traditional hook device, the difference the claimed device exhibits is not suggested by the prior device and clearly contributes to the working of the invention. Regarding the Carpenter device, the invention differs by way of the barb feature and the blade "positioned so as to sever a connection between the meat and the shell". I agree with Mr Forster's submission on behalf of the applicants that this combination of blade and barb is a difference over the prior art which clearly contributes to the working of the invention as this combination allows the meat to be severed from the shell and removed in a single operation without the need for any further equipment or steps. Furthermore even assuming that the Carpenter device possesses a blade as defined in relation to the present invention, in my view the barb as claimed is not merely a mechanical equivalent of those features of the Carpenter device (i.e. the fluid system) which are provided to force the animal or meat from the shell.
Consequently, on the evidence before me, I am not satisfied that the claimed invention lacks novelty.
Obviousness
In considering this ground of opposition I note the remarks of Aickin J, with whom the other members of the High Court agreed, in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Limited (1982) RPC 343 at p.346:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not
part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field."
Thus a consideration of obviousness must be made against the background of the common general knowledge in the art in Australia. Guidance as to what constitutes such knowledge is found in Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253, the remarks of Aickin J at 292 being apposite:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
It is important to note at this point that as the invention claimed comprises a particular combination of features, it is necessary to consider for obviousness purposes whether the non-inventive skilled worker in the field would have arrived at the combination claimed. It is also clear from the Minnesota Mining and Manufacturing Co case that patent specifications are unable to provide a basis for the argument that the claimed invention is obvious without evidence that they were part of the common general knowledge at the priority date.
Turning to the opponent's evidence, what does that say about the common general knowledge in the relevant trade or art at the priority date of the claims, i.e. 21 July 1983? In this case, it seems to me that "the art" is somewhat narrower than fishing generally and ought to be confined to activities of harvesting shells of spiral configuration and extracting meat therefrom, activities performed by trochus fishermen, for example.
Firstly, I see nothing in the evidence to establish that patent specification 534141 (formerly 83242/82), which was laid open to public inspection on 19 May 1983, was part of the common general knowledge at the priority date. Clearly Mr Carpenter, who was the applicant and inventor in respect of the invention described in that application, had knowledge of it but there is no evidence that it was part of the body of knowledge of all those in the art. Secondly, I reach the same conclusion with respect to the Carpenter tool, the invention described in specification 534141. Mr Carpenter in his second declaration states that the tool "was used in Australia by myself and others in the trochus fishing industry prior to July 1983". Whilst the Irelandes first declaration suggests that several people may have seen the Carpenter tool before the priority date, there is no evidence before me to establish that it was part of the "common general knowledge".
Thirdly, the other device which is relevant to the obviousness question is the so-called traditional hook device. In paragraph 8 of his first declaration Mr Carpenter states that "This method of hooking the meat [using this hook device] was commonly used and well known by trochus fishermen in Australia well prior to July 1983". There is some support for that conclusion given the references in paragraph 2 of the Irelandes first declaration (where Irelandes refers to his use of such a hook device) and in paragraph 7 of the Sue declaration lodged by Sue in these proceedings. Whilst the evidence, I believe, falls somewhat short of conclusively establishing that the traditional hook device was common general knowledge, the evidence tends to suggest that it was part of that knowledge.
Finally, I feel that it is worth mentioning that Mr Carpenter in his second declaration, at paragraphs 12 and 14, refers to a further tool, the Irelandes tool. There is no evidence that this tool was part of the common general knowledge at the priority date. It is also not apparent from the evidence before me that Mr Sue was aware of this device before the priority date, contrary to what Mr Carpenter says in paragraph 14.
Thus, at best, given the evidence before me, the only element of common general knowledge is the traditional hook device. Clearly, on the basis of that knowledge, I am unable to find that the claimed invention is obvious. I would add that even were the Carpenter tool or specification 534141 part of the common general knowledge at the priority date contrary to my earlier findings on that issue, I am not convinced that a non-inventive worker in the field would necessarily have arrived at the invention. It seems to me that the device of the present invention addresses the problem of meat extraction from a shell of spiral configuration in a manner unlike that of the Carpenter tool, and hence, in the absence of clear evidence to the contrary, I doubt whether no inventive step was needed to arrive at the tool of the invention. Finally, Mr Carpenter's opinions as to whether the invention was obvious bear little weight as he, being an inventor in the art concerned, clearly does not belong to the category of non-inventive skilled workers in the art which is built into the test of obviousness. In my view, this ground of opposition has not been established.
Conclusion
I have found that the opposition grounds of lack of novelty and obviousness have not been established. However I have found certain defects in the claims regarding their compliance with section 40 and thus the opposition succeeds on the ground of non-compliance with the requirements of section 40. As these defects can, in my view, be easily overcome, I afford the applicants an opportunity to amend their specification. I allow them a period of 60 days from the date of this decision in which to request relevant amendments.
In accordance with the general principle that costs follow the event, I award costs against the patent applicants.
(T.R. BRUHN)
Supervising Examiner of Patents
Patent attorneys for the applicants: Griffith Hack & Co, Sydney
Patent attorneys for the opponent : Phillips, Ormonde &
Fitzpatrick, Melbourne
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