Tamfelt Oyj Abp v Madison Filter 981 Limited
[2007] APO 33
•28 September 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.777057 in the name of Tamfelt Oyj Abp
Title: Filter Cloth
Action: Opposition under Section 59 of the Patents Act by Madison Filter 981 Limited
Decision: Issued 28 September 2007.
Abstract
The invention relates to a multilayered filter cloth intended for use in a pressure filter based on diaphragm extrusion having protective outer layers and cloth air permeability in the low range.
The application was opposed on the grounds of lack of full description, clarity, fair basis, novelty, inventive step and manner of manufacture.
The claimed invention was found to be novel, not lacking an inventive step and a manner of manufacture in view of the prior art documents raised in evidence.
The claims were also found to comply with the requirements of full description, clarity and fair basis and consequently the opposition has been unsuccessful.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 25528/2000 (777057) by Tamfelt Oyj Abp and opposition under section 59 by Madison Filter 981 Limited
BACKGROUND
Patent application 25528/2000 was filed on 14 February 2000 by Tamfelt Oyj Abp (Tamfelt) as application PCT/FI00/00105 under the Patent Cooperation Treaty, claiming an earlier priority date of 17 February 1999 based on a Finnish application. The application entered the national phase in Australia on 8 August 2001 and was advertised as accepted on 30 September 2004 following examination.
Madison Filter 981 Limited (Madison) filed a notice of opposition on 23 December 2004 and a Statement of Grounds and Particulars on 21 March 2005. Evidence was completed on 21 Dec 2006 and the matter was set for a hearing.
The hearing was held in Melbourne on 13 June 2007. The applicant was represented by Ben Fitzpatrick, Counsel and Richard Ollerenshaw, Patent Attorney from F B Rice & Co. Detailed written submissions were provided by the applicant. The opponent represented by Madderns declined the hearing invitation and provided written submissions for the hearing only in relation to costs.
STATEMENT OF GROUNDS AND PARTICULARS
Madison has opposed the application on the grounds of lack of full description, clarity, fair basis, novelty, inventive step and manner of manufacture. The Statement of Grounds and Particulars includes a list of documents D1 to D7 purportedly relevant to novelty, inventive step and/or manner of manufacture.
EVIDENCE
Evidence in support of the opposition filed by Madison consists of:
Statutory declaration dated 16 September 2005 by Anthony J Macquet
Statutory declaration dated 1 July 2005 by Dieter Liettretter [with Exhibit DL-1: technical data sheet “Polynova”]
Statutory declaration dated 14 September 2005 by Richard Lydon [with Exhibit RL-1: extract from “Handbook of Filter Media”]
Statutory declaration dated 19 September 2005 by Catherine Mary Hustwick [with Exhibits CMH1 to CMH8 identified as documents D1 to D7 in the Statement of Grounds and Particulars including translations of foreign language documents ]
Evidence in answer filed by Tamfelt consists of:
Statutory declaration dated 16 March 2006 by Lars Nystrom
Statutory declaration dated 20 March 2006 by Charles Abela
Evidence in Reply filed by Madison consists of:
Statutory declaration dated 14 July 2006 by Anthony J Macquet [with Exhibits AJM-1: copy and translation of D1 and AJM-2: dictionary reference for “symmetry”]
Statutory declaration dated 18 December 2006 by Michael Gerakios [with Exhibits ALB-1 and ALB-2: documents relating to sale of paper machine clothing belts and filter bags]
The evidence by Gerakios includes details of alleged prior use. At the hearing, the applicant submitted that this evidence should be disregarded since it was not in the Statement of Grounds and Particulars. I will consider the issue of admissibility of evidence in my decision.
I will discuss the evidence in my decision as necessary.
SPECIFICATION
The specification states that the invention relates to a filter cloth intended for use in a pressure filter based on diaphragm extrusion.
The specification includes the following claims:
A filter cloth which is intended for use in a pressure filter based on diaphragm extrusion which comprises at least two filter chambers and in which the filter cloth is guided through the filter chambers arranged one after the other in the direction of movement of the filter cloth so that in the filter chambers, the opposite sides of the filter cloth are alternately against the slurry to be filtered which contains liquid and solids, the filter cloth being symmetrical in respect of the filtering ability, and the solids separated from the slurry in said filter are conveyed out of the filter chambers by means of the filter cloth, characterized in that the filter cloth comprises a middle layer the both surfaces of which are provided with protective layers which form the outer surfaces of the filter cloth and are denser than the middle layer, and that the air permeability of the filter cloth is below 0.2 m3/m2 min, 200 Pa.
2. A filter cloth according to claim 1, characterized in that the protective layers are made to resist wear by using wear resistant threads or fibres and a wear-resistant bond structure.
3. A filter cloth according to claim 1 or claim 2, characterized in that the middle layer has a woven structure.
4. A filter cloth according to any one of the preceding claims, characterized in that the protective layers are batt fibre layers.
5. A filter cloth according to claim 4, characterized in that the protective layers are attached to the middle layer by needling.
6. A filter cloth substantially as hereinbefore described with reference to the accompanying drawings.The specification explains the contribution made by the invention over prior art at pages 6-7 as follows:
“The density of the multilayer cloth according to the invention can be below 0.2, preferably between 0.02 to 0.15m3/m2 min, 200 Pa. In the tests carried out a filter cloth with the permeability of 0.03m3/m2 min, 200 Pa, which is only about a tenth of the permeability of the currently used cloths, was found to function well. According to the prevalent opinion in the field, filter cloths as dense as that cannot be used in pressure filters. However, the test runs carried out with the cloth of the invention, which is denser than the prior art cloths, showed that, contrary to the preconceptions, it functions particularly well and the resulting filtrate is clearly cleaner than before and the solids cake drier. Surprisingly, it was also noted that the useful life of the cloth had increased even by several times compared to the previously used filter cloth. The latter results from the fact that particles of the slurry to be treated cannot penetrate through the small holes in the filter cloth into the inner structure of the cloth, but the solids remain on the surface of the cloth from which they can be removed properly by means of scrapers and washing devices. Thanks to the high pressure, the denser filter cloth does not substantially reduce the filtering ability” (emphasis added)
DECISION
Onus of proof
I note that it is well established in proceedings such as these that the onus of proof lies with the opponent who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG v. New England Biolabs Inc 50 IPR 305 at 67).
Weight of evidence
At the hearing, the applicant proposed that Macquet should not be given substantial weight because Macquet was not an independent expert.
Commissioner not bound by rules of evidence: The Commissioner, while functioning as a Tribunal, is not bound by the rules of evidence but nevertheless must reach a decision on rationally probative material, i.e. material which tends rationally to show the existence or non-existence of facts relevant to the decision. It is for the Commissioner to determine the weight to be given to material of probative value.
I note that in opposition proceedings, it is not unusual for witnesses to be working for one of the parties. While Macquet's technical qualifications or position to state the common general knowledge in the art are not stated in the evidence, he appears to have a reasonable amount of experience in the field of the invention in Australia since 1995. Consequently, I believe that Macquet should not be automatically discounted. Rather, the evidence should be given weight on the basis of what is in it.
I will now consider each ground raised by the opponent in turn.
Section 40 matters
Fair basis / Arbitrariness - “Air permeance range”
The opponent has argued that (a) there is lack of fair basis for the air permeability of the cloth defined in claim 1 being below 0.2 m3/m2 min at 200 Pa and that (b) the threshold appeared to be arbitrary and determined solely by the lowest prior art values acknowledged on pages 1 and 2 of the application.
The test for fair basis [see Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [2004] HCA 69, 98-99] is:
- whether the claim travels beyond or is inconsistent with the disclosure of the specification as a whole [Olin v. Super Cartridge (1977) 180 CLR 236] or
- whether or there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v. Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v. Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79].
The claimed range appears in the consistory statement at page 2 and then in the context of the embodiments on page 6. The claimed range is not inconsistent with other parts of the specification.
Thus, the claims are not inconsistent with the specification as a whole. Applying the tests in the paragraph 19, I find that there is no lack of fair basis for the claimed range of cloth air permeability.
On the question of arbitrariness, I consider that that is really not an issue:
"It is still correct to say that a valid patent may be obtained for something stumbled upon by accident, remembered from a dream or imported from abroad, if it otherwise satisfies the requirements of the legislation. What is important is that the patent itself should involve an inventive step, whether or not it was consciously taken by the patentee and whether or not it appeared obvious to the patentee himself. "
[Wellcome Foundation Ltd v. V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 286]
I find that any arbitrariness in choice of the claimed air permeability range does not conflict with the section 40 requirements.
Fair basis – Embodiment contrary to claimed invention
The opponent has argued that the scope of claim 1 is neither clear nor fairly based on the disclosure, in that the example of figure 5 shows a filter cloth having outer layers that are denser than the middle layer while the example of figure 4 has the reverse configuration - a middle layer that is denser than the outer layers.
However, it is not a problem for a specification to include an embodiment which teaches away from the claimed invention. As observed by the High Court in Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [2004] HCA 68-69:
““ Erroneous principles”. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis". It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
"Real and reasonably clear disclosure". Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure." But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification." ”
I find that the inclusion of the embodiment in the specification that is contrary to the claimed invention does not result in lack of fair basis.
Lack of full description – air permeability
The opponent has argued that:
·“there is no indication of how values below 0.2 m3/m2 min are achieved. Nor are there specific examples in which values below that threshold are described. The bald reference to "calendering", on page 6 line 35, does not provide any real assistance” (Statement of Grounds and Particulars)
·“The very low permeability is presented as a desideratum … However there is no indication in the opposed specification of how this is to be achieved or what the manufacturing tolerances may be” (second Macquet declaration)
Firstly, I note that document D5 filed in evidence, a brochure relating to products manufactured by Verseidag Techfab GmbH, discloses values of cloth air permeability within the claimed range. Secondly, I note that Gerakios states “The permeability values are within the range of what would typically be supplied to a Tower / Vertical press filter (such as Larox type)”. Thus, it appears to me that the skilled person would not have any difficulty in achieving values within the claimed air permeability range.
As expressed in Kimberly-Clark v. Arico (2001) 207 CLR 1, the test for full description is:
‘… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Also see: No-Fume Ltd v. Frank Pitchford & Co Ltd (1935 52 RPC 231 at 243, approved in AMP Inc v. Utilux Pty Ltd (1971) 45 ALJR 123 at 128:
"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
I consider that the specification meets the requirement of full description for the specified range of air permeability.
Lack of full description – “wear resistant bond structure"
The opponent has argued that the feature "wear resistant bond structure" (claim 2) is not fully described, as there is no indication in the description of any "wear resistant bond structure" used in the protective layers.
Although the specification lacks details of any “wear resistant bond structure”, I note that the law does not require the applicant to provide every detail of how the invention may be worked (see paragraph 30 above). At the hearing, the applicant submitted that the term wear resistant bond structure is a term of the art and as such the person skilled in the art would have no difficulty understanding what it was. There is no expert evidence before me to suggest otherwise.
I conclude that there is no basis to find lack of full description based on "wear resistant bond structure".
Clarity / Claims not defining invention – “Density” and “Air Permeability”
The opponent has argued that:
“It is not enough to rely on density or permeability alone to characterize a filter medium. It is implied in the description that "density" and "permeability" are in some way equivalent. This is not so. For example, if polypropylene yarns or fibres, density 0.91 kg/m3, are replaced by nylon yarns or fibres with a density of 1.14 kg/m3, of identical denier or staple, the latter fabric will be denser, but still have the same permeability and pore size.”
Firstly, I note that the requirement in section 40(2)(b) that a complete specification for a standard patent shall end with a claim or claims defining the invention is simply that there must be a claim or claims and that they should define the invention. I consider that the specification clearly meets this requirement.
Secondly, the only requirement under section 40 where it is legitimate to ask whether the claims properly or adequately define the invention is that of fair basis where the test is one of inconsistency between the claims and the specification or one of lack of a real and reasonably clear disclosure for what is in the claims. But the opponent has not argued any inconsistency between the claims and the specification based on density or air permeability other than that the terms have evidently been used interchangeably. I therefore consider that there is no lack of fair basis on this basis.
However, I find that the use of “denser” in claim 1 does raise a minor clarity issue. Claim 1 defines that the protective layers are “denser” than the middle layers. While density usually relates to mass per unit volume, it is clear from the specification that “denser” in claim 1 takes the meaning “ lower air permeability”. For example, the specification at page 6-7 states: “The density of the multilayer cloth according to the invention can be below 0.2, preferably between 0.02 to 0.15 m3/m2 min, 200 Pa. In the tests carried out a filter cloth with the permeability of 0.03 m3/m2 min, 200 Pa, which is only about a tenth of the permeability of the currently used cloths, was found to function well”. (emphasis added)
I consider that there is an inherent dictionary in the specification that equates “density” to “low air permeability”. Consequently, I believe that the expression “denser” in claim 1 must be given the meaning “having lower air permeability”.
As observed by Burchett J.in Kornelis' Kunsthars Producten Industrie B.V. v. W.R. Grace And Co. - Conn. No. NG118 Of 1992 Fed No. 111/94 Patents (1994) AIPC 91-056 at 16:
“I think it would be perverse to deny that the same word, when used in other paragraphs concerned with the same subject, in the same document, which is plainly drafted as a unity, has the same broad meaning. To recognize that meaning is not "to import into (the) claim features of the preferred embodiment" (Rehm Pty Ltd v. Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 89), but to heed the authentic language of the claim itself.”
In that case, the term “microwave” was given an unusual meaning based on an implicit “dictionary” within the specification.
I have found that the interchangeable use of "density" and "permeability" by itself does not cause a problem and that the term “denser” in claim 1 is subject to skilled interpretation and must be interpreted as “having low air permeability”.
Clarity - “Air permeance" and "Slub layers"
The claims have been amended since the opposition was filed to replace the terms “air permeance” with “air permeability” and “slub layers” with “batt fibre layers”, so that these issues no longer apply.
Section 40 - Conclusion
I have found that none of the grounds under section 40 have been established.
Novelty
The effect of section 7(1) of the Patents Act and decided case law is that for a document to deprive a patent claim of novelty, the document must clearly teach all the essential features of the claim - see e.g. Meyers Taylor Pty Ltd v. Vicarr Industries Ltd, (1977) CLR 228 and Rodi and Wienenberger AG v. Henry Showell Ltd, (1969) RPC 367).
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." (General Tire & Rubber Co v. Firestone Tyre & Rubber Co Ltd, (1972) RPC 457).
The opponent has filed seven documents D1 – D7 in evidence pertaining to novelty:
Dl - Patent Abstracts of Japan, No 61 162 299 (EBARA INFILCO CO LTD); also, the specification itself (JP 61 162 299), and verified English translation thereof;
D2 - SU-A-1724321 (Abstract);
D3 - EP-A-641,588 (Thomas Josef Heimbach GmbH & Co), and verified English translation thereof;
D4 - EP-A-741,815 (Scapa Group PLC);
D5 - Catalogue of Verseidag-Techfab GmbH (a German filter cloth manufacturer);
D6 - Conversion table for converting the l/dm2/min units used in Document D5 to the m3/m2 min units of the application; and
D7 - US 4,529,643 (K. Lundstrom) (relevant to Grounds 2 and 3).
I note that document D6 is not in itself a novelty citation but it establishes the conversion factors between the different units of air permeability used in the prior art documents. Thus, the prior art that needs to be considered for novelty and inventive step is limited to D1-D5 and D7.
Claimed Invention
The monopoly is defined in the claims. In the first instance I will consider only claim 1, which is the broadest claim. It is convenient to notionally split claim 1 in terms of its features (A, B, C and D) as follows:
- A filter cloth which is
· intended for use in a pressure filter based on diaphragm extrusion which comprises at least two filter chambers and in which the filter cloth is guided through the filter chambers arranged one after the other in the direction of movement of the filter cloth so that in the filter chambers, the opposite sides of the filter cloth are alternately against the slurry to be filtered which contains liquid and solids, the filter cloth being symmetrical in respect of the filtering ability, and the solids separated from the slurry in said filter are conveyed out of the filter chambers by means of the filter cloth, (A )
· characterized in that the filter cloth comprises
·a middle layer the both surfaces of which are provided with protective layers which form the outer surfaces of the filter cloth and (B)
·(the protective layers) are denser than the middle layer, and that (C)
·the air permeability of the filter cloth is below 0.2 m3/m2 min, 200 Pa. (D)
Essential features
The issue of determining essential features was discussed in Catnic Components v. Hill & Smith [1982] RPC 183. The judges in that case concluded inter alia that a feature is essential to a claim if (a) it was essential to the working of the invention or if it materially affected the way in which the invention worked; or (b) the applicant or patentee regarded the feature as essential.
The specification clearly identifies the relevance of features A to D. For example it is stated at pages 6-7 of the specification that the claimed permeability range had resulted in improved belt life. There is therefore no basis for me to infer that the claimed features do not materially affect the working of the invention, based on the teaching of Catnic Components v. Hill & Smith. I therefore consider that features A – D are essential features.
Claim construction – feature A
It is a long established principle that words of intended use in a patent claim impose a requirement of suitability for that use, but do not limit the claim to that use. Consequently, any prior art filter cloth that anticipates the invention must be at least suitable for use as a filter cloth in a pressure filter based on diaphragm extrusion as required by the claims. I consider that this imposes a requirement that the filter cloth must have the characteristics (e.g. wear and tensile strength, ) that would make it suitable for use in a diaphragm extrusion type pressure filter and it must be in the form of a belt to be able to be used in the apparatus of the defined type.
Claim construction – feature C
I have already found that “denser” in claim 1 means “having lower air permeability”.
Comparison of essential features with features disclosed in citations D1-D5, D7
D1 is a Japanese patent specification. I have relied on the English translation filed by the opponent. The lowest air permeability of the filter cloth belt disclosed in the specification is 70 cc/cm2/sec (charts 2 and 3). This converts to 42 m3/m2/min (using D6), which is higher than 0.2 m3/m2/min the upper limit of the claimed range. Consequently, D1 does not disclose essential feature D. Additionally, there is no teaching of a cloth suitable for use with the present invention (feature A), where water is extruded through the cloth from one face of the cloth to the other. D1 discloses a filter cloth in which liquid is extracted through a middle layer.
D2 is a Soviet English abstract which discloses a gas filter. I consider that from D2, the skilled person will not infer teachings of filter cloth characteristics suitable for solid liquid filtration involving diaphragm extrusion. Thus D2 does not disclose claimed feature A. Also, there is no disclosure of the claimed air permeability range (D). D2 discloses that needle puncturing density of an inner layer is double that of an outer layer which translates into a “denser” outer layer in the sense of the expression “denser” used in the specification. Thus, D2 discloses feature C.
D3 (English translation supplied by the opponent) too relates to gas filters. There is no reference to solid liquid filtration, nor suitability for diaphragm extrusion filtration. Consequently feature A is not disclosed. While there is disclosure in terms of relative fineness and weights per unit area of the inner and outer layers, it is uncertain as to whether there is a disclosure of relative “densities” of layers (C). Additionally, there is no disclosure of any air permeability values (D).
D4 discloses multilayered fabrics including filter cloths. D4 discloses that the fabrics are “suitable as filter cloths where improved smoothness of the fabric surface resulting from the coating gives improved cake release” implying that it is suitable for use in solid liquid filtration applications (A). However the example in the specification relates to a press felt with an air permeability of 1.7 m3/min. While there is an implied disclosure of two surface protective layers (B), there is no clear teaching of a “denser” outer layer (C) or any cloth air permeability values falling within the claimed range (D).
D5 is a brochure that relates to “Polynova” fabric having permeability values of 0.1 and 0.2 m3/m2/min (converting from 1 and 2 l/dm2/min disclosed based on D6) that is within the claimed range. However, D5 does not state what the cloth might be used for. The width of the cloths is between 1.3 m and 2.5 m, however there is no further information to imply that it might be suitable for use in accordance with the claim. Thus, I do not consider that the skilled person would infer feature A. Also significantly, there is no disclosure of features B and C i.e. the layered structure and the claimed relative “densities” of the layers.
The final document D7 discloses a press felt for paper making. There is no explicit disclosure in D7 of a filter cloth and Nystrom declares that press felts do not perform filtration in the normal sense and it is not known that fabrics from the paper process could be used in a pressure filter without extensive redesign. Therefore, I consider that feature A cannot be inferred from the document. The lowest value of air permeability disclosed in D7 is 0.2 m3/m2/min at 100 Pa. I am not sure what this converts to at 200 Pa but since a higher test pressure would result in increased air flow, the disclosed value must be greater than 0.2 m3/m2/min at 200 Pa, falling outside the claimed range. Therefore, I consider that there is no disclosure for feature D.
I conclude that the documents in evidence do not individually disclose all the essential features of the invention claimed in claim 1. Claim 1 is therefore novel in view of documents filed in evidence.
Claims 2-5 introduce additional limitations and therefore these claims are narrower in scope than claim 1. Claim 6 too is narrower than claim 1 in that it is limited to essential features of the invention as shown in the embodiments.
I therefore conclude that the claimed invention is novel in light of the prior art filed in evidence.
Novelty - Prior Use
The Gerakios evidence relates to the sale of paper machine clothing belts and filter bags. While the applicant has submitted that this evidence is not admissible because it was not particularized, I note that it is within the Commissioner’s powers under Reg 10.11 in appropriate circumstances to rely on evidence available at the Patent Office, provided the principles of natural justice are adhered to. At the hearing Mr. Fitzpatrick has already made submissions rebutting the prior use evidence. In my view, the real issue is - how relevant is the evidence?
Given the Nystrom evidence (paragraph 57), I have serious doubts as to whether the skilled person could infer all the claimed features from the Gerakios evidence. For instance, there is no disclosure of the claimed air permeability range, nor is there any disclosure of the layered structure of the filter cloth. Also, there are vague assertions by Gerakios as to what features might have been present rather than what features were actually present in the products sold. In contrast, I note that Abela who has worked with Larox Australia since 1997 has declared that he has not seen any filter cloth of any manufacturer used on a Larox filter in Australia prior to 17 February 1999 having air permeability in the claimed range.
Where a ground of invalidity is based on assertions of prior use, it is clear from decided cases that the proof of prior use must be very clear. Thus this will normally require, in the absence of cross-examination, corroboration of statements by way of evidence of others or documents contemporary with the fact to be proved. (See e.g. Seiller's Application [1970] RPC 103)
I find that there is insufficient evidence to establish prior use.
Inventive Step
To establish lack of inventive step, the common general knowledge in the art of the invention must be established and it must be shown that the claimed invention was obvious to the skilled person at the priority date, in light of common general knowledge alone or in light of common general knowledge together with prior art information (section 7). Section 7(3) further restricts the information to that which could reasonably be expected to have been ascertained, understood and regarded as relevant by the skilled person in the relevant art in Australia. On the date of filing of this application, separate sources of information could not be combined unless the skilled person would have treated them as a single source of information.
The normal approach to obviousness is the problem-solution approach. Once the problem has been formulated, and the common general knowledge and the prior art base have been determined, the question of whether the claimed solution is obvious must be addressed. The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“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.”
[Wellcome Foundation Ltd v. V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 286]
Problem
The specification at page 2 identifies the problem of the invention as belt clogging, wear and tear in a diaphragm extrusion type filter and consequently reduced filter performance and belt life.
Common General Knowledge
The opponent’s main witness is Macquet, who has stated the knowledge in the art based on his own experience working for the opponent in Australia since 1995.
Feature A: On pressure filters based on diaphragm extrusion, Macquet states that in Australia the technology is old. The specification itself acknowledges that the technology is known, at least in Finland the country of origin of the application. Macquet has seen the technology in South Africa in the 70’s. Abela states that he has not seen the claimed permeability range in filters in Australia before the priority date, implying that the filters were in Australia before the priority date. On balance, I believe that diaphragm extrusion pressure filter technology using cloth filters (feature A) was common general knowledge in Australia at the relevant date.
Features B, C: On providing denser protective layers on a filter cloth, Macquet states that an attempt to do this in Madison (TUFTEX) was unsuccessful. Macquet also suggests that with the knowledge available as at February 1999, a system of multi-deniering, with finer deniers near the surface, might have been used to provide protective layers on a filter belt. Thus, Macquet’s evidence on what was known at Madison teaches away from the use of the claimed protective layers (features B, C), while his evidence, to the extent one can infer from it what would have been obvious to the skilled person, suggests only what might have been obvious, not what would have been obvious.
Feature D: On the feature of the claimed permeability range, i.e. below 0.2 m3/m2/min, 200 Pa (feature D), Macquet comments that this is a nice figure which you might be aiming for, depending upon the application, particularly as at February 1999. Macquet adds that “the Eureka mine (now the Endeavour mine) would have been using filter cloth of similar permeability to those of the Tamfelt application” (emphasis added).
Macquet’s assertions are indefinite and vague. There is no corroborating evidence in support of his suggestions, nor any direct suggestion that features B-D were in fact part of the common general knowledge in Australia in 1999.
In contrast, Abela from Larox Australia declares, based on his own experience going back to 1997, that feature D was not present in any filter at the Endeavor mine or at any other site using Larox filters in Australia before the priority date.
The opponent’s evidence does not establish that any of the claimed features B-D were in fact part of the common general knowledge in Australia at the relevant date.
Prior Art Information
The opponent has filed documents D1-D5, D7 in evidence in support of lack of inventive step. I have serious doubts as to whether most of those documents would meet the requirements of section 7 (3) with respect to “ascertained”, “understood” and “relevant”.
D1 relates to a filter that works on a completely different principle. D1 is not pressure based or based on diaphragm extrusion. The filtrate in D1 flows from the outer surfaces of the belt to a middle layer to be removed from the middle layer. There is no flow of filtrate from one surface of the belt through middle layer of the cloth to the other surface. Similarly D2 and D3 relate to gas filters. D7 relates to a paper machine press felts which are quite different from the present invention according to Nystrom (paragraph 57). The skilled person would not ascertain D1-D3 and D7, nor consider the teachings relevant in solving the problem of the present invention. Further, D5 is a technical data sheet that does not appear on evidence to have been ever published in Australia. I do not consider that D5 could reasonably have been expected to be found by the skilled person in Australia.
I find that of the documents in evidence, only document D4 may be considered to be reasonably expected to have been ascertained, understood and found relevant by the skilled person as required by section 7 (3).
Obvious
To arrive at the claimed invention, the skilled person would have to combine features A, B, C and D. Since D4 suggests harder, wear resistant surface layer(s) on a fabric substrate (feature B), I believe that it is conceivable that the skilled person, in light of the problem and in view of the common general knowledge (feature A), would have provided surface protective layers in a filter cloth for diaphragm extrusion to arrive at A+B.
However, there is no evidence to suggest that the skilled person would take further “routine steps” to add features C and D to arrive at the claimed invention. Macquet only suggests that “selection between options and even specification of potential solutions would have been within the scope of the skilled and fully informed filtration engineer /technologist in Australia prior to 1999”. The opponent has essentially split the claimed invention into its elements and has tried to show that each of the features of the combination were individually known or obvious without going into the question of whether the selection of those integers was obvious to the skilled person.
Such an approach is however inadequate to show lack of inventive step and is not permitted. It is insufficient to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. It must also be established that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem:
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."
Minnesota Mining and Manufacturing Co v. Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293.
I note that the specification suggests that the prevalent opinion was to not use filter cloths with air permeability within claimed range, but the opponent’s evidence does not directly refute this statement.
Inventive Step - Conclusion
I have found that the there is insufficient evidence to establish that the claimed invention lacks an inventive step. Under section 7, I must assume that there is an inventive step unless it can be established otherwise in light of the evidence. Consequently, I have found that the opposition has failed on this ground.
Manner Of Manufacture
The opponent has argued that the claimed invention is a collocation and therefore not a manner of manufacture.
In the patent sense, a collocation is a number of known integers where no working interrelationship or potential working interrelationship exists between the various integers. The claims define a combination of filter cloth parameters including “denser” protective layers and air permeability in the claimed range. The specification states that these parameters contribute to reduced clogging, wear and tear. I have already found that “density” and “air permeability” mean the same thing. Thus, potentially there is a working relationship between features C and D at least. I have already found that the claimed invention is novel and involves an inventive step compared to the prior art filed in evidence. Consequently, there is no basis to find that the claimed invention is a collocation and not a manner of manufacture.
CONCLUSION
None of the grounds of opposition were found to have been established. I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days from the date of this decision.
COSTS
In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion.
In this opposition, the applicant filed section 104 amendments in response to clarity issues raised in the opposition. The term “air permeance” was changed to “air permeability” and term “slub” changed to “batt fibers”. However, given the context (air permeance of the filter cloth) and the measurement unit (m3/m2/min) used in the specification for that integer, I believe that it would have been clear enough to the skilled person what the expression in the original specification was referring to. Also, Macquet had no difficulty correctly interpreting the term “slub layers” in his first declaration. Thus I do not believe that the skilled person would have had any difficulty in understanding the meaning of these terms in the specification, despite the translational errors that were present in the original specification.
Since the amendments have not had a material effect on the substantial issues raised in this opposition and the opposition has failed on all the substantial grounds, I award costs in accordance with Schedule 8 including any costs up to the allowance of amendments against the opponent.
Jagdish Bokil
Delegate of the Commissioner of Patents
28 September 2007
Patent attorneys for the applicant : F B Rice & Co, Melbourne, VIC
Patent attorneys for the opponent : Madderns, Adelaide SA
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