Stord Bartz A/S v the Dupps Company

[1990] APO 33

PATENTS ACT 1952

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:      Applications No. 555337 by STORD BARTZ A/S and No. 570199
         by THE DUPPS COMPANY and opposition by each party to the
         other's application.

Background
         Application No. 555337 was advertised as accepted on 18 September 1986, notice of opposition thereto was lodged on 16 December 1986 and The Dupps Company served its evidence‑in‑support on 18 January 1988.  Application No. 570199 was advertised as accepted on 10 March 1988 and notice of opposition thereto was lodged on 9 June 1988 by Stord Bartz A/S.  Extensions of time were allowed for Stord Bartz to serve its evidence‑in‑answer relating to application No. 555337 and its evidence‑in‑support relating to application No. 570199 but The Dupps Company objected to a fifth extension for evidence‑in‑support and a seventh extension for evidence‑in‑answer.  These matters were heard on 1 November 1989 and in concurrent decisions dated 1 December 1989 I refused to allow the extensions.
         On 28 December 1989 Stord Bartz applied for special leave to adduce further evidence relating to the opposition to application 570199.  The further evidence was lodged with the application for special leave.   The application was objected to by The Dupps Company and the matter was heard on 12 March 1990.  Other matters relating to the two oppositions were also dealt with at that

hearing.  On 5 April 1990 Stord Bartz made a second application for leave to adduce a second item of further evidence relating to the opposition to 570199.  This second item was also lodged with the application.  Both parties lodged written submissions in the matter after The Dupps Company objected to the second application for special leave.  In decisions dated 21 May 1990 and 7 August 1990 I refused to grant Stord Bartz special leave to adduce the further evidence.
          After the hearing on 12 March 1990, Stord Bartz requested leave to amend the complete specification of application 555337.  The request was advertised on 14 June 1990, there was no opposition and the request was allowed on 12 September 1990.

Subject Matter
         The specifications of applications 555337 and 570199 relate to dry rendering of meat by‑products.  The inventions are similar in that they are both characterized by an initial part of the rendering process where a heated slurry of meat by‑products is separated by a press into liquid and solid fractions or phases.  Claim 1 of 555337, as proposed to be amended by the request allowed on 12 September 1990, reads as follows:

"Process for the production of fodder and fat from animal raw materials in the form of slaughter‑house waste, characterised in

that the raw material, after having been subjected to heating to a temperature ranging from 60oC to 100C, immediately is separated in a press into a solid material phase and a fluid phase;

the solid material phase is separately subjected to a drying step and thereafter to one or more subsequent steps for the separation of fat and solid material individually;

while the fluid phase is separately subjected to a two‑step evaporation and the evaporated product wholly or partially may be fed to the solid material phase before or after the drying of the solid material phase for the individual separation of fat and solid material or the evaporated product is worked up further directly into fat;  and

that heat energy from the gases emitted from the drying step of the solid material phase is used in the first evaporation step of the fluid phase, while the second evaporation step has a separate supply of heat energy;  and

that the emitted gas from the second evaporation step is supplied together with the emitted gas heat from the drying step to the first evaporation step."

Claim 12 of 570199, as accepted, reads as follows:

"A process for the dry rendering of raw material, in the form of animal, poultry and/or fish by‑products, to produce fat and tankage, comprising the steps of:

(a)heating chunks and pieces of the raw material to form a heated slurry,

(b) pressing the heated slurry to separate it into a first fraction comprising free‑run fluids and soft moisture bearing material, and a second fraction comprising oversize,

(c)reducing the water content of the first fraction in evaporator means by evaporation to produce a partially dehydrated first fraction,

(d)introducing partially dehydrated first fraction and the second fraction into a cooking vessel and admixing and cooking the fractions in the cooking vessel, and

(e)removing cooked material from the cooking vessel and separating fat from the cooked material."

Opposition to 555337
         Application No. 570199 claims priority from a basic US application filed on 9 April 1982 whereas application 555337 has its international filing date of 11 November 1982 as its priority date.  The Dupps Company has opposed application 555337 on the ground of prior claiming and the evidence‑in‑support is directed to this ground.  The evidence‑in‑support consists of a declaration from Kenneth James Moffat, general manager of an Australian company manufacturing meat rendering equipment.  Mr Moffat compares the claims of the two specifications and comments on the features therein in the light of his knowledge of the art.
         Mr Moffat's comparison is based on the claims of 555337 as they were before the abovementioned amendments thereto, so his declaration is now of less relevance.  The attorneys for both parties at the hearing of 12 March 1990 generally agreed that the proposed amendments would remove the objection of prior claiming.  I agree with their views;  the features of two‑step evaporation and of drying the solid phase before fat evaporation are substantial features of Stord Bartz's claims which are not features of Dupps's claims.  Thus I dismiss the opposition to application 555337.
         In the matter of costs relating to the opposition, I note the reasons for Stord Bartz's proposed amendments to its specification clearly indicate that the amendments were to overcome the objection of prior claiming.  Thus, it seems to me that The Dupps Company's opposition to the accepted claims was justified and consequently I award costs against Stord Bartz.

Opposition to 570199
         In the opposition to the Dupps Company's application, matters of priority dates and fair basis were dealt with in my decision of 21 May 1990, because the relevance of the evidence sought to be adduced by Stord Bartz, in its first application for special leave, was related to the matter of priority dates.  I will now deal with the other matters brought up at the hearing of 12 March 1990. 
         Firstly, the matter of obtaining.  A declaration pertaining to this matter was lodged with Stord Bartz's second application for special leave, but the leave was not granted, the evidence has not been admitted to the opposition proceedings and I therefore dismiss this ground of opposition.
         Secondly, in relation to Section 40, Stord Bartz's attorney submitted that the Dupps specification is not fully described because the invention is not sufficiently distinguished from the prior art and because the advantages of the invention over the prior art are not spelled out.  I do not agree with these submissions; the prior art is referred to in some detail in the second paragraph on page 1A of the specification and elsewhere.  The use of presses in the prior art, for fat separation or bone crushing for example, has not been referred to, but I think that this minor omission is not significant.  The advantages of the invention are referred to in the first paragraphs on page 1B and page 3;  the initial separation of the raw materials and evaporation of the fluid fraction means that less energy is used in the cooking process.
         Finally, submissions were made at the hearing that the features of the broadest claims of the Dupps specification were all well known components.  These submissions were also based on evidence which has not been admitted to the opposition proceedings so I have not considered them in the opposition.  Thus I dismiss the opposition to application 570199 and I award costs relating to opposition against Stord Bartz, the opponent in this matter.

Bar to Sealing
The judgement of the High Court in Tate v Haskins 53 CLR 594 imposed a duty on the Commissioner not to seal a patent on an application where he or she is aware of facts which would make that patent clearly invalid. Thus, once evidence is on file before the Commissioner there is a duty to consider whether it may constitute a bar to sealing. In the cases before me I have considered the declarations lodged but not admitted as evidence. I comment on these declaration as follows.
         A declaration by Tissa Fernando was lodged by Stord Bartz.  Mr Fernando is managing director of an engineering company specializing in rendering technology in New Zealand, Australia and the United Kingdom.  He refers to features in the Dupps specification and relates these to disclosures in various documents attached as exhibits to his declaration.  These documents are from a CSIRO seminar in 1978 and from a CSIRO meat by‑products processing workshop in July 1982.  This latter date I note is later than the priority date of the claims of the Dupps specification, so those documents cannot be considered with regard to that specification.   Also, in his declaration Mr Fernando declares as to his knowledge of the art at 18 March 1983, which is after both priority dates.  Notwithstanding this matter relating to publication of the documents accompanying Mr Fernando's declaration, there is also no disclosure in any one document of the combination of features in the claims of the Dupps specification or in the claims of the Stord Bartz specification.  Also, even if it could be shown that individual features of these inventions are known there is nothing in the Fernando declaration to conclude that there is lack of invention in the combinations of features as claimed in the specifications before me.
         Other declarations lodged but not admitted as evidence relate to obtaining.  A declaration by Jon Alsaker, formerly a research and development engineer with Stord Bartz, alleges that his company made modifications to a rendering plant in the United States in December 1981, that these modifications included such features as a preheater, a screw press and a waste heat evaporator and that it is likely that these modifications would have been seen by representatives of The Dupps Company.  Mr Alsaker's declaration accompanied Stord Bartz's second application for special leave to adduce further evidence.  The Dupps Company lodged a declaration by Albert E. Strasser with its submissions of 25 June 1990.  Mr Strasser, The Dupps Company's US patent counsel, alleges that the invention claimed by The Dupps Company was developed in 1980 and a drawing of the Dupps system, dated 14 August 1980, is attached as an exhibit to the declaration.
         In my determination of Stord Bartz's second application for special leave to adduce further evidence, it was necessary for me to consider, prima facie, the nature of these declarations in order to determine whether Mr Alsaker's declaration would have an important influence on the outcome of the opposition to application No. 570199.  Thus, in my decision of 7 August 1990 I stated:

"In a matter of obtaining the evidence must be of high probative value, see Perrett's Application (1928) 49 RPC 406. In this case, prima facie, Mr Alsaker's declaration is credible, but prima facie, Mr Strasser's declaration is just as credible. Thus, in the light of the submissions from the patent applicant, I think that Mr Alsaker's declaration would not have an important influence on the outcome of this opposition."

Having now considered these declarations further, I think that neither party has provided enough evidence to prove that the other has obtained the invention as claimed in each respective complete specification.
         Upon consideration of all relevant material before me, I conclude that there are no facts of which I am aware which would make either patent application clearly invalid and thus I direct that applications No. 555337 and No. 570199 proceed to sealing.

J.I. WELSH     
  Delegate of the Commissioner of Patents

Attorneys for Stord Bartz:  Arthur S. Cave & Co., Sydney

Attorney for The Dupps Company:  Phillips, Ormonde & Fitzpatrick,