Stevelift Pty Ltd v Formark Pty Ltd and Macdonald Johnston Engineering Company Pty Ltd
[1994] APO 37
•31 May 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 629710 in the name of STEVELIFT PTY LTD
Title: Lifting Apparatus
Action: Oppositions under section 59 of the Patents Act 1952 by FORMARK PTY LTD and by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD
Decision: Issued .
Abstract: Specification and claims do not comply with section 40. Grounds of prior publication, lack of novelty and obviousness not established.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 629710 by STEVELIFT PTY LTD and oppositions thereto by FORMARK PTY LTD and by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD.
background
Application 629710 was filed by Stevelift Pty Ltd (Stevelift) on 12 October 1990 under the provisions of the Patent Cooperation Treaty as PCT/AU90/00488 based on provisional application PJ6835 filed on 12 October 1989. It was advertised accepted on 8 October 1992. A notice of opposition was filed by Formark Pty Ltd (Formark) on 8 January 1993. A notice of opposition was filed by MacDonald Johnston Engineering Company Pty Ltd (MacDonald) on 7 January 1993.
As the application was filed before but accepted after the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 and Chapter 5 of the Patent Regulations 1991 apply in relation to the oppositions.
The Statement of Grounds and Particulars was served by Formark on 8 February 1993. MacDonald served its Statement of Grounds and Particulars on 22 February 1993 after being granted a one month extension of time within which to do so.
The serving of all evidence in relation to the Formark opposition was completed on 5 January 1994. The serving of all evidence in relation to the MacDonald opposition was completed by 6 August 1993 as MacDonald did not serve any evidence in reply. The oppositions were set down for hearing in Canberra on 21 February 1994.
On 7 February 1994, Formark filed a request under regulation 5.9(1) to amend the Statement of Grounds and Particulars. The applicant objected to the allowance of this request. The matter was heard in Canberra on the same day as the hearing for the substantive oppositions and is the subject of a separate decision.
At the hearing of the oppositions, Stevelift was represented by Mr. G. Turner, patent attorney of Spruson & Ferguson, Sydney, Formark was represented by Mr. J. Forster, patent attorney of Griffith Hack & Co., Sydney, assisted by Mr. C. Schieber, also from Griffith Hack & Co. and MacDonald was represented by Mr. B. J. Hess of counsel and Mr. L. Dyson, patent attorney of Watermark, Melbourne.
THE SPECIFICATION
The accepted specification begins by stating that the invention relates to a garbage bin lifting means for garbage collection. It then describes prior art garbage bin lifting means which are adapted to grab and lift mobile garbage bins such as "rapid rails" and "otto" bins using mechanical arms attached to main lifting arms. These known types of lifting apparatus are stated as being only capable of lifting one size of bins. They are not adapted to lift commonly available 120 litre and 240 litre sized bins. The specification then has a consistory statement of the invention which is the same as claim 1. There follows a description of the preferred embodiment where reference is made to the accompanying drawings. Relevant portions of the description of the preferred embodiment are as follows:
"A linkage arrangement 13 is also provided so that the bin which is being lifted by the lifting apparatus 10 is kept generally upright until it is over the entry chute of the compactor. This is necessary to prevent the garbage within the bin from being discharged before arriving at an appropriate position relative to the truck.
.
.
The second and third members 15, 17, the lifting arm 12 and the bin securing apparatus 18 are connected in such a way so as to generally define a parallelogram linkage which maintains a particular orientation of the securing apparatus 18 relative to the ground within a certain range of movement of the lifting arm 12. After this range of movement of the lifting arm 12 is exceeded, the first member 14 causes the apparatus 18 to pivot with respect to the lifting arm 12 as it completes its rotation about the mounting member 11 into the fully raised position."
The accepted specification ends with 11 claims of which claims 1 and 2 are as follows:
Apparatus comprising:
lifting means to be attached to a vehicle, object securing means mounted to said lifting means so as to be pivotally lifted thereby and remain generally vertically orientated during a substantially (sic) portion of pivoting of said lifting means, said lifting means being moveable between a retracted position wherein said object securing means is located adjacent an object to be lifted and an extended position wherein said object securing means is in a raised, essentially inverted position, and wherein said object securing means comprises suction fastening means connected to a vacuum supply and a switch means adapted to be activated or deactivated at a predetermined position during movement of said lifting means so as to supply or disconnect said vacuum.
Apparatus according to claim 1 wherein said lifting means comprises a mounting member to be attached to a die of said vehicle in a generally vertical orientation.
STATEMENT OF GROUNDS AND PARTICULARS
The grounds of opposition set out in Formark's Statement of Grounds and pursued at the hearing were those specified in paragraphs 59(1)(e), (g), (h) and (i) of the Patents Act 1952 viz. prior publication, lack of novelty, obviousness and non-compliance with section 40. MacDonald also relied on these four grounds. Although its Statement of Grounds included a fifth ground viz. that of obtaining, Mr. Hess indicated at the hearing that MacDonald would not be pursuing this ground.
The Formark Particulars
In support of the grounds of prior publication and lack of novelty, paragraph 1 of the Particulars lists 5 patent documents.
Paragraph 2 refers to various brochures and other material collected at an exhibition in Germany which support the grounds of prior publication and lack of novelty.
Paragraphs 3 and 4 refer to various instances of prior use which support the ground of lack of novelty in relation to a number of the dependent claims of the application in suit.
Paragraphs 5, 6, 7 and 8 refer to various pieces of common general knowledge to support the ground of obviousness against a number of the claims.
Paragraphs 9 and 10 of the Particulars support the ground of lack of compliance with section 40 and make the following points:
.The claims lack fair basis in the matter described in the specification because there is no support for the feature of the switch means adapted to be activated or deactivated at a predetermined position during movement of said lifting means so as to supply or disconnect said vacuum. The only reference in the description of the preferred embodiment of the invention to a switch means is to an "air operated trip switch" which is clearly not activated or deactivated at a predetermined position during movement of the lifting means.
.Claim 2 is not clear or fairly based on the matter described because claim 2 refers to a "die" which has no other reference anywhere in the specification.
The MacDonald Particulars
In support of the grounds of prior publication and lack of novelty, the Particulars lists three specifications:
(a) DE 2558466
(b) EP 287433
(c) EP 327948
Also in relation to lack of novelty, AU 82407/82 is referred to in support of the contention that one of the claimed features was well known as at the date of the opposed application.
In relation to the ground of obviousness, paragraph 4 of the Particulars states that the lifter for attachment to the vehicle was part of the common general knowledge in Australia before the priority date of the opposed application. This knowledge coupled with the disclosures in the three specifications (a), (b) and (c), listed above, fully disclose the features in claims 1 to 11.
In support of the ground of lack of compliance with section 40, paragraph 5 of the Particulars raises the following points:
.Claim 1 is not clear in relation to the phrase "remain generally vertically orientated during a substantially (sic) portion of pivoting of said lifting means".
. Claim 2 is not clear in view of the word "die".
.Claim 1 is not fairly based on the description due to the above wording concerning "generally vertically orientated" when compared with the second last paragraph on page 2 of the description.
THE EVIDENCE
The following is a summary of the main parts of the evidence served in relation to each opposition.
The Formark Opposition
The evidence in support consists of four statutory declarations by Mr. Hickey, Mr. Love, Mr. Ainsworth and Mr. Duncan respectively.
The Hickey declaration asserts that all the features of claim 1 except the suction fastening means connected to a vacuum supply were well known and used before 12 October 1989. The Hickey declaration has two exhibits. The first is a brochure for a refuse collection vehicle. Mr. Hickey indicates he obtained the brochure in Munich in May 1988. The second exhibit includes two photographs which Mr. Hickey declares depict a vehicle which is substantially the same as the vehicle shown in the brochure. There is no indication of when the photographs were taken.
The Love declaration has one exhibit which is a video tape. Mr. Love declares that the original video tape from which the exhibited tape has been copied was filmed in Europe in January or February 1989 and viewed by a number of people in early 1989 in Australia. The subject of the video tape is a refuse collection vehicle manufactured in Holland. Mr. Love declares that it can be clearly seen that the vehicle includes suction cups to adhere to a bin for lifting. Mr. Love also declares that he was aware of discussions between the inventor of the present invention and another person relating to the use of suction lifters in Europe. Mr. Love asserts that the knowledge of such European suction lifters was common to many members of the refuse collection vehicle industry in Australia before October 1989.
The Ainsworth and Duncan declarations indicate that all the features shown in the drawings of the present application except for the vacuum suction cups had been used in Australia on or before April 1989.
The evidence in answer consists of statutory declarations by Mr. Guest, Mr. Garrett, Mr. Kendell and Mr. Turner.
The Garrett, Kendell and Turner declarations all attempt to establish that the provision of suction cups on garbage lifting devices before September 1990 was not known in Australia. (There is no indication of the significance of the date September 1990. The priority date of the claims is 12 October 1989 and the filing date of the application is 12 October 1990.)
The evidence in reply consists of statutory declarations by Mr. Schieber and Mr. Richards and a further statutory declaration by Mr. Duncan.
The Schieber declaration has annexed to it as an exhibit a copy of German patent specification DE 2558466 and an English language translation of certain parts of the German document. This German specification was not identified in the Statement of Particulars.
The Richards declaration and the further Duncan declaration assert that all the features of claim 1 except the use of suction fastening cups were well known and used before the priority date of the claims. Previous lifting arms also used switch means which were activated or deactivated to close or open clamping means depending on the position of the lifter arm.
The MacDonald Opposition
The evidence in support consists of statutory declarations by Mr. Smith and Mr. Browning.
The Smith declaration states that the invention of the presently opposed application appears to be generally in two parts as follows:
A hydraulic lifter assembly for attachment to a vehicle such as a rubbish collection vehicle having object (say a rubbish bin) securing means mounted on the said lifting means so as to be pivotally lifted and to remain generally vertically orientated during part of pivoting of the lifting means.
Object securing means comprising a suction fastening means connected to a vacuum supply and switch means adapted to be activated and deactivated at a predetermined position during movement of the lifting means for controlling supply of vacuum to the fastening means."
The Smith declaration indicates that part (i) was well known before the priority date of the present claims and part (ii) is either explicitly or implicitly disclosed in each of the three documents referred to in the Statement of Particulars.
The intent of the Browning declaration is to provide corroboration of what is stated in the Smith declaration.
The evidence in answer consists of a statutory declaration by Mr. Guest who is the inventor of the presently claimed invention.
The Guest declaration points out that the documents referred to in the Particulars and the Smith declaration do not disclose all the features of the claims. Further, there is nothing to suggest that a skilled person would be led to combine any of the lifting mechanisms which are said to be known with any of the disclosures in these documents to arrive at the claimed invention.
THE SUBMISSIONS
The following is a summary of the main points made by each party at the hearings which have not already been referred to earlier in the Particulars or the evidence.
The Formark Submissions
Mr. Forster submitted that the specification does not comply with section 40 because:
The specification is insufficient. Claim 1 refers to the object securing means as remaining generally vertically orientated during a substantial portion of pivoting of the lifting means. However the description does not indicate how such movement is achieved. The preferred embodiment shows an arrangement which is not capable of achieving the generally vertical orientation during a substantial portion of pivoting of the lifting means. Where the specification clearly fails to disclose a manner of carrying out the claimed invention, no evidence was necessary to show insufficiency. (Commissioner of Patents v Microcell Ltd. 102 CLR 232)
Consequential to (i) above, claim 1 is not fairly based on the matter described in the body of the specification as there is no support for the vertically orientated movement over a substantial portion of the pivoting of the lifting means in the specification.
The claims lack clarity. The terms "generally", "substantial(ly)", "adapted" and "predetermined" can be given no clear meaning because there is no basis in the specification for attaching a clear meaning to them.
In relation to lack of novelty, Mr. Forster submitted that the brochure exhibited to the Hickey declaration discloses all the features of claim 1 except for the switching means. Mr. Forster argued that such a switch means was merely a workshop improvement. It was a development that a workman would have made. Also, without a switch means, the arrangement in the brochure would not work. Therefore the brochure disclosed a switch means by implication.
Mr. Forster also pointed out that there is a reference to an EP patent specification just below a photograph in the brochure in the Hickey declaration. Although such a reference is not included in the Particulars, Mr. Forster argued that this EP document should be referred to as an aid to interpreting the photograph. He referred me to Warner v Chemspray 37 AOJP 2513 in support of his argument that it was permissible to combine these two documents.
With respect to whether or not the EP specification was referred to in the Particulars, Mr. Forster submitted that, because the brochure was referred to in the Particulars, the EP specification was also incorporated by virtue of it being referred to in the brochure.
The MacDonald Submissions
Mr Hess submitted that claim 1 is not clear in regard to the phrase "remain generally vertically orientated during a substantially...". The specification as OPI did not include any reference to this phrase, and the preferred embodiment does not show a device which can remain generally vertically orientated. Therefore either the claims are not fairly based on the description or alternatively the mechanism is generally vertically orientated only during an infinitesimal part of the initial lifting. Mr Hess also submitted that this phrase is merely a functional design constraint and places no real limitation on the claim, as the mechanism must have a generally vertical orientation or the rubbish would fall out of the bin being lifted.
Mr Hess submitted that claims 1 and 6 to 9 are directly anticipated by each of the three documents listed in the Particulars. While none of the citations specifically discloses the phrase "remains generally vertically orientated", this feature is inherently necessary for all garbage lifting mechanisms. EP 327948 does not specifically disclose an automatic switch however it is inherent that the means to actuate and de-actuate the suction cups must include a switch.
In relation to lack of novelty Mr Hess submitted that each of the claims is merely a non-novel combination of known mechanisms. He also submitted that reading the suction cup mechanisms of the EP citations in the light of the CGK in Australia of lifting mechanisms renders all of the claims not novel.
With respect to obviousness, Mr Hess submitted that, faced with the problem outlined by Mr. Guest in his declaration, it would be obvious for a person skilled in the art to try using suction cups. Therefore the claimed invention is obvious.
In relation to the suitability of the MacDonald's declarants, Mr. Hess referred to a number of decided cases which, he submitted, distinguished between a non-inventive person skilled in the art and an unimaginative person skilled in the art. A person skilled in the art who was not imaginative was the correct person to consider when considering the question of obviousness and not a person skilled in the art who was non-inventive. Therefore, the evidence provided by MacDonald's declarants should not be dismissed because it had not been shown that they were imaginative.
The Stevelift Submissions
Mr. Turner submitted that none of the declarations in either of the opponents' evidence can be used as evidence of what was inventive or what was common general knowledge in Australia as none of them are executed by people who are non-inventive skilled workers in the art. Therefore none of the declarations can be used as a basis for supporting the grounds of obviousness or novelty with respect to what was common general knowledge. In support of this contention, Mr. Turner referred to a number of decided cases, the most recent of which is Hood Computers Pty. Limited v Online Furniture and Weldun Engineering, Patent Office decision, 8 December 1993, patent application 601055, unreported.
Regarding the Formark opposition Mr. Turner submitted that:
none of the exhibits of the Hickey declaration clearly shows suction cups and none shows securing means remaining generally vertically orientated;
the Love declaration contains many inaccuracies and therefore cannot be relied upon;
(iii) there are no direct anticipations;
there is no valid attack on obviousness or novelty as the opponents have not established that suction cups of the European publications were part of the CGK in Australia;
the EP specification referred to in the brochure contained further material not disclosed in the brochure. The disclosure in the brochure should stand or fall on the what was shown in the brochure itself. Reference should not be made to the EP specification to assist in the interpretation of the brochure. The EP specification was not part of the present opposition proceedings as it was not included in the Particulars but was only raised by Formark two days before the hearing. As a consequence, Stevelift had not had a chance to consider this document. Just because it was referred to in the brochure was not sufficient reason to say that it was included in the Particulars. There were many other references in documents actually referred to in the Particulars but none of these should be said to be included in the Particulars or be part of the opposition. It was not up to the applicant to guess which of the numerous references included in the actual documents referred to in the Particulars could be included in the opponent's case;
(vi)In any case there was no evidence on file to establish when and if the EP document was published in Australia. Even if it was considered to be part of the present opposition, the lifting arrangement in the brochure\EP specification was a pivoting arrangement and not one which would result in a generally vertically orientated movement of the securing means; and
there is no expert evidence on file that the specification was insufficient in relation to the term "generally vertically orientated" with respect to the skilled person. The drawings were sufficient to enable a person skilled in the art to construct a lifting mechanism having this functional requirement.
Regarding the MacDonald opposition Mr. Turner submitted that:
none of the prior documents shows the combination of an object securing means remaining generally vertically orientated and suction cups and therefore there are no direct anticipations;
the claimed lifting arm is not a mechanical equivalent of the prior art pivoting arms as the claimed lifting arm remains generally vertically orientated;
(iii) the opponents have used hindsight to piece together the invention by impermissibly mosaicing pieces of prior art;
the commercial success of the invention indicates that it is not obvious;
regarding sufficiency there was no evidence that the skilled person would not be able to perform the invention from the description and indeed the invention could be performed using the drawings; and
(vi)there is no expert evidence on file that the term "generally vertically orientated" would be unclear to the skilled person. Indeed, the Smith declaration at paragraph 6 indicates that Mr. Smith understands the specification and indicates that this arrangement would work in a similar manner to his own arrangement which has a satisfactory "generally vertically oriented" movement.
DECISION
Section 40
Both opponents questioned the term "generally vertically orientated during a substantial(ly) portion of the lifting means". In this respect, both opponents referred me to page 2, second last paragraph of the specification, which is as follows:
"A linkage arrangement 13 is also provided so that the bin which is being lifted by the lifting apparatus 10 is kept generally upright until it is over the chute of the compactor. This is necessary to prevent the garbage within the bin from being discharged before arriving at an appropriate position relative to the truck."
In Figure 2 of the drawings the pivoting movement has completed just over half of its journey. In this position, the object securing means is out of the vertical by about between 25 and 30 degrees. The specification does not specifically indicate whether or not the position of the lifting means in Figure 2 is such that the bin is over the chute of the compactor. In determining whether or not the orientation of the object securing means in Figure 2 is meant to be generally vertical, I note that on page 2, lines 15 to 17, of the specification it is stated that the mounting member of the lifting apparatus is to be attached to a side of the garbage truck in a generally vertical position adjacent to the entry chute of the compactor. I believe from this that the position of the lifting means in Figure 2 is such that the bin would be adjacent or over the entry chute. As a consequence I do not believe that the orientation of the object securing means in Figure 2 is necessarily meant to be generally vertical or generally upright as indicated in the second last paragraph of page 2 referred to earlier.
However before the position in Figure 2 is reached I am of the opinion that the object securing means remains generally vertically orientated during a portion of the pivoting of the lifting means shown in the drawings. The object securing means during this portion would be vertically orientated or within a few degrees of being vertically orientated (certainly no more than 5 or 10 degrees from the vertical). This has been borne out by the construction of a rudimentary working model of the arrangement shown in the drawings.
I believe that the arrangement in the drawings would result in the object securing means remaining in what could be described as a generally vertical orientation for between about a third and about a half of the pivoting movement of the lifting means between the retracted and the extended position of the lifting means. In this respect I differ from Mr. Hess' view that the generally vertical orientation occurs during only an infinitesimal part of the lifting of the bin. It would seem to me that between a third and a half of the pivoting movement could be considered to be a substantial portion.
In relation to the term "substantial" in the description, I believe that a person skilled in the art would be able to determine what this term meant by reference to the previously mentioned passage on page 2. The generally vertical orientation should be maintained until the bin is located over the entry chute of the compactor. As I have explained above, I believe that the arrangement shown in the drawings would achieve such a result.
I now turn to claim 1 to consider whether or not the claim is fairly based on the matter described in the specification.
The Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194) give guidance in determining questions of fair basis. Although originally expressed in relation to fair basis with regard to provisional or basic documents (see the HC decision in Hoffman-La Roche & Co. AG. v Commissioner, (1971) AOJP 819 at page 822, and (1973) RPC 34), they may be expressed as:
a)Is the alleged invention as claimed broadly described in the specification?
b)Is there anything in the specification which is inconsistent with the alleged invention as claimed?
c)Does the claim include as a characteristic of the invention a feature as to which the specification is wholly silent?
In relation to the first question, I do not believe that the claimed invention is broadly described in the specification. I note that the first sentence of the specification indicates that the invention relates to a garbage bin lifting means for garbage collection. The prior art referred to in the specification concerns garbage bin lifting means. The preferred embodiment refers to garbage bin lifting means. The whole thrust of the description in fact indicates that the inventive concept lies in garbage bin lifting means for garbage trucks enabling bins of different sizes to be lifted without the contents of the bins being discharged before they are over the entry chute of the compactor of the garbage truck. There is no indication in the description of any other type of object which can be lifted by the described lifting means. Therefore I do not believe that the description broadly describes an object lifting means.
In relation to the second question, I believe that there is an inconsistency between what is in the specification and what is claimed. The specification requires that the securing means remains generally vertically orientated until the garbage bin is lifted over the entry chute of the compactor. However, the claim merely says that the securing means remains generally vertically orientated during a substantial portion of the pivoting of the lifting means without specifying what such a substantial portion is.
In relation to the third question, I am satisfied that the answer is in the negative.
I find that the claim fails in relation to the first two questions of the Mond Nickel rules and therefore is not fairly based on the matter described in the specification.
I also believe that the term "substantial" is not clear in the claim. The same term in the description can be interpreted in relation to a garbage truck and the entry chute of the compactor of the garbage truck. However, as the claim does not include these features, I am unable to give the term "substantial" in the claim any clear meaning as to its ambit. Similarly, I find that the term "generally" in "generally vertically orientated" is not clear. The term is clear in the context of garbage bins and the need to avoid the premature discharge of the contents but claim 1 makes no mention of garbage bins.
With respect to the question of lack of sufficiency in relation to "generally vertically orientated during a substantial(ly) portion of the lifting means", I believe that the drawings which were present in the specification as filed would enable a person skilled in the art to construct a lifting arrangement which met such a constructional requirement.
With respect to this term and the question of lack of sufficiency, Mr. Turner's argument that the opponents' own declarants do not appear to have any difficulty with the term seems to me to be a valid one. Both Formark's Mr. Hickey and MacDonald's Mr. Smith indicate that not only do they understand the term and how such an arrangement would work but that such an arrangement was well known in the art before the priority date of the present claims. It seems to me that, while there may be some debate about whether or not Mr. Smith and Mr. Hickey can properly be classed as addressees of the specification, their evidence should carry some weight on the sufficiency of the description.
Formark raised another fair basis issue in relation to the switch means being "adapted to be activated or deactivated at a predetermined position during movement of said lifting means so as to supply or disconnect said vacuum". This feature of the claim seems to imply that activation or deactivation occurs at one position during movement of lifting means rather than at one position for activation and another position for deactivation.
The description on page 3, third last paragraph, states that:
"In use, the lifting arm 12 is moved away from the folded position which activates the air operated trip switch 26 so as to provide a vacuum to each of the suction cups 20. In the embodiment depicted, the trip switch 26 activates as it engages with the side of the bin to be lifted".
On page 4, first paragraph, it states:
"When the lifting arm 12 reaches the folded position, the air operated trip switch closes off the vacuum to the suction caps (sic) 20 thus allowing the bin to be released and placed back on the ground."
As I understand it, the Formark argument is that the described arrangement does not have a single position in which the switch is activated or deactivated during movement of the lifting means.
It seems to me that the description discloses an arrangement in which activation or deactivation of a switch occurs at a predetermined position depending on the direction of movement of the lifting means and that predetermined position is the folded position of the lifting means. This is clearly stated in the above two paragraphs from the description ignoring for the moment the last sentence in the third last paragraph on page 3 of the specification.
Consequently, I do not believe that claim 1 lacks fair basis in relation to the switch means arrangement. The description quite clearly describes such an arrangement.
However, in the embodiment shown in Figures 4, 5 and 6, which I note is indicated on page 2 of the specification as an alternative embodiment, the trip switch is activated as it engages with the side of the bin to be lifted. This is referred to in the last sentence of the third last paragraph on page 3 of the specification. I agree with Mr. Forster that in this embodiment there is no indication of how the trip switch is deactivated when the lifting means returns to its predetermined position.
However, I do not believe that this deficiency detracts from an overall understanding of what the invention is. The specification clearly indicates that the inventive lifting means should include a switch activated or deactivated at a predetermined position depending on the direction of movement of the lifting means. Certainly, the alternative arrangement of Figures 4, 5 and 6 is not specifically claimed. Therefore I believe that while the embodiment described in relation to Figures 4, 5 and 6 is incomplete, this does not result in the specification not complying with section 40.
In relation to the terms "adapted" and "predetermined" referred to by Mr. Forster as being unclear, I disagree with Mr. Forster that there is no basis in the specification for attaching a clear meaning to these terms. Despite the ambiguity in the description referred to above, I believe that person skilled in the art would be able to give a clear meaning to these terms especially in the light of the above referred-to passages of the description on pages 3 and 4.
I don't believe that the term "die" in claim 2 which was referred to by both opponents would provide any impediment to the understanding of claim 2 by a person skilled in the art. I am satisfied that a person skilled in the art would interpret it as meaning "side" especially as the description clearly indicates that the mounting member is attached to a side of the vehicle.
In summary, in respect of the ground of lack of compliance with section 40, I have found that claim 1 is not fairly based on the matter described in the specification and claim 1 lacks clarity .
Common General Knowledge
I do not agree with Mr. Turner's assertion that none of the declarations can be used to establish what was the common general knowledge in the art because none of the declarants can be considered to be non-inventive.
In determining the extent of the common general knowledge in this matter, I am guided by the judgement of Aickin J. in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited, 144 CLR 253 at 292, in which he stated:
"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 the 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."
The nature of common general knowledge is discussed in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited (1972) RPC 457 at 482 as follows:
"The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury's Laws of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case (1971) FSR 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life."
From both of these references I deduce that common general knowledge is the background knowledge possessed by all in the trade not just the hypothetical non-inventive person. I note that the quotation from the General Tire case (supra) mentions "the sort of man, good at his job, that could be found in real life". (emphasis added) From this I deduce that people in the art who could be said to be inventive also would possess the common general knowledge of the art. While they may possess further knowledge which is not part of the common general knowledge, this does not necessarily follow from the mere fact that they are inventive. The ability to be inventive does not necessarily come from an ability to retain vast amounts of knowledge.
Mr. Turner referred me to Hood Computers v Online Furniture (supra). However, the delegate in this case was considering the question of obviousness where it is clear from case law that this should be considered in relation to the non-inventive person skilled in the art. This is a different question to that of deciding what is the common general knowledge in the art.
Therefore, I am of the opinion that I should not dismiss what the declarants allege to be part of the common general knowledge in the art merely because the declarants may be said to be inventive. In this respect, I note the delegate's comments in Braas & Co GMBH v Humes Limited, 26 IPR 273, where he comes to the view that evidence provided by "overqualified" experts may still be of high probative value in relation to the state of the common general knowledge in the art. I believe that this is equally true of experts who are said to be inventive.
Formark
In relation to this opposition I believe that I need to establish whether or not the use of suction cups was part of the common general knowledge in Australia before the priority date of the claims in suit and/or at the publication dates of the documents relied on for establishing the grounds of prior publication and lack of novelty. There are other aspects of common general knowledge discussed in the evidence provided by Formark but I believe that the use of suction cups is the most relevant.
In this respect, both the Hickey and the Love declarations assert that the knowledge of using suction fasteners was well known to many members of this art before the priority date of the present claims. Mr. Love alleges that he was aware of discussions between Mr. Guest and another party about the use of suction fasteners before the priority date of the claims. However I do not believe that a conversation between two parties constitutes proof of what was common general knowledge. As there is no other evidence to support such assertions, I do not believe that Formark has established that the use of suction cups was part of the common general knowledge either before the priority date of the claims in suit or at the publication dates of the documents relied on for anticipation purposes.
MacDonald
In relation to this opposition, I believe that I need to consider what was the state of the common general knowledge before the priority date of the claims in suit in relation to the ground of obviousness and the state of the common general knowledge at the publication dates of the documents relied on for establishing the grounds of prior publication and lack of novelty. In this respect, the publication dates of the documents are 3 January 1989, 3 October 1989 and 14 November 1977. There is no evidence before me to indicate what was the state of common general knowledge in the art in 1977.
The main evidence in relation to common general knowledge is provided in the Smith declaration. Mr. Smith indicates that he has been involved in the manufacture of lifting assemblies for refuse collection vehicles for some 14 years. He also states that he has no financial or business association with either MacDonald or Stevelift apart from the supply of various components to both companies from time to time. I consider Mr. Smith to be an appropriate person to comment on the state of the common general knowledge in the art.
Mr. Smith declares that the lifting means of the claimed invention is similar to the type of lifting means disclosed in an earlier Australian patent specification. This earlier lifting means has been widely sold by Mr. Smith's company leading Mr. Smith to conclude that the mechanism is well known to engineers involved in the manufacture of refuse collection vehicles and therefore common knowledge in Australia before the priority date of the claims. The Browning declaration confirms that side lifting means of the type described by Mr. Smith were sold to MacDonald before the priority date of the present claims.
Mr. Guest does not directly contradict Mr. Smith's summation of what was part of the common general knowledge before the priority date of the claims.
I do not believe that the mere sale of a particular apparatus is necessarily proof of what is common general knowledge. However, as Mr. Guest has not actually contradicted the evidence of Mr. Smith which is corroborated in part by the Browning declaration, I believe that I should accept Mr. Smith's version of what was part of the common general knowledge before the priority date of the present claims. That is I am satisfied that it was part of the common general knowledge before the priority date of the claims to have an hydraulic lifter assembly for attachment to a rubbish collection vehicle the lifter assembly having object securing means mounted on lifting means so as to be pivotally lifted and to remain generally vertically orientated during a substantial part of pivoting of the lifting means.
I note that the particular switching means defined in the present claims was not considered to be part of the common general knowledge before the priority date of the present claims.
There is no evidence to indicate that the use of suction fastening means was part of the common general knowledge in Australia before the priority date of the claims in suit.
Prior Publication and Lack of Novelty
The test for novelty was stated by Aicken J. in Meyers Taylor v. Vicarr Industries 13 ALR 605 at page 611:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
As to what constitutes infringement, guidance is obtained from the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd. 1969 RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co. Pty. Ltd. and Another 14 ALR 149 at 157. The relevant words of Lord Upjohn are:
"To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."
In relation to claim 1 of the opposed claims, I believe that the essential integers are:
Apparatus comprising:
lifting means to be attached to a vehicle, with object securing means mounted to said lifting means so as to be pivotally lifted thereby and remain (generally) vertically orientated during a (substantial) portion of pivoting of said lifting means,
said lifting means being moveable between a retracted position wherein said object securing means is located adjacent an object to be lifted and an extended position wherein said object securing means is in a raised, essentially inverted position,
(iii) said object securing means comprises suction fastening means connected to a vacuum supply and
a switch means adapted to be activated or deactivated at a predetermined position during movement of said lifting means so as to supply or disconnect said vacuum.
In relation to integer (i), I have already indicated that I can give no clear meaning to the terms "substantial" and "generally". Therefore, these terms do not place any limitation on this particular integer.
The Formark Opposition - preliminary issues
There are some preliminary issues I should consider in relation to the documents used by Formark in support of these grounds of prior publication and lack of novelty.
In a previous decision on an objection to the allowance of a request by Formark to amend the Particulars in relation to the present opposition to include a reference to a further German document, I refused to allow the amendment. Therefore there is no reference in the Particulars to that particular document.
Nevertheless, the document is referred to in the evidence in reply and copies of the document are exhibited to two of the statutory declarations as part of the evidence in reply. However, because it is not referred to in the particulars and it cannot be said to be evidence which is in reply to the evidence in answer, I will not consider it in relation to the Formark opposition. (It is part of the evidence in the MacDonald opposition.)
The main documents relied on by Formark at the hearing in relation to the grounds of prior publication and lack of novelty were the brochure to which I have referred above, two coloured photographs and a video tape recording.
For a document to be used as the basis for the grounds of anticipation under the Patents Act 1952, it must have been published in Australia before the priority date of the claims it purports to anticipate. This is made clear in the grounds of prior publication and lack of novelty listed under section 59 (1).
In the present case, there is no evidence before me to establish when the brochure referred to in the Hickey declaration was published in Australia. Mr. Hickey states that he obtained the brochure in Munich in May 1988. However he does not indicate when he brought the brochure back to Australia or whether or not he was free to disseminate the information contained in the brochure. While there is a reasonable period of time between May 1988 and the priority date of the claims in suit of 12 October 1989, there is no evidence before me to enable me to conclude that the brochure was published in Australia before the priority date of the claims in suit.
There is also no evidence to establish when the colour photographs were published in Australia.
In relation to the video tape recording, Mr. Love indicates in his declaration that the video tape was brought back from Germany in early 1989 and viewed by a number of employees of Otto Australia Pty Ltd before the priority date of the present claims. While there is no indication of whether or not those employees had any obligation of confidence in relation to the use of the information contained in the recording, I am prepared to accept that the video tape recording was published in Australia before the priority date of the claims in suit.
As there is no evidence to establish that the brochure was published in Australia before the priority date of the claims, I do not have to decide whether or not it would be permissible to consider the EP document referred to in the brochure to assist in the interpretation of the brochure.
However even if the brochure were published before the priority date of the claims, it seems to me that, although there is a reference to the EP document in the brochure, the EP document is not mentioned in the particulars. Therefore the applicant has not been alerted to the fact that this document is going to be used as part of Formark's case. In the present circumstances, I understand the applicant was only made aware of the intention of Formark to rely on this EP document a few days before the opposition hearing was held. I agree with Mr. Turner that there are many references in the documents cited in the Particulars. It should not be up to the applicant to choose which ones of the many references will be used by the opponent as part of its case on the day of the opposition.
Even if it could be argued that references in documents named in the Particulars could also be used as part of the present opposition, the applicant would still be greatly inconvenienced in the present case because the Particulars do not specify the particular brochure itself. There is only a general reference to brochures collected at an I.F.A.T. exhibition in Germany in May of 1988.
Consequently, had I decided that the brochure was published before the priority date of the present claims, I do not believe that I should have considered the EP document when deciding what is disclosed in the brochure as I do not believe that the EP document should be part of the present opposition.
Mr. Turner indicated that the EP document could be part of a bar-to-sealing consideration. I agree with this. Such a consideration would follow this opposition.
The Formark Opposition
In interpreting the video tape recording, I note the comments made by Lord Reid in C. Van Der Lely N.V. v. Bamfords Ltd. (1963) 80 RPC 61 at page 71 in relation to such a situation:
"..... There is no doubt that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language. It was argued that the same applied to a photograph. I do not think so. Lawyers are expected to be experts in the use of the English language, but we are not experts in the reading or interpretation of photographs. The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence. Where the evidence is contradictory the judge must decide. But the judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance.
The photograph must be looked at through the eyes of the typical addressee of the appellants' specification - the kind of person who would be expected to make a machine of this kind."
Mr. Love asserts that the video tape recording depicts a refuse collection vehicle with lifting means using suction cups. However, Mr. Love has had the benefit of seeing the subject vehicle in action almost certainly with oral explanation of the workings of the lifting means. I believe that I must consider this video recording to see what it discloses to a person skilled in the art who has not had the benefit of oral explanation of what the recording shows. In this respect, the recording when played back has no audible sound so that there is no explanation of what is depicted in the recording.
The quality of the recording is poor even when played back on long play speed. The subject of the video recording is a refuse collection vehicle. This vehicle has a lifting means which is capable of lifting a garbage bin to empty the contents of the bin into the truck. The video recording, at one stage, shows a close-up of what might be the bin securing means but, in the absence of any audible explanation, what might equally as well have been a cushioning arrangement for the protection of the bin when lifted. There is no evidence before me to indicate what the recording would disclose to the typical person skilled in the art in relation to this particular integer. Therefore I do not believe that the video tape recording clearly discloses the use of suction cups.
I note that the lifting means shown in the video recording is not such as to provide the bin with any vertical orientation once it has been raised from the ground. The bin travels in an arcuate path from the ground until it reaches a fully inverted position. I also note that on returning to the ground the bin appears to be released from the fastening means by the intervention of an operator activating some release mechanism.
From this, I am satisfied that the video recording does not disclose a number of essential integers of the claimed lifting apparatus.
I have already indicated that there is no evidence to establish that the brochure and the photographs were published in Australia before the priority date of the claims in suit. However, even if publication had taken place, there is no indication in the brochure or the photographs that the lifting means uses suction fastening means to raise the bins which is an essential feature of the present claims. There is no evidence before me to persuade me that a typical person skilled in the art would interpret the brochure or photographs otherwise. I have already indicated above that I do not believe that I should consider the EP document which is referred to in the brochure.
While a document, including a brochure, a photograph or a video tape recording, should be considered in the light of the common general knowledge in the art as at the date of publication of the document, I do not think that this helps Formark's case. There is no evidence to suggest that the use of suction cups in garbage bin lifting means was part of the common general knowledge before the priority date of the claims let alone before the publication date of the video tape recording and I have found that the video tape recording does not clearly disclose such an integer which is essential to the claims. Therefore I find that the video tape recording does not anticipate the presently claimed invention. This would also be true of the brochure and photographs had they been published before the priority date of the opposed claims.
The Particulars also lists five patent documents in relation to anticipation. However, none of these documents has been filed with the evidence. As I do not have copies before me, I do not propose to consider them further in this opposition although they might conceivably form the basis of a bar-to-sealing action on the completion of the opposition. (I note that two of the documents are exhibits in the MacDonald evidence.)
I have found that Formark has been unsuccessful in establishing its grounds of prior publication and lack of novelty.
The MacDonald Opposition
MacDonald relied on three patent documents to establish prior publication and lack of novelty.
EP 287433
This specification discloses a lifting means attached to a refuse collection vehicle for lifting garbage bins to be emptied into the vehicle. The lifting means uses a comb hooked under the bin's flange to raise and lower the bin. There is also provided a suction cup which is used as a support device for the bin to overcome the problems caused by the inertia occurring at the end of the bin emptying cycle. The specification does not indicate that the suction cup is used to lift the bin. There is no indication that the lifting means is designed to allow the bin to remain vertically orientated during a portion of its pivoting movement. However the specification does indicate that the vacuum to the suction cup can be switched on and off automatically by for example the lifting means coming into contact with a trigger at a certain point in its path of movement.
As I believe that the use of suction cups to lift the bins is an essential integer of the present claim 1, then this EP specification does not include all the essential features of the claim.
EP 327948
This specification discloses the use of suction cups but they are used to move garbage bins laterally into reach of lifting means which then lift the bins by using claws.
Therefore I do not believe that the document includes all the essential integers of the present claim 1 because it does not disclose the use of suction cups to lift the bins.
DE 2558466
This specification discloses lifting and tipping mechanisms for lifting garbage bins of various sizes. In order to accomplish this, suction cups are used to attach to the bins and lift them. There is no specific disclosure of a lifting means arranged to allow the bin to remain vertically orientated during a portion of its pivoting movement. Also there is no disclosure of switch means activated and deactivated on movement of the lifting means from and to a predetermined position respectively. I do not agree with Mr. Hess that it is inherent that means to actuate and de-actuate the suction cups must include a switch and that therefore this would be an automatic switch activated and deactivated at a particular position.
For the purposes of considering the question of anticipation, a document should be considered in the light of the common general knowledge in the art at the time of publication of the document. I do not think that this will help make any of the above three documents an anticipation of the claimed invention. There is no evidence to suggest that the use of suction cups in garbage bin lifting means was part of the common general knowledge before the priority date of the claims let alone before the publication date of the documents and I have found that the first two of the above documents do not clearly disclose such an integer which is essential to the claims.
In relation to the third document, I have no evidence before me to indicate what was part of the common general knowledge at the date of publication of the German specification on 14 November 1977. Therefore I cannot say that a person skilled in the art would on reading the document consider that the unspecified lifting means could include lifting means which is designed to allow the bin to remain vertically orientated during a portion of its pivoting movement. There is also no evidence to suggest that the use of switching means which is activated and deactivated on movement of the lifting means from and to a predetermined position respectively was part of the common general knowledge in the art at the publication date of the third document. I consider these to be essential integers of the claims and the third document above does not disclose them.
Therefore I find that none of the documents anticipates the presently claimed invention as each document does not include all the essential integers of the claimed invention.
I have found that MacDonald has been unsuccessful in establishing its grounds of prior publication and lack of novelty.
Obviousness
The question I have to ask is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art in Australia at the relevant date. See Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253 and The Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd 148 CLR 262.
In answering this question, I am not entitled to consider any documents unless they have been proven to be part of the common general knowledge.
As indicated above, neither opponent has been able to establish that the use of suction cups to lift garbage bins was part of the common general knowledge in Australia before the priority date of the present claims. Therefore, as this is one of the most important features of the claimed invention, both opponents have been unsuccessful in establishing the ground of obviousness.
CONCLUSION
I have found that both oppositions have succeeded on the ground of non-compliance with section 40 but have failed on the grounds of prior publication, lack of novelty and obviousness.
I believe that the section 40 defects can be overcome. To this end, I allow the applicant 60 days from the date of this decision to propose relevant amendments to overcome these defects.
COSTS
The normal rule for the award of costs before the Commissioner is that costs follow the event. As Formark and MacDonald were both successful in their oppositions, I award costs against Stevelift in relation to both the Formark and MacDonald oppositions.
R.W. HALLETT
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for Formark : Griffith Hack & Co, Sydney
Patent attorneys for MacDonald : Watermark, Melbourne
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