Stockstill Limited v Ian Murray Catford, Robert Craig Catford and Colin Charles Catford
[2005] APO 22
•29 April 2005
Abstracts of Decisions
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 755298 in the name of IAN MURRAY CATFORD, COLIN CHARLES CATFORD and ROBERT CRAIG CATFORD
Title: STOCK HANDLING DEVICE
Action: Opposition under sec. 59 of the Patents Act 1990 by STOCKSTILL LIMITED
Decision: Issued 29 April 2005.
Abstract
The invention was for an animal handling apparatus with particular applicability as a table for supporting a sheep while it is being shorn. The table is especially advantageous when used in conjunction with an electrical device developed by the opponent which could be attached to the sheep in order to pass an electrical current through the sheep to immobilize it. The two pieces of apparatus are apparently referred to collectively as a shearing machine.
The opponent alleged entitlement to the invention on the basis it had been a joint effort between the opponent and the applicants (who were also the inventors) and that there had been a joint venture arrangement with the applicants.
It was a held that the opponent had not established that there had been a contribution from anyone else other than the present inventors that had had a material effect upon the invention. Moreover, while a somewhat vague informal joint venture agreement did exist between the parties, there was no evidence to suggest that it extended to intellectual property rights.
The opponent also alleged invalidity of the application on the grounds of novelty, inventive step, section 40 and manner of manufacture. Novelty and inventive step were argued on the basis of paper citations as well as prior use. The novelty and inventive step grounds were upheld in respect of some claims but not others. Although the wording of claim 1 was such as to cause construing the claim to be less than straightforward, the ground of non-compliance with section 40 was not upheld. The ground of manner of manufacture was not pursued at the hearing and was not upheld.
The applicants were allowed 60 days from the date of the decision in which to file proposed amendments to overcome the deficiencies identified in the decision.
Costs were awarded against the applicants.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 755298 by Ian Murray Catford, Colin Charles Catford and Robert Craig Catford, and an opposition thereto by Stockstill Limited under section 59 of the Patents Act 1990.
BACKGROUND
Patent Application 755298 was filed on 10 December 1999 by brothers Ian Murray Catford, Colin Charles Catford and Robert Craig Catford as application 64432/99. It was associated with provisional application PP 7657 filed on 11 December 1998. Application 64432/99 was advertised accepted on 12 December 2002 and given the six-figure number 755298.
A notice of opposition to application 755298 was filed on 12 March 2003 by Stockstill Limited. A statement of grounds and particulars was duly served on the applicant, and subsequently evidence in support, answer and reply was served with only minor extensions of time being required.
The notice of opposition cites all of the grounds set out in Section 59 of the Patents Act. In respect to entitlement the particulars simply state that “The invention was developed by a joint effort between the Opponent and the Applicants and the Applicants are not the sole inventors of the invention”. The particulars given for the ground of manner of manufacture are merely that the technical background of the invention (“an animal handling apparatus having an endless belt on which the animal is positioned for animal husbandry”) “was well known at the priority date”, and that “the invention is no more than the use of known items and devices to function in the manner using their known properties”. The particulars for the grounds of novelty and inventive step rely on three patent documents: Australian Patent Application No. 29867/84, Australian Patent No. 501826 and US Patent No. 4,459,941. As well as being part of the prior art base, these documents are also said to be part of the common general knowledge. Two instances of prior use – at a field day held on 18 March 1998 and at a training day for Elders personnel on 28 July 1998 - are also said to anticipate the invention and to be part of the common general knowledge. Finally, particulars are given of a number of instances where the claims are said to lack clarity and fair basis.
The matter was heard on 10 February 2005 in Adelaide. The applicant was represented by Dr Paul Wyk, patent attorney of the firm A.P.T. Patent and Trade Mark Attorneys, Adelaide, and the opponent was represented by Mr Geoffrey Habel, patent attorney of the firm Collison & Co, Adelaide.
THE SPECIFICATION
The invention relates to a table or bench for supporting an animal while the animal is being handled. In particular, it is apparent from the specification that this invention has particular efficacy when used for shearing sheep. The impetus for its development appears to have come from another invention which is advantageously used in conjunction with the table, namely, a device known as an “electroimmobilizer” that is disclosed in Australian Patent No. 561340 to the opponent. This is essentially a device for passing an electric current through the sheep from its head to its posterior to cause the sheep to be paralysed, thus facilitating the shearing of the sheep. The table of the invention further assists towards this end by enabling a sheep located on it to be readily manoeuvred into the most suitable position for it to be shorn.
The table surface consists of an endless belt passing around two spaced-apart rollers. Rotation of one of the rollers by actuation of a drive means causes movement of the endless belt around the rollers in a direction which is determined by the direction of rotation of the driven roller. Movement of the endless belt results in a repositioning of an animal (sheep) located on the table. This much is prior art. The advance over the prior is said to reside in configuring the endless belt to “undercover substantially all of the animal”. The broadest claim to the invention also defines an additional feature of a “tension adjustment means to adjust the tension of the endless belt”, but it is contended by the opponent that this is mere common general knowledge. In preferred form the rollers are parallel, and it is also preferred that the location of the rollers in space, including their relative orientation, can be changed to allow increased versatility in the way a sheep is presented for shearing.
The specification concludes with 31 claims, of which, apart from an omnibus claim, only claim 1 is independent. Claim 1 reads as follows:
“An animal handling apparatus, including
an animal support subassembly, extending at least a length of the animal to be supported,
a base-assembly supporting the sub-assembly,
said subassembly including a first roller and a second roller, said first and second rollers being spaced apart side by side, and having entrained therebetween an animal supportive endless belt, said endless belt configured to undercover substantially all of the animal,
tension adjustment means to adjust tension of the endless belt,
drive means to drive the first roller to thereby drive the endless belt around the first and second roller, and
drive actuation means to actuate the driving of the first roller,
such that in use the animal is positioned transverse to the entrainment of the belt so that the animal rotates about a longitudinal axis when the belt is driven.
EVIDENCE
The evidence in support consists of statutory declarations by Geoffrey Habel, Lancelot Hamilton Lines (“Lance Lines”) and his son Lancelot Glanville Lines (“Glan Lines”).
The Habel declaration includes as exhibits the three prior art patent specifications cited in the statement of grounds and particulars. As well, it elaborates a little upon the section 40 issues identified in the particulars, and also elaborates upon the basis upon which the opponent claims entitlement to the invention, namely:
“……the invention resulted as a result of a joint venture arrangement. The machine was tested and developed at Gum Hill Station shearing shed with input from the Lines.”
The Gum Hill Station referred to in this quote is part-owned by Lance Lines and is managed by Glan Lines.
The two Lines’ declarations are largely confined to providing details of the history of the development of the present invention. Lance Lines is a director of the opponent company.
The evidence in answer consists of statutory declarations by each of the Catford brothers and by Anthony Moten. Anthony Moten is a farmer, grazier and part-time shearing contractor. His involvement in the present matter is as the shearer whose job it was to test run the new shearing table and the electroimmobilizer which was under development at about the same time as the table. Ian Catford is a farmer and grazier, while Charles and Robert operate an engineering workshop and business (Catford Engineering). The brothers are nephews of Lance Lines and are shareholders in the opponent company.
As with the Lines’ declarations in the evidence in support, all four of the declarations in the evidence in answer confine themselves to providing details of the development of the invention.
The evidence in reply consists of just one statutory declaration, which is a second declaration by Lance Lines. However, exhibited to this statutory declaration is another statutory declaration made by Lance Lines in November 1999. The text of this November 1999 declaration consists of the text of an earlier document by Lance dated July 1999 and entitled “Reflections on the Creation of the Shearing Machine”. It is a combined history of the development of the present invention and the immobilizer, and passages of Lance’s first declaration in the evidence in support of the present matter appear to be based on it.
Also exhibited to Lance’s second statutory declaration in the present matter is a statutory declaration by a Colin R. Schaeffer, a farmer and grazier. He had also developed a shearing table, and this table seems to have been something of a precursor to the present invention. The Schaeffer table was itself a development of the shearing table disclosed in Patent No. 4,459,941 (hereinafter referred to as the “Moffat table”, after its inventor).
Finally, a third exhibit to Lance Lines’ second statutory declaration is a video said to be of a trial of “a shearing machine or cradle” on 17 March 1998. While it is not stipulated in the statutory declaration whether or not the table shown in the video is the subject matter of the present invention or an earlier version, given the content of the video and the date on which the trial is said to have taken place it would seem from the other evidence in this matter that it is an earlier version. It would also appear that the true date was 2 April 1998. I will return to both these issues in due course.
More details of what is contained in the evidence, where relevant, will be given later in the decision.
SUBMISSIONS
Mr Habel commenced by noting the indefiniteness of the expression “configured” in claim 1, and asked rhetorically whether it referred to the shape of the animal, or had some other meaning? He also criticised the words “undercover” and “substantially” for indefiniteness. He then proceeded to identify a number of other instances of lack of clarity he considered to exist in the appended claims.
On novelty and inventive step, he asserted that the only feature defined in claim 1 which was not present in the version of the animal handling apparatus displayed at the field day on 18 March 1998 (referred to as the “first version”) and Australian Patent Application No. 29867/84 was the tension adjustment means defined in claim 1, which was common general knowledge. A number of the other (appended) claims were also said to, variously, lack novelty and an inventive step in light of 29867/84 and US Patent No. 4,459,941.
On entitlement, Mr Habel stated that the declarants for both parties agree that there was in place “an arrangement for a possible joint venture”. As to the respective contributions made by the parties, he said that although Colin Catford says in his statutory declaration that Stockstill had no input into the so-called “second version” of the animal handling apparatus before it was shown to employees of Elders Limited on 28 July 1998, it could have happened earlier, and he referred to instances of meetings and discussions that took place between the parties. He went on to say:
“There has been an arrangement lasting nearly two years between the parties to construct the shearing cradle. The original approach was made by the opponent to the Catfords to manufacture the machine. There have been many discussions between the parties discussing the requirements of the machine, and there had been input from both parties. The filing of a provisional application [by the Catfords] while discussion of an agreement was taking place had been a breach of trust.”
Later Mr Habel made the point that the Catfords run a machine shop, and although they had a farming background there would have to have been a lot of discussion between them and the Lines, who had the expertise in the sheep shearing field, as to what was required.
In response, Dr Wyk noted that the second version of the animal handling apparatus had only been publicly displayed once, that being the showing to Elders’ employees on 28 July 1998, and that showing had been done under a duty of confidence. Dr Wyk went on to say that the first version of the machine lacked two features of the presently claimed invention, namely a
sub-assembly and a belt wide enough to cover a sheep. Dr Wyk thought that even though it went against his client’s case, contrary to the approach Mr Habel had taken the first version did disclose a tension adjustment means, since it had a means to enable the separation between its rollers to be varied, which effectively varied the tension on the endless belt.Dr Wyk submitted that the opponent had not put forward any evidence of common general knowledge in the art, and despite what had been asserted by the opponent, the citations relied upon by the opponent - Australian Patent Application No. 29867/84, Australian Patent No. 501826 and US Patent No. 4,459,941 - were not common general knowledge. In relation to 29867/84 and 4,459,941 being common general knowledge because they were referred to in the present specification he said:
“I say that that is not a reasonable proposition because:
1)it is not proper to say this is an area of high technical complexity, nor is it an area of of high competitiveness such that patent specifications are routinely searched; and
2)although the prior art patent documents are referred to in the specification, it is put in such a way that their disclosures are not considered to be generally known.”
In support of this second point he drew attention to passages in the specification which referred to US patent specification 4,459,941 as “disclosing” a shearing table having certain features and Australian patent application 29867/84 as “showing” a shearing table having certain features, and another passage referring to both of these as “suggestions”.
Of the device shown at 18 March 1998 field day, Dr Wyk contended that this disclosure was not sufficiently widely shown that the person skilled in the art would automatically take that as being part of their normal tools of trade.
In relation to entitlement, Dr Wyk noted that the onus of establishing this was on the opponent. The meetings between the personnel of the two parties was, he submitted, a natural outcome of their relationship and the declarations, except for paragraph 14 of Lance Lines’ first declaration, just say that there was a conversation. And even paragraph 14 of Lance Lines’ first declaration relating to the meeting of 10 August 1998 does not say anywhere that any of those features referred to were first suggested by the individuals referred to – properly read it mainly says that this is what we can throw out rather than include in the third version of the animal handling apparatus. Dr Wyk drew attention to the fact that 10 August 1998 is well past when the second version was built, and that the engineering drawings of that second version, which are clearly of the same apparatus as the drawings used in the present specification, are dated 27 May 1998.
I will provide more details of the parties' submissions, where relevant, later in my decision.
DECISION
In proceedings such as these before the Commissioner the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
Inventorship
The evidence is that the present invention had its origins in March 1996. Lance Lines was shown several shearing tables, one of which was the Moffat table, that had been purchased by Colin Schaeffer who required them for shearing because he had back problems. Lance Lines apparently realised the potential for such tables to be used in conjunction with the Stockstill electroimmobilizer. Lines and Schaeffer proceeded to make modifications to the Moffat table. This process continued over the next 18 months or so. Up to this stage neither the Moffat table nor its modifications involved an endless belt – rather, support to the sheep was provided by two adjacent rollers. The evidence from both parties is that Ian Catford first saw the modified Moffat table in April 1997, and according to his evidence he took the table to his property to trial it. This table had a number of faults, and the evidence from both sides is that Ian Catford was the first to suggest the use of an endless belt to remedy these faults. Ian Catford also persuaded his brothers, Robert and Colin, who operated an engineering workshop and business (Catford Engineering), to get involved in the development of the table, at their own expense. Robert Catford first saw the modified Moffat table (that not having an endless belt) in August 1997. Catford Engineering then proceeded to build a new version of the table which incorporated an endless belt (the so-called “first version” that was on display at the 18 March 1998 field day). This was trialled on 2 April 1998. There does not appear to have been an intention on the part of the applicants to seek patent protection for any aspects of this device with the present application, which would have been ruled out by the public display of the device at the field day. However, as I shall address presently, there are some construction issues with claim 1 in particular, such that it ought to be read as including the first version within its scope. Be that as it may, it would mean that the only feature of claim 1 which could amount to an invention is the use of an endless belt, and, as I have already indicated, it has been conceded by the opponent (per the evidence of Lance Lines) that that feature was the invention of Ian Catford.
It was well recognised that this first version had serious defects, and developmental work continued, culminating in the second version of the table. It is this second version of the table which is the subject of the present application, as I think is clearly indicated by the technical drawings which are exhibits to the statutory declaration of Colin Catford. These drawings are dated 26 and 27 May 1998, and, as has already been mentioned, they are the same as corresponding drawings of the present specification and disclose all the structural features of the present invention. While it is possible that the constructed second version departed from these drawings, that seems improbable and I note that that is not contended by the opponent.
While these drawings are, from the evidence, the outcome of instructions to draftsmen provided by Colin and Robert Catford, the question is: what input, if any, was provided by others (in particular, from the Lines side) as a result of collaboration with the Catfords?
In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner and said the common theme from these was that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the invention. This approach was approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another ([1998] AATA 852).
In arriving at this approach, the delegate in Row Weeder gained guidance from a number of decisions, including Harris v CSIRO 26 IPR 469:
"The Harris v CSIRO decision (sic) (26 IPR 469) decision puts forth a number of questions to consider. These are-: (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa. The decision also suggests a more significant question of whether the invention would have occurred without a particular person's involvement."
The only evidence of any collaboration subsequent to the trial of 2 April 1998 up to the 27 May 1998 is the statement in Lance Lines’ evidence that:
“On 26th May 1998, Glan took the shearing machine back to Catford Engineering in Jamestown and spent two hours with Charles and Robert, discussing the machine.”
The “shearing machine” here referred to I take to be the combination of the table and the electroimmobilizer, and I note that immediately preceding this quote is extensive text relating to the electroimmobilizer. Also, 26 May 1998 is very close up against the date on which the drawings were completed (work had commenced on them on 13 May 1998). Nevertheless, it is still within the realms of possibility that this discussion influenced the content of the drawings of the table. This is because it is the evidence of Robert Catford that the two draftsmen responsible for the drawings received instructions from him and his brother Robert up until that time, although he is emphatic that there was no input from the Lines. The fundamental difficulty, however, with Lance Lines’ evidence on the discussion of 26 May 1998 is that Glan Lines, the actual participant in it, makes no reference to it having even taken place. Glan Lines’ only evidence on the contribution made by him and others from Stockstill to the invention is as follows:
“During the development of the machine by Catford Engineering I and Stockstill provided information to the machine from the practical use point of view for Catford I (sic) became very familiar with the features of the machine, and although the machine demonstrated publicly on 18 March 1998 was what is called the hydraulic machine I am familiar with the other features of the machine.”
I do not find this evidence to be particularly persuasive. It is notable that Glan Lines refers to this machine as being the “hydraulic machine”. This reiterates the evidence of Lance Lines on this point. However, the Catford brothers are all emphatic that hydraulics were only introduced into the second version of the table, and that the first version was only adjustable in one respect, and this was achieved by mechanical means. Overall, the Catfords’ evidence contains details, and is expressed in a manner, which lends it credibility, and the Catfords’ evidence is supported by the evidence of Tony Moten, who I take to be independent in this matter. The video evidence is inconclusive on this point. Thus the weight of the evidence clearly leans towards the machine on display on 18 March 1998 not being the hydraulic apparatus. But in any case, if, as appears plausible, this evidence is taken to be referring to the second version of the table (that is, Glan Lines is mistaken as to the date), then Glan Lines does not make any claim to have made a material contribution to this device, but to merely be aware of the non-hydraulic features of it.
There is thus precious little evidence of any involvement by anyone else other than the Catford brothers in the development of the second version. Indeed, the fact that once having had the second version revealed to them on 28 July 1998 the Lines appear to have immediately set about having it modified to make it cheaper (such as by eliminating the hydraulics) – leading to the creation of a third version - would tend to point away from them having had an involvement in the second version. While Mr Habel speculated (not unreasonably, I think) that the relationship between the parties would likely have led to there being input to the invention by both parties, there is simply no significant evidence of that input having occurred in the crucial period, being the weeks leading up to 27 May 1998. While such input could have occurred prior to the first version being trialled on 2 April 1998, the fact that changes were not made to the trialled version is indicative of the fact that they had not yet been conceived. Mr Habel also argued that as Colin and Robert Catford run a machine shop, they would have needed to rely upon the farming expertise of the Lines. However, as Mr Habel conceded, the brothers do have a farming background and in any event Ian Catford is not involved in running the machine shop but is in fact a farmer and grazier, and thus that argument does not hold up.
In my view the evidence in this matter does not establish that anyone else other than the Catford brothers has made a contribution having a material effect upon the inventive aspects of the second version of the shearing table over the first version. Accordingly I find that the inventorship of the present invention resides in the inventors of record, the Catford brothers.
It is also asserted on behalf of the opponent that some sort of an arrangement in relation to a joint venture had been reached between the opponent and the applicant. According to Glan Lines’ evidence, on 4 March 1998 he “invited Catford Engineering to be part of a joint venture to manufacture the shearing machine.” However there is no elaboration of this and no other reference to this anywhere else in Glan Lines’ evidence.
In his statutory declaration exhibited to his statutory declaration which is the evidence in reply, Lance Lines states (referring to himself in the third person):
“On the morning of 13th June 1998, Lance had a meeting with Charles Catford, Jason Bell (his legal adviser), David Baednall and Glan and, in the afternoon, they inspected Model 2 of the hydraulically-operated machine at the Catford workshop. Lance believed that farmers would copy Catford’s work, as he did not believe that their mechanical devices could be patented. (He checked his opinion on patents with Drs Chris Abell and Robert Baxter.) Great efforts were made to protect Catford’s work and the money that they spent on R&D, by way of an agreement tying Stockstill to their machine. This was the reasoning behind the Heads of Agreement. The basis of the agreement with Schaeffer/Hoffmann had been explained to Catfords, i.e., all R&D cost (no thinking time) would be refunded from profits if we were successful, with nothing if we failed.”
It is not apparent what “Heads of Agreement” is being referred to here. It appears that in 1996 a agreement of some kind (“a solid undertaking”) was reached with Colin Schaeffer’s brother-in-law Geoff Hoffman (a metal fabricator) to make a shearing table at his own expense but to be reimbursed out of profits. Later, in August 1997 it appears that another agreement was attempted between “the manufacturing parties” (Catford Engineering and Schaeffer and Hoffmann), but Lance Lines says of this: “We did not hear what arrangements, if any, had been made.” But in any case, it appears that the only formal agreement which the Catford brothers actually made was a confidentiality agreement reached between Catford Engineering and Stockstill Ltd just prior to revealing the second version of the shearing table at an Elders training day on 28 July 1998. This agreement is a confidentiality agreement and not a joint venture agreement, but is interesting in that it seems to acknowledge that any intellectual property rights in the shearing table (referred to as a “cradle” in the agreement) reside with Catford Engineering, and conversely all rights in the electroimmobilizer lie with Stockstill Ltd.
Nonetheless, I think there is no doubt that a nebulous informal joint venture agreement did exist between Catford Engineering and Stockstill Ltd. Robert Catford concedes as much in his evidence, in which he states:
“The commercial arrangements with Stockstill were not fully defined during the period during which the joint venture was in effect, namely late 1997 through to December 1998.”
Crucially, however, there is no evidence to suggest that there were any agreements in place which covered intellectual property rights - indeed, the evidence of Lance Lines I have quoted above seems to express antipathy towards the notion of patenting the second version of the shearing table (which I note he refers to as “their [that is, the Catford’s] mechanical devices” [emphasis added]). Also, Glan Lines refers to Heads of Agreement being discussed in the latter half of 1998, but these were merely “for the manufacture and sale of the machine”. The discussions broke down without an agreement being reached.
Furthermore it is not the case of Stockstill having entitlement to the invention through a contractual arrangement, as the evidence is clear that Catford Engineering did not receive, and was not entitled to, any consideration for its work on developing the shearing table.
Thus it would seem that there is no respect in which the opponent Stockstill Ltd can be held to have entitlement to the invention by operation of section 15 of the Patents Act.
Section 40
Clarity and Construction of the Claims
There are two features of claim 1 whose construction, in my view, requires detailed analysis in determining this matter. As it happens, it is those two features which the applicants rely upon to distinguish their invention from the prior art. In construing these features I must apply the well-established rules of construction as are, for example, set down in Flexible Steel Lacing Co v Beltreco Ltd 49 IPR 331 at [70]-[81] and Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385.
The first of those features is the feature of a sub-assembly supported by a base-assembly. According to The Macquarie Dictionary (Second Edition) “sub“ is a prefix meaning “under”, “not quite” or “somewhat”. In the present context the prefix “sub“ when used in association with the term “base-assembly” appears open to two possible plain meanings:
1. it is under the base-assembly; or
2. it is a part of an overall assembly comprising it and the base-assembly.
It is one of the rules of construction that where there are two possible meanings such as this and one of them leads to an absurd result, the absurd meaning is to be rejected (Henriksen v Tallon Ltd [1965] RPC 434)). In claim 1 the base-assembly is defined as supporting the sub-assembly, so clearly the sub-assembly cannot be under the base-assembly, so it is the second meaning above which applies. One further observation I would make in respect of the sub-assembly feature is that it is inherent in the concept of an “assembly” that no real distinction exists between an assembly per se and an assembly of subassemblies.
I should note that the opponent did not raise any issues of clarity in relation to the sub-assembly feature.
However the opponent did question the clarity of another feature of claim 1, and this feature is the second upon which I need to place a construction. This is the feature of “said endless belt configured to undercover substantially all of the animal”.
The term “configured”, I think, is, of itself, clear enough (albeit broad), but I understand that the concern Mr Habel had was its relationship to the expression “undercover substantially”. The word “substantially” does not appear to detract from the clarity of the claim, even when considered in association with the word “configured”. As was stated by the Federal Court in Leonardis v Sartas [1996] 449 FCA 1, it is not inadmissible to use in a claim an imprecise word, in an appropriate context, where it conveys the necessary meaning. The inclusion of the word "substantially" in a claim merely shows an intention that the feature to which it relates should not be read too literally. In Young v Rosenthal 1 RPC 29 Grove J stated:
"That word [substantially] to my mind is an utterly and entirely useless word because the law gives it to him without using it. The law says if a man, although not literally infringing the letter of a patent, yet substantially infringes it, it is an infringement. But then you must apply the same words to the novelty".
In the present case, where “configured” relates to a live animal, the word “substantially” would appear apt to convey to the addressee of the specification the extent to which within the scope of claim 1 the requirement that the endless belt has to “undercover” (whatever that word may mean) the animal at any particular point in time is to be applied literally.
The term “undercover”, however, is not quite so easily disposed of as being clear. The Macquarie Dictionary defines “undercover” as meaning “working or done out of public sight; secret”. No other meaning is attributed to it, and the meaning in The Macquarie Dictionary is obviously not the meaning which is intended to be applied to it in the present context. In this circumstance it is appropriate to read the specification as a whole and use the dictionary principle to ascertain the meaning of this word “undercover” in its present context (see the fifth rule of construction enunciated by Sheppard J in Decor Corp v Dart Industries, supra). And when this is done, I think it is amply clear that “undercover” is being used as a shorthand expression for “wholly underlies”.
I am thus of the view that the feature “configured to substantially undercover all of the animal” is not lacking in clarity. It does however have a difficulty about it which was not raised by Mr Habel and nor was it addressed satisfactorily by Dr Wyk when I raised it with him. This difficulty is that this feature, which is about the size and extent of an endless belt, is defined in terms of the size of an animal - any animal. Animals come in a range of sizes, even within a species, and even a specific animal’s size will vary with age. The specification states that the invention is particularly useful for handling sheep during shearing, but is also explicit that it is not restricted to either sheep or shearing. Even if it is appropriate to read the specification as being limited to animals whose size is comparable to those of sheep, it remains the case that due to the manner in which it is couched the feature in question does not serve to limit the size of the endless belt defined by the claim since it is expressed in terms of some indeterminately-sized animal. This being so, it would appear to be the proper construction of claim 1 that the feature “configured to substantially undercover all of the animal” must be regarded as imposing no substantial limitation upon the scope of the claim.
The opponent also asserts that a number of the appended claims also have clarity deficiencies, but I have concluded that none of these are such as to occasion any doubt in the mind of the addressee of the specification as to what falls within the scope of these claims. The specific issues pointed to by the opponent are that:
- “Claim 3 is ambiguous and not clear in defining ‘the endless belt covers substantially all of the sub-assembly from an upright aspect’. ‘Substantially’ is indefinite and no meaning can be placed on ‘an upright aspect’.” Once again, and on a similar basis, “substantially” would appear acceptably imprecise in this context as was the case in the previously-mentioned context. The phrase “from an upright aspect” is clearly intended to convey “when viewed from above”.
- “Claim 6 is not clear in referring to ‘the stock’ handling apparatus for no stock handling apparatus has been previously defined.” The previous references have been to “an animal handling apparatus”. I do not think the addressee of the specification would be left in any doubt that these are one and the same.
- “Claim 14 is not clear in defining the segments of the first roller are driven by ‘a single drive means’. Hence this claim is not fairly based in defining a further drive means for the first roller that has not been described.” To the extent that I understand the issue being raised here, I think that the answer may lie in the fact that claim 1 defines a “drive means”, and claim 14 further defines that as a “single drive means”.
- “Claim 18 is redundant on claim 17”. As I commented at the hearing, claim 17 defines a “roller height adjustment means”, whereas claim 18 defines the relative positions of the two rollers.
- “Claim 19 is not clear in defining ‘the base’ of the animal handling apparatus. Thus the claim is not clear and not fairly based. Claim 1 defines a ‘base-assembly’.” The base-assembly clearly constitutes the base of the apparatus.
- “Claim 24 is not clear in defining ‘adjusting the tilt of the first and second rollers’. It is far from clear what is intended by ‘tilt’ and what direction the rollers tilt’.” It seems clear to me that what is referred to here is the angle of the plane of the rollers to the horizontal.
Fair basis
The opponent also raised a couple of fair basis issues in relation to the appended claims that were even more minor than, and just as unsustainable as, the clarity issues that were raised in relation to the appended claims. As such they do not warrant my going into any further detail about them.
Novelty
The test for determining whether the invention lacks novelty is the " reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 288 at 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement occurs when "each and every one of the essential features" of the claim has been disclosed by the alleged anticipation: see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391.
There are two principal items of prior art advanced by the opponent as rendering the present invention not novel. These are Australian Patent application 29867/84 and the modified Moffat table in its various versions. Although a passing reference was also made to US Patent No. 4,459,941 - which is directed to the Moffat table itself - as being anticipatory, this is clearly not the case since this device does not have an endless belt.
Australian Patent application 29867/84 discloses a shearing table wherein the table top comprises two rollers with an endless belt around them, as with the sub-assembly of the claim 1 in suit. The table top is supported by table legs which are adjustable in height. These correspond to the base-assembly of present claim 1. A drive means is connected to one of the rollers, as also is defined in claim 1. However 29867/84 does not include a tension adjustment means. It describes the rollers as being a certain distance apart (15 inches) so that tensioning the endless belt by varying this spacing does not seem to be contemplated, and no other mechanism of tensioning the belt is disclosed. The tensioning means is clearly an essential feature of the claimed invention, and thus claim 1 and the claims appended to it are novel in light of 29867/84.
In determining whether the present invention is novel in the light of the modified Moffat table in its various versions, the first question that falls to be decided is which, if any, of these versions was published by prior use before the priority date of the claims. The priority date of the claims is conceded by the opponent to be earliest priority date of the application, namely 11 December 1998.
I have already indicated when addressing the issue of inventorship that it was the first version of the modified Moffat table that was put on display at the field day of 18 March 1998. This is notwithstanding certain references in the evidence from the opponent that this was the hydraulic machine, which I take to have been a reference to the second version. The weight of evidence clearly supports the conclusion that it was the first version which was on display on 18 March 1918. The second version was, according to the evidence, revealed to people outside the Catford Engineering – Stockstill Limited circle on 28 July 1998 at a showing to Elders’ employees. This appears to have been the only disclosure of the second version outside the Catford Engineering – Stockstill Limited circle before the priority date of the claims. It is the evidence of the Catford brothers and Tony Moten, and not disputed by the opponent, that all present at the showing to Elders’ employees on 28 July 1998, except the Lines, were required to sign a form binding them to confidentiality. As I have already adverted to, the Lines had already signed a confidentiality agreement the previous day. However, there is conflicting evidence as to when the Lines were first acquainted with the second version, that is, whether it was 27 July 1998 or at an earlier time.
At one point in his evidence Glan Lines states:
“On my understanding this confidentiality agreement applies to confidential information from the date of the agreement and cannot apply retrospectively.”
Accepting that this is the case, it still remains to be considered whether an implied obligation of confidentiality existed prior to that date. If it did, then for the purposes of establishing whether publication of the second version occurred prior to the priority date of the claims it becomes an irrelevancy whether or not the Lines were aware of the details of the second version prior to signing the confidentiality agreement.
In Coco v A N Clark(Engineers) Ltd [1969] RPC 41, Megarry J applied a "reasonable man" test on the confidentiality issue. He said:
"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."
Also, in Riekie v. M J McGrath (1986) AIPC 90-311 the delegate of the Commissioner observed thus:
"It seems clear on the authorities that a duty of confidence does not have to be specified in order to be existent. Furthermore, the existence of an implied duty of confidence does not have to be comprehended by the individual who incurs that duty, although if this be the case it may strongly suggest that such a duty did not exist."
In the present case I am in no doubt that a duty of confidence did exist. It is clear from the evidence that all involved were aware of and understood the need for secrecy, and proceeded on that basis. It is accepted by both parties that the arrangement between them was a joint venture one, which would appear to have mandated a certain degree of openness on the part of the inventors with their joint venture partners, but in the expectation that confidentiality would be maintained. Stockstill Limited was developing is own invention (the electroimmobilizer) with a view to patenting it, and the people behind Stockstill would have been well aware of the need to maintain confidentiality in that regard.
On the basis of the above I find that no publication of the second version of the modified Moffat table took place before the priority date of the present claims.
I turn now to the first version of the modified Moffat table and the question of whether the present claims are novel in light of its disclosure on 18 March 1998. The best evidence as to the features of this device is the videotape which is an exhibit to the Lance Lines statutory declaration served as evidence in reply. I note that the declaration states that the video was produced on 17 March 1998, but this is contradicted by the other evidence on file on this, including Lance Lines’ first statutory declaration in the evidence in support. I think that the 17 March 1998 date should be 2 April 1998.
There are some difficulties with the video evidence. There is no real commentary accompanying it, and there is no declaratory evidence from those present or from experts as to what it actually shows. Nevertheless, to my eye it seems to read onto present claim 1. It has the base-assembly and the two roller sub-assembly (with at least one more roller below these rollers) entraining an endless belt, with one roller being connected to a drive actuation means. The separation between the two rollers of the sub-assembly appears to be adjustable, thus allowing for the tension of the endless belt to be adjusted. It even appears to be the case that the particular sheep used in the video are of such a size that they are substantially wholly underlain by the endless belt, even though, as I have said, I am disinclined to regard this feature as imposing any real limitation upon the scope of the claim. I therefore find that claim 1 lacks novelty in light of the first version of the modified Moffat table.
Claims 2 to 6, 9, 10 and 15 likewise define features which all appear to be present in the first version of the modified Moffat table, and are thus also not novel. Claims 28 and 29 read:
28.An animal handling apparatus as in any one of the preceding claims wherein the animal is immobilized by electrical paralysis.
29.An animal handling apparatus as in claim 28 wherein the animal is released from paralysis periodically to allow for breathing of the animal.
Both of these claims introduce into apparatus claims features specifying the manner in which the apparatus is to be used. I do not consider these features as being limiting upon the apparatus to which the claim is directed, but in any case the techniques defined in claim 28 and 29 both appear to have been employed in the video, and accordingly these claims are also lacking in novelty in light of the disclosure recorded by the video.
Of the remaining claims, claim 7 introduces the feature of the tension adjustment means being a hydraulically operated ram and claim 8 defines the tension adjustment means to be an electrically operated screw threaded adjustment arrangement. Neither of these features is evident in the video, both are clearly essential features of their respective claims and therefore these claims are novel.
Claim 11 defines that the first and second rollers diverge “so that one end of the rollers are held apart from another end of the rollers”. The first version of the modified Moffat table does not have this feature; rather, the rollers are fixed in parallel. Therefore claim 11 is novel.
Claims 12 to 14 introduce the feature of the first and second rollers being a composite roller provided in segments. The first version of the modified Moffat table does not have this feature, and thus claims 12 to 14 are novel.
Claim 16 defines the endless belt as being “two or more endless belts [which] are positioned side by side or overlapping”. The first version of the modified Moffat table does not have this feature, and thus claim 16 is novel.
Claims 17 to 27 defines various adjustment mechanisms for the animal handling apparatus. The first version of the modified Moffat table does not have these features, and thus claims 17 to 27 are novel.
Claim 30 defines the animal handling apparatus as including “tethering arrangements which rotate at the same angular speed as the endless belt”. While the original Moffat table had this feature (but not the endless belt), the first version of the modified Moffat table does not have this feature, and thus claim 30 is novel.
Claim 31 is an omnibus claim, and is novel.
I therefore find that of the 31 claims of the opposed application, claims 1 to 6, 9, 10, 15, 28 and 29 are not novel.
Inventive Step
The effect of subsections 7(2) and 7(3) of the Patents Act, in the case of applications filed before 1 April 2002, is that a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
The opponent relies on Australian Patent Application No. 29867/84, Australian Patent No. 501826, US Patent No. 4,459,941 and the public display of the first version of the modified Moffat table at the field day on 18 March 1998 to establish its ground of a lack of an inventive step. (The opponent also sought to rely on the showing to Elders’ employees on 28 July 1998 of the second version of the modified Moffat table, but that is ruled out by my finding as to its non-publication due to the existence of a confidentiality agreement in place in relation to that showing.)
The opponent contends that these four disclosures are common general knowledge in the art. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
As observed by Dr Wyk, there is simply no evidence establishing the common general knowledge. None of the opponent’s declarants provide evidence as to the common general knowledge, and although two of the patent documents in the evidence (Australian Patent Application No. 29867/84 and US Patent No. 4,459,941) are referred to in the specification as being prior art, I agree with Dr Wyk’s contention in his submissions (supra) that it is not done in a way to suggest that the documents as a whole are common general knowledge. Moreover, there is no overlap between the disclosures of the two document in respect of relevant features that would bring into play the principle set down in Bristol-Myers Squibb Co v F H Faulding Limited 46 IPR 553 that:
"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area.'"
As for the field day of 18 March 1998, although it is supposed to have been attended by 300 people there is no evidence of information of the first version of the modified Moffat table on display there having become the background knowledge and experience which is available to all in the trade, nor does it seem a reasonable surmise that this is the case. A one-off display at a particular farm in a regional area of Australia does not seem a likely medium for the wide dissemination of that information.
At the hearing, Mr Habel put forward another item of prior art knowledge that he asserted was common general knowledge in the art and of relevance to the present matter, which is the use of a tension adjustment means to adjust an endless belt. Once again, there was no expert evidence to support this contention. However, the person skilled in the art for the purposes of the present invention would be a mechanical engineer specialising in agricultural machinery, and I am aware from my own background knowledge that endless belts have widespread application in this field, for such things as vehicle engines, pumps and grain elevators. I consider that to such a person utilising a tension adjustment means to adjust an endless belt would be common general knowledge.
As I have already said, the opponent relies on four items of information to establish lack of an inventive step. These items of information are Australian Patent Application No. 29867/84, Australian Patent No. 501826, US Patent No. 4,459,941 and the public display of the first version of the modified Moffat table at the field day on 18 March 1998. I have said these are not, as alleged by the opponent, common general knowledge. However, since I have found that utilising a tension adjustment means to adjust an endless belt would be common general knowledge, these disclosures will still come into play if they could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
The present invention relates to tables or benches for supporting an animal while it is being handled. The problem addressed by the present invention is that of accommodating a range of sizes and shapes of animals and to optimize the manoeuvrability of the animal. The ready accessibility of the patent documents and their relevance to the problem leave little doubt that the patent documents could have been ascertained understood and regarded as relevant. Indirect support for this is provided by the fact that two of the documents are referred to in the opposed specification and the third has turned up as evidence in these opposition proceedings. On the other hand, I do not think there is any doubt that the public display of the first version of the modified Moffat table at the field day on 18 March 1998 could not have been ascertained. There is no evidence of any details of it being disseminated beyond the field day. While a videotape recording was made of the trial on 2 April 1998, there is no evidence of its availability (if any) or of this video ever having been actually viewed by anyone at all.
Of the three patent documents, the closest one to the present invention is Australian Patent Application 29867/84. The only difference between this disclosure and the invention defined by present claim 1 is that claim 1 includes a feature of a tension adjustment means. The other two disclosures do not employ an endless belt, in which case there is obviously no call for a tension adjustment means. What falls to be decided then is whether the provision of a tension adjustment means in the apparatus disclosed in 29867/84 involves an inventive step.
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [(1970) RPC 157]. This court had been referred to Olin in the argument in Wellcome Foundation. 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 [the desired result]?'
That approach should be accepted."
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273, (1993) AIPC 90-971). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Application 29867/84 utilises an endless belt to improve the ease of handling of an animal located on a table or bench of the type where the surface of the table or bench consists of a plurality of rollers. The present invention enhances the manoeuvrability of an animal located on the table and the ability of the table to accommodate a range of sizes and shapes of animals. The solution to the problem presented by application 29867/84 and addressed by the present invention is the provision of a tension adjustment means for the belt. The utilisation of tension adjustment means for endless belts in general is, as I have already concluded, common general knowledge. Commonly this is done for maintenance purposes in case the belt stretches to an extent which impacts upon its effective operation. The question is, would the person skilled in the art acquainted with the need to enhance the manoeuvrability and versatility in respect of the size and shape of the animal to be handled be led as a matter of course to try to achieve this by making the tension of the endless belt on the table disclosed by application 29867/84 adjustable. In my view the answer to this question is yes. It seems to me that the person skilled in the art who was designing an animal handling apparatus of the type where the surface which supported the animal was an endless belt entrained around two rollers would have at the forefront of their mind the possibility that the apparatus might need to include adjustment means in various aspects of its mechanism. In particular, the possibility of the need to adjust the tension of the endless belt, if only to compensate for stretching, would be unlikely to elude consideration. Having considered this possibility it then seems to me it would be difficult for the (non-inventive) person skilled in the art to not appreciate the advantages that such tensioning adjustment would afford in respect to the manoeuvrability of an animal located on the belt. The invention which is defined by claim 1 can be said to fall within the category of being “a mere workshop improvement”. As was pointed out by Starke J in Griffin v Isaacs (1942) 12 AOJP 739 at 741, and cited with approval by Wilcox, Burchett and Foster JJ in Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels Plc 26 IPR 565, “A development which any competent workman in the trade might have made had he needed is not an invention and is wanting in….. subject matter”. A similar approach was taken in Winner v Ammar Holdings Pty Ltd (supra).
It follows that the invention defined by claim 1 does not involve an inventive step.
The matter defined by claims 4, 9, 10, 15 and 19 is disclosed in application 29867/84, and therefore these claims also do not involve an inventive step as a consequence of claim 1 not involving an inventive step.
Claims 5, 7 and 8 are narrower, but-well known, forms of the tension adjustment means. Therefore these claims are also in respect of mere workshop improvements, and do not involve an inventive step.
As I have already stated under the heading of novelty, I do not consider the features of claims 28 and 29 as being limiting upon the animal handling apparatus to which these claims are directed, and it therefore follows that because claim 1 (to which these claims are appended) does not involve an inventive step, that claims 28 and 29 similarly do not involve an inventive step.
I therefore find that of the 31 claims of the opposed application, the invention defined by claims 1, 4, 5, 7 to 10, 15, 19, 28 and 29 do not involve an inventive step.
Manner of Manufacture
Neither party made any submissions in relation to the ground of manner of manufacture. The particulars for this ground appear to challenge the inventive merit of the claimed invention in light of what is known in the prior art. In light of the decision of the High Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd, (1996) AIPC 91-226 inventive merit on this basis would appear to be properly addressed under the grounds of lack of novelty and lack of inventive step. The invention clearly meets the threshold requirement for patentability required under paragraph 18(1)(a) of the Patents Act. I therefore find that the presently claimed invention is in respect of a manner of manufacture.
CONCLUSION
I have determined that the opponent has not established its entitlement to the invention which is the subject of this application, and that entitlement to the invention rests with the present applicants Ian Murray Catford, Colin Charles Catford and Robert Craig Catford. I have further determined that the invention defined by claims 1 to 6, 9, 10, 15, 28 and 29 of the present application lacks novelty in light of the prior use which took place at the field day held on 18 March 1998. I have also found that claims 1, 4, 5, 7 to 10, 15, 19, 28 and 29 do not involve an inventive step over the disclosure in Australian Patent Application 29867/84. However, the specification was found to comply with section 40 of the Patents Act and was for a manner of manufacture.
As there is clearly patentable subject matter within the specification I allow the applicant 60 days from the date of this decision in which to file proposed amendments addressing the deficiencies identified above.
COSTS
It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been partly successful in respect of lack of novelty and an inventive step of the claims. I therefore award costs against the applicants, Ian Murray Catford, Colin Charles Catford and Robert Craig Catford.
Ed Knock
Delegate of the Commissioner of Patents
29 April 2005
Patent attorneys for the applicant : A.P.T. Patent and Trade Mark Attorneys, Adelaide
Patent attorneys for the opponent : Collison & Co, Adelaide
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