Tropical Export Nursery Pty Ltd v Shade Span Industries (NSW) Pty Ltd

[1994] APO 62

official notice

decision of a delegate of the commissioner of patents

Petty Patent       : No. 639408 in the name of TROPICAL EXPORT NURSERY PTY LTD

Title: Knock-down Trolley

Action: Objection to extension of term under S.28 by SHADE SPAN INDUSTRIES (NSW) PTY LTD, hearing.

Decision: Issued            .

Abstract: Claims valid, term extended.  An inessential feature does not necessarily make a claim non-succinct.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 639408 by TROPICAL EXPORT NURSERY PTY LIMITED, application for extension of term under S.69, and objection thereto under S.28 by SHADE SPAN INDUSTRIES (NSW) PTY LTD.

background

Application No.35682/93 was filed on 2 April 1993 for a petty patent entitled "Knock-down Trolley", and Petty Patent No.639408 was sealed on the application on 22 July 1993.  On 23 May 1994 Shade Span Industries (NSW) Pty Ltd (the "informant") filed notice under S.28(1) and filed evidence-in-support of its objection.  On 15 June 1994 the patentee, Tropical Export Nursery Pty Limited, applied for an extension of the term of its petty patent, and on 12 July 1994 filed evidence-in-answer to the informant's evidence.

The matter was heard in Canberra on 13 September 1994; the patentee was represented by Mr R Halliday, patent attorney, and the informant was represented by Mr D Rainey, patent attorney. Messrs W Anderson and A Dark from Mr Rainey's firm were also present at the hearing.  The informant filed additional evidence at the hearing and on 23 September 1994; this evidence was outside the 11-month period provided by R.2.6, so was considered ex-parte under S.28(3).

the specification

The specification indicates that the invention relates to a trolley for the transport of articles on multiple shelves; typically nursery plants.  Trolleys of this type are often used where they are empty during the return trip to the original source of the articles, and because transport space is expensive, there is a need to maximise this space on return trips.  The invention can be dismantled and stacked to satisfy this said need.  Claim 1 as granted reads as follows (the paragraphing within the claim is as set out in the patentee's evidence):

"A knock down trolley comprises

1. a stackable trolley base,

2.a plurality of parallel tubular post supports fixed to the base,

2a. each post support has a first portion with an upper open post entry end and the first portion is upstanding from an upper side of the base,

2b. each post support has a second portion extending downwardly from an underside of the base and terminating in a lower end,

2c. each post support has a substantially uniform cross-section bore with a post penetration limiting obstruction in the bore to limit the penetration of a post into said bore from said upper end of said post support first portion,

2d. each post support at its lower end is adapted to permit engagement of the adapted lower end with the upper end of a post support of another trolley base,

3.wheels on the base extend from the underside of the base,

4.the respective lengths of the first and second portions of the post supports are such that when a first base is stacked on a second base by engagement of the adapted  lower ends of the post supports of the first base with the upper ends of the post supports of said second base the wheels on the first base do not contact the second base,

5.and including tray supporting posts for engagement in the bores of the post supports."

There are two other claims, each dependent on claim 1.  The specification indicates that when the trolleys are "knocked down" the trays can be stacked one on the other so as to occupy very little space, the posts can be bundled up and the bases can be stacked into a stable tier either for transport or storage.

the evidence

The informant's evidence filed under S.28(1) includes:

. A declaration by Errol Norman Harrison dated 23 May 1994. Mr Harrison, a director of Shade Span Industries, refers to his own Patent No. 651447 which is also for a collapsible and stackable plant trolley. That patent was published on 15 October 1992, before the priority date of Petty Patent 639408, ie. 2 April 1993.

Mr Harrison declares that claim 1 of the petty patent is not novel in the light of his patent since all the features of the petty patent claim, except feature 2b, are disclosed in his patent specification, and that feature 2b is an inessential feature. 

. A publicity brochure for a collapsible Shade Span trolley, included as Exhibit A with Mr Harrison's declaration.  Mr Harrison declares that the brochure was printed to market his trolley, that it was available to the public shortly after 28 June 1991, and that it discloses a trolley which includes all the features of claim 1 of the petty patent.

. Other evidence relating to publication of the brochure.

The patentee's evidence-in-answer consists of a declaration dated 30 June 1994 by Christian August Gabriel, the inventor of the knock-down trolley of the petty patent.  Mr Gabriel refers to the evidence-in-support and declares that many features of his invention are not disclosed in Patent No. 651447; eg:

. Item 2a in the claim of the petty patent is not disclosed because the post supports do not have "upper open post entry ends". The citation discloses "spigots" fixed in the top ends of the post supports, and the spigots fit into the open ends of post extension members which sit on top of the post supports.

. Item 2c is not disclosed because there is no "post penetration limiting obstruction in the bore" of each post support. Mr Gabriel declares that the citation:

"...has no description of an extension member 14 entering into a support 12. The patent application only provides for the entry of a spigot 13 mounted in the support 12 entering into an open end of the extension 14... The positioning of the extension 14... results from the end of the extension 14 over the spigot 13 engaging the upper end of the support 12. This is not as required in the petty patent claim where the limitation of penetration of the post... results from the post engaging an obstruction in the bore of the support."

Figures 1 to 3 of the citation 651447 are shown below:

. Items 1, 2b, 2d, and 5 of claim 1 of the petty patent are also not disclosed in the citation.

Mr Gabriel also declares that there is some doubt about the date of publication of the informant's publicity brochure, that many features in claim 1 of the petty patent are not disclosed in the brochure and that it is not clear how stacking of the trolleys is achieved. 

submissions

Mr Rainey made the following submissions for the informant, firstly with regard to S.40 of the Act:

. Item 4 of the claim of the petty patent is of "no importance", since the characteristic of the present invention, which allows stacking of the trolley bases with clearance for the wheels, is not related to the "respective lengths of the first and second portions of the post supports".  Mr Rainey submitted some modified versions of the drawings in the petty patent specification to demonstrate that it is the whole length of each post support (or the combined lengths of the "first and second portions") which determines the stackability characteristic.  Thus he submitted that claim 1 is not clear and succinct and fairly based.

. The petty patent specification does not show how the trays can be stacked within the bases, therefore it is not clear how the advantages of the invention are fully realized.

. With regard to items 2a and 2b: the petty patent drawings show the post support attached to the side of the base, ie. not "upstanding from an upper side of the base" nor "extending downwardly from an underside of the base".  Claim 1 therefore does not define the invention described.  The claim should have referred to the first and second portions upstanding from and extending downwardly from the plane of the base.

Secondly, with regard to the prior art and novelty:

. Shade Span's publicity brochure shows a "V-shaped spigot" at the lower end of each of the post supports, visible in one of the photographs in the brochure; these are for the purpose of fitting into the upper open end of the next underneath trolley when the trolleys are collapsed and stacked.

. These V-shaped spigots would also prevent the upper extension members from going through the bottom of the post supports. Mr Rainey submitted a sketch showing the post supports and the     V-shaped spigots in more detail. 

. The photographs in the brochure don't show the collapsed trolleys stacked together, but this is not a necessary requirement for prior publication. The text of the brochure refers to stacking the trolleys and it would be clear to a skilled addressee how this is done.

. The evidence is sufficient to prove that the informant's brochures were available to the public before the priority date of the petty patent. Mr Rainey referred me to Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666 and paragraph 2.3.2 of Vol 3 of the  APO Manual of Practice and Procedure in this matter.

Mr Halliday made the following submissions for the patentee:

. The claims of the petty patent comply with S.40; the informant's submission that claim 1 should refer to the plane of the base is a "play on words", and the claim makes it clear that each post support is in one piece. 

. The advantages of the invention of the petty patent are inherent in the stackable trolley bases, but Mr Harrison's Patent No. 651447 does not show stackable bases, only "trolleys" are stacked. There are differences between the trolleys shown in Patent No. 651447 and the Shade Span brochure, and these differences contribute to uncertainty about exactly how the stacking is achieved. For example, Figure 3 in 651447 shows a "top brace 18" on top of the collapsed trolley, and it is not clear how stacking is achieved with this top brace in place.

. The upper extension members (or posts) in the Shade Span trolleys do not fit into the post supports; the spigot and socket arrangement for fitting the extension members into the post supports is different to the arrangement in the petty patent where the extension members per se fit into the supports.

. The Shade Span trolleys do not have a post penetrating limiting obstruction in the bore. To counter Mr Rainey's submission, Mr Halliday sketched his own version of the possible construction of the Shade Span post support and the V-shaped spigot at the bottom of the support.  

Mr Rainey responded to the patentee's submissions regarding the differences between the petty patent and the citations, in the manner in which the extension posts engage the post supports, by referring to Figure 5 in the petty patent specification which shows a spigot and socket arrangement as an alternative embodiment of the present invention; and he likened this to the spigot and socket arrangement in Mr Harrison's trolley.

decision

On the matter of item 4 of claim 1 of the petty patent and whether the stackability and wheel clearance characteristic of the invention depends on the respective lengths of the first and second portions of the post supports, I agree with Mr Rainey's construction of the specification and conclusion that the relative lengths of the first and second portions are not significant; it is the combined length of the portions which determines the wheel clearance characteristic. 
Thus it seems to be unnecessary to refer to "first and second portions" of the post support to adequately define the invention.

Does this characteristic of the claim give rise to an objection under S.40?  Firstly, the claim is clear; neither party had difficulty in construing the meaning of this part of the claim or the nature of the first and second portions.  Secondly, it can be argued that the unnecessary "first and second portions" feature does add a few extra words to the claim, but I do not consider this to be non-succinctness, which is an objection usually applied to a whole statement of claims and where some claims are redundant. I think the said feature is an inessential feature, but that does not make the claim non-succinct.  Thirdly, with regard to fair basis, the wording of item 4 of the claim is broad enough to include the feature of the whole length of the post support being sufficient to allow space for the wheels, viz: the part "the respective lengths of the first and second portions... are such that... the wheels on the first base do not contact the second base" allows a construction where the addition of the lengths achieves the desired spacing.  Thus, even though the claim is rather clumsy in this regard, I consider it to be fairly based and to adequately define the invention described. 

On the matter of whether the claims of the petty patent are only adequately defined if they refer to the plane of the trolley base: to be technically accurate, the claims should refer to the plane of the base, but I consider that a skilled addressee could construe the claims in the light of the description and drawings of the specification without concluding that the claims are ambiguous. The specification as a whole indicates that each post support is a whole integer, ie. not divided into separate first and second portions. See Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461.

Thus I am satisfied that there is no objection under S.40 to the claims of the petty patent.

On the matter of novelty, firstly I think that the citations do not disclose first and second portions of the post support, nor is there any disclosure of any relationship between these portions as defined in item 4 of claim 1.  However, I agree with the submission that these features are of no importance with regard to how the invention works, and therefore I consider them to be inessential features. See Catnic Components v Hill & Smith [1981] FSR 60.

Secondly, on the matter of whether the citations disclose (i) penetration of the extension posts into the upper end of the bore of each of the post supports and (ii) a post penetrating limiting obstruction in each bore, I have considered the following matters.

I note that the specification of Mr Harrison's Patent No.651447 is somewhat difficult to construe; viz: the drawings do not show the base assemblies stacked together; in fact they show the "top brace 18" in place, which prima facie would allow stacking only by the wheels of one base sitting on the top brace of the next underneath base.  However, an alternative embodiment of the invention is described in 651447, on pages 3 and 4 of the specification, viz:

"In a preferred embodiment, the opposite ends of the supports include complimentary socket and spigot connections whereby one support may be releasably connected to another in a lengthwise fashion...

The arrangement of each castor assemblies [sic] inwardly of each corner, and the inclusion of a spigot or socket connection in each corner affords that the trolleys are stackable..."

I assume in this embodiment the top brace is not used; but the specification does not state this to be the case. More importantly though, there is no limitation on how the spigots and sockets are used, so presumably the spigots could be located in either the post supports or the extension posts. Figure 2 shows the spigots in the post supports, but I think the abovementioned parts of the specification can be construed to allow either construction.  Now, given that the spigots could be located in the extension posts, it could be argued that there is a kind of "penetration" of an extension post "into said bore from said upper end of said post support", according to claim 1 of the petty patent, since the spigot is part of the extension post. Alternatively, it could be argued that the extension post per se does not penetrate the support post since it is the same diameter as the support post, and it is only the spigot which "penetrates" the post support.

Instead of resolving the issue of whether the citations disclose penetration of the extension posts into the upper end of the bore of each of the post supports,  I will now consider the other aspect of item 2c of claim 1 of the petty patent, ie. whether there is a post penetrating limiting obstruction in each bore.

The informant submitted that the "V-shaped spigots" at the lower end of each post support would prevent the upper extension posts from going through the bottom of the post supports. I note that the informant's submission in this matter relies wholly on the disclosure in its brochure, since there are no V-shaped spigots in Patent No.651447.  However, after giving the matter due consideration, I am of the view that an addressee of the brochure would not construe it as disclosing a post penetrating limiting obstruction in the bore of each of the post supports. There is nothing in the brochure to show that the extension posts are somehow limited in their "penetration" of the post supports by the V-shaped spigots at the bottom of the post supports. In the light of the disclosure in 651447, this construction is even more unlikely, since the patent specification discusses only limited "penetration" of the extension posts, certainly not to the bottom of the post supports; and it is arguable, as discussed above, if there is any "penetration" at all.  Also, it is not clear from the brochure whether the V-shaped spigots are actually in the bore of the post support, or attached to the bottom edges of the post support, as sketched by Mr Halliday at the hearing.

Mr Rainey submitted that figure 5 of the petty patent shows a cylindrical plug in the bottom of the post support and that this plug is equivalent to each of the spigots in Mr Harrison's trolley. I agree that the plug in the petty patent may perform a similar function to the spigot in the informant's invention when considering its contribution to the manner in which the trolleys are stacked together; however, that does not mean that the spigot also must act as a post penetrating limiting obstruction, which is an additional function of the plug.  As previously discussed, there is no disclosure in the informant's citations of any post penetrating limiting obstruction.

Clearly, the patentee's trolley is different to Mr Harrison's trolley: in the former, the extension posts are of smaller diameter than the post supports, they can go into the bore of the supports, and therefore need a penetration limiting obstruction; in the latter, the extension posts are the same diameter as the post supports, and connection is made by spigots of reduced diameter and limited length, so there is no need for a penetration limiting obstruction. Thus it is difficult to accept the informant's submissions that the citations disclose a penetration limiting obstruction; it could be argued of course that if an extension post of reduced diameter was inserted into the post supports on Mr Harrison's trolley then the V-shaped spigots on the bottom of the post supports might act as a penetration limiting obstruction, but such a hypothetical situation is insufficient for me to decide that the petty patent claim is anticipated by the citations. See General Tire & Rubber Co v FirestoneTyre & Rubber Co Ltd [1972] RPC 457 at 486.

I have no reason to believe that the post penetration limiting obstruction is not an essential feature of claim 1 of the petty patent, and there is no such feature in the informant's citations, so applying the reverse infringement test, I conclude that not all the features of the claim are disclosed in the citations and therefore the claims of the petty patent are novel.

evidence filed at and after the hearing

Mr Harrison filed another declaration, dated 9 September 1994. He argues further that the V-shaped spigots on the bottom of the post supports in his trolleys are penetration limiting obstructions, but I note that there is no disclosure of any arrangements where extension posts of reduced diameter penetrate into the bores of the post supports. 

He also makes reference to public working of his trolleys, and makes a brief accusation "that the provision of the features of claim 1 of Australian patent No. 639408 are obvious or do not contribute to the working of the invention...".  There is no further elaboration of this point so I think it will suffice to say that claim 1 does not appear to be obvious to me; eg: there may be some distinct stability advantage in the extension posts fitting into the post supports in the present invention. Independent experts' evidence would be needed to prove that the present invention is obvious.

The late evidence includes a declaration by Gene Leon Thompson, dated 19 September 1994. Mr Thompson, managing director of Triple M Holdings Ltd, declares that since April 1991 his company manufactured several collapsible trolleys in accordance with Mr Harrison's invention. He confirms that the V-shaped projection [spigot] at the bottom of each post support was welded on the inside of the bore of the post and that its purpose is to permit engagement of the lower end of each post with the upper end of a corresponding post of another trolley base when the bases are stacked upon one another. He also declares that, in a later modified trolley, the V-shaped projection has been replaced by a "tongue welded inside the post".

Mr Harrison filed another declaration, dated 19 September 1994. In this declaration he refers to sales of his trolleys, and to the modified trolley referred to by Mr Thompson. An example of such a trolley was filed as an exhibit to Mr Harrison's declaration. I note in this trolley, the tongue is welded in the bottom of the post support, and each extension post has a U-shaped cross-section spigot rivetted to the bottom end of the post to facilitate connection into the post supports. Thus, notwithstanding the different shaped spigots, this later trolley of the informant functions in the same way as those described in Patent No.651447 and the Shade Span brochure; in particular I note that there is still no feature which functions as a "post penetration limiting obstruction in the bore" of the post support. 

Thus I conclude that there is no material in the evidence filed at or after the hearing which leads me to change my opinion on novelty formed on the basis of the evidence filed before the hearing.

conclusion

I find that the claims of Petty Patent No.639408 are valid, and accordingly I extend the term, under S.69(2). Applying the usual practice of costs following the event, I award costs in the matter against Shade Span Industries (NSW) Pty Ltd.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the patentee  :  Hallidays, Hornsby NSW

Patent attorneys for the informant :  Pizzey & Co, Brisbane Qld.