The Track Shop Pty Ltd v Bundaberg Foundry Engineers Limited and Sugar Research Institute
[2001] APO 46
•11 September 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 707580 in the name of THE TRACK SHOP PTY LTD
Title: MILL ROLLERS AND ABRASION RESISTANT SURFACE COATINGS FOR MILL ROLLERS
Action: Application under section 69 for an extension of the term of the petty patent; notices by BUNDABERG FOUNDRY ENGINEERS LIMITED and SUGAR RESEARCH INSTITUTE under section 28; hearing
Decision: Issued
Abstract
The invention in the petty patent relates to a sugar mill roller having machined ridges and wherein ridge capping including a plurality of layers of weld supporting therein a wear resistant material is on land portions of the ridges.
The s.28 notices alleged the invention was not a manner of manufacture, lacked novelty and lacked an inventive step. It was also alleged that the specification did not comply with s.40. Further it was alleged that the patentee was not entitled to be granted the petty patent on the basis that another person apart from the named inventor contributed to the invention.
Construction issues regarding claim 1 were considered.
It was found that the invention defined by claims 1 and 2 lacked novelty. No other ground of invalidity as alleged in the s.28 notices was established.
The patentee was allowed 60 days from the date of the decision in which to file a request to amend the patent specification for the purpose of removing the ground of invalidity.
Costs were awarded costs against the patentee The Track Shop Pty Ltd in favour of Sugar Research Institute and Bundaberg Foundry Engineers Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 707580 by The Track Shop Pty Ltd, application under section 69 for an extension of the term of the petty patent and notices by Bundaberg Foundry Engineers Limited and Sugar Research Institute under section 28 regarding the petty patent.
BACKGROUND
Petty patent 707580 arose as application 23806/99 filed on 15 April 1999 and being a divisional application based on application 58482/98. The petty patent was sealed on 15 July 1999. The petty patent claims priority through patent application 58482/98 (PCT/AU98/00074), which was filed on 10 February 1998, from two provisional applications, namely PO5047 filed on 10 February 1997, and PO6499 filed on 30 April 1997. The inventor is listed as Timothy Stuart Falkenhagen.
Schedule 2 of the Patents Amendment (Innovation Patents) Act 2000 relates to saving and transitional provisions in relation to petty patents. Petty patent 707580 is one where the provisions relating to petty patents to which the "old law" as defined in Schedule 2 applies. References to the Patents Act 1990 ("the Act") in this decision are to be understood as references to the "old law" as defined in that schedule.
The patentee applied for an extension of the term of the petty patent on 13 June 2000. On 13 June and 15 June 2000, Sugar Research Institute (hereinafter "SRI") and Bundaberg Foundry Engineers Limited (hereinafter "Bundaberg Foundry") respectively filed their notices under s.28 of the Act. The patentee filed its evidence in response to the respective notices on 18 September 2000.
On 4 December 2000 SRI and Bundaberg Foundry filed three documents which they sought to bring into the proceedings as further evidence. On 19 January 2001 the patentee filed three documents which it sought to bring into the proceedings as further evidence.
In response to a "Notice requiring production of a document or article" issued by the Commissioner to Dr Dixon of SRI following a request by the patentee, a copy of the document entitled "Trial of a long life roll shell roughness" by C A Garson and S W Neill was provided to the Commissioner on 12 January 2001.
This matter was heard on 9 February 2001 in Canberra. The patentee was represented by Mr B Hess of counsel assisted by Mr B Anderson and Mr D Fox both patent attorneys of Ahearn Fox, Brisbane. Mr I de Jonge patent attorney of Cullen & Co, Brisbane appeared by telephone for both SRI and Bundaberg Foundry.
SPECIFICATION
The invention is entitled "Mill Rollers and Abrasion Resistant Surface Coatings for Mill Rollers". The specification describes the technical field of the invention and background art in the following terms on pages 1 to 4:
"TECHNICAL FIELD
THIS INVENTION relates to mill rollers and abrasion resistant surface coatings for mill rollers and has particular application to sugar mill rollers, and for illustrative purposes, reference will be made to such application. However, it is to be understood that this invention could be used in other applications where mill rollers would be improved by having abrasion resistant surface coatings applied thereto.
BACKGROUND ART
In the sugar industry, sugar cane is typically crushed between rollers arranged for rotation about parallel axes in pairs or in groups of three or more. Generally, each roller has a plurality of machined ridges extending circumferentially around the roller thereby forming a surface of alternate ridges and valleys. The valleys or grooves are typically evenly spaced along the roller. The grooved arrangement provides for gripping of the sugar cane fibre as it passes between the rollers, the groove of an upper roller being operatively aligned with the ridges on its opposing lower roller or rollers. The grooves are generally V-shaped in cross-section separated by ridges which are of generally triangular cross-section. This arrangement of grooves and channels has occasionally been referred to in the art as "meschaert" grooves.
British Patent No. 2,025,260 addresses the problem of rollers wearing smooth by providing an assertion that rings of corrosion resistant material, with a granular material, such as industrial diamonds or a mixture of tungsten carbide and cobalt may be provided. This specification teaches that industrial diamonds may be coated onto the rings by a galvanic process.
In the art generally, there is usually a gap provided between the apex of each ridge on one roller and the bottom of each groove on an adjacent roller, the gap being provided to receive the sugar cane juice squeezed from the sugar cane. The resulting mat of sugar cane fibres (known as bagasse) has a tendency to slip around the roller if there is insufficient grip on the roller surface.
A sugar mill roller is usually constructed as a cast iron roller mounted on a shaft and turned by a belt, chain, direct drive or other such drive means. Wear resistant material has on occasion been provided on the caps of the ridges of grooved rollers, but only at intermittent locations around the circumference of the roller. This approach has been taken partly because it was believed that the intermittent application of the abrasion resistant material, in what is often termed a "dot-dash" arrangement, produced the best gripping surface for the milling of sugar cane. Typically, conventional hardfacing matrix is used, including, for example, high speed steels, austenitic manganese steels, austenitic high chromium irons, cobalt or copper based alloys, or nickel-chromium-boron alloys according to the practices set forth in Jones, F D, & Horton, H L, Machinery's Handbook, ISBN 0-8311-1155-0. In applications other than sugar mill rollers, it has been an option for abrasion resistant material such as chips of tungsten carbide to be laid up in the matrix to form a hardfacing composite using the hardfacing materials listed in this reference or in mild or stainless steel weld. More recently, chromium carbide hardfacing has been applied as a relatively thin layer of hardfacing onto the tips of the ridges and particularly in a dot-dash arrangement on sugar mill rollers, but for sugar mills rollers, hardfacing composites have not been used because it has been too difficult to place the weld on the tips of the ridges.
After a period of use, sugar mill rollers require refurbishment due to the hardfacing wearing smooth, causing slippage of the bagasse between the rollers. Accordingly, in order to refurbish such a roller according to traditional technology, the entire roller is removed from the mill, broken up and recast into a new roller.
This approach is costly in terms of replacing the entire roller and requires a significant downtime for the sugar mill in having the roller removed and replaced. There are also costs for heavy transport for removing such rollers from and delivering such rollers to site.
It is an object of the present invention to provide a hardfacing for a mill roller, particularly a sugar mill roller, which provides for superior grip onto the material being milled. It is another object of the present invention to provide hardfacing for a mill roller, particularly a sugar mill roller, which has improved wear characteristics. It is a further object of the present invention to provide a hardfacing gripping surface for a sugar mill roller which substantially retains its gripping characteristics throughout its life cycle. It is a further object of the present invention to provide a sugar mill roller which lasts longer than traditional sugar mill rollers and/or is more economical to refurbish. It is generally an object of the present invention to provide a mill roller having a wear resistant surface and a method of forming same which will be reliable and efficient in use. Other objects and advantages of the present invention may become apparent from the following description of the invention."
The specification then proceeds to describe the invention to achieve the foregoing objects. This is done by way of a consistory statement in identical terms to claim 1, other general statements and specific discussion of illustrative embodiments applying the invention. It is convenient to state the claims at this point. They are as follows (with my integer identifiers added to claim 1):
"1.(a)A sugar mill roller including:
(b)a roller body of substantially circular cross-section having a plurality of circumferentially running machined ridges formed to be substantially parallel and spaced along a substantial part of said roller body,
(c) each said machined ridge including one or more land portions,
(d) and a ridge capping on said one or more land portions,
(e)each said ridge capping including a plurality of layers of weld supporting therein a wear resistant material.
2. A sugar mill roller according to Claim 1, wherein each said machined ridge includes two or a multiple of two land portions, separated by a wall portion and one or more of said layers of weld are supported on respective ones of said land portions against said wall portion.
3. A sugar mill roller according to Claim 1 or Claim 2, wherein said roller body is formed of grey cast iron, and said ridge capping includes a first layer of stainless steel weld."
The specification refers to the welds in these terms on pages 4 and 5:
"… The layers of weld forming the ridge capping are preferably a hardfacing composite as described below.
Preferably, the weld is applied by inert gas shielded arc welding, such as, for example, metal inert gas (mig) welding or tungsten inert gas (tig) welding, characterised in that the weld pool first applied to the or each land portion is formed from a stainless steel welding rod without any wear resistant material added thereto and the successive layers are formed from a mild steel welding rod used to form respective weld pools impinged with a particulate wear resistant material, until a ridge capping of desired profile is formed substantially all the way round the roller, the process being repeated for each ridge.
The hardfacing is preferably formed as a hardfacing composite by impinging the particulate wear resistant material into the weld pool, allowing the weld pool to solidify, and progressively laying up successive layers of said hardfacing as hereinbefore described."
The specification also indicates on pages 8 and 9 that
"Preferably the wear resistant hardfacing is made by using ARM-2 weld wire as manufactured and supplied by Abrasion Resistant Materials Pty Ltd, …. This weld wire conforms to BS2901 Part 1 1970A18 and AWS A5.18 E70S-6.
The tungsten carbide grit may be added into the molten weld pool during the welding process, by any suitable means, and is preferably to mesh size 12/35."
Although not otherwise mentioned to that point in the specification, it is clear from the specific embodiments later described in the specification that tungsten carbide particles are a preferred wear resistant material for the purposes of the invention. In fact no other form of wear resistant material is mentioned. The description with reference to the drawings and the example otherwise explain the typical formation of the ridge capping by layering welds on the land portions, including that the first weld layer on a land portion (upon which other welds are deposited) can be of stainless steel without any wear resistant material added.
SECTION 28 NOTICES AND EVIDENCE
1. Bundaberg Foundry's section 28 Notice
Bundaberg Foundry asserted that petty patent 707580 was invalid on one or more of the following grounds, being those grounds listed in s 28(1), namely:
"(a) That the patentee was not entitled to be granted the petty patent.
(b) That the invention is not a patentable invention because it does not comply with section 18 (1)(a) or (b).
(c) That the patent specification does not comply with sub-section 40(2) or (3)."
As evidence to support these assertions, it relied on a number of statutory declarations. These declarations with exhibits, with brief identification of the exhibits, are as listed following. I will refer to these declarations and exhibits as necessary in my decision.
Declarations by:
| Druce Batstone | Exhibit DBB1 (Fax dated 21/2/96 re Foundry Mill Project) |
| Exhibit DBB2 (Confidentiality Deed 18/6/96) | |
| Exhibit DBB3 (Fax dated 27/6/96 re Foundry Mill Project ) | |
| Garrie Blight | Exhibit GRB1 (Extract from "Sugar y Azucar", July 1991 ed.) |
| Exhibit GRB2 (Letter dated Feb. 1992 and attachments) | |
| Exhibit GRB3 (Extract from 1993 SRI annual review) | |
| Exhibit GRB4 (Copy of AWRA Technical Note 4, reprinted 1988, entitled "Hardfacing") | |
| Exhibit GRB5 (Extract from "Sugar y Azucar", Nov. 1991 ed.) | |
| Exhibit GRB6 (Copy of CIGWELD article "Hardfacing in Australian Sugar Mills" dated June 1994) | |
| Exhibit GRB7 (Copy of "Material Safety Data Sheet" by CIGWELD issued 6 Nov. 1996) | |
| Exhibit GRB8 (Extracts from various documents) | |
| Exhibits GRB9 to 20 (Includes copies of 15 patent specifications or abstracts thereof - eg. from US, DE, JP and WO) | |
| Ian de Jonge | Exhibit IDJ1 (OPI dates of patent specifications) |
As evidence in response the patentee filed a statutory declaration by Timothy Falkenhagen to which was exhibited 6 exhibits TSF 1.1 to 1.6.
2. SRI's section 28 Notice
SRI asserted that petty patent 707580 was invalid on the grounds of lack of novelty and lack of an inventive step and that the patentee may not be entitled to the invention on the grounds that the named inventor is not believed to be the actual inventor of the invention.
SRI's assertions were supported by a 22 page submissions document which referred to 28 references, the references being provided as Attachments 1 to 28. The references include extracts from text books, manuals, reports and journals and copies of letters and notes. The submissions document bears no author identification but bears the SRI logo at the bottom of each page. A covering letter with the notice is signed by Dr Terry Dixon, Engineering Group Manager at SRI.
As evidence in response the patentee filed the following statutory declarations:
Declarations by:
| Timothy Falkenhagen | Exhibits TSF 2.1 to 2.12 |
| David McDonald | Exhibit DWD1 |
| Kenneth Peters | No exhibits |
| Benjamin Falkenhagen | Exhibit BHF1 |
3. Material filed sought to be further evidence
The documents filed by SRI and Bundaberg Foundry on 4 December 2000 were:
A statutory declaration by Ann Ellis regarding publication dates of the July 1991, July 1994 and November 1981 editions of the publication "Sugar y Azucar".
A copy of US patent 4097711 (issued 1978).
A fax concerning the distribution of the SRI annual review and the publication date of April 1994 for the 1993 SRI annual review.
The documents filed by the patentee on 19 January 2001 were:
Article entitled "Enhanced Roll Life" by S Kroes, Proc. Aust Soc. Sugar Cane Technol.,
21: 307-312 (1999)Report "Extend the life of a roll shell surface" by S Kroes, Project Proposal 13/95, SRI Job 1939 (March 1998)
Report "Maintenance Free Roll Shell Phase I - Final Report" by S Kroes, Syndicate Project 2391 (April 1999).
4. Admissibility of material as further evidence
Mr Hess indicated that the patentee did not object to the material filed by SRI and Bundaberg Foundry as further evidence. In those circumstances I see no reason not to admit that material into the proceedings, and I therefore admit it.
Mr De Jonge objected to the documents filed by the patentee as further evidence in this matter. He objected on the basis of relevance in that if the material was relevant to the inventorship issue the patentee should have been diligent in prosecuting the matter and it should have provided the material at an earlier stage. He also submitted that the material was unlikely to have an important influence on the result. In reply Mr Hess submitted that two of the documents applauded the invention and were against the interests of SRI and Bundaberg Foundry recognising inventorship. The third document he said was a peer reviewed document published under the auspices of SRI and was an extremely important document. He added that SRI and Bundaberg Foundry were under an obligation to put forward evidence with candor and honesty but chose not to put forward three key documents which were entirely against their interests. He said the patentee had to dig the documents out and this took some time.
As the documents were all published after the earliest priority date these documents alone would be of little probative value. However I understand they report on certain activities in the field of the invention and may, in that sense, lend weight to other evidence the patentee advances. Mindful that the patentee is defending a serious claim about inventorship of the invention I believe this material should be admitted as it is likely to contribute to a more correct and just decision on matters at issue. I doing so I do not believe that SRI or Bundaberg Foundry would be prejudiced in any way. I therefore admit this material.
5. Document from production of document
The document produced from the Notice requiring production is a full copy of SRI Technical Report 5/96 published July 1996. Selected pages of this report had been included as Reference 11 to the SRI notice. I indicated at the hearing that I considered the document as produced was part of the proceedings.
SUBMISSIONS
The parties made extensive verbal submissions to me at the hearing on the matters raised in the s.28 notices. In addition the parties supplied me with written copies of, in the case of Mr Hess, his outline of submissions, and in the case of Mr de Jonge what essentially was his prime verbal submission. I will refer to particular submissions as needed under the relevant decision matters. An initial observation made by Mr Hess was that the s.28 material from SRI had little probative value being a written text incorporating references to numerous references. There was no sworn evidence apart from two statutory declarations included as Attachment 16. He said the material amounted to nothing higher than what would be oral submissions at a hearing and should be considered as such. On another issue, where the evidence presented by the parties was in conflict or where doubt exists as to certain facts, Mr Hess urged that the evidence of the patentee should be preferred.
DECISION
Construction of claim 1
Before turning to a s.40 matter raised by Mr de Jonge, I need to make some observations about the claimed invention. In particular some features of claim 1 require consideration. In doing so I need to have regard to the principles of construction of patent specifications. These principles of construction have been variously discussed and reported in recent years. One summary is provided by Hely J in Flexible Steel Lacing Company v Beltreco Ltd 49 IPR 331 at 347. The following summarising statements from that reference are of note:
"74 Hence, although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document.
75 It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. Where the language of the claim is "obscure or doubtful" the doubt was sometimes resolved by referring to words in the body of the document to explain it." [Case references have been omitted]
Turning to claim 1, the first portion of the claim refers to a sugar mill roller of common form, that is a roller of substantially circular cross-section having a plurality of circumferentially running machined ridges formed thereon (integers (a) and (b)). There was no dispute that this form of roller was common in the industry including at the priority date. The claim then defines "each said machined ridge including one or more land portions" (integer (c)), "a ridge capping on said one or more land portions" (integer (d)), and "each said ridge capping including a plurality of layers of weld supporting therein a wear resistant material (integer (e)). The parties provided submissions about the meaning of the claimed invention arising from features in integers (c) to (e) which I will now discuss.
1. Land portions
Mr de Jonge submitted this term did not appear to have a precise dictionary meaning but from the specification considered it "should include any substantially flat portion irrespective of how it is formed" and be without limitation as to size. Mr Hess submitted that an addressee of the specification would understand the term to be "a surface sufficient to support a layer of weld". I note that the specification itself does not provide a specific meaning for this term (its own dictionary) nor does it seem to be a term in the art. The normal dictionary meaning of "land" is "an area of a surface partly machined (as with holes, indentations, furrows, or grooves) that is left without such machining" (Webster's Third New International). Thus where a roller is machined to form grooves with non-machined portions between the grooves, the non-machined portions would be lands. When the claim is limited to one land portion for a machined ridge, then that portion could equate with the dictionary meaning of "land". If the whole of the specification is considered, what is described as land portions are flat areas or rebates including a flat surface formed either at the top or at upper regions of the sides of the machined ridges. The specification describes a single step pyramid shape at the top of a ridge as having three land portions (as in fig 2) and a double step pyramid shape as having five land portions (as in fig 1), although these land portions, particularly the side located ones, result from machining not the absence of machining as the meaning of "land" would imply. Thus in the context of the specification I believe an addressee would understand the term "land portion" to mean a land or flat portion on the ridges whether machined or not and, given integer (d), able to support a ridge capping.
2. Each ridge capping including a plurality of layers of weld
Firstly Mr de Jonge submitted that there was no limitation on the shape, size, etc of the ridge capping. I note that a ridge capping is defined as related to a land portion, not to each machined ridge. Thus there may be one or more ridge cappings to each ridge depending on the number of land portions. I agree that there are no dimension or profile limitations for the ridge cappings and the claim leaves open the resulting profile of a ridge when the ridge cappings are first formed. However as the subject of the invention is a sugar mill roller, the resulting profile of the roller must be suitable for the purpose of sugar cane rolling, which in my view implies that the resulting ridge profiles with the ridge cappings in situ equates to an otherwise uncapped ridge profile in order to cooperate with other mill components such as roller trash plates.
A second issue concerned the "layers of weld". Mr de Jonge submitted that the size and nature of the layers were without limitation - thus the layers could be continuous or discontinuous, and need not be overlapping or contacting each other. Mr Hess referred to the text "The Procedure Handbook of Arc Welding", 12th edition, 1973, a portion of which was attachment 4 of the SRI notice. He referred to reference section 16.1-14 where "Layer" is referenced as "A stratum of weld metal, consisting of one or more weld beads." He submitted that this definition did not encompass dots spattered on a roller ridge by a discontinuous weld action, such as the "dot-dash" arrangement discussed in the background art to the specification. In my view by requiring a "plurality of layers of weld" each ridge capping has to have at least two identifiable weld layers where each layer could be of one or more weld beads. Thus the simplest ridge capping would be one weld bead partly or wholly on a lower weld bead on a land portion. Given that each of the ridges is formed circumferentially of the roller, each ridge capping would be of at least two such layers circumferentially of the roller.
3. Layers of weld supporting therein a wear resistant material
The interpretation of this definition is central to the meaning and scope of the invention. From the submissions advanced a first point I need to consider is whether the definition implies that the layers (or the welds) are inherently a wear resistant material. Certainly some welds can be understood to constitute, or have the property of, a wear resistant material but in my view the claim wording alone does not permit the interpretation that the layers of weld are a wear resistant material.
I next turn to the wording "supporting therein". A normal meaning of "support" in the context of a device or material is "to hold up or in position: … keep from sinking or falling" (Webster's Third New International Dictionary). "Supporting therein" therefore suggests to me that the weld layers hold up or in position wear resistant material. But in what way could weld layers be understood to achieve this? There is no evidence as to the reading a notional skilled addressee would give to this claim integer. Mr de Jonge referred to two arrangements which he suggested could achieve this, firstly, that the wear resistant material may be added to the weld pool during welding as discreet particles which do not melt and so be embedded in the weld metal when it solidifies, or secondly, the wear resistant material may be developed as discreet particles in the weld metal microstructure as it solidifies so that wear resistant particles are in the final weld matrix. However as I understood his submissions about some prior art disclosures, Mr Hess rejected the second arrangement as being something within the claim definition on the basis that the resultant welds did not exhibit wear resistant material as a discreet phase in the weld matrix. From the various exhibits placed before me in this matter, it is evident that the composition of a weld is an extremely technical field and many factors can apparently influence the end product. I do not see the claim definition as excluding from its meaning certain weld products simply because a product inherently contains wear resistant material in the form of certain metal particles in the weld matrix. Also the definition does not suggest a requirement that the materials of the weld making up the weld layers be distinct from the wear resistant material. Accordingly it seems to me that provided some wear resistant material is identifiable and thus can be taken to be supported by or within the weld layer, such layers meet the claim definition. That is the interpretation I will adopt.
Even if the integer (e) definition were considered ambiguous, which I do not consider to be the case, and recourse is made to the description to clarify its meaning, I do not believe there is clear support only for a construction that the wear resistant material must be distinct from the weld materials. The description on pages 4 and 5 states that the layers of weld forming the ridge capping are, or the hardfacing is formed as, "preferably" a "hardfacing composite". Thus the description places a hardfacing composite (presumably meaning a product made up of distinct parts or elements such as weld matrix materials and wear resistant materials) no higher than a preferred form of weld layers.
A further issue raised concerning integer (e) was whether the definition required that the wear resistant material must be in each layer of a ridge capping. Integer (e) requires that the ridge capping includes a plurality of layers of weld that support therein wear resistant material. This wording to me implies that each layer of the plurality of layers contains wear resistant material. However the definition, due to the word "including", in my view leaves open the possibility of layers of weld which do not support wear resistant material forming part of the ridge capping. This interpretation accords with the description which indicates that a "butter layer" or first layer can be provided on a land portion which does not have the wear resistant material in the welds.
Section 40
Mr de Jonge submitted that the complete specification failed to describe the invention fully including the best method known to the applicant of performing the invention. He said the evidence by the stated inventor Timothy Falkenhagen in this matter revealed that the inventor was aware before the application was filed that certain sizes of land portions were unsuitable and would not work, but the specification gives no hint of this and is silent on shape or size of the land portions or any advantage that the land portions give with respect to supporting the weld layers. Thus he argued that the best method for performing the invention had not been described. Mr Hess submitted that the notifiers seemed to have no difficulty in understanding the specification and rejected any failings of the specification under s.40.
The requirement regarding the best method of performing the invention was recently discussed by the Full Court of the Federal Court in Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689. At paragraphs 48-50 the court states:
"48 ... In Vidal Dyes Syndicate Ld v Levenstein Ld (1912) 29 RPC 245 in the Court of Appeal, Fletcher Moulton LJ said at 269:
'It is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out.'
This requirement is to ensure good faith on the part of the patentee, and 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 monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."
49 Blanco White in Patents for Inventions (4th Ed) at paragraph 4-502 notes:
'To be proper and sufficient, the complete specification as a whole (that is, read together with the claims, and in the light of the drawings, if any must in the first place contain such instructions as will enable all those to whom the specification is addressed to produce something within each claim "by following the directions of the specification, without any new inventions or additions of their own"; and without "prolonged study of matters which present some initial difficulty".' [References omitted]
50 Of the objection based on the provisions of the United Kingdom legislation, Blanco White says at paragraph 4-516:
'There would seem to be no obligation under this provision to include information not strictly relating to `the invention', however necessary to anyone needing to work the invention.' "
The invention here claimed is a sugar mill roller with ridge capping of particular nature on land portions of the machined ridges. The specification describes, and the embodiments depict, arrangements resulting in the formation of ridge capping on a mill roller. There may be certain shapes and sizes of land portions which are preferred over others but the invention is not particular forms of land portions. In my view there has been no failure of the duty to disclose the best method of performing the invention known to the applicant as required by s.40(2) of the Act.
Mr de Jonge also submitted that there was no full description of the invention. This he said was based on what the evidence indicated was needed regarding considerable trial and experimentation to obtain the best "groove profile". As evident from the preceding paragraph, the groove profile, or the land portion profile if that was what was meant in the submission, is not the invention here and so the description can not be deficient on this basis. In any event, even if the land portion profile is of importance, I believe that an addressee would have no lasting difficulty in arriving at something within the invention claimed.
Declarant Blight for Bundaberg Foundry, who appears to qualify as a skilled person in the art and who states he has "read and understood the description and claims of the petty patent" specification, refers to a number of matters in his evidence where he believes the specification is unclear. His comments are addressed by Timothy Falkenhagen in responding evidence. I am not satisfied that the matters raised by Mr Blight cause any failure to fully describe the invention. I believe that a skilled addressee wishing and wanting to understand the specification would have no difficulty in being able to comprehend the invention and put it into practice.
In summary I believe the claims provide a clear definition and that the specification does not offend against the requirements of section 40.
Novelty
The test for novelty is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; 1A IPR 181. For this test one asks oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement. Infringement of a claim occurs where each an every one of the essential features of that claim has been taken (see eg Rodi & Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at 391).
Mr de Jonge in submissions raised only one document as the basis for a lack of novelty attack. This was the document Attachment 23 of the SRI material being pages 22-31 (less 24, 25 and 27) of a publication entitled Sugar y Azucar of July 1994. There is evidence from Ms Ellis of SRI that this journal was available in the SRI library since 28 September 1994. From the extract pages of the July 1991 edition of Sugar y Azucar exhibited as GRB1 it seems that Sugar y Azucar is published in New Jersey, USA.
Attachment 23 is a copy of an article "Maintenance welding in sugar/alcohol mills", the author being president of a research body in Brazil. The article, in rather brief language, refers to maintenance welding in sugar mills and "new contributions" in welding technology in the industry. As examples of maintenance welding applications, on page 26 there is reference to grinder rolls with brief text and two drawings, one drawing showing a ridge profile and the other a schematic representation of 8 weld layers or elements on the ridge. A photograph on page 26 shows a grinding roll meeting the integers (a) and (b) of the claim. A table on page 28 appears to provide a key to the 8 weld layers of the one drawing although there is no description to that effect (the exhibited material includes no page 27 although Mr de Jonge confirmed that this was an advertisement page only). The ridge profile drawing shows a roll ridge with a 7mm wide upper land and 1mm deep side rebates on either side of the ridge adjacent the upper land. The upper land and side rebates in my view meet integer (c) of the claim. As to integers (d) and (e), each of the land or side rebates is depicted as having at least two weld "layers" on them, which thus constitutes "a plurality of layers of weld" as in integer (e).
As to whether the Sugar y Azucar article discloses "layers of weld supporting therein a wear resistant material", Mr de Jonge submitted that the article indicated that the layers were formed of chromium carbide hardfacing alloy. He added that "Chromium carbide hardfacing alloy consists of particles of chromium or FeCr in a weld matrix. Therefore, chromium carbide hardfacing is a weld which supports therein a wear resistant material". No reference was made to any specific evidence which clearly supported this conclusion. Mr Hess disputed that FeCCr alloy met the requirement of the definition in claim 1, submitting that it was an alloy formed as a continuous phase and thus did not form a weld layer supporting therein a wear resistant material.
The evidence before me from declarants in this matter is rather limited about the nature of chromium carbide weld. Timothy Falkenhagen in evidence (see clause 3.5 in response to SRI's notice) in referring to a chromium carbide weld states:
" … The chromium carbide alloy is an alloy only and cannot be fairly described as a weld supporting therein a wear resistant material. … Chromium carbide does not form as a discontinuous phase in a weld matrix but rather forms as an alloy. However, tungsten carbide, on the other hand, can be included in a composite weld in which the chips of tungsten carbide are supported in a matrix of a mild steel or stainless steel with the mild steel or stainless steel being allowed to wear thereby exposing the tungsten carbide to give grip to the roller. …"
Mr Blight provides only a brief reference of note in paragraph 25. He refers to exhibit GRB8, being copies of pages from various documents, and to
" … the welding consumables manual by CIGWELD showing a hardfacing product called Cobalarc CR70 which is a tough chromium carbide (that is containing abrasion resistant particles) for hardfacing mild steel and cast iron. The listed use is on sugar rolls."
Mr de Jonge did not disagree with Timothy Falkenhagen's comments about tungsten carbide particles in a composite weld, and acknowledged that because such particles did not totally dissolve into the molten weld pool this was a distinguishing difference between tungsten carbide hardfacing alloys and chromium carbide hardfacing alloys. Nevertheless his submission was that a weld of chromium carbide met the definition of claim integer (e). Thus the issue that remains is whether chromium carbide alone as a weld meets the definition of the claim, that is, following my earlier interpretation, whether some wear resistant material is identifiable and thus can be taken to be supported by or within such a weld.
The only other material to assist me on this issue is exhibit GRB4 which is a copy of an AWRA Technical Note 4 entitled "Hardfacing" published by the Australian Welding Research Association. This document indicates it was reprinted in 1988 and the particular copy was made from one received in August 1995. The technical note indicates that it is intended to provide guidance and information to workers in the welding industry. This document lists and describes Hardfacing alloy types that can be formed by welding. About the "2XXX Chromium White Irons" on page 27 it states that "… Structurally, the materials comprise chromium carbide Cr7 C3 and a matrix alloy containing around 10% chromium." As for specific alloys under this group the description includes the following:
"21XX AUSTENITIC IRONS contain fine (Cr, Fe)7 C3 carbides in an eutectic structure, the matrix of which is essentially an austenitic stainless steel. The presence of the carbides gives the iron greater hardness than the corresponding steel, thus increasing abrasion resistance. … "
"23XX AUSTENITIC CHROMIUM CARBIDE IRONS are irons with a primary phase of spine-like needles of chromium carbide (Cr, Fe)7 C3 surrounded by a eutectic formed between a carbide of higher iron content and austenite. … The high percentage of hard carbides and tough matrix combine to make the materials suited to coarse abrasion at medium loads. … "
This text, prepared for a welding industry body, suggests the presence in a chromium carbide weld hardfacing alloy of particles of carbides. That being the case I conclude that the Sugar y Azucar disclosure does disclose integer (e) of claim 1 within my interpretation of that integer. Accordingly the invention defined by claim 1 lacks novelty. Claim 2 is also disclosed. Whilst the citation discloses a crushing roll of "gray cast iron" it does not disclose the use of a first layer of stainless steel weld as in claim 3 and hence claim 3 is novel.
Inventive step
Both SRI and Bundaberg Foundry assert that the invention lacks an inventive step. It follows from subsections 7(2) and 7(3) of the Act that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:
(a) the common general knowledge existing in the art before the priority date considered alone; or
(b) the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information from the document or act as relevant to work in the relevant art in the patent area.
Schedule 1 to the Act provides a definition of "prior art base".
It is crucial to any determination of whether a claimed invention lacks an inventive step to determine the common general knowledge in the art in the patent area before the priority date. As to what constitutes common general knowledge, Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253 remarked about common general knowledge in these terms at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge."
Mr de Jonge submitted that the following procedures would have been common general knowledge before the priority date:
1. Hard facing in the field of welding.
2. The application of multiple layers of weld to build up a substrate.
3. That different types of hard facing materials are known and available for choosing as particularly needed.
4. That tungsten carbide as chips can be added to a molten weld to improve wear resistant characteristics of a weld.
5. That items subject to wear and tear are hard faced.
6. That layers of weld have been applied to sugar mill rollers to improve the grip of the rollers.
To support his submission that these formed part of the common general knowledge Mr de Jonge referred to 11 items, all but two being attachments from the SRI material, one being exhibit GRB4 from Blight and the remaining item being paragraph 5 from Blatstone's declaration.
It is well to remember that the common general knowledge is that of a skilled person in the particular art in question. For the present invention it seems that the skilled person would be someone familiar with sugar roller fabrication and rejuvenation such as an engineer or welding engineer. The person would possess knowledge of roller operating conditions and rejuvenation options. It is the common general knowledge possessed by such a person which is of relevance.
Blatstone appears to qualify as a person skilled in the art having been involved in research and construction of mill equipment. In paragraph 5 he merely indicates that rollers having features equating to integers (a) and (b) of claim 1 and being formed of cast iron were "well known in Australia well before 1997". In paragraph 6 he says that it was "well known in Australia before 10 February 1997 to apply weld material to a cast iron roller". He says nothing more about "well known" matters or the common general knowledge in the art. At best his statements about what matters were "well known in Australia" may amount to matters forming part of the common general knowledge.
Blight also appears to qualify as a person skilled in the art having had extensive welding and engineering experience and involvement with sugar mill roller equipment. In paragraphs 23 to 25 he refers to particular exhibits which he says show that
· butter layers of stainless steel before applying hardfacing on mill rolls,
· mild steel wires as a weld wire for hard surfacing mill rolls, and
· hardfacing of mill rolls
were "well known". In paragraph 21 he refers to exhibit GRB4 as showing that hardfacing of a range of articles and hardfacing using wear resistant material were "well known". I note that Blight does not say what in his opinion was well known to him or a part of the common general knowledge before the priority date.
Regarding the various attachments of the SRI material referred to by Mr de Jonge to support his submissions about the common general knowledge, many of these are associated with welding products, methods or standards. The SRI notice includes no evidence to establish the availability in Australia of the documents or materials forming the attachments, or whether the documents or materials or particular information therein formed part of the common general knowledge in the art. In submissions, while referring to paragraphs of Timothy Falkenhagen's declaration to the SRI material where he mentioned certain of SRI's attachments, Mr de Jonge remarked at various points that "this attachment demonstrates the common general knowledge in Australia", but there is no relevant evidence to support such statements.
The procedures to which Mr de Jonge referred as being common general knowledge do not seem to be such as to be unlikely with regard to a skilled person in the present art. If some of the documents before me, being either text book extracts or trade material associated with welding technology, properly represent material widely available and consulted by the welding industry, then Mr de Jonge's procedures 1 to 5 may well qualify as common general knowledge. As to procedure 6, there are indications in some documents before me, such as in Exhibits GRB 1, 5 and 6, to suggest that the procedure of applying welds to mill rollers to improve grip may also have been common general knowledge before the priority date. It also seems from material before me that mill rollers of the type having features equating with integers (a) and (b) of claim 1 and being formed of cast iron (see for example Blatstone), along with a practice of applying weld materials to the ridges of mill rollers such as to a flat at the peak of the ridges, may also have been matters of common general knowledge before the priority date. As I indicated earlier in this decision, there was no dispute between the parties that the form of mill roller with integers (a) and (b) was common in the industry including at the priority date. I note that Mr de Jonge's submission did not embrace whether any individual aspects concerning integers (c) to (e) may have formed part of the common general knowledge.
Both SRI and Bundaberg Foundry allege the invention lacks an inventive step and thus each party carries the onus to establish the basis for its claim. However in my view, given the material before me, they have failed to adequately discharge that onus in two respects. Firstly, they provide no or inadequate evidence from which the common general knowledge in the art before the priority date can be determined. The various attachments and exhibits provided by SRI and Bundaberg Foundry provide disclosures relating to many distinct matters, but in the absence of evidence from those skilled in the art, the standing of those disclosures as to being part of the common general knowledge is unproven and thus very doubtful. Secondly, there is no evidence to establish whether the disclosures or information in selected attachments or exhibits qualify as the kinds of information mentioned in s.7(3) of the Act, that is being "information that the skilled person mentioned in subsection (2) could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area." On this latter issue Mr de Jonge put forward no less than 27 distinct diverse documents from the attachments of the SRI material or exhibits from Bundaberg Foundry's evidence to allege that information from those documents individually taken together with elements of the common general knowledge gave rise to a lack of inventive step. The inadequacy of that claim is immediately apparent in the absence of the types of evidence I have mentioned.
In the result I am not satisfied that relevant evidence and materials have been placed before me by SRI and Bundaberg Foundry upon which I can legitimately consider whether the invention would have been obvious. It is not appropriate for me to speculate on what may have formed part of the common general knowledge, or on what information could properly qualify for consideration under s.7(3) of the Act. Furthermore any conclusions based on any such speculation would not be sound. Accordingly I am unable to consider the matter further. SRI and Bundaberg Foundry have not made out a case of obviousness.
Manner of manufacture
Although the notice by Bundaberg Foundry refers to the invalidity ground of lack of patentable invention under s.18(1)(a) of the Act, no submissions were presented by Mr de Jonge in support of this ground. In reviewing the specification, there is nothing to suggest that on its face the claimed invention lacks inventiveness. Thus I have no basis on which to conclude adversely against the application on this ground and dismiss this ground of invalidity.
Entitlement
Both SRI and Bundaberg Foundry assert in their notices that the patentee was not entitled to be granted the petty patent. This stemmed from questions about the inventorship of the invention. As Mr de Jonge put it in submissions, "there is considerable doubt that the named inventor is the, or the only inventor in respect of the invention". He submitted that Ben Azzopardi made a material contribution to the invention since it was open to find from the evidence that he had been significantly involved in the design of the "stepped profile" for the ridges which appears to be part of the invention of the patentee.
The assertions about inventorship derive from the SRI material only. Although Bundaberg Foundry's declarants Batstone and Blight refer to what appears to be development work for Bundaberg Foundry regarding mill rollers and some involvement in that work by Timothy Falkenhagen in June 1996, their evidence at best goes to novelty issues by way of possible prior use, not to claims of inventorship. As it eventuated, no lack of novelty assertion was pursued at the hearing based on these matters and the submissions on inventorship did not draw on the Bundaberg Foundry material.
In deciding the question of entitlement, the issue can be considered from the viewpoint of whether a person, either solely or jointly with others, made a contribution which had a material effect on the final concept of the invention (see for example Row Weeder v Nielsen 39 IPR 400). The onus of proof in matters such as this rests with the parties questioning the entitlement. The standard of proof required is the normal standard of proof required in civil litigation, that is the balance of probability (see Dunlop Holdings Ltd's Application [1979] RPC 523).
The relevant invention associated with the granted petty patent which needs to be considered in regard to entitlement is the invention as claimed - so much appears clear from the reference to "petty patent" in s.28(1) and the provisions of s.33(2). The integers of the claim as previously interpreted need to be kept in mind when considering the basis for entitlement other than by the patentee. Thus, for example, it is not relevant to consider the claimed invention solely in terms of the ridge capping being layers of weld having embedded tungsten carbide grits since that is not the invention claimed.
The inventorship assertion argued by Mr de Jonge is primarily based on attachment 16 of the SRI material. This contains two statutory declarations, one being by Ben Azzopardi the other being by Denis Kenny. Both declarants were employed at South Johnstone Mill Limited ("SJM") over the period 1981 to at least January 1998, Kenny as Chief Engineer and Azzopardi as Second Engineer. SJM is a sugar mill in Queensland. In submissions Mr de Jonge also drew on other attachments of the SRI material to support the inventorship claim. Apart from the declarations mentioned the SRI material included no further declaratory material.
Essentially Mr de Jonge submitted it was input from Azzopardi with regard to profiling the roll ridges which provided a material contribution to the invention and created a claim to inventorship for Azzopardi. In particular Azzopardi is said to have provided the idea of a double stepped ridge profile (as is shown in fig 1 of the petty patent). It is necessary to refer to the evidence of Kenny and Azzopardi. This evidence concerns events surrounding a trial involving hardfacing of a mill roller undertaken by Timothy Falkenhagen at SJM.
Kenny says that in 1996 the sugar industry provided funding to the SRI to investigate various options for reducing costs and extending roll roughening life on mill rollers. As a result of the research SRI approached SJM to allow a trial of an experimental welding process at the mill. He says when this was agreed he and Azzopardi had discussions with Sander Kroes from SRI and Timothy Falkenhagen of Abrasion Resistant Materials Pty Ltd ("ARM"). He then says:
"We took him [Timothy Falkenhagen] into the mill to explain the present methods of applying roller welding, including modifications to the machining of mill roll grooves. Ben Azzopardi had been using the attached modified roller grooving design from mid 1995 which is well prior to our meeting with Tim Falkenhagen, to enhance the performance of our roll welding. … The attached sketches were prepared by Ben Azzopardi prior to our discussions with Sander. Sketch A shows the standard roll grooving Sketches B & C show Ben Azzopardi's modified roll grooving design. He had been experimenting with roll profiles and various roughness techniques since 1982 … The above sketches done by Ben Azzopardi depicted the standard machining profile used by SJM on mill rolls after many years of experimentation."
Kenny concludes his declaration with an expression of dismay that "modifications to roller grooving which were pioneered and proven by Ben Azzopardi at [SJM], are being claimed as part of an (sic) patent application for roller welding."
Although the Kenny declaration refers to the "attached sketches", no sketches are attached. Mr de Jonge submitted that on the balance of probabilities the sketches mentioned equated with sketches referred to by Azzopardi.
Ben Azzopardi says he has read the Kenny declaration regarding roller grooving techniques and agrees with "all the comments made therein". His declaration has two attachments identified as A and B. About these he says this:
"The attached drawings in Attachment A were prepared by myself while employed at SJM and show the modified roll grooving which was in use from mid 1995 onwards. The profile labelled A shows the tooth profile as received from the shell manufacturer. The profile labeled (sic) B shows the tooth profile as modified by SJM on the new re-shell and the profile labelled C shows the tooth profile as modified by SJM after the roll had been re-grooved."
The mentioned tooth (or ridge) profiles are not otherwise described by Azzopardi. The drawings provided represent profile A as triangular with a small flat at the apex. Profile B is a triangular profile similar to A with what appears as lands or rebates of shallow depth extending a short distance down from the apex on each side. Profile C is a triangular profile similar to B but with what appears as lands of slightly greater depth extending a short distance down from the apex on each side so reducing the overall ridge height somewhat compared to that of B. Each of the profiles B and C show what I take as a representation of weld deposited so as to fill the lands and thus cover the apex of the ridge thereby showing the ridge profiles overall as similar to the profile A.
Azzopardi further states that "Timothy Falkenhagen told us to machine the roll to his profile using a special tool … This profile was flat with a peak in the centre as shown below." The sketch shown (in the body of the declaration) is similar to the single square stepped machined ridge profile in fig 4 of the petty patent. Azzopardi then mentions some problems arising from Timothy Falkenhagen applying hardfacing to this profile. He then says:
"To overcome Timothy Falkenhagen's problems I firstly explained to him in detail the SJM grooving technology for hardfacing using the stepped profiles which I had developed previously. Then I convinced him to use a double stepped profile which I had also used previously as I thought it would be better for the type of hardfacing that he was trialing. I machined a few teeth for him in this way to put him back on track. …
…
When Tim started to have success in applying his hardfacing using my groove profile he pushed me aside. He then did all the application in secrecy in a makeshift room. … "
Azzopardi then refers to dealings with Kroes from SRI. He states:
"Sander Kroes from SRI phoned me to find out what was going on because apparently Tim would not communicate with him. I sent Sander some rough sketches (shown in Attachment B which were prepared by myself at the time of these trials) of my double step profile with the welds on them (sketch 1), and also the straight flat which we first tried after his design failed (sketch 2) and of Tim's original profile which was no good (sketch 3), and discussed verbally with him the problem we were having.
I consider the fact that I sent Sander the sketches as proof that I helped Tim as he would not allow the mill staff to see the application of the hardfacing. …"
Also included within the body of Azzopardi's declaration is a sketch said to be the "SJM profile which was finally used for the project". It shows a double square step profile similar to the machined ridge profile in fig 1 of the petty patent. As to the sketches of Attachment B to Azzopardi's declaration, sketch 1 depicts a double square step ridge profile, sketch 2 a profile as in profile A of his Attachment A, and sketch 3 a single square step ridge profile.
The evidence of Kenny and Azzopardi provides no details as to precise dates or periods in which the various activities they describe took place. The timing is important because the petty patent claims priority from provisional patent applications filed on 10 February 1997 and 30 April 1997. The timing is also important to an understanding of how Kenny and Azzopardi saw the sequence of events surrounding the preparation for the trial. In submissions Mr de Jonge referred to various attachments to the SRI material which indicate some dated events. In particular he referred to attachment 25 which contains 9 document items marked 25a to 25i. There is no evidence from the apparent authors or recipients of these documents verifying their accuracy or existence on the dates shown or otherwise explaining their contents. It is open for me to conclude, which I do, that these documents were generated or transmitted on the dates on them but noting that item 25e, as acknowledged at the hearing, is in error in bearing a handwritten date of 1996 for a meeting rather than 1997. Following are brief details of these items:
· Item 25b, dated 27 September 1996, is a fax message to ARM from Kroes at SRI in which the possibility of ARM doing some trial work on mill rollers as part of a current project is mentioned. The fax seems to be in reply to a request from ARM for factory trials for its "surface consisting of Tungsten Carbide chips on a SG iron roller". ARM seem to have replied to Kroes on 30 September 1996 with some general details (item 25c).
· Item 25d is a fax message to ARM from Kroes dated 13 February 1997 seemingly about an impending factory trial involving ARM at SJM.
· Item 25e includes rough notes seemingly made at the time of a meeting on 19 February 1997 involving Kenny, Falkenhagen and Kroes regarding the impending trial.
· Item 25g dated 18 April 1997 is a fax from Azzopardi to Kroes at SRI including a sheet with sketches on it, the sketches being identical to the sketches in Azzopardi's evidence as Attachment B.
· Items 25h and 25i are faxes from ARM to SRI on 24 and 21 March 1997 respectively regarding the trials. In item 25i Timothy Falkenhagen refers to the trial to be done on 14-18 April and that he is "sending up the new profile for the roller teeth to be machined to today."
Timothy Falkenhagen in evidence disputes much of SRI's assertions and Azzopardi's recollection of events and processes concerning the trial. In paragraph 3.3 he indicates his version of events at the time of the trial from 14 April 1997. He refers to the machining of some eight teeth (or ridges) of a mill roller with a special tool (double square stepped profile) before the tool was broken, and then of machining other teeth using a mill lathe tool to give different profiles. He also refers to the welding process and its setup. In paragraph 3.28 Falkenhagen says that "the sketches attached to or incorporated into the body of BA's [Azzopardi's] declaration … except for attachment "A", are versions of the machining and weld profiles which BA thought that I had tried and which he reported to SRI." He refers to his exhibit TSF-2.11, being a copy of a diary page of 17 April 1997, on which he says is shown machining and welding profiles he provided on the teeth of the trial mill roller.
Falkenhagen also doubts that profiles other than in Azzopardi's Attachment A had been used at SJM before his trial since no evidence of engineering drawings relating to any such profiles have been provided. In paragraph 3.31 he disputes Azzopardi's statements about events leading up to the trial. He says Azzopardi sent him a fax on 5 March 1997 saying he (Azzopardi) had already machined the roll. Falkenhagen says this meant machining according to the standard SJM tooth profile (as per profiles B or C of Attachment A), and he replied on 6 March 1997 saying that the teeth would need to be machined to a new profile amounting to a "light touch up of the existing profile" using a new tool he was getting made. The fax included a copy of an engineering drawing apparently dated 1 March 1997 and drawn by Ben Falkenhagen which shows the profile to be machined - it is a double square stepped profile as in fig 1 of the petty patent specification. Copies of these faxes are exhibited as TSF-2.12. Finally in paragraph 3.32 Falkenhagen disputes that Azzopardi was at the meeting he had with Kroes and Kenny on 19 February 1997, and that he was shown stepped profiles for mill teeth at that time other than the standard SJM profile as mentioned above.
David McDonald in evidence filed for the patentee states that he assisted Falkenhagen at the trial. In his evidence he disputes evidence of Kenny and Azzopardi regarding events concerning the trial. In paragraph 12 he particularly disputes Azzopardi's statements about machining teeth on the roller and of other matters at the time of the trial.
Mr Hess drew attention to the issues of difference surrounding the preparations for the trial between the evidence of the declarants for SRI and the patentee. He noted that the case put by Mr de Jonge was that there was considerable doubt that Timothy Falkenhagen was the sole inventor, but he submitted that if the conclusion was only that there was doubt, then that was not sufficient to rule against the patentee. He submitted that if there was a clash of evidence, in the absence of cross examination the patentee should get the benefit. But he said that in any event there was objective material in this matter which was against the SRI position as urged concerning Azzopardi being a contributor.
The ridge profiles shown in Attachment A of Azzopardi's declaration do not correspond to any profile in the drawings to the petty patent specification. Profiles B and C are somewhat similar to the profile in the Sugar y Azucar publication discussed for novelty - the side lands or rebates leave the sides of the ridge adjacent the lands sloping parallel to the non-rebated portion of the ridge. The profiles in the patent specification depict essentially square stepped profiles at the top of a ridge after machining. There is no material from beyond Azzopardi's declaration that establishes that any square stepped profile had been proposed or used at SJM before February 1997 or the commencement of the trial. Thus it is difficult to conclude that either the single or double square stepped profiles were the "SJM profile" or a profile proposed by Azzopardi.
There is conflict between the evidence of Azzopardi and that of Falkenhagen and McDonald with regard to events surrounding the trial. If Azzopardi's declaration relays events in the proper time sequence then, in view of what Azzopardi says, those events were these: Falkenhagen "told us to machine the roll to his profile using a special tool" (with a single square step profile according to Azzopardi's declaration), the tool burnt out after a few teeth, Falkenhagen's hardfacing attempts on this profile caused problems, and then some different machining was done but the hardfacing was still a problem. He then says he explained the SJM grooving technology using "the stepped profiles which I had developed previously" and machined a few teeth for him to put him back on track. This sequence implies that a single square step profile was first prepared to which hardfacing was placed, then later a double square step profile was used. Falkenhagen's evidence in contrast is that Azzopardi had prepared a roll with the standard SJM profile (profile B or C) in preparation for the trial and before he had arrived at the mill, but on hearing of this he had then indicated to Azzopardi that a double square step profile needed to be machined. After arriving at SJM to commence the trial he, Falkenhagen, used the double square step profile tool but it broke after 8 teeth, and then he prepared other profiles for the remaining teeth on the roll. McDonald's evidence supports that of Falkenhagen. Given the differences in the accounts of the machining preparations for the trial I am not inclined to clearly favour that advanced for SRI in this matter over that for the patentee. Thus, in my view, the evidence does not establish that Azzopardi materially contributed to the ridge profiling in relation to the trial or the invention.
Whilst denying that Azzopardi made a contribution at all, Mr Hess also submitted that if the claim is that Azzopardi's contribution equates with "stepped profile" then that was a profile in the public domain before the invention and was not a contribution at all. He added there was no claim that Azzopardi made a contribution to any other aspects of the claimed invention, such as the ridge capping aspect.
Whilst the claimed invention of claim 1 requires one or more land portions on a ridge, it is not limited to a specific form of such portions. Thus I agree with Mr Hess that as land portions were known before the invention, such as from the Sugar y Azucar journal and seemingly from practices at SJM, that such integer of non limiting form could hardly justify of itself a claim by a person of a contribution to inventorship of the invention. Apart from that aspect of the invention, there is no evidence that any person other than Timothy Falkenhagen may have contributed to the idea of the ridge capping as the invention requires. Consequently I am not satisfied from the evidence before me that the patentee was not entitled to be granted the patent as alleged. This ground of invalidity thus fails.
In arriving at my conclusion on entitlement I have not seen it necessary to have any detailed regard to the documents filed by the patentee as further evidence. These documents discuss the results of the SJM trial and other trials but do not provide information to clearly assist in the issue of entitlement of the present invention.
Costs
The usual practice is that costs should follow the event. As I have found the ground of lack of novelty established, costs should then go against the patentee. Although Mr de Jonge submitted that a penalty should apply against the patentee for actions leading to delay to the hearing date, such as by requesting documents by subpoena, I do not believe the points advanced justify any variation from the scale of costs specified in Schedule 8 of the Patents Regulations 1991. Accordingly I award costs in this matter against the patentee The Track Shop Pty Ltd and in favour of Sugar Research Institute and Bundaberg Foundry Engineers Limited. The relevant costs awarded are in accordance with Schedule 8 of the Patents Regulations 1991.
CONCLUSION
I have found that the invention defined by claims 1 and 2 lacks novelty. No other ground of invalidity as alleged in the s.28 notices has been established.
Given the provisions of s.69(4) of the Act, the Commissioner must not refuse to grant an extension of term of a petty patent that the Commissioner is satisfied is invalid without, where appropriate, giving the patentee a reasonable opportunity to amend the complete specification for the purpose of removing the ground of invalidity. Accordingly I allow the patentee 60 days from the date of this decision in which to file a request to amend the patent specification for the purpose of removing the ground of invalidity that I have found. In the absence of such a request being filed I will formally refuse to grant an extension of term.
I have awarded costs against the patentee The Track Shop Pty Ltd in favour of Sugar Research Institute and Bundaberg Foundry Engineers Limited.
Trevor Bruhn
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Ahearn Fox, Brisbane
Patent attorneys for Bundaberg Foundry Engineers Limited : Cullen & Co, Brisbane
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