Vinidex Pty Limited v Tubi Pty Ltd - [2018] APO 12

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vinidex Pty Limited v Tubi Pty Ltd [2018] APO 12

Patent Application: 2011207116

Title:Modular pipe formation apparatus

Patent Applicant:                   Tubi Pty Ltd
Opponent:  Vinidex Pty Limited
Delegate:  R Subbarayan
Decision Date:  21 February 2018
Hearing Date:  30 November 2017, in Sydney

Catchwords:  PATENTS – section 59 – opposition to grant of patent – modular pipe extrusion apparatus – whether claims lack an inventive step – opposition does not succeed – costs awarded

Representation: Counsel for the applicant: Angus Lang
Patent attorney for the applicant: David Hughes and Samin Raihan of Griffith Hack
Counsel for the opponent: Chris Burgess
Patent attorney for the opponent: Adrian Richards of Halfords IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011207116

Title:Modular pipe formation apparatus

Patent Applicant: Tubi Pty Ltd
Date of Decision: 21 February 2018
DECISION
The opposition does not succeed. The claimed invention is not lacking in inventive step.
Subject to any appeal, the application is to proceed to grant.
Costs according to schedule 8 awarded against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application AU 2011207116 in the name of Tubi Pty Ltd (the applicant) was filed on 21 January 2011 as a PCT application (PCT/AU2011/000066) and claims an earlier priority date of 22 January 2010 from Australian Provisional application 2010900251. Following examination the application was advertised as accepted on 10 March 2016. On 6 June 2016 Vinidex Pty Limited (the Opponent) filed a notice of opposition to the grant of the patent. The Statement of Grounds and Particulars (SGP) was filed on 6 September 2016, but this was amended on 3 June 2017 following the filing of evidence. The matter was heard in Sydney on 30 November 2017.
GROUNDS OF OPPOSITION
The SGP lists the Grounds of Opposition as lack of entitlement, lack of novelty, lack of inventive step, lack of manner of manufacture, lack of clarity and fair basis and lack of full description. However at the hearing the opponent only pressed the grounds of lack of inventive step and no submissions were made in respect of the other grounds. My decision is also therefore restricted to this ground.
SPECIFICATION
The present invention relates to a modular apparatus for forming plastic pipes. Such pipes are generally formed by “pipe extrusion inside a factory, thereby allowing production in a controlled environment”. A typical extrusion process is described as below:
“Plastic pipe extrusion generally involves feeding raw plastic material through a hopper into the barrel of the extruder. Inside the barrel, a rotating screw rotates and advances the plastic feed, with the assistance of heaters, to melt and pressurise the plastic feed into molten plastic. The pressurised molten plastic is then forced through a die having an annular profile, thereby producing an extruded pipe. The newly extruded pipe is then passed through a series of cooling tanks, that spray water to solidify the plastic pipe. The pipes may then be coiled for storage and/or transportation before pipe laying”[1].
[1] Specification page 1, lines 21-28
The specification states that there are specific challenges associated with the transportation of large diameter pipes over long distances to remote locations. In particular, the physical size of the coiled large diameter pipe that can be transported by rail or road places limitations on the length of the extruded pipe sections, which is stated to be typically only 20 metres in length. Furthermore once these pipe sections are transported to the remote location, they need to be coupled together by plastic welding of the ends of the pipe sections. Such coupling of the pipe sections is “time consuming and adds additional costs to labour and materials”[2].
[2] Specification page 2, lines 6-8
The nature of the invention
The invention provides a modular plastic pipe forming apparatus comprising a plurality of modules, wherein each module comprises at least one component of the pipe forming apparatus located within the module, wherein each of the modules further includes adjustable external supports for supporting the module on a surface and adjustable internal supports that support the respective components within the module, whereby the external and/or internal supports can be adjusted to enable adjacent components to be aligned when the modules are coupled together to form the pipe forming apparatus.
This modular form of the pipe forming apparatus enables the pipe forming apparatus to be transported to different sites and assembled together to enable the pipes to be manufactured on or near the location where the pipes are to be laid, rather than transport the pipe sections over long distances to remote sites.
Preferred embodiments
The specification then provides a description of a preferred embodiment of the invention with reference to a number of drawings. Figures 2 and 11c of the drawings are reproduced below:
As seen in figure 2, the pipe forming apparatus is assembled from a number of modules 5, 15, 19, 23 and 27. Each of these modules is a modified shipping container within which are disposed components of the pipe forming apparatus. For example module 5 has a raw material dryer 7, screw extruder 9 and die head 11, second module 15 has a vacuum water tank 17, third and fourth modules 19 have cooling water tanks 21, fifth module 23 houses a haul off mechanism and sixth module 27 houses a cutter 29. Each module is also provided with a lock 45 to enable adjacent modules to be locked to each other.
As seen in figure 11c, each module is provided with adjustable external supports 151 to support the module on a surface and in certain embodiments the adjustable supports comprise adjustable jacks. According to the specification “The external supports allow the modules to be placed and used on uneven or softer ground, as well as providing ground clearance for water drainage’[3].
[3] Specification page 5, lines 12-14
The components within each module are supported on the floor of the module by adjustable supports 163 that allow the components to be adjustable in position and angle within each module. According to the specification “This allows the components of pipe forming apparatus to be aligned even if the supporting modules are not perfectly aligned. This may be advantageous where the production site is not perfectly level, or if the modules have not been precisely arranged”[4].
[4] Specification page 5, lines 19-22
To set up the pipe forming apparatus the plurality of modules are transported to a suitable site and arranged adjacent to one another in a predetermined order and then locked together with the lock 45. A concertina-like rubber boot may be provided between the ends of the modules to ensure a water and dust proof seal. The adjustable supports 151 enable the modules to be properly aligned before being locked together. Then the components within each adjacent module are then aligned with each other using the adjustable supports 163 and then coupled together. Then water, power and raw material connections are provided and the pipe forming apparatus is now ready for operation.
Claims
The specification ends with 27 claims of which the independent claims are as follows:
1. A modular plastic pipe formation apparatus comprising:
- a plurality of modules wherein each module comprises at least one component of the pipe formation apparatus located therein;
- external supports for supporting respective modules; and
- internal supports for supporting the components within the modules;
- wherein both the external and internal supports are adjustable to enable the plurality of components to be aligned for pipe formation.
17. A pipe formation system comprising;
- a plurality of modules, with each module comprising at least one component of the pipe formation system located therein;
- external supports for supporting respective modules; and
- internal supports for supporting the components within the modules;
- wherein both the external and internal supports are adjustable to enable the plurality of components to be aligned for pipe formation.
20. A method for forming plastic pipe employing the apparatus as claimed in any one of claims 1 to 16, the method comprising:
- arranging two or more respective modules with respect to each other; and
- arranging two or more respective components of the pipe formation apparatus with respect to each other; and
- forming plastic pipe.
21. A method of forming plastic pipe, using a modular plastic pipe formation apparatus that comprises a plurality of modules supporting components of the pipe formation apparatus, the method comprising:
- arranging the plurality of modules in a predetermined manner at a production site;
- arranging two or more respective components of the pipe formation apparatus;
- supplying the plastic pipe formation apparatus with plastic raw materials;
- adjusting an external support for supporting respective modules to adjust the position or angle of the supported modules;
- coupling the modules together; and
- adjusting an internal support for supporting components within the modules, wherein the internal supports enables the components to be aligned for pipe formation.
24. A method of establishing a mobile plastic pipe manufacturing site that is adapted to locate a modular plastic pipe formation apparatus that comprises a plurality of modules supporting components of the pipe formation apparatus,
the method comprising:
- transporting the modules to the site;
- arranging the modules in a predetermined manner at the site;
- adjusting an external support for supporting respective modules to adjust the position or angle of the supported modules;
- coupling the modules together;
- adjusting an internal support for supporting components within the modules, wherein the internal supports enables the components to be aligned for pipe formation;
- supplying raw materials, power and water to the plastic pipe formation apparatus; and
- forming plastic pipe.
ONUS OF PROOF
The examination request for this patent application was filed on 9 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
THE EVIDENCE
The opponent relies upon the declarations of the following independent experts:
(a) Dr Jeremy Bowman dated 4 December 2016 and 9 May 2017. (Bowman #1 and #2)
(b) Mr Mick Rathbone dated 4 December 2016 and 9 May 2017. (Rathbone #1 and #2)
(c) Mr Neil Blenman dated 5 December 2016 and 10 May 2017. (Blenman #1 and #2)
(d) Mr Jason Vanajek dated 5 December 2016 and 10 May 2017. (Vanajek #1 and #2)
(e) Mr Campbell Seccombe dated 5 December 2016 and 10 May 2017. (Seccombe #1 and #2)
In addition to the independent experts, the opponent also relies upon declarations made by:
(a) Mr George Macovaz dated 6 December 2016 and 10 May 2017. (Macovaz #1 and #2)
(b) Mr Nicholas Feros dated 6 December 2016 and 10 May 2017. (Feros #1 and #2)
(c) Mr Joshua Gotham dated 6 December 2016 and 10 May 2017. (Gotham #1 and #2)
The applicant relies upon the declarations of the following independent experts:
(a) Mr Iain Wallace dated 6 March 2017. (Wallace)
(b) Mr Thomas O’Neill dated 7 March 2017. (O’Neill)
(c) Mr John Pincock dated 8 March 2017. (Pincock)
(d) Mr Marcello Russo dated 8 March 2017. (Russo)
I will now briefly summarize the evidence of each of the experts.
The Opponent’s Experts
As part of their initial brief, each of the independent experts was given an extract of the ‘Background Art’ section of the application in suit where the problems with large diameter pipes is discussed and were asked to review this document in light of the state of common general knowledge in the field of plastics pipe manufacture prior to January 2010, and asked what considerations they would have taken into account and how they would go about addressing these problems and issues for producing pipe for remote installation sites, such as those found in Australia, which may be many hundreds of kilometres from an existing plastics pipe extrusion plant.
Each of the experts was also provided with a number of photographs of the applicant’s plastic extrusion line at Smithfield, NSW. Two of these photographs are reproduced below:
Dr Jeremy Bowman
Dr Bowman has a science degree in Metallurgy and Materials Technology and a Ph.D in injection molded plastics. He has 25 years of experience in the field of production of plastic pipes and fittings. He is currently a director of Plasticpipes Ltd, a company providing technical consultancy and support in the area of plastic pipes. Whilst all his employment has been in the UK, he states that he has become familiar with the state of the knowledge within the Australian plastic pipes production industry through meeting with professional colleagues from Australia and professional visits to several pipe manufacturing plants in Australia and New Zealand.
In his declaration, Dr Bowman states that there are three solutions he would have considered for constructing extrusion plants for supply of plastic pipe to remote sites.
Solution 1: A new purpose built plant could be constructed to serve a hinterland of up to 600km radius. This would be operational only as and when required and would be dormant at other times.
Solution 2: A temporary pipe extrusion facility could be built at the site requiring the pipes using existing facilities and utilities at that site. The plant would be dismantled and removed once the pipes have been extruded.
Solution 3: A “mobile factory” could be set up at the remote site. In this solution, the components of the extrusion line would be transported to the remote site in shipping containers similar to the option offered by the company KWH, but once at the site rather than being removed from the containers the components would be retained within the containers. The containers would be positioned on a levelled ground and aligned and joined to each other. The components of the extrusion line mounted in the modified containers would then be aligned and coupled to form the extrusion line. The base polymer for the extrusion would be stored in a separate unit that will be housed in a semi-temporary building. Power for the plant would be provided by a mobile generator. Dr Bowman states that “Solution-3 gives the most latitude to the locating of the plant to minimise pipe transport costs and ease the logistics of getting the pipes to where they are to be used to create the required pipeline. Solution-3 can be set up virtually anywhere, provided the ground conditions and weather permit”[5]. A copy of a KWH presentation outlining the KWH system is also attached to his declaration.
[5] Bowman #1, [30]
Mick Rathbone
Mr Rathbone is a qualified technician and engineer with over 30 years of experience with Radius Systems, a UK company involved in the production of all components required to make a plastic piping system. He is currently a consultant to the plastic pipes industry. Again whilst all his employment before the priority date has been in the UK, he has stated that he has become familiar with the state of the knowledge within the Australian plastic pipes production industry through meeting with professional colleagues from Australia and through attending conferences and trade shows.
He states that in 2008 he has met Marcello Russo, the listed inventor of the application in suit when Mr Russo “mentioned that he had a concept for an “outdoor” extrusion line, but gave no detail”[6]. He also states that in 2011 Mr Russo offered him a job as “a project engineer to the outdoor extrusion line project he was working on, again without any detail of the extrusion line”[7] but he declined.
[6] Rathbone #1, [3]
[7] Rathbone #1, [4]
In relation to the question posed to him, he states that one option is make the pipe sections longer so as to reduce the number of pipe joints as joint failure is a major problem, naturally taking into account the issues with coiling and size limitations of the coiled pipe.
The other option he suggests is to make the pipe close to where it is to be laid. This would require a flat surface or steel frame for supporting the extruder and dies and some form of housing for sheltering the extrusion line from rain and dust. He also then suggests that all the equipment could be in containers or modules that bolt together to form a continuous line.
He states that setting up such a remote extrusion line is not “rocket science” and that “A reasonably sized plastics pipe extrusion company would have had the appropriate expertise, skill-sets and equipment to undertake such a task”[8].
[8] Rathbone #1, [69]
Neil Blenman
Mr Blenman is a mechanical craftsman and fitter-turner who has been involved in the field of machining, tool making and mechanical engineering in Australia since 1974. While he is familiar with the general principles of plastic pipe extrusion, he has not worked in this field and admits that he “would be expected to be briefed by an Engineer to the basic set-up and operating characteristics of a plastic pipe extrusion line”[9].
[9] Blenman #1, [17]
He was asked to provide his opinion on how he would go about transporting and setting up a temporary plastic extrusion line to a remote site where pipe is to be laid, where the individual extrusion line components may be transported as modular units for transport and installation.
The first solution he came up with is to mount the extrusion line in a series of shipping containers placed end to end. The containers could have rails attached to the floor to hold the various components of the extrusion line. The containers would have adjustable feet at the lower corners to assist in levelling and alignment.
The second solution that he came up with is to similarly mount the extrusion line in a series of trailers placed end to end, rather than in shipping containers.
Jason Vanajek
Mr Vanajek is also a mechanical craftsman and fitter-turner who has been involved in the field of machining, tool making and mechanical engineering in Australia since 1986. While he is familiar with the general principles of plastic pipe extrusion, he has not worked in this field and admits that he “would be expected to be briefed by an Engineer to the basic set-up and operating characteristics of a plastic pipe extrusion line”[10].
[10] Vanajek #1, [26]
He was also asked to provide his opinion on how he would go about transporting and setting up a temporary plastic extrusion line to a remote site where pipe is to be laid, where the individual extrusion line components may be transported as modular units for transport and installation.
His preferred solution is to mount the components of the extrusion on tracks within shipping containers, transport the containers to the remote site, place the containers end to end on the ground and join them together. The containers can be provided with levelling legs for levelling and alignment. The extrusion line components can be adjusted and aligned within each container to form the extrusion line.
A less preferred option is to mount the tracks on a plurality of frame sections provided with adjustable legs. Once the frame sections are aligned and assembled together at the remote site, the extrusion line components are then mounted on the frame and the whole line is sheltered by a demountable structure.
Campbell John Seccombe

Mr Seccombe is a chartered professional engineer who has been involved in the field of building and structural engineering in Australia and Canada since 1988. As a result he states he is “familiar with the state of common general knowledge in Australia regarding the design and principles of mechanical / structural engineering practice as it relates to mounting of structures, including demountable and mobile structures for example for application to remote areas”[11].
[11] Seccombe #1, [16]
He was asked to provide his opinion on how he would “go about modifying the installation of a plastics pipe extrusion line to a temporary installation for remote sites, such as those found in Australia, which may be many hundreds of kilometres from an existing plastics pipe extrusion plant”[12].
[12] Seccombe #1, [21]
His preferred solution is to mount the components of the extrusion line on individual bases. These bases can then be mounted on a semi-trailer or inside a shipping container or on a raft, his preferred option being a separate raft. The individual bases would have levelling jacks. The modules are then transported to the remote site where the bases or rafts would be placed at the proper locations on the ground or on piles/footings. The rafts are then levelled, aligned and locked together. Then the different components are aligned and coupled together to form the extrusion line. He also states that where the bases are mounted within shipping containers, they could be retained within the containers at the remote site with the containers being coupled to each other to form a weatherproof structure over the extrusion line.
George Macovaz
Mr Macovaz is employed by Vinidex as a General Manager of Technical and Marketing. He states that it was quite common for engineers and tradespeople in the field of plastic pipe extrusion to have a broad range of work experience including for example the mining field. He also provides comment on the Foster article which I will discuss later.
Nicholas Feros
Mr Feros is currently employed by Vinidex as a General Manager of Manufacturing. Prior to joining Vinidex in March 2011 he was employed for over 14 years at PPI Corporation (PPI). In 2008-2009 while working for PPI, he was involved in developing a concept design for a mobile extrusion line to present to Queensland Gas Company (QGC). In this concept design, “the extrusion line components were fitted into transport containers, for both transport and for assembly of the line within the containers”[13] and also “Each of the containers was supported via adjustable feet to allow alignment, and the extrusion line components further had their own adjustable mountings as was normal practice”[14]. He however admits that the PPI proposal to QGC was a commercial in confidence project proposal.
[13] Feros #1, [14]
[14] Feros #1, [15]
Josh Gotham
Mr Gotham is employed by Vinidex as a Process and Development Engineer. He provides information on the Vinidex extrusion line at their Smithfield factory, including photographs of various components of the extrusion line many of which are mounted on adjustable feet.
The Applicant’s Experts
Iain Wallace
Mr Wallace has a diploma in Mechanical and Production Engineering and a Master of Science degree in Polymer Engineering and has 30 years of experience in the plastic pipe extrusion industry with a particular focus on pipe coiling technology. While he has been based mainly in the UK, he states that his experience in the field extends across Australia, the UK, Europe, North America, and Middle East.
For a number of years starting from 2006 he was employed as the Global Business Development Manager for Pipe Coil Technology Ltd. and this involved providing advice, solutions and quotes in respect of the pipe extrusion equipment with a particular focus on end of line coiling equipment. He further states that in order to provide coiling solutions and quotes, he would need to understand “the specific needs relating to installation of the pipe including the transport options available, space and size restrictions, and the distance the pipe needs to be transported”[15].
[15] Wallace, [14]
In his role with Pipe Coil Technology, he states that he has “worked closely with almost all of the major pipe extrusion companies in Australia, including both Vinidex and Tubi” and he is therefore “intimately familiar with the field of plastic pipe extrusion and installation in Australia”[16].
[16] Wallace, [15]
He was asked to provide his opinion in relation to what was common general knowledge as at the priority date regarding the installation of plastic pipes at remote locations.
He states that there were a number of challenges in relation to installation of large diameter pipes in remote locations, the main one being the limitation in the individual lengths of pipe that can be transported arising from the restrictions on the size of the cargo. Once the pipes have been transported to the remote location, the other major challenge is the joining of the pipe sections by butt welding where if “a clean and accurate weld is not achieved on each and every occasion, the outcome could result in premature failure of the pipe”[17].
[17] Wallace, [44]
He states that for the above reasons, “there was a great demand across the entire industry as at the Priority Date (and in fact to this day) for a way to avoid transporting and welding sections of pipe, or at least reduce the number of welds that would be required. Those in the industry, from long before the Priority Date, were seeking technology which would enable them to get longer sections of pipe directly to the installation site”[18].
[18] Wallace, [47]
He states that one way of addressing the problem of transporting longer lengths of pipe is by improving the coiling technology so that the pipe could be coiled tighter without kinking or damaging the pipe and that Pipe Coil Technology developed “a low ovality technology to enable longer sections of pipe to be tightly coiled and transported”[19].
[19] Wallace, [52]
He also states that while setting up an extrusion plant at the remote site may have been contemplated, there were a number of obstacles that militated against adopting this option. These include the following:
·Difficulty in precise control of the vertical and horizontal alignment of the extrusion components that is critical if the remote site does not have a flat concrete base for mounting the components.
·The need for an enclosing structure so that specific controls can be exercised over the environmental conditions, such as air temperature, air pressure and quality and water temperature and for protection from the elements.
·Access to reliable power
He further states that he was aware of only company called KWH Group Ltd, a Finnish company that had tried this approach. The KWH approach was very different to the claimed invention in that the components were removed from their containers after being transported to the remote location and then set up in a pre-fabricated building or semi-permanent structure on concrete or steel plates essentially like it would have been done in a factory environment.
He then states that it was only after May 2010 that he became aware that Tubi was developing a modular remote extrusion system in which the components would operate from within the containers within which they were transported and that “Pipe Coil Technology Ltd was very excited about this concept and realised the potential for it to be combined with its low ovality technology to solve the industry wide need for getting longer sections of pipe to the installation site”.
He then provides comments on the claimed invention
·The modular system claimed is an extrusion system that could be dropped at a remote site and operated from within the containers in which they were transported, without the need to unpack and set up a facility in a traditional manner.
·The adjustable internal and external supports in each module “allow precise initial alignment and subsequent re-alignment of the extrusion system at virtually any location, including remote locations” and that it “also enables the system to be moved along the pipe line as the project progresses”[20].
·As the components are retained within the containers, there is no need for a separate permanent or semi-permanent structure to be built to enclose the extrusion line.
·The system can operate straight out of the containers in which the system is transported at virtually any site without the need for any additional infrastructure or preparation.
[20] Wallace, [85]
He concludes by stating that in his opinion the claimed invention was certainly not obvious in light of the common general knowledge as it existed at the priority date.
Thomas O’Neill
Mr O’Neill has a degree in Business Administration and has worked in a sales and marketing role with ISCO Industries since 1998. ISCO is an American company that is a specialist distributor of total equipment solutions relating to polyethylene piping. ISCO entered the Australian market in 2007 to distribute pipe fusion technology and has now expanded to providing total pipe solutions. He states that he is “able to draw upon my experience in pipe equipment markets around the world over the last approximately 20 years to offer solutions which might not have been thought of”[21].
[21] O’Neill, [17]
He was asked to provide his opinion in relation to the CGK in respect of the extrusion of plastic pipe for installation at remote locations.
He states that “companies in the plastic pipe industry have for a long time been searching for methods to get longer lengths of pipe to the installation site in order to reduce the amount of transport required, the amount of fusion required and ultimately the overall costs” and that as total pipe solutions provider, ISCO was closely monitoring “the markets to identify any new solutions which we may be able to offer to our clients as a way of addressing this problem”[22].
[22] O’Neill, [25]
One solution that he was aware of was the KWH’s mobile extrusion solution for remote sites but this was basically a system for transporting the components using containers and setting up a conventional plant on a pre-prepared concrete pad at the remote location.
He states that he became aware of Tubi’s modular concept around October 2013 and visited Tubi to learn more about their mobile solution. He is of the opinion that the Tubi concept is unique because of the following features:
·the utilisation of the containers in which the extrusion components are shipped as an integral part of the mobile and modular extrusion line;
·the use of adjustable internal and external supports in the shipping containers to keep the extrusion line precisely level, without having to pour in a concrete pad like with the KWH solution;
·the interlocking of each container to form a modular extrusion line;
·the quick setting up of the system and its dismantling for transport to another site if required.
He further states that ISCO constantly searches for new technologies in the plastic pipe industry and that apart from the KWH solution they were not aware of any other solutions for remote extrusion which existed as at the Priority Date.
In his opinion, the reason why companies had failed to come up with a truly mobile extrusion system was because they were concerned primarily with reducing their cost of production rather than how to develop a truly mobile solution.
“For most companies, remote extrusion translated to the building of an extrusion plant on site, which not surprisingly, was a hugely expensive undertaking and would not be profitable in most cases. Another particular concern was the unreliability of the power source at remote sites. I recall that the KWH project in Scotland discussed above had particular power interruption issues causing a great deal of added cost. There were also doubts about whether the requisite level of quality control could be maintained at a remote extrusion site”[23].
[23] O’Neill, [49]
He has stated that Tubi’s approach was fundamentally different from others in the industry and that it was “contrary to the countervailing approach in the industry where pipe has always been manufactured in a factory or a semi-permanent factory at best, with the focus being on the methods and cost of transport rather than truly mobile extrusion”[24].
[24] O’Neill, [51]
John Pincock
Mr Pincock has qualifications in Mechanical and Marine Engineering and he states that he has “acquired considerable experience in the installation of High Density Polyethylene (HDPE) pipe over more than 40 years of experience across operation, engineering, procurement and construction management (EPC), construction, maintenance and commissioning in the power, oil/petrochemical, water and mining industries initially in the United Kingdom (1967 - 1974), and then in Australia (1974- present)”[25]. His experience includes roles as Project Director at BHP Billiton and as Senior Project Manager at QGC Pty Ltd. in Queensland where he was responsible for the management of all works including HDPE pipelines for coal seam gathering systems.
[25] Pincock, [11]
As a result of his experience he is “intimately familiar with the field of plastic pipe installation across the power oil/petrochemical, water and mining industries in Australia (as well as internationally) since well before the Priority Date”[26].
[26] Pincock, [18]
He states QGC was also facing the problems associated with installation of plastic pipes at remote locations and therefore when he was working with QGC he was tasked with identifying ways to reduce the costs involved in laying pipes in these locations. He therefore “conducted extensive research to identify existing solutions in both Australia and elsewhere which could reduce solve challenges and reduce costs associated with installing pipes at remote locations and across large distances”[27].
[27] Pincock, [35]
He then identifies three areas he focussed on, namely:
a. increasing the efficiency of welding sections of pipe;
b. increasing the efficiency of installing pipe; and
c. methods to get longer lengths of pipe to the installation site in order to reduce welding and transport.
Some of the solutions that he found other companies to be doing included using faster equipment for welding the pipes together, engaging more experienced contractors, using a device called “spider plow” that enabled the digging of a trench, laying of pipe and backfilling of said trench to be performed simultaneously.
Another approach he found was to build the extrusion plant in the traditional manner at the remote site and he recalls Vindex having constructed such a facility in Toowoomba, Queensland.
In March 2010, he states he found out about Tubi’s modular extrusion concept and was very impressed by it as he thought “it was a simple yet brilliant idea” that would make it “possible to produce and install large continuous lengths of pipe without the usual difficulties and costs associated with transportation and welding in particular”[28].
[28] Pincock, [42]
He further states that he recommended the Tubi concept to the QGC board, and while “QGC recognised the uniqueness and huge benefits associated with Tubi's concept, it ultimately decided not to proceed further due to the perception that it was new and therefore inherently risky”[29].
[29] Pincock, [45]
He also states that even when he was subsequently working with Leighton Contractors on the Origin Energy project, his recommendation to adopt the Tubi concept was not adopted for the same reasons. In his view, “There was, and remains in my opinion, a lack of willingness in the industry to take innovative steps given the inherent risks of doing so. As discussed at paragraphs [45] – [47] above, this was the main reason my recommendation to look into infield extrusion at QGC and then Origin Energy was not adopted”[30].
[30] Pincock, [67]
In conclusion he states that in his opinion, the claimed invention would certainly not have been obvious to a person skilled in the art in light of the common general knowledge as it existed in Australia before the priority date.
Marcello Russo
He is the named inventor on the present application. He is the founder and Managing Director of Tubi. He has stated that he has worked in the plastic pipe industry since 1972. He also talks about the problems faced in the industry in relation to producing pipes for remote locations and how this led to the development of the present invention. He also mentions a successful field trial of their technology for QGC and enquiries for the technology from companies in different countries.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(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 the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art 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, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59
at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
An important consideration is also the impermissible use of hindsight. The High Court in Alphapharm (supra) also warned against the misuse of hindsight noting that the danger of such misuse will be "particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known". In that regard, the court referred with approval to Lord Diplock's comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362):
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."

In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd [2015] FCAFC 6 stated as follows at [44]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A “scintilla” of inventiveness is all that is required: Alphapharm at [195]. However, there must still be “some difficulty overcome, some barrier crossed” (per Lockhart J in RD Werner& Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701)”.
The problem being addressed by the invention
The specification states that it seeks to address the specific challenges associated with the transportation of large diameter pipes over long distances to remote locations. These include the physical size of the coiled large diameter pipe that can be transported by rail or road limiting the length of the extruded pipe sections and the coupling by plastic welding of the pipe sections at the remote locations being time consuming and costly. All of the experts have stated that this was a well-known issue in the art. I am therefore satisfied that the challenges associated with the transportation to and the installation of large diameter plastic pipes at remote locations are the problems that the invention seeks to solve.
The person skilled in the art (PSA)
The question of whether a claimed invention involves an inventive step is to be determined through the eyes of the person skilled in the relevant art.
The notional “person skilled in the art” is an artificial construct that is used as a tool of analysis “which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step” (AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 89 ALJR 798 at [23]). In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [71] referring to Catnic at 242 and General Tire at 485; Minnesota Mining at 293).
There appears to be general agreement between the parties that the PSA in the present case would be a team including at least a person such as an engineer or scientist who works in or has a practical interest in the field of manufacture of plastic pipes by extrusion and one or more engineers or craftsmen with experience in setting up assembly lines.
The Common General Knowledge (CGK)
It is clear from the evidence and the submissions at the hearing, that it is common ground that the following were CGK in relation to plastic pipes and their manufacture by extrusion:
·Plastic pipes are used for a number of applications including the transport of fuel, gas, and water.
·Plastic pipe extrusion apparatus consists of a number of discrete components such as hopper, extruder, dies, vacuum bath, cooling tanks, haul-off caterpillar and cutter.
·Extrusion of large diameter plastic pipe requires precise control over the pipe wall thickness and pipe wall diameter.
·Precise alignment of all components of the extrusion line is required.
·Due to the requirement for precise alignment, extrusion lines are typically set up on level flat ground.
·The mountings for the components typically include adjustable supports so that the components can be linearly and angularly adjusted to aid in alignment.
·Rail lines are also commonly used to mount particular components of the extrusion line so as to allow movement of the components along the length of the extrusion line.
·The extrusion plant is housed within a permanent or semi-permanent enclosure in order to prevent contamination and to protect the components from the environmental elements.
·The pipe sections that are cut are commonly coiled using a coiler before being transported to the site.
·Components of the extrusion line are often supplied and transported in shipping containers to a factory.
·Shipping containers have been used as mobile workshops and to house machinery and other equipment.
The opponent also submitted that the KWH mobile production line referred to by a number of experts was also CGK, however the applicant disputed this.
I will therefore now discuss the KWH mobile production concept.
KWH Mobile Production
Attachment KWH3 of the opponent’s evidence is a brochure that explains the KWH Mobile Production system. A copy of this brochure is reproduced below:
It is clear that the KWH Mobile Production is directed at addressing the problems associated with supplying pipes from permanent factories to remote sites. The solution it provides is to transport the extrusion plant components in shipping containers to the remote site where they can be easily removed and assembled on a concrete floor within a pre-existing or purpose built hall. The main advantage this provides is that the pipes need to be transported only over much shorter distances.
In ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 Emmett J discussed what is CGK at [112]:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
standard texts and handbooks;
standard English dictionaries;
technical dictionaries relevant to the field;
magazines and other publications specific to the field.”
While some of the experts like Dr Bowman, Mr Vanajek, Mr Wallace and Mr O’Neill have mentioned the KWH system in their declarations, none of them have clearly stated that the KWH system was CGK in the art. I also note that other experts like Mr Rathbone and Mr Pincock do not mention it in their declarations. Also while it appears that the KWH mobile production line has been supplied to a number of customers in Europe, there is no indication that the KWH system was ever supplied to Australia before the priority date. In my view the evidence falls short of clearly establishing that the KWH mobile production line was so well known to the skilled worker in the art in Australia that it could be considered to be CGK in the art in Australia.
However I think there can be no dispute that the use of shipping containers to house and transport all kinds of cargo is extremely well known across the globe.
Lack of inventive step in light of the CGK
The opponent’s primary submission in support of their opposition is that the claimed invention lacks inventive step in light of the CGK in the art and naturally they rely heavily on the evidence of their independent experts in support of this contention.
The opponent submitted that the claimed invention was obvious in light of the CGK for the following reasons:
·Plastic pipe process line components were already “modularised”, in the sense of being discrete functional components that were transported to the process line site in shipping containers.
·It was already CGK that, to achieve proper alignment, the process line components could be supported by an adjustable internal support, such as a frame that is linearly and angularly adjustable.
·It was CGK that manufacturing plants, including plastic pipe process lines, could be assembled and operated in close proximity to the site of use. It had already been done by e.g. KWH.
·The use and suitability of shipping containers and like structures to house and operate manufacturing plant equipment over multiple containers was already part of the CGK.
·Any skilled person would have recognised the need for the apparatus components to be housed from the elements and, in particular, wind, dust and rain. The shipping containers that the apparatus components were transported in were an obvious and immediate choice for this purpose.
·The skilled person would have appreciated that the shipping or like container should be mounted on its own adjustable, external support mechanism. It was already CGK that such containers could be so mounted. As the process line alignment was critical, the need for the external support mechanism to be adjustable would be self-evident.
·Each of their five independent experts who were presented with the stated problem has proposed a solution that is substantially in accordance with claim 1.
In my view, the key issues that I need to decide are:
·Would the PSA trying to solve the stated problem have, as a matter of course, chosen to perform the extrusion at the remote site?
·If so, would they then have decided to house the various components of the extrusion line in modules or shipping container in such a manner that they could be transported to the remote site and then aligned and assembled together while still being retained within their respective modules or shipping containers?
·If so, would they then have also provided the modules or shipping containers with adjustable supports for levelling and alignment?
It is clear from evidence of the experts that there are a number of solutions to solving the stated problem. One such solution is to find new means to enable the tighter coiling of the extruded pipes thereby allowing longer sections of pipe to be extruded. In fact Mr Wallace states that Pipe Coil Technology did develop “a low ovality technology to enable longer sections of pipe to be tightly coiled and transported”[31] as a means of addressing this issue.
[31] Wallace, [52]
Another solution suggested is to look for greater efficiencies in the coupling of the extruded sections at the remote site.
It is therefore clear that installing an extrusion line at the remote site is not the only solution to the stated problem. However it is the solution that is strongly proffered by the opponent’s experts. Although the applicant’s experts have rebutted this stating that there was an unwillingness in the industry to go for remote extrusion for reasons such as prohibitive cost, unreliability of power at the remote site and risks in adopting new technologies, I note that the company KWH had actually adopted this approach in coming up with their KWH mobile production line which had already been supplied to a number of customers before the priority date. I am therefore satisfied that performing the extrusion at the remote site was certainly one of the solutions that the PSA would have considered.
The claimed invention is however more than supplying the components in shipping containers to the remote site where they can be aligned and installed on a concrete bed like the KWH mobile production line. The question is whether it would have been obvious to mount the different components of the extrusion device in the plurality of containers in such a manner that they could then be aligned and assembled to form the extrusion line while still being retained within their respective containers.
This is where the expert evidence becomes critical. Here we have a situation where the opponent’s experts have said it would have been obvious to assemble the components while retaining them within their respective containers at the remote site whereas the applicant’s experts have said this would not have been obvious or a matter of routine.
On the face of it there is really nothing that clearly separates all of the independent experts with experience in the plastic pipe extrusion industry, namely Dr Bowmann, Mr Rathbone, Mr Wallace, Mr O’Neill and Mr Pincock, as they all have substantial experience in this industry either as an engineer or marketing professional and would therefore be well qualified to provide opinion on what was the CGK in the art at the priority date and how a skilled addressee would have solved the problem of extruding and supplying pipe to remote locations. However I do note that Mr Pincock is the only expert who has actually been based and worked in this industry in Australia.
While the onus lies with the opponent to establish that the evidence of their experts has more probative weight than that of the applicant’s, they did not however provide any submissions as to why the evidence of Dr Bowman and Mr Rathbone should be preferred over that of Mr Wallace, Mr O’Neill and Mr Pincock.

100. The applicant on the other hand submitted that their expert evidence is to be preferred for the following reasons:
·Hindsight bias cannot be ruled out in relation to the evidence of the opponent’s experts. For instance Mr Rathbone had met with Mr Russo on a number of occasions where Mr Russo had spoken about his concept for an “outdoor” extrusion line, although without specific details. Furthermore both Dr Bowman and Mr Rathbone had been shown photographs of the Vinidex extrusion line and some of these photos show close-up high resolution images of adjustable feet on some of the extrusion line components squarely drawing the experts’ attention to this feature.

·While Dr Bowman and Mr Rathbone may have suggested that one of the options they would have come up with was to retain the components within their containers, they had failed to come up with claimed invention, for example they do not mention the provision of adjustable external supports for the containers. Dr Bowman for example has simply stated that the solution requires “a prepared ground (maybe bulldozed to level the site)”[32].
[32] Bowman #1, [39]

101. I am not convinced that there is any clear basis for finding that the evidence of Dr Bowman and Mr Rathbone were tainted by hindsight. While both of them were shown photographs of the Vinidex extrusion line, both have clearly stated that they were given a copy of the opposed specification only after they had provided evidence as to the common general knowledge and how they would have addressed the challenges associated with the transportation and installation of large diameter plastic pipes.
102. It is worth noting that while the opponent’s experts have stated that they were aware of the problems of supplying pipes to remote sites and that one of the solutions they would have come up with would be a mobile extrusion line in which the components of the extrusion line would be assembled while still being retained within the containers in which they are shipped to the remote site, none of them actually state that this was something they had to grapple with in the course of their work in this industry. On the other hand, both Mr O’Neill and Mr Pincock were involved in searching for a solution to this problem in the course of their work and neither of them came up with the claimed invention. It is only when they found about the Tubi concept they realised that here was a simple but non-obvious solution.
103. While I accept that using shipping containers as mobile workshops or to house various components may be well known, the claimed invention is about housing different components of the extrusion line within a plurality of modules or containers and aligning and joining the components while they are still retained within their respective containers or modules. Prior to the applicant Tubi coming up with this concept, the only company that had done something to address the problem of transportation and installation of large diameter pipes for remote location was KWH, but their solution was to transport the components of the extrusion line in shipping containers to the remote site and set up a conventional extrusion line on a prepared concrete surface within a permanent or semi-permanent enclosure. They did not come up with the concept of assembling the extrusion line components while still retaining the components in their respective shipping containers, strongly suggesting that this was not an obvious thing to do.

104. Although the opponent also submitted that the concept design developed by PPI further supports their contention that retaining the components within their containers was an obvious thing to do, this was clearly a commercial in confidence proposal and cannot in my view qualify as evidence of obviousness.

105. With regard to the evidence from the opponent’s other experts, while they have also opined that the claimed invention was obvious, I note that Mr Blenman, Mr Vanajek and Mr Secombe do not have experience in the field of plastic pipe extrusion, their expertise being more in fitting and structural engineering while Mr Macoraz, Mr Feros and Mr Gotham are employees of Vinidex and are therefore not independent experts.
106. In my view the evidence falls short of establishing to the level of practical certainty that the skilled addressee trying to solve the stated problem would have as a matter of routine chosen to transport the extrusion line to the remote site and even if they did they would then have aligned and assembled the extrusion line components while retaining them within the containers they were transported in. The claimed invention is not obvious in light of the CGK.
Lack of inventive step in light of the CGK plus Foster
107. The opponent also submitted that the claimed invention lacks an inventive step when the CGK is combined with the published article titled “The Design and Benefits of Containerised Modular Plant Design” written by Andrew Foster of Downer EDI Mineral Technologies Pty Ltd (Foster).
108. The abstract of this article is reproduced below:
ABSTRACT
Modular mineral processing plants have been adopted in various applications for many years. Typically, a modular concept will be adopted in place of the traditional site constructed plant method when: the operating site is very remote and/or, site access and space is limited, and/or, the project schedule requires plant modules to be built in parallel, and/or, the plant has a short operating life at one site and will then be moved to another site.
Containerised plants are modular plants that are further designed to fit into standard sea freight sized modules. This approach can yield great benefits where the plant will be moved frequently from site to site or the shipping cost to site is significant and the processing equipment can be made to fit inside standard container-sized blocks without constraining the operation and maintenance of the plant.
To create the building blocks, either standard sea containers can be suitably modified to accept a all the equipment or a fit-for-purpose structure can be designed and built to the same size as standard sea containers complete with standard corner connection blocks.
When designing plants of this nature, effort is required to ensure best possible use of space and this often requires the engineering company to work with the relevant equipment suppliers to make some modifications to vendor equipment to allow the best layout to be achieved within the available space.
This paper presents in more detail the above concepts, as well as a case study of recently designed, constructed and now operating containerised Kelsey Centrifugal Jig plants.

109. As is clear from the abstract, this article discusses how a modular plant approach can be adopted for certain processing plants, especially in the field of mineral processing where the size of the process equipment involved allows assembly of the components of the plant into appropriately sized modules. Some of the factors that could make a modular approach attractive include:

·Very remote sites
·Short operating life
·Relatively small process equipment
·Multiple sites each with relatively short life span
·Phased increase in production capacity.

110. It then discusses key factors that should be considered in determining whether a modular approach could yield significant cost and schedule benefits to a project. These include:
·Plant equipment size and whether it can fit into standard containers
·Freight costs
·Site conditions and site works
·Life of plant
·Environmental considerations
·Cost of bringing contractors and other skilled personnel to remote sites

111. It also then lists some applications where such a modular approach has been adopted. These include:
·Spiral concentrator plants
·Dense Media Separation (DMS) plants (both diamond and coal plants)
·Diamond final recovery plants
·Gold leaching plants
·Jigging plants
·Coal washing plants
·Cement and aggregate plants

Ascertain, understood and regarded as relevant
112. In relation to this requirement under s7(3), the opponent submitted that the Full Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26) has held that in high technology areas evidence as to whether the document being relied on would have been ascertained may not be required:
“In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the Commissioner and the Court. In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required”. [32]

113. They therefore submitted that Foster would have been ascertained as it was published by a leading professional society in the field of mining and exploration and it was therefore a document that would have been ascertained, understood and regarded as relevant for solving the problem of extruding pipes for installation at remote sites.
“Foster was published in 2009 by the Society for Mining, Metallurgy & Exploration (SME) as part of a symposium on plant design titled “Recent Advances in Mineral Processing Plant Design”. It is available at various libraries and online, and can be expected to have been so available at the priority date: see Richards at [5] - [8].
SME is a leading professional society for mining and exploration, including applications such as coal seam gas. This is a key area of application for a near-site plastic pipe extrusion line. The skilled team seeking to design a mobile and modular plastic pipe extrusion line for at least that application could reasonably be expected to have found Foster, given its publication by a leading professional society before the priority date”.

114. While Dr Bowman and Mr Rathbone have provided comment on why Foster would be relevant to solve the problem of producing plastic pipes for remote locations, neither of them have stated that the skilled addressee in the field of plastic pipe extrusion would have regard to publications in the field of mining and metallurgy when trying to address the stated problem. In fact, it is clear from their evidence that Foster was provided to them by the opponent’s patent attorney and they were merely asked to provide comment on this article. It is not a document that they had themselves ascertained or were aware of.
115. Mr Wallace on the other hand has stated as follows in his evidence:
“F-1 is a brief article which canvasses general issues which one would need to consider before setting up what is described as a 'containerised modular plant' at remote locations.
The paper is specifically directed to the subject of mineral processing plants. I am aware from my experience that the mineral processing industry is a highly specialised field. Engineers who would design a mineral processing plant would be highly specialised in this field. This paper is specifically directed to such specialised persons. In contrast, and as discussed above, the persons skilled in the art would be specialised in the field of plastic pipe extrusion. I would not consider F-1 to be relevant to such persons”[33].
[33] Wallace, [118], [119]

116. In my view, the evidence from the opponent falls short of establishing that Foster is an article that the hypothetical skilled addressee in the field of plastic pipes extrusion would have ascertained. Moreover it is clear that while Foster mentions processing plants in general, the thrust of the article is very much in the field of mineral processing. Even all the examples given in the article where such a modular approach has been adopted are clearly in the field of mineral processing. Plastic pipes extrusion technology has very little in common with mining and mineral processing even though plastic pipes may be used in mining areas. I am therefore not satisfied that the skilled addressee would have regarded this document as relevant to solving the stated problem even if they had ascertained this document.
117. Foster does not therefore constitute relevant prior art under section 7(3) for the purposes of assessing inventive step.
118. The claimed invention does not lack an inventive step over Foster.
Lack of inventive step in light of the CGK plus KWH
119. I have already discussed the disclosure of the KWH mobile production system. The claimed invention differs from KWH in that the components are aligned and assembled while being retained in the modules/shipping containers in which they are housed and that the modules/shipping containers are provided with adjustable external and internal supports.
120. The opponent submitted that the difference of leaving the components within the transport modules is “not inventive, for the reasons submitted on obviousness in light of the CGK”.
121. I have already found that the feature of leaving the components within the modules was not an obvious thing to do. It therefore follows that the claimed invention is also not lacking an inventive step over KWH. This ground of opposition has not been made out.
Other prior art references
122. The opponent submitted that the other prior art references in their SGP “are not relied upon as themselves forming part of the CGK or s 7(3) information. Rather, they document examples of features that formed part of the CGK, as the Vinidex witnesses explain”.
123. A quick perusal of these references does not suggest any disclosure that would deprive the claimed invention of its novelty or inventiveness.
CONCLUSION
124. The opposition does not succeed. The claimed invention is not lacking in inventive step.
125. Subject to any appeal, I direct that the application proceed to grant.
COSTS
126. Both parties have asked for costs if they are successful in these proceedings. As the opposition is unsuccessful, I award costs according to schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents