Seed Terminator Holdings Pty Ltd v Dean Mayerle
[2020] APO 52
•16 December 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Seed Terminator Holdings Pty Ltd v Dean Mayerle [2020] APO 52
Patent Applications: 2017228663, 2018208622, 2018208623, 2018208625
Title:Weed Seed Destruction
Patent Applicant: Dean Mayerle
Opponent: Seed Terminator Holdings Pty Ltd
Delegate: M. G. Kraefft
Decision Date: 16 December 2020
Hearing Dates: 22 - 25 June 2020; further submissions and evidence filed 5 August 2020, final submissions completed 2 September 2020.
Catchwords: PATENTS – section 59 – oppositions to grant of patent – weed seed destructor on combine harvester – whether applicant not entitled to grant of patents, or only jointly entitled with opponent – whether there is inventive step – whether specifications complied with subsection 40(2) or 40(3) – oppositions unsuccessful on all points raised by opponent under above grounds – non-compliance with subsection 40(2) or 40(3) on other points – regulation 5.23 – opportunity to amend under section 104 allowed.
Representation: Counsel for the applicant: Mr Julian Cooke and Ms Catherine Bembrick.
Patent attorneys for the applicant: Mr Matthew Lord, IP Gateway Patent and Trade Mark Attorneys.
Mr Adrian Battison, Canadian patent attorney.
Counsel for the opponent: Mr Benjamin Fitzpatrick.
Patent attorneys for the opponent: Mr Stefan Paterson and
Mr Tony Mizzi, Griffith Hack.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2017228663, 2018208622, 2018208623, 2018208625
Title:Weed Seed Destruction
Patent Applicant: Dean Mayerle
Date of Decision: 16 December 2020
DECISION
The opponent has not established that the nominated person was not entitled to the grant of patents in the present case, or was only jointly entitled with the opponent. Moreover, the claims of the four applications have an inventive step.
On points raised by the opponent, the opponent has not established non-compliance with section 40. On the other hand, claims 1 and 2 of application 2018208625 do not comply with section 40 on other points.
The oppositions against applications 2017228663, 2018208622 and 2018208623 are unsuccessful. Subject to appeal, I direct these applications proceed to grant.
The defects in application 2018208625 would appear to be able to be overcome by suitable amendment. The applicant is allowed two (2) months from the date of this decision to propose suitable amendments under section 104 to overcome these findings.
In respect of applications 2017228663, 2018208622 and 2018208623, costs in accordance with Schedule 8 are awarded against the opponent, Seed Terminator Holdings Pty Ltd.
In respect to application 2018208625, there is no award of costs.
REASONS FOR DECISION
BACKGROUND
Dean Mayerle (“the applicant”) filed patent application 2017228663 (“the parent application”) on 14 September 2017. That application is a divisional application based on an international Patent Cooperation Treaty (“PCT”) application, PCT/CA2016/050823 (“the PCT application”). The PCT application was filed on 13 July 2016 and subsequently published as WO2017/008161. The PCT application is based on a US application filed on 14 July 2015 (“the priority date”). Application 2017228663 is also separately based on another later US application filed on 11 September 2017.
While the PCT application did not enter the national phase, as a PCT application, it is treated as an application for a standard patent through subsection 29A(1) of the Patents Act 1990. It follows that a divisional application may be filed from the PCT application (section 79B of the Patents Act.
The parent application was advertised accepted on 30 August 2018. Seed Terminator Holdings Pty Ltd (“the opponent”) filed a notice of opposition on 30 November 2018. A statement of grounds and particulars followed on 28 February 2019.
The parties completed the evidentiary stages for the parent application on 29 October 2019.
On 11 December 2019, the opponent requested an amendment of its statement of grounds and particulars. The amendment request principally related to the particularisation of a new document (which was not in evidence) against the grounds of lack of novelty and of inventive step. After taking comments from the applicant, a delegate of the Commissioner of Patents considered the amendment should be refused. The opponent was offered an opportunity to provide further comment in support of the amendment request. The opponent did not take up that opportunity. The delegate refused the amendment request on 15 January 2020.
The applicant filed patent applications 2018208622 (“the ‘622 application”), 2018208623 (“the ‘623 application”) and 2018208625 (“the ‘625 application”) on 23 July 2018. These applications are all divisional applications based on the parent application. These applications were advertised accepted on 8 November 2018. The opponent filed notices of opposition and statements of grounds and particulars in respect to each of these applications.
The parties completed the evidentiary stages for the divisional applications on 13 January 2020.
On 11 November 2019, the applicant requested an amendment of the specification under Section 104 in respect to the ‘625 application. The amendments applied to the claims and corresponding passages of the description, and were generally minor and editorial in nature. The amendment request was allowed on 13 March 2020.
SPECIFICATIONS
The specifications for all four applications contain sections headed “Technical Field”, “Definition”, “Background Of The Disclosure”, “Summary Of The Disclosure”, “Brief Description Of The Drawings”, “Detailed Description” and “Claims”. The summary disclosure, in each specification, is in the nature of consistory statements similar in format to, and in some passages the same as, the format for claims. The claims across the four specifications are naturally different from each other. The remainder of the sections of all four specifications contain substantially the same text. The drawings in all four cases are the same.
The specifications state that the disclosure relates to a weed seed destructor which can be attached to a combine harvester. As background, the specifications describe the use of combine harvesters for harvesting cereal grain crops, such as wheat, oats, rye, barley, corn, soybeans and flax. Grain and straw are separated in a combine harvester. Following the separation process, waste straw and chaff is supplied to a chopper for shredding and distributing back over the field in an even spread pattern.
A problem mentioned in the specifications is that, during the harvesting process, weed seeds and grain seed are discharged with the residue into the chopper and spread back onto the field. The combine harvester is then effectively a seeding device to evenly spread weed seeds back onto the field.
The specifications acknowledge that it is known that if the seed can be removed or destroyed before the combine harvester spreads it back onto the field the cycle can be stopped. Several patent publications are discussed in the specifications relating to systems for destroying weed seeds. These include impact systems where weed seeds strike stationary objects to cause a breakdown of the seeds, and milling and pulverising systems. In general, the problems described with these systems include their scale and complexity, and the practical difficulties with replacing systems should rock or other hard material enter the systems.
The term “weed seed destruction” is specifically defined in the specifications, for example at the top of page 4 for the parent application. The term is used somewhat colloquially in that the seeds are not annihilated but are devitalized or rendered so that they cannot germinate. This passage also indicates that it will be appreciated that not necessarily each and every seed is destroyed but that the intention is that a significant number will be incapable of germination so as to reduce the number of emerging seeds in the growing season.
The Parent Application
The specification of the parent application ends with 17 claims. Claims 1, 8 and 13 are independent claims. These claims read as follows.
1.A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds;
a straw spreading device for receiving the first material and spreading the first material at least to sides of the combine harvester; and
a weed seed destructor section comprising:
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about an axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction;
a stator arrangement mounted at a location along the direction and including a plurality of stator surfaces for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds; and
at least one destructor discharge mouth for discharge of the second material after the plurality of impacts,wherein the straw spreading device and the destructor rotor housing comprise a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester.
8. A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds;
a mechanical drive output;
a straw spreading device for receiving the first material and spreading the first material at least to sides of the combine harvester, the straw spreading device having an input drive member;
a weed seed destructor section comprising:
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about an axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction, the destructor rotor arrangement having an input drive member;
a stator arrangement mounted at a location along the direction and including a plurality of stator surfaces for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds; and
at least one destructor discharge mouth for discharge of the second material after the plurality of impacts; andat least one mechanical drive transfer member connecting the input drive member of the destructor rotor arrangement and the input driver (sic) member of the straw spreading device for receiving drive from the mechanical drive output of the combine harvester.
13. A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds;
a straw spreading device for receiving the first material and spreading the first material in a discharge stream at least to sides of the combine harvester; and
a weed seed destructor section comprising:
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about an axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction;a stator arrangement mounted at a location along the direction and including a plurality of stator surfaces for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds; and
at least one destructor discharge mouth for discharge of the second material after the plurality of impacts,
wherein said at least one destructor discharge mouth is operable so as to direct at least some of the second material to combine with the discharge stream from the straw spreading device.It may be noted that claims 1, 8 and 13 define three distinct aspects of an invention.
Claim 1 is distinct in respect to the straw spreading device and the destructor rotor housing comprising a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester. Claim 8 is distinct in respect to a mechanical drive transfer member connecting the input drives of the destructor rotor arrangement and of the straw spreading device for receiving drive from the mechanical drive output of the combine harvester. Claim 13 is distinct in respect to the destructor discharge mouth being operable to direct at least some of the second material to combine with the discharge stream from the straw spreading device.
The ‘622 Application
The specification of the ‘622 application ends with 15 claims. Claim 1 is the only independent claim. This claim reads as follows.
1.A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds;
a straw spreading section for receiving the first material and spreading the first material at least to sides of the combine harvester;
a weed seed destructor section comprising:
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about an axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction;
a stator arrangement mounted at a location along the direction and including a plurality of stator surfaces for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds; and
at least one destructor discharge mouth for discharge of the second material after the plurality of impacts; and
a guide wall component movable between positions including a first position and a second position where:
in the first position the chaff and the weed seeds are directed by the guide wall component into the weed seed destructor section, while the straw enters the straw spreading section; andin the second position the chaff and the weed seeds are directed by the guide wall component to bypass the seed destructor section.
The ‘623 Application
The specification of the ‘623 application ends with 8 claims. Claims 1 and 2 are independent claims. Claim 1 reads as follows.
1.A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds, the separation system including at least one sieve;
a straw spreading section for receiving the first material and spreading the first material at least to sides of the combine harvester; and
a weed seed destructor section comprising:
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about an axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction;
a stator arrangement mounted at a location along the direction and including a plurality of stator surfaces for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds; and
at least one destructor discharge mouth for discharge of the second material after the plurality of impacts,wherein at least the weed seed destructor section is movable in a direction rearwardly of the combine harvester away from the sieve from an operating position to an access position to allow an operator access to a position between the weed seed destructor and the at least one sieve of the combine harvester.
Claim 2 differs from claim 1 by defining both the weed seed destructor section and the straw spreading section being movable together in a direction rearwardly of the combine harvester.
The ‘625 Application
The specification of the ‘625 application ends with 8 claims. Claims 1 and 2 are independent claims. Claim 1 reads as follows.
1.A combine harvester comprising:
a separation system for separating from harvested crop a first material comprising straw and a second material comprising chaff and weed seeds;
a straw spreading device for receiving the first material and spreading the first material at least to sides of the combine harvester;
a destructor rotor housing arranged to receive the second material;
a destructor rotor arrangement mounted in the destructor rotor housing for rotation about a rotor axis and including rotor surfaces thereon for engaging the second material and for accelerating the second material in a direction generally outwardly of the rotor axis; and
at least one stator arrangement mounted at a location outwardly of the rotor axis for engaging the weed seeds in an accelerated said second material to cause a plurality of impacts with the weed seeds,
wherein:
the stator arrangement comprises a stator support structure surrounding the rotor axis and a plurality of stator surface elements mounted on the stator support structure at positions on the stator support structure angularly separated around the rotor axis;
each of the stator surface elements carry a plurality of individual seed engaging surface portions;
each individual seed engaging surface portion of each stator surface element extends generally parallel to the rotor axis and, in a plane radial to the rotor axis, forms an angle which is different from an angle of other seed engaging surface portions of the stator surface element;
each stator surface element carrying the plurality of individual seed engaging surface portions thereon is separate from other said stator surface elements; andeach stator surface element carrying the plurality of individual seed engaging surface portions thereon is removable from the stator support structure and is replaceable.
Claim 2 differs from claim 1 by adding the feature that each stator surface element comprises a sheet metal plate which is bent to define at least two individual surface portions thereof at different angles.
APPLICABLE LAW
The present applications are governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the RTB Act”). Amendments to Sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the RTB Act. The applications were filed after 15 April 2013.
The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application(s).
STATEMENTS OF GROUNDS AND PARTICULARS
For each of the oppositions, the opponent listed four grounds of opposition. These were that the alleged invention, as claimed, was not for a manner of manufacture, was not novel and/or lacked an inventive step, that the specification did not comply with subsection 40(2) or 40(3), and that the nominated person was not entitled to grant of the patent, or was only jointly entitled with the opponent. The opponent provided particulars against each of these grounds.
In written submissions and at the hearings, the opponent only pressed the grounds of lack of inventive step, lack of entitlement and non-compliance with subsections 40(2) and 40(3), in respect to all of the oppositions.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Brett Asphar and from Dr Nicholas Berry. Each of the declarants provided an individual declaration for each opposition.
At the time of his declarations, Mr Asphar was a product support manager for a machinery dealership in Western Australia. The dealership provided sales and support for a range of agricultural machinery including combine harvesters. Mr Asphar began specialising in mechanical support for agricultural machinery in 1990. He has extensive experience in mechanical servicing and in providing training support in the field. Mr Asphar states that, over the course of his career, he has specialised in Case IH combine harvesters.
In his evidence, Mr Asphar outlined the general operation and the evolutionary design of combine harvesters. He then focused on developments in weed seed management, and particularly in weed seed mills, before the priority date. Mr Asphar then discussed several prior art documents against the novelty and inventiveness of the claimed inventions, as well as the common general knowledge at the relevant time.
Dr Berry is the founder and director of research and development for a company associated with the opponent. That company is Seed Terminator Pty Ltd (“STPL”). The opponent owns the associated company. Dr Berry’s evidence is principally directed to STPL’s development of a mill, and particularly a hammer mill (“the STPL mill”), to devitalise weed seeds to manage them during harvesting. His evidence is also directed to a development agreement between STPL and a company associated with the applicant. That company is Tritana Holdings Ltd operating as Redekop Manufacturing. The agreement was to develop and support the integration of the STPL mill with Redekop’s modular residue management system.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from himself and from Mr Marney James Strachan.
Mr Mayerle provided an individual declaration for each opposition. Mr Mayerle is the general and engineering manager, and joint owner, of Redekop Manufacturing. At the time of his declarations, Mr Mayerle had more than 25 years of experience in the agriculture industry and more than 15 years of experience specifically relating to designing, servicing and supporting residue management systems for combine harvesters.
In his evidence, Mr Mayerle described the evolutionary development of weed seed destructors before the priority date. He similarly described the developments relating to straw choppers and spreaders, and to chaff spreaders before the priority date. Furthermore, Mr Mayerle differentiated the claimed inventions from the opponent’s prior art documents. This was principally on the basis that there was no suggestion in the prior art, nor an understanding or appreciation in the industry of the benefits and efficiencies, of combining straw spreaders and weed seed destructors in a common assembly, or of bypassing the weed seed destructor, or of allowing relative movement of the weed seed destructor with other parts of the combine harvester, or of providing removability and replaceability of weed seed destructor components.
In respect to the development agreement, Mr Mayerle stated that all of the subject matter claimed was disclosed in the PCT application, which in turn claimed priority from the earlier US priority application. He further stated that those applications were both filed before any relevant disclosure was made by Dr Berry or STPL to Mr Mayerle or to anyone else at Redekop. Alternatively, he indicated that none of the claims of the applications relate to the specific design of the STPL mill. Mr Mayerle accordingly concluded that Dr Berry could not be said to be an inventor of the claimed subject matter, nor could Dr Berry or STPL be said to hold entitlement.
Mr Strachan provided a single first declaration applicable across all four oppositions. He also provided second declarations for each of the oppositions against the parent application, the ‘622 application and the ‘623 application.
Mr Strachan has been involved in the agricultural farm machinery industry since the mid-1980s. He has principally been involved in parts supply, servicing, repair, sales and support relating to agricultural equipment including combine harvesters. More recently, Mr Strachan has been involved in product development, product training and dealer support.
In his first declaration, Mr Strachan outlined the changing designs of combine harvesters before the priority date and the development of weed seed destructors. Moreover, he differentiated the claimed inventions from the opponent’s prior art documents and principally stated that, before the priority date, he was not aware of any systems in which a mechanical weed seed destructor was combined with a straw chopper or spreader.
In his second declarations, Mr Strachan principally addressed the claims of the applications against the opponent’s prior art documents and against Mr Asphar’s evidence in more detail.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Asphar and from Dr Berry. Each of the declarants provided an individual declaration in reply for each opposition.
Mr Asphar indicated he had changed his employment and had taken up a role with another company as a trainer for post-trade technical staff. He subsequently left that position too and was presented with an offer to work for STPL. At the time of his declarations, Mr Asphar had not accepted the offer. In any case, he indicated that the offer had no bearing on his comments in the declarations.
In his evidence, Mr Asphar noted that most of Mr Strachan’s experience was based in South Australia and the eastern states of Australia. Furthermore, Mr Asphar stated that, due to the dry climate in Western Australia and the broadacre farming that generally have low crop yields per unit area, practices to manage weed seeds in wetter regions differ to that in Western Australia. In terms of weed management and farming practices, Mr Asphar suggested that Western Australia is at the forefront of these developments. Mr Asphar then further suggested that customers in Western Australia routinely modify combine harvesters to accommodate and adapt to advanced and changing farming practices. He further indicated that the claimed inventions were effectively modifications that could be done without any difficulty.
In his evidence in reply, Dr Berry principally provided further background to the development of the STPL mill and developments to integrate a Redekop straw chopper with the STPL mill. Dr Berry also exhibited a mutual confidentiality and non-disclosure agreement between the parties that pre-dated the above-mentioned development agreement. In respect to Mr Mayerle’s statements that the industry was not looking at the ability to bypass a weed seed destructor, Dr Berry suggested that need or capability carried over from its use in chaff spreaders.
DESIGNATIONS OF EVIDENCE
Wherever I refer to the evidence hereafter, I will do so in the following way. For example, if I refer to paragraph [22] of Mr Asphar’s first declaration filed for the parent application, I will designate the reference as “Asphar #1 [22], parent”. Similarly, if I refer to paragraph [22] of Mr Strachan’s second declaration filed for the ‘622 application, I will designate the reference as “Strachan #2 [22], ‘622”.
While there are significant amounts of the same content in the evidence across the four oppositions, I may refer to just one example when making a reference to the evidence.
PERSON SKILLED IN THE ART
In referring to Mr Asphar’s evidence in support[1], the opponent contended that the relevant person skilled in the present art would be one that worked in a field environment and/or in a workshop or factory. The person may be part of a team and would include:
[1] Asphar #1 [119] – [122], parent.
(a)engineers with experience and knowledge of the design and manufacture of combine harvester components, in particular weed seed destructor mills;
(b)mechanics with experience in installing and maintaining the various components on a combine harvester, in particular weed seed destructor mills; and
(c)users, such as farmers, with knowledge of use of a combine harvester.
The opponent also contended that such persons would be knowledgeable about:
(a)the function and operation of a combine harvester;
(b)the various means and methods used to adjust the setup of a combine harvester;
(c)the various drives and their function to power the various components of a combine harvester; and
(d)modification of combine harvester components, in particular weed seed destructor mills.
The opponent concluded that these various individuals would liaise with each other at the various stages in the design, installation and maintenance of combine harvester components.
The applicant submitted that the relevant person skilled in the present art would be one with expertise in the operation of combine harvesters, including a detailed understanding of the residue management components applied to, and used in conjunction with, combine harvesters. These components would particularly include straw choppers and spreaders, chaff spreaders and weed seed destructors.
From the above, it would appear the applicant is focused on the relevant person skilled in the art being one familiar with operational matters of combine harvesters. While this would clearly include end users such as farmers, it would also arguably include design, manufacturing, installation and maintenance personnel. The opponent is clearer about the relevant person skilled in the art broadly including engineering designers, manufacturers, installation and maintenance personnel as well users such as farmers. At this level, the parties do not appear to be too removed from one another. Notably though, the opponent also seems to attribute combine harvester setup, adjustment and modification capabilities to the relevant person skilled in the art.
From the outset, the specifications are directed to various problems or issues identifiable with prior versions of combine harvester components. These include the scale and complexity of destructor mills, and the practical difficulties with replacing systems should rock or other hard material enter the systems. As such, the specifications appear to be directed to persons more broadly than just personnel with expertise in the operations of combine harvesters. Consequently, I favour the opponent’s approach.
I conclude the relevant person skilled in the present art may comprise a team of people including engineers experienced and knowledgeable in the design and manufacture of combine harvesters and components, mechanics experienced in installation and maintenance of combine harvester components, and end users such as farmers experienced and knowledgeable with operational matters relating to combine harvesters. I would also find such personnel having the capabilities for routine setup, adjustment and/or modification of combine harvesters to suit prevailing requirements.
ENTITLEMENT
Subsection 15(1) of the Act provides that a patent may only be granted to a person who:
(a)is the inventor; or
(b)would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Accordingly, the primary person to whom a patent may be granted is the inventor. All other persons may derive title to the patent, and the invention claimed therein, via the inventor; Stack v Davies Shephard Pty Ltd, [2001] FCA 501 at [21].
In University of Western Australia v Gray (No 20), [2008] FCA 498, French J commented, at [1426], that the inventive concept marks a boundary between invention and verification. French J then referred to the US Court of Appeals Federal Circuit decision, Burroughs Wellcome Co v Barr Laboratories Inc, [1994] USCAFED 1125, (1994) 40 F.3d 1223. He stated that this decision set out the following principles, amongst others, as established by US appellate courts:
1.Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2.Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
On appeal, the Full Court of the Federal Court, in University of Western Australia v Gray, [2009] FCAFC 116, did not appear to disturb French J’s position on the above points.
In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd, [2005] FCA 1474, (2005) 67 IPR 68 (“JMVB”), Crennan J stated as follows at [132]:
“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants. The fact that the parties were in collaboration can be a major consideration.”
This aspect of Crennan J’s decision was not considered on appeal: JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v Camoflag Pty Ltd, [2006] FCAFC 141. The passage was cited with apparent approval by the Full Court of the Federal Court in Polwood Pty Ltd v Foxworth Pty Ltd, [2008] FCAFC 9 at [54]. Furthermore, in Polwood at [34] - [36] (emphasis in original):-
“The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. The role of joint inventors does not have to be equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular patent specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle that person to joint inventorship. On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed.
One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention. It may be that an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration. ….
To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application. The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.”
Inventive Concept From The Specifications
Opponent’s Submissions On Inventive Concept
The opponent principally submitted that the common inventive concept of the applications is an improved weed seed destructor mill that maximises seed destruction capability and can receive hard foreign objects without damage to the mill. To the extent that the inventive concept may be characterised more broadly to encompass combine harvesters, the opponent also stated that the improved weed seed destructor would still be an integral and critical aspect of that inventive concept.
Applicant’s Submissions On Inventive Concept
For all four applications, the applicant principally submitted that the inventive concept, or the heart of the invention, lay in providing a number of components, including a straw spreader and a weed seed destructor, which are integrated physically and functionally as part of a combine harvester. Moreover, the applicant stated this was supported by the plain language of the claims of the applications and by the specifications.
For the ‘622 application, the applicant further submitted that the combine harvester comprised a guide wall component movable between at least two positions to allow the weed seed destructor to be utilised, or not utilised, when the combine harvester is in operation. This functionality enabled the weed seed destructor to be bypassed whilst remaining mounted on the combine harvester.
For the ‘623 application, the applicant also submitted that the weed seed destructor, either alone or together with the straw chopper/spreader, was movable rearwardly on the combine harvester, away from the sieves of the harvester’s separation system, to allow operator access between the weed seed destructor and the sieves. This functionality enabled operator access between the destructor and the sieves without having to completely remove the weed seed destructor, or the destructor and straw chopper/spreader, from the harvester.
For the ‘625 application, the applicant further submitted that the weed seed destructor included multiple, separate stator surface elements of particular configuration and that were also individually removable and replaceable. Whilst stating this was not the sole focus of the application, the applicant stated that the provision of such elements, that can be individually removed and replaced, assisted in dealing with damage caused by foreign objects entering the weed seed destructor.
Consideration – Inventive Concept
It is clear that the specifications are initially focused on the weed seed destructor itself and improvements thereto. This is evident from the background section of the specifications. Several prior weed seed destructors are discussed together with the problems with these systems, at the priority date, including their scale and complexity, and the practical difficulties with replacing systems should rock or other hard material enter the systems. Subsequently, several passages of the specifications are directed solely to improvements relating to the weed seed destructor itself. For example, the opening consistory statement in the parent application on page 4 relates to an apparatus for destroying weed seeds. The same description also appears as the opening consistory statement for the ‘622, ‘623 and ‘625 applications. Whilst there is some contextual description of the apparatus comprising a housing arranged to be mounted at a location on a combine harvester, the remainder of the consistory statement describes the rotor and stator arrangements of a weed seed destructor. Several drawing figures in the specifications, and the associated detailed description, similarly relate solely to developments regarding the weed seed destructor. For example, Figures 3 to 5, 10A and 10B relate crucial aspects of the weed seed destructor itself. These include the rotor arrangement for accelerating chaff and weed seeds outwardly and the stator arrangement characterised by the nature of the impact members that engage the weed seed in the accelerated material.
At this point, it may be noted that Figures 10A and onwards, and the associated description, are not found in the PCT application. The applicant filed this material for the first time in the later US application.[2]
[2] Mayerle #1 [164], parent; Berry #1 [11] and [12], parent.
The nature of the impact members or stator surfaces takes at least two distinct forms. Figures 3 and 5 exemplify the first form and illustrate two side-by-side weed seed destructors. Figure 5 shows the weed seed destructors of Figure 3 with a part of the housing removed.
These figures are reproduced below.
In Figures 3 and 5, the stator surfaces have variously angled fins, such as 48G, that direct any rebounding weed seed material back towards the rotor. Weed seed material travels back and forth between the rotor and stator elements until it is devitalised where it then exits the mill. The seeds, as they rebound back and forth, move through the impact section at a rate depending on the shape and position of the stator surfaces, amongst other things.[3] Also, the hinged mounting of stator surface portion 48A allows the stator surfaces to pivot to allow the passage of foreign objects between the rotor blades and the stator surfaces. The stator surface portions are also readily removable for replacement by pulling the support pin 48H when damaged or worn.[4]
[3] Berry #1 [11], parent, and parent specification, page 36 lines 4-11.
[4] Parent specification, page 35 lines 12-16.
Figure 10A exemplifies the second form and shows the structure of one assembly with the cover housing in place and the other assembly omitted. This figure is reproduced below.
In Figure 10A, two stationary annular coaxial perforated plates 89 and 90 are provided. The flails of the rotor accelerate weed seed material towards the inner annular plate 89 to impact, shear and force some of the material through the holes. Material which does not escape through the holes is carried around the plate to one of the discharge slots 91, spaced 120 degrees around the plate, where the material escapes to the next annular plate. Between the two plates is a ring of posts 92 which are attached to a base plate of the rotor so as to rotate with the centre hub and flails of the rotor. These posts impact, accelerate and shear the material around the inner surface of annular plate 90 where there is a plurality of slots 93 to impact, shear and allow any remaining material to escape outwardly. The material escaping the slots is accelerated angularly by a final series of posts 94, attached to the rotating base of the rotor, so that the material is flung outwardly and angularly against the outer surface 82. This surface has a series of removable, and optionally angularly adjustable, surface portions 95 at angularly spaced positions around the wall 82.[5] The latter surface portions are functionally equivalent to the surface portions, such as 48A, in the Figure 5 embodiment.
[5] Parent specification, page 41 lines 10-28.
It may thus be noted that Figure 10A illustrates two distinct forms of impact stator surface elements, the first being the plates 89 and 90 and the second being the outer surface portions 95.
Clearly, the coaxial perforated plates, 89 and 90, and the rotating rings of posts 92 and 94 in the Figure 10A embodiment make up an additional arrangement of impact and acceleration members within the weed seed destructor to that of the embodiment of Figures 3 and 5. This arrangement is particularly advantageous in the sense of, not only relying on speed and impacts to devitalise weed seeds but also on, using grinding and shearing forces for that purpose.[6] Thus, it may be said that the Figure 10A additional arrangement is better at maximising weed seed destruction. In evidence, the applicant indicated the embodiment in Figure 10A, amongst other related figures, was the best way for putting the concepts and the inventions into effect. On the other hand, the applicant also indicated that was not the only possible design that could be used.[7] Moreover, the additional arrangement is not directly related to the above-mentioned problems of dealing with rock or other hard material. In the present case, that is principally dealt with by the stator surfaces, such as items 48A and 95 respectively in the above two embodiments, being removable and, optionally, angularly adjustable.[8]
[6] ibid, and Berry #2, [13], parent.
[7] Mayerle #1 [165] and [166], parent.
[8] Parent specification, page 35 lines 15 and 16, page 41 lines 26-28, page 42 lines 23-26.
Thus, one inventive concept from the specifications is in the nature of the impact members or stator surfaces in the outer stator arrangement of a weed seed destructor being removable and replaceable and, optionally, angularly adjustable for the purposes of dealing with rock or other hard material and damage to the destructor. The claims of the ‘625 application cover this aspect. While those claims also define a combine harvester comprising a number of components that include the weed seed destructor amongst other things, it is noteworthy that the components are defined generally independently of one another. For example, each of the straw spreader and the weed seed destructor are defined structurally and functionally independently of each other. The focus of the claims is principally on the stator surfaces of the stator arrangement of the weed seed destructor.
On the other hand, concerns in the specifications about scale and complexity also suggest a focus on the interrelationship of the weed seed destructor with other components for use on a combine harvester. In particular, the specifications contain substantial discussion around integrating the weed seed destructor with some of those components. For example, the consistory statement beginning on page 7 of the parent specification relates to an apparatus comprising a straw chopper section and a weed seed destructor section, where the discharge mouth of the latter is located to direct chaff and weed seeds onto the spreading device of the former. Several drawing figures in the specifications, and the associated detailed description, similarly relate solely to integration of the weed seed destructor. For example, Figure 1 illustrates the weed seed destructor being mounted on a combine harvester at the rear of the sieve to discharge chaff and destroyed weed seeds away from the straw chopper to both sides of the harvester. Figure 2 illustrates the straw chopper and spreading assembly, and the weed seed destructor section, comprising a common assembly having a common frame and/or common housing. Figures 2A and 8 illustrate the drive transfer arrangement connecting the input drives of the weed seed destructor and the straw spreader for receiving drive from the drive output of the combine harvester. Figures 6 and 7, respectively, illustrate the discharge openings of the weed seed destructor directing chaff and destroyed weed seeds to the straw chopper rotor, or to bypass it and feed directly onto the tailboard. Figure 13 illustrates the straw chopper/spreader assembly and the weed seed destructor movably displaced rearwardly to allow operator access to the sieve of the combine harvester. Figures 14 and 15, respectively, illustrate a movable guide wall component on a harvester for guiding chaff and weed seeds to, or for bypassing, the weed seed destructor.
Thus, a second inventive concept from the specifications relates to the arrangements for integrating the weed seed destructor with other components on a combine harvester. The claims of the parent application cover this aspect. For example, claim 1 is directed to a straw spreader and the weed seed destructor comprising a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester. Claim 8 is directed to a mechanical drive transfer member connecting the input drives of both the weed seed destructor rotor arrangement and of the straw spreader for receiving drive from the mechanical drive output of the harvester. Claim 13 is directed to the weed seed destructor discharge mouth being operable to direct at least some of the chaff and weed seeds to combine with the discharge stream from the straw spreader. Similarly, the claims of the ‘622 and ‘623 applications exemplify the integrational aspect. The independent claims of the ‘622 application relate to a guide wall component on a combine harvester movable to direct chaff and weed seeds to the weed seed destructor, or to bypass it (Figures 14 and 15). The independent claims of the ‘623 application relate to at least the weed seed destructor, or both the weed seed destructor and straw spreader section together, being movable rearwardly away from the sieve of the harvester to allow operator access between the destructor and the sieve (Figure 13).
Some dependent claims of the ‘622 and ‘623 applications define features in the independent claims of the alternate applications or of the parent application. For example, claims 6 and 7 of the ‘622 application relate to the directional control of chaff and weed seeds by the destructor discharge mouth. Similarly, claims 7 and 8 of the ‘623 application, respectively, relate to the mechanical drive arrangement for the weed seed destructor and for the straw spreader, and to the movable guide wall component.
Respective Contributions - Inventorship
Chronology
The following table indicates the collaboration between the applicant and the opponent’s Dr Berry. From this, the respective contribution(s) of the parties will need to be determined. In the present case, it would then appear appropriate to consider whether the contribution(s) had a material effect on the final inventions (Polwood at [35]), or whether the final concept of the inventions would not have come about without a particular person’s involvement (JMVB at [132]).
Date Activity Notes/Evidence 2013. Applicant commenced development work on system that would enable destruction, at the combine harvester, of weed seeds, with the system potentially incorporated into the overall harvester residue management package. Mayerle #1 [155], parent. March 2014. Dr Berry completed PhD around the science of weed seed mills, including development of two different mills (collectively “the PhD Mill”). Identified number and speed of weed seed impacts as determinative of degree of weed seed devitalisation. Berry #2 [7] & [8], parent. May 2015. Representative of Redekop Manufacturing met Dr Berry with a view to developing weed seed mill that could be used with residue management package being developed by applicant. Mayerle #1 [156], parent. Berry #2 [11], parent. 14 July 2015 Applicant filed US priority application. Earliest priority date for present applications. Early 2016. Redekop discussions with Dr Berry regarding the use of new mill design being developed by Dr Berry in Redekop residue management system. Mayerle #1 [158], parent. 3 June 2016. Dr Berry drew new mill design that enabled grinding and shearing forces, additional to speed and number of impacts, to devitalise weed seeds. New mill design = STPL mill. Berry #2 [13] & [14], exhibit NB-1, parent. 13 July 2016 Applicant filed PCT application. Figures 1-9 & associated description. 15 August 2016. Redekop Manufacturing and Berry Engineering (predecessor of STPL) entered into mutual confidentiality & non-disclosure agreement. Berry #2 [17] & [18], exhibit NB-3, parent. President of Redekop Manufacturing and Dr Berry were the signatories. 18 & 22 August 2016. Dr Berry provided basic information re drive system and mill housing of new mill design to applicant. No information provided about internal rotor or stator components. Mayerle #1 [161], parent. Berry #2 [17], parent. 23 September 2016. Opponent filed AU provisional application 2016903873. STPL mill. Berry #1 [3] & [4], parent, Berry #2 [19], parent. Dr Berry named as inventor. February 2017. STPL mills shown to applicant during visit to STPL. Berry #2 [19], parent. 21 March 2017. Redekop Manufacturing and STPL entered into engineering development agreement. Berry #1 [5], exhibit NB-2, parent. Mayerle #1 [162], parent. Berry #2 [20], parent. Mr Mayerle and Dr Berry were the signatories. 31 July 2017. As per development agreement, engineering drawings by STPL of STPL mill shared electronically with Redekop Manufacturing. Berry #1 [9] & [10], exhibits NB-3 to NB-5, parent. Berry #2 [21], parent. August 2017. STPL mill sent by STPL to Redekop. Berry #2 [21], parent. 11 September 2017. Applicant filed later US priority application. Figures 10A – 15 & associated description added. Additional material related to STPL mill. Mayerle #1 [164], parent. 14 September 2017. Applicant filed parent application 2017228663. Divisional of applicant’s PCT application. All of Figures 1-15 & associated description included. 25 September 2017. Opponent filed a PCT application. STPL mill. Berry #1 [3] & [4], parent. Dr Berry named as inventor. Mayerle #1 [42], exhibit DM-1, parent. 23 July 2018. Applicant filed divisional applications ‘622, ‘623 and ‘625. Consideration – From The Chronology
From the above chronology, several points would become apparent.
The first disclosure of Figures 10A – 15 and the associated description in the later US application of 11 September 2017 impacts the claimed priority date of any claims to that material. On the face of it and as indicated above, this would appear to principally affect the claims of the ‘622 and ‘623 applications. As will be apparent later though, on the available evidence, nothing turns on this in the present case.
In respect to the collaboration between the parties, initial contact and discussions may be traced back to as early as May 2015. Additionally, both the applicant and Dr Berry corroborate that Dr Berry provided basic information regarding the drive system and mill housing of the STPL mill to the applicant in September 2016. On the other hand, the parties also corroborate that no information was provided about internal rotor or stator components at that time. From the chronology, one could thus conclude that nothing of substance in the present case was shared between the parties until at least February 2017 when Dr Berry showed the applicant some STPL mills during a visit to STPL by the applicant, and assuming the internal components of the mills were able to be observed. This date post-dates the mutual confidentiality & non-disclosure agreement between the parties. It also pre-dates the engineering development agreement by about one month. More notably though, the date post-dates both the opponent’s provisional application in respect to the STPL mill and the applicant’s earliest US priority and PCT applications.
The opponent’s applications and the engineering drawings depict the STPL mill having a rotor and stator arrangement. The rotor structure comprises an impact mechanism of rotating blades or hammers, and concentrically arranged impact elements or posts, attached to a base plate. The stator section is a screen structure that inter-fits with the rotor structure. An inner concentric screen arrangement locates between the hammers and inner concentric impact posts. A second, outer concentric screen arrangement interposes between the inner and outer impact posts. A third screen arrangement surrounds the outer impact posts. By referring to Figure 10A above, of the present specifications, it will be apparent that substantially the same concept is illustrated there.
As mentioned above, the applicant’s PCT application includes Figures 1-9 and the associated description. From the above discussion, it would thus be clear that the PCT application illustrated and described the first-identified inventive concept, that is, the nature of the impact members or stator surfaces in the outer stator arrangement of the weed seed destructor being removable and replaceable and, optionally, angularly adjustable for the purposes of dealing with rock or other hard material. Similarly, it would also be clear that the PCT application illustrated and described the second-identified inventive concept, that is, a number of specific arrangements for integrating the weed seed destructor with other components on a combine harvester.
Thus, it may be said that the applicant brought the first and second inventive concepts that he had developed to the collaboration, while Dr Berry brought the ancillary post and screen arrangement of the STPL mill he had developed to the collaboration. The latter arrangement is not directly related to either inventive concept. On the face of it, that may appear to close any claim of inventorship by Dr Berry of the present inventive concepts in the present case. There are some further matters though in this case.
Firstly, there is a question of whether the integration of the STPL mill itself required any substantive challenges to be addressed where the solution was then described and claimed.
Secondly there is the question of the development of the further integrational aspects of the movable guide wall component, as per the ‘622 application, and the rearward movability of the weed seed destructor on the harvester to allow operator access between the destructor and the sieve, as per the ‘623 application. These developments arose at some time later in the collaboration. Thirdly, there is the question of contributions, exemplified by the terms of the development agreement or otherwise, around the two distinct forms of impact stator surface elements discussed earlier. Fourthly, there is the question of whether Dr Berry’s contribution to any invention resulted in a different or better working mill which is then described and claimed (Polwood at [34]).
Mutual Confidentiality And Non-Disclosure Agreement
This agreement acknowledged that the parties believed that they would mutually benefit from exchanging certain confidential information and that they believed it was in their common interests to ensure that all confidential information would be safeguarded, carefully protected and only used by the parties for the purposes sanctioned in the agreement. The terms of the agreement were principally directed to those points.
Engineering Development Agreement
In submissions, the parties differed somewhat on the purpose and scope of work to be done, and done, under the agreement.
The opponent referred to the opening background section of the agreement to submit that it was clear that Redekop had not yet developed its new residue management system for integration with a seed termination system. Similarly, the opponent noted the agreement’s references to the design work to be undertaken by STPL on achieving integration of the systems and on power delivery to the systems. Dr Berry stated that the purpose of the agreement was to develop a way to accommodate the STPL mills where STPL would provide technical input to the integration of the STPL mill into the Redekop assembly.[9] The opponent thus concluded that Dr Berry had involvement in developing the integrated system as part of the collaboration.
[9] Berry #2 [20], parent.
The applicant submitted that the development agreement needed to be considered in the context of the chronology, notably the earlier filing of the applicant’s PCT application. That is, the applicant had already arrived at an integrated system. The applicant further submitted that the requirements for STPL under the agreement, such as providing engineering assistance and providing technical input, amounted to a mere reduction to practice using ordinary engineering skill to incorporate specifically the STPL mill with Redekop’s residue management system. In evidence, the applicant stated that the purpose of the agreement was for Dr Berry to provide Redekop with engineering assistance to integrate the STPL mill with Redekop’s package.
The development agreement comprises seven sections. The first section is the background section and is set out in full below.
“Redekop is currently developing a new modular residue management and seed termination system with the integration of a seed termination system from Seed Terminator Pty Ltd. Redekop is developing new straw chopper designs and modifying existing designs to meet requirements for the seed terminator unit. This work proposal is for Seed Terminator Pty Ltd (STPL) to design, prepare and assemble components of the seed terminator system and provide engineering assistance and background on design of a suitable drive train to power both the seed terminator and Redekop’s residue management systems.”
From the background, it would be clear that STPL carried the onus of the work to be done under the agreement. The background specifically stated that the work proposal was for what STPL was to do. Subsequent sections of the agreement similarly reflect this onus. For example, the project procedure outline is written solely in terms of what STPL was to deliver. Moreover, the nature of the work to be undertaken amounted to design, testing and redesign based on field tests, of the STPL mill to support integration with Redekop’s residue management system. STPL was also to provide Redekop with electronic files related to the STPL mill designs. Moreover, STPL was to provide design assistance to develop a drive system for the combined mill and Redekop straw chopper, based on field tests for several combine harvester models.
The majority of the collaborative design work was to take place from March to August 2017. Technical support for field testing was required during the Australian harvest, typically from October to December, with an expectation that all design work would be concluded by the end of December 2017.
Integrational Aspect
From the above it would be clear that the development agreement related principally to the integration aspect of the inventive concept.
The above arrangements would suggest that the applicant already had a clear idea of an integration solution. After all, the applicant’s earlier PCT application related to the applicant’s own integrated weed seed destructor on a combine harvester with other components of the combine harvester. Notably, the integrational aspect relating to the common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester, the mechanical drive transfer member connecting the input drives of both the weed seed destructor rotor arrangement and of the straw spreader for receiving drive from the mechanical drive output of the harvester, and the weed seed destructor discharge mouth being operable to direct at least some of the chaff and weed seeds to combine with the discharge stream from the straw spreader, were all developed beforehand. All that was then seemingly required was to put the applicant’s concept into effect, using specifically the STPL mill. The development agreement is reflective of this in view of the work required of STPL being to design, test, and redesign as necessary, aspects of the STPL mill to incorporate with the Redekop residue management package. In the present case, this would appear to have required nothing more than ordinary engineering skill. That is, the requirements of STPL under the development agreement were to reduce the inventive concept to practice. Furthermore, the opponent has not presented any evidence that Dr Berry did any more on the integrational aspect than what was required by the development agreement.
Whilst the above discussion may principally relate to the integrational aspect as exemplified by claimed features of the parent application, it would appear the opponent faces similar challenges for the ‘622 and ‘623 applications.
The independent claims of the ‘622 application relate to the guide wall component on a combine harvester being movable to direct chaff and weed seeds to the weed seed destructor, or to bypass it (Figures 14 and 15). The independent claims of the ‘623 application relate to at least the weed seed destructor, or both the weed seed destructor and straw spreader section together, being movable rearwardly away from the sieve of the harvester to allow operator access between the destructor and the sieve (Figure 13). As indicated above, these developments occurred later.
It is telling that there is no evidence in the present case that links Dr Berry to these developments. As evident throughout, Dr Berry’s contribution resided in providing the STPL mill itself, and developing it for integration with Redekop’s residue management system. Moreover, whilst the ‘622 and ‘623 developments may be embodied in Figures 13 to 15, which also illustrate the STPL mill, that does not establish that Dr Berry contributed those developments. In this respect, it is noteworthy that the developments relate to arrangements of features of the combine harvester outside the mill. That is, the developments are part of the integration aspect. Notably, the applicant stated that the STPL mill was only one possible design that could have been used in the Redekop residue management package and that other mill designs could also have been used.[10]
[10] Mayerle #1 [137], ‘623.
On the integrational aspect of the inventive concept, there is insufficient evidence in the present case of what, if anything, Dr Berry contributed during the collaboration that required further experimentation or research from him beyond ordinary engineering design and implementation skills, such that his contribution may be said to have been more than mere reduction to practice. Put another way, there is insufficient evidence that Dr Berry’s contribution had a material effect on the final invention, or that the final concept of the invention would not have come about without his involvement.
The Stator Surface Elements
Under deliverables and project procedure, the development agreement contained some clauses related to design and development work of the STPL mill itself. For example, STPL was to design and update aspects of the STPL mill incorporating improvements over various test machines and field test results, and provide technical field testing support for the STPL mill. Again, such testing, redesign and redevelopment of the STPL mill would appear to have required nothing more than ordinary engineering skill. There appears to have been nothing in the requirements of the agreement to elevate STPL’s role beyond mere reduction to practice.
This point would seem to be accentuated by the specifications. The parties generally agreed that the Figure 10A embodiment illustrated the STPL mill concept. As noted above, that concept related to the multi-screen structure inter-fitting the rotor structure. The concept illustrated in Figure 10A is the same as in the opponent’s applications. Thus, in respect to this concept, there is little that is different across the disclosures. Consequently, it may be said that, whatever testing, redesign or redevelopment of the STPL mill took place during the collaboration, the outcome in respect to the STPL mill was substantially unaltered.
A comparison of Figures 5 and 10A of the specifications, as depicted earlier, is also instructive. Figure 10A differs from Figure 5 principally by the additional, annular post and screen arrangements. The latter are referred to in the specifications as perforated plates. It would be clear that the addition of the post and screen arrangements is largely irrelevant in respect to a solution for dealing with rock or other hard material. In the main, one may even say the posts and screens are counter-effective for that purpose. Rocks and other hard material are principally dealt with by the inventive concept of removable and, optionally, angularly adjustable stator surface portions 95 once that material has exited the final slots 93 in the outer annular plate 90. Moreover, in separately having the STPL post and screen arrangements and having Figure 5 to hand, all that was seemingly required in principle to get to Figure 10A was to allow for sufficient clearance between the rotor blades and the stator surfaces of Figure 5 to accommodate the rotor posts and screen arrangements of the STPL mill. There is insufficient evidence in the present case to establish that incorporating the additional concentric posts and screens into the Figure 5 arrangement would have required anything more than the application of ordinary engineering skill. Moreover, the evidence does not link Dr Berry to that incorporation. In any case, there is insufficient evidence in the present case that any contribution from Dr Berry had a material effect on the inventive concept related to the impact members or stator surfaces in the outer stator arrangement of a weed seed destructor being removable and replaceable and, optionally, angularly adjustable for the purposes of dealing with rock or other hard material and damage to the destructor.
Whether Contribution Resulted In A Better Mill
There remains the question of whether Dr Berry’s contribution, exemplified by the terms of the development agreement or otherwise, resulted in a different or better working mill which is then described and claimed. This question descends from the point in Polwood at [34] that joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed. Some further context around inventorship and better working of an invention may also be found in The Commonwealth of Australia v John Murray Charlesworth, [2008] APO 16. In that decision, at [51], the delegate stated that one must distinguish between those features that are necessary for the invention to work, and those features that make the invention work “better”. From both cases, it would seem the question should be answered in the context of where the core invention or the inventive concept lies. In other words, the question may be put as what contributions were necessary to make the invention work, as distinct from making it work better.
100. The present specifications describe the effect of the posts and screens of the Figure 10A arrangement to impact and shear the weed seed material.[11] Dr Berry described the STPL mill as designed, not only by relying on speed of weed seeds and number of impacts to devitalize weed seeds but, to allow grinding and shearing forces. He further noted that, to provide that capability, the mill needed to use a combination of close tolerance between flailing hammers and stationary impact surfaces, and multiple impact regions where each impact region has a stationary surface and a rotating/moving impact member.[12] The applicant stated that the STPL mill was the best way known at the time for putting the inventive concept into effect, although did not explain any technical reason for why that was so. Conversely though, the applicant also stated that other mill designs could also have been used.[13]
[11] Parent specification, page 41, lines 10-23.
[12] Berry #2 [13] and [14], parent.
[13] Mayerle #1 [165] and [166], parent.
101. It may thus be said that the STPL mill, with its concentric post and screen arrangements, was a more effective mill at the time in maximising weed seed destruction, particularly by allowing for grinding and shearing forces in addition to speed and number of impacts. On the other hand, in dealing with rocks and other hard material, and scale and complexity, which the specifications indicate are the problems sought to be addressed, it may also be said that the post and screen arrangements, and the close tolerances between rotor and stator components, as exemplified in Figure 10A, were counter-effective. Such material needed to move through the handful of slots, spaced around the screens, to the outer stator surface portions 95 on the outer stator surface 82, to be dealt with there in the same way as in Figure 5.[14]
[14] Parent specification, page 41, lines 15-28, page 42, lines 19-22, and items 91 and 93 Figure 10A.
102. The specifications also make much of the problems of rocks and other hard material over that of seeking a more effective weed seed destructor. For example, in discussing the prior art in the background section, the specifications acknowledge that one system may function to destroy the seeds but has practical difficulties as it is without consideration of other obstacles passing through the assembly. Specifically, should a rock or other hard material enter the mill, the entire mill would need to be replaced.[15] For another prior art system, the specifications lament the absence of removable parts should a rock or other hard material enter the system.[16]
[15] Parent specification, page 2 lines 26-29.
[16] Parent specification, page 3 lines 26 and 27.
103. Clearly the two distinct forms of impact stator surface elements of Figure 10A, the first being the plates 89 and 90 and the second being the outer surface portions 95, operate differently as impact elements, and with different measures of success depending on the desired objectives. The first elements would appear to be more effective for weed seed destruction if better weed seed destruction were the objective. While the second also function as impact elements for weed seed destruction, although arguably not as good as the first, the second elements are nonetheless also able to deal with rocks and other hard material, through replaceability and angular adjustability. The first elements do little for that purpose. That is, in respect to the problems and objectives described in the present specifications, the post and screen features of the STPL mill are unnecessary. They may even be said to be counter-effective to the inventive concept. In this context or for this purpose, it may thus also be said that the STPL mill is not a better mill.
104. One may also say the two distinct forms are two different inventions. The opponent has patent applications relating to the STPL mill. The fact of the post and screen arrangements of the STPL mill being illustrated in Figures 10A and onwards of the present specifications does not entitle Dr Berry, in the present case, to inventorship in the context where those arrangements are largely at cross purposes to the problems and objectives outlined in the present specifications.
Conclusion – Inventorship
105. On the available evidence in the present case, I conclude Dr Berry has no claim to inventorship.
Derivation Of Title To The Inventions
106. The development agreement concludes with clauses where each party to the agreement effectively retains any intellectual property developed by it. The question of derivation of title, in this case, from an inventor to the present applicant and/or opponent is complicated a little because the parties to that agreement, whilst associated with the parties in the present oppositions, are not the same as the latter parties. Notably, on the opponent’s side, the opponent is the owner of the company that is party to the development agreement. On the applicant’s side, the applicant is a manager and a joint owner of the company that is party to the agreement.
107. In the present case, the question regarding the opponent’s entitlement is moot because the opponent has not established that Dr Berry was an inventor in the present case. On the applicant’s side, the nominated person for grant of the patent is the original inventor in respect to the inventive concepts. Those concepts were developed by the applicant prior to the collaboration. The development agreement also stated that each party to the agreement retained any intellectual property developed by it. On the face of it, that would render the applicant’s inventive concepts outside the agreement. Moreover, there is no evidence in the present case of assignment of rights by the applicant away from the applicant. Consequently, the fact of there being a different, but associated, party to the development agreement on the applicant’s side renders the question of derivation of title, in this respect, moot as well.
INVENTIVE STEP
108. Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim, whether that knowledge is considered separately or together with information mentioned in subsection (3).
109. Subsection 7(3) states the information for the purposes of subsection (2) is any single piece of prior art information, or a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date, be reasonably expected to have combined.
110. One test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
111. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53] (“Alphapharm”), appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine, the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.
112. In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that, in formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge, or information available under subsection 7(3).
113. It may be noted that the above cases proceed on a premise that there was a problem to be solved. Moreover, it seems clear from Alphapharm that establishing that something was worthwhile or obvious to try is not sufficient to support a finding of lack of inventive step, noting also at [34] that the phrase “worthwhile to try” is not readily understood to be synonymous with “obvious”. At [58]:
“The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.”
114. The reformulation of the so-called Cripps question in Alphapharm is consequently not of universal application. From the Full Court of the Federal Court decision, Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft, [2014] FCAFC 73 at [71]:
“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm.”
115. Thus, for example, in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited, [2013] FCA 163 at [95]:
“For there to be an inventive step, there must be some difficulty overcome or some barrier crossed.”
Common General Knowledge
116. In Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd, [1980] HCA 9; (1980) 144 CLR 253, Aickin J stated at page 292:-
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
117. In Alphapharm at [31], information should not be treated as part of the common general knowledge “in the absence of evidence of its general acceptance and assimilation”.
Opponent’s Submissions On Common General Knowledge
118. Principally with reference to Mr Asphar’s evidence, the opponent presented a detailed breakdown of the common general knowledge of the skilled person in the art at the relevant time. I will concentrate on a number of salient points.
119. The opponent submitted that straw choppers were formed as a single, bolt-on, installable and removable unit that was generally belt-driven. A user may have removed the straw chopper or modified it to direct straw to form windrows during harvesting.
120. Straw spreaders acted to spread straw residue out the back of a combine harvester. In other instances, a straw chopper acted to spread straw.
121. Chaff spreaders started to appear on combine harvesters from about the mid-1990s. Without the use of a chaff spreader, waste, non-viable grain and any weed seeds ejected during harvest were congregated in chaff windrows. About the same time, chaff spreader and straw spreader operations were combined into a single unit so that the straw and chaff were spread together. The spreaders were generally belt-driven, although some were driven hydraulically. From the late 1990s to early 2000s, chaff spreaders and straw spreaders were also provided as separate units that could be operated independently in response to harvesting requirements. Thus, a user could have windrowed straw and/or chaff in some conditions and spread straw and/or chaff in other conditions.
[68] Mayerle #1 [108], parent.
229. The opponent appeared to rely on the principles from BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2), [2019] FCA 2117. At [836]:-
“A patent will satisfy the best method requirement if the skilled addressee can arrive at the best method known to the patent applicant of performing the invention by some routine experimentation, but without ingenuity or undue experimentation. A patent applicant does not need to disclose details of the method which would be well-known and understood by the skilled addressee such as well-known analytical agents, commonly used methods, well-known terms of art, or a description of machinery in standard use. But a complete specification must disclose each essential element or feature for performing the invention, even if a skilled addressee would know or could readily ascertain that element. Where the best performance of the invention requires a step that is omitted by the complete specification, even if it could be readily ascertained by a skilled addressee, that will not meet the best method requirement.”
230. The opponent’s case appears to be somewhat misguided. While it may be readily accepted that the skilled addressee must be able to arrive at the best method without ingenuity or undue experimentation, or that the specification must not omit a required step of the best method, even if it could be readily ascertained by the skilled addressee, that is not to say that the absence of discussion around weight issues, tolerances, research and redesign issues would mean the requirements to disclose the best method are not met. On the face of it, the specification has described a functional, constructional arrangement of the straw spreader and destructor comprising a common assembly having a common frame and/or common housing. The same applies in respect to the directional control of the destructor output. The opponent has not offered any alternative method or evidence to indicate that the applicant has not disclosed the best method known to the applicant.
Supported By Matter Disclosed – The Parent Application
231. The opponent took a similar approach as above under this ground. The opponent opened by stating that, if the applicant’s evidence concerning his inventive process was accepted, claims 1-7 lacked support.
232. More particularly, the opponent stated the applicant asserted that the development of a common assembly involved significant redesigning of both the straw spreader and the weed seed destructor which resulted in weight savings. None of the claims were limited by reference to redesign or any resultant weight savings. The opponent also indicated the claims encompass known weed seed destructors and known spreaders that are simply added or mounted to the combine harvester, either attached or in close proximity to each other. Accordingly, the opponent stated that the scope of the claims was broader than justified by the description, drawings or the asserted contribution to the art.
233. The opponent relied on Encompass Corporation Pty Ltd v InfoTrack Pty Ltd, [2018] FCA 421. At [170]:-
“The language of the new s 40(3) does not support the idea that the fair basis test survived the amendments brought about by the RTB. Nor does the Explanatory Memorandum which starts by saying ‘This amends the Act to replace the ‘fair basis’ requirement with a ‘support’ requirement’. It goes on to explain that the idea was to replace the High Court’s approach in Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58; 217 CLR 274 with an approach based on the idea of ‘support’ which was said to have two elements:
‘[T]he terms ‘support’ and ‘full support’ pick up two concepts:
there must be a basis in the description for each claim; and
the scope of the claims must not be broader than is justified by the extent of the description, drawings or contributions to the art’.”
234. Again, the opponent would appear to have over-stated the requirements. From the above quotations, the question of support is principally based on a comparison of the claims against the rest of the specification. In CSR Building Products Limited v United States Gypsum Company, [2015] APO 72 (“CSR”), the delegate (at [115]) formulated a 3-step approach. The approach was underpinned by the concept of the “technical contribution to the art” and reads as follows:-
(i)construe the claims to determine the scope of the invention as claimed,
(ii)construe the description to determine the technical contribution to the art, and
(iii)decide whether the claims are supported by the technical contribution to the art.
235. In Generics (UK) Ltd v H Lundbeck A/S, [2009] UKHL 12; [2009] RPC 13 at [95], Lord Neuberger described the technical contribution as follows:-
“… in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non-obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.”
236. In the same case at [97] per Lord Neuberger, the connection between the allowed extent of the patent monopoly and the technical contribution to the art was drawn as follows. Quoting with approval from an EPO Boards of Appeal decision, Fuel Oils/Exxon, (T409/91) [1994] OJ EPO 653:-
“… there is a ‘general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified’. However, the passage continues:
‘This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words,… the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.’”
237. In the House of Lords decision, Biogen Inc. v Medeva Plc, [1996] UKHL 18, [1997] RPC 1 (“Biogen”), Lord Hoffmann described a long-established principle of patent law in the UK as follows. At [63]:-
“… the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”
238. In the present case, the specification relates a number of general arrangements for integrating the weed seed destructor with other components on a combine harvester. These arrangements include a common assembly for common mounting of the weed seed destructor and a straw spreader on the harvester, directional guidance systems for residue material for the components, and relative movement systems for the components.
239. With reference to the drawings, the specification is also quite descriptive about the designs of the relevant components of the combine harvester. There is extensive discussion around a particular design of the straw chopper/spreader section and its mounting.[69] Notably though, the specification also makes clear that such arrangement is one example only of arrangements which can be used.[70] Similarly, there is extensive discussion around the designs of the weed seed destructor and its mounting arrangements. This discussion includes various options related to integration of the destructor and to, for example, directional control of discharge streams.[71] The clearly distinct forms of the Figure 5 and Figure 10A embodiments may also be noted. It would thus be clear that a number of variants around straw chopper/spreader and weed seed destructor design and integration are discussed in the specification.
[69] Parent specification, page 30 line 2 to page 32 line 23.
[70] Parent specification, page 32 lines 14 and 15.
[71] Parent specification, page 32 line 24 to page 41 line 2.
240. Accordingly, I would think that a reasonable degree of generalisation would be permissible in the claims in the present case.
241. Claims 1-7 of the parent application define the straw spreader and the weed seed destructor comprising a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester. I find these claims are supported by matter disclosed in the specification.
242. In respect to claims 8-12 and with reference to the applicant’s evidence, the opponent submitted that the use of a common drive was consequential on the use of a common housing or assembly. Since claims 8-12 omit the common housing or assembly, the opponent stated that those claims lack support.
243. Figure 2A illustrates a drive arrangement. An input drive pulley, connected to the straw chopper rotor, is driven by a drive transfer means from a drive output of the combine harvester. The input pulley drives a further output pulley that communicates drive to the weed seed destructor through an input pulley for the weed seed destructor. Notably, the drive arrangement is external of the straw spreader and weed seed destructor housing or assembly. It would appear the common drive arrangement is not conditional on the straw spreader and weed seed destructor comprising a common housing or assembly. The specification states that the illustration shows pulleys for driving the straw spreader and the weed seed destructor being mounted on the same side of the harvester but this is not essential. Other drive arrangements can be used.[72] This is supported by the applicant’s evidence. Integrating the weed seed destructor and the straw spreader into a common assembly, although not essential for driving both the weed seed destructor and the straw spreader mechanically from the combine harvester’s mechanical drive output, can make this significantly easier to achieve.[73]
[72] Parent specification, page 40 lines 12-16.
[73] Mayerle #1, [110] last sentence, parent.
244. I find that claims 8-12 are supported by matter disclosed in the specification.
245. The opponent similarly stated for claims 13-17 that directing at least some of the second material to combine with the discharge stream from the straw spreading device was consequential on the common assembly and, since claims 13-17 did not require a common housing, then those claims lacked support.
246. For similar reasons as above, I find that claims 13-17 are supported by matter disclosed in the specification on this point.
247. In respect to claim 16, the opponent stated that this claim recited the discharge from the weed seed destructor being directed into the straw chopper. The opponent suggested this would not be possible if the discharge was directed to combine with the straw spreader discharge stream (claim 13). The applicant submitted that the opponent had misconstrued the claims.
248. Both claims define the destructor discharge mouth being operable to direct at least some of the second material to those locations, respectively. That is, rather than defining that these things must always occur, the claims define alternative modes of operation. The specification is supportive of that. The combined apparatus comprises the straw chopper together with the weed seed destructor where the discharge opening of the housing is arranged such that the discharge opening can be directed to the side of the combine harvester away from the straw chopper, towards the guide fins of the tailboard of the chopper, or into the housing of the straw chopper.[74]
[74] Parent specification, page 39 lines 10-15.
249. I find that claim 16 is supported by matter disclosed in the specification on this point.
Supported By Matter Disclosed – The ‘623 Application
250. The opponent indicated that claim 1 of the ‘623 application encompassed any arrangements and devices that allowed the weed seed destructor to move relative to the sieve. These included a pivoting arrangement, a sliding track arrangement, a movement device separate from the combine harvester, or detachment and movement of the weed seed destructor rearwardly. The opponent submitted that such a breadth of movement was not described in the specification.
251. The opponent further noted the mobility issues around the weight of the weed seed destructor discussed in the applicant’s evidence.[75] In the absence of any weight limitation on the weed seed destructor, the opponent submitted that the claims lacked support.
[75] Mayerle #1 [87], ‘623.
252. Claim 1 of the ‘623 application does not appear to be as broadly defined as portrayed by the opponent. On a plain reading of the claim, the weed seed destructor is part of the combine harvester and is movable rearwardly of the harvester away from the sieve. There is no detachment step of the weed seed destructor and movement of a detached destructor in the rearward direction. If that were the case, then it would essentially be no different to removing the weed seed destructor entirely to allow operator access at the rear of the sieve. The specification does not contemplate this as the means for enabling access. The evidence also describes the movement capability in the context of providing operator access without having to completely remove components from the harvester.[76] Moreover, claim 1 defines the weed seed destructor being movable from an operating position to an access position where the latter allows operator access. I think it could not be fairly said that an access position for the destructor extends to removal and placement of the destructor at an arbitrary location rearwardly but separately away from the combine harvester. Rather, in the context of the claim, the access position is on the combine harvester.
[76] Strachan #2 [38], ‘623.
253. It is fair to say the specification only describes the embodiment where the rearward movement is effected by components being slidable on a guide in the form of tracks. Nonetheless, in the overall context of the specification relating a number of general arrangements for integrating the weed seed destructor with other components on a combine harvester, the present generalisation in the claim relating to rearward movement of the weed seed destructor away from the sieve would appear to be permissible. The opponent’s evidence indicated different types of arrangements that would allow such movement, including rotation of the weed seed destructor section in a direction rearward of the sieve around a pivot point located at a side of the harvester, and movement along a track extending longitudinally of the harvester.[77] I would regard the disclosed slidable arrangement and other variants as means to achieve rearward movement to be well within the domain of the relevant person skilled in the art. The same applies irrespective of the weed seed destructor being singly movable rearwardly or together with the straw spreader.
[77] Asphar #1 [130], ‘623.
254. I find that claim 1 is supported by matter disclosed in the specification. For similar reasons I find that claim 2 is supported.
Clear Enough And Complete Enough Disclosure – The Parent Application
255. The opponent again relied on the applicant’s characterisation of the invention and the technical issues discussed in the applicant’s evidence. On this basis the opponent submitted that the specification does not disclose the invention claimed in claims 1-7 in a manner which is clear enough and complete enough to be performed by a person skilled in the relevant art. The opponent particularly noted that the parent application does not detail any problems the applicant had to resolve to provide the common frame and/or common assembly, nor any guidance how these asserted problems were overcome. Relatedly, the opponent pointed out that the applicant’s evidence asserted that the weight reduction resulting from combining the straw spreader with the weed seed destructor allowed both components to be mounted on the hood of the combine harvester.[78] The specification does not teach how to mount the components to the hood of the harvester as discussed in the applicant’s evidence.
[78] Mayerle #1 [101], parent.
256. In CSR, the delegate considered the appropriate test to involve the following three steps. At [95]:-
(i)construe the claims to determine the scope of invention as claimed,
(ii)construe the description to determine what it discloses to the person skilled in the art, and
(iii)decide whether the specification provides an enabling disclosure of all things that fall within the scope of the claims.
257. In Evolva SA, [2017] APO 57, the delegate expanded on the latter point as follows. At [45]:-
“Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:
(a) Is it plausible that the invention can be worked across the full scope of the claim?
(b) Can the invention be performed across the full scope of the claim without undue burden?”
258. In Biogen at [57], Lord Hoffmann stated that, for matter to be capable of supporting an invention, it must contain an enabling disclosure, that is, “it must disclose the invention in a way which will enable it to be performed by a person skilled in the art”.
259. From the above, it would appear again that the opponent has over-stated the requirements. Enabling disclosure clearly relates to the performance or the working of the invention by a person skilled in the art. A disclosure of the problems that had to be overcome or any other history to arrive at or to provide the invention would seem irrelevant in this case. The disclosure is sufficient if it provides the solution such that the person skilled in the art could perform or work the invention across the full scope of the claims.
260. In respect to the hood of the combine harvester, the applicant’s evidence indicates a realisation at the time that the weight savings that could possibly be achieved by combining the components in a common assembly might allow the combined assembly to be mounted on the hood, despite the hood’s limited weight carrying capacity (my emphasis).[79] In this context, it is perhaps unsurprising that the specification does not teach such an arrangement. In any case, I would regard such an arrangement to be well within the capabilities of the relevant person skilled in the art to provide without undue burden.
[79] ibid.
261. I find the specification discloses the invention claimed in claims 1-7 in a manner which is clear enough and complete enough to be performed by a person skilled in the relevant art.
262. The opponent raised similar issues with the remainder of the claims of the parent application. For similar reasons as above, I find that the specification discloses the invention claimed in those claims in a manner which is clear enough and complete enough to be performed by a person skilled in the relevant art.
Clear Enough And Complete Enough Disclosure – The ‘622 And ‘623 Applications
263. The opponent principally pursued the same lines of argument against the ‘622 and ‘623 applications. For similar reasons, I find the opponent’s case under this ground against those applications is not made out.
Clear Enough And Complete Enough Disclosure – The ‘625 Application
264. For the ‘625 application, the opponent stated there was an incomplete disclosure of a stator arrangement comprising a stator support structure, a plurality of stator surface elements and seed engaging surface portions. More specifically, the opponent indicated there was no reference to a “stator surface element” in the description. Rather, the term “stator surface portion” is used in the description with reference to numeral 48A and “stator surface” is used with reference to numeral 96, although numeral 96 is also used in reference to the discharge mouth.
265. The opponent’s concerns above would appear to relate principally to the inconsistency between terms used in the description and terms used in the claims, rather than insufficiency of disclosure. The opponent also raised the same concerns under the ground of lack of clarity. Accordingly, I will deal with these concerns under the discussion of clarity below.
Clarity – The Parent Application
266. The opponent referred to the phrase in the last sub-paragraph of claim 1, wherein the straw spreading device and the destructor rotor housing comprise a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester. The opponent submitted the claims were unclear because the claims, and indeed the specification as a whole, provided no context within which to understand the meaning and limits of this phrase. More specifically, the opponent stated it was unclear whether this integer was satisfied simply by mounting the weed seed destructor next to the straw spreader and, if so, what degree of spatial separation, if any, between the two components was required by the claim.
267. The applicant’s response appeared to address the opponent’s submissions as though they targeted the failure of the claim to specify how or where the common assembly was to be mounted to the combine harvester. While this might be a possible interpretation of the opponent’s complaint, it seems to also be directed to the absence of specifics in the claim regarding the juxtaposition of the weed seed destructor and the straw spreader. Either way, that is not necessarily fatal for the claim.
268. It is fair to say that claim 1 is somewhat open as to the mounting arrangements of the common assembly on the harvester and to the relationship between the weed seed destructor and the straw spreader. All that the last sub-paragraph of the claim requires is the two components comprising a common assembly having a common frame and/or common housing arranged for common mounting on the combine harvester. This would mean the components are combined in some way for common mounting. On the face of that definition, I see no lack of clarity.
269. I find that claim 1 is clear.
Clarity – The ‘625 Application
270. The opponent noted the specification used different terminology for apparently the same features. While the claims used the term “stator surface element”, the opponent contended there was no such reference in the detailed description. Instead, the opponent stated that the term “stator surface portion” is used in the description with reference to numeral 48A and “stator surface” is used with reference to numeral 96. As the mills in Figures 5 and 10A operate differently, the opponent stated that it was unclear whether the “stator surface element” was the same as the “stator surface portion” and/or “stator surface”.
271. The above matter is part of a broader issue around the consistency of terminology in the ‘625 application. There was this matter and a number of other clarity matters, and support matters, that were of concern to me for the ‘625 application. As the opponent had not raised these further matters, I outlined my concerns near the end of the hearing for the ‘625 application. In response, the applicant requested an outline in writing after the hearing and time to respond.
Further Section 40 Matters – The ‘625 Application
272. In correspondence after the hearing, I outlined my concerns and invited comment from both parties. The opponent provided further submissions. The applicant provided further submissions and a further declaration by Mr Strachan, together with a request to have the declaration admitted in the opposition under Regulation 5.23.
Regulation 5.23
273. Regulation 5.23 enables the Commissioner of Patents to consult a document that is relevant to the opposition, has not been filed in evidence and is available in the Patent Office. On the face of it, the Strachan declaration was directly responsive and relevant to the issues I raised in correspondence. Accordingly, I indicated to the parties that I proposed to rely on the declaration. Pursuant to sub-regulation 5.23(2), the opponent was given an opportunity to give evidence or make representations about the Strachan declaration. The opponent provided further submissions. I invoke Regulation 5.23 to have regard to the Strachan declaration.
Stator Support Structure
274. Claim 1, at lines 16-18, and similarly claim 2, define that “the stator arrangement comprises a stator support structure surrounding the rotor axis and a plurality of stator surface elements mounted on the stator support structure at positions on the stator support structure …” (emphasis added). At page 34 lines 10 and 11 and with reference to Figures 3-5, the specification describes that, in the housing around the rotor is provided a stator 48 defined by the inside surface of the polygonal housing 40. This appears to suggest that the claimed stator support structure relates with the described polygonal housing 40. If that is so, then it seems the plurality of stator surface elements are mounted inside the housing 40 or 42, not on it, as best seen in Figure 5 and assuming the stator surface elements may be one or more of items 48A, 48B or 48C.
275. In submissions, the applicant indicated that the polygonal housing was not the only part or component in the overall configuration that formed part of the stator support structure. In evidence, Mr Strachan saw the term “stator support structure” as covering any and all parts of a weed seed destructor that operate to provide support for parts or components of the stator of the destructor. In this respect, Mr Strachan stated that the stator support structure could also include the upper surface of the fan section 41, as this is the surface on which the housing 42 is positioned.[80]
[80] Strachan #2 [12] and [17], ‘625.
276. The opponent pointed out that the applicant in evidence clearly considered that the stator support structure is the housing.[81]
[81] Mayerle #1 [25], ‘625.
277. The applicant’s declarants are clearly at odds about the stator support structure. On the other hand, that is not necessarily fatal to the claim.
278. It would appear that the term “stator support structure” is not used in the description with reference to the figures. Nonetheless, Figures 3-5 illustrate both the housing section and the fan section, which is in the form of a base annular ring, surrounding the rotor axis. The specification also clearly describes the inside surface of the housing defining the stator while the figures illustrate stator elements thereof placed on the fan section. Thus, both the housing section and fan section may be said to make up a stator support structure. That interpretation is reinforced by stator elements being hingedly and pivotably mounted by pins on to the fan section. This outcome also renders moot the question of any particular mounting arrangement of stator elements on, at or inside the stator support structure.
279. I conclude there is no lack of support or clarity issue arising from the above points.
Alternative Or Interchangeable Stator Terms
280. Claim 1, at lines 19 and 20, and similarly claim 2, define each of the stator surface elements carrying a plurality of individual seed engaging surface portions. The descriptive part of the specification with reference to the figures uses alternative terms. Moreover, some of the latter terms appear to be used interchangeably to refer to the same features. Thus, in the context of the specification as a whole, it might be said that the claimed terms are unclear and even indistinguishable.
281. In the description, item 48A (Figure 5) is variously referred to as “surface elements” (page 34 line 13), “stator surfaces” (for example, page 35 lines 9 and 12) and “stator surface portion(s)” (for example, page 35 lines 17, 20, 25 and 28). In evidence, the applicant clearly equated all three terms to mean the same thing, and specifically referred to item 48A in Figure 5.[82] Mr Strachan adopted the same position.[83] The difficulty with this approach is that claim 1 clearly defines each stator surface element carrying a plurality of seed engaging surface portions (emphasis added). This would suggest the surface elements and the surface portions could not be the same thing, assuming also that the “seed engaging surface portions” (claims 1 and 2) may be equated with “stator surface portions” (description).
[82] ibid.
[83] Strachan #2 [27], ‘625.
282. In the context of the inconsistent terminology throughout the specification as a whole, I find the scope of claims 1 and 2, in respect to the defined features of the stator arrangement, is unclear. The dependent claims are similarly affected.
Plurality Of Surface Portions
283. A possible interpretation is that item 48A may be intended to be a stator surface element while sub-component items 48B and 48C may be stator surface portions. In submissions though, the applicant clearly contended that both of the embodiments in Figures 5 and 10A fell within the scope of the claims. On the other hand, Figure 10A does not illustrate stator surface elements having any sub-components. There is just a plate-like, inwardly-inclined feature, item 95, at the stator wall. Mr Strachan acknowledged it was not clear from the specification whether each component 95 carried a plurality of individual seed engaging surface portions, as claimed.[84] Thus, on the face of it, the Figure 10A embodiment cannot be read on to the claimed feature of each stator surface element carrying a plurality of seed engaging surface portions.
[84] Strachan #2 [35] – [37], ‘625.
284. Consequently, this interpretation does not assist the clarity of the claims.
285. A further problem is the inconsistency in the applicant’s evidence as to what makes up the stator or stator surfaces in respect to the Figure 10A embodiment. In searching for multiple stator surface portions related to item 95, Mr Strachan suggested item 95 had a second part or surface lying flat against the internal surface of the wall 82.[85] Firstly, that is not shown in Figure 10A or described in the specification. Secondly, that assertion is inconsistent with other evidence by Mr Strachan. Elsewhere, Mr Strachan stated the internal surface of wall 82 was not a stator surface while item 95 was such a surface. The reason Mr Strachan adopted the latter position was that he regarded that the internal wall surface 82 was not primarily impacted by chaff or weed seeds for the purpose of devitalising weed seeds.[86]
[85] Strachan #2 [36], ‘625.
[86] Strachan #2 [27], ‘625.
286. There are a number of problems also with that approach. The Figure 10A embodiment illustrates just three angularly adjustable surface portions 95 around the internal wall 82. If item 95 was an impact, seed-engaging surface, then the internal wall 82 would appear to be as well. Moreover, while it may be that the more effective impacts and devitalisation in Figure 10A arise from the inner perforated plates 89 and 90 and impact posts 92 and 94, that is not to say that the wall 82 is not also an impact and devitalising region. The specification states, at page 40 lines 23-25, that material escaping the slots 93 is accelerated angularly by a final series of posts 94 attached to the rotating base of the rotor so that the material is flung outwardly and angularly against the outer surface 82. It may also be noted that the wall 82 in Figure 10A is equivalent to the wall and stator 48 in Figure 3. At page 34 lines 16-18, the specification states that the rotor 46 and stator 48 are arranged such that the discarded seeds rebound back and forth between the rotor 46 and the stator 48 to provide a plurality of impacts on the feed material to destroy the seeds. Mr Strachan similarly stated that the insides of the walls of the housing were clearly surfaces which formed part of the stator of the destructor.[87]
[87] Strachan #2 [17], ‘625.
287. In the context of the specification as a whole and the applicant’s contentions that the Figure 10A embodiment fell within scope, I find the definition around stator surface elements carrying a plurality of individual seed engaging surface portions in claims 1 and 2 to be unclear. The dependent claims are similarly affected.
Sheet Metal Plate
288. Claim 2, at lines 20 and 21, defines that “each stator surface element comprises a sheet metal plate which is bent to define at least two individual surface portions thereof at different angles”. There appears to be no disclosure in the specification of a single piece of sheet metal being bent in this way. Instead, the specification describes individual pieces hingedly or pivotably connected to define two individual surface portions (page 35 lines 17, 18, 20 and 21). Alternatively, the single surface portions 95 around the wall 82 in Figure 10A may be angularly adjustable, and thus also appear to be pivotable, although directly with respect to the wall 82 (page 40 lines 26 and 27, and page 41 lines 7 and 8).
289. Mr Strachan referred to the specification to note that it states that, as best shown in Figure 5, each of the stator surfaces 48A comprises a generally V-shaped body with two walls 48B and 48C converging to an apex 48D which is located at one of the apexes of the polygonal shaped housing. He then suggested that one of the most obvious ways in which each of the particular components 48A in Figure 5 could be made is by beginning with a flat sheet metal plate and then bending or folding it along a single fold line to form a V shape.[88]
[88] Strachan #2 [43], ‘625.
290. On the other hand, the specification does not contemplate this arrangement. The surfaces 48B and 48C are clearly separate, flat surfaces. The stator surface 48A is mounted at the apex 48D by a hinge pin 48H. The hinge pin allows the angle of the stator surface 48C to be adjustable.[89] There is no bent sheet metal involved.
[89] ‘625 specification, page 35 lines 16-18.
291. The embodiment related to Figure 10A does not assist in this respect either.
292. I find that claim 2 is not supported by matter disclosed in the specification.
CONCLUSION
293. I have found that the opponent has not established that the nominated person was not entitled to the grant of patents in the present case, or was only jointly entitled with the opponent. Moreover, I have found that all the claims of the four applications have an inventive step.
294. On points raised by the opponent, the opponent has not established non-compliance with section 40. On the other hand, I have found that claims 1 and 2 of the ‘625 application do not comply with section 40 on other points.
295. The defects in the ‘625 application would appear to be able to be overcome by suitable amendment. I allow the applicant two (2) months from the date of this decision to propose suitable amendments under section 104 to overcome these findings.
COSTS
296. Both parties sought their costs. In this case, I see insufficient reason to depart from the normal approach that costs should follow the event.
297. The oppositions in respect to the parent application, the ‘622 application and the ‘623 application are unsuccessful. In respect of these applications, I award costs in accordance with Schedule 8 against the opponent, Seed Terminator Holdings Pty Ltd.
298. The opposition in respect to the ‘625 application is successful only on some section 40 matters not raised by the opponent. These matters would not have come to light in the absence of the opposition. In these circumstances, I make no award of costs in respect of the ‘625 application.
M. G. Kraefft
Delegate of the Commissioner of Patents
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