Stephen Anderson v LAA Industries Pty Ltd - [2021] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stephen Anderson v LAA Industries Pty Ltd
[2021] APO 47
Patent Application: 2017210650

Title:MOTOR STARTING AND CONTROL SYSTEM AND METHOD UTILISED BY DIRECTLY CONNECTED ISLANDED RECIPROACTING ENGINE POWERED GENERATORS

Patent Applicant: LAA Industries Pty Ltd

Opponent:Stephen Anderson

Delegate:Xavier Gisz

Decision Date: 23 November 2021

Hearing Date: Written submissions filed on 14 July 2021

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, and clarity –claims 1 to 20 lack novelty and inventive step – costs awarded

Representation:
Patent attorney for the applicant: Armour IP Pty Ltd
Patent attorney for the opponent: Anderson IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017210650

Title:MOTOR STARTING AND CONTROL SYSTEM AND METHOD UTILISED BY DIRECTLY CONNECTED ISLANDED RECIPROACTING ENGINE POWERED GENERATORS

Patent Applicant: LAA Industries Pty Ltd
Date of Decision: 23 November 2021

DECISION
Claims 1-20 lack novelty and inventive step in light of US 2005/0146221A1 (Pettigrew) and WO 2015/041805 (Torrey). The claimed invention is clear.
I allow the applicant two months from the date of this decision to propose amendments to overcome the deficiencies.
Costs are awarded against the Applicant.
REASONS FOR DECISION
Three concurrent oppositions

Three parties have opposed the grant of the patent: Taranis Power Group Pty, Allied Pumps Pty Ltd, and Stephen Anderson. The three parties did not request that the oppositions be enjoined and so the three oppositions remain independent.
Although there is significant overlap in the arguments made by the three parties, there are differences in the grounds and particulars of the oppositions and the evidence relied upon by each party. Consequently, there are three separate decisions for each of the three oppositions.
Background
The matters relate to the opposition to grant of patent application number 2017210650 (the application) in the name of LAA Industries Pty Ltd (LAA) (the Applicant) by Stephen Anderson (the Opponent). The application was filed on 5 August 2017 and is based on the provisional application 2016903254 with a priority date of 16 August 2016.
The Application was advertised as accepted on 28 February 2019. the Opponent filed a Notice of Opposition on 28 May 2019. The Opponent filed a Statement of Grounds and Particulars on 28 August 2019.
Evidence in Support was filed and completed by the Opponent on 28 November 2019.
Evidence in Answer was due on 2 March 2020. The Applicant filed some Evidence in Answer on 2 March 2020 and also requested an extension of time of three months, until 2 June 2020, for filing the remainder of Evidence in Answer for each of the three oppositions.
On 14 September 2020 the Delegate refused the Applicant’s request for an Extension of Time to file the remainder of its Evidence in Answer.
On 17 November 2020 the Opponent filed Evidence in Reply.
Request to consider information under Regulation 5.23
On 17 November 2020 the Applicant requested that a new declaration by James Waterreus dated 11 November 2020 (hereinafter referred to as the new Waterreus declaration) be considered by the Commissioner under regulation 5.23.
On 19 November 2020 a Delegate informed the parties that the new Waterreus declaration would not be considered under regulation 5.23. In relation to the relevance of the information provided in the James Waterreus declaration of 11 November 2020 the Delegate noted:
“The Applicant has not outlined in any material sense the significant of the material to the oppositions. Rather it is merely stated that “The information contained therein is explanatory in nature, and we do not consider it to be controversial”. The material appears to merely provide qualifying statements regarding the evidence in support in each opposition. It is not apparent how this is likely to be crucial to the delegate’s decision. Consequently, this factor weighs against allowing the Applicant’s 5.23 requests.”
On 1 December 2020 the Applicant filed a declaration by Barry Newman, further explaining why the new Waterreus declaration was filed. Mr Newman states in his declaration:
“During my review, my attention was drawn to the declaration of James Waterreus filed as evidence-in-answer to the opposition. It was clear to me that this declaration had been prepared without an appropriate amount of professional assistance. As a result, I found elements of the declaration difficult to understand.
I contacted Mr Waterreus to ask him to clarify aspects of his evidence. After receiving his response, it was apparent to me that clearer evidence from Mr Waterreus would save considerable time and effort from all parties in preparing the oppositions for hearing, and would greatly assist the delegate in narrowing the issues.
…
On 10 November 2020 I provided Mr Waterreus with a further draft of the declaration. He replied with comments and corrections on 11 November 2020. I then produced final versions of the declarations, which Mr Waterreus duly signed.”
The new Wattereus declaration explains the differences and benefits of the present invention with respect to the prior art. The new Wattereus declaration reinforces the information already present in the Applicant’s Evidence in Answer. I am not satisfied that the information provided would be determinative of the opposition. Consequently, I will not rely upon this information under regulation 5.23.
Evidence
The Opponent’s Evidence in Support comprises:
·Declaration of Professor Syed Mofizul Islam dated 25 November 2019 (Islam 1) accompanied by exhibits SMI-1 to SMI-13
·Declaration of Dana Robert Pettigrew dated 22 November 2019 (Pettigrew 1) accompanied by exhibits DRP-1 to DRP-5
·Declaration of Wojciech (Andy) Limanowka dated 22 November 2019 (Limanowka) accompanied by exhibits WAL-1 to WAL-5
·Declaration of Zoran Vukadin dated 27 November 2019 (Vukadin) accompanied by exhibits ZV-1 to ZV-4
The Applicant’s Evidence in Answer comprises:
·Declaration of Jim Waterreus dated 2 March 2020 (Waterreus)
·Declaration of Mark Keogh dated 2 March 2020 (Keogh) accompanied by exhibits MVK‑1 to MVK-7
·Declaration of Fidel Dela Paz dated 2 March 2020 (Dela Paz) accompanied by exhibits FDP-1 to FDP-17
The Opponent’s Evidence in Reply comprises:
·Statutory Declaration of Professor Syed Mofizul Islam dated 11 November 2020 (Islam 2)
·Statutory Declaration of Dana Robert Pettigrew dated 12 November 2020 (Pettigrew 2) accompanied by exhibits DRP-1 to DRP-13
·Statutory Declaration of Allan Thomas Lillies dated 10 November 2020 (Lillies) accompanied by exhibits ATL-1 to ATL-2
·Declaration of Leon Benjamin Waldner dated 11 November 2020 (Waldner) accompanied by exhibits LBW-1 to LBW-5
Expert evidence
The Opponent has provided evidence of Professor Syed Mofizul Islam, Dana Robert Pettigrew, Wojciech (Andy) Limanowka, Zoran Vukadin, Allan Thomas Lillies, and Leon Benjamin Waldner.
The Applicant has provided evidence of Jim Waterreus, Mark Keogh and Fidel Dela Paz. Mr Dela Paz is a patent attorney and is not asserted to be an expert in relation to the technology of the invention. Mr Waterreus has close professional links with the Applicant. However, I this does not significantly affect the weight I will give to his evidence. I accept that he has provided his objective professional opinion on the matters at hand.
Each of the experts (Professor Syed Mofizul Islam, Dana Robert Pettigrew, Wojciech (Andy) Limanowka, Zoran Vukadin, Allan Thomas Lillies, and Leon Benjamin Waldner, Jim Waterreus, and Mark Keogh) have a significant amount of experience relevant to understanding the present invention and the prior art.
Grounds of Opposition
The Opponent has opposed the grant of the patent on the grounds of: Novelty, Inventive step, and clarity
Specification
The invention relates to an engine-powered generator system for starting, powering and controlling electric motors and motor-driven devices.
The description states at paragraph 1:
“The present invention relates to a system for starting and controlling an electric motor and/or motors solely via an optimally sized generator connected directly to said electric motor, including induction motor and/or motors, eliminating the need for external conventional current-limiting motor starting and control devices such as VSD (Variable Speed Drives), Soft-starters, Star/Delta Starting, Auto-transformers or the need to use expensive Wound-rotor motors.”
The invention is essentially using less electronics (than a traditional generator) to ‘condition’ power between the engine-powered generator (which generates electricity) and the electric motor (which consumes the electricity).
Because there is less ‘conditioning’ of power between the generator and electric motor, this requires changes to the system, (when compared with a traditional generator) to ensure enough power is delivered to the electric motor when it is needed. In particular, this requires more active control of the engine speed (when compared with a traditional generator).
The system has sensors to measure the parameters of the effects of the motor (in particular fluid flow, fluid pressure or fluid level), instead of the parameters of the motor itself. The measured parameter is then compared against the desired ‘parameter set-point’. For example, if the motor drives a pump to keep water at a particular level, data from the water level sensor is compared and used to maintain a desired ‘parameter set-point’.. The speed of the generator is adjusted based on this comparison to keep the system at the parameter set-point.
The invention is shown in figure 1:
Construction
Construction Legal Principles
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70:
“...the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification ... This applies to words used in the claims. ... the construction of a specification, including the claims, is ultimately a question of law ...
...While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole ...
It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ...”
The following pithy advice was provided by Middleton J in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368:
“Above all, the [decision maker] should approach the task of patent construction with a generous measure of common sense.”
Construction of terms
ECU - Engine control unit
An ECU (engine control unit) is an electronic control unit that controls an internal combustion engine speed to ensure optimal engine performance. It does this by reading values and adjusting the engine actuators.
I consider that any electronic control of the engine speed falls within the scope of an ECU.
AVR – automatic voltage regulator
A voltage regulator is an electronic device that stabilises voltage. An automatic voltage regulator AVR is a feedback control system that adjusts the voltage. The feedback control takes the output voltage of the AVR as an input (together with other input) to control the voltage.
Alternator
The alternator converts mechanical energy to electrical energy in the form of an alternating current.
The frequency and voltage output by an alternator is directly related to the speed of the engine which spins the rotor of the alternator.
VSD – Variable Speed Drive
A Variable Speed Drive (VSD) converts electricity of one frequency and voltage, and converts it to another frequency and voltage to drive an electric motor. A VSD ‘conditions’ electricity so it can drive the motor at the desired speed.
The waveform generated by a VSD are typically entirely ‘synthetic’. That is, the waveform does not merely modify the incoming waveform by adjusting parameters of the original waveform; it creates a new waveform ‘from scratch’.
HMI – Human machine interface
The human machine interface allows a person to adjust the settings of the system. For example, allowing the user to set the parameter set-point.
Fluid flow, fluid pressure, fluid level
Claim 1 contains the feature of:
“the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level”
I understand the words “selected from” to mean that the claim only requires that one of these three parameters are measured and sent to the system controller.
I consider that fluid flow, fluid pressure, fluid level are each a measure of the fluid in the system external of the pump and motor, and do not include measures of fluid within the pump.
Claims
The specification ends with 20 claims; 2 independent claims and 18 dependent claims. The independent claims are reproduced below:
Claim 1
A starting and control system for an assembly having an electric motor or motors, the system comprising:
- a generator assembly comprising an engine coupled to an alternator;
- an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
- an engine control unit (ECU) for controlling an operation of the generator engine;
- a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output, the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,
- wherein parameter set points are set in the system controller, and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level
- the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
- wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.
Claim 20
A method for starting a motor or motors using a generator assembly comprising an engine coupled to an alternator, the method comprising:
- generating a voltage from the generator assembly for supply to the motor or motors;
- controlling the voltage generated by the alternator via an automatic voltage regulator (AVR);
- controlling the speed of the generator engine and therefore alternator frequency via an engine control unit (ECU);
- controlling the AVR and ECU via a system controller;
- setting parameter set points in the system controller, and the system controller receiving sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level – the AVR is to cause the generator alternator voltage to vary as the ECU is controlled to cause the generator engine to increase or decrease in speed with the alternator voltage varying in proportion to engine speed so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points and to maintain the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.
Integers of claim 1
Professor Islam at paragraph 54 of his declaration has split claim 1 into integers as follows:
Integer 1.1 A starting and control system for an assembly having an electric motor or motors,
Integer 1.2 the system comprising:
Integer 1.3 a generator assembly comprising an engine coupled to an alternator;
Integer 1.4 an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
Integer 1.5 an engine control unit (ECU) for controlling an operation of the generator engine;
Integer 1.6 a system controller connected to the AVR and operable to control the AVR,
Integer 1.7 the system controller controlling the manner in which the AVR controls the alternator voltage output,
Integer 1.8 the system controller being connected to the ECU
Integer 1.9 and operable to control the manner in which the ECU controls the generator engine speed
Integer 1.10 and therefore frequency of the voltage output from the alternator,
Integer 1.11 wherein parameter set points are set in the system controller,
Integer 1.12 and the system controller receives sensor signals,
Integer 1.13 and based on type of control selected - selected from fluid flow, fluid pressure and fluid level -
Integer 1.14 the system controller is configured and operable to control the AVR and/or the ECU
Integer 1.15 to vary the speed of the generator engine
Integer 1.16 and the alternator voltage output by the generator assembly
Integer 1.17 so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
Integer 1.18 wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed
Integer 1.19 which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.
Clarity
Clarity legal principles
It is a requirement of section 40(3) of the Patents Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claim” Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.
As noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121:
“The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
Clarity of present claims
The Opponent states in their submissions:
“The Act requires the claims of a complete specification to be clear. Despite that requirement, claims 1 and 20 of the ‘650 Application are articulated in the following ambiguous terms:
“... maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics”
The above statement is productive of confusion and susceptible of various meanings. By way of illustration, at the Priority Date, the skilled person could have construed the term “speed to voltage relationship” as a reference to either:
a. the relationship between the speed of the engine, as claimed, and the output voltage of the alternator, as claimed; or
b. the relationship between the speed of the electric motor(s), as claimed, and the output voltage of the alternator, as claimed.
The significance of this ambiguity, and the competing interpretations it gives rise to, is explained by Professor Islam in the following terms:
“… the meaning of the following language relating to claims 1 and 20 of the ‘650 Patent is not clear to me: “maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.” In particular, “speed to voltage relationship” could mean either (i) the relationship between the speed of the engine and the alternator’s output voltage or (ii) the relationship between the speed of the electric motor and the alternator’s output voltage. Anderson IP asked me to identify any information given in the description or drawings of the ‘650 Patent that helps me to determine the meaning that was intended. The description and drawings do not assist me in this regard. The phrase “speed to voltage relationship” is repeated verbatim in various places throughout the description (for example, in para. [74]) but no additional context or clarification is provided.”
Including for the above reasons, claims 1 and 20 of the ‘650 Application (and, therefore, by extension dependent claims 2 to 19) are not clear and do not comply with Section 40(3) of the Act.”

The Applicant states in their submissions:
“Waterreus explains the claimed integer: “ … the voltage to frequency (prime mover / engine speed) ratio is controlled in such a manner to meet the requirements of the manufacturer of the motor and to maximise motor efficiency in doing so.
The precise nature of this control (whether or not it is the strict “constant volts-er-Herz characteristic”, a variation away from this to compensate for second order effects, or a variation in response to a system controller command) will depend on the requirements of the particular motor, and are defined by the motor manufacturer.”
I consider that this feature essentially excludes any speed to voltage relationship that would be unsuited to the motor. I consider this aspect of the claims to be clear.
Novelty
Novelty Legal Principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
Novelty documents
The Opponent asserts that the claimed invention lacks novelty in light of US 2005/146221A1 (Pettigrew) (which will be referred to as D1), WO2015/041805 (Torrey) (which will be referred to as D2), presentation slides entitled “Advantages of the Variable Frequency Generator (VFG)©” (which will be referred to as D3), and the prior use of the generator system described in D3.
D1 – US 2005/0146221 (Pettigrew)
D1 relates to a generator to provide power to a motor. The electrical power to the motor is adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D1 shows a depiction of the prior art in figure 1 and the invention in figure 2:
Professor Islam states in Annexure SMI-6 of his declaration:
“Integer 1.1 - A starting and control system for an assembly having an electric motor or motors
Pettigrew discloses a power system that is suitable for use with electric motors (including electric motors in electric submersible pumps) and includes both start-up and control functionality.
Column 3, lines 43-44:
"The present invention is a variable frequency power system to drive a three phase electrical motor ... "
Column 3, line 65 to column 4, line 3:
"Not only can this equipment allow for desired steady-state operational parameters, it can be setup to allow for completely different parameters during start-up of high power draw electrical devices, such as electric motors, or to react to monitored inputs of the driven unit."
Column 4, lines 40-41:
"Special logic circuit programs are used for startup and normal operational ranges."
Integer 1.2 - the system comprising:
See 1.3 -1.19 below.
Integer 1.3 - a generator assembly comprising an engine coupled to an alternator;
The system in Pettigrew includes an engine that drives a three-phase AC electrical generator.
Column 5, lines 24-25:
"The engine rotates the three phase electrical generator designed for variable frequency operation."
Column 3, lines 49-51:
"The electric submersible pump is driven by alternating current (AC) three phase electrical motor ... "
Integer 1.4 - an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
Pettigrew discloses an excitation controller for varying the voltage output of the electrical generator.
Column 4, lines 36-37:
"The excitation controller is used to adjust voltage output of the generator .... "
Column 4, lines 54-56:
"The voltage output of the generator is controlled by the excitation controller in order to provide the appropriate voltage required by the motor."
Integer 1.5 - an engine control unit (ECU) for controlling an operation of the generator engine;
Pettigrew discloses a system controller that controls the speed of the engine that drives the electric generator.
Column 4, lines 3-4:
"The system controller of the variable frequency power system controls the generator speed ... "
Column 4, lines 27-28:
"The engine includes a throttle that is regulated by the system controller."
The system controller includes a dedicated logic circuit specifically configured to control the speed of the engine – Column 3, lines 55-58:
"The variable frequency power system includes a specially programmed logic circuit in a system controller, which interfaces with the power source of the generator."
Integer 1.6 - a system controller connected to the AVR and operable to control the AVR,
The system controller disclosed in Pettigrew is connected to, and controls, the
excitation controller. Column 5, lines 35-36:
"The system controller interfaces with the throttle device and the excitation controller ..."
Integer 1.7 - the system controller controlling the manner in which the AVR controls the alternator voltage output,
The system controller in Pettigrew controls the excitation controller (as per 1.6 above). The excitation controller, in turn, adjusts the output voltage of the electrical generator.
Column 4, lines 3-4:
"The system controller of the variable frequency power system controls the generator speed and output voltage"
Column 6, lines 50-51:
"…the system controller instructs the excitation controller to ramp up the voltage ... "
Integer 1.8 - the system controller being connected to the ECU
As per 1.5 above, the system controller in Pettigrew includes a logic circuit that
controls the engine speed.
Integer 1.9 - and operable to control the manner in which the ECU controls the generator engine speed
As per 1.5 and 1.8 above.
Integer 1.10 - and therefore frequency of the voltage output from the alternator,
The system controller in Pettigrew varies engine speed to, in turn, vary the generator output voltage frequency.
Column 4, lines 58-61:
"A system controller is used to control the frequency output of the electrical generator by controlling the engine throttle device, speed control settings"
Column 5, lines 58-59:
"An increase or decrease in engine speed would in turn increase or decrease the frequency of generated three phase power being supplied to the three phase motor by the generator."
Integer 1.11 - wherein parameter set points are set in the system controller,
The system controller in Pettigrew may be programmed with operating parameter set points associated with the power system, including the electric motor, that are maintained by the system controller.
Column 4, line 66 to column 5, line 3:
"The variable frequency power system controller is connected by cables to the switchboard and by cables to the engine to monitor, control and adjust the power to the motor by numerous programmed parameters in the system controller."
Column 5, lines 35-38:
"The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor."
Integer 1.12 - and the system controller receives sensor signals,
The system controller in Pettigrew receives signals from sensors.
Column 5, lines 38-43:
"The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application. The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself."
Integer 1.13 - and based on type of control selected - selected from fluid flow, fluid pressure and fluid level –
The system controller in Pettigrew may receive sensor signals relating to various different operational conditions of the driven motor. Column 4, lines 3-6:
"The system controller of the variable frequency power system controls the generator speed and output voltage, and is capable of accepting inputs from external sources to control the operation of the entire system."
As per 1.11 and 1.12 above, the system controller may be selectively configured to maintain set points relating to the operational conditions.
Column 4, lines 7-8 of Pettigrew disclose that in examples where the system is used to power electric submersible pumps, "current draw and pump operating pressures" can be monitored and generator frequency and voltage can be automatically adjusted in response to changes to these readings. Further, column 1, lines 55-62 of Pettigrew explain that changes in fluid conditions can occur in well bores when being pumped by electric submersible pumps. Further, changes in these fluid conditions can be accommodated by varying the power supply frequency to the electric motor of the pump (see column 1, line 67 to column 2, line 3).
I, therefore, understand that the system controller in Pettigrew is capable of executing fluid flow, fluid pressure and/or fluid level control modes.
Integer 1.14 - the system controller is configured and operable to control the AVR that and/or the ECU
As per 1.6 - 1.9 above, the system controller is connected to (and controls) both the excitation controller and the logic circuitry coupled to the system controller controls the engine speed.
Integer 1.15 - to vary the speed of the generator engine
As per 1.5 and 1.8-1.9 above, the system controller in Pettigrew varies the engine's speed by controlling its throttle.
Integer 1.16 - and the alternator voltage output by the generator assembly
As per 1.6 and 1.7 above, the system controller in Pettigrew varies the generator output voltage by controlling the engine speed and excitation controller.
Integer 1.17 - so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
The system controller in Pettigrew varies the engine speed and generator output voltage to, in turn, vary the speed of the electric motor to maintain/regulate the relevant operational parameters.
Column 3, lines 55-61:
"The variable frequency power system includes a specially programmed logic circuit in a system controller, which interfaces with the power source of the generator. The programmed logic circuit is designed to monitor and control the driven unit by monitoring the conditions of the driven unit and controlling the supplied power to the motor."
Column 5, lines 35-41:
"The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor. The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application"
Integer 1.18 - wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed
The excitation controller disclosed in Pettigrew, which is controlled by the system controller, causes the output voltage of the generator to increase and decrease (see 1.6 and 1.7 above).
Column 5, lines 32-35 also confirm that:
"The excitation controller is a voltage regulator capable of varying its voltage output in a programmable manner to the engine speed driving the generator."
Integer 1.19 - which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.
I understand that the output voltage of the generator in Pettigrew is varied in a manner that is compatible with the electric motor's electrical characteristics and operating speed. If the output voltage is not supplied in this manner, the motor would not operate correctly.
Column 4, lines 54-56 of Pettigrew confirm:
"The voltage output of the generator is controlled by the excitation controller in order to provide the appropriate voltage required by the motor."
Column 3, lines 61-65 of Pettigrew also confirm :
"The system controller would [sic] be responsible for adjusting and monitoring the generator output, and would [sic] adjust the generator to any voltage and frequency required by the driven unit within the effective operational limits of the generator"”
The Applicant disagreed that D1 discloses: the ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D1 as explained by Professor Islam.
ECU
The Applicant states in their submissions at paragraph 125:
“Properly understood, Pettigrew discloses an electronically controlled throttle not an ECU. Notwithstanding that the throttle can perform essentially the same function as an ECU (although not as precisely), it is a different device. The two devices perform similar functions in a different manner. This is fatal for each Opponent’s case.”
It is unclear what distinction the Applicant is drawing between an “engine control unit” and “electronic speed controller to control the speed of the engine”. As previously discussed in this decision in the construction, an ECU only requires some kind of electronic control of the engine speed; that is, not a purely mechanical control (e.g. valves controlling the rate of fuel and air).
D1 states at the second sentence of paragraph 15:
“The throttle device is usually a combination of a throttle and electronic speed controller to control the speed of the engine, and thus control the turning frequency of the engine.”
It is clear from this sentence that D1 discloses an ECU.
Parameter set-points
D1 states at paragraph 11:
“The system controller would be responsible for adjusting and monitoring the generator output, and would adjust the generator to any voltage and frequency required by the driven unit within the effective operational limits of the generator. Not only can this equipment allow for desired steady-state operational parameters, it can be set up to allow for completely different parameters during start-up of high power draw electrical devices, such as electric motors, or to react to monitored inputs of the driven unit. The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed.”
The Applicant states in their submissions at paragraphs 128 to 129:
“Waterreus gives evidence that the reference to “operational parameters” in the above passage is not a reference to the set-point control that is described and claimed. He makes the distinction between process sensors and equipment/load sensors. Process sensors measure conditions external to the equipment, such as the fluid pressure (which can be measured anywhere along an outlet pipe). Equipment sensors measure conditions of the equipment itself, such as current draw, voltage, temperature and the like.
Pettigrew on page 8 lines 19 to 24 states:
“The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor …The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself”.
Properly understood, Pettigrew is there describing monitoring of the condition of the motor and/or pump, with a view to maintaining the operation of the equipment within safe operating limits; that is, within a safe range for each operating parameter. In contrast, the invention described and claimed in the Opposed Application involves monitoring external parameters, (described in the opposed specification as being done by a ‘load environment sensor’) with a view to maintaining one of those parameters at a desired set-point
I agree with the applicant that ‘parameter set-point’ disclosed in D1 is a parameter of the pump/motor. However, the ‘parameter set-point’ defined in the claim can include both external and internal parameters. This is made clear in claim 19 which provides a list of parameter set-points which includes internal parameters of the motor such as belt speed and torque.
I consider that ‘desired steady-state operational parameters’ disclosed in D1 is equivalent to the ‘parameter set-point’ defined in the claim.
D1 discloses the feature of a ‘parameter set-point’.
Types of control (fluid flow, fluid pressure and fluid level)
The Applicant states in their submissions:
“Anderson appears to contend that because Pettigrew refers to the ability to be programmed with “numerous programmed parameters” this in combination with CGK represents an enabling disclosure of the claimed limitation. The justification for this seems to be that Pettigrew “can be programmed” in the manner of the claimed invention. Again, this is an impermissible attempt to supplement what is disclosed in Pettigrew by adding features drawn from common general knowledge.”
D1 discloses at the last sentence of paragraph 3:
“These varying fluid production conditions can be accommodated by the varying of the power supply frequency to the motor of the pump to maximize oil production from wells.”
D1 discloses at paragraph 11 controlling ‘pump operating pressure’; the last 3 sentences of paragraph 11 state:
“In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed. The variable frequency power system can also include a human-machine interface. The human-machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
In light of the following sentence which states: “In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed.” it could be inferred that ‘external sources’ includes parameters from the pump/motor.
D1 discloses the measure of ‘pump operating pressures’. The question is whether measuring pump pressure is the same as measuring ‘fluid pressure’ as claimed. Overall, I consider the “pump operating pressures” is referring to both the inlet pressure and the outlet pressure since measuring only one of inlet and outlet pressure provides inadequate information to determine how the pump is operating. The Applicant accepts that outlet pressure is a measure of fluid pressure (see paragraph 128 of their submissions). D1 therefore discloses the feature of fluid pressure being used as a control input.
D1 – US 2005/0146221 (Pettigrew) – conclusion – independent claims
Claims 1 and 20 are not novel in light of D1.
D2 – WO2015/041805 (Torrey)
D2 relates to a generator to provide power to a motor. The electrical power to the motor is ‘converterless’ and adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D2 shows a depiction of the prior art in figure 1 and the invention in figure 2:

Professor Islam states in Annexure SMI-4 of his first declaration:
Integer 1.1 - A starting and control system for an assembly having an electric or motors,
Torrey discloses a system that is capable of starting and controlling an electric motor (34 in Fig. 3). This includes a motor of an electric submersible pump (item 26 motor in Fig. 3). Para. [0006] discloses:
"According to one embodiment, a converterless motor-driven pump system comprises: ... at least one electric power generator .... and at least one variable speed motor directly powered by the at least one electric power generator''
Para. [0006] also explains that the system may be used "during system starting" of
the motor 34.
Integer 1.2 - the system comprising:
See below.
Integer 1.3 - a generator assembly comprising an engine coupled to an alternator;
Torrey discloses a prime mover (item 21 in Fig. 2) that drives an AC generator (item 22 in Fig. 2). Further, para. [0006] of Torrey discloses:
"According to one embodiment, a converterless motor-driven pump system comprises: ... at least one off-grid prime mover ... at least one electric power generator driven by the at least one off-grid prime mover to generate AC power''
Integer 1.4 - an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
Paras. [0020] and [0029] of Torrey explain that the generator 22 may comprise an "exciter" (item 39 in Fig. 3) which controls the output voltage of the AC generator 22.
Integer 1.5 - an engine control unit (ECU) for controlling an operation of the generator engine;
Para [0006] of Torrey discloses that the prime mover 21 comprises a throttle control (item 38 in Fig. 3) and operates in response to a "throttle control command to control a rotation speed of the rotational driveshaft''. The throttle control command is generated by a system controller 36. The throttle control 38 and system controller 36, together, provide an ECU.
Integer 1.6 - a system controller connected to the AVR and operable to control the AVR,
Para [0020) of Torrey confirms that the system controller 36 "commands the generator exciter" of the AC generator 22.
Integer 1.7 - the system controller controlling the manner in which the AVR controls the alternator voltage output,
As per 1.4 and 1.6 above, the system controller 36 controls excitation within the AC generator 22 to, in turn, control the voltage output of the generator 22.
Integer 1.8 - the system controller ECU
Para [0006] of Torrey discloses that the system controller 36 is "programmed to being connected to the generate the throttle control command" that the prime mover 21 responds to (see 1.5 above).
Integer 1.9 - and operable to control the manner in which the ECU controls the generator engine speed
As per 1.8 above.
Integer 1.10 – and therefore frequency of the voltage output from the alternator,
The system controller 36 in Torrey varies the prime mover 21 speed to, in turn, vary the voltage frequency that is supplied by the AC generator 22 to the connected electric motor 34.
Para [0022] of Torrey: "According to another aspect, the system controller 36
monitors the voltage, frequency and current being supplied to the motor 34, and
generates the prime mover throttle control command in response to the monitored
information to modify control of the prime mover 21."
Integer 1.11 - wherein parameter set points are set in the system controller,
The system controller 36 in Torrey monitors one or more operating conditions associated with the pump 26 that is being powered and controlled by the system 20.
The system controller 36 controls the prime mover 21 to maintain one or more desired operating "points" associated with the pump 26 in response to changes in the operating conditions. See, for example, paras. [0020] and [0029] and claim 1 of Torrey and block 48 in Figure 4.
Integer 1.12 - and the system controller receives sensor signals,
The system 20 in Torrey comprises sensors that monitor various operating conditions associated with the pump 26. The data obtained by the sensors are then "acquired" by the system controller 36: para. [0029] of Torrey.
Integer 1.13 - and based on type of control selected - selected from fluid flow, fluid pressure and fluid level -
As per 1.11 above, I understand that the system controller 36 in Torrey maintains set points relating to operating conditions of the pump 26. Para [0020] of Torrey says:
"The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation ... ". Further detail about operating conditions that may be monitored to regulate well loading (fluid flow/speed, pressure and level set points) is provided in paras. [0006-7], [0014-16] and [0029-30] of Torrey.
I, therefore, understand that the system controller 36 is capable of executing fluid flow, fluid pressure and/or fluid level control modes.
Integer 1.14 - the system controller is configured and operable to control the AVR and/or the ECU
As per 1.6 -1.8 above, the system controller 36 in Torrey is connected to (and controls) both the exciter 39 of the generator 22 and the throttle control 38 of the prime mover 21.
Integer 1.15 - to vary the speed of the generator engine
As per 1.5 and 1.9 above, the system controller 36 in Torrey varies the prime mover 21 speed.
Integer 1.16 - and the alternator voltage output by the generator assembly
As per 1.6 and 1.7 above, the system controller 36 in Torrey varies the generator output voltage via the exciter 39.
Integer 1.17 - so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
The system controller 36 in Torrey varies the prime mover 21 speed and the generator output voltage to, in turn, vary the speed of the electric motor 34 to maintain the relevant operational parameter points (see, for example, the explanation given in para. [0006] of Torrey).
Integer 1.18 - wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed
The generator exciter 39 used in Torrey, which is controlled by the system controller 36, causes the output voltage of the generator 22 to increase and decrease (see 1.6 and 1.7 above). I repeat what I have said in paragraph 24 of this declaration about the relationship between engine speed and alternator output voltage. A change in the prime mover's 21 speed results in a proportional change to the generator output voltage. This relationship is controlled by an excitation system.
Integer 1.19 - which maintains the speed to voltage - relationship required to suit the motor or motors' electrical characteristics.
I understand that the output voltage of the generator 22 in Torrey is varied in a manner that is suitable/compatible with the electrical characteristics of the motor 34 that is powered by the generator 22, including based on the motor's current speed. Torrey discloses that the electric motor 34 may be an induction motor (see, for example, para. [0019]). If the output voltage does not accord with the induction motor's speed (rotational frequency), the motor 34 will not operate correctly.
The Applicant disagreed that D2 discloses: the AVR, ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D2 as explained by Professor Islam.
AVR
D2 states at paragraph 20:
“According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
D2 states at paragraph 29:
“According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”
D2 states at paragraph 32:
“Since some applications may employ a permanent magnet generator that does not require excitation, it can be appreciated that a generator exciter will not be required in such applications. The use of a permanent magnet generator further simplifies the converterless ESP system 30 without sacrificing performance, as stated herein.”
The Applicant states in their submissions:
“Torrey describes a non-automatic voltage regulator which controls excitation based on rotational speed of the drive shaft, that is, engine speed. There is broad agreement that an AVR measures and controls output voltage, rather than setting excitation based on engine speed. However, there is no evidence that the excitor of Torrey works in this fashion, and no obvious reason why an AVR would be used instead of a simple regulator.
Spirovski, Rosewarne, Holmes and Islam all refer to the abovementioned passages as disclosing an AVR. This evidence is contradicted by Waterreus who explains the differences between the non-automatic voltage regulator disclosed in Torrey and the automatic voltage regulator (AVR) of the present invention. As Waterreus explains, the key difference is that the AVR of the invention controls excitation based on measured output voltage (a feedback loop using a voltage setpoint), whereas the non-automatic voltage regulator of Torrey controls excitation based on engine speed. The AVR of the invention provides more precise control than Torrey’s non-automatic voltage regulator.
Mr Spirovski does not address the difference between the non-automatic voltage regulator of Torrey and the AVR of the invention. Mr Rosewarne “understands” the generator excitor of Torrey to be an AVR but provides no basis for this assertion. Prof Holmes posits that “the system controller must include the functionality of an AVR”, although it is not clear on what basis he makes that assertion. This is no evidence that the exciter disclosed in Torrey is an AVR as claimed.”
The Opponent states in their submissions:
“LAA submits that the voltage regulator system disclosed in D1 comprises an exciter that varies the alternator output voltage based solely on the generator engine speed and does not regulate the output voltage by automatically measuring and adjusting that voltage. LAA relies on the evidence provided in Waterreus 1 at [20(i)] in support of this contention. In that evidence, Mr Waterreus only offers a construction of the term “generator excitor” as claimed in D1. He does not appear to appreciate that the excitor forms part of the broader voltage regulator system disclosed in D1. Mr Waterreus does not address any of the information given in the description or drawings of D1 and reaches his conclusion without any consideration of such information.
The system disclosed by the `650 Application operates on the basis that the frequency of the AC power produced by the alternator is the same as the frequency of the generator’s rotating drive shaft (i.e., the generator’s speed). This fundamental premise forms an essential integer of claim 1 of the `650 Application, which reads: “the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator”. A voltage regulator system that varies alternator output voltage based on the speed/frequency of a connected generator engine also, therefore, necessarily varies the output voltage based on the alternator’s voltage frequency. D1 discloses that the system controller in D1 commands the exciter based on the engine/alternator frequency to control the alternator output voltage and, therefore, pump speed. On this basis, the system controller and exciter disclosed in D1 together function as, and amount to, an AVR as claimed.”
I previously found that an AVR is a feedback control system, whereas a voltage regulator does not rely on feedback (and instead on a reference voltage).
I consider that the excitor generator is under a feedback control system (for example, last sentence of paragraph 29). I am satisfied that Torrey discloses an AVR.
ECU
The Applicant states in their submissions:
“As submitted above in relation to Pettigrew, an electronically controlled throttle may perform essentially the same function as an ECU but it is not the same device as an ECU. The two devices perform a similar function in different manner. This is fatal to the Opponents’ case.”
I have found an ECU is electronically controlled. I am satisfied that the control of the engine is electronic, therefore this feature is disclosed in D2.
Parameter set-points
D2 states at paragraph 20:
“The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
D2 states at paragraph 29:
“A sensor package 28 that may comprise, without limitation, various pressure sensors, temperature sensors, vibration sensors, and speed sensors associated with the submersible well pump 26 function to monitor operating conditions including without limitation, pump inlet pressure, pump vibration levels, pump rotational speed, and temperatures at desired points associated with the submersible well pump 26, as represented in block 46. The monitored operating data is acquired by a system controller 36 that determines whether the prime mover driveshaft should be rotating at a different speed. The system controller 36 then transmits an appropriate throttle control command 38 to the prime mover 21, causing the prime mover driveshaft to rotate faster or slower as necessary to ensure the submersible well pump 26 is operating at the desired operating point, as represented in block 48. According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”
The Applicant states in their submissions:
“As in the case of Pettigrew, Torrey is describing monitoring the condition of the equipment, with a view to maintaining the operation within safe parameters. The present invention proposes monitoring external parameters, with a view to maintaining one of these parameters at a desired set-point. Tellingly, Torrey does not disclose constant adjustment of the driveshaft speed in response to any change in operating conditions (that is, set-point control). Rather, the language of Torrey is “should the speed be changed”. This is strongly suggestive of monitoring for operation within safe ranges rather than set-point control.”
I consider that the “desired pump operating point” in D2 is equivalent to the parameter set point defined in the claims. D2 therefore discloses the feature of parameter set-points.
Types of control (fluid flow, fluid pressure and fluid level)
D2 discloses monitoring the pump outlet pressure. As found previously in this decision, outlet pressure is equivalent of fluid pressure. Therefore this feature is disclosed in D2.
D2 conclusion – independent claims
Claims 1 and 20 are not novel in light of D2.
D3 - presentation slides entitled “Advantages of the Variable Frequency Generator (VFG)©” - The Canadian Advanced Presentation
I note at the outset that the information provided in D3 is very brief.
Slide 7 of the Canadian Advanced Presentation best shows the invention:
The Opponent states in their submissions at paragraphs 63 and 64:
D3 discloses a starting and control system for an assembly having an electric motor, which may include an electric motor of a submersible pump (e.g., D3 at slides 1-3). The system includes a generator assembly that comprises an engine coupled to an alternator (e.g., D3 at slides 9-12), an AVR for controlling an output voltage of the alternator (e.g., D3 at slides 2 and 3) and an ECU for controlling an operation of the generator engine (e.g., D3 at slide 3). A system controller is connected to the AVR and controls the manner in which the AVR controls the alternator’s output voltage (e.g., D3 at slides 2 and 3). The system controller is also connected to the ECU and controls the manner in which the ECU controls the generator engine’s speed and, therefore, frequency of the alternator’s output voltage (e.g., D3 at slide 3). D3 discloses that parameter set points may be set in the system controller (e.g., D3 at slide 20). The system controller receives signals from sensors (e.g., D3 at slide 21), and based on type of control selected - selected from fluid flow, fluid pressure and fluid level - the system controller controls the AVR and the ECU to vary the generator engine’s speed and the alternator’s output voltage so that the speed of the electric motor is varied to maintain the parameter set points (e.g., D3 at slides 2 and 20). The alternator’s output voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed to maintain the speed to voltage relationship required to suit the motor’s electrical characteristics (e.g., D3 at slides 2-6 and 13-15).
Professor Islam compared each of the integers of claims 1 to 20 of the ‘650 Application with D3 and found that D3 discloses the essential features of all claims except claims 4, 5 and 14. In the Evidence in Answer filed by LAA, neither Mr Waterreus nor Mr Dela Paz made any express reference to Professor Islam’s findings or advanced any positions expressly in response to the opinions and comments of Professor Islam. In contrast, Mr Waterreus made various general comments about the prior art cited in the Opponent's SGP.
AVR
The Applicant states:
The CA slides do not disclose an AVR as claimed. The evidence of Prof. Islam is that an AVR is disclosed on slide 3, which says that “a control module of the system controls voltage, current and frequency”.
I do not consider the statement in D3 that the control module of the system which controls voltage, current and frequency is equivalent to a disclosure of an AVR. D3 does not disclose an AVR.
ECU
The Applicant states:
The CA slides do not disclose an ECU as claimed. The evidence of Prof. Islam is that an ECU is disclosed on slide 3, which refers to an engine having a ‘governor’.
I do not consider the statement in D3 that the control module governor is equivalent to a disclosure of an ECU. D3 does not disclose an ECU.
Parameter set-points
The Applicant states:
The CA slides do not disclose the use of parameter set-points as claimed. Prof Islam refers to the phrase ‘pressure setpoint’ which appears on slide 20 as showing the use of set-points. The context of this slide is ‘fixed speed’ operation of the pump. Given that context, it is self-evident that the pressure reference cannot be a set-point in the sense used in claim 1. Prof Islam also refers to SCADA communication as being “typically used to implement closed loop control systems”. SCADA (Supervisory control and data acquisition) systems are used widely for many purposes including closed loop control, control within safety parameters, and many other applications.
I do not consider the pressure setpoint on slide 20 in D3 is equivalent to a disclosure of parameter set points as presently defined. D3 does not disclose parameter set points.
Types of Control (fluid flow, fluid pressure and fluid level)
The Applicant states:
The CA slides do not disclose the use of the three types of control (fluid flow, fluid pressure and fluid level) which are claimed. Prof Islam “understand[s] that the [system of The Canadian Advanced Presentation] can perform these control modes”. This is not the same as a disclosure.

I consider that D3 does not explicitly disclose controlling the system on the basis of fluid flow, fluid pressure and fluid level.
Conclusion on D3 - Canadian Advanced Presentation
The claims are novel in light of the Canadian Advanced Presentation.
Prior use of the CA system
The Opponent states in their submissions:
“In light of the information publicly available by the sale, supply and use of the generator system described in D3 before the Priority Date, at least claims 1 and 20 of the ‘650 Application lack novelty.”
The Opponent states in their submissions at paragraph 78:
“That evidence included:
(i)copies of sales documentation evidencing the purchase of equipment in 2003 and 2004 that was used by CAI to manufacture and supply a CA VFG unit (Nexen CA VFG) to Nexen Petroleum International Ltd (Nexen), a customer of CAI, for use in the Republic of Yemen for ESPs in an oil extraction project (CA-Nexen Sales Documentation). The CA-Nexen Sales Documentation includes:
i.a redacted copy of a purchase order dated 20 May 2003 that expressly references a “DECS 125 or 200 voltage regulator” and a “SCADAPAC # 32”;
ii.a redacted copy of a written proposal dated 17 July 2003 that expressly references a “Basler DECS voltage regulator”;
iii.a redacted copy of an invoice dated 29 February 2004 that expressly references a “DECS-200 Digital excitation Control System” and a “SCADAPAC # 32”;
(ii)copies of photographs evidencing the deployment and public use of the Nexen CA VFG in the Republic of Yemen for the above-referenced project;
(iii)a copy of an operator’s manual for the CA VFG dated June 2004 supplied by CAI to its customers (CA VFG Operator’s Manual ’04). This document includes information about a “DECS-200 Digital Excitation Controller” included in a control enclosure of the CA VFG112 and expressly describes this device as an “automatic voltage regulator”.”
The evidence of the prior use of the CA VFG unit provides no more information on the internal workings of the machine than the CA presentation. For the same reasons that the CA presentation does not disclose the features of the claimed invention, the CA system does not disclose the features of the claimed invention.
Dependent claims
Claims 2 and 15
Claim 2 states:
A starting and control system as claimed in claim 1, wherein the system controller is controlled by a human machine interface (HMI) coupled to the system controller.
Claim 15 states:
The starting and control system of claim 2 wherein the type of control and the parameter set point levels to be controlled are programmable through the HMI of the system controller.
D1 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 11:
“The variable frequency power system can also include a human-machine interface. The human machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
D2 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 21:
“The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator”
Claims 3, 4 and 10
Claim 3 states:
A starting and control system as claimed in claim 1, wherein the system controller is controlled by a remote control centre.
Claim 4 states:
A starting and control system as claimed in claim 3, further comprising a network interface, the network interface connecting the system controller to the remote control centre via a network.
Claim 10 states:
The starting and control system of claim 1 wherein the system controller is a microprocessor and/or microcontroller system which receives instructional input from a human machine interface and/or a remote control centre.
D1 discloses at paragraph 11:
“The variable frequency power system can also include a human machine interface. The human-machine interface can include a display screen and input 15 buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
D2 discloses at paragraph 21:
“The programmable system controller 36 may comprise, without limitation, one or more computers and/or data processors/devices and associated display devices. The data processors/devices may comprise one or more CPUs, DSPs and associated data storage devices, data acquisition devices and corresponding handshaking devices that may be integrated with the system controller 36 and/or distributed throughout the converterless ESP system 30. The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator.”
I consider that the system controller interface features defined in claims 3, 4 and 10 are disclosed in D1 and D2.
Claim 5
Claim 5 states:
The starting and control system of claim 1 further comprising a circuit breaker connected between the generator assembly and the motor or motors, wherein the circuit breaker prevents the motor or motors from drawing too high a current from the generator assembly.
D1 discloses a switchboard at paragraph 12:
"The switchboard provides the stop/start function of the motor and is usually rated for the highest voltage and amp capacity required."
I consider a circuit breaker is inherent in the switchboard in D1.
D2 discloses a circuit breaker at paragraph 6:
"and protection equipment comprising circuit breakers to ensure safety to personnel around the system, and provide protection to the prime mover, generator, and variable speed motor"
Claim 6
Claim 6 states in relation to D1:
The starting and control system of claim 1 further comprising an I/O (Input/output) module which receives sensor signals which are sent to the system controller.
D1 discloses a device to receive sensor signals at paragraphs 11 and 12.
D2 discloses a device to receive sensor signals at paragraphs 16 and 29 and Figure 3.
Claim 7
Claim 7 states:
The starting and control system of claim 1 further comprising sensors for providing the system controller with indications of the current levels of respective parameters for comparing with the parameter set points,
D1 discloses at paragraph 11:
"The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed."
D1 discloses the system comparing the current parameters with the parameter set points at paragraph 15:
“The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application. The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself.”
D2 discloses comparing current levels to parameter set points at paragraph 20:
" ... system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions."
Claims 8 and 13
Claim 8 states:
The starting and control system of claim 1 wherein the system controller can send a signal to the AVR to start or stop excitation of the alternator.
Claim 13 states:
The starting and control system of claim 1 wherein the system controller is connected to the generator assembly and can send instructions to start the generator and stop the generator.
D1 discloses at paragraph 17:
"After a given period of time elapses, the system controller instructs the excitation controller to ramp up the voltage to achieve the required volts to hertz ratio to be delivered to the motor based on the driven device."
D2 discloses at paragraph 20:
"…the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly"
D2 discloses at paragraph 29:
"…the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator"
I consider that D1 and D2 each disclose a system controller which sends a signals to the AVR and the generator; these control signals inherently include start and stop signals.
Claim 9
Claim 9 states:
The starting and control system of claim 1 wherein the ECU controls an operation of the engine including engine idle speed, and engine speed and thus alternator frequency, based on instructions received from the system controller.
D1 discloses an ECU controlling the operation of the engine based on instruction from the system controller to be disclosed at paragraph 13:
"A system controller is used to control the frequency output of the electrical generator by controlling the engine throttle device, speed control settings and also controls the on-off function of the switchboard."
D2 discloses an ECU controlling the operation of the engine based on instruction from the system controller at paragraph 20:
“The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
Claim 11
Claim 11 states:
The starting and control system of claim 1 wherein the system controller receives sensor signals from a load environment sensor, a flow meter, a pressure transmitter, or a speed sensor.
D1 discloses a pressure sensor signals at paragraph 11. D2 discloses outlet pressure signals at paragraph 20.
Claim 12
Claim 12 states:
The starting and control system of claim 1 wherein the system controller outputs instructions to the AVR and the ECU in the form of a reference voltage, an analogue signal, a digital signal, machine code, or packetized data.
Although the type of electronic signal is not specified, I consider that D1 and D2 must inherently be either an analogue or digital signal, since these are the only types of electronic signals.
Claim 14
Claim 14 states:
The starting and control system of claim 1 further comprising a step up transformer connected between the starting and control system and a high voltage (HV) load system to step up the output voltage from starting and control system to the voltage required by the HV load system.
D1 discloses a transformer between the generator and electrical motor load at paragraph 16:
“The generator can be set up with a single set of output voltage taps as shown in FIG. 3 or with multiple sets of output voltage taps as shown in FIG. 2. The use of multiple sets of output voltage taps at the generator eliminates the need for a separate transformer, which can be bulky and expensive, and yet allows for a wide range of output voltages to be produced. The operating voltage range of a generator with multiple sets of output voltage taps can be from several hundred volts to several thousand volts and can be generated at any frequency within the effective functional speed range of the motor-generator combination. Again, generator output is manipulated by the excitation controller, which allows the system controller to control and monitor the output voltage of the generator anywhere within the effective operational range of the selected output tap of the generator or transformer. A generator with multiple sets of output voltage taps can have a tap selection such as 1810, 2600 & 3640 volts or other suitable range of low, medium & high volts as is convenient to arrange during the manufacture of a given generator unit, which can be fine tuned by the excitation controller to supply the correct voltage in a range from 900-4200 volts to the motor for the operation conditions of the motor required by the drive unit. Also, a generator with multiple sets of output voltage taps can be fed into an external multiple tap transformer to achieve an even broader range of operational voltages, if required.”
D2 discloses a transformer between the generator and electrical motor load at paragraph 18:
“It can be appreciated that there may be reasons to retain a transformer between the generator 22 and the motor driven pump 26 …. one aspect, the decision to retain or remove the transformer from the system 20 may be made on the basis of system optimization rather than conceptual operation of the system 20”
Claim 16
Claim 16 states:
The starting and control system of claim 15 wherein protections are programmable to provide warnings or shutdowns on any of the sensor inputs.
D1 discloses programmable protections to provide emergency shutdown at paragraph 11:
"The variable frequency power system can be programmed with startup, steady-state operation, and emergency shutdown parameters for the driven unit."
D2 discloses providing emergency shutdown at paragraph 30:
"For reasons of safety and system protection, system elements may be included that are responsible for monitoring the operation of the system equipment, with means to instruct the controller 36 to shut down the system 30 if a failure or external event causes an exception to intended operation ... "
Claim 17
Claim 17 states:
An assembly comprising the starting and control system of claim 1 and a load system including the motor or motors.
D1 and D2 each disclose the load system to include motors throughout each specification.
Claim 18
Claim 18 states:
The assembly of claim 17 wherein the electric motor or motors operates a borehole pump or pumps, and the load system includes one or more load environment sensor or sensors including a borehole water level, pressure sensor or speed monitor, which provides an output to the system controller.
D1 discloses potential uses including submersible pumps throughout the specification. D1 also discloses sensing pressure as previously discussed in relation to the features of the independent claims.
D2 discloses use of the system with pumps and include the monitoring of pressure at paragraph 16:
"A sensor package 28 is attached to the motor-driven pump 26 that may comprise, for example, one or more temperature sensors and one or more pressure sensors to provide an indication of various pump operating temperatures and pressures."
Claim 19
Claim 19 states:
The assembly of claim 18 wherein the parameter set points include a predetermined water level, a predetermined water head, a predetermined belt speed, a predetermined pressure rating, a predetermined torque and/or a predetermined fan speed
D1 discloses parameter set points such as generator output at paragraph 11. I consider it to be inherent that the parameter set point of the generator output would include parameters such as torque.
D2 discloses parameter set points such as pressure at paragraph 29.
Conclusion novelty
Claims 1-20 lack novelty in light of D1 – US 2005/0146221 (Pettigrew) and D2 – WO 2015/041805 (Torrey).
Inventive step
Inventive step legal principles
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; [1981] HCA 12; 148 CLR 262 at 286 as follows:
“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.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; [2002] HCA 59; 212 CLR 411at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
Inventive step with respect to prior art documents
D1: US2005146221A1 (Pettigrew), D2 WO2015/041805 (Torrey) and D3 “The Canadian Advanced Presentation”
I have found the invention defined in claim 1 is not novel in light of D1: US2005146221A1 (Pettigrew) and D2 WO2015/041805 (Torrey). It follows that the claims also lack inventive step in light of these documents.
I have found that D3 “The Canadian Advanced Presentation” (and the prior use of that system) did not disclose several features of the claimed invention. I am not satisfied that a person skilled in the art would, as a matter of routine, modify D3 so as to include these features.
Conclusion
Claims 1-20 lack novelty and inventive step in light of US 2005146221A1 (Pettigrew) and WO 2015/041805 (Torrey). The claimed invention is clear.
I am unable to identify any feature in the specification which could be used as the basis to amend the claims such they define a novel and inventive claim. However, such a feature may exist. I will provide the applicant a period of two months to propose amendments to attempt to overcome the identified deficiencies.
Costs
It is normal in matters before the Commissioner that costs should follow the event. I see no reason to depart from that approach in the present case. I will award costs according to Schedule 8 against the Applicant.
Xavier Gisz
Delegate of the Commissioner of Patents