RTI Pty Ltd v Scantech International Pty Ltd
[2016] APO 28
•17 May 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
RTI Pty Ltd v Scantech International Pty Ltd [2016] APO 28
Patent Application: 2006220232
Title:On-belt analyser system
Patent Applicant: Scantech International Pty Ltd
Opponent: RTI Pty Ltd
Delegate: Greg Powell
Decision Date: 17 May 2016
Hearing Date: 23 February 2016
Catchwords: PATENTS - section 59 – opposition to the grant of a patent – whether the claimed invention is novel – whether documents publicly available – documents publicly available – lack of novelty not established – whether the claimed invention involves an inventive step – whether prior art would have been ascertained – prior art documents would not have been ascertained – lack of inventive step not established on evidence filed – whether the claims are clear and fairly based – claims clear and fairly based – whether invention is a manner of manufacture – invention is a manner of manufacture – opposition unsuccessful – costs awarded against the opponent
Representation: Patent applicant: N R Murray of counsel and Richard Brown, patent attorney of Davies Collison Cave, Melbourne
Opponent:Helen Rofe of counsel and Charles Yip, patent attorney of FB Rice, Sydney and James Asbury, RTI Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006220232
Title:On-belt analyser system
Patent Applicant: Scantech International Pty Ltd
Date of Decision: 17 May 2016
DECISION
The opposition is unsuccessful.
Costs are awarded against RTI Pty Ltd.
REASONS FOR DECISION
Background
Application 200620232 in the name of Scantech International Pty Ltd (“Scantech”) was filed on 1 March 2006. During the examination period and following acceptance of the application on 8 June 2012, material was brought to the Commissioner’s attention under the provisions of section 27 of the Patents Act. Re-examination of the accepted specification was undertaken in a period of time which overlapped with the filing of a Notice of Opposition by RTI Pty Ltd (“RTI”) on 19 September 2012. Re-examination was completed on 9 January 2013 and the opposition continued on. The evidence in support of the opposition was completed on 12 February 2013. The evidence in answer was completed on 12 February 2014, following a number of extensions of time, and evidence in reply was completed on 7 May 2014. The hearing was held on 23 February 2016.
On 19 February 2015, Scantech filed amendments to the specification. Following an adverse report on the amendments and the filing of further amendments on 8 April, leave to amend was granted and the amendments were allowed on 12 August 2015. Thus, this decision is in relation to the amended specification.
The Specification
The present invention relates to a bulk material analyser which analyses the composition of material such a coal, cement or other mineral products as it is transported on a conveyor belt. The specification notes one form of analyser which utilises a thermal neutron capture and gamma ray production technique known as Prompt Gamma Neutron Activation Analysis (PGNAA). The specification notes that this analyser has a C-shaped housing positioned across the path of the belt, with the open side of the C-shape then being closed with removable side shielding to define a tunnel. The tunnel is fitted with slider panels which support the belt as it passes through the analyser.
The specification notes that this analyser needs to be installed in a shed for protection from the elements and also notes that the slider panels are subject to wear as the belt passes over them. The specification also notes that substantial parts of the conveyor support structure need to be removed for the analyser to be installed and the remaining support structure needs to be configured to ensure the belt has a tunnel-compatible profile applied to it as it enters the analyser.
The object of the present invention is stated to be to “to provide a bulk material analyser that alleviates one or more difficulties of the prior art, or that at least provides a useful alternative”. This is achieved, according to the specification, by providing an analyser which has a tunnel formed from a C-shaped housing with the open side of the C-shape being closed with removable side shielding, in which the belt is unsupported as it passes through the tunnel. That is, the belt makes no contact with any part of the analyser.
The basic invention is best illustrated in Figure 3 which is as follows:
The figure shows a C-shaped housing 1 closed with a removable side shield 8 to form a tunnel 9 through which belt 3 passes. A radiation source 12 (typically Cf-252) is provided in a base 13 of the tunnel and detectors 14 are located above the tunnel. In a preferred embodiment, the specification states that the width of the analyser (or depth in the case of figure 3 shown above) is less than the width of the spacing between the idler rollers that support the belt.
No slider panels are present so the belt is in an elevated position relative to the base of the tunnel. The specification states that it had been previously thought that it was critical to minimise the distance between the radiation source and material on the belt to be analysed in order to maximise absorption of neutrons in the material. Consequently, prior analysers were designed to have contact between the belt and the analyser using thick slider panels. However, the specification states that it has been found that replacing the slider panels with air makes little difference. As such, the present analyser has a clearance provided between the belt and the base of the tunnel. The specification states that this allows the previous slider panels to be dispensed with, thereby reducing construction and maintenance costs.
The specification ends with 19 claims as follows:
- A bulk material analyser configured to analyse bulk material in the form of coal, minerals, cement raw materials, or the like, including:
a housing defining an enclosed tunnel for receiving a conveyor belt carrying a bulk material to be analysed;
a neutron source disposed below the conveyor belt to emit neutrons into the material in the tunnel for interaction with the material disposed therein; and
a gamma ray detector disposed above the conveyor belt to detect gamma rays emitted from the material in response to the neutron interaction;
wherein the conveyor belt is unsupported by the analyser within the tunnel.- The analyser of claim 1, wherein the belt travels through the tunnel in freely suspended relation so that the belt is not subject to wear within the tunnel.
- A bulk material analyser configured to analyse bulk material in the form of coal, minerals, cement raw materials, or the like, including a neutron source, a gamma ray detector, and a housing adapted to be positioned across a path of a conveyor belt which carries bulk material to be analysed, wherein the housing defines an enclosed tunnel dimensioned to allow the belt to pass above the neutron source, below the gamma ray detector, and through the tunnel without being supported within the tunnel.
- A bulk material analyser configured to analyse bulk material in the form of coal, minerals, cement raw materials, or the like, including a neutron source, a detector, and a housing adapted to be positioned across a path of a conveyor belt which carries bulk material to be analysed, wherein the housing defines an enclosed tunnel dimensioned to allow the belt to pass above the neutron source, below the gamma ray detector and through the tunnel without being supported within the tunnel so that the portion of the belt within the tunnel can be suspended between support idlers external of the tunnel.
- The analyser of any one of claims 1 to 4, wherein the housing is adapted to be positioned across a path of an existing conveyor belt without disrupting the existing conveyor belt.
6.The analyser of any one of claims 1 to 5, wherein the housing includes a C-shaped portion and a removable side portion which allows the housing to be retro-fitted across a bulk material conveyor belt.
7.The analyser of any one of claims 1 to 6, wherein the tunnel is configured to receive a belt of between 600 mm and 1400 mm in width, with a trough angle of between 30° and 45° without requiring any modification to the belt profile.
8.The analyser of any one of claims 1 to 7, including a conveyor assembly with idlers arranged to support the belt at either side of the enclosed tunnel so as to suspend the belt in an elevated position relative to the base of the enclosed tunnel as the belt passes through the tunnel.
9.The analyser of claim 8, wherein the idlers are spaced at between 1.2 and 1.5 metres apart.
10.The analyser of any one of claims 1 to 9, wherein the width of the analyser, in a direction lengthwise of the conveyor belt, is in the order of 1 metre.
11.The analyser of any one of claims 1 to 10, arranged whereby a clearance in the order of 30 mm is provided between the belt and a base of the tunnel.
12.The analyser of any one of claims 1 to 11, wherein extension panels are fitted either side of the tunnel to provide protection adjacent the analyser and external of the tunnel, from radiation emissions generated by the neutron source within the analyser.
13.A bulk material analyser configured to analyse bulk material in the form of coal, minerals, cement raw materials, or the like, including:
a housing defining an enclosed tunnel for receiving a conveyor belt carrying a bulk material to be analysed;
a neutron source to emit neutrons into an interaction region within the enclosed tunnel for interaction with a bulk material disposed therein; and
a gamma ray detector disposed above the interaction region to detect gamma rays emitted from the material in response to the neutron interaction;
wherein the neutron source is disposed below the interaction region and a conveyor belt carrying the material is unsupported in the interaction region so as not to be subject to wear in the interaction region.14.The analyser of any one of claims 1 to 13, including lifting points at an upper section of the housing.
15.The analyser of claim 14, wherein the lifting points are provided by eye-bolts.
16.The analyser of any one of claims 1 to 15, including a canopy for protecting the analyser.
17.The analyser of any one of claims 1 to 16, wherein the neutron source and detector are configured for analysis using Prompt Gamma Neutron Activation Analysis (PGNAA).
18.The analyser of any one of claims 1 to 17, including multi-channel analyser electronics, wherein the gamma-ray detector and the multi-channel analyser electronics are located within a common air-conditioned, temperature-controlled detector enclosure.
19.A bulk material analyser configured to analyse bulk material in the form of coal, minerals, cement raw materials, or the like, substantially as hereinbefore described with reference to the accompanying drawings.
The Opposition
RTI opposed the grant of a patent on the basis of:
(i)lack of novelty;
(ii)lack of inventive step;
(iii)lack of manner of manufacture; and
(iv)non-compliance with section 40(3)
Evidence in support consists of declarations by:
(i)Meron Lewis (Lewis) dated 9 December 2011 with exhibits MEL–1 to MEL–9;
(ii)Clinton Lingren (Lingren 1) dated 10 July 2012 with exhibits Exhibit 1 and Exhibit 2;
(iii)James Freeman (Freeman) dated 13 July 2012;
(iv)Clinton Lingren (Lingren 2) dated 6 December 2012 with exhibits CL–1 to CL–6; and
(v)Mark Alexander Horsburgh (Horsburgh) dated 29 January 2013 with exhibits MAH–1 and MAH–2
It is noted that these declarations were also filed in the opposition to innovation patent 2011100234, which is a divisional application of the present application.
Evidence in answer consisted of declarations by:
(i)Andrew Roland Harris (Harris 1) dated 13 May 2013 with exhibit ARH–1. Exhibit ARH–1 was a copy of Mr Harris’s declaration dated 21 November 2012 in the opposition to innovation patent 2011100234 which itself had exhibits RAH–1 to RAH–4;
(ii)Andrew Roland Harris (Harris 2) dated 12 August 2013 with exhibits ARH–2 to ARH–4;
(iii)Silvère Compos (Compos 1) dated 12 August 2013 with exhibits SC–1 to SC–2;
(iv)Silvère Compos (Compos 2) dated 11 November 2013 with exhibit SC–3;
(v)Kenneth Graham Smith (Smith 1) dated 3 January 2014 with exhibit KGS–1; and
(vi)Kenneth Graham Smith (Smith 2) dated 12 February 2014.
Scantech also filed, as part of their evidence in answer in the present opposition, declarations by Andrew Roland Harris filed in the opposition to innovation patent 2011100234. These declarations are dated 21 November 2012 (i.e. this is the same declaration as that in exhibit ARH–1) (Harris 3), 24 May 2013 (Harris 4), 27 August 2013 (Harris 5) and 2 October 2013 (Harris 6).
Evidence in reply consisted of declarations by:
(i)James Asbury (Asbury) dated 5 May 2014;
(ii)Gregg St Clair (St Clair) dated 2 May 2014 with exhibits GC–1 to GC–9; and
(iii)Clinton Lingren (Lingren 3) dated 5 May 2014 with exhibits CL–01 to CL–22
I will refer to the relevant parts of the evidence where appropriate.
DECISION
Onus of proof
The examination request for this patent application was filed on 17 May 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Clarity
Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400. This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224.
It is a recognised tenet of Australian patent law that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). While noting that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 and Decor Corporation Pty Ltd v Dart Industries Inc (supra)), it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims (see Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 476).
More recently, the approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
RTI submitted that claims 1, 3, 4 and 13 lacked clarity for:
(i)The phrase “enclosed tunnel” in claims 1, 3, 4 and 13; and
(ii)The phrase “interaction region” in claim 13.
Enclosed tunnel
RTI submitted that the specification did not define an “enclosed tunnel”. RTI submitted that the specification did not explain how a tunnel could be fully enclosed and yet operate as a tunnel. They noted that the claim did not require the tunnel to be “partially enclosed” by having open ends.
RTI submitted that the fact that the claims required the housing to define the enclosed tunnel lead to a conclusion that the scope of the claims were not clear since, in RTI’s opinion, there were three possible ways in which the housing could “define” the tunnel. These were:
· The housing, together with other parts of the analyser (such as side shielding), partially encloses the tunnel by forming the tunnel walls. The tunnel is only partly enclosed, because it is open at either end to allow the belt to pass through.
· The housing partially defines a partially enclosed tunnel, in that the housing encloses some of the tunnel by forming part of the tunnel walls, and the rest of the tunnel is enclosed, or formed by other parts of the analyser (such as side shielding). The tunnel is only partly enclosed, because it is open at either end to allow the belt to pass through.
· The housing defines a partially enclosed tunnel, in that the housing is wholly responsible for the partial enclosure of the tunnel (the tunnel is open at either ends).
I note that in all of the three interpretations supplied by RTI, the tunnel is a passageway which is open at either end. For practical purposes, this is consistent with the specification as it allows the belt to pass through. Clearly a tunnel that is closed off at both ends would no longer define a tunnel. Having determined that an “enclosed tunnel” must have open ends, focus then turns toward the word “enclosed”. The question to be asked is what characteristics are given to the tunnel by the word “enclosed”?
It is clear again from RTI’s three options, that an enclosed tunnel of the present invention completely surrounds the belt, with no gaps being present. This matches Scantech’s submissions which were that an enclosed tunnel is a tunnel wherein on the top, bottom and side walls are formed by the housing and there are no gaps. It also matches what is shown in figure 3 as set out above.
Having determined those properties, the next question to be asked is what defines the enclosed tunnel? Here RTI’s submissions drew a distinction between, on the one hand, the tunnel being partially defined by the housing and partially defined by remaining parts of the analyser, such a side shielding (as in their first and second interpretations above) and, on the other hand, the tunnel being completely defined by the housing (as in their third interpretation above). RTI maintained that the latter option had no support in the specification since, in their opinion, the side shield (8) in figure 3 was not part of the housing. They maintained that it was part of the overall analyser.
Scantech submitted that because the housing and side shield are constructed from the same material, the side shield was part of the housing.
From the specification, it is clear that the enclosed tunnel is defined by a C-shaped portion and a side shield. I note that the C-shaped portion is referred to as a C-shaped housing in the specification. It is only in claim 6 that the housing is defined to include a C-shaped portion. However, a patent specification should be given a purposive construction rather than a purely literal one (Catnic Components Limited v Hill and Smith Limited [1981] FSR 60). In my opinion it makes no difference whether the term “portion” or “housing” is used.
In my view, it is clear from Figure 3 (above) that the side shield forms part of the housing as the side shield is constructed in the same manner as the rest of the housing. Broadly construed, the term recites “the housing defining an enclosed tunnel”. There is no requirement that the housing cannot be constructed from more than one component, where the side shield is part of the housing.
In my opinion, the claims are clear with respect to what is meant by the housing defining an “enclosed tunnel”.
Interaction region
RTI submitted that the interaction region was not co-extensive with the enclosed tunnel and did not have precise or exact boundaries. Therefore, in RTI’s opinion, the exact boundary of the interaction region was indeterminate and the claim was not clear.
Both parties referred to and agreed with the opinion of Smith (Smith 1 at 40) which states:
“Although this region does not have precise or exact boundaries, I consider that, at the very minimum, it would correspond to the region located between the neutron source and the gamma ray detector(s). For example, if one drew straight lines that connected each part of the neutron source to each part of the gamma ray detector(s), then the interaction region would certainly encompass all of those lines.”
Smith then continued that:
“In reality the analysis zone would be somewhat larger than this, because gamma rays are emitted in all directions from the material and gammas rays from just outside the region described above would still contribute to the analysis.”
Scantech submitted that the claim defined the location of the neutron source and the gamma ray detector and, upon reading the specification as a whole, the person skilled in the art would know that the analyser functions by detecting gamma rays produced by the interaction of neutrons from the neutron source with the conveyed material inside the tunnel.
The requirement for clarity is understood to be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”
I also note that where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon [1965] RPC 434), EMI v Lissen Ltd [1939] 56 RPC 23).
In my view, it would be unreasonable to construe the interaction region to be any region in which the random scattering of the gamma rays may occur. While the term is indeed broad, the evidence above suggests that a person skilled in the art, upon reading the specification as a whole, would consider that they had been given a “workable standard”. The person skilled in the art would also not be subjected to an undue burden of carrying out an unreasonable number of tests over years of work to determine if their solution was within the scope of the claim. The phrase “interaction region” is clear.
For the reasons above, I consider the claims to be clear. It follows that the claims which contains these terms define the invention.
Fair basis
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood.
RTI submitted that the claims did not satisfy section 40(3) because:
(i)Claims 1, 3, 4, and 13 were not fairly based if the housing which defines the enclosed tunnel was interpreted to require that the housing created the tunnel by itself;
(ii)Claim 1 was not fairly based as it did not limit the analyser to being a PGNAA Analyser;
(iii)Claim 6 was not fairly based since defining a side shielding as part of the housing was inconsistent with the specification; and
(iv)Claim 13 was not fairly based if the interaction region was given the narrow meaning that Mr Smith gave it in his evidence (see paragraph 32 above).
Claims 1, 3, 4 and 13 – the housing defining an enclosed tunnel
In respect of (i), RTI submitted that the specification did not describe an analyser in which the housing by itself defined an enclosed tunnel. In their opinion, the specification only described an embodiment in which the housing, together with a removable side portion, formed an enclosed tunnel. However RTI did not provide any reasoning as to why the removable side wall could not be considered to be part of the housing.
As noted above, Scantech submitted that because the housing and side shield are constructed from the same material, the side shield was part of the housing.
I am inclined to side with Scantech on this issue. As discussed above, the housing and side portion are constructed from the same material and the claim does not explicitly require that the housing itself cannot be constructed from more than one component.
In my opinion, claims 1, 3, 4 and 13 are fairly based.
Claim 1 – not defining a PGNAA Analyser
Issue (ii) was not raised in RTI’s outline of submission, but was raised during the hearing. RTI submitted that claim 1 was not fairly based as it did not define using PGNAA.
As this issue was not previously raised, Scantech was provided the opportunity to submit comments at a later date, but decided to submit comments at the hearing. Scantech submitted that the various embodiments described in the specification only refer to a bulk material analyser.
I do not see a reason why claim 1 must be limited to the use of PGNAA. Claim 1 defines “a bulk material analyser configured to analyse bulk materials in the form of coal, minerals, cement raw materials, or the like ... including a neutron source and a gamma ray detector”. This is clearly disclosed in the specification (in the form of a PGNAA analyser). While the claim is certainly broader than the description it is not inconsistent with it. As such it is fairly based according to the tests laid out by the courts.
Claim 6 – the housing includes a C-shaped portion and a removable side portion
It follows for the same reasons that I have given for issue (i) that claim 6 is fairly based. The specification clearly shows a housing that is constructed from a C-shaped housing and a removable side portion.
Claim 13 – the interaction region
RTI submitted that, if the interaction region was given a restricted meaning exemplified by the passage at [40] of Smith 1 (see [32] above), claim 13 would not be fairly based as the interaction region did not have precise or exact boundaries. They submitted that this interpretation would also encompass arrangements where support rollers were included within the tunnel but outside the interaction region.
During the hearing, Scantech referred to an alternative embodiment of the claimed invention where extension panels 11 are fitted at either side of the enclosed tunnel as shown in Figure 2 below:
This embodiment relied upon by Scantech is problematic since the extension panels do not form an enclosed tunnel. There is no base. As such, it cannot be said to provide a disclosure of an enclosed tunnel with rollers included within the tunnel but outside the interaction region. However, this is of no consequence since, in my opinion, the claims are fairly based.
It must be remembered that fair basis is about consistency between the description and claims. The question is whether the description discloses an interaction region in which the belt is unsupported. There is such a disclosure. It is one of the key features of the invention. As such there is fair basis.
While there may be some fuzziness around the boundary of the interaction region and, therefore, some fuzziness around where the belt is to be unsupported, that consideration impacts the determination of infringement not fair basis.
It follows from the above that RTI has not made out this ground of opposition.
Manner of Manufacture
In their written submissions, RTI indicated that claims 9–11 and 14–16 did not define a manner of manufacture as they merely introduced known features that resulted in a collocation of known integers without a working interrelationship. During the hearing only claims 14–16 were discussed. RTI also raised claim 18 as lacking a manner of manufacture for the same reasons as claim 16. Therefore, I will focus on the issues pertaining to these claims only.
The claims in question introduced the following features (emphasised by bolding):
Claim 14: The analyser of any one of claims 1 to 13, including lifting points at an upper section of the housing.
Claim 15: The analyser of claim 14, wherein the lifting points are provided by eye-bolts.
Claim 16: The analyser of any one of claims 1 to 15, including a canopy for protecting the analyser.
Claim 18: The analyser of any one of claims 1 to 17, including a multi-channel analyser electronics, wherein the gamma-ray detector and the multi-channel analyser electronics are located within a common air-conditioned, temperature-controlled detector enclosure.
RTI relied on Smith & Nephew v Wake Forest University Health Sciences [2009] 82 IPR 467 at [16] to [43]. In that decision a claim was found to be directed to a collocation of integers as one integer (an aseptic package) was found to lack a working relationship with the other integers. RTI submitted that the integers of claims 14–16 and 18 did not have a working relationship with providing an analytic result.
I disagree. While I agree that the features added by these claims do not contribute in any way to the analytic result, RTI’s interpretation is too narrow. Reading the specification as a whole, the problem to be solved appears to be an on-belt analyser with lower installation and operating costs when compared with analysers in the art. This is solved by having the conveyor belt being unsupported by the analyser within the tunnel. It is clear that all of the features incorporated by claims 14–16 and 18 interact with the analyser and, in this sense, contribute to the invention.
For the reasons above, that I consider these claims to be a manner of manufacture.
Novelty
It is a requirement of subsection 18(1) of the Patents Act (the Act) that the invention, so far as claimed in any claim, is novel. Subsection 7(1) states that an invention is taken to be novel unless it is not novel in the light of the prior art. A citation is part of the prior art base for the purposes of novelty if it was published before the priority date of the claim, or information in an Australian patent specification which was published after the priority date where the information has an earlier priority date than the priority date of the claim.
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 it was noted (at [293]–[294]):
“The touchstone for determining whether a prior publication … anticipates a claimed invention, is stated in General Tire at 485 to 486:
When the prior inventor’s publication and the patentee’s claim have respectively been construed by the Court in the light of all properly admissible evidence ... the question whether the patentee’s claim is new ... falls to be decided as a question of fact. If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publications will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
The metaphor of planting the flag has been taken up in this Court. For example, in ICI Chemicals, the Full Court at [51], after noting the metaphor, remarked that, in that case, the appellant’s argument involved the skilled addressee rummaging through a “flag locker” to find a flag which the prior art document possessed and could have planted. In Apotex Pty Ltd and Another v Sanofi-Aventis and Another [2008] FCA 1194; (2008) 78 IPR 485 (“Sanofi-Aventis (2008)”), Gyles J at [91] adopted a different metaphor, remarking that “anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”. Each metaphor underlines the importance of the specificity required in order for a prior art document to anticipate an invention as claimed.” (my emphasis)
During the hearing, the following prior art documents were said by RTI to deprive the claimed invention of novelty:
- SABIA, Inc. XL-5000 On Belt Elemental Cement Analyzer Site Preparation manual, Rev A. November 2003 (XL-5000 Site Preparation Manual)
- SABIA, Inc. XL-5000 OnBelt Material Cement Analyzer Operation Manual, Rev A. June 2004 (XL-5000 Operation Manual)
Where necessary to do so, I will refer to these collectively as “the manuals”.
RTI also relied on prior use of the XL-5000 On Belt Elemental Cement Analyser installed at the Phoenix Cement Company in Clarkdale Arizona (USA) in May 2004. However, the configuration of the XL-5000 is best understood by the manuals. Therefore, the outcome based on an analysis of the manuals will also extend to the consideration of prior use.
Multiple copies of the manuals having the same version and date were submitted by RTI as evidence. At the hearing, it was decided that the contents of each version were substantially identical and there should be no issue in referring to any particular copy over another.
Were the prior art documents publicly available?
Of primary importance in this opposition was whether the XL-5000 Site Preparation Manual and the XL-5000 Operation Manual were made publicly available before the priority date of 1 March 2005. That is, whether the manuals were part of the prior art base for novelty.
Information that is “publicly available” is information that is open for public inspection. It is sufficient that the information is available to a single person, provided that person is able to use the information freely without an obligation of confidence (Gadd v Mayor of Manchester (1892) 9 RPC 516 at page 527; Fomento v Mentmore (1956) RPC 87 at page 105; Monsanto (Brignac's) Application (1971) RPC 153 at page 159).
No evidence that any member of the public has actually examined the information is necessary. However, the information must be easily accessible to the public (Otto v Steel [1886] 3 R.P.C. 109, Plimpton v Malcolmson [1876] 3 Ch.D. 531).
The question of whether the XL-5000 Analyser was publicly available before the priority date is not in dispute here. The sale of the analyser to the Phoenix Cement Company is well documented in the declaration by Gregg St. Clair (St Clair and exhibits 1 - 9). However, the issue is whether the manuals themselves were publicly available.
Some of the evidence below was previously considered in RTI Pty Ltd v Scantech International Pty Ltd [2013] APO 67. However, in order to provide a complete analysis, I will consider them again.
The front page of the XL-5000 Site Preparation Manual and the XL-5000 Operation Manual both contain copyright information including a date. However, it is clear that a mere creation date does not prove to any level of certainty that a document was made publicly available.
RTI provided evidence and submissions to support the assertion of public disclosure of the documents. A number of declarations were made by Clinton Lingren, founder of SABIA, Inc. and Chairman of the Board of Directors.
The front page of the manuals contains the words “proprietary information” and includes the statement that:
“This manual contains information proprietary to SABIA, Inc. It cannot be reproduced without the prior, written permission of SABIA, Inc.”
As I understand, this disclaimer only prevents the manuals from being reproduced and does not impose any requirements for the manuals to be kept confidential (Lingren 3 at [22]).
According to Clinton Lingren, sale and delivery of the XL-5000 included delivery of a copy of the manuals (Lingren 1 at [8]). The site preparation manual was typically provided to customers upon receipt of a purchase order (Lingren 3 at [20]). There was no onus of confidentiality associated with supplying the manuals and equipment.
The XL-5000 analyser was advertised on SABIA, Inc's webpage before 1 March 2005 (CL–03). CL–03 is a representation of the SABIA webpage as it was on 2 December 2003. It is clear a picture of the XL-5000 analyser minus the belt is present on this page. The accompanying text only provides a brief overview of the features of the XL-5000. It appears that detailed information could only be obtained by directly contacting SABIA and there was no mention of the availability of the manuals.
Clinton Lingren (Lingren 3 at [24] also notes that a ½ scale model of the XC-5000 was shown at an exhibition by reseller Kanawha Scales and Systems on 26–29 October 2003 in Shanghai, China (CL–22). As I understand it, the XC-5000 is nearly identical to the XL-5000 with the only difference being placement of the source and detector.
I also note the statement made by James Freeman, Chief Operating Officer of Kanawha Scales and Systems, Inc (Freeman at [4]):
“I have checked the records of the company and I can confirm that the document (JF) was available to our company and for general distribution before 1 March 2005.”
While the above evidence does show that the XL-5000 and XC-5000 were available for sale prior to 1 March 2005, I consider that these statements and evidence fall short of proving to a practical level of certainty that the manuals were publicly available. Although the manuals were made available to reseller Kanawha Scales and Systems, James Freeman's declaration does not indicate what records were checked, nor does he elaborate whether general distribution of the manuals were subjected to any conditions or obligation of confidentiality. No information was provided as to whether the manuals may have been available to be viewed or given away at the exhibition (or if any promotional material was distributed). Consequently, there is no basis to conclude that the manuals were actually distributed to the public without an obligation of confidentiality.
The declaration made by Gregg St. Clair, Vice President of Cement Operations for Salt River Materials Group (St. Clair) describes the history of the acquisition of the Sabia XL–5000 Raw Materials Analyser and the manuals. The Salt River Materials Group is a trade name of the Phoenix Cement Company (PCC).
Looking at the history of the transaction, in 2003 (St. Clair at [10]), PCC contacted several potential suppliers, including Sabia, for a materials analyser. On 9 September 2003 Sabia submitted a proposal (GC–2) for the XL-5000 Raw Materials Analyser. I note that the proposal was customised for PCC and includes details pertaining to PCC's operations such as the plant layout, existing belt and pricing information and is typical of documents classified “commercial in confidence”. The proposal makes no reference to the manuals. Although a non-disclosure agreement was not signed by either party, this does not establish that to a practical level of certainty, that the proposal was made publicly available.
Nevertheless, I note the following statement by Gregg St. Clair (St. Clair at [22]):
“Sabia acknowledged that third parties would directly observe and work with PCC to install the Sabia XL-5000 Raw Materials Analyzer at the Clarkdale Plant and view the manuals. Sabia did not limit PCC 's use or disclosure of the Manuals or place any requirements of confidentiality on any of PCC 's third party contractors.”
Installation of the XL-5000 was conducted by third party contractors (St. Clair at [21]–[22]) which included a radiation specialist. On the whole, I believe that contractors would have been aware of the contents of the manuals and were under no obligation of confidentiality.
I will proceed as if the manuals were publicly available before the priority date.
XL-5000 Site Preparation Manual
The XL-5000 is designed to mount on existing conveyor side rails (1.1 Product Description). The housing forms the top and side walls in an upside down U configuration (Figure 5). This leaves the bottom of the housing open. Into this open bottom, and underneath the conveyor belt that runs through the housing, is inserted the source assembly. The dimensions of the housing are determined at walk down (Figure 5).
During the hearing, Scantech submitted that there was no suggestion that the source box was custom made so that it extended from one side of the housing to the other so as to form an enclosed tunnel with the housing. They submitted that a manufacturer would not go into the trouble of having a custom made source box certified for every customer.
RTI submitted that the document would be read by the person skilled in the art as requiring the source to extend from one side to the other as a bulk analyser with gaps in the housing would not work.
There was no evidence to support RTI’s assertion that an analyser with gaps in the housing would not work and that the person skilled in the art would automatically include such a feature. In any event, RTI’s submissions are bound to fail. As I have found in my discussion under clarity above, the enclosed tunnel of the claimed invention is formed by the housing of the analyser. It is clear from the site preparation manual that the XL-5000 housing only forms the top and side walls. It does not form the bottom wall. Therefore the claims are novel in light of this document.
XL-5000 Operation Manual
Similar to the Site Preparation Manual, the XL-5000 is depicted in the Operation Manual with a housing forming the top and side walls in an upside down U configuration. In this document, the source box is shown in place. However, as with the preparation manual, even if the XL-5000 was constructed without any gaps, the housing does not define an enclosed tunnel. It is clear that the housing only forms the top and side walls. Therefore the claims are novel in light of this document.
Novelty – further reasoning
Even if I am wrong about the requirement for the housing to form the enclosed tunnel, the XL‑5000 is not an anticipatory reference because there is no disclosure in the manuals (and, therefore, in the prior use) of an enclosed tunnel.
While RTI submitted that figure 2-6 of XL-5000 Operation Manual showed that the source box extended from one side of the housing to the other, figures 2-7 and 2-8 clearly show that the source box does not extend all the way across the housing. RTI has not taken into account the possibility that Figure 2-6, being an isometric view of the analyser, has a parallax error. Figure 2‑8, in particular, being an end view of the analyser, is much clearer in disclosing the relative arrangement of the source box and the housing and it clearly shows a gap.
RTI has not shown that the claims lack novelty.
Inventive Step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that the invention must be obvious in the light of the common general knowledge as it existed in the patent area before the priority date, either on its own or together with information in a document, or combination of documents. Subsection 7(3) restricts the documents to be used to support a lack of inventive step to ones that the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant and, where necessary, combined.
RTI submitted that the claims lacked an inventive step in light of the common general knowledge when combined with the XL-5000 manuals.
At this point, given the debate in this opposition over the availability of the XL-5000 manuals, it is necessary to determine if they would have been ascertained understood and regarded as relevant.
Would the XL-5000 manuals have been ascertained, understood and regarded as relevant?
No evidence was provided by either party as to whether the manuals would be ascertained by a person skilled in the art. Therefore I will need to make use of what information has been provided.
Kenneth Smith (Smith 2), Chief Scientist of Scantech International, stated that he would not consider patent literature as a source of technical information as they lacked the required level of technical detail (Smith 2 at (43]–[45]). While there is no mention of the manuals, the amount of technical information normally present in any document appears to be important in determining whether said document would be considered.
100. Silvère Compos (Compos 1 at [13]–[15]) stated that, in 2005, bulk analyser products sold in Australia were dominated by Thermo Scientific with Scantech. Internationally, bulk analysers were sold by Thermo Scientific, Scantech, Sodern, Asys and Sabia. At the time, Sabia did not sell bulk analyser products outside of North America. I find this to be consistent with the evidence provided by RTI (Clinton 3 at [9]–[15] and exhibits CL-6–CL-10).
101. I also note that the manuals were provided upon sale and delivery of the XL-5000. There is no evidence to suggest that the manuals are provided at an exhibition, on the website, available for general distribution to the public or would be typically attached to pricing proposals. RTI submitted that, upon finding the XL-5000 online, further enquiries would have identified the manuals since Sabia's sales agents were in possession of manuals by March 2005 (Opponent outline of submission at [114]). However, as noted above, the fact that the manuals were available for general distribution does not establish to a practical level of certainty, this is the case.
102. In Dyno Noble Asia Pacific Ltd v Orica Australia Pty Ltd [1999] FCA 1369 at [190], the term “ascertained” was interpreted to mean “discovered” or “found”. It is clear that, even if a skilled addressee in Australia was aware of Sabia's bulk analyser and made an enquiry, it is unlikely that they would ever receive a copy of the manuals without a purchase of the analyser. As Sabia's bulk analysers were not sold outside of North America, the skilled addressee could not purchase an analyser and therefore would not be provided with a copy of the manual.
103. On the basis of the evidence present, it is reasonable to conclude that the persons skilled in the art in Australia could not have ascertained the manuals. Therefore the manuals cannot be considered as prior art information for the purposes of subsection 7(3).
104. It follows that RTI has not made out this ground.
Assuming ascertainment, is the invention obvious?
105. Regardless of this conclusion, if I am incorrect in my statement that it would not be reasonable to expect that the persons skilled in the art in Australia could have ascertained the manuals, would the claimed invention be obvious?
106. Scantech submitted (Applicant outline of submissions at [83]) that there would be no motivation to modify the XL-5000 so that the source box becomes part of the analyser housing so that the housing defines an enclosed tunnel.
107. RTI did not provide any specific comments, but submitted that the XL-5000 is directed towards solving the same problem as the claimed invention and discloses a less heavy and bulky solution which could be retrofitted to exiting conveyor belt systems (Opponent outline of submissions at [113]–[117]). RTI also submitted that a C-shaped housing is already known by Scantech's Geotech analyser which was the main product available at the priority date.
108. I do not agree with RTI. While a C-shaped housing might have been known, the issue is whether it would be obvious to incorporate a housing defining an enclosed tunnel in the XL-5000. In view of the evidence before me, I am unable to determine why the XL-5000 would be modified so that it results in an enclosed tunnel. Noting that Graham J had posed the question in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 (noted with approval by the High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]–[53]; 212 CLR 411 at [51]–[53]):
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
There is no evidence that assists me in making this determination. There is simply no apparent motivation to modify the XL-5000 analyser.
109. I cannot find that the claims lack an inventive step in light of the XL-5000 manuals.
CONCLUSION
110. The opposition is unsuccessful on all grounds. RTI has not established that the claims lack novelty, inventive step, manner of manufacture, or fails to comply with Subsection 40(3).
COSTS
111. Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against RTI Pty Ltd.
Greg Powell
Delegate of the Commissioner of Patents
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