Taranis Power Group Pty Ltd v LAA Industries Pty Ltd - [2021] APO 48

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Taranis Power Group Pty Ltd v LAA Industries Pty Ltd
[2021] APO 48
Patent Application: 2017210650

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

Patent Applicant: LAA Industries Pty Ltd

Opponent:Taranis Power Group Pty Ltd

Delegate:Xavier Gisz

Decision Date: 23 November 2021

Hearing Date: Written submissions filed on 14 July 2021

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, clear enough and complete enough disclosure, best method, and support – claims 1 to 20 lack novelty and inventive step – costs awarded

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

Patent Application: 2017210650

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

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

DECISION
Claims 1-20 lack novelty an inventive step in light of US 2005/0146221 (Pettigrew) and WO 2015/041805 (Torrey). The invention meets the requirements of providing a clear enough and complete enough disclosure and a best method. The claims are supported by the description.
I allow the applicant two months from the date of this decision to propose amendments to overcome the deficiencies.
Costs are awarded against the Applicant.
REASONS FOR DECISION
Three concurrent oppositions

Three parties have opposed the grant of the patent: Taranis Power Group Pty, Allied Pumps Pty Ltd, and Stephen Anderson. The three parties did not request that the oppositions be enjoined and so the three oppositions remain independent.
Although there is significant overlap in the arguments made by the three parties, there are differences in the grounds and particulars of the oppositions and the evidence relied upon by each party. Consequently, there are three separate decisions for each of the three oppositions.
Background
The matter relates to the opposition to grant of patent application number 2017210650 (the application) in the name of LAA Industries Pty Ltd (LAA) (the Applicant) by Taranis Power Group Pty (the Opponent). The application was filed on 5 August 2017 and is based on the provisional application 2016903254 with a priority date of 16 August 2016.
The Application was advertised as accepted on 28 February 2019.
The Opponent filed a Notice of Opposition on 28 May 2019. The Opponent filed a Statement of Grounds and Particulars on 28 August 2019.
Evidence in Support was filed and completed by the Opponent on 28 November 2019.
Evidence in Answer was due on 2 March 2020. The Applicant filed some Evidence in Answer on 2 March 2020 and also requested an extension of time of three months, until 2 June 2020, to file the remainder of Evidence in Answer for each of the three oppositions.
On 14 September 2020 the Delegate refused the Applicant’s request for an Extension of Time to file the remainder of its Evidence in Answer.
On 17 November 2020 the Opponent filed Evidence in Reply.
Request to consider information under Regulation 5.23
On 17 November 2020 the Applicant requested that a new declaration by James Waterreus dated 11 November 2020 (hereinafter referred to as the ‘new Waterreus declaration’) be considered by the Commissioner under regulation 5.23.
On 19 November 2020 a Delegate informed the parties that the new Waterreus declaration would not be considered under regulation 5.23. In relation to the relevance of the information provided in the new Waterreus declaration the Delegate noted:
“The Applicant has not outlined in any material sense the significant of the material to the oppositions. Rather it is merely stated that “The information contained therein is explanatory in nature, and we do not consider it to be controversial”. The material appears to merely provide qualifying statements regarding the evidence in support in each opposition. It is not apparent how this is likely to be crucial to the delegate’s decision. Consequently, this factor weighs against allowing the Applicant’s 5.23 requests.”
On 1 December 2020 the Applicant filed a declaration by Barry Newman, further explaining why the new Waterreus declaration was filed. Mr Newman stated in his declaration:
“During my review, my attention was drawn to the declaration of James Waterreus filed as evidence-in-answer to the opposition. It was clear to me that this declaration had been prepared without an appropriate amount of professional assistance. As a result, I found elements of the declaration difficult to understand.
I contacted Mr Waterreus to ask him to clarify aspects of his evidence. After receiving his response, it was apparent to me that clearer evidence from Mr Waterreus would save considerable time and effort from all parties in preparing the oppositions for hearing, and would greatly assist the delegate in narrowing the issues.
…
On 10 November 2020 I provided Mr Waterreus with a further draft of the declaration. He replied with comments and corrections on 11 November 2020. I then produced final versions of the declarations, which Mr Waterreus duly signed.”
The new Wattereus declaration explains the differences and benefits of the present invention with respect to the prior art. The new Wattereus declaration reinforces the information already present in the Applicant’s Evidence in Answer. I am not satisfied that the information provided would be determinative of the opposition. Consequently, I will not rely upon this information under regulation 5.23.
Evidence
The Opponent’s Evidence in Support comprises:
·First Declaration of Tony Spirovski dated 28 November 2019 (Spirovski 1) accompanied by exhibits TS-1 to TS-4
·First Declaration of Karl Rosewarne dated 28 November 2019 (Rosewarne 1) accompanied by exhibits KRR-1 to KRR-10
·Declaration of Neal Schutte dated 28 November 2019 (Schutte) accompanied by exhibits NS-1 to NS-4
The Applicant’s Evidence in Answer comprises:
·Declaration of Jim Waterreus dated 2 March 2020 (Waterreus)
·Declaration of Mark Keogh dated 2 March 2020 (Keogh) accompanied by exhibits MVK‑1 to MVK-7
·Declaration of Fidel Dela Paz dated 2 March 2020 (Dela Paz) accompanied by exhibits FDP-1 to FDP-17
The Opponent’s Evidence in Reply comprises:
·Second Declaration of Tony Spirovski dated 12 November 2020 (Spirovski 2) accompanied by exhibits TS2-1 to TS2-2
·Second Declaration of Karl Rosewarne dated 12 November 2020 (Rosewarne 2)
Expert evidence
The Opponent has provided expert evidence of Tony Spirovski and Karl Rosewarne, as being representative of the person skilled in the art.
The Applicant has provided evidence of Jim Waterreus, Mark Keogh and Fidel Dela Paz. Mr Dela Paz is a patent attorney and is not asserted to be an expert in relation to the technology of the invention. Mr Waterreus has close professional links with the Applicant. However, this does not significantly affect the weight I will give to his evidence. I accept that he has provided his objective professional opinion on the matters at hand.
Each of the experts (Tony Spirovski, Karl Rosewarne, Jim Waterreus, and Mark Keogh) have a significant amount of experience relevant to understanding the present invention and the prior art.
Grounds of Opposition
The Opponent has opposed the grant of the patent on the grounds of: Novelty, Inventive step, best method, clear enough and complete enough disclosure, and support.
Specification
The invention relates to an engine-powered generator system for starting, powering and controlling electric motors and motor-driven devices.
The description states at paragraph 1:
“The present invention relates to a system for starting and controlling an electric motor and/or motors solely via an optimally sized generator connected directly to said electric motor, including induction motor and/or motors, eliminating the need for external conventional current-limiting motor starting and control devices such as VSD (Variable Speed Drives), Soft-starters, Star/Delta Starting, Auto-transformers or the need to use expensive Wound-rotor motors.”
The invention is essentially using less electronics than a traditional generator to ‘condition’ power between the engine-powered generator (which generates electricity) and the electric motor (which consumes the electricity).
Because there is less ‘conditioning’ of power between the generator and electric motor, this requires changes to the system, (when compared with a traditional generator) to ensure enough power is delivered to the electric motor when it is needed. In particular, this requires more active control of the engine speed (when compared with a traditional generator).
The system has sensors to measure the parameters of the effects of the motor (in particular fluid flow, fluid pressure or fluid level), instead of the parameters of the motor itself. The measured parameter is used to control the system to maintain a desired ‘parameter set-point’. For example, if the motor drives a pump to control a water level, data from the water level sensor is compared and used to maintain a desired ‘parameter set-point’. The speed of the generator is adjusted based on the measured characteristic and the ‘parameter set-point’.
The invention is shown in figure 1:
Construction
Construction Legal Principles
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70:
“...the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification ... This applies to words used in the claims. ... the construction of a specification, including the claims, is ultimately a question of law ...
...While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole ...
It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ...”
The following pithy advice was provided by Middleton J in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368:
“Above all, the [decision maker] should approach the task of patent construction with a generous measure of common sense.”
Construction of terms
ECU - Engine control unit
An ECU (engine control unit) is an electronic control unit that controls an internal combustion engine speed to ensure optimal engine performance. It does this by taking input values and adjusting the engine actuators.
I consider that any electronic control of the engine speed falls within the scope of an ECU.
AVR – automatic voltage regulator
A voltage regulator is an electronic device that stabilises voltage. An automatic voltage regulator AVR is a feedback control system that adjusts the voltage. The feedback control takes the output voltage of the AVR as an input (together with other input) to control the voltage.
Alternator
The alternator converts mechanical energy to electrical energy in the form of an alternating current.
The frequency and voltage output by an alternator is directly related to the speed of the engine which spins the rotor of the alternator.
VSD – Variable Speed Drive
A Variable Speed Drive (VSD) converts electricity of one frequency and voltage, and converts it to another frequency and voltage to drive an electric motor. A VSD ‘conditions’ electricity so it can drive the motor at the desired speed.
The waveform generated by a VSD are typically entirely ‘synthetic’. That is, the waveform does not merely modify the incoming waveform by adjusting parameters of the original waveform; it creates an entirely new waveform.
HMI – Human machine interface
The human machine interface allows a person to adjust the settings of the system. For example, allowing the user to set the parameter set-point.
Fluid flow, fluid pressure, fluid level
Claim 1 contains the feature of:
“the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level”
I understand the words “selected from” to mean that the claim only requires that one of these three parameters are measured and sent to the system controller.
I consider that fluid flow, fluid pressure, fluid level are each a measure of the fluid in the system external of the pump and motor, and do not include measures of fluid within the pump.
Maintains the speed to voltage relationship
The claims contain the feature of:
“[The] alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.”
This feature provides only a minor limitation on the scope of the claims. It merely excludes any speed to voltage relationship that would be unsuited to the motor.
Claims
The specification ends with 20 claims; 2 independent claims and 18 dependent claims. The independent claims are reproduced below:
Claim 1
A starting and control system for an assembly having an electric motor or motors, the system comprising:
- a generator assembly comprising an engine coupled to an alternator;
- an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
- an engine control unit (ECU) for controlling an operation of the generator engine;
- a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output, the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,
- wherein parameter set points are set in the system controller, and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level
- the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
- wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.
Claim 20
A method for starting a motor or motors using a generator assembly comprising an engine coupled to an alternator, the method comprising:
- generating a voltage from the generator assembly for supply to the motor or motors;
- controlling the voltage generated by the alternator via an automatic voltage regulator (AVR);
- controlling the speed of the generator engine and therefore alternator frequency via an engine control unit (ECU);
- controlling the AVR and ECU via a system controller;
- setting parameter set points in the system controller, and the system controller receiving sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level – the AVR is to cause the generator alternator voltage to vary as the ECU is controlled to cause the generator engine to increase or decrease in speed with the alternator voltage varying in proportion to engine speed so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points and to maintain the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.
Integers of claim 1
Mr Spirovski at paragraph 42 of Sprirovski 1 has split claim 1 into integers as follows:
[integer 1.1] A starting and control system for an assembly having an electric motor or motors, the system comprising:
[integer 1.2] a generator assembly comprising an engine coupled to an alternator;
[integer 1.3] an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
[integer 1.4] an engine control unit (ECU) for controlling an operation of the generator engine;
[integer 1.5] a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output,
[integer 1.6] the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,
[integer 1.7] wherein parameter set points are set in the system controller,
[integer 1.8] and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level
[integer 1.9] the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
[integer 1.10] wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.
I consider that claim 20 is a method that of using the system defined in claim 1. The features of the claims are essentially the same.
Novelty
Novelty Legal Principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”
Novelty documents
The Opponent asserts that the claimed invention lacks novelty in light of US 2005/0146221 (Pettigrew) (which will be referred to as D1), and WO2015/041805 (Torrey) (which will be referred to as D2).
D1 – US 2005/0146221 (Pettigrew)
D1 relates to a generator to provide power to a motor. The electrical power to the motor is adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D1 shows a depiction of the prior art in figure 1 and the invention in figure 2:
Mr Spirovski explains in his declaration at paragraph 59 where he believes the integers of claim 1 are disclosed in D1:
“Integer 1.1 - A starting and control system for an assembly having an electric motor or motors, the system comprising:
This feature is disclosed at least at paragraphs [0001] and [0007]; see also Claim 1 and Figures 2 and 3.
Integer 1.2 - - a generator assembly comprising an engine coupled to an alternator;
This feature is disclosed at least at paragraph [0013]: "The engine is mechanically coupled to a three phase electrical generator'; see also Claims 1 and 2, Figures 2 and 3.
Integer 1.3 - - an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
This feature is disclosed in the "excitation controller" of the invention in Pettigrew. See [0015]: "The excitation controller is a voltage regulator capable of varying its voltage output in a programmable manner to the engine speed driving the generator."; See also Claim 1, 4 and [0007], [0013] and [0014].
Integer 1.4 - - an engine control unit (ECU) for controlling an operation of the generator engine;
This feature is disclosed in the "throttle device" of the invention in Pettigrew. See paragraphs [0007], [0012], [0013], [0015]. See also Claim 13.
Integer 1.5 - - a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output,
This feature is disclosed at least in paragraphs [0012], [0013], [0015] and[0017]. See, eg, [0015]: "The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor."
See, also, Figures 2 and 3 and claim 13.
Integer 1.6 – the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,
This feature is disclosed at least in paragraphs [0011], [0012], [0013]. See also claim 13.
"The system controller also includes programmed logic circuits, which monitor operation of the system an control the throttle on the engine"
The throttle setting determines the speed of the engine.
"the system includes a throttle that is regulated by the system controller"
Integer 1.7 - wherein parameter set points are set in the system controller,
This feature is disclosed at least in paragraphs [0011], [0012], [0013].
"The system controller ... is capable of accepting inputs from external sources to control the operation of the entire system. In the case of submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings"
"The ... system controller is connected ... to the engine to monitor, control and adjust the power to the motor by numerous programmed parameters in the system controller"
Integer 1.8 - and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level –
This feature is disclosed at least in paragraphs [0007], [0011], [0013].
See, eg, [0011]: "The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed."
Integer 1.9 - the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
This feature is disclosed at least in paragraphs [0007], [0011], [0013], [0015], [0017], [0020]. See, eg, (0015): "The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor."
Integer 1.10 - - wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical control the characteristics.
This feature is disclosed at least in paragraphs (0015), [0017], [0020].
See, eg, [0011]: " The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed."
[0015]: "The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor." As described above, the speed to voltage relationship required to suit the motor or motors' electrical characteristics is data which is either supplied by the manufacturer of the motor or can be determined by the operator through measurement.
VSDs typically maintain a constant volts/frequency ratio.”

The Applicant disagreed that D1 discloses: the ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D1 as explained by Mr Spirovski.
ECU
The Applicant states in their submissions at paragraph 125:
“Properly understood, Pettigrew discloses an electronically controlled throttle not an ECU. Notwithstanding that the throttle can perform essentially the same function as an ECU (although not as precisely), it is a different device. The two devices perform similar functions in a different manner. This is fatal for each Opponent’s case.”
It is unclear what distinction the Applicant is drawing between an “engine control unit” and “electronic speed controller to control the speed of the engine”. As previously discussed in this decision in the construction of terms, an ECU only requires some kind of electronic control of the engine speed.
D1 states at the second sentence of paragraph 15:
“The throttle device is usually a combination of a throttle and electronic speed controller to control the speed of the engine, and thus control the turning frequency of the engine.”
It is clear from this sentence that D1 discloses an ECU.
Parameter set-points
D1 states at paragraph 11:
“The system controller would be responsible for adjusting and monitoring the generator output, and would adjust the generator to any voltage and frequency required by the driven unit within the effective operational limits of the generator. Not only can this equipment allow for desired steady-state operational parameters, it can be set up to allow for completely different parameters during start-up of high power draw electrical devices, such as electric motors, or to react to monitored inputs of the driven unit. The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed.”
The Applicant states in their submissions at paragraphs 128 to 129:
“Waterreus gives evidence that the reference to “operational parameters” in the above passage is not a reference to the set-point control that is described and claimed. He makes the distinction between process sensors and equipment/load sensors. Process sensors measure conditions external to the equipment, such as the fluid pressure (which can be measured anywhere along an outlet pipe). Equipment sensors measure conditions of the equipment itself, such as current draw, voltage, temperature and the like.
Pettigrew on page 8 lines 19 to 24 states:
“The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor …The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself”.
Properly understood, Pettigrew is there describing monitoring of the condition of the motor and/or pump, with a view to maintaining the operation of the equipment within safe operating limits; that is, within a safe range for each operating parameter. In contrast, the invention described and claimed in the Opposed Application involves monitoring external parameters, (described in the opposed specification as being done by a ‘load environment sensor’) with a view to maintaining one of those parameters at a desired set-point
I consider that ‘desired steady-state operational parameters’ disclosed in D1 is equivalent to the ‘parameter set-point’ defined in the claim.
I agree with the Applicant that ‘desired steady-state operational parameters’ disclosed in D1 is a parameter of the pump/motor. However, the ‘parameter set-point’ defined in the claim can include both external parameters (such as the water level which the pump is controlling) and internal parameters (such as the condition of the pump/motor). This is made clear in claim 19 which provides a list of parameter set-points which includes internal parameters of the motor such as belt speed and torque.
D1 discloses the feature of a ‘parameter set-point’.
Types of control (fluid flow, fluid pressure and fluid level)
D1 discloses at paragraph 11 controlling ‘pump operating pressures’; the last 3 sentences of paragraph 11 state:
“In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed. The variable frequency power system can also include a human-machine interface. The human-machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
Mr Spirovski states at paragraph 11 of second declaration (Evidence in Reply):
“I refer to Dela Paz [22] in relation to integer 1.8, in which Mr Dela Paz states that "D1 does not mention 'selecting a type of control selected - selected from fluid flow, fluid pressure and fluid level'. I do not understand the basis of Mr Dela Paz's disagreement. Pettigrew at [0011] states "the system controller is capable of accepting inputs from external sources to control the operation of the entire system". Pettigrew at [0013] also states, the "system controller is connected by cables to the switchboard and by cables to the engine to monitor, control and adjust the power to the motor by numerous programmed parameters in the system controller". Accordingly, Pettigrew discloses a system controller that receives sensor signals. Further, I understand, in the context of a submersible pump, that such parameters would include fluid flow, fluid pressure and fluid level. Pettigrew at [0011] provides an example of monitoring and controlling pump pressure (i.e. fluid pressure). Given that Pettigrew is not limited to applications using submersible pumps, I would not expect it to provide a comprehensive list of operating parameters which may be monitored and controlled. However, the monitoring and controlling of parameters such as fluid flow, fluid pressure and fluid level was known by me and other engineers working with such systems as at August 2016.”
Mr Spirovski is of the view that “in the context of a submersible pump, that such parameters would include fluid flow, fluid pressure and fluid level”. That is, it appears Mr Spirovski considers that D1 provides an inherent disclosure of using parameters such as fluid flow, fluid pressure and fluid level.
The Applicant states in their submissions:
“It is revealing that [Mr Spirovski] then proceeds to confuse pump (inlet) pressure (an equipment parameter) with fluid pressure in the outlet (a process parameter). Tellingly, Mr Pettigrew does not give evidence in either of his declarations that Pettigrew describes the claimed controls.
Taranis erroneously argues that pump pressure and fluid pressure are the same thing. They are not.
Allied also argues erroneously that “pressure of fluid at the pump” is the same as the fluid pressure claimed in the opposed application. It is not.”
The Applicant asserts that the term ‘pump pressure’ in D1 refers to the fluid pressure at the inlet rather than the outlet. The Applicant further asserts that inlet pressure is an equipment parameter rather than a process parameter. The Applicant implicitly accepts that fluid pressure measured at the outlet of the pump is ‘fluid pressure’ defined in the claims.
I consider the “pump operating pressures” in D1 is inherently referring to both the inlet pressure and the outlet pressure since measuring only one of inlet and outlet pressure provides inadequate information to determine how the pump is operating. Thus, I agree with Mr Spirovski that it is inherent in D1 that the outlet pressure is measured. D1 therefore inherently discloses the feature of fluid pressure being used as a control input.
D1 – US 2005/0146221 (Pettigrew) – conclusion – independent claims
D1 discloses all the features defined in claims 1 and 20. Therefore, claims 1 and 20 are not novel in light of D1.
D2 – WO2015/041805 (Torrey)
D2 relates to a generator to provide power to a motor. The electrical power to the motor is ‘converterless’ and adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D2 shows a depiction of the prior art in figure 1 and the invention in figure 2:
Mr Spirovski explains at paragraph 61 of Spirovski 1 where he believes the integers of claim 1 are disclosed in D2:
“Integer 1.1 - A starting and control system for an assembly having an electric motor or motors, the system comprising:
This feature is disclosed at least at paragraph [0006] and [0014].
Integer 1.2 - a generator assembly comprising an engine coupled to an alternator;
This feature is disclosed at least at paragraphs [0006], [0007] and Figure 2.
"at least one electric power generator driven by the at least one off-grid prime mover to generate AC power;"
"controlling an AC power output of an electric power generator in response to the driveshaft speed of the off-grid prime mover;"
The term generator is used to refer to the alternator; and the term prime mover is used to refer to the engine.
Integer 1.3 - an automatic voltage regulator (AVR) for controlling voltage output of the alternator;
This feature is disclosed at least at paragraphs [0020], [0029], Figure 3, Claim 8
" ... the system controller 36 also monitors the shaft speed of the prime mover 2 1 and commands the generator exciter 39 of the synchronous generator 22 accordingly."
"and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator,"
Integer 1.4 - an engine control unit (ECU) for controlling an operation of the generator engine;
This feature is disclosed at least at paragraphs [0006], [0007], [0020] and Figure 3.
" ... prime mover comprising a rotational driveshaft and operating in response to a throttle control command to control a rotation speed of the rotational driveshaft;"
"a system controller programmed to generate the throttle control command"
"The programmable system controller ...and commanding the throttle position control 38 of the prime mover"
Integer 1.5 - a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output,
This feature is disclosed at least at paragraphs [0020], [0029], Claim 8 and Figure 3.
"the system controller ... commands the generator exciter 39 of the synchronous generator 22 accordingly."
"the system controller ... commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator"
Integer 1.6 - the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage generates output from the alternator,
This feature is disclosed at least at paragraphs [0022], [0029], Figure 3.
"the system controller 36 monitors the voltage, frequency and current being supplied to the motor 34, and generates the prime mover throttle control command in response to the monitored information to modify control of the prime mover 21".
"The system controller 36 then transmits an appropriate throttle control command 38 to the prime mover 21, causing the prime mover driveshaft to rotate faster or slower"
Integer 1.7 - wherein parameter set points are set in the system controller,
This feature is disclosed at least at paragraphs [0020], [0029] and Claim 1.
"system controller ... will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions."
"The system controller 36 then transmits an appropriate throttle control command 38 to the prime mover 21, causing the prime mover driveshaft to rotate faster or slower as necessary to ensure the submersible well pump 26 is operating at the desired operating point"
"system controller programmed to generate the throttle control command in response to the one or more pump operating characteristics"
Integer 1.8 - and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level -
This feature is disclosed at least at paragraphs [0016], [0029].
Fluid flow, fluid pressure and fluid level are all pump operating characteristics.
"A sensor package 28 is attached to the motor-driven pump 26 that may comprise, for example, one or more temperature sensors and one or more pressure sensors to provide an indication of various pump operating temperatures and pressures ... Other types of sensors may be included in the sensor package 28 depending on the particular application requirements."
"A sensor package 28 that may comprise, without limitation, various pressure sensors, temperature sensors, vibration sensors, and speed sensors associated with the submersible well pump 26 function to monitor operating conditions including without limitation, pump inlet pressure, pump vibration levels, pump rotational speed, and temperatures at desired points associated with the submersible well pump 26, … The monitored operating data is acquired by a system controller"
Integer 1.9 - the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and
This feature is disclosed at least at paragraph [0029] and Claim 1.
"system controller programmed to generate the throttle control command in response to the one or more pump operating characteristics such that the at least one off- grid prime mover, the at least one electric power generator, and the at least one variable speed motor together operate to regulate a pressure at the inlet of the at least one electric submersible pump such that a desired operating point of the at least one electric submersible pump is maintained."
Integer 1.10 - wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.
This feature is disclosed at least at paragraph [0029] and Claim 8.
"The converterless in proportion to changes in engine motor-driven pump system according to claim 7, wherein the system controller is further programmed to control the excitation of the generator exciter in response to the rotation speed of the rotational driveshaft."”
The Applicant disagreed that D2 discloses: the AVR, ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D2 as explained by Mr Spirovski.
AVR
D2 states at paragraph 20:
“According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
D2 states at paragraph 29:
“According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”
D2 states at paragraph 32:
“Since some applications may employ a permanent magnet generator that does not require excitation, it can be appreciated that a generator exciter will not be required in such applications. The use of a permanent magnet generator further simplifies the converterless ESP system 30 without sacrificing performance, as stated herein.”
The Applicant states in their submissions:
“Torrey describes a non-automatic voltage regulator which controls excitation based on rotational speed of the drive shaft, that is, engine speed. There is broad agreement that an AVR measures and controls output voltage, rather than setting excitation based on engine speed. However, there is no evidence that the excitor of Torrey works in this fashion, and no obvious reason why an AVR would be used instead of a simple regulator.
Spirovski, Rosewarne, Holmes and Islam all refer to the abovementioned passages as disclosing an AVR. This evidence is contradicted by Waterreus who explains the differences between the non-automatic voltage regulator disclosed in Torrey and the automatic voltage regulator (AVR) of the present invention. As Waterreus explains, the key difference is that the AVR of the invention controls excitation based on measured output voltage (a feedback loop using a voltage setpoint), whereas the non-automatic voltage regulator of Torrey controls excitation based on engine speed. The AVR of the invention provides more precise control than Torrey’s non-automatic voltage regulator.
Mr Spirovski does not address the difference between the non-automatic voltage regulator of Torrey and the AVR of the invention. Mr Rosewarne203 “understands” the generator excitor of Torrey to be an AVR but provides no basis for this assertion. Prof Holmes posits that “the system controller must include the functionality of an AVR”, although it is not clear on what basis he makes that assertion. This is no evidence that the exciter disclosed in Torrey is an AVR as claimed.”
I previously found that an AVR is a feedback control system, whereas a voltage regulator does not rely on feedback (and instead on a reference voltage).
I consider that the excitor generator is under a feedback control system (for example, last sentence of paragraph 29). I am satisfied that D2 discloses an AVR.
ECU
The Applicant states in their submissions:
“As submitted above in relation to Pettigrew, an electronically controlled throttle may perform essentially the same function as an ECU but it is not the same device as an ECU. The two devices perform a similar function in different manner. This is fatal to the Opponents’ case.”
I have found an ECU is electronically controlled. I am satisfied that the control of the engine is electronic, therefore this feature is disclosed in D2.
Parameter set-points
D2 states at paragraph 20:
“The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
D2 states at paragraph 29:
“A sensor package 28 that may comprise, without limitation, various pressure sensors, temperature sensors, vibration sensors, and speed sensors associated with the submersible well pump 26 function to monitor operating conditions including without limitation, pump inlet pressure, pump vibration levels, pump rotational speed, and temperatures at desired points associated with the submersible well pump 26, as represented in block 46. The monitored operating data is acquired by a system controller 36 that determines whether the prime mover driveshaft should be rotating at a different speed. The system controller 36 then transmits an appropriate throttle control command 38 to the prime mover 21, causing the prime mover driveshaft to rotate faster or slower as necessary to ensure the submersible well pump 26 is operating at the desired operating point, as represented in block 48. According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”

The Applicant states in their submissions:
“As in the case of Pettigrew, Torrey is describing monitoring the condition of the equipment, with a view to maintaining the operation within safe parameters. The present invention proposes monitoring external parameters, with a view to maintaining one of these parameters at a desired set-point. Tellingly, Torrey does not disclose constant adjustment of the driveshaft speed in response to any change in operating conditions (that is, set-point control). Rather, the language of Torrey is “should the speed be changed”. This is strongly suggestive of monitoring for operation within safe ranges rather than set-point control.”
I consider that the “desired pump operating point” is equivalent to the parameter set point defined in the claims. D2 therefore discloses the feature of parameter set-points.
Types of control (fluid flow, fluid pressure and fluid level)
D2 discloses monitoring the pump outlet pressure at paragraph 20. As found previously in this decision, outlet pressure is equivalent of fluid pressure. Therefore, this feature is disclosed in D2.
D2 – WO2015/041805 (Torrey) – conclusion - independent claims
D2 discloses all of the features defined by claims 1 and 20. Therefore, claims 1 and 20 are not novel in light of D2.
Dependent claims
Claims 2 and 15
Claim 2 states:
A starting and control system as claimed in claim 1, wherein the system controller is controlled by a human machine interface (HMI) coupled to the system controller.
Claim 15 states:
The starting and control system of claim 2 wherein the type of control and the parameter set point levels to be controlled are programmable through the HMI of the system controller.
D1 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 11:
“The variable frequency power system can also include a human-machine interface. The human machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
D2 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 21:
“The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator”
Claims 3, 4 and 10
Claim 3 states:
A starting and control system as claimed in claim 1, wherein the system controller is controlled by a remote control centre.
Claim 4 states:
A starting and control system as claimed in claim 3, further comprising a network interface, the network interface connecting the system controller to the remote control centre via a network.
Claim 10 states:
The starting and control system of claim 1 wherein the system controller is a microprocessor and/or microcontroller system which receives instructional input from a human machine interface and/or a remote control centre.
D1 discloses at paragraph 11:
“The variable frequency power system can also include a human machine interface. The human-machine interface can include a display screen and input 15 buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”
D2 discloses at paragraph 21:
“The programmable system controller 36 may comprise, without limitation, one or more computers and/or data processors/devices and associated display devices. The data processors/devices may comprise one or more CPUs, DSPs and associated data storage devices, data acquisition devices and corresponding handshaking devices that may be integrated with the system controller 36 and/or distributed throughout the converterless ESP system 30. The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator.”
I consider that the system controller interface features defined in claims 3, 4 and 10 are disclosed in D1 and D2.
Claim 5
Claim 5 states:
The starting and control system of claim 1 further comprising a circuit breaker connected between the generator assembly and the motor or motors, wherein the circuit breaker prevents the motor or motors from drawing too high a current from the generator assembly.
D1 discloses a switchboard at paragraph 12:
"The switchboard provides the stop/start function of the motor and is usually rated for the highest voltage and amp capacity required."
I consider a circuit breaker is inherent in the switchboard in D1.
D2 discloses a circuit breaker at paragraph 6:
"…and protection equipment comprising circuit breakers to ensure safety to personnel around the system, and provide protection to the prime mover, generator, and variable speed motor"
Claim 6
Claim 6 states in relation to D1:
The starting and control system of claim 1 further comprising an I/O (Input/output) module which receives sensor signals which are sent to the system controller.
D1 discloses a device to receive sensor signals at paragraphs 11 and 12.
D2 discloses a device to receive sensor signals at paragraphs 16 and 29 and Figure 3.
Claim 7
Claim 7 states:
The starting and control system of claim 1 further comprising sensors for providing the system controller with indications of the current levels of respective parameters for comparing with the parameter set points,
D1 discloses at paragraph 11:
"The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed."
D1 discloses the system comparing the current parameters with the parameter set points at paragraph 15:
“The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application. The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself.”
D2 discloses comparing current levels to parameter set points at paragraph 20:
" ... system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions."
Claims 8 and 13
Claim 8 states:
The starting and control system of claim 1 wherein the system controller can send a signal to the AVR to start or stop excitation of the alternator.
Claim 13 states:
The starting and control system of claim 1 wherein the system controller is connected to the generator assembly and can send instructions to start the generator and stop the generator.
D1 discloses at paragraph 17:
"After a given period of time elapses, the system controller instructs the excitation controller to ramp up the voltage to achieve the required volts to hertz ratio to be delivered to the motor based on the driven device."
D2 discloses at paragraph 20:
"…the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly"
D2 discloses at paragraph 29:
"…the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator"
I consider that D1 and D2 each disclose a system controller which sends a signals to the AVR and the generator; these control signals inherently include start and stop signals.
Claim 9
Claim 9 states:
The starting and control system of claim 1 wherein the ECU controls an operation of the engine including engine idle speed, and engine speed and thus alternator frequency, based on instructions received from the system controller.
D1 discloses an ECU controlling the operation of the engine based on instruction from the system controller to be disclosed at paragraph 13:
"A system controller is used to control the frequency output of the electrical generator by controlling the engine throttle device, speed control settings and also controls the on-off function of the switchboard."
D2 discloses an ECU controlling the operation of the engine based on instruction from the system controller at paragraph 20:
“The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”
Claim 11
Claim 11 states:
The starting and control system of claim 1 wherein the system controller receives sensor signals from a load environment sensor, a flow meter, a pressure transmitter, or a speed sensor.
D1 discloses a pressure sensor signals at paragraph 11. D2 discloses outlet pressure signals at paragraph 20.
Claim 12
Claim 12 states:
The starting and control system of claim 1 wherein the system controller outputs instructions to the AVR and the ECU in the form of a reference voltage, an analogue signal, a digital signal, machine code, or packetized data.
Although the type of electronic signal is not specified, I consider that D1 and D2 must inherently be either an analogue or digital signal, since these are the only types of electronic signals.
Claim 14
Claim 14 states:
The starting and control system of claim 1 further comprising a step up transformer connected between the starting and control system and a high voltage (HV) load system to step up the output voltage from starting and control system to the voltage required by the HV load system.
D1 discloses a transformer between the generator and electrical motor load at paragraph 16:
“The generator can be set up with a single set of output voltage taps as shown in FIG. 3 or with multiple sets of output voltage taps as shown in FIG. 2. The use of multiple sets of output voltage taps at the generator eliminates the need for a separate transformer, which can be bulky and expensive, and yet allows for a wide range of output voltages to be produced. The operating voltage range of a generator with multiple sets of output voltage taps can be from several hundred volts to several thousand volts and can be generated at any frequency within the effective functional speed range of the motor-generator combination. Again, generator output is manipulated by the excitation controller, which allows the system controller to control and monitor the output voltage of the generator anywhere within the effective operational range of the selected output tap of the generator or transformer. A generator with multiple sets of output voltage taps can have a tap selection such as 1810, 2600 & 3640 volts or other suitable range of low, medium & high volts as is convenient to arrange during the manufacture of a given generator unit, which can be fine tuned by the excitation controller to supply the correct voltage in a range from 900-4200 volts to the motor for the operation conditions of the motor required by the drive unit. Also, a generator with multiple sets of output voltage taps can be fed into an external multiple tap transformer to achieve an even broader range of operational voltages, if required.”
D2 discloses a transformer between the generator and electrical motor load at paragraph 18:
“It can be appreciated that there may be reasons to retain a transformer between the generator 22 and the motor driven pump 26 …. one aspect, the decision to retain or remove the transformer from the system 20 may be made on the basis of system optimization rather than conceptual operation of the system 20”
Claim 16
Claim 16 states:
The starting and control system of claim 15 wherein protections are programmable to provide warnings or shutdowns on any of the sensor inputs.
D1 discloses programmable protections to provide emergency shutdown at paragraph 11:
"The variable frequency power system can be programmed with startup, steady-state operation, and emergency shutdown parameters for the driven unit."
D2 discloses providing emergency shutdown at paragraph 30:
"For reasons of safety and system protection, system elements may be included that are responsible for monitoring the operation of the system equipment, with means to instruct the controller 36 to shut down the system 30 if a failure or external event causes an exception to intended operation ... "
Claim 17
Claim 17 states:
An assembly comprising the starting and control system of claim 1 and a load system including the motor or motors.
D1 and D2 each disclose the load system to include motors throughout each specification.
Claim 18
Claim 18 states:
The assembly of claim 17 wherein the electric motor or motors operates a borehole pump or pumps, and the load system includes one or more load environment sensor or sensors including a borehole water level, pressure sensor or speed monitor, which provides an output to the system controller.
D1 discloses potential uses including submersible pumps throughout the specification. D1 also discloses sensing pressure as previously discussed in relation to the features of the independent claims.
D2 discloses use of the system with pumps and include the monitoring of pressure at paragraph 16:
"A sensor package 28 is attached to the motor-driven pump 26 that may comprise, for example, one or more temperature sensors and one or more pressure sensors to provide an indication of various pump operating temperatures and pressures."
Claim 19
Claim 19 states:
The assembly of claim 18 wherein the parameter set points include a predetermined water level, a predetermined water head, a predetermined belt speed, a predetermined pressure rating, a predetermined torque and/or a predetermined fan speed
D1 discloses parameter set points such as generator output at paragraph 11. I consider it to be inherent that the parameter set point of the generator output would include parameters such as torque.
D2 discloses parameter set points such as pressure at paragraph 29.
Conclusion novelty
Claims 1-20 lack novelty in light of D1 – US 2005/0146221 (Pettigrew) and D2 – WO 2015/041805 (Torrey).
Inventive step
Inventive step legal principles
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; 212 CLR 411at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
Inventive step with respect to prior art documents and common general knowledge
D1 - US2005/0146221A1 (Pettigrew) and D2 - WO2015/041805 (Torrey)
I have found the invention defined in claims 1-20 is not novel in light of D1 ‑ US 2005/0146221 (Pettigrew) and D2 - WO 2015/041805 (Torrey). It follows that the claims also lack inventive step in light of these documents.
Inventive step in light of the CGK alone
The Opponent states in the submissions at paragraph 71 and 72:
“Prior to being provided with any copies of the Opposed Application and the prior art documents, Mr Rosewarne was asked to propose a design for a generator-driven electrical motor system that did not require a discrete VSD. Mr Rosewarne was instructed to take into account only matters that he knew and accepted and regarded to be widely known and generally accepted by other electrical technicians and engineers working in the field of generator, motor and/or pump control systems in Australia as at August 2016.
In response, Mr Rosewarne identified a system that embodies the claims applying only the CGK before the Priority Date in a routine manner.”
The Applicant states at paragraph 228:
“In evaluating inventive step in the present case, the Delegate should adopt the approach taken in Lockwood. The idea that the problems associated with the use of VSDs (inefficiencies, potential system failures and increased costs) could be achieved by eliminating the use of a VSD, in itself provides the requisite inventive ingenuity. The circumstance that no person skilled in the art has given evidence that they had considered, let alone pursued, a solution to the known problems with known systems, is powerful confirmation that the invention is not obvious. That the invention met a long-felt want and resulted in commercial success provides further support. This is discussed further below.”
Asking an expert what they (as a person skilled in the art) would have done at the priority date when posed with a particular problem is fraught with difficulty. The expert must attempt to empty their mind of any information they have acquired after the priority date. The expert must then attempt to answer the question only in terms of what would have been a matter of routine without using any inventive faculty. It is difficult to eliminate the possibility that, in answering the question posed, the expert inadvertently utilised inventive reasoning.

In this case it is unnecessary to decide whether Mr Rosewarne utilised inventive reasoning in arriving at the claimed invention. The elimination of the use of a VSD in a generator system forms part of the invention and thus posing the problem to Mr Rosewarne of designing a generator system without a VSD was an impermissible starting point.
I am not satisfied that the claims lack an inventive step in light of CGK alone.
Clear enough and complete enough disclosure and Best Method
Clear enough and complete enough disclosure - legal principles
Subsection 40(2)(a) of the Act requires that a complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 the delegate adopted a three-step test for determining whether the specification provided a clear enough and complete enough disclosure of the claimed invention as follows:
An expanded approach was taken in Evolva SA [2017] APO 57 The third consideration of enablement set out in CSR was assessed according to the following criteria:
In general, the extent of the disclosure necessary to make the patent sufficient will depend upon the nature of the invention, the scope of the claims and the art in which the invention is made.
Best method legal principles
Section 40(2)(aa) of the Patents Act requires that a complete specification must:
“disclose the best method known to the applicant of performing the invention.”
In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 269, it was stated:
“The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”
In Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) (Expo-Net) [2011] FCA 710 Bennett J stated:
“it must be established that there was a better method known to the applicant at the date of filing the patent than the one described in the specification. This is clearly a subjective question.” (Expo-Net at [15])
“To that end it is necessary first to understand what the invention is. Indeed, this is perhaps the first question that needs to be answered”. (Expo-Net at [16])
Clear enough and complete enough disclosure and best method of the present invention
The Opponent states in their submissions at paragraphs 93 and 94:
In Mr Keogh’s declaration at [70] to [72], Mr Keogh describes the research and testing which went into the development of the invention claimed in the Opposed Application:
[70] In November 2015 we achieved speed/voltage control over pump motor control and operation using the onboard ECU on the engine and an internal AVR on the alternator. To get the AVR to control the voltage relative to speed so as to control the pump output in line with a specified set point was an evolving process with trials of different AVR regulators. Gabriel suggested a Mecc Alte brand of AVR which he advised would be able to perform the function I wanted and I approved the purchase of this AVR. Gabriel was unsuccessful in controlling the voltage as required and I believe that the AVR was damaged beyond repair. This brand of AVR was abandoned after the failure.
[71] As we were progressing the testing Carl was successful in controlling the voltage to achieve the desired voltage to speed ratio Hz (speed of the prime mover) which is required to take full control of the pump and its output for the control of the water to meet set point demand.
[72] Power quality was the key data during testing. As we made changes we were able to review the power quality of the induction motor to assess how the power input was affected while making adjustments. It was important that we didn’t have an adverse effect on the motors due to the manipulation of the speed and voltage during normal operation of the Invention.
(emphasis added)
It is apparent from Mr Keogh’s declaration that the ability to control the voltage “to maintain the speed to voltage relationship required to suit the motor or motors' electrical characteristics” as claimed in independent claims 1 and 20 of the Opposed Application is essential to enable the skilled addressee to perform the invention.
The Opponent states in their submissions at paragraphs 95 and 97:
“Mr Waterreus’ evidence discloses that the best method of maintaining the speed to voltage relationship required to suit the motor or motors' electrical characteristics is through “sophisticated algorithms”:
31. The GMC invention does more than just combine these essential components. It integrates them and utilises algorithms so they work together under a system controller to more efficiently do what an external VSD would otherwise do. For the first time, the GMC invention programmed communications between the ECU and AVR to enable them to work over the wide speed (ECU) and wide voltage range (AVR) required for variable speed operation. ‘Off the shelf’, these components were not designed to operate over such wide ranges.
32. Algorithms programmed into the system controller of the GMC invention optimise the voltage output from the alternator to the electric motor. The system controller dynamically and continuously adapts the voltage to frequency relationship and takes into account motor load (as measured by sensors) for the purposes of maximising the efficiency of the motor.
38. The GMC invention is unique in that the system controller controls process variables presented to the pump via algorithms that directly control a VVVF type power supply to the pump motor. In addition, the voltage to frequency (alias prime mover / engine speed) ratio is controlled in such a manner to meet the motor original equipment manufacturer’s requirements for the motor and to maximise motor efficiency in so doing.
40. Prior inventions including those relied upon by Anderson IP [sic] could not offer these features because they had not developed the algorithms and methods of communicating between the components and the AVRs and ECUs that make the variable control possible.
42(b). … The advantage of this is that the System Controller is programmed with a sophisticated algorithm based on much more information than just motor frequency / speed. This information is obtained from sensors on the GMC and includes pumped fluid flow, fluid pressure, fluid level, motor current, motor power factor and alternator output voltage.
42(c). This algorithm enables the System Controller to optimise control of the AC alternator output voltage in a manner that maximises the efficiency of the connected electric motor. This variable control of motor voltage via an AVR controlled by a System Controller programmed with a sophisticated algorithm based on not only frequency but also the other aforementioned signals, is not present in the D1 Pettigrew patent.
42(d). … All the other sensors in the GMC invention that facilitate optimisation are connected to the System Controller which does control the AVR and can do this via a sophisticated algorithm which takes into account motor loading conditions as well as speed to optimise control of the AVR and thereby optimise the speed / voltage relationship of the alternator output power to the motor and thereby obtain the best efficiency from the motor over a wide range of speeds and loads.
42(h). … In paragraph [0011] of the Pettigrew specification, there is a reference to the ‘modification of operational parameters’ but this cannot be construed as allowing the user set point control. Modification in this context means scaling operational parameters, not the far more complex set point control effected by the GMC via algorithms in the System Controller that enable closed loop control, including but not limited to Proportional-Integral-Derivative (PID) control.
43(e). … the Torrey invention could not perform the same functions and in the same way as the GMC and would not achieve the same energy efficiencies as the GMC. The Torrey invention would have to do away with the switchboard, replace the throttle with an ECU, develop and interface to control the AVR from the System Controller and develop the algorithms.
43(i). … The GMC invention is distinct in this respect because the System Controller which controls an automatic voltage regulator to regulate motor voltage with the advantage that the System Controller is programmed with a sophisticated algorithm based on much more information than just motor frequency / speed and included is pumped fluid flow, fluid pressure, fluid level, motor current, motor power factor, alternator output voltage). This algorithm enables the System Controller to optimise control of the AC alternator output voltage in a manner that maximises the efficiency of the connected electric motor. This control of motor voltage via an Automatic Voltage Regulator (AVR) controlled by a System Controller programmed with a sophisticated algorithm based on not only frequency but also the other aforementioned signals, is not present in the D2 Torrey patent.
47. Among other things, to develop a system like the GMC invention at the time of invention, integration of many sub-systems was required, including modifications to (eg. AVRs and ECUs) and thereby facilitate control thereof over speed ranges much greater than the common electrical engineer or technician has been exposed to or has experience in. A large laboratory like development facility is required including a test tank big enough to accommodate large submersible pumps and run them up to their maximum capacity. Sophisticated algorithms to run in a system controller and facilitate the stated claims of the GMC invention, or that special engine control units and AVRs or special methods of getting standard ECUs and AVRs are involved.
(emphasis added)
It may be inferred that those sophisticated algorithms were known to UON at the time it applied for the Opposed Application. Mr Keogh states at [73] that: “The first version of the GMC was up and running in December 2015 and we have been making constant refinement to the coding over the years as applications expand beyond its original concept.” Mr Keogh does not say that the “sophisticated algorithms” were not a part of the original concept for the Opposed Application. Nor does Mr Keogh give any evidence that the best method known to him, as an inventor, is disclosed in the Opposed Application. Mr Keogh as an inventor of the Opposed Application was in a position to confirm whether or not the best method of performing the invention is described in the Opposed Application. Further, Mr Keogh was on notice that lack of best method was a ground of opposition raised by Taranis and others in these opposition proceedings. The failure of Mr Keogh to give evidence about the best method of the invention can be taken into account by the Commissioner against LAA.”
The Applicant states in their submissions at paragraph 295:
In his first declaration, Mr Waterreus was differentiating between the set-point control of the present invention (including precise and active control of both an ECU and an AVR) and the less precise control of the cited prior art. Mr Waterreus described the set-point control algorithms as “sophisticated”. Even on the evidence in Mr Waterreus’ first declaration, it is a simplistic overreach to contend that the algorithms necessary to perform the invention were “extremely complex” and beyond the normal design capabilities of a skilled person working in the field.
As discussed above in the construction of terms, I have construed the feature of the speed to voltage relationship excludes from the claim any voltage and frequency which are beyond the limits of the motor’s operating parameters.
I consider that in its most basic form, there is sufficient information to allow a person skilled in the art to perform the invention. Although the invention can be optimised with more complex algorithms (as explained by Mr Waterreus), the claimed invention is not specific to the optimisation of the system. Consequently, I am satisfied that sufficient detail has been provided.
The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification. There is insufficient evidence to show that at the time of filing the applicant was aware of another, better, method of achieving the claimed invention. Consequently, I am furthermore satisfied that this satisfies the best method requirements.
Support
Support legal principles
Section 40(3) requires that the claims must be supported by matter disclosed in the specification. The test for support was provided by the delegate in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 as follows:
(i) Construe the claims to determine the scope of the invention;
(ii) Construe the description to determine the contribution to the art; and,
(iii) Decide whether the claims are supported by the technical contribution to the art
Support
The Opponent states in their submissions:
“Again, it is apparent from Mr Waterreus’ evidence summarised at paragraph [95] above, that Mr Waterreus construes the claims of the Opposed Application, in particular, the requirements in integers 1.9 and 1.10, to include within their scope extremely complex algorithms. However, there is no technical contribution given in the Opposed Application which extends to any sophisticated algorithms. Accordingly, insofar as the claims of the Opposed Application include within their scope such “sophisticated algorithms” there is a lack of support.”
I have found the specification provides sufficient information about maintaining a speed to voltage relationship required to suit the motor or motors' electrical characteristics.
I consider that there is a ‘principle of general application’ disclosed in the specification. Specifically, that principle is in control algorithms to generate speed to voltage relationships that suit the motor or motors’ electrical characteristics. Although such algorithms may be ‘complex’ this does not imply those algorithms are outside that general principle. Consequently, I consider that this feature is supported by the description.
Conclusion
Claims 1-20 lack novelty and inventive step in light of US 2005/0146221A1 (Pettigrew) and WO 2015/041805 (Torrey). The invention meets the requirements of being fully described and best method provided. The claims are supported by the description.
I am unable to identify any feature in the specification which could be used as the basis to amend the claims such they define a novel and inventive claim. However, such a feature may exist. I will provide the applicant a period of two months to propose amendments to overcome the identified deficiencies.
Costs
It is normal in matters before the Commissioner that costs should follow the event. I see no reason to depart from that approach in the present case. I will award costs according to Schedule 8 against the Applicant.
Xavier Gisz
Delegate of the Commissioner of Patents