Tippins Incorporated v Voest-Alpine Industrieanlagenbau GmbH
[2000] APO 5
•7 January 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 676122 in the name of TIPPINS INCORPORATED
Title: Intermediate Thickness and Multiple Furnace Process Line with Slab Storage and Slab Sequencing
Action: Opposition under s.59 of the Patents Act 1990 by VOEST-ALPINE INDUSTRIEANLAGENBAU GmbH
Decision: Issued .
Abstract
The claims were found to be novel in the light of the present applicant's earlier patent application.
The person skilled in the art was found to be a (or more than one) person who would have both technical and economic knowledge in the steel industry. It was found that, even though a particular declarant did not have hands-on experience in the industry, the evidence provided by that person could not be dismissed.
References to earlier patent specifications were found not to provide sufficient support to establish an element of common general knowledge.
A Japanese journal article established as being locatable in a German university library was found not to be a document that a person skilled in the art in Australia could have been expected to ascertain for the purposes of establishing lack of inventive step.
The ground of lack of inventive step was found not to be established.
The ground of lack of manner of manufacture was not established. Even though the various components may have been known, the combination of these components had a working interrelationship which produced a new result.
The application was directed to sealing.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 676122 by Tippins Incorporated and opposition under s.59 of the Patents Act 1990 by Voest-Alpine Industrieanlagenbau GmbH
BACKGROUND
Patent application 676122 was filed on 5 January 1996 by Tippins Incorporated (hereinafter Tippins) as a convention application numbered 40839/96 claiming priority from three US basic documents all of which were filed in the US on 11 January 1995. On 27 February 1997, the application was advertised as accepted.
On 27 May 1997, Voest-Alpine Industrieanlagenbau GmbH (hereinafter Voest) filed a notice of opposition to the grant of a patent on application 676122. It served a statement of grounds and particulars on 27 August 1997 and completed service of its evidence in support by 26 February 1998.
After receiving an extension of time to serve evidence in answer, Tippins filed a request for leave to amend the complete specification under s.104 on 26 August 1998. On 26 March 1999, both parties were notified that the statement of proposed amendments had been allowed.
Service of the evidence in answer was completed by 26 August 1998.
Service of the evidence in reply was completed by 21 May 1999.
The opposition was heard in Canberra on 1 September 1999. Tippins was represented by Mr Greg Gurr, patent attorney of Spruson & Ferguson, Sydney. Voest was represented by Ms Janelle Borham, assisted by Mr Nick Mountford, both patent attorneys of Griffith Hack, Melbourne.
THE SPECIFICATION
Both parties at the hearing agreed that the specification I should consider is the specification, as amended by the amendments allowed on 26 March 1999. This specification identifies the field of the invention as being the continuous casting and rolling of slabs and, more particularly, to an integrated intermediate thickness caster and a hot reversing mill with flexibility in slab sourcing, sequencing and storage with the ability to roll thin gauge products.
The specification provides a detailed description of the background art. Some of the details provided in the specification in relation to the prior art include:
Since the introduction of continuous casting, attempts have been made to combine the continuous caster with hot strip mills in an inline arrangement to maximise production and minimise the equipment and capital investment needed.
Initial attempts have used thick slab continuous casters with hot strip mills. Thick slab casters produce slabs between about 15 and 25cm. These arrangements require high capital costs and are extremely inflexible with respect to product mix. It is unlikely, because of this, that such hot strip mills will ever be built in the future.
To overcome the problems associated with thick slab continuous hot strip mills, thin slab continuous hot strip mills have been developed. These mills use thin slab casters producing slabs of the order of 5cm or less. However, because of the thinness of the slab, one of the major drawbacks of these mills is that the casters have to cast at high speeds to prevent the metal from freezing. Therefore, the tunnel furnace just downstream of the caster has to be extremely long to cater for the speed of the slab. Another problem with using thin slabs is that it is difficult for the slabs of certain low carbon steels to retain enough heat to be rolled successfully to the required gauge of for example 0.1cm. This temperature decay also means that the thin slabs are adversely affected by high-pressure water normally used to break up scale which forms on the slabs.
Other problems associated with combining slab casters with hot rolling mills include the inability to decouple the casting and rolling of the slabs in such combinations. This means that a breakdown anywhere in the process means that the entire line must be stopped. One way of overcoming this is to transfer a cast slab to a slab storage area. However, this means that when the mill is brought back on line, the slabs have to be re-heated to bring them back to an appropriate rolling temperature. To overcome this, slabs have been stored in a heating furnace or in an insulated chamber. However, such solutions have problems with the space required and the capital expense involved.
The specification indicates that the object of the present invention is to “overcome or substantially ameliorate the above disadvantages”. This is done by combining an intermediate slab caster with a hot reversing mill. The specification describes the inventive arrangement in a consistory statement which is the same as claim 1. The specification indicates that the slabs are preferably between 7.6 and 15.2cm thick. It is stated that “as used herein, the term intermediate thickness is generally intended to define such slabs, although in certain speciality steels such as stainless steel intermediate thickness slabs may extend to about 8 inches (about 203mm)”.
The specification identifies a number of different embodiments of the invention.
The preferred form of the invention is described and there are five “examples” provided. However, these examples appear to be merely a series of rolling schedules rather than different examples of the combination of the intermediate slab caster and hot reversing mill.
There are 11 claims. Claims 1 and 5 are independent claims. Claims 9 and 10 are omnibus claims referring back to certain of the drawings. Claim 11 is an omnibus claim referring to any one of the examples.
Claims 1 and 5 are as follows:
1. An intermediate thickness slab caster and inline hot strip and plate line comprising:
a) a continuous slab caster means for forming an intermediate thickness strand;
b) an inline cutoff downstream of said caster means for cutting said strand to a slab of a desired length;
c) a slab storage and sequencing means downstream of said inline cutoff for selectively storing and sequencing selected slabs;
d) at least one reheat furnace positioned downstream of said slab sequencing means, wherein said slab storage and sequencing means is adapted to selectively bypass said at least one reheat furnace with selected slabs;e) a feed and run back table positioned at an exit end of said at least one reheat furnace;
f) a hot reversing mill means inline with said feed and run back table for reducing said slab exiting the reheat furnace to an intermediate product of a thickness sufficient for coiling; and
g) a pair of coiler furnaces, one located upstream of said hot reversing mill means and the other located downstream, said coiler furnaces capable of receiving and paying out said intermediate product as it is passed between the coiler furnaces and through said hot reversing mill means so as to be reduced to an end product thickness.
5. A method of processing metal slabs comprising the steps of:
a) continuously casting an intermediate thickness strand;
b) cutting said strand into a plurality of stabs (sic) of predetermined lengths;
c) selectively feeding each said slab to either
(i) a continuous processing line including a hot reversing mill having a coiler furnace on each of an upstream and downstream side thereof, or
(ii) an inline heating furnace from which said slab exits to said continuous processing line, or
(ii) a slab storing area and subsequently transferring said slab to said inline heating furnace;
d) flat passing said slab to be worked back and forth through said hot reversing mill to form an intermediate product of a thickness sufficient for coiling;
e) coiling said intermediate product in one of said coiler furnaces; and
f) passing said coiled intermediate product back and forth through said hot reversing mill to reduce said coiled intermediate product to an end product of desired thickness, said intermediate product being collected in and fed out of each of said coiler furnace on each passes (sic) through said hot reversing mill.
THE STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars lists four grounds of opposition viz. lack of manner of manufacture, lack of novelty, lack of inventive step and non-compliance with section 40.
The particulars in relation to lack of manner of manufacture briefly refer to disclosures in the present specification, the prior art listed in relation to lack of novelty and the alleged common general knowledge.
The corresponding particulars for lack of novelty list 15 documents including a number of journal articles and a number of patent specifications.
The particulars in relation to lack of inventive step identify alleged aspects of common general knowledge existing in the art in Australia before the earliest priority date of the presently opposed claims. These alleged aspects of common general knowledge include:
Continuous casting machines and their use in conjunction with rolling plants were well known as well as the various advantages and disadvantages of casting strips of different thicknesses.
Different types of rolling plants such as continuous and reversing rolling plants were known.
Coupling continuous casting machines directly to rolling means was well known. It was also known that slabs already cast when the rolling mill was stopped could be transferred to a storage area and that a reheat furnace could be used.
It was well known that different configurations of steel plants affect the production capabilities, capital outlays and efficiencies of the overall plants. Also the different configurations of steel rolling plants used throughout the world were well known.
Each of the documents listed in the particulars associated with lack of novelty either form part of the common general knowledge or are documents of the kind referred to in s.7(3) of the Patents Act 1990.
The particulars in relation to section 40 list a number of alleged defects in the claims. These were not actively pursued at the hearing.
EVIDENCE
The evidence in support consists of three statutory declarations.
David Colin Archibald has made a declaration. Mr Archibald indicates that he currently holds the position of Head of Research at Findlay & Co, Stockbrokers. Mr Archibald states that he has been involved in the analysis of the steel industry since 1989. Mr. Archibald's curriculum vitae indicates that since 1989 he has been involved in the financial analysis of various industries including the steel industry. This analysis has included spreadsheet modelling of BHP, CRA and Comalco. During this time, he has been employed by a number of stockbroking firms. Mr Archibald contends that all the components of the claimed apparatus and method were well known prior to the priority date of the present claims. His declaration exhibits a number of patent specifications and journal articles in support of this contention. Mr Archibald also compares the disclosure of US Patent Specification No. 5276952 by the present applicant with the present claims. He concludes that all of the claims are disclosed in the US specification except for features which were well known at the priority date of the claims. Mr Archibald asserts that therefore the claimed apparatus and method are obvious in the light of US 5276952. He also argues that the claims are obvious in the light of an extract from a technical report and a Japanese patent specification both being provided as exhibits to his declaration.
I note that Mr Archibald's declaration was prepared and served in evidence before the claims were amended.
Cyril Montague Bentley has provided two declarations. Both of these declarations serve to put into evidence various patent specifications and journal articles as well as statutory declarations by various librarians establishing relevant publication dates.
The evidence in answer consists of a statutory declaration by John Thomas Devine.
Mr Devine indicates that he is an industrial consultant to the steel industry. He states that he is a director of two companies. His curriculum vitae indicates that, in the past, he has been employed in various steel product divisions of BHP.
Mr Devine considers each of the various publications referred to in the Archibald declaration. He counters Mr Archibald's suggestion that the present claims are obvious by suggesting that although the various integers of each claim might be able to be identified in various different publications, none of these publications would teach the claimed arrangements.
The evidence in reply consists of a further declaration by Mr Archibald. In this declaration, Mr Archibald argues that the reasons provided by Mr Devine for contending that it would not be obvious to combine various known components are of an economic rather than technical nature. Mr Archibald contends that there are no technical reasons why different types of mills cannot be used with different types of casters. This declaration includes an exhibit which is an extract from a journal. Mr Archibald refers to this extract to support his contention that there was no reason why one particular type of mill could not have replaced another type of mill.
SUBMISSIONS
Both parties provided me with written summaries of their oral submissions at the hearing.
I will refer to relevant submissions where appropriate in my decision.
DECISION
At the hearing, Ms Borham, for the opponent directed her submissions to three grounds of opposition viz. lack of novelty, lack of inventive step and lack of manner of manufacture. While the statement of grounds and particulars also identifies some alleged section 40 defects, Ms Borham did not pursue these at the hearing and I will not consider them further apart from saying that they do not appear to have any substance. However, in considering the amended claim 1, I have identified an issue which I need to consider under the provision of non-compliance with section 40. It is appropriate that I do this first before considering the other grounds of opposition.
Section 40
The amended claim 1 refers to a slab storage and sequencing means and the ability of the slab storage and sequencing means to selectively bypass the reheat furnace with selected slabs. The claim defines a feed and run back table at an exit end of the reheat furnace and a hot reversing mill inline with the feed and run back table. The hot reversing mill is defined as reducing said slab exiting the reheat furnace to an intermediate product. A minor concern is that the claim earlier fails to define a particular slab passing through the furnace so that "said slab exiting the reheat furnace" could be argued to be unclear. However, I do not think that this has a major impact on the scope of the claim. What I need to decide is whether the claim identifies what happens to the slabs which bypass the reheat furnace. Since the claim does not explicitly define that these slabs also pass through the hot reversing mill, it is open to conjecture what is their fate.
Mr Gurr, in his submissions, suggested that the slab storage and sequencing means defined in claim 1 can generally be acquainted with the equivalent method feature of paragraph (c) of claim 5. However, claim 5 is worded differently and it is explicitly stated in claim 5 that slabs can proceed directly to the hot reversing mill or to the reheat furnace and then to the reversing mill. This is not the case in claim 1.
Mr Devine in his declaration provides a summary of what he believes is disclosed by the claims. However, he does not identify what claim 1 on its own discloses. He summarises the disclosures of claims 1 and 5. His summary does not explicitly state that the selected slabs which bypass the reheat furnace proceed to the hot reversing mill.
Mr Archibald makes no comment on the amended claim 1 in his second declaration. His first declaration is directed to the claim before the bypassing feature was inserted by amendment.
In attempting to resolve what happens to the slabs which bypass the furnace, I have consulted a number of dictionaries in relation to the meaning of "bypass". The general thrust of the definitions of "bypass" in these various dictionaries is that bypassing means to take a separate route around a particular blockage or object in a path and then to return to the original path after the blockage has been passed. I think it is the last part of these definitions which is the key in the present matter. After bypassing the reheat furnace, the slabs return to the original path downstream of the furnace where they are dealt with in the same manner as those slabs which have passed through the furnace. Therefore I am satisfied that the amended claim 1 adequately defines the bypassing function of the mini-mill in a manner which is consistent with the arrangement described in the body of the specification.
Novelty
Both parties referred me to Meyers Taylor v Vicarr Industries (1977) 137 CLR 228 for an accepted test for determining lack of novelty. In this decision, Aickin J discussed the test for novelty as follows:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
In Rodi Wienenberger AG v Henry Showell [1969] RPC 367 at page 391, infringement of a claim is said to occur when "each and every one of the essential integers" of that claim have been taken.
Thus, in order to decide whether or not the claims lack novelty, I must determine whether or not each and every essential integer of the respective claim is disclosed in the earlier document.
While a number of documents were particularised with respect to the ground of lack of novelty, Ms Borham concentrated on only one of these to support this ground at the hearing. This document is US Patent Specification No. 5276952.
The main thrust of Ms Borham's submissions in relation to US '952 is that the only difference between the arrangement of amended claim 1 and US '952 is the requirement that the reheat furnace can be selectively bypassed. Ms Borham argued that, unlike claim 5, claim 1 does not require that this bypassing be in the form of a physical bypassing of the reheat furnace. To support the argument that US '952 discloses such a feature, Ms Borham argued that the function of a reheat furnace is different from the function of an equalising-type furnace. A reheat furnace is required to provide a greater amount of heat than a temperature equalising furnace. Thus, Ms Borham contended, when the furnace in US '952 functions as a temperature equalising furnace rather than a reheat furnace, slabs passing through the furnace were in effect bypassing the reheat furnace. In effect, Ms Borham is saying that the slabs can bypass the reheating function as compared with bypassing the furnace itself but that this still falls within the scope of the present claim 1. Ms Borham did not argue that claim 5 lacked novelty in the light of US '952.
Mr Gurr argued that a reheat furnace and a temperature equalising furnace were the same thing as both function to reheat the slab in one way or another. He referred to page 16, lines 32-33 of the present specification where "an equalizing or reheat furnace 142" is referred to. He concluded that this supported the view that the two terms "equalizing furnace" and "reheat furnace" are interchangeable. To further support this view, Mr Gurr referred me to the article from Hitachi Review Vol. 39 (1990) No.4 which Mr Archibald referred to in his second declaration. This article refers to a "reheating/equalizing furnace". Mr Gurr argued that this means the two types of furnaces are the same thing. Mr Gurr also disagreed with the comparison between claim 1 and US '952 provided in the Archibald declaration. He argued that the "storage and sequencing means" had been incorrectly interpreted by Mr Archibald as merely being to shuffle the order of the slabs in the processing line whereas the present specification clearly envisaged this means as sequencing the arrangement and order of the processes through which selected slabs pass.
It seems to me that the interpretation placed on the term "bypass" in claim 1 by Ms Borham is a very strained one. If I were to construe this term as suggested by Ms Borham, then I would inevitably have to conclude that claim 1 is not fairly based on the disclosure in the specification. There is no real and reasonably clear disclosure of such a non-physical bypassing of the reheat furnace in the specification. In this respect, I note that the opponent has not raised such a lack of fair basis in relation to claim 1 under the ground of non-compliance with section 40.
I have earlier considered the term "bypass" in the light of a number of dictionary definitions which all suggest that a separate route is taken when bypassing an object. Ms Borham's interpretation would be contrary to this in that the slabs would still pass along the same path.
Mr Archibald, in his declaration served in reply, makes no mention of the term "bypass". I do not believe that, given the field of the invention, the term "bypass" would be taken to mean non-physical bypassing. To persuade me otherwise, the opponent would have needed to provide evidence that a person skilled in the relevant art would have understood "bypass" to mean something other than the physical bypassing of the furnace. There is no such evidence before me.
As a consequence, I do not believe that all the essential integers of claim 1 are disclosed in US '952.
The claims do not lack novelty in the light of US 5276952.
Inventive Step
The Patents Act 1990 refers to the requirements for an invention to have an inventive step in sub-sections 7(2) and (3) as follows:
"(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
This clearly indicates that for a claimed invention to lack an inventive step, the claimed invention would have to be obvious to a person skilled in the relevant art.
The person skilled in the art
There were numerous submissions provided by both parties as to whether or not Mr Archibald, the opponent's chief declarant, could be classed as a person skilled in the relevant art.
Mr Archibald has a background in financial analysis and has been employed by stockbroking firms. He indicates that he has been involved in analysis of the steel industry since 1989 and through this analysis, he has gained detailed knowledge of steel processing and of the equipment used in steel processing.
Ms Borham pointed out that Mr Archibald has presented papers to well known conferences in the steel industry including "Direct Reduction, Direct Smelting and the Future of Further Processing of Iron Ore in Australia" at the "1st Metal Bulletin Iron Ore and its Markets Conference". I observe that I do not have a copy of this journal article but that the title of the conference would suggest that it was dealing with the economic rather than technical aspects of iron ore treatment.
Mr Borham argued that, because construction of steel plants costs a great deal, economic analysis of steel plants is undertaken to determine viability. A person with economic and technical knowledge is an appropriate person skilled in the relevant art.
Mr Gurr submitted that a design engineer working in a steel processing plant would be the person skilled in the relevant art i.e. a person such as Mr Devine, the applicant's declarant. He argued that Mr Archibald was a financial analyst not a skilled technician working in the technical field and therefore he could not be considered to be a person skilled in the relevant art. As a consequence, Mr Gurr suggested that Mr Archibald's evidence should be given little or no weight.
In relation to the ground of lack of inventive step, there are two aspects which flow from determining who is the person skilled in the relevant art. The first is the relevant background knowledge or common general knowledge that the person skilled in the art possesses. The second is the question of whether or not the non-inventive person skilled in the art would consider the claimed invention obvious.
I believe that, in relation to establishing common general knowledge, there are a number of decided cases which suggest that, even though a person providing evidence of such knowledge may not strictly be a person skilled in the relevant art, nevertheless the evidence that they provide in relation to that knowledge may still have probative value.
However, in ultimately deciding the question of whether or not a person skilled in the art would consider the claimed invention obvious, I think that evidence from a person who is not the relevant person skilled in the art, of itself, would not be helpful in deciding the question.
In the present circumstances, I think it is fair to say that the person skilled in the art would, at the very least, have some practical experience in the steel making industry. However, I agree with Ms Borham that the person skilled in the art would also need to have a knowledge of economics.
It is well established law that the person skilled in the art can be a team of people as discussed for example in General Tyre & Rubber Co Ltd v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at 482.
I think that Mr Archibald could not be considered to be a person skilled in the art because he has not established that he has that practical experience I believe would be expected of a person skilled in the art of steel production. Nevertheless, I think it is fair to say that a person with Mr Archibald's knowledge of industrial economics would have been part of the team comprising the person skilled in the art. I also note that Mr Archibald is apparently an independent witness. Therefore I am prepared to place some weight on Mr Archibald's evidence.
Common general knowledge
In determining the extent of the common general knowledge in this matter, I am guided by the judgement of Aickin J. in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited (1980) 144 CLR 253, in which he stated:
"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 the considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The nature of common general knowledge is discussed in General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited (supra) at 482 as follows:
"The common general knowledge imputed to such an addressee must, of course, be carefully distinguished from what in patent law is regarded as public knowledge. This distinction is well explained in Halsbury's Laws of England, Vol. 29, para. 63. As regards patent specifications it is the somewhat artificial (see per Lord Reid in the Technograph case (1971) FSR 188 at 193) concept of patent law that each and every specification, of the last 50 years, however unlikely to be looked at and in whatever language written, is part of the relevant public knowledge if it is resting anywhere in the shelves of the Patent Office. On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee - the sort of man, good at his job, that could be found in real life."
Mr Archibald, in paragraph 27 of his first declaration, asserts that intermediate slab casters were well known concepts before the present priority date. In support of this, he refers to three patent specifications and an article from a German publication.
Reliance on the disclosures in patent specifications to establish the extent of common general knowledge often presents difficulties. In this respect, I note the words in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (supra) at page 294:
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge."
However, it was stated in Minnesota Mining & Manufacturing Co v Beiersdorf ( Australia) Ltd, (supra) at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question."
In the present case there is no evidence that people in the industry would consider disclosures in relevant patent documents as being part of the common general knowledge. As the steel production industry is of such a nature that the number of steel production plants world wide is not large, one could imagine that people in the steel production industry in Australia might be well aware of advances disclosed in patent literature and non-patent literature world-wide. However, I cannot proceed on this assumption as there is no supporting evidence before me by a person skilled in the art that it was routine to consult such documents.
The other document provided in support of Mr Archibald's discussion of the common general knowledge is a translation of an article from a German publication. This article describes a system which is similar to the system in one of the patent documents by the present applicant. There is no evidence that this German publication would have been widely read in Australia particularly as it is written in the German language.
I am therefore left with the unsubstantiated assertions of Mr Archibald on the state of the common general knowledge in relation to intermediate slab casters.
Mr Devine makes no specific comment on the state of the common general knowledge with respect to intermediate slab casters although he acknowledges that intermediate thickness slab casters were known as disclosed in the documents referred to by Mr Archibald.
Ms Borham argued that, if intermediate slab casters were not part of the common general knowledge then the specification insufficiently describes such casters to enable a person skilled in the art to put the invention into effect. However, I do not think this argument is well taken. The specification clearly specifies the dimensions required of an intermediate cast slab. In my view, there doesn't need to be any further discussion in the specification as to how to cast a slab of intermediate dimensions.
Ms Borham also referred to US '952 to suggest that, as it refers to an intermediate thickness slab being executed in the conventional manner, such intermediate casters were conventional and part of the common general knowledge. However, I do not think that the specification specifically states that the casting of intermediate thickness slabs is well known but rather the casting of slabs is well known. In any case, the admission of prior art in a US patent specification, in my opinion, does not establish the extent of common general knowledge in Australia.
In this respect, I do not think that Mr Archibald has provided sufficient evidence to establish that such casters were part of the common general knowledge in Australia particularly as two of the documents (one of which is a patent specification) he has relied on refer to an arrangement developed by the present applicant and the other two documents are European Patent Office patent specifications. Therefore, on the evidence before me, I cannot say that intermediate slab casters were part of the common general knowledge in the art before the present priority date.
Mr Archibald also suggests that all slab casters have an inline cut-off and that all plant configurations known before the present priority date had a reheat furnace and had a feed and run back table where a reversing mill was included. Also hot reversing mills were well known. For example, BHP's hot strip mills in the Australian region were of this type. Steckel mills (hot reversing mills with a pair of coiler furnaces either side) were also extremely well known. It was also common practice to source slabs from other work and to add and remove slabs from the production line.
In support of this, Mr Archibald relies on two more documents, one of which is an extract from a book and the other of which is a journal article. There is no suggestion that these two documents were such as to be so well known in the art that they constituted part of the common general knowledge. Therefore I do not find these documents particularly helpful in deciding the state of the common general knowledge in the art at the relevant date.
However, paragraph 4 of Mr Devine's declaration does, I believe, provide me with some indication of the state of the common general knowledge in this respect:
"The specification and claims of the Tippins application are directed towards specific 'mini mill' configurations. Mini-mills are characterised by relatively low capital costs and typically include a reversing mill, such as a Steckel mill. Mini-mills are in contrast to conventional continuous mills which are characterised by a finishing train of typically four to seven non-reversing mills operated in tandem. The total annual production capabilities (i.e. tonnage) of a mini-mill is less than the annual production of the significantly more capital expensive continuous mill, however, the product mix is greater. The mini-mill and the continuous mill represent two distant (sic) classes in the steel industry."
I think, from this, and from the comments provided by Mr Archibald, that it was well known and part of the common general knowledge that mini-mills included reversing mills such as Steckel mills.
Further, it seems to me that all slab casters would have had an inline cut-off and that all plant configurations known before the present priority date would have had a reheat furnace and a feed and run back table where a reversing mill was included. These features would seem to be well known features of slab casters and reversing mills. Certainly, Mr Devine does not contest this.
I think one of the main areas of contention is whether or not slab storage and sequencing means downstream of the inline cutoff for selectively storing and sequencing selected slabs and for allowing slabs to bypass the reheat furnace were part of the common general knowledge before the priority date of the present claims.
Mr Archibald relies on a number of documents to support his contention that it was well known to bypass a reheat furnace and feed a slab directly to a rolling mill. One of these documents is an article by Kimura et al in Hitachi Review, Vol 37, No 4 entitled "HC-Mill in Hotstrip Plant-Operational Data and Effect". Mr Archibald contends that this article refers to conventional hot rolling mills which allow a furnace to be bypassed. Certainly, Figure 2 of the article shows an arrangement having the facility for slabs to bypass the heating furnace and proceed directly to the rolling mills although Mr Gurr pointed out that the article discloses the need for the slabs to pass through an edge heater before then proceeding to the rolling mills. Although the article refers to "conventional" hot rolling mills, it is not entirely clearly whether this is referring to the rolling mills themselves or the whole arrangement of continuous caster and rolling mills. Mr Gurr suggested that this term refers to the hot rolling mill only. A further difficulty in relying on this article to establish the common general knowledge in Australia is that it is a Japanese journal. Even if the article discloses that the bypassing of the reheat furnace is a conventional arrangement, it is debatable as to whether this is conventional only in the Japanese steel industry.
Although Mr Archibald has exhibited a number of other documents to support his argument, all of these documents are either Japanese journals or Japanese patent specifications. Without any evidence to suggest that a person skilled in the art in Australia would routinely read such journals to the extent that their disclosures would become part of the background art, I am not able to give much weight to these documents in deciding the extent of the common general knowledge.
Mr Devine makes only a cursory reference to the Kimura article and dismisses it because he submits that the arrangement is for a continuous mill rather than a mini-mill configuration. Mr Devine does not indicate whether such arrangements might have formed part of the common general knowledge.
Mr Gurr contended that the documents relied on to support the bypassing feature do not, in fact, disclose a bypassing of a reheat furnace. Mostly they disclose a direct rolling arrangement without specifically referring to the bypassing of a reheat furnace.
I am therefore faced with the assertions on bypassing by Mr Archibald, who I have indicated is not, by himself, a person skilled in the art and the lack of comment by Mr Devine on the state of the common general knowledge.
On balance, I find that the arrangement for direct rolling of slabs in continuous mills was part of the common general knowledge in the art before the priority date. I think that the fact that the feature has been disclosed in various journal articles, albeit originating from Japan, some of which were published in Australia before the present priority date gives some small weight to this conclusion. I think that this direct rolling is meant to include the bypassing of a furnace so that energy savings occur.
In relation to slab storage and sequencing means downstream of the inline cutoff for selectively storing and sequencing selected slabs, Mr Archibald suggests that slab storing means were common to most plants before the present priority date to enable the storage of defective slabs, for example. Mr Archibald has not specifically referred to sequencing means directly. This is because this particular feature was included via amendment subsequent to the serving of evidence in support. I am prepared to accept that slab storage means were well known features of steel mills in general.
Ms Borham submitted that Mr Archibald establishes that slab storage and sequencing means were part of the common general knowledge. However, she refers to passages of Mr Archibald's first declaration which refer only to slab storage means. I do not think that the sequencing aspect has been properly established as being part of the common general knowledge.
In summary, I believe that the state of the common general knowledge in the art before the present priority date was:
Mini-mills included reversing mills such as Steckel mills;
Slab casters had an inline cut-off;
Plant configurations had a reheat furnace and a feed and run back table where a reversing mill was included;
Steel mills in general had slab storage means; and
Continuous mills had arrangement for slabs to bypass some kind of reheat furnace.
Is the claimed invention obvious?
In deciding this question, I propose to consider the problem that the presently claimed arrangement is said to solve.
The present specification indicates that the present invention overcomes the disadvantages of the prior art which include:
Mills with thin slab casters have to cast at high speeds to prevent the metal from freezing. Therefore, the tunnel furnace just downstream of the caster has to be extremely long to cater for the speed of the slab. Another problem with using thin slabs is that it is difficult for the slabs of certain low carbon steels to retain enough heat to be rolled successfully to the required gauge of for example 0.1cm. This temperature decay also means that the thin slabs are adversely affected by high-pressure water normally used to break up scale which forms on the slabs.
Combined slab casters and hot rolling mills are unable to decouple the casting and rolling of the slabs in such combinations. This means that a breakdown anywhere in the process means that the entire line must be stopped. One way of overcoming this is to transfer a cast slab to a slab storage area. However, this means that when the mill is brought back on line, the slabs have to be re-heated to bring them back to an appropriate rolling temperature. To overcome this, slabs have been stored in a heating furnace or in an insulated chamber. However, such solutions have problems with the space required and the capital expense involved.
Ms Borham submitted that the most appropriate way of determining the problem to be solved is along the lines of the European Patent Office approach. This approach considers the closest prior art and then determines the problem solved by the present invention in the light of that closest prior art. In the present situation, Ms Borham argued, the closest prior art is US '952. The only problem the present invention solves over the disclosed arrangement is that some slabs do not need reheating and thus reheating them is inefficient.
I observe, however, that the EPO approach to determining the problem that has been solved by a particular invention is based on the legal requirement for applicants to amend their specifications to include reference to the closest prior art. The problem to be solved is therefore based on information contained in the specification in question. The Australian Patents Act 1990 has no such requirement to include the closest prior art. I think the approach normally taken of determining the problem to be solved from the specification in question is appropriate. Therefore, I think that the presently claimed invention solves the problems with the prior art I have listed above.
Given the above problem, I need to decide:
"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?" (Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331)
Given the common general knowledge I have identified above, I do not think that there is sufficient evidence before me to suggest that the non-inventive person skilled in the art would have considered the introduction of an intermediate slab caster to solve the above problems. Therefore I do not believe that the claimed arrangement lacks an inventive step based solely on the state of the common general knowledge as established by the evidence before me.
However, Mr Archibald also suggests that the claimed arrangement lacks an inventive step in the light of some of the documents he has referred to combined with the existing common general knowledge.
As indicated in subsection 7(3) of the Patents Act 1990, the question of lack of inventive step can be based on a single document which has been made publicly available as long as the person skilled in the art could have been reasonably expected to ascertain, understand and regard that document as relevant to work in the present technology.
Mr Archibald refers to US Patent Specification No. 5276952 in the name of Tippins, Inc., the present applicant. I think it is appropriate to assume that a person skilled in the art could have ascertained, understood and regarded this patent document as relevant to the present problem to be solved.
I have already considered this document in relation to the ground of lack of novelty. The main difference between the present claim 1 and US '952 is the ability of the present arrangement to allow certain slabs to bypass the reheat furnace. However, Mr Archibald also indicates in paragraph 38 of his declaration that US '952 also does not specifically identify a slab storage and sequencing means. He argues that the slab collection and storage area of the arrangement in US '952 could be used to sequence slabs by moving them from the conveyor to the storage area and returning them in a different order.
In relation to the bypassing feature, I have found that such a feature was part of the common general knowledge of arrangements for continuous mills. Mr Archibald contends that the components of continuous mills could be used in mini-mills and vice versa whereas Mr Devine argues that they would not have been considered to be so interchangeable. While Mr Archibald refers to a particular article where he contends the interchangeability of components between the two different types of mills is disclosed, I think that there is a fair step from such a disclosure to say that the person skilled in the art would routinely do such a thing. In support of the argument on interchangeability, Ms Borham refers to a patent application by the present applicant, exhibited as part of the Bentley declaration. I do not think that a patent application establishes that such interchangeability was part of the common general knowledge particularly as Mr Archibald has not commented on this document. I do note that Mr Archibald indicates in his second declaration that it is entirely possible to interchange components between the two types of mills but it may not be economical to do so. This seems to me to be suggesting that the person skilled in the art would not as a matter of routine consider interchanging pieces of equipment between continuous and mini-mills. Also, as I have indicated, Mr Archibald is not, by himself, a person skilled in the art let alone a non-inventive person skilled in the art.
Therefore, on balance, I do not believe that there is sufficient evidence before me to persuade me to take the view that, in trying to solve the above identified problem, the non-inventive person skilled in the art would, as a matter of routine, include a bypassing facility in the combined intermediate caster and rolling mill of US '952.
In any case, Mr Archibald has not persuaded me that the slab storage and sequencing means would be an arrangement that the person skilled in the art would have included in the light of the common general knowledge and US '952. This is particularly the case because I have not been able to conclude that such a sequencing means was part of the relevant common general knowledge.
I find that the arrangement and method defined in claims 1 and 5 respectively do not lack an inventive step in the light of US 5276952.
Mr Archibald also asserts that the claimed arrangement is obvious in the light of an article in Nippon Kokan Technical Report, Overseas No. 48 (1987). This is exhibit DCA 11.
Ms Borham argued that such a document would have been one which a person skilled in the art could have reasonably been expected to have ascertained, understood and regarded as relevant because of the nature of large industries such as the steel industry. As I have previously mentioned, there is no evidence from Mr Archibald that the steel industry in Australia was such as to routinely consider overseas patent specifications and journals. Mr Gurr points out that there is no evidence that this particular Report was ever published in Australia. Exhibit CMB-9 of the second Bentley declaration includes a translation of a letter from a German university library indicating that the Report was available in this German library before the present priority date. However, I agree with Mr Gurr that there is no evidence that the report was published in Australia. While Ms Borham may well be correct in her assertion that overseas patent specifications and journals would have been routinely considered, I am not prepared to accept that it is reasonable to expect that a person skilled in the art could have ascertained a document which, on present evidence, was only available in a German university library.
Therefore, I do not believe that it is appropriate to consider this document in determining if the claimed invention lacks an inventive step.
However, in any case, I note that Ms Borham acknowledged that the difference between this document and the present claims is the feature of an intermediate slab caster and the use of a hot reversing mill and coiler furnaces. I have already indicated that there is not sufficient evidence before me to establish that intermediate slab casters were part of the common general knowledge and therefore I cannot say that a non-inventive person skilled in the art would have routinely substituted an intermediate slab caster for the caster disclosed in the article.
Therefore I find that, on the evidence before me, the claimed invention does not lack an inventive step in the light of exhibit DCA 11.
Mr Archibald also refers to a Japanese patent specification JP58-6701 (exhibit DCA 12). Ms Borham referred me to John Andrew Willems v Total Energy Systems (1998) APO 19 in support of her contention that the steel industry is a competitive industry where companies would want to keep abreast of their competitors' developments. Therefore, she concluded the person skilled in the art in Australia would have been reasonably expected to ascertain, understand and regard as relevant the Japanese patent specification. However, in Willems v Total Energy Systems, the delegate decided that some English language specifications would have been ascertained and understood by a person skilled in the relevant art. I think it is a large step to take from the delegate's decision to say that the person skilled in the art in Australia would have ascertained the Japanese patent specification 58-6701 and understood it. I do not thing there is sufficient evidence before me to suggest that a person skilled in the art would routinely consult Japanese language documents.
Ms Borham also suggested that the equivalent European Patent Office abstract to JP58-6701 would have been ascertained by a person skilled in the art. Mr Gurr argued that there is no evidence that the EPO abstract was ever published in Australia. However, I do not think that the fact that a document has not been established as being published in Australia is sufficient ground for me to say that a person skilled in the art could not have been reasonably expected to ascertain the document. I think that EPO abstracts are sufficiently accessible for an interested person skilled in the art who is trying to solve a particular problem for me to conclude that it is reasonable to expect that a person skilled in the art could have ascertained this EPO abstract. I am prepared to accept that the person skilled in the art could have ascertained this EPO abstract. Therefore I believe that the disclosure in the EPO English language abstract could have been ascertained, understood and regarded as relevant by the person skilled in the art.
The same differences exist between this abstract and the claimed invention as for the previous document, exhibit DCA 11. For similar reasons, I find that the claimed invention does not lack an inventive step in the light of this abstract.
In summary, I find that there is not sufficient evidence before me to establish the ground that the claimed invention lacks an inventive step.
Manner of manufacture
Ms Borham argued that there is no invention in including well-known components into a known arrangement. By this, I understand her to mean that the present arrangement lacks sufficient newness as to constitute a manner of manufacture. Ms Borham argued that, by merely including a well-known bypassing arrangement for intermediate thickness slabs to be directly rolled, no technical difficulty has been overcome. However, I have decided in the ground of lack of inventive step that certain of the features of the claimed arrangement have not been established as being part of the common general knowledge. Therefore, I think that any argument that there is not the necessary level of newness fails.
Ms Borham also submitted that the claimed arrangement is not a true combination. In support of this, Ms Borham argued that adding a known bypassing arrangement to the US '952 specification does not achieve a new result. Therefore, she asserted, the claimed arrangement is a mere collocation of known integers. However, I think that it is dangerous to pick and choose previous integers to add together to arrive at a claimed invention because one runs the risk of resorting to ex post facto analysis. I agree with Mr Gurr that there is a working interrelationship between the features particularly those identified by Ms Borham and that this working interrelationship achieves a new result in relation to the US '952 disclosure. Therefore I believe that the claims define a patentable combination rather than a mere collocation.
Ms Borham referred to other documents but I believe that the same argument applies in that the presently claimed components are not merely placed side by side without any working interrelationship. I believe that the claimed arrangement can be considered to be a patentable combination of integers.
In summary I find that the ground of not being a manner of manufacture has not been established.
CONCLUSION
I have found that none of the grounds of opposition has been established.
I therefore direct that the application proceed to sealing.
COSTS
In matters such as this, costs usually follow the event. The opponent has not been successful in establishing any of the grounds of opposition. However, the applicant filed a statement of proposed amendments to the specification subsequent to the filing of the evidence in support. The amendments had the effect of introducing into claim 1 the feature of a storage and sequencing means which allows slabs to bypass the reheat furnace. This is an important feature of claim 1 and the main distinguishing feature claim 1 possesses over US '952.
I therefore award costs against the applicant, Tippins Incorporated, up to and including 26 March 1999, the date when both parties were notified that the statement of proposed amendments had been allowed. I award costs against the opponent, Voest-Alpine Industrieanlagenbau from 26 March 1999 onwards.
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Griffith Hack, Melbourne
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