The European Community v Aleis International Pty Ltd
[2002] APO 45
•12 December 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application: No.713629 in the name of The European Community
Title: Ruminal bolus for electronic identification of a ruminant.
Action: S.59 opposition by Aleis International Pty Ltd
Decision: Issued .
Abstract:Opposition successful.
Five claims anticipated by prior use.
A considerable portion of the opponent's evidence found to be of low probative value, eg. due to conflicting statements from different declarants, however there was sufficient remaining evidence to lead to a finding of prior use.
Trials of the opponent's boluses found to be not secret and considered as anticipatory public use since most instances involved sale of their products to various parties, no apparent intention to limit the distribution, and no discussions of confidentiality.
Applicant allowed sixty days to propose amendments to overcome the objections to the specification.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. No.713629 in the name of The European Community and S.59 opposition by Aleis International Pty Ltd.
BACKGROUND
Patent application 713629 (AU 27788/97, WO98/01025) in the name of The European Community was filed on 25 April 1997 as an international application, with priority claimed from an application filed in Spain on 9 July 1996. The application was advertised accepted on 9 December 1999, a notice of opposition was served by Aleis International Pty Ltd. (Aleis) on 9 March 2000, a statement of grounds & particulars was served on 6 June 2000, and the evidence stages were completed by 3 May 2002.
The opposition was heard in Canberra on 21 August 2002. The applicant was represented by Mr Doug Carter, patent attorney, and the opponent was represented by Dr Mark Horsburgh, patent attorney. Mrs Dorothy Finlayson, a director of the opponent company, also attended the hearing.
The specification
The specification indicates that the invention relates to a bolus device for identifying ruminant animals. Such devices usually comprise a solid body enclosing electronic transmitting components, the device being swallowed by the animal and transmitting electromagnetic data used for tracking and other management purposes. Such devices need to be relatively small and heavy to remain in the reticulum (second stomach) of a ruminant, and non-magnetic to minimise electromagnetic interference.
The specification indicates that the bolus of the present invention is characterised by a body made of a material based on alumina. The term "based on alumina" is defined to mean "that alumina is the major component of the material". The specification also mentions that, in a preferred embodiment, the material can also contain silica. The advantages of the materials of the invention reside in low cost, simplicity of use in mass-production methods, high density, and resistance to digestive liquids.
There are 32 claims defining the invention; viz:
"1. A bolus for electronically identifying a ruminant, the bolus being designed to be received in the reticulum of the ruminant and comprising a body itself having a housing designed to contain a data interchange device,
the bolus being characterised in that the body is made of a material based on alumina (Al2O3).2. A bolus according to claim 1, characterised in that the alumina is present in the material so that its content lies in the range of 60% to 99.5% by weight.
3. A bolus according to claim 1 or 2, characterised in that the alumina is present in the material so that its content lies in the range of 73% to 99.5% by weight, and preferably in the 80% to 99.5% by weight.
4. A bolus according to any one of claims 1 to 3, characterised in that the material also contains silica (SiO2).
5. A bolus according to claim 4 characterised in that the alumina and the silica together constitute not less that 80% by weight, and preferably not less than 90% by weight of the composition of the material.
6. A bolus according to any one of the preceding claims, characterised in that the material also contains at least one of the following compounds:
MgO
CaO
BaO
Na2O
K2O
Fe2O3
TiO27. A bolus according to claims 6, characterised in that each of said compounds is present in a quantity such that its content lies in the range of 0.1% to 2% by weight.
8. A bolus according to any one of the preceding claims, characterised in that it is substantially non-magnetic.
9. A bolus according to any one of the preceding claims, characterised in that the density of the material is not less than 2.5g/cm3, preferably not less than 3 g/cm3, and more preferably, not less that 3.5 g/cm3.
10. A bolus according to any one of the preceding claims, characterised in that the centre of gravity and the geometrical centre of the body substantially coincide.
11. A bolus according to any one of the preceding claims, characterised in that the body is substantially cylindrical in shape having rounded or chamfered edges.
12. A bolus according to any one of the preceding claims, characterised in that the ratio of the length of the body to its radius lies in the range of 2:1 to 5:1.
13. A bolus according to any one of the preceding claims, characterised in that the ratio of the length of the body to its radius lies in the range of 2.5:1 to 4:1.
14. A bolus according to any one of the preceding claims, for ruminants of weight exceeding 25kg, characterised in that the length of the body lies in the range 50 mm to 90 mm.
15. A bolus according to any one of the preceding claims, for ruminants of weight less than 25 kg, characterised in that the length of the body lies in the range 30 mm to 70 mm.
16. A bolus according to any one of the preceding claims, characterised in that the housing for the data interchange device is accessible from one end or from two opposite ends of the body.
17. A bolus according to claim 16, characterised in that the said housing is a blind hole in the main axis of the body.
18. A bolus according to claim 16, characterised in that said housing is a through hole on the main axis of the body.
19. A bolus according to claim 17 or 18, characterised in that said hole is closed by means of an epoxy resin or a plastic cement that withstands the environment which obtains in the ruminant reticulum.
20. A bolus according to claim 17 or 18, characterised in that said hole is closed at one or both ends by means of a male piece, such as a pressure screw or a rivet capable of locking itself against a portion of the wall of said hole.
21. A bolus according to claim 18, characterised in that said hole is closed at both ends, by a self-locking rivet constituted by two separate elements each having a shank portion with a head at one end thereof, the two respective shank portions being organised in such a manner as to engage mutually via their free ends and lock one in the other, thereby clamping between them the data interchange device.
22. A bolus according to any one of claims 1 to 20, characterised in that it further includes a sleeve of elastic material designed to receive the data interchange device and adapted to be received smugly in the housing.
23. A method of manufacturing a ruminal bolus according to any one of claims 1 to 22, characterised in that it comprises the following steps:
(a) preparing a blend based in alumina (A12O3);
(b) forming a preform for the body of the bolus from the blend; and
(c) subjecting the preform to a firing step.24. A method according to claim 23, characterised in that it further comprises a step of giving the bolus body preform its final dimensions and of finishing it after the firing step.
25. A method according to claim 23 or 24, characterised in that the firing step is performed at a temperature lying in the range 1000ºC to 2500ºC.
26. A method according to claim 25, characterised in that the firing temperature is substantially equal to 1400ºC.
27. A method according to any one of claims 23 to 26, characterised in that the step of forming the preform is implemented by extrusion and by cutting up the extrusion to have the general shape of the body of the bolus.
28. A method according to claims 27, characterised in that the housing of the body of the bolus is made by drilling prior to the step of firing.
29. The bolus according to any one of claims 1 to 22, wherein the housing contains the data interchange device.
30. The method according to any one of claims 23 to 28, further comprising the step of installing the data interchange device in the housing and closing the housing.
31. A bolus substantially as hereinbefore described with reference to the accompanying drawings.
32. A method substantially as hereinbefore described with reference to the accompanying drawings.
Grounds & evidence
Several grounds of opposition are set out in the Statement of Grounds & Particulars, but it was evident at the hearing that the main thrusts of the opposition were prior use and lack of inventive step.
The opponent's evidence-in-support is summarized as follows.
Declarations dated 30 November 2000 by John and Dorothy Finlayson; and exhibits JF-1 to JF-12 and DF-1 to DF-44.
The Finlaysons are directors of Aleis. They discuss their involvement in the cattle industry and in development of devices for identifying animals. They have a granted patent for an "ingestible capsule" similar to the present invention. They allege that they were using, testing and distributing to others "pellets" as claimed in the present invention, at least before the priority date of 9 July 1996.
I note that the evidence uses various terms to describe prior art devices which are similar to the present invention. They are referred to as "boluses", "capsules", "pellets" or "transponders"; I will use these words interchangeably in my decision.
A considerable portion of the Finlayson's evidence relates to them selecting various materials for the bodies of their pellets. They allegedly experimented with glass porcelain in 1993, then with plastics and metals, with barium sulphate in 1994 and 1995 and with ceramics, including alumina-based ceramics, from 1994 to date. They indicate that it was well-known that the pellets had to be heavy, to remain in the reticulum, and they discuss the problems they had with their earlier model devices. In 1994 they sought help from a company called Zlin Electro Porcelain (ZEP) who manufactured ceramic electrical insulators and the like. Samples of various models are included as exhibits in the evidence.
Another considerable portion of their evidence relates to testing various models of capsules on agricultural properties, at field days, and by the Australian Meat and Live-stock Corporation (AMLC).
A declaration dated 6 October 2000 by Peter Hasker; and exhibits PJSH-1 to PJSH-4.
Mr Hasker is a scientist employed at the Queensland Department of Primary Industries (DPI). His exhibits comprise reports setting out the state of the art about 1994 to 1996. The reports discuss in detail, inter alia, testing locations, such as feedlots, abattoirs and the like, and the various transponders used for cattle identification. One report indicates that ceramic boluses were known before 1994.
A declaration dated 12 October 2000 by John Bassingthwaighte; and exhibits JB-1 to JB-4.
Mr Bassingthwaighte declares that he is a grazier, and from 1991 to 1998 he was employed by the AMLC in projects which involved testing animal identification transponders. He discusses the state of the art and that the ideal pellet had to be small and of a high specific gravity. He states that in 1994 the Finlaysons were producing "a porcelain-type product", some of which were purchased by the AMLC, tested on a farm at Murgon in Queensland, and "promoted at field days for the grazing industy". He declares that the Aleis product was shown to thousands of people over a period from 1994 to 1997. In paragraph 28 of his declaration he states "I was never fully aware of the constituents of the housing body but they all appeared to me to be of a ceramic type nature."
A declaration dated 1 June 2000 by Patrick Gunston; and exhibits PG-1 to PG-3.
Mr Gunston declares that he is the manager of AginfoLink Australasia, and that from 1991 to 1998 he was the manager for data systems and equipment at the AMLC. He declares that he clearly recollects his dealings with the Finlaysons in 1994 and 1995, that they were using plastic and ceramic types, and that he had shown these models to many interested parties. On the use of alumina specifically he states that he "was never specifically told by the Finlaysons what type of ceramic they were using, although I was told it was a high quality and was the same as used in artificial hips", and "I subsequently learned from another source that the ceramic was based on aluminum oxide".
Mr Gunston refers to two ceramic models produced by Aleis: an "original version" which was thought to be "too expensive" and a "remodelled version 2" which was "reintroduced following comparative failure of the plastic version". PG-1 is a copy of a purchase order showing that AMLC purchased 250 rumen pellets from Aleis in October 1994. Mr Gunston states "with complete certainty" that these pellets were made from ceramic. PG-3 is an AMLC report written by Mr Gunston in November 1995 where field trials of the Aleis products were compared with those of a competitor.
A declaration dated 1 September June 2000 by Alain Moreau, in Portugese, and a copy of a sworn translation thereof.
Dr Moreau, an attorney, discusses information-gathering visits to Australia. In September 1994 he purchased about 50 boluses from the Finlaysons; he declares "it was obvious that the Aleis boluses were made of ceramic, and that it was of rather high specific gravity, nothing was said about their composition, except that the raw material was Australian, but that they were manufactured in another country ..". He also refers to information exchanges between parties in Spain and at the European Community test laboratory in Italy. It wasn't until 1998 that he learned that the Aleis boluses were made of alumina.
A declaration dated 4 December 2000 by Paul Thompson; and exhibits PT-1 to PT-4.
Mr Thompson, a patent attorney, refers to an international proceedings report, a newspaper article, Australian ceramics standards and patent specifications to provide further evidence of the state of the art. I note that the Queensland Country Life article refers to Mr Brady, a competitor, using ceramic boluses in 1993. Ceramic boluses are also referred to in Patent Specification EP 646313, published 13-10-1994.
A declaration dated 24 November 2000 by Stan Gajdosik; and exhibits SG-1 to SG-3.
Mr Gajdosik declares that he is the managing director of Tri-loc Pty Ltd, trading as Zlin Electro Porcelain (ZEP). He discusses, inter alia, how aluminium oxide ceramics were/are used in such fields as medical appliances, welding nozzles, tap washers and spark plugs. He states that in 1994 he was discussing alumina ceramics with Aleis and in June 1994 his company provided a batch of high aluminium oxide (group C700) pellets to Aleis. ZEP arranged for these pellets, and subsequent batches, to be manufactured by companies in the Czech Republic.
A declaration dated 24 November 2000 by Andrew Bond; and exhibits AB-1 and AB-2.
Mr Bond declares that he is the general manager of ZEP. He discusses the prior art uses of alumina-based ceramics, and also refers to the sale of alumina-based ceramic boluses to Aleis "prior to 1995".
The applicant's evidence-in-answer is summarized as follows.
A declaration dated 5 December 2001 by William Monks; and exhibit WTM-1.
Mr Monks is a patent attorney. The exhibit is a letter from the Australian National Field Days organisers stating that the Finlaysons were not listed as exhibitors at the field days in Orange in 1994.
A declaration dated 28 November 2001 by Andrew Laidlaw; and exhibit AL-1.
Mr Laidlaw declares that he is the managing director of On-Farm Electronics, which deals with animal identification devices. He discusses the state of the art, and referring to products of the type dealt with in the present circumstances, he alleges that “nobody states what their products are made of, or publishes the material for their products,” and he would understand “ceramic” to mean “porcelain or the like.”
A declaration dated 5 December 2001 by John Griffin; and exhibit JTG-1.
Mr Griffin declares that he is the general manager of XF Enterprises (Australia) Pty Ltd, a subsidiary of which supplies various products to the cattle industry. He declares inter alia that companies concerned with trials of new products usually attempt to keep the results private.
A declaration dated 25 May 2001 by Joan i Vintro; and exhibits A-C.
Mr i Vintro, one of the inventors of the present invention, declares that he is the general manager of Gesimpex Comercial SL, of Barcelona. He has been involved since 1989 in the research and commercialisation of electronic identification devices for animals, and he discusses the development of the invention and how his company “concluded in September 1994 that an alumina-based material was able to achieve the requirements of density, hardness, atoxicity, and low price ...”
He also makes reference to co-development of the invention with the University Autonoma of Barcelona (UAB) and discussions in Brazil between the above-mentioned Mr Moreau and Prof Caja of the UAB: he declares that no [bolus] was delivered and no details of composition were discussed.
A declaration dated 13 September 2001 by Gerado Caja Lopez; and exhibits 1-22.
Prof Caja, another one of the inventors of the present invention, declares that he is head of an animal research unit at the UAB. He discusses in some detail the development of the invention, a project where the problem to be solved was to discover the right ceramic, and at this time, about June 1994, “alumina was only used for other applications but nobody considered this product essential or of interest in the production of a bolus for the identification of ruminants.”
He also mentions that, when he met Dr Moreau, he, Prof Caja, wasn’t interested in the Australian product, and that compositions of the materials used was not discussed.
The opponent's evidence-in-reply comprises a declaration dated 23 April 2002 by Rosemary Tremain-Hill. She declares that she is a property owner in Orange, that she met the Finlaysons at the field day in November 1994, and that their transponder was clearly displayed at the Elders stand.
DECISION
S.40 and Construction Matters
One of the opponent's submissions is that the claims are not fairly based on the description because the description teaches that the bolus can be manufactured with the major component being alumina or silica, but the claims are limited to the major component being alumina. Based on this premise, the opponent then argues that the alumina feature in claim 1 is not essential and therefore claim 1 at least is not novel in the light of prior art boluses which are made from any ceramic.
I agree that the description of the invention clearly suggests silica as an alternative to alumina, but in this case I do not agree that therefore alumina is a non-essential feature in claim 1. Alumina clearly is an essential feature in claim 1 because of the construction of the claim: lines 4 and 5 refer to the alumina as being a characterising feature.
Also, I do not think claim 1 is not fairly based for the reasons submitted, since the law allows claims to be drafted narrower than the description, and/or allows an applicant to redraft its claims in a form narrower than their original form. See Shave v HV McKay Massey Harris Pty Ltd, (1935) 52 CLR 701, Farbwerke Hoechst A.G.'s Application, (1972) RPC 703, and AMP Incorporated v Commissioner of Patents, (1974) AOJP 3224 @ 3227. This what has occurred in the present case, claim 1 has been narrowed from its original form which included reference to silica.
Manner of Manufacture and Inventive step
The opponent submitted that the present invention is a "mere use of a known substance", ie. it is directed to "use of a known material in the manufacture of known articles for the purpose of which its known properties make the material suitable".
Current practice is that this type of manner of manufacture issue is determined by considering the specification. In my view the specification does not suggest that there is lack of invention. It does indicate that the object of the invention is to discover a high density material suitable for the body of the bolus. As well as being of high density, there are other criteria such as size, shape, non-metallic, non-magnetic, non-reactive with gastric juices, and low cost. The specification clearly indicates that the prior art boluses did not comply with all these design criteria and that the invention was the discovery of the suitable material. I am satisfied that on the face of the specification per se there is an invention described and claimed.
Looking at the evidence with regard to inventive step, the common general knowledge seems to be that boluses containing electronic devices were well-known and that the problem to be solved was to find the best material to satisfy as much as possible the design criteria mentioned above. It was known that materials such as plastics, ceramics, and metals had been tried but each had their own problems.
The opponent alleges that the common general knowledge teaches that the material should be ceramic and the problem to be solved was to discover the right ceramic. However, in my view, this was not the case; the state of the art had generally not established that ceramics were the best solution because they were generally seen as being expensive. The present invention seems to be involved in the discovery that alumina is the best material out of all the materials being considered, not the best ceramic out of a range of ceramics being considered.
The opponent's submissions suggest that the notional person skilled in the art (PSA) would be a person concerned with animal husbandry. I agree with this submission but I don't think that the PSA would be familiar with the details of ceramics. The opponent's own evidence describes how the Finlaysons approached ZEP for assistance, and how the latter had been involved in the manufacture of spark plugs and the like. The animal husbandry and electrical insulator arts are fairly dissimilar and I don't think the discovery of the best material for the bolus was obvious to the PSA in the present case.
The detailed investigations and rigorous developments of the invention as set out in Prof Caja's declaration for example, are a good indication that the invention is not a mere use of a known material but more of an indication that difficulties had been overcome in the development of the invention and that the use of alumina was not obvious to the PSA. Also, the applicant submitted that a new property of alumina had been discovered; ie. its resistance to reaction with digestive juices in ruminant animals. I note also that in the opponent's evidence-in-reply there is no attempt made to discount any of the applicant's evidence relating to inventive step. Thus I am satisfied that there is no lack of inventive step in the present invention.
Prior Use
The opponent’s evidence shows that the Finlaysons regularly demonstrated their boluses in public: at field days, and sold for trials on various properties around Australia, by the AMLC and others. Their evidence also clearly shows that the Finlaysons used several models with the body of the bolus made of various materials, and that they arranged for the manufacture of and then purchased at least one model made from alumina. The contentious issue I have to focus on is: were the Aleis alumina boluses used in the public domain before the priority date?
As a preliminary step, I think it is appropriate to consider the law relating to prior use.
The level of disclosure required where an opponent relies on prior use as proof of anticipation and lack of novelty is generally accepted in law as being less stringent than reliance on paper anticipations. Public use may be found to have made the claimed invention available to the public even if the full implication of the use was not understood at the time. The Patents Act provides that an invention will lack novelty if it can be shown that it was made public through "doing a single act" in the patent area.
An invention may be made available to the public in a variety of ways including sale, offer for sale, gift, exhibition or display. If it can be shown that a product has been used in public, and that use was in a manner that allowed its nature to be ascertained, then that is sufficient to destroy the novelty of the invention claimed, and it is immaterial that the product does not, in itself, disclose its composition. See Carpenter v Smith (1841) 1 Web Pat Cas 530, Gill v Coutts & Sons and Cutler (1896) 13 RPC 125, and Stahlwerk Becker Aktiengesellschaft's Patent (1919) 36 RPC 13.
The applicant's submissions refer to some of the opponent's evidence where the declarants state that they were not aware of the exact composition of the opponent's boluses even though they thought they were made of ceramic material. In my view this is not an important issue because the law has established that prior use includes a sale where the effect of that sale is to give the purchaser an opportunity to obtain knowledge of the invention. I think this applies in the present circumstances; anybody purchasing Aleis's boluses would then have an opportunity to analyse the material of the body of the bolus and discover the components of the ceramic material; so the evidence does not have to prove that the parties involved in using the opponent's products had full knowledge of the materials used.
The nature of the use is also an important consideration. Prior use will not anticipate a later invention unless it can be shown that the use makes an invention publicly available; the use has to be in manner that allows the nature of the product to be determined. Thus secret use is not a matter of anticipation. The applicant has submitted that some of the opponent's evidence relates to secret use. The state of the law is discussed in Humpherson v Syer (1887) 4 RPC 407 at 414, Bristol-Myers Co v Beecham Group Ltd [1974] AC 636, and Re Wheatley's Patent Application (1984) 2 IPR 450. In these judgements the courts have concluded that some indicators of anticipatory public or non-secret use are: no obligations of confidentiality, no intention of concealing the subject matter, and any commercial dealing, such as a demonstration to bring about a sale.
Another relevant case is Boyce V Morris Motors Ld 44 RPC 105 at 149, which involved use in a public place, but in a manner where the device could not be ascertained by mere inspection, and the public was not at liberty to ascertain the nature of the device. That is, mere use in a public place is not sufficient for anticipation by prior use.
I will deal with the nature of the use of the opponent's boluses as I discuss some of the following issues.
I will now deal with the matter of Aleis’s purchase of their first batch of alumina-based boluses.
There are some discrepancies in the evidence-in-support about when the Finlaysons purchased their first batch of alumina boluses from ZEP. Dates in June, July, August and September 1994 are referred to in the opponent’s declarations. The Finlaysons declare that at this time they purchased 2000 alumina-based ceramic boluses from ZEP, which they have identified as the code “C” type. Exhibit DF-20 is a delivery note from ZEP dated 30-7-1994; it indicates that 2000 ceramic pellets were in fact delivered to Aleis on or about that date; and I note there is no reference to a code type on the delivery note.
Mr Gajdosik does not refer to specific model codes for the boluses he supplied to Aleis, so there is no direct corroboration of the Finlayson’s evidence which relates model codes to composition. However he does specifically state that ZEP supplied alumina pellets to Aleis in June 1994. Mr Gajdosik’s reference to “June 1994” is about two months earlier than the date on the delivery note referred to above, however I am satisfied that both parties are referring to the same batch. The correlation is backed up by exhibits in the Finlayson’s and Mr Gajdosik’s other evidence: there is enough evidence for example to show that, earlier in 1994, some discussion and transfer of information had occurred between Aleis and ZEP about the use of various alumina-based materials. Exhibit DF13 is a faxed quote from ZEP for an initial quantity of 2000 corundum pellets; and corundum is an alumina-based mineral.
I think the evidence is sufficient to show that the 2000 boluses supplied to Aleis on 30 July 1994 were constructed with alumina bodies, and I assume the discrepancies in dates could be explained by Mr Gajdosik simply not remembering the exact date of delivery when he made his declaration.
One issue I have to decide is whether the boluses identified as code C were made from Alumina.
I note that generally there is no evidence adduced by the opponent which directly corroborates the Finlayson’s statements which relate their various model codes with the materials used. It is somewhat surprising for example that there is no document which describes the components of the various models, but I assume this was important information which the Finlayson’s wanted to protect, and therefore no written records were made. However, exhibit JF-12 is of some interest; it is a copy of a table summarising the test results of their products from 1993 to 1998. This table shows that code C models were first tested in November 1994, which, if they were the alumina model, is a few months after they had been purchased from ZEP. The JF-12 evidence per se is of low probative value; but, because of the logical time sequence of events, it does suggest that code C is referring to the batch of 2000 boluses purchased from ZEP on 30 July 1994.
The Finlayson’s evidence also refers to another, later, alumina model, identified as code D.
It is relevant here to also refer to some of the applicant’s earlier models. Mr Finlayson discusses the development of the "Microbarat 3000" composite barium sulphate models in his declaration: he declares that the 1993 model was coded as "GR" and the better 1994 model, bigger and with chamfered ends, was coded "Yrs". Mr Finlayson indicates that the Yrs model was sold and trialled on cattle stations in Queensland and Victoria in 1994 and 1995. His references to these trials seems to be consistent with the data in the above-mentioned test results table (JF-12). The test results also refer to a model "YW", trialled in 1994, 1995 and 1996, about which little has been said by the opponent's declarants; it may have been another barium sulphate model, but this is purely conjecture.
Samples of what are alleged to be the GR, Yrs, C and D models, inter alia, have been included in the evidence as exhibits. A physical check of the samples reveals that that the C and D models are relatively heavier (ie. denser) and look and feel more like ceramics than the GR and Yrs models (eg. they "squeak" when rubbed together). However, I note that none of the sample boluses are marked with their model code, so I only have Mr Finlayson’s declaration that these samples are in fact the model codes referred to in the rest of the evidence.
The onus of proof is with the opponent in this matter. The standard of proof is that which applies in civil cases, ie. proof on the balance of probability. Taking account of all the relevant matters, ie. the JF-12 results table and the samples supplied, as discussed above, and the fact that there is nothing in any of the evidence to contradict Mr Finlayson’s declaration that the code C was used for the opponent’s alumina boluses, I am led to the conclusion on the balance of probabilities that the boluses referred to as code C were in fact the alumina boluses purchased from ZEP.
I will now consider the question of whether the code C boluses were used in public before the priority date of the present invention.
Mr Finlayson declares that the code C boluses were trialled on properties at "Glenmaurie" property near Harlin, Queensland and at the “Garrison Feedlot” near Swan Hill, Victoria, from the end of 1995 to the beginning of 1996, and that he, Mr Finlayson, was manager at Glenmaurie at the time. Garrison however was an independent third party who purchased the Aleis’s boluses. Mrs Finlayson declares that the code C boluses were promoted at field days in 1994, viz: at their own bull sale in September, in Malaya in October, and at Orange in November.
Exhibits DF-34 and DF-35 are Aleis's test results sheets for trials conducted respectively at Glenmaurie and at the Garrison Feedlot. These result sheets indicate that the code GR, Yrs, YW and C models were tested at Glenmaurie in 1994 and 1995, and the YW and C models at the Garrison Feedlot from December 1995 to January - March 1996.
Sorting out the data relating to the code C model in particular does suggest that this model was used at these two properties before the priority date of 9 July 1996.
I will now consider the evidence relating to the AMLC trials.
PG-3 is an AMLC report written by Mr Gunston in November 1995 where field trials of the Aleis products were compared with those of a competitor. The trials were conducted at Murgon in Queensland and according to the report the remodelled Aleis boluses were being tested from June 1994. The report states: “all animals had been read a number of times from June to December ’94”. Also, in paragraph 14 of his declaration Mr Gunston declares that in June 1994 they “had some of both types of the Finlayson’s devices”.
This evidence I think is difficult to correlate with the evidence that suggests that the alumina boluses were not purchased by Aleis from ZEP until the end of July 1994. If the latter is true then the boluses being tested by the AMLC in June 1994 could not have been the alumina model. The test results table (JF-12) confirms this: testing of code C models began about November 1994 and in June 1994 the Yrs model was being tested. Also, the YW model was being tested from September 1994 to February 1995 (and later up to February 1996). These factors suggest that the two types being tested in June 1994 may have been the earlier plastic types and the Yrs or YW model.
The purchase order (PG-1) showing that AMLC purchased 250 rumen pellets from Aleis in October 1994 further adds to this hypothesis; the purchase order prima facie suggests that it was at this stage that the AMLC began testing the alumina boluses. Mr Gunston states "with complete certainty" that these pellets were made from ceramic.
However, if it was a fact that at the beginning of the AMLC trials they were using the Yrs or YW model and then they changed to the C model after October, one would expect that this change and these different models would have been mentioned in the AMLC report. But this in fact is not the case; the report only refers to two types- the earlier plastic models and the version 2 (ceramic) models; there is no reference to barium sulphate composite models, or to the October 1994 batch looking any different to the June 1994 batch. In fact it seems to be implied in Mr Gunston’s declaration that the October batch of the “ceramic” models was no different to the June batch.
This conflicting and confusing evidence is difficult to resolve. One conclusion is that Aleis did in fact receive their alumina (model C) boluses from ZEP in June 1994 and got a batch of these to the AMLC in the same month; but this conclusion seems highly unlikely because of the irrefutable hard evidence of the ZEP delivery note of 31 July 1994.
Another conclusion is that the AMLC didn’t in fact receive the remodelled version 2 batch until October 1994, and prior to that they were testing the Aleis plastic models and the competitor’s models; but it is a fact that Mr Gunston’s declaration clearly says that in June 1994 they “had some of both types of the Finlayson’s devices”. So this conclusion also seems unlikely.
Another conclusion is that the AMLC never saw any alumina or code C boluses at all; that the batch received in October was another Yrs or YW batch and their references to the “ceramic” boluses were in fact directed to the barium sulphate composite models. A conclusion similar to this was drawn by Mr Carter at the hearing.
Mr Brassingthwaite’s evidence also refers to only two of the opponent’s models, the earlier plastic type and the later “remodelled version 2” ceramic type. In paragraph 14 of his declaration he describes the remodelled version thus:
“To me it looked like a porcelain-type product, although I cannot state with certainty what the product was. It was cylindrical and about 60mm long x 20mm diameter. The housing had chamfered ends and a plug in an end. I never saw inside the device and so cannot state the arrangement or type of contents installed inside the housing.”
This evidence only further confuses the matter because this product as described by Mr Brassingthwaite doesn’t appear to be the same as any of the sample boluses provided as evidence, viz:
(i) neither the Yrs or the C model is 60mm long; the former is closer to 65mm and the latter 55mm,
(ii) the Yrs model has chamfered ends but has a hole all the way through, whereas
(iii) the C model has a plug in one end but does not have chamfered ends, and
(iv) the code D model is 63mm, has a plug in one end, has ends more rounded than chamfered, and has Aleis insignia printed on the outer surface.One conclusion here is that maybe the samples provided as exhibits supposedly of models Yrs, C and/or D are not the same as the models referred to elsewhere as being Yrs, C and/or D models. Another and more likely conclusion is that the model referred to by Mr Brassingthwaite is another model, a sample of which has not been provided as evidence before me. Maybe it was the mysterious “YW” model, about which there is no mention in the opponent’s declarations per se; it is only referred to in the exhibited documents.
Mr Brassingthwaite also refers to trials on Mr John Thun’s property at Murgon, in 1994 and later in 1995 and into “early 1996”. In a “final report” on the trials that he and Mr Gunston were involved in, dated June 1996 (exhibit JB-3), I note with interest that some photographs are shown of the Aleis bolus, on pages 7 and 27. The bolus shown in the photographs looks prima facie like the code C model provided with the opponent’s evidence, ie. in the sense that it has unchamfered or unrounded ends. It does not have chamfered ends like the bolus described above in paragraph 14 of Mr Bassingthwaite’s declaration.
However, I think this matter can almost be resolved by referring back to Mrs Finlayson’s evidence. In paragraph 37 of her declaration she refers to the model C bolus being “entered in the National AMLC identification trials in December 1996”. This is confirmed by exhibit DF-36 which is a test results sheet, similar to those used for the Glenmaurie and Swan Hill trials, showing that the model C bolus was dealt with by the AMLC between December 1996 and January 1998.
One significant outstanding matter in all this is: why are there no comments from Messrs Gunston and Brassingthwaite about the differences between the Aleis boluses tested from 1994 to early 1996 and the ones received later in December 1996? Their declarations were made in 2000.
At the hearing Mr Horsborough insisted that the AMLC reports were in fact directed to the code C model. However, I think the proper conclusion to be drawn from the evidence before me is that it is not clear which models were tested by the AMLC from June 1994 to March 1996. Mrs Finlayson’s evidence at least suggests that the models tested did not include the Aleis model C bolus. Was this an error on her part? I have no evidence of what the YW model looks like for example, so it is possible that the photograph in the AMLC final report is of that particular model, which, as previously discussed, is probably not made of alumina. It seems as though the "remodelled version 2" referred to by Mr Gunston was one of the barium sulphate composite models, and it is feasible that it could have been described as being “ceramic” since barium sulphate is used in the ceramics industry. It seems to me all the opponent’s evidence relating to the AMLC trials is of low probative value in deciding whether alumina boluses were publicly used before 9 July 1996.
I will now consider the broader question of whether alumina boluses were used in public in Australia before the priority date of the present invention.
The matter of whether the opponent’s code C models were used in public has been discussed above. In addition to this there is evidence which in effect by-passes the issue of whether the boluses were code C types or not. I will now deal with that evidence.
Mr Gunston referred to ceramic used by the Finlaysons as being of "a high quality and was the same as used in artificial hips", which may suggest the alumina model, more so than the barium sulphate composite versions, which look and feel less like ceramic. In this matter I note that in exhibit DF-16, a letter from one of the Czech manufacturers about the materials used in the boluses supplied to ZEP, there is reference to the alumina being "used in the medical industry world-wide”. However, I have some doubts about this comment from Mr Gunston because it is not clear when he heard this above-mentioned comment, it could have been after the AMLC received the batch of model C boluses in December 1996.
Of more significance is Dr Moreau’s reference to purchasing 50 boluses from Aleis in September 1994. It is not clear what he meant by the "raw material being Australian", but his reference to being told that the boluses "were manufactured in another country” is perfectly clear. This suggests to me, in the light of the other evidence, that the boluses purchased by Dr Moreau were the ones supplied by ZEP; since ZEP had their products manufactured in the Czech Republic. Aleis’s previous models had been manufactured in Australia. The timing of this event is consistent with the opponent’s other evidence, and it does suggest to me that the ZEP boluses were being distributed by Aleis late in 1994.
There could be some argument about whether the use relating to Dr Moreau's purchase of Aleis's boluses was use in Australia, as required by the 1990 definition of prior art base (a)(ii) in Schedule 1 of the Patents Act, since it is clear from his declaration that Dr Moreau had travelled to various parts of the world in the period 1994 to 1996. However, I think it is an academic question as to where he might have been located if he had chosen to analyse the Finlayson's boluses. The significant point is that he purchased the boluses whilst he was in Australia, and therefore could have analysed them at that time.
Generally, I think Dr Moreau’s evidence is of good value, notwithstanding that he was in international traveller and notwithstanding what code was used for the boluses, that the ZEP-manufactured boluses were made public by the Finlaysons, since he is an independent party in these proceedings.
Furthermore, even though there is some doubt about the evidence relating to the AMLC trials, I still have the fairly probative evidence of the trials at Glenmaurie and Swan Hill, and the field days.
There could be argument about the public nature of the Glenmaurie trials because the Finlaysons were managing the property, but the same cannot be said for the Swan Hill trials. Also, as discussed earlier, there is evidence to confirm that the C model was the alumina version, so I think it can be concluded that the Swan Hill trials at least were in fact public use of the opponent’s alumina boluses. For these trials 150 model C boluses were sold to the Garrison Feedlot and were tested in February and March 1996.
The evidence relating to the field days is of some relevance; it is possible that some of the “ceramic” boluses shown at these field days were Aleis’s alumina models, but in the light of the possible or even likely circumstances that the AMLC tests were done on the barium sulphate models, yet described as “ceramic”, it also is possible that some of the “ceramic” boluses shown at the field days were not alumina. The evidence relating to the tests at Swan Hill I think is of more probative value than the field tests because it seems that the code C model was tested and that the code C model was made from alumina.
The applicant’s representative submitted that “we don’t know what happened to” the opponent’s alumina boluses, implying that they were not trialed at all. This to me seems unlikely; after purchasing a batch of 2000 alumina boluses from ZEP, it seems much more likely that they would want to trial at least some of their latest model to test its efficiency; the evidence suggests that they made a practice of trialing their products, and there is no evidence of any secrecy agreements. Mr Griffin suggested that these trials should not be construed as disclosure to the public, but in my view there is a greater weight of the opponent’s evidence to the contrary. Also I think there is some doubt as to whether Mr Griffin could be seen as a person skilled in the art (PSA).
Taking all the relevant matters into account, I think there is sufficient evidence, notwithstanding the confusion relating the AMLC trials, to conclude that the opponent’s alumina boluses were in the public domain before the priority date of the current patent application. The evidence relating to the AMLC trials is a considerable portion of the opponent's evidence-in-support of the opposition, so it could be suggested that, given its low probative value, the remainder of the opponent's evidence should therefore also be of low value. To an extent I think this is true because, as discussed, some doubt is thrown on the material composition of the boluses shown at the field days. However, as a general rule, I don't think it is appropriate to discount all of one party's evidence just because some parts of it are confusing and therefore of low probative value. To prove prior use all that is needed according to the Patents Act is "a single act", and in this case I am satisfied that there was at least one single act: ie. the trials of the alumina-based code C bolus at the Garrison Feedlot in Swan Hill, and/or the sale of some of the same batch of boluses to Dr Moreau.
Also, in my view the circumstances of the use and distribution of the opponent's boluses, as set out in its evidence, do not constitute secret use, and can be considered to be anticipatory public use; since most instances involved sale of their products for trial by various parties, no apparent intention to limit the distribution, and no discussions of confidentiality. The sales to the Garrison Feedlot and to Dr Moreau for example can clearly be construed as commercial dealings.
100. I will now reconsider the level of disclosure of the prior use and consider the scope of the claims in the present specification.
101. ZEP’s evidence shows that the boluses supplied to Aleis in July 1994 were manufactured from an alumina ceramic known as OXAL, which was said to be approximately 95% aluminium oxide ceramic. Mr Gajdosik declares that “all samples and orders supplied by ZEP to Aleis International have been manufactured from this material”. This disclosure clearly anticipates claims 1, 2 and 3. There is no further information given specifically on OXAL, but tables comparing different alumina-based materials (exhibits SG-3 and AB-2) do indicate that materials with a very high percentage of alumina, ie. of the order of 95%, have densities greater than about 3.4 g/cm3. Thus I think claim 9 is also anticipated by the OXAL material. Claim 8 is also anticipated because the background to the invention mentions that alumina is non-magnetic.
102. The remaining claims are directed to either features which prima facie appear to be not essential to the invention, or features which are alleged to be well-known or disclosed in the prior art (some claims are discussed in paragraphs 32 to 36 of Mr Finlayson’s declaration for example, and Mr Bond declares that the method of manufacturing the boluses as claimed in claims 23 to 28 is not new and “just part of standard practice when working with ceramics”). Therefore my prima facie assessment of these claims is that, given that claims 1, 2, 3, 8, and 9 are anticipated by prior use, and in the light of the opponent’s evidence relating to the appended claims, the other claims prima facie, do not appear to contain novelty-conferring features. I note however that the applicant’s declarants have provided substantial evidence suggesting that there has been considerable effort in developing the invention so it is possible if not likely that there is some significant feature in one of the appended claims.
Prior publication
103. The opponent's submissions on lack of novelty based on prior publication mainly rely on their submission that alumina is not an essential feature of claim 1. The patent specifications cited refer to either ceramics or silica, but do not specifically refer to alumina. Since I have decided that alumina is an essential feature of claim 1, it therefore follows that these citations do not anticipate the claim.
104. It was also submitted that "the Caja et al invention was anticipated by their own report delivered to the second co-ordination committee meeting on 14 July 1995 and exhibited as GCJ13". The report relates to results of animal identification research being done as a joint project between the UAB and other research agencies in Europe. I note that there is a reference to "secret agreements" between the research parties, the research work seems as if it could be described as "experimental use", and there is no indication that the report was made available to the public. Also, there is no specific reference to using alumina, so in my view this document falls short of being a prior publication of the presently claimed invention.
CONCLUSION
105. The S.59 opposition to grant of a patent is successful because I have found that claims 1, 2, 3, 8, and 9 are anticipated by prior use. However, I have already suggested that there may be patentable subject matter in the specification; as set out in some of the appended claims for example; so I allow The European Community sixty days from the date of this decision to propose amendments to overcome the objections to the specification.
106. Both parties sought costs in this matter. The usual practice in oppositions is to award costs against the losing party; I see no reason to change that practice in this case, so I award costs in accordance with Schedule 8 against The European Community.
John Welsh
Delegate of the Commissioner of PatentsPatent attorneys for the applicant: F B Rice & Co, Melbourne
Patent attorneys for the opponent: Fisher Adams Kelly, Brisbane
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