Raychem Limited v Global Lightning Technologies Pty Ltd (Formerly Critec Pty Ltd)

[1996] APO 57

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 648596 in the name of RAYCHEM LIMITED

Title:          Circuit Protection Device

Action: Opposition under section 59 of the Patents Act 1990 by GLOBAL LIGHTNING TECHNOLOGIES PTY LTD (formerly Critec Pty Ltd); including an application under reg. 5.10(4) by RAYCHEM LIMITED to serve further evidence

Decision:          Issued            .

Abstract

Lack of novelty was contended on the basis of the prior use of an item of manufacture made by the opponent.  While the evidence established that sale of the device to the public had taken place, it was held that there was insufficient evidence as to what the device actually comprised to justify a finding of lack of novelty.

Lack of inventive step was contended on two bases.  In relation to the first of them it was held that although the cited document would have been ascertained and understood, it would not have been regarded as relevant.  In the second, it was held that although the document involved would have been ascertained, understood and regarded as relevant and the common general knowledge was as alleged by the opponent, the teaching of these respective pieces of information was not such as to lead to the present circuit arrangement without invention.

The claimed invention was, in part, defined by result.  When construed in the light of the specification as a whole, the ambiguities perceived by the opponent in the claim were non-existent.

The applicant raised a procedural issue of whether a substantial portion of the evidence in reply was actually in reply, and therefore admissible.  It was held that substantially all of the evidence in reply did properly meet the requirements for the admissibility of such evidence, especially in light of it being mainly of a standard textbook nature and in light of the minimalist way in which the opposed specification was drafted.  Moreover, as regards evidence as to the construction to be given to the specification, the construction to be given to the specification is ultimately for the tribunal to determine.

The ruling that substantially all the evidence in reply which was objected to was admissible rendered otiose the request under reg. 5.10(4).

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 648596 by RAYCHEM LIMITED, opposition thereto by GLOBAL LIGHTNING TECHNOLOGIES PTY LTD (formerly Critec Pty Ltd), as well as an application under reg. 5.10(4) to serve further evidence.

background

Application 648596 was filed on 27 September 1991 under the provisions of the Patent Cooperation Treaty as PCT/GB91/01668 claiming priority from a United Kingdom application 9021222.6 filed on 28 September 1990.  That application was published under the PCT as     WO 92/06523, and in Australia was allocated the application number of 86486/91.  The application entered the national phase of processing on 26 March 1993, having undergone preliminary examination under the PCT.  The application was advertised accepted on 28 April 1994, and on 27 July 1994 the opponent (then Critec Pty Ltd) filed a notice of opposition.

A statement of grounds and particulars was served on the applicant on 18 October 1994.  On 21 November 1994 the applicant sought a direction from the Commissioner that the opponent provide further and better particulars, and in response the opponent filed an amended statement. The amendment was allowed 1 May 1995.

The evidence in support, evidence in answer and evidence in reply was duly served, with some extensions of time, on 13 April 1995, 13 October 1995 and 12 January 1996, respectively.

On 22 February 1996 the applicant notified the Commissioner by correspondence that it objected to certain aspects of the opponent’s evidence in reply as not being strictly in reply.  The applicant sought permission from the Commissioner under reg. 5.10(4) to file further evidence or, alternatively, requested the Commissioner to “strike out” the evidence in reply.  The Commissioner proposed terms for granting permission to file further evidence.  The opponent objected to the terms, whereupon the applicant requested a hearing on the reg 5.10(4) issue.  The hearing was set down for 6 June 1996.  On 4 June 1996 the applicant withdrew its request for a hearing, and requested the matter be dealt with at the hearing of the substantive opposition.

A hearing was then set down for all three matters - the substantive opposition, the reg. 5.10(4) application and the admissibility of the evidence in reply - for 19 to 21 August 1996 in Canberra.  In the event, the hearing was completed by the end of the second day.  The applicant was represented by Tim Staley assisted by Peter Treloar, patent attorneys of the firm Griffith Hack & Co, Sydney, and the opponent was represented by Peter Smith assisted by Richard Ollerenshaw, patent attorney and technical assistant, respectively, of the firm Carter Smith & Beadle, Melbourne.

THE SPECIFICATION

The specification is entitled “Circuit Protection Device”, and commences by stating that the invention relates to the protection of telecommunications equipment from voltage transients.  It goes on to explain what is meant by “voltage transients”:

“Voltage transients may be produced in electrical circuits by a variety of methods, for example by lightning, electrostatic discharge or pulses generated by operation of electrical equipment.  These phenomena may all induce very large currents on cables and structures such as, for example telecommunications equipment, aircraft, and ships which can penetrate and damage electrical systems, either causing hardware damage such as semiconductor damage or electronic upset such as transmission loss or loss of stored data.

Electrostatic discharges are extremely fast discharges from a capacitor such as a human body.  These discharges, because they can be so local, present a great threat to the individual electronic components.  Induced electrical transients caused by lightning represent a threat to electrical/electronic equipment especially in telecommunications equipment.”

Next, the specification gives a consistory statement, which reads:

“According to the present invention, there is provided an arrangement for protecting telecommunications equipment from a voltage transient, which comprises a voltage clamping device connected or arranged to be connected between a current-carrying line of the circuit and ground, a capacitor having a capacitance up to 1mF connected in series with the voltage clamping device, an inductance of from 1mH to 100 mH series connected in the line, and a high-energy foldback device connected or arranged to be connected between the current-carrying line and ground, under normal operating conditions, the arrangement acting as an LC filter whose high frequency break-point is determined by the capacitance of the voltage clamping device (and any additional capacitor optionally connected in parallel therewith) and the inductance and is in the range of from 1kHz to 10MHz, the high frequency break-point falling when the arrangement is subjected to a voltage transient sufficient to cause the voltage clamping device to conduct, to a value that is determined by the values of the capacitor and the inductance.”

The circuit arrangement of the invention is represented diagrammatically by the following part-rendering of Fig 1 of the drawings accompanying the specification:

1  - current carrying line
1’ - ground
2  - capacitor
3  - voltage clamp or foldback device
4  - inductance
5  - high energy foldback device
6  - PTC device

The remainder of the description in the specification consists mainly of the specifying of particular preferred circuit components to be used in the circuit described in the consistory statement.  However, additionally, there is some description of the operation of the circuit and the problem addressed by it, as follows:

“.......Where the capacitance is 100 times that of the voltage clamping device the high frequency breakpoint should fall when subjected to a transient, to about one tenth the frequency of the break point under normal operating conditions.

The arrangement according to at least a preferred embodiment of the invention has the advantage that under normal operating conditions it acts as a low pass filter with a relatively high break point, but that when it is subjected to a transient its high frequency gain is immediately reduced significantly.  Thus, for example, where the break point falls to one tenth of its original frequency the gain magnitude at frequencies above the normal operating break point will be reduced by 40 db.

The high-energy foldback device employed in the arrangement is intended to protect the circuit against higher energy, longer duration overvoltages.  It may, for example, comprise a spark gap or gas discharge tube (GDT), or a voltage controlled triac, connected between the conductor and ground for shunting high energy transients to ground.  Such components can, in some circumstances, cause damage to the circuit they are used to protect by forming pulses having very rapidly changing voltages.  For example, if a GDT is subjected to a transient that has a rising edge of 1kV us^-1 it may switch at, say, 500 V whereupon the transient voltage falls to zero in about 1 ns, thereby causing the transient that is transmitted to have a falling edge of 500kV us^-1.  Such a rate of change of voltage can cause permanent damage to the circuit load.  However, in the present invention, the reduction in the break point frequency caused by switching of the voltage clamp device will reduce the slope of the falling edge of that part of the transient that is let through the arrangement.”

The specification concludes with eleven claims.  Apart from an omnibus claim (claim 11), only claim 1 is independent, claims 2 to 10 being appended to claim 1.  Claim 1 is coterminous with the consistory statement (supra).

EVIDENCE

The evidence in support consists of the following:

·a statutory declaration by Dr Stephen John Gumley, Chief Executive Officer of the opponent company; this declaration sets out the state of the prior art to the present application, and in doing so refers to a number of published documents attached as exhibits to the declaration; the declaration also cites an instance of prior use, namely, the circuit device made and sold by the opponent company under the name of “Type SLP10-K-3” (hereinafter, as at the hearing, this will be contracted to “K3”, as in, for example, “the K3 device”).

·a statutory declaration by Stuart William Armstrong, an employee of the opponent company; this declaration gives evidence as to the prior use of the K3 device, its configuration and its circuit characteristics

·a statutory declaration by David Craig Willis, an employee of Telecom Research Laboratories (TRL); as part of his duties at TRL he carried out tests on the K3 device, and in this declaration he presents evidence of the results of those tests and compares the K3 device with the present invention.

The evidence in answer is as follows:

·a statutory declaration by Dr David Mackerras, a retired Associate Professor of Electrical Engineering at the University of Queensland and an expert in lightning damage prevention and protection from electromagnetic hazards; using circuit analysis in the time and frequency domain he concludes that the K3 device in its various manifestations is, under normal operating conditions, a first order low pass filter, that is, an RC filter, compared with the arrangement of the present invention which is a second order low pass filter, that is, an LC filter

·a statutory declaration by Dr Anthony David Stokes, an Associate Professor of Electrical Engineering at the University of Sydney and an expert in the protection of electrical equipment from lightning phenomena; like Mackerras he also considers that the K3 device is an RC filter, in contradistinction to the present device, which is an LC filter

·a further subsequent  statutory declaration by Stokes in which he compares claim 1 of the application in suit with various published documents referred to in the statement of grounds and particulars and in the evidence in support.

The evidence in reply is:

·a further statutory declaration by Stephen Gumley, in which he alleges that there are errors in the methodology of Mackerras and Stokes, and provides “a full technical analysis at a fundamental level” of circuits of the type under consideration here

·a statutory declaration by John Richard Gumley, founder and Chairman of the opponent company, in which he addresses the evidence of Mackerras and Stokes by outlining the evolution of RLC filter circuits for lightning and transient protection of telecommunications equipment and discusses RLC filter circuits in relation to the present invention and the K3 device

·a statutory declaration by Dr Arthur James Lowery, an Associate Professor and Reader in the Department of Electrical and Electronic Engineering at the University of Melbourne and an expert in lightning and nuclear electromagnetic pulse protection circuitry; he comments on the declarations by Mackerras and Stokes and on the operation of the device of the present invention and the K3 device

·a statutory declaration by Philip John Jones, an employee of the opponent company with a background in telecommunications, in which he calls into question the Mackerras and Stokes approach; in addition, he reasons that the present invention is obvious based on the disclosures in United States patents 4758920 and 4095163 (particularised in the statement of grounds and particulars) when each is combined with the common general knowledge

·a statutory declaration by Dr David John Head Lewis, a lecturer in electrical engineering at the University of Tasmania, in which he performs a circuit analysis of the present arrangement and that of the K3 device and challenges what is stated in the present specification and in the declarations by Mackerras and Stokes.

I will discuss the evidence in more detail, where appropriate, in my decision.

THE HEARING

As I have already mentioned, leading up to the hearing which eventually took place, the applicant indicated it objected to much of the opponent’s evidence in reply as not being strictly in reply.  Prior to the hearing the parties took part in what seem to have been fairly extensive negotiations over the evidence.  Some of the objected-to evidence was withdrawn, while in other instances the applicant agreed to withdraw its objection to the evidence.  However, there remained an extensive hard core of evidence whose admissibility the parties could not agree over, and it fell to me decide whether that evidence was in fact admissible.  The applicant’s request to file further evidence was intended to provide me with the option of allowing further evidence if I considered that aspects of the evidence in reply were indeed not in reply but ought nonetheless be available for the purposes of the opposition.

At the hearing, in a brief introductory statement Mr Staley identified the three major issues to be decided were:

(1) Is the claimed invention a patentable invention in accordance with sec 18(1)(b)(i) and(ii); other aspects of patentability, such as compliance with sec 40, were not issues before the hearing.

(2) Has the opponent filed additional evidence in support as part of its evidence in reply.

(3) The order in which the hearing was to proceed.

By mutual consent it was decided to address the evidence in reply matter first.  Mr Staley began by outlining the rules of natural justice, and then drew my attention to fact that the onus is on the opponent in these proceedings, citing the well-known quote from Microcell Ltd.’s Application, 102 CLR 232 that:

“it is well settled that the Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid”

Other cases on this point referred to by Mr Staley were Montecatini v Eastman Kodak (1971) 45 ALJR 593 and Stamp v Powell, (1918) 24 CLR 339.
Mr Staley went on to quote Phipson (The Law of Evidence), 9th edition:

“evidence in reply, whether oral or by affidavit, must as a general rule, be strictly confined to rebutting the defendant’s case, and must not merely confirm that of the plaintiff.”

and Graham J in Ernest Scragg & Sons Ltd’s Application [1972] FSR 219:

“when the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent’s case, seek to adduce additional evidence to strengthen his own case.”

Mr Staley also cited a Patent Office decision on (inter alia) evidence in reply, Optech International Ltd v Buxton Micrarium Ltd, 28 IPR 649.

He summarised the applicant’s objection to the evidence in reply thus:

“The opponent’s evidence in reply is not in rebuttal, but in fact goes further to support the case of the opponent by in effect adding evidence in support of the case.  After the applicant had closed its case, the opponent sought by their evidence in reply to strengthen their case, not merely to rebut the applicant.”

Following this the hearing went through a phase in which each item of disputed evidence was commented on by each of the parties.  Due to the complex and extensive nature of the evidence involved and its interaction with the remainder of the evidence, I deferred giving a ruling on whether the disputed evidence was in fact admissible, except in one straight-forward situation.  With the agreement of the parties the hearing proceeded on the basis of all the evidence, with the understanding that if I concluded that the evidence was not admissible I would deem it not available for consideration in the deciding the matter, or allow the applicant to file further evidence.

Mr Smith then presented the opponent’s case for lack of novelty of this invention.  In essence, the opponent’s position was that:

“.....if we are very generous here and give Raychem a generous interpretation of LC filter in claim 1, and we say that what they mean is a second order filter - and this is an interpretation that we don’t necessarily concede - K3 is clearly prior art because it is a second order filter (it must be, because it has two reactive components).  The only issue then is when the second order performance cuts in.  And it doesn’t really matter for the purpose of anticipating claim 1, because in the prior art we’ve got second order performance, and therefore we have anticipated claim 1.”

He also presented what he termed “an obscure argument” that if I were to find that the Raychem device is an LC filter and not an RLC filter, but the K3 is RLC filter, then the K3 is still an anticipation.  This was on the basis that an RLC filter is a subset of  LC filters.

In response, Mr Staley firstly  drew attention to the fact that only three of the eight statutory declarations in the opponent’s evidence were by independent experts, compared with the two independent experts for the applicant.

The applicant’s first line of defence against the K3 device was that it had not been established that the circuit in regard to which prior use was alleged included an inductance falling within the range of values defined by the claim.  In particular, he observed that the K3 device is said by the opponent to be the subject of petty patent 590491 by John Gumley, yet the specification of the patent makes no reference to inductance or to any of the resistors as being wire-wound resistors.  Willis and Armstrong identify the K3 device with petty patent 590491, but do refer later in their evidence to the use of a wire-wound resistor in the K3 device.  However, Mr Staley noted that a circuit diagram for a precursor to the K3 device (no circuit diagram for the K3 device was in evidence) specified a value for parasitic capacitance, but not inductance.  In any case, as Mr Staley also noted, the document containing the circuit diagram and a similar document relating to the K3 device (both Telecom test reports) appear to be confidential.

The applicant’s second line of defence, in case the first failed, was that even if the K3 device did have a 2mH inductance, it still did not anticipate claim 1, because claim 1 required an LC filter behaviour (essentially, a single breakpoint and -40db gain per decade) both before and after clamping.  It was the applicant’s contention that the K3 device did not produce this effect.  A considerable amount of technical argument and discussion between the parties took place over this issue, which I will detail further later in this decision.

In response, Mr Smith agreed that non-independent witnesses should be given less weight, but said that in the absence of contradictory evidence, the tribunal must accept the evidence of witnesses whether they be independent or not: in this case there were three witnesses saying that K3 devices with wire-wound resistors were sold in Australia before the priority date of the claims.  He also stated  that the opponent had never tried to indicate that the device disclosed in petty patent 590491 was an anticipation, but the commercial version of the device disclosed in that patent used a wire-wound resistor.

Mr Smith then provided a rebuttal of the technical points put by Mr Staley.  In essence, he argued that it was conceded by the applicant’s declarant Mackerras that the behaviour of all second order filters is determined by the relative values of R, L and C, and that fact clearly made the K3 device anticipatory prior art.

Mr Smith further submitted that the claims are unclear, because a competitor does not know how far to go before he is infringing the claim or not, because it was not clear at what values for R, L and C a circuit changed character from being an LC circuit to an RLC circuit, that is, goes from being a second order filter circuit to a first order filter circuit, and vice versa.  In this regard he cited Lumenyte International Corporation v Light Transmission Cables Pty Ltd, 31 IPR 527, stating:

“This is not a puzzle at the edge of the claim [per Lumenyte International v Light Transmission Cables].  It is the whole crux of the invention, and Raychem has not told us how to get to the outside of the claim, or how close we can come with our various filter performances without becoming an infringement.”

Finally, Mr Smith contended that we are not told by the specification that we should try and achieve the 40db effect before and after clamping -  a feature the applicant appeared to be relying on to support its case.

In relation to the ground of obviousness, Mr Smith drew my attention to a number of attachments to the first Stephen Gumley declaration which are copies of documents published before the earliest priority date of the claims in suit.  He also referred to a number of patent specifications.  What these show, according to Dr Gumley’s evidence, is that it has been known for 25 years to protect power distribution circuits against voltage transients by using arrangements of a primary clamp, a secondary clamp and a filter having an inductor and giving a 40 db drop-off (that is, a -40db gain).

One of the documents attached to the Stephen Gumley declaration - a catalogue for a transient suppressor device having the trade name ‘ISLATROL’ made by a competitor of the present opponent - refers to some US patent numbers, one in particular being 4095163.  In relation to this, Mr Smith  submitted:

“Because of the fact that product catalogues were regularly received by most designers - probably every designer in the industry- and the fact that one of these catalogues referred to a list of US patents, it is not unreasonable to expect that the person skilled in the art would have been aware of the patents in this area, and bearing in mind that in 1989 Critec was the only manufacturer in this area of transient protectors in Australia and was basically out to compete against manufacturers in other countries - particularly the United States, I don’t think it is unreasonable to assume they would have been conscious of other patents and would have had a databank of what was around.  I therefore suggest they would have been aware of US 4095163.”

Mr Smith went on to assert that 4095163 (as well as further development of this device, US 4156838, also mentioned in the ‘ISLATROL’ catalogue) is the same as the present device except that it does not have a GDT primary clamp.  He attributed this to the fact that that the arrangement of US 4095163 is intended for a power circuit, and GDT’s are not used in power circuits because once initiated they will not turn off.

Mr Smith then applied the problem-solution approach to determining whether an inventive step exists, adopting the methodology set out in Part 4 of Volume 2 of the Australian Patent Office Manual of Practice and Procedure.  He noted the following points:

·the first step is to determine the problem that has to be solved, and the problem with the Raychem specification is that it does not give any insight into the problem that has to be solved

·the person skilled in the art is a person responsible for designing transient protectors in Australia at the earliest priority date of the present specification., and the only people this applies to are those at Critec

·US 4095163 is a document that the person skilled in the art could be expected to have ascertained, understood, and regarded as relevant

·it is common general knowledge that two-stage clamping is well known, particularly in transient protectors relating to telecommunications circuits, as is evidenced by the various catalogues and patent specifications previously adverted to on this point.

Mr Smith then put the opponent’s case on obviousness thus:

“I want to combine US 4095163 with common general knowledge and land straight onto the Raychem device.  We have got two-stage clamping which has been around for 25 years, and appears in 80% of patent specifications relating to telecommunication devices in this area and we have got a document which has been ascertained, understood and regarded as relevant and which combined with common general knowledge gives you a circuit which has two stage protection: a low-pass LC filter and a primary and a secondary clamp - exactly the Raychem circuit.............

Everybody for the past ten or fifteen  years has accepted that once you disclose the general principles of a circuit the person skilled in the art goes out and designs a circuit to have characteristics to fit the circumstances.  So there is nothing inventive in saying we want a filter that is a bit better and has a bit sharper drop-off when the filter goes from the pass-band to the attenuation band..............

The person skilled in the art would be familiar with transient protectors in power circuits and telecommunications circuits.  He would be actually aware that the only reason a power circuit did not have a GDT would be because it was a power circuit.  I would almost go so far as to say that he did not need to have all that common general knowledge to know that you could put a GDT in there.”

Mr Staley’s response to these submissions was confined to two aspects, which are:

·the applicant did not agree that two-stage clamping is common general knowledge

·US 4095163 would not have been “ascertained, understood and regarded as relevant”.

In support of the latter point, he quoted from a response filed by the applicant to an International Preliminary Examination Opinion issued during the international phase of the present application.  The opinion had apparently taken a similar line to that argued by the opponent in the current proceedings on the question of whether the present invention lacked an inventive step over US 4095163.  The gist of the applicant’s response, which had apparently been successful, to this opinion had been that the purpose of the invention in US 4095163 is to reduce ringing effects of the random transient pulses at the load, and this is distinctly different to the purpose of the present invention.

Mr Smith countered this with an alternative approach based on the test for novelty used in Griffin v Isaacs, (1938) 12 ALJ 169. This approach required that US 4095163 be read in light of the common general knowledge constituted by the use in the art of GDT’s as primary clamps.

DECISION

Circuit Theory

A considerable amount of the evidence and submission in this matter concerned a mathematically-based theoretical analysis of aspects of filter circuit operation.  The particular circuits of interest come under the general title of “RLC” filter circuits, that is, filter circuits having as components resistors, capacitors and inductors.  Filters comprising subsets of these components, namely RC, LC and RL filters are well known in the art.  Of these, only the first two are of direct interest in this matter.  “RC filter” and “LC filter” are terms of art, and presumably would have a definite connotation to the person skilled in the art.  RC filters are labelled as first order filters, because their attenuation characteristics are described by a first order differential equation giving a -20db/decade gain.  LC filters are labelled as second order filters, because their attenuation characteristics are described by a second order differential equation giving a -40db/decade gain.  The particular order of differential equation for any given circuit corresponds to the number of reactive components in the circuit.

However, the situation is not quite as simple as this.  While as a practical matter it is possible to put together circuits recognisable by those skilled in the art as being RC or LC, in principle a pure RC or LC circuit cannot be achieved because of what are known as “parasitic effects”.  For example, every circuit will have a parasitic inductance and most, if not all, circuit components will have some parasitic capacitance, even if insignificant.  Therefore, every so-called RC and LC filter circuit is, strictly speaking, an RLC circuit.

The behaviour of an RLC filter circuit having specified values of R, L and C and a load impedance can be represented by what is known as a “Bode plot”.  This is a graph of the gain of the filter against frequency, the latter being a logarithmic scale.  A Bode plot is a graph of the asymptotes of the transfer function for a particular RLC circuit with a specific load impedance.  Every transfer function has two complex frequencies, known as “poles”, at which the transfer function becomes infinite.  All RLC filters have exactly two poles which either are both real, or are complex conjugates of each other.  In the former case the Bode plot will exhibit exactly two breakpoints except in the special situation where the two poles correspond in which circumstance it will have one breakpoint, while in the latter case the Bode plot will exhibit one breakpoint.  A breakpoint is a region on the Bode plot curve where the gain changes from one of three possible values of nil (pass region), -20db/decade (attenuation) and -40db/decade (attenuation) to another of these values.

The nature of a Bode plot will depend on the relative values of R, L, C and the load impedance.  Assuming an appropriate load impedance, where L is insignificant the circuit will exhibit RC behaviour, that is, a single breakpoint changing from pass to -20db/decade gain, at least at lower frequencies.  Where L is significant but R is negligible, then the filter will exhibit LC behaviour, that is, a substantially single breakpoint changing from pass to -40db/decade gain.  Where R, L and C are all in play then two distinct breakpoints will be present.

Evidentiary issue

The applicant has objected that substantial tracts of the opponent’s evidence in reply is not strictly in reply. As it happens, that evidence has had no bearing on the outcome of this opposition. However, because it has potential implications in respect of the awarding of costs, it is necessary that I decide whether or not the applicant’s objection should be upheld. It will be convenient to consider the disputed evidence under three headings constituting the grounds of opposition to which the evidence appears to be directed, namely: compliance with section 40, novelty and inventive step. Only the last two of these are formal grounds of opposition in the present matter.

Section 40

Some of the contested evidence deals with the characteristics of RLC circuits in general, and certain predicted characteristics of the circuit arrangement of the present invention.  In doing so, it alleges ambiguities exist in the wording of claim 1, and there seems to also be an inference that the specification lacks sufficiency. 

Section 40 is not a ground of opposition in this opposition, so any evidence bearing on that issue alone would not be admissible. However, novelty and inventive step are grounds of this opposition, and issues of construction can have a bearing on those grounds. If evidence is relevant to either of these grounds of novelty and inventive step, it will be admissible, even if it is even more pertinent to section 40. The applicant has rightly pointed out that the evidence in reply must, as a general rule (my emphasis) be strictly confined to rebutting the applicant’s case, and must not merely (my emphasis) confirm that of the opponent.  In my view, the evidence in reply which is objected to and which goes to matters of construction is within the bounds of  acceptability for a response to the applicant’s evidence in answer.  Although admittedly the evidence in reply casts a fairly wide net, there are several mitigating circumstances.  In the first place, much of the objected to evidence is of a standard textbook nature.  It is the sort of background that a court might appoint an expert to advise it on, or that a Patent Office tribunal could be expected to have available to it.  Secondly, I note that the present specification takes a rather minimalist approach in the way it is drafted.  No attempt is made to differentiate the present invention from the prior art, and there is only a bare outline of the technical basis of the invention.  It is only when one comes to the evidence in answer that one gains a better insight into the invention.  Finally, it must also be borne in mind that any issues concerning the construction of the specification are a matter of law and any opinion in that regard given in the evidence is not binding on the hearing officer, it being ultimately up to the tribunal to construe the specification, albeit after first instructing itself as to the technical matters involved - see Blanco White, Fifth Edition 2 - 101.

Novelty

No new novelty citation is introduced by the disputed evidence.

Inventive Step

The evidence objected does not rely upon any new published document in alleging lack of an inventive step.  So far as evidence on the common general knowledge and the existence of an inventive step are concerned, apart from the evidence of a standard textbook nature which I have already indicated I regard as being fairly innocuous, the opponent’s evidence, with one exception, does not appear to do any more than reiterate evidence already to be found in the evidence in support.  For example, the applicant has objected to the following statement in the evidence in reply by Stephen Gumley:

“Furthermore, in 1988, for telecommunications protection applications, the combination of RLC filter design (used by Critec in other telecommunications protection products) with capacitor secondary clamp circuits was obvious to any experienced designer once the latter had been invented.”

However, I note that Dr Gumley’s evidence in support contains the following:

“11.  Raychem themselves on page 3 line 6-8 of their patent state that using wire wound resistors to obtain the necessary practical values of inductance is an alternative to using a small inductor.  This is exacly [sic] what Critec had done, in conjunction with the new secondary clamping mechanism, developed, manufactured and used in Australia well before Raychem’s priority date.  Thus, Raychem’s patent application does not add anything inventive to what was well known in the art in Australia prior to September 1990, because there is clear evidence that Critec’s SLP10K3 describes and uses the same technology and inventive step, including the combination of that inventive step with routine LC or LRC filter technology.”

The one exception I have referred to occurs in the evidence in reply of Philip John Jones.  In paragraph 12 of his declaration, Mr Jones states:

“Thus it is established as common general knowledge in the art in Australia prior to 28th September 1990 that low pass filtering is a technique used to suppress overvoltage transients, that the simplest general form of such low pass filters is of the RLC form, that the filter performance may be adjusted by altering the relative values of the three constituent elements, and that stray elements may usefully be employed in such filter arrangements.”

This evidence does not appear to me to be in reply to anything present in the evidence in answer, and is therefore inadmissible.  However, I observe that this evidence appears to do no more than confirm evidence in Dr Gumley’s first declaration in the evidence in support.  Dr Gumley uses the term “‘generic’ technology” instead of “common general knowledge”, but I think that in effect they stand for the same thing.  The fact that the evidence in answer ignores this facet of the evidence in support suggests that this point is conceded by the applicant.

In his evidence Mr Jones goes on to compare two US patent specifications (4758920 and 4095163), read in light of the common general knowledge, with the invention in suit.  This line of attack does not appear in the evidence in support (nor, as to be expected, the evidence in answer) and consequently this evidence also is inadmissible.  Nevertheless, it was particularised in the statement of grounds and particulars, therefore the opponent was entitled to be heard on this point, and it follows that I am required to find, as a question of fact, whether the claimed invention lacks an inventive step in the manner alleged by the opponent.

At the hearing, the applicant emphasised that parties in proceedings such as these must not be denied natural justice.  I have concluded that to admit all of the evidence in question, with the one minor exception I have stated, would not be contrary to natural justice.

Construction of the Claims

At the hearing, initially the parties differed on whether or not claim 1 claimed the defined circuit in situ, that is, connected into telecommunications equipment, but the opponent seemed to eventually accept the applicant’s view that it did not.  I hold the contrary view, since claim 1 appears to be unequivocal that the inductance is connected in the line (of the telecommunications equipment), and similarly with the overcurrent protection device defined in claim 7; it is only in relation to the connection of the voltage clamping device and the high-energy foldback device to ground that the claim merely requires that they be “arranged to be connected”.  Whatever the case may be, for present purposes nothing of significance appears to flow from this, since the claim would still be anticipated by a circuit arrangement per se having the same features as defined, provided it was apparent that the circuit arrangement was intended to be applied in a manner the same as, or analogous to, that defined in the claim.  I observe that that manner of application is, in one sense, namely, the technical field, a fairly narrow one, but that since the claim is non-limiting in terms of the prevailing load impedance the limitation imposed by the technical field of the invention may be more illusory than real.  In any event, I am satisfied that although claim 1 may be somewhat broad in scope in this regard, it is not lacking in clarity.

Claim 1 can be considered as two halves.  The first half simply defines a circuit arrangement by specifying the type of, and parametric values for, its constituent components.  The parametric values are, however, within broad ranges.  The second half of the claim defines the circuit characteristics of the circuit, that is, in effect, it narrows the claim by “defining by result”.  The opponent, and particularly some of the opponent’s declarants, saw significant problems for potential infringers in attributing a precise scope to the aspects of claim 1 which  define by result.  Just what constitutes “an LC filter” was the major concern, since, as I have explained above, even if the circuit consists of components that the addressee of the specification would categorise as an inductor and capacitor, parasitic effects would still exist.  Of even greater concern was that the Raychem specification itself proposed the use of a wire-wound resistor as an inductor, hence, according to the opponent, blurring even further the bounds of the monopoly claimed.  As well, overlying this whole problem was the fact that the claim does not specify any line impedance, other than to state that the arrangement is connected in a telecommunications line.  The opponent was also critical of the reference to the “high” frequency breakpoint” of the LC filter, questioning whether this meant that there were other breakpoints (implying RLC behaviour), and if there was only one breakpoint why the need to qualify it as being “high”?

Having considered the evidence and submissions of both sides, in my view the opponent has gone out of its way to find difficulties in the wording of claim 1 which, when the specification as a whole is properly construed, do not exist.  There is no doubt that defining by result has the potential to cause potential infringers to be uncertain of the precise monopoly marked out by the claim.  However, it is well-established law that defining by result is an acceptable approach, if done properly.  For example in the seminal case on this issue, No-Fume v Pitchford, [1935] 52 RPC 231, Romer LJ said:

“It is said that, having regard to those words, a man skilled in the art would not be able to know how far he could go without finding himself infringing the monopoly.  For the reasons I have already given, it seems to me quite plain that a workman skilled in the art would have no difficulty whatsoever, by making a few experiments, in seeing what he could do without infringing the Patent.  Indeed, it is to be observed, for the reasons that the Master of the Rolls has given, some of which I will deal with presently, that the Defendants have succeeded, apparently without any difficulty, in finding how far they can go without infringing the monopoly.  I cannot, therefore, hold that this claim is void for ambiguity.”

In the same case, Maugham LJ stated:

”.........the only general rule that I know of is that the specification must be as precise as regards the area covered by the invention as the case admits of.  In some cases you can precisely define the area in question; in others you cannot or at least you cannot without great difficulty and much elaboration.  Our Courts in the latter cases have not thought it right to declare the patent bad because the inventor was unable to give anything more than a precise indication of one particular mode of using his invention, with specific materials, temperatures and so forth.”

I consider these sentiments apposite to the present matter.

I am also mindful of the principle stated in Blanco White, Fifth Edition 4 - 702 that:

“The standard of clarity required in the claims necessarily depends on the complexity of the invention to be protected: the claims must be as precise ‘as the subject matter admits of’.  Thus the standard is lower for a difficult invention, and higher for a simple invention.”

It seems to me that the present invention falls within the category of a “difficult” invention.

An associated consideration of relevance to this is the question of the extent of the recourse one may have to the body of the specification in attributing a meaning to words in a claim (sometimes referred to as the “dictionary principle”).  In Decor Corp v Dart Industries, 13 IPR 385, Sheppard J summarised the rules for construing claims. Rule (5) was:

“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.”

In IBM v Commissioner, 22 IPR 417, Burchett J emphasised that so long as a proper inference could be drawn from limitations which may be found in the body of the specification, these may be used to confine the scope of the claims. He quoted, with approval, Taylor J in Martin v Scribal Pty Ltd, [1954] 92 CLR 17 at 102-3:

“....... While it is clear that ‘the function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries within which they will be trespassers’ (per Lord Russell of Killowen in Electrical & Musical Industries Ltd, [1939] 56 RPC 23 at 39), it is equally clear that it is the duty of the court to endeavour to ascertain from the language used the true meaning of any claim or claims. It is not the function of the Court lightly to discard the claims in a specification on the ground that the language used is vague and uncertain.”

In the present claim there is no doubt in my mind that the definition of an LC filter refers to a practical LC filter, that is, an LC filter as would be understood by the person skilled in the art.  While in principle a pure LC filter does not exist, filters having the appellation “LC” do exist in the art and have a definite connotation, even though, strictly speaking they are in fact RLC filters.  “An LC filter whose high frequency breakpoint, etc” clearly indicates that the LC filter has just one breakpoint within a normal operating range of frequencies, which accords with my understanding of the characteristics of a practical LC filter.  The use of the word “high” simply reflects the fact that the filter is a low-pass filter.  Moreover, in my view it would be understood by the skilled addressee that it is an intrinsic quality of LC circuits that their gain approaches -40db after their single breakpoint, and that the present arrangement operates as an LC filter both before and after clamping.

Even if there was merit to the opponent’s argument that there are inherent difficulties with the use of the terminology “LC filter” in the claim, then that would require the addressee to resort to the description part of the specification to ascertain what was meant in the context of the specification by an LC filter.  Once having done so, I am satisfied that the addressee would be in no doubt that the expression “LC filter” meant what I have stated in the previous paragraph.

As regards the opponent’s concern over being able tell whether a particular circuit in situ will infringe, I note that there seems ample proof from its own evidence that the circuit characteristics of a given circuit are eminently predictable - the “few experiments” referred to in No-Fume and Pitchford.  I note, for example, that there are several references in the opponents evidence to a circuit analysis package called “SPICE”.  I accept that some difficulty accompanies the predicting of the load impedance in any given application, but I do not regard that as sufficient reason for considering the present situation as anything other than a legitimate exercise in defining by result.

In light of the foregoing I find that the specification of the opposed application fully meets the requirements of section 40 of the Patents Act.

Novelty

The opponent’s case on novelty is confined to prior user based on the K3 device.  I consider that the evidence satisfactorily establishes that sales of the K3 device to the public did take place before the earliest priority date of the claims in suit.  I think that as much was pretty well conceded by the applicant.  What is contested by the applicant is whether the evidence satisfactorily establishes that the K3 device had a wire wound resistor with an inductance falling within the range of values defined by the claim.  The evidence establishes that the K3 device had a 15W resistor, and it is conceded by the declarants for the applicant that if in fact this was a wire wound resistor it was likely it would have an inductance of around 2mH.

The standard of proof required in these proceedings as to the primary facts is the civil standard, that is, the balance of probabilities: see Dunlop Holding Ltd.’s Application, (1979) RPC 523. It is, however, incumbent upon the opponent to make its case. Mr Smith submitted that a tribunal must accept the evidence of witnesses, whether they be independent or not. This is not entirely correct. In the case of prior user, some corroboration is usually required. For example, in Seiller's Application, [1970] RPC 103, Graham J said at 106:

“In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case.”

Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which it was stated:

“It is essential that an allegation of prior public use should be strictly proved.  Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care.  The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation.”

However, there are at least two Patent Office decisions where the uncorroborated evidence of an independent witness has been sufficient to establish the facts alleged in relation to prior use: Glenwood Systems v Gooden, (1993) AIPC 90-985 and Endurequip v Robyn Ann Roelofs, (1993) AIPC 91- 037, 28 IPR 131.

Turning now to the specific facts of this matter, and bearing in mind the principles outlined above, three declarants who are associated with the opponent company have declared that the K3  device used a wire-wound resistor of 15W/2mH.  In particular, Stephen Gumley in his first declaration states:

“Critec relied on the natural inductance of its long-used wire wound resistors and a capacitor with a value of around 0.1 microfarads”

while Stuart Armstrong ( a Production Manager for the opponent company) declares:

“The line protectors referred to in the preceding paragraphs were manufactured in accordance with the circuit diagram attached hereto and marked Exhibit SWA-3.  The line resistors R1, R2 are 15 ohm wire wound resistors which together with other stray inductance on the circuit provide a measured line inductance of about 2mH.”

and lastly John Gumley  states in his evidence in reply:

“The SLP10K3 had its origins in design of RLC filters for protection of telecommunications equipment (which included wirewound series elements to provide the RLC performance required), to which an inventive step was added (the “capacitor clamp” Australian [petty]patent 590491), plus a number of technical improvements thereafter for solving precise protection problems................

The benefits of the inductive properties of wirewounds have been known for generations.  Had we truly wanted a more “pure” resistance (or not considered that its contribution to LRC filter properties was useful), a cheaper non-inductive unit would have been used in the product.  This would have been closer to a “pure” R value rather than the deliberately chosen complex Z = R + jwL”

There is only one independent declarant for the opponent, namely David Willis.  He is an employee of Telecom (now Telstra) who tested the K3 device in February 1989.  He initially associates the K3 device with petty patent 590491, which the opponent concedes does not anticipate the present invention.  However, later in his declaration he states:

“At the time of testing the Critec SLP10-K3 module in 1989, I believe it would have been obvious to any skilled Electrical Engineer in Australia that the 15W line resistor, which was a wire wound resistor (having some inherent inductance) in combination with the 0.1mF capacitor in the SLP10-K3 constituted an RLC filter..........”

The evidence of these four declarants is all well and good.  Nevertheless, what concerns me is the absence of any physical or documentary evidence to substantiate what is stated in these declarations.  What we have here is not an isolated instance of prior use, as in the Windsurfer case, but a sophisticated article of manufacture, of which, in the words of Stephen Gumley

“..........there were large numbers of units in the field in Australia by the start of the Australian main lightning season summer 1989-90.”

which invites the question of why, just four years later when this opposition was commenced, was it not possible to have in evidence an actual example of the K3 device?  Also, why, given the apparently sophisticated nature of its manufacture and marketing, was it not possible for the opponent to produce manufacturing plans, device specifications and marketing brochures which would have been conclusive as to whether the K3 device contained a wire-wound resistor?  This is especially curious in light of the fact that such documents relating to other  Critec devices are in the evidence.

The opponent does have an independent declarant, David Willis, but I find his evidence less than convincing.  His declaration is made some six years after he tested the K3 device, yet he does not give any indication of how he is able to recall what is presumably the relatively trivial fact that the device circuit included a wirewound resistor.  He has placed in evidence parts of two reports he wrote at the time relating to the K3 device, but these do not contain the information in question, so could not have assisted his memory on the point in question.  (I mention in passing that these reports would appear to have been at least nine and seventeen pages long, respectively, but only two pages, in each case, are in the evidence.)  Indeed, very little detail is given of the testing methodology employed by Mr Willis, but it is not clear how even at the time of testing  Mr Willis became aware that the K3 device included a wire-wound resistor, although one can surmise that his testing probably required that level of familiarity with the device under test.  The evidence contains a photocopy reproduction of a photograph of the predecessor to the K3 device - the K2 device - but most of the circuitry, including the resistors, seems to be inside a housing.

I have no doubt that, as Stephen Gumley states in his second declaration, a wirewound series element has long been in his company’s “box of tools” used to get RLC filter performance, or that LC filters have used extensively by the company in its products.  I am also mindful of the fact that four declarants in all have been prepared to state that the K3 device had a 15W wire-wound resistor.  Nonetheless, in my view there are serious deficiencies in the evidence on prior use.  Having regard to the requirement, on the authorities, that the proof be sufficient in the circumstances having regard to the gravity of the allegation (per Windsurfer), my finding is that the opponent has not satisfactorily established that prior user involving the use of a wire-wound resistor in the circuit arrangement disclosed in petty patent 590491 (the K3 device) has occurred.

Since the K3 device (having a wire-wound resistor) is the only item of prior art the opponent is relying on to establish its ground of novelty, it is my further finding that the opposition on the ground of novelty does not succeed.

Inventive Step

At the hearing, Mr Smith spoke of his difficulty in identifying the problem addressed by the present invention.  I accept that this might often be the case where a novel circuit arrangement is involved, since the invention will often simply lie in the realisation that a particular arrangement of circuit components brings with it advantageous circuit characteristics not possessed by known circuit arrangements and it will not be possible to distil the problem from the solution.  However, the present specification (see the passage from the specification quoted earlier) does appear to identify a form of problem with the prior art which is overcome by the present invention, namely, the rate of change of voltage of pulses transmitted by a GDT primary clamp (referred to as a “foldback device” in the claim) when the (prior art) circuit is subjected to a high energy transient (that is, lightning).  Now, some of the opponent’s declarants have taken considerable trouble to question the technical basis of this purported advantage of the invention, but, as I see it, not too much can be made of this without straying into the issue of the usefulness of the invention (utility).  Therefore, I feel bound to accept at face value the assertions made in the specification that the present invention overcomes the problems of the prior art in the way the specification suggests.

Mr Smith seemed to mainly base his case on inventive step on one particular published document, US 4095163.  Mr Staley submitted that in relation to the present specification, US 4095163 would not have been “ascertained, understood and regarded as relevant”.  I am satisfied that the document in question would have been ascertained and understood, but I doubt strongly that it would have been regarded as relevant.  A general test to establish relevance is:

“..........whether it can be expected that the skilled man will be likely to recognise the document in question as being particularly pertinent to, though it may not specifically solve the problem before him”

(Beecham Groups Limited’s (Amoxycillin) Application, (1980) RPC 261 at 282.)

US 4095163 is specific to power supply applications.  It commences:

“This invention relates generally to suppression circuits for transient noise pulses and, more particularly to a circuit for interruptingly shorting such pulses across the supply.

Transient voltage spikes are common occurrences in cyclic power supply sources and create disruptive variations in the load.........”

It goes on to state the primary object of the invention as being:

“to provide an inexpensive, effective suppression circuit for noise pulses that is operable to reduce ringing or oscillation of the random, transient pulses at the load.”

On the face of it, there seems to be nothing at all in US 4095163 which gives any inkling that that disclosure could be relevant to overcoming the problems relating to GDT primary clamps in telecommunications circuits such as are addressed by the present invention.  While there are no doubt characteristics of filter circuits that workers in the field have been cognisant of in devising the respective circuit arrangements, I think that that is the limit of any interplay between those circuit arrangements.  Put another way, I consider that to have appreciated the relevance of US 4095163 would have required some use of the inventive faculty.

Since I am not prepared to view US 4095163 as being information which a person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area, the opponent’s ground of lack of inventive step based on this document cannot succeed.

As a fall-back position, Mr Smith suggested an approach based on the Griffin v Isaacs decision (supra), predicated on the use of GDT’s as primary clamps being common general knowledge in the art. Even accepting for the sake of argument that GDT’s were in fact common general knowledge as asserted by the opponent, it is difficult to see the subsequent reasoning behind this approach. Reading a document in light of the common general knowledge is at basis an allegation of lack of inventive step (subsection 7(2) of the Patents Act 1990). However, subsection 7(3) requires that any document used for the purpose of establishing lack of inventive step must be reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the art. I have already found this not to be the case.

In his submissions on inventive step, Mr Smith also submitted that the present invention does not involve an inventive step by following a line of reasoning contained in the statement of grounds and particulars, as follows:

“The invention as claimed.........does not involve an inventive step in light of the following:

i) The common general knowledge to the person skilled in the art, namely an electronics/communications engineer, that transient protectors require two stage protection to operate effectively, namely, a slow acting high energy primary voltage clamping device (eg. a gas arrestor) and a fast acting, lower energy secondary clamping device (eg. a bidirectional transient suppressor diode or a metal Oxide Varistor), and that these two clamping devices need to be separated by a series impedance (either a resistor or an inductor) in the line (see documents .........).  The combination of this common general knowledge and the disclosure of Australian Patent 593,437 [equivalent to US 4758920] by Oneac Corporation which adds a capacitor in series with the secondary voltage clamping device thereby introducing a low pass filter which only acts on signals which are of sufficient voltage to cause the secondary voltage clamping device to conduct.”

Australian patent 593437 is said by Stephen Gumley in his first declaration to have the same inventive step as his own petty patent 590491.  In fact, at the hearing, Mr Smith stated that it had been realised subsequent to the granting of 590491 that this patent was anticipated by 593437, and Critec had had to enter into a licensing agreement with Oneac Corporation, the proprietor of 593437.  When represented in circuit diagram form, the disclosure of Australian patents 590491 and 593437 differs from the claimed invention of the opposed application only in that the former arrangement has an RC filter whereas the latter has an LC filter .

I do not think there is any doubt that patent 593437 would have been ascertained, understood and regarded as relevant by the person skilled in the art.  In any case, that was not contended by the applicant.  I am also prepared to accept that the opponent has brought forward sufficient evidence to establish its assertion that the common general knowledge is as stated in its statement of grounds and particulars.

The question thus arises whether the present invention is obvious in the light of that common general knowledge considered together with the prior art information contained in patent 593437?  If so, it will be lacking in an inventive step.

At the extreme, every circuit arrangement could be considered obvious, being simply made up of a number of “fundamental” components.  As I see it, a new circuit will not be obvious if there has been some difficulty overcome in realising the circuit or in realising there are hitherto unrecognised attributes in a particular circuit arrangement; that is, a circuit will be non-obvious if it does not naturally suggest itself to the person skilled in the art.  A number of the opponent’s declarants have, in effect, suggested that the present circuit arrangement does naturally suggest itself.  However, those opinions have been formed with the assistance of hindsight - ex-post facto analysis - and in some cases appear to be predicated upon a construction of the claims - claim 1 in particular - which is unduly broad.

I gather from the evidence that the Oneac circuit was a fairly significant development in the area of transient protection for telecommunications.  The Raychem invention can be seen as building upon this development, resulting in a circuit arrangement with enhanced circuit characteristics.  The inventor has recognised that by incorporating an LC filter with certain specified characteristics in the Oneac circuit there will result in an improvement in that circuit.  My understanding of the Raychem circuit is that there is more to the invention than simply  substituting an inductance for the resistor in the Oneac device.  Whereas in the Raychem device pre-clamping the circuit operates as an LC filter with the LC characteristics determined by the parasitic capacitance of the clamp (and the capacitance of any parallel capacitor) and post-clamping it operates as an LC filter with the LC characteristics determined by the capacitor in the circuit, the Oneac device pre-clamping apparently does not operate as a filter at all, and it is only after clamping, according to the specification, that the arrangement operates as a filter (with RC filter characteristics determined by the capacitor in the circuit).  For instance, US 4758920 states:

“In operation, the series connected resistor 14, capacitor 22 and transient voltage suppressor 24 suppress noise and transient voltage signals having a predefined threshold rate of change and that are above the breakdown potential of the suppressor 24.  This predefined threshold rate of change or frequency response is determined by the component values of the resistor 14 and capacitor 22.”

That the Oneac and Raychem devices should have circuit characteristics so different from each other is a little surprising given the marked similarity of their circuit configurations and component specifications.  This may be attributable to the fact that we are not really comparing like with like, in that there is no suggestion of any significant inductance in the Oneac circuit.  And in any case the Raychem circuit is defined by result to have the characteristics it has.

The upshot of all this is that the teaching of the Oneac disclosure appears quite removed from the present invention.  Moreover, I see nothing in the teaching of the common general knowledge which would justify concluding that the person skilled in the art would have taken as a matter of routine whatever steps might have led from that common general knowledge and the Oneac disclosure, despite the deficiencies in that disclosure, to the invention (see Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at 286). Viewed from the frame of reference of the prior art, the invention required more than the simple replacement of a circuit component of the Oneac circuit with an equivalent one amounting to a mere “workshop improvement” (see, for example, Winner v Ammar Holdings (1993) AIPC 90-971) to the Oneac device.  Accordingly, I find that the claimed invention does not lack an inventive step over Australian patent 593437/US 4758920.

CONCLUSION

As regards the reg. 5.10(4) request to adduce further evidence, the only justification provided by the applicant in support of granting this request was that certain parts of the evidence in reply were not admissible.  Accordingly, the reg. 5.10(4) request is rendered otiose by my finding that the evidence in question does not affect the outcome of this opposition, and I refuse the request.  As regards the substantive opposition, I have found that none of the grounds of the opposition have been established, and so I dismiss the opposition filed by Critec Pty Ltd (now Global Lightning Technologies Pty Ltd).  I direct that the application proceed to sealing, subject, of course, to any appeal being filed to this decision.

COSTS

Costs in these matters normally follow the event, and on that basis should go against the opponent.  I have considered whether some discounting should occur in light of my finding against the applicant in relation to the preponderance of the evidentiary points which were introduced by the applicant and which took up a substantial part of the hearing.  In the end I have decided against this course of action.  In my view, the evidence objected to tested the limits of what is admissible, and the applicant was justified in seeking a ruling on the issue.  I award costs pertaining to the substantive opposition against the opponent.

As regards the reg. 5.10(4) matter, as it seemed to remain in the background without playing any substantial role in proceedings, I do not think it is appropriate to make any award of costs in relation to it, with one exception.  The applicant at first sought a separate hearing on this issue, which was set down for 6 June 1996, and then it aborted the hearing before it could take place.  Therefore, the applicant should bear the costs of this, if any, and I award costs accordingly.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Griffith Hack & Co, Sydney

Patent attorneys for the opponent : Carter Smith & Beadle, Melbourne