RTI Pty Ltd v Scantech International Pty Ltd - [2013] APO 67

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE
RTI Pty Ltd v. Scantech International Pty Ltd [2013] APO 67

Patent:2011100234

Title:On-belt analyser system

Patentee:  Scantech International Pty Ltd
Opponent:  RTI Pty Ltd
Hearing Officer:  P M Spann - Deputy Commissioner of Patents
Decision Date:  16 December 2013
Hearing Date:  9 October 2013, in Canberra
Catchwords:  PATENTS - section 101M – opposition to an innovation patent – novelty – innovative step – clarity – fair basis – patent in relation to claim 1 lacks an innovative step – claims 1 and 3 are not clear and not fairly based – opportunity to amend.

Representation: Patentee: B. Fitzpatrick, Counsel
R. Brown, Patent Attorney,
Davies Collison Cave

Opponent:M. Horsburgh, Patent Attorney,
Fisher Adams Kelly

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2011100234

Title:On-belt analyser system

Patentee:  Scantech International Pty Ltd
Opponent:  RTI Pty Ltd
Date of Decision:  16 December 2013
DECISION
The opposition is successful on the ground that claim 1 lacks an innovative step. I also find that claims 1 and 3 are not clear and not fairly based.
Costs awarded against Scantech International Pty Ltd.
REASONS FOR DECISION
Background

Innovation patent 2011100234 in the name of Scantech International Pty Ltd (Scantech) was filed as a divisional application of Australian standard patent application 2006220232 on 2 March 2011, and has an earliest priority date of 1 March 2005. The patent was granted on 17 March 2011 and subsequently certified on 29 September 2011.
On 12 December 2011, RTI Pty Ltd (RTI) filed a Notice of Opposition, a Statement of Grounds and Particulars, and evidence in support of the opposition being a declaration by Meron Lewis, together with exhibits MEL-1 to MEL-9. An amended Statement of Grounds and Particulars was filed on 29 January 2013.
Evidence in answer was filed by the patentee on 26 November 2012 in the form of a declaration by Andrew Roland Harris (Harris #1) accompanied by exhibits RAH-1 to RAH-4. A further declaration by Andrew Roland Harris (Harris #2) was filed on 27 May 2013 responding to amendments to the Statement of Grounds and Particulars.
Part evidence in reply was filed by the opponent on 4 January 2103 in the form of two declarations by Clinton Lingren (Lingren #1, and Lingren #2 accompanied by exhibits CL-1 to CL-6) and a declaration by James Freeman together with exhibit JF. Evidence in reply was completed on 29 January 2013 with a declaration by Mark Alexander Horsburgh accompanied by exhibits MAH-1 and MAH-2.
An application was made by the patentee for the filing of further evidence. Leave was granted for the filing of further evidence on 10 September 2013, and further evidence was subsequently filed on 23 September 2013 in the form of a declaration by Andrew Roland Harris (Harris #3). Evidence in response to the further evidence was filed by the opponent on 24 September 2013, being a declaration by Dr James Hubert Asbury (Asbury #1).
In preparation for the hearing summaries of submissions were received from the patentee and the opponent. Upon filing a summary of submissions the patentee also filed an additional declaration by Andrew Roland Harris (Harris #4) and, in response, a declaration by Dr James Hubert Ashbury (Asbury #2) was filed by the opponent. Following submissions at the hearing the parties did not wish to pursue these declarations and I formally refused leave for them to be filed as further evidence.
In the hearing I raised concerns in regard to the scope and clarity of claims 1 and 3 and consequently allowed the parties an opportunity following the hearing to file written submissions addressing those issues. In the event the patentee did not file submissions but instead proposed amendments to the claims. These proposed amendments are currently undergoing examination and have been found not allowable. As a consequence I have necessarily limited my decision to the specification as certified.
Grounds of opposition
RTI opposed innovation patent 2011100234 on the grounds of lack of novelty, innovative step, and manner of manufacture; and failure to comply with Subsection 40(3).
Applicable law
The request for examination in relation to the patent was filed on 2 March 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 patent. This includes the amendment to subsection 101N(4) that allows the Commissioner to revoke an opposed innovation patent if satisfied on the balance of probabilities that a ground of revocation exits.
Consequently it appears that 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]; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] 92 FCR 106 at [17]).
The specification
The specification relates to on-belt analyser technology used in the analysis of the composition of bulk materials such as coal or other mineral products. When transported on a conveyor belt, the materials may be subject to analysis using a thermal neutron capture and gamma ray production technique known as PGNAA (Prompt Gamma Neutron Activation Analysis). In this technique a large analyser often up to 9000 kg in weight is placed in relation to a conveyor belt in order create passage through which the belt and material to be analysed passes. A common prior art analyser provides slider panels in order to support the conveyor belt as it passes through the analyser.
The invention is generally directed towards an analyser including a housing comprising a tunnel. Similarly to the prior art, a conveyor belt transports material to be analysed through the tunnel in which the material is irradiated by a neutron source located below the conveyor belt. Neutrons are subsequently absorbed by the material which causes the emission of gamma rays which are detected using an appropriate detector.
According to the specification there are a number of problems in the art which the present invention seeks to overcome. Firstly, the specification at page 1 lines 20-24 discusses the substantial weight and size of the prior art analyser. At page 2 line 1 the specification also notes that various components such as the slider panels in prior art analysers are subject to wear during operation. Further at page 2 lines 2-6, the specification also notes that in order to install prior art analysers a number of components including conveyor support structures need to be removed. The remaining structure at either side of the analyser then needs to be configured such that an appropriate profile of the conveyor is maintained upon entering into the analyser to ensure compatibility with the tunnel passage and slider plates.
In general, the invention seeks to overcome these problems by configuring an analyser such that a conveyor belt passes through the analyser without being supported within the analyser.
The specification ends with five claims as follows:
1. An analyser including:
a housing including a tunnel for receiving a conveyor belt carrying a 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 to detect gamma rays emitted from the material in response to the neutron interaction;
wherein the conveyor belt is suspended within the tunnel.
2. 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.
3. An analyser including:
a neutron source to emit neutrons into an interaction region for interaction with a material disposed therein; and
a gamma ray detector 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 suspended in the interaction region so as not to be subject to wear in the interaction region.
4. An analyser, including a neutron source, a detector, and a housing adapted to be positioned across a path of a conveyor belt which carries material to be analysed, wherein the housing defines a tunnel dimensioned to allow the belt to pass above the neutron source and through the tunnel without being supported within the tunnel.
5. A bulk materials analyser, 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 a tunnel dimensioned to allow the belt to pass above the neutron source 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.
Subsection 40(3): Clarity and fair basis
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently, the correct application of these rules 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"
Also relevant to the application of the rules of construction are the comments made by Middleton J 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."
Claims 2, 4 and 5: The belt
While not addressed in the submissions of the hearing, the opponent alleges in the amended Statement of Grounds and Particulars that “claims 2, 4 and 5 lack clarity as there is no antecedent to the term “the belt”, and it is unclear whether “the belt” is meant to refer to “the conveyor belt” or another moving belt.
It is clear from the relevant case law that construction of such a potential ambiguity is to be performed by the person skilled in the art reading the specification as a whole. In regard to claims 2, 4 and 5, there is no feature present in the claims other than a “conveyor belt” that could be considered to constitute a belt, nor in the entire specification is there any reference to a belt as forming anything other than the single feature of a conveyor belt. As a result it is clear that the person skilled in the art, when reading the feature of “the belt”, would have no difficultly in understanding this feature as referring to the conveyor belt.
Therefore I find that claims 2, 4 and 5 are clear in reference to “the belt.
Claim 2: in freely suspended relation
The opponent alleges that claim 2 lacks clarity as to the meaning of the phrase “wherein the belt travels through the tunnel in freely suspended relation so that the belt is not subject to wear within the tunnel”. It is alleged that there is no defined relationship in order to make it clear what the belt is freely suspended in relation to and that the claimed result does not sufficiently characterise the construction of the analyser.
In construing this claim it is important to note that relevant to the construction of dependent claim 2 is the construction of claim 1 and the subsequent consideration of the further limitation that claim 2 is intended to place upon the scope of claim 1. In this regard, claim 1 defines a conveyor belt “suspended” within the tunnel. Claim 2 adds the limitation that the belt travels through the tunnel in “freely suspended relation” providing an associated result of the belt not being subject to wear within the tunnel. In order to make a presumption against redundancy I must assume that claim 1 includes within its scope “non-freely suspended” travel through the tunnel. I note that this raises further questions in regards to clarity and fair basis which I will address below.
I consider that in the context of the disclosure, and the art of belt conveyors generally, it is reasonably clear that ‘in freely suspended relation to the tunnel’ means that the belt is not supported in the tunnel and that despite the difference in language this is equivalent to the requirement expressed in claims 4 and 5. As discussed earlier, one of the problems in the art was that prior art analysers have various components that are subject to wear during operation. In describing the invention the specification makes reference to features provided by the invention which alleviate this problem. For example in discussing the configuration of the embodied analyser apparatus, the specification (page 4 lines 31 – page 5 line 1) refers to figure 3 and indicates that “the tunnel 9 is positioned and dimensioned so as to receive the conveyor belt 3 in an elevated position relative to the base 13 of the tunnel 9”. The specification continues to indicate that there is a clearance to allow for a slight droop in the belt 3 between supporting idlers and that the clearance allows for the prior art slider panels to be dispensed with (page 5 lines 1-11). At page 6 lines 14-19 the specification also describes an embodiment where an analyser may be installed on a conveyor belt to fit between pre-existing idlers so as to enable the analyser to not contact the belt, the result being that the belt is completely un-supported within the tunnel of the analyser. Figure 1 provides a visual representation of such a feature.
Therefore I consider that the construction adopted is consistent with the disclosure and find that claim 2 is clear in reference to “in freely suspended relation”.
Claim 1: The belt is suspended within the tunnel
The opponent did not raise a section 40 ground of opposition against claim 1 however, under Subsection 101N(3) of the Patents Act, the Commissioner may, in deciding whether to revoke the patent, take into account any ground on which the grant of an innovation patent may be opposed, whether relied upon by the opponent or not.
As discussed in regard to claim 2, the description of the invention enables the person skilled in the art to construe the feature relating to free-suspension and the claimed result of wear prevention of the belt within the tunnel. It follows when one is to presume against redundancy, that claim 1 must include within its scope non-free suspension, and also suspension that results in wear of the belt within the tunnel. Such a configuration may include support of the conveyor belt by idlers present within the tunnel or any other mechanism which would provide for some form of suspension of the conveyor belt in relation to the tunnel of the analyser. This is clearly inconsistent with the invention as described and consequently I raised this with the parties as a matter of clarity of the claim but also, assuming “supported within the tunnel” has the broad meaning indicated above, the claim cannot be fairly based.
Consequently I find that claim 1 is not clear and not fairly based.
Claim 3: Conveyor belt is suspended in the interaction region so as not to be subject to wear
As discussed in regard to claim 1, the scope of the term suspended appears to include both free and non-free suspension. For similar reasons I find that claim 3 is not clear and not fairly based.
Novelty
For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of prior art information within the prior art base. Of relevance to the present opposition, for the purpose of subsection 7(1) the prior art base includes information in a document that is publicly available, whether in or out of the patent area.
Information that is "publicly available" is information that the public has or can acquire by consulting a source open to it, i.e. material that can be inspected "as of right" by the public. 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 (See: Gadd v Mayor of Manchester (1892) 9 RPC 516 at page 527; Fomento v Mentmore (1956) RPC 87 at page 105; and Monsanto (Brignac's) Application (1971) RPC 153 at page 159).
It is well established that the general test for anticipation 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 of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable 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; 1A IPR 121 at 138).
The following documents were pressed by the opponent in its submissions as depriving the claimed invention of novelty:
·    Sabia, Inc. XL-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual Rev A.   Nov 2003
·    Sabia, Inc. XC-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual Rev A Nov 2003
·    US 2005/0004763 A1 (Osucha et al.) 6 January 2005
·    US 3794843 A (Chen) 26 February 1974
Sabia, Inc. XL-5000 site preparation manual
There is no disagreement between the parties as to the disclosure of this document. As such, the primary issue is whether it was made publicly available before the priority date.
The front page of the document includes information relating to the document version dated November 2003 in addition to copyright information reiterating this date. It is quite clear that a mere creation date does not prove to any level of certainty that a document was made publicly available.
The opponent has provided evidence and submissions to support the assertion of public disclosure of the invention. A first declaration by Clinton Lingren, a founder of Sabia Inc. and Chairman of the Board of Directors (Lingren #1), states:
“The XL-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual was given to the customer upon receipt of the purchase order in 2003. . .
. . . [the document was] made available to all customers purchasing the SABIA XL machine to provide information for preparing the site and for receiving, installing, and operating the SABIA XL machine . . .
I have checked the records of the company and I confirm that the documents and equipment were available in the public domain before 1 March 2005 . . .
According to the records of the company an XL-5000 machine was sold to Phoenix Cement Company . . . and delivered and installed in May 2004. Sale and delivery of the XL-5000 included delivery of a copy of the manuals … There was no onus of confidentiality associated with supplying the manuals and equipment.”

A second declaration by Clinton Lingren (Lingren #2) exhibits documentary evidence in regard to the sale of an XL-5000 machine to Phoenix Cement Company (Phoenix) comprising a purchase order, acknowledgement of receipt of the analyser, bill of landing for shipment of sources, and a copy of the first page of a Radiation survey sheet completed on the day that sources were said to be installed. All of these documents are dated before the relevant priority date.
A declaration by James Freeman, Chief Operating Officer of Sabia Inc. equipment reseller Kanawha, was also provided to support an assertion of public disclosure stating:
“I have checked the records of the company and I confirm that the document was available to our company and for general distribution before 1 March 2005.”
In regard to the Freeman declaration, I conclude that the statement above falls short of proving to a practical level of certainty that the document was made publicly available. Firstly, the statement gives only a general indication that the document was available to Kanawha and available for general distribution before the priority date. Significantly the declarant mentions checking records of the company but does provide copies of the records or even indicate what these records are. Also, there is nothing to demonstrate that Kanawha itself did not have an obligation of confidentiality. Consequently, while it might be accepted on the basis of the statement that Kanawha had possession of the document before the priority date, there is no specific basis to conclude that the document was actually given to it or another person without an obligation of confidentiality.
In relation to the Lingren declarations, while I find that there is sufficient evidence to support the sale and delivery of the XL-5000 to Phoenix in 2004 (Lingren #2), ultimately I do not consider the unsupported statements of Mr Lingren in relation to the delivery of the manual, its content and absence of any obligation of confidentiality are sufficient for me to be satisfied that a public disclosure of the manual occurred to the standard of practical certainty. Given the passage of time and the presumed absence of contemporary records it seems possible that Mr Lingren is relying on what has become the normal practice of supplying manuals rather than specific knowledge or evidence of the delivery of the manuals in 2003 and 2004 to Phoenix. In support of this I cannot see on what specific basis Mr Lingren asserts that in December 2003 or June 2004 the manuals were dispatched to Phoenix Cement. While he refers to checking company records all that is provided in evidence is records of the order and dispatch of the machine. Of course Mr Lingren may have specific first-hand knowledge that the site preparation and operation manuals were prepared for that customer and then dispatched when completed, but he does not give that or any other basis for the assertion with the result that in the circumstances his evidence must admit some doubt. This is compounded somewhat by confusion in Mr Lingren’s declarations between the installation and operation manuals where he refers to the operational manual being revised and ‘again’ provided in June 2004.
The patentee raised a number of specific issues concerning potential restrictions as to confidentiality in relation to the manual. Firstly in the circumstances of the supply of the XL-5000 device to Phoenix as apparent from the radioactive materials licencing arrangements that were in place. Secondly it submitted that presence of the words:
“Proprietary Information
This manual contains information proprietary to SABIA, Inc. It cannot be reproduced without the prior, written permission of SABIA, Inc.”
on the front of the document indicates that Phoenix were not free in law and equity to use the information.
It is clear that possession and distribution of nuclear sources is highly regulated in the United States. As noted in the patentee’s submissions and seen in evidence by declaration of Clinton Lingren (Lingren #2 and exhibit CL-5), Sabia Inc. had a reciprocal agreement with the State of Arizona to perform research under their Californian radioactive materials licence. It was under this licence that the opponent alleges the XL-5000 was sold to Phoenix and delivered in May 2004. According to Lingren #2 at [8] this first licence agreement was converted to a second licence being an Arizona state licence to Sabia, Inc “for research and development testing of a new device”, “to verify the performance of the device in cement plant applications, “to verify accuracy and performance with a conveyor application transporting rock products” and “to submit the modification of this device for cement applications to the NRC for inclusion to (sic) the pending device registration” (Lingren #2 and exhibit CL-5).
After this process of research and testing, Sabia Inc. sought a general licence for the XL-5000, details of which are provided as exhibits RAH-3 and RAH-4 accompanying the first declaration of Andrew Rolland Harris. RAH-3 is a copy of a registration certificate for the Sabia XL-5000 series while RAH-4 confirms that the registration of the device was issued on 10 May 2005. This is also consistent with the second Clinton Lingren declaration which indicates at [8] and in CL-6 that an application was made for device registration on 29 October 2004 which was subsequently issued on 10 May 2005.
The patentee’s submissions advance on this point by suggesting that “it is normal commercial practice that information related to the research and development of new commercial machines is information proprietary to the entity developing the machine and that normally the information would not be made publicly available until commencement of marketing”. The patentee adds that the assertion in the second Clinton Lingren declaration at [13] that “there was no onus of confidentiality associated with supplying the manuals and equipment” carries little weight in the light of the overall circumstance and suggested that:
“A reasonable person aware of the circumstances surrounding the research and development field work being conducted at Phoenix, and given the nature of the goods involved, would consider the assertion in D1 that information related to the Sabia XL machine in development was proprietary was completely consistent with normal commercial practice”.
While the evidence suggests, at least for licensing purposes, an initial period of research and development it seems to me that the sale of the XL 5000 device was not for this purpose. Rather it appears to have been for commercial use save operating initially under a licence for research and development with the intent to then provide the purchaser with a general licence to operate. Therefore I do not accept the patentee’s submission that the sale necessarily attracted a level of confidentiality that would be associated with a research and development project. The evidence otherwise does not suggest that the XL 5000 was not a complete commercial product. Rather Mr Lindgren’s evidence suggests the machine was in production and available for sale from 2003. Consequently, in this respect, what appears likely to have been involved was merely work for the commissioning of the machine rather than research and development in the broader sense.
In relation to the submissions concerning the ‘Proprietary Information’ notice it is at least arguable that this indicates a limitation on use and potentially an obligation of confidentiality that was or should have been understood in connection to the document. However while certainly a relevant factor I do not think that the notice of itself is determinative of the question of confidentiality and must be considered with other evidence that may or may not support a finding that an obligation of confidentiality existed.
However evidence otherwise supporting the public disclosure of the document is relatively weak. Mr Horsburgh urged me to accept Mr Lingren’s statements on face value but this is to misunderstand the onus that the opponent has in these proceedings. Without better evidence of the provision of the manual to Phoenix and that it had no obligation of confidentiality despite the “Proprietary Information” notice, I cannot find with sufficient certainty that the manuals were publicly available before the priority date and therefore deprived the claimed invention of novelty.
Consequently I consider that the opponent has not discharged their onus in demonstrating to a level of practical certainty that the Sabia, Inc. XL-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual was available to a member of the public who was able to use the information freely without an obligation of confidence. As a result, the document cannot be considered to form part of the prior art base for consideration of novelty.
Sabia, Inc. XC-5000
As was the case with the XL-5000 document, the front page of this document includes information relating to the version of the manual dated November 2003 in addition to copyright information reiterating this date. Such information does not demonstrate publicly availability. This document is also marked on its front page with the words Proprietary Information. For the same reasons discussed in regard to the XL-5000 document, I consider that the opponent has failed to discharge their onus in providing that the information did not carry and obligation of confidentiality.
The only other information that the opponent has provided to support a contention that the XC-5000 manual forms part of the prior art base is a non-patent literature publication provided as exhibit MEL-4 accompanying the declaration by Meron Lewis. The publication is a case study presented at an International On-line Coal Analyzer Technical Conference in St Louis, Missouri in November of 2004. The case study uses the Sabia XC-5000 device but provides no detail as to its construction. It is clearly not possible to consider that the publication of the case study is evidence of the public availability of the XC-5000 manual. As a result, the XC-5000 manual cannot be considered to form part of the prior art base for consideration of novelty.
US 2005/0004763
This document was published before the earliest priority date of the opposed patent and discloses an analyser comprising: a housing; a tunnel and an interaction region; a neutron source and a gamma ray detector; wherein a suspended conveyor belt (“suspended” is broadly construed to include any form of suspension) travels through tunnel carrying bulk materials into the interaction region (figure 1 item 102, paragraphs 20 and 26). The document is entirely silent in regard to the particular arrangement of the neutron source with respect to the conveyor belt. Each of the claims includes the feature wherein the neutron source is disposed below the conveyor belt.
In regard to consideration of whether the feature relating to the location of the neutron source is essential I note that in Catnic Components v Hill & Smith Ltd (1982) RPC 183 at 243 it was stated:
“The question in each case is: whether persons with practical knowledge … would understand … a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention ...
The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked.”
In my view a skilled addressee would understand that the location of the neutron source is intended to be essential but also it is quite clear that the location of the neutron source materially affects the way in which the invention works. This is because the location of the source will dictate a particular path through the device that the neutrons must take, before reaching the interaction region and subsequently leading to the production of gamma rays. In the present claims, locating the source below the conveyor belt ensures neutrons must pass through the conveyor belt before entering the interaction region, thus having a material effect on the working of the invention.
Therefore, I find each of the claims do not lack novelty in light of US 2005/0004763.
US 3794843
This document was published before the earliest priority date of the opposed patent. The document discloses a gauge for determining moisture content (in my view ‘an analyser’) comprising: a suspended conveyor belt for transporting bulk materials (figure 1 item 12) to an interaction region (abstract, the abstract recites that the gamma rays and neutrons “interact” with the material being tested); a gamma source disposed below the conveyor belt to emit neutrons into the interaction region (“source holder” item 28); and, a gamma ray detector for detecting gamma rays (item 20). However the specification does not disclose that the gamma ray detector detects gamma rays emitted from the material in response to the neutron interaction as claimed in claims 1-3. Rather the gamma ray detector detects gamma rays emitted by a gamma ray source and thereby the attenuation of the gamma rays as a function of the mass of materials on the conveyor belt. A slow neutron detector detects neutrons produced by the interaction of fast neutrons with hydrogen atoms of the moisture contained in the material on the belt (column 1 lines 17-40). Consequently this document does not disclose all the features claimed in claims 1 to 3.
Claims 4 and 5 are not limited to PGNAA. They merely define a neutron source and detector. On the other hand they require a housing adapted to be positioned across the path of the conveyor and defining a tunnel dimensioned to allow the belt to pass above the neutron source and through the tunnel without being supported within the tunnel.
The citation discloses a C-shaped frame which can, in my view, be said to define a tunnel through which the conveyor belt passes above a neutron source. Idler rolls (Figure 3, 13A, 13B, 13C) are apparently located adjacent to but outside of tunnel defined by the frame and are said to define the shape of the belt and must also support it. This leaves the possibility that the belt may not be supported within the tunnel. However there is no statement in the description to this effect and , furthermore, Figure 1 appears to indicate that the upper surface of the lower horizontal arm of the frame is at the same relative position relative to the belt as the horizontal idler rolls (13C). This therefore suggests that that the belt may contact the lower arm of the frame. I note also that no expert evidence has been provided on which would assist in my interpretation of the US patent. Consequently I do not find clear and unmistakable directions to construct an analyser where the belt is not supported within the tunnel.
Therefore, I find each of the claims do not lack novelty in light US 3794843.
Innovative Step
The claims of an innovation patent must involve an innovative step. Subsection 7(4) of the Patents Act provides that:
“An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.”
Of relevance to the present opposition, subsection 7(5) identifies the information to include prior art information made publicly available in a single document.
The decision of the full Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 confirmed the approach of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [52]-[53], who at first instance made a clear distinction between an innovative step and an inventive step:
“There is no need to search for some particular advantage in the art to be described as an innovative step which governs consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date and ask whether the invention as claimed varies from the kinds of information set out in s7(5) in ways that make no substantial contribution to the working of the invention …
The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgement from that involved in determining whether there is an inventive step. Obviousness does not come into the issue ... Indeed the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.”
Gyles J at [61] also provided an indication as to what is encompassed by the requirement of a ‘substantial’ contribution:
“In my view the provenance of the phrase “make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without real difference”.
Questions which may assist in considering the requirement for a ‘substantial’ contribution include (Richbury Pty Ltd v D&I Klein Investments Pty Ltd [2013] APO 13):
- Does the difference identified between the invention and the prior art convey an advantage to the invention?
- Does the difference provide a technical or functional contribution to the invention?
- Is the difference a significant aspect of the operation of the invention?
The following documents were pressed by the opponent in its submissions as depriving the claimed invention of an innovative step:
·    Sabia, Inc. XL-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual Rev A.   Nov 2003
·    Sabia, Inc. XC-5000 OnBelt Elemental Cement Analyzer Site Preparation Manual Rev A Nov 2003
·    US 2005/0004763 A1 (Osucha et al.) 6 January 2005
·    US 3794843 A (Chen) 26 February 1974
·    US 4028267 A (Christell et al.) 7 June 1977
As the Sabia Inc. XL-5000 and XC-5000 manuals were found to not form part of the prior art base for consideration of novelty it follows that they are also not part of the prior art base for innovative step.
US 2005/0004763
As discussed in regard to the ground of novelty, each of claims 1-5 include the feature wherein the neutron source is disposed below the conveyor belt, to which this document is silent. It follows that it is necessary to determine whether this features makes a contribution to the claimed invention that is “real” or “of substance”.
In the patentee’s evidence, the first declaration by Andrew Rolland Harris (Harris #1) indicates at [19]-[21] that:
“Scantech has found that the analysis accuracy of its neutron-based analysers is improved if the source is located below the conveyor belt in all bulk materials applications, because the neutron thermalisation and absorption is more consistent when there is a fixed distance between the neutron source and the conveyed material…
Positioning the neutron source above the conveyor belt may necessitate having additional radiation shielding in the upper section of the analyser. This would make the analyser more difficult to construct and install.”
The opponent has submitted a declaration by Meron Lewis which addresses these points. At [27]-[29] of her declaration Meron Lewis states:
“However, neutrons from the radiation source are emitted to interact with the whole depth of the material located under the conveyor belt. The variations in the location of the neutron source in the prior art, show that there appears to be advantages for both source location geometries … I understand that it is well known in the field that neutron sources can be located either above or below a conveyor belt in order to optimize the analyser for the specific application…
… it is my understanding from discussions with workers in the field that effective radiation shielding is dependent upon many design factors … Neither the location nor the shielding of the neutron source make any contribution to the working of the invention and are a mere design choice.
Additionally, the alleged invention is considered to be the suspension of the conveyor belt within the analyser to reduce wear of the conveyor belt. The location of the radiation source and the detector do not make any contribution to the working of this innovation.”

From the evidence of the patentee, I am satisfied that locating the neutron source below the conveyor provides an advantage to the invention of more consistent data in addition to minimising necessary shielding structure. The evidence of the opponent does not indicate that these advantages are not present, and instead suggest that the arrangement is a mere design choice that is not related to the alleged invention. I note that the question of whether a claimed invention involves an innovative step does not take into account whether the inclusion of the feature is a mere design choice nor whether the relevant feature relates to the alleged invention. Therefore I am satisfied by the patentee’s submissions and conclude that the feature provides a technical contribution to the invention which is significant to the invention’s operation.
Therefore, I find that each of the claims do not lack an innovative step in light of US 2005/000476.
US 3794843
Regarding claims 1-3, the claimed feature of a gamma ray detector to detect gamma rays emitted from the material in response to the neutron interaction differs from the disclosure of the US patent which instead discloses a gamma ray detector for detecting gamma rays and a neutron detector for detecting neutrons. This claimed arrangement enables the analyser to operate using the PGNAA technique of bulk material analysis as opposed to alternative analysis techniques such as the moisture analysis technique disclosed in the document. Consequently, I must conclude that the operation of the gamma ray detector in relation to the neutron source provides a functional and significant contribution to the operation of the invention.
Regarding claims 4 and 5, the document fails to disclose features wherein “the belt passes without being supported within a tunnel defined by a housing” and “the belt passes without being supported within a tunnel defined by a housing and is suspended between idlers external of the tunnel”. It is clear that configuring the analyser such that the belt passes without being supported within the tunnel provides a technical contribution to the invention in regard to the way in which the belt carries material through the analyser. This feature provides an advantage to the claimed invention of both avoiding wear of the belt through direct contact with the analyser, and enabling the analyser to be positioned between pre-existing conveyor belt supports. Again I note that there is no evidence provided by the opponent to indicate otherwise.
Therefore, I find that each of the claims do not lack an innovative step in light of US 3794843.
US 4028267
This document discloses an analyser comprising: a neutron source (figure 3 item 18) disposed below a conveyor belt (figure 3 item 9); and a gamma ray detector to detect gamma rays emitted from the material in response to the neutron interaction (abstract, figure 3 item 24). While it is asserted that a spacing is disclosed between the belt and the lower container housing the neutron source there is not in my view a clear disclosure of this and it cannot be implied merely because of the representation at figure 1 or reference to an iron plate being inserted between the conveyor and container for checking purposes (col 3 lines 54-60).
In relation to claim 1, I am satisfied that, on the construction previously applied, the conveyor belt can be said to be ‘suspended’ in the space between the upper and lower containers whether or not the belt contacts the lower container. I also am inclined to consider that the containers define a tunnel between them. However RTI’s submissions concede that a “housing including a tunnel for receiving a conveyor belt” is not disclosed. If this is the case, I nevertheless consider that what is claimed varies from this disclosure only in ways that make no substantial contribution to the working of the invention. A ‘housing’ as such, without further limitation, provides no technical or functional contribution to the invention nor is it significant aspect of its operation.
Regarding the remaining claims, the document does not clearly disclose that the conveyor is suspended in the interaction region so as not to be subject to wear in the interaction region, travels through the tunnel in a freely suspended manner, or without being supported with the tunnel. These features provide an advantage to the claimed invention of both avoiding wear of the belt through direct contact with the analyser, and enabling the analyser to be positioned between pre-existing conveyor belt supports.
Consequently I find that claim 1 lacks an innovative step in light of US 4028267 but the other claims do not lack an innovative step.
Manner of Manufacture
Section 18(1)(a) requires that an invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Whether an invention is a manner of manufacture is assessed by asking whether the claimed invention lacks the necessary quality of inventiveness on the face of the specification (NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 at [9]; (1995) 183 CLR 655 at 655).
The opponent has argued that the claimed invention is a collocation and therefore not a manner of manufacture, pointing to British Celanese Ltd. v Courtaulds Ltd. (1935) 52 RPC 171 at pages 193-194, where it was said:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

I note that the opponent’s submissions at the hearing also linked an assertion of lack of manner of manufacture with that of an alleged lack of novelty in light of the citations. No evidence was provided by the opponent that the invention was not more than a mere collocation, nor was evidence provided suggesting a lack of manner of manufacture due to all features being known on the face of the specification.
In my view the allegation that the invention is directed to a mere collocation is without foundation. The claimed invention plainly meets the definition of a "patentable combination" as there is a functional relationship between claimed features in defining an invention being “an analyser”. For example the specification outlines the benefits of providing an analyser with the combined features relating to a suspended or unsupported conveyor belt travelling through the tunnel of the analyser to provide advantages including lack of wear, simplified installation, and reduced device size and weight. I also note there is no reference in the specification that would indicate that features claimed relating to a suspended or unsupported conveyor belt travelling through the tunnel of analyser are known.
Consequently, I am satisfied that the claimed invention constitutes a manner of manufacture.
CONCLUSION
I have found that claim 1 lacks an innovative step and that claims 1 and 3 are not clear and not fairly based.
The patent contains patentable subject matter. I therefore allow the patentee 60 days from the date of this decision to propose amendments to the claims overcoming the grounds of invalidity identified above. If suitable amendments are not proposed within that time I will proceed to revoke the patent.
COSTS
Both parties submitted that costs should follow the event. Accordingly I award costs in accordance with Schedule 8 against the patentee, Scantech International Pty Ltd.
P M Spann
Deputy Commissioner of Patents