Voest-Alpine Industrieanlagenbau GmbH v Mannesmann AG

[1999] APO 58

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 675099 in the name of VOEST-ALPINE INDUSTRIEANLAGENBAU GMBH

Title:          Process for the Production of a Strip, a Pre-strip or a Slab

Action: Opposition under sec. 59 of the Patents Act 1990 by MANNESMANN AG

Decision:          Issued            .

Abstract

Opposition dismissed.  Grounds of novelty, inventive step and section 40 not established.

Common general knowledge relied on in relation to novelty and inventive step was mostly found to be not established because of lack of evidence.  The opponent's only evidence came from an employee of the opponent company, whereas the evidence for the applicant was from a person who was independent of the applicant at the time of making his declaration.

The fact that a specification in describing the best method of performing the invention omits to describe certain details is not conclusive that those details are common general knowledge.

Even if the common general knowledge had been as claimed by the opponent, there would still not have been any lack of novelty because the addition of common general knowledge to a prior publication in the manner the opponent was attempting to do was not permitted on the authorities.

Costs awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 675099 by Voest-Alpine Industrieanlagenbau GmbH, and an opposition thereto by Mannesmann AG under section 59 of the Patents Act 1990.

BACKGROUND

Patent Application 675099 was filed on 15 February 1994 by Voest-Alpine Industrieanlagenbau GmbH as application 55117/94.  It claims Convention priority from Austrian basic application 292/93 filed on 16 February 1993.  Application 55117/94 was advertised accepted on 23 January 1997 and given the six-figure number 675099.

A notice of opposition to application 675099 was served on the applicant on 22 April 1997 by Mannesmann AG.  All evidentiary stages were completed, with some extensions of time, by 9 April 1999.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (non-patentable invention), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40.

The matter was heard on 3 August 1999 in Melbourne.  The applicant was represented by Ms Janelle Borham, patent attorney of the firm Griffith Hack, Melbourne, and the opponent was represented by Mr Adrian Ryan of counsel assisted by Mr Brett Connor, patent attorney of the firm Carter, Smith & Beadle, Melbourne.

THE SPECIFICATION

The invention relates to a steel production plant, and in particular it relates to a plant which has:

·    an initial moulding stage in which an open-ended mould is employed to cast a strand of steel at slab thickness

·    a first forming stage provided in the region below the mould in which the strand has a liquid core, and constructed to reduce the slab thickness

·    a second forming stage provided in the region in which the strand has now completely solidified and constructed to further reduce the slab thickness to pre-strip format

·    a third forming stage comprised of a hot-rolling stand

·    a separating means between the second and third forming stages to sever the strand.

It is acknowledged in the specification that plants of this type are known in the prior art, in particular from PCT application publication number WO 92/00815.

The description portion of the specification includes two so-called "consistory statements".  The first of these is in respect of a process and the second is in respect of an apparatus.  In the specification as filed the claims comprised two independent claims corresponding to the two consistory statements.  However as a result of amendment, of the twenty claims in the specification as accepted, only claim 1, which is to an apparatus, is independent.  While some claims are directed to a process, these include as a limitation the use of the arrangement defined by the apparatus claims and they are therefore de facto dependent claims.  Claim 1 is substantially coterminous with the corresponding consistory statement, and reads as follows:

“1.An arrangement for alternatively producing one of a hot-rolled strip, a hot-formed pre-strip and an unformed slab, of steel by continuous casting, which arrangement comprises in combination:

an open-ended mold having a continuously constant cross section and constructed to cast a strand at slab thickness,

a first forming stage provided in the region below the mold in which the strand has a liquid core and constructed to reduce said slab thickness,

a second forming stage provided in the region in which the strand has already completely solidified and constructed to further reduce said slab thickness to pre-strip format,

a third forming stage comprised of a hot-rolling stand, and

a separating means arranged between said second and third forming stages and constructed to produce strand pieces separated from said strand and destined for hot-rolling in said third forming stage,

wherein said first, second and third forming stages are each able to be activated or not activated so that either none, one, two or all of the forming stages are activated during casting."

The invention described and claimed thus possesses two features not mentioned in WO92/00815.  These are:

(i)  the mould has a continuously constant cross section; and

(ii) the first, second and third forming stages can each be activated or not activated so that either none, one, two or all of the forming stages are activated during casting

The contribution made to the overall arrangement by the first of these features is explained in the specification as:

"The strand shell is neither deformed nor squeezed in the open-ended mold, because the latter has a continuously constant cross section.  Due to the steady operating conditions prevailing within the open-ended mold (homogeneous conditions, such as uniform lubrication and uniform cooling), the strand emerging from the open ended mold has a strand shell of supreme quality such that the risk of breakout is minimized and forming of the strand still having a liquid core is feasible without any risk of breakout."

The advantage of the second feature is said to be the versatility it bestows on the apparatus by enabling the steel production plant to produce a wide variety of products depending upon which forming stages are activated.  Further versatility comes from the plant being able to continue in operation despite one or more forming stages being out of action due to breakdown.

The preferred method of performing the invention is described with reference to a single drawing.  This drawing represents the production plant in schematic form.  The specification provides very little in the way of detail of the actual structure of a steel production plant.

THE EVIDENCE

The evidence in support consists of a single statutory declaration by Martin Wiltshire, who is the General Manager of Metal Plant at Mannesmann Demag Pty Ltd.  Although the relationship between this company and the opponent is not specified in the evidence, I think it is reasonable to assume that for present purposes that they are one and the same.  Mr Wiltshire's declaration indicates that he has extensive background knowledge in the art of continuous casting of metal.

Mr Wiltshire's declaration commences with a dissection of the specification, at the conclusion of which he criticises the specification for not providing sufficient detail to construct an arrangement in accordance with the invention which is able to achieve all the aims of the invention.

The remainder of the declaration consists of a comparison of the claims against three items of prior art annexed as exhibits to the declaration.  These citations comprise:

·    WO 92/00815 mentioned above as having been admitted prior art in the present specification

·    PCT application publication number WO 89/11363 which is referred to in WO 92/00815 and which Mr Wiltshire asserts should be read together with WO 92/00815 as a single source of information

·    US Patent No. 5,018,569.

Mr Wiltshire contends that these documents anticipate all the claims of the opposed application.

The evidence in answer consists of a declaration by John Thomas Devine.  Mr Devine's curriculum vitae, which is an exhibit to his declaration, indicates that from 1994 to 1996 he was employed by a company related to the applicant company.  However at the time of making his declaration (1998) he appears to have been at least prima facie independent of the applicant.  His declaration indicates that he has extensive background knowledge in the art of continuously casting steel slabs and thereafter hot rolling and carrying out other forming operations on cast steel slabs.

Mr Devine claims that, as a person skilled in the art, he would have been able to construct a plant for carrying out the process according to the invention based on the information provided in the specification.  He also rebuts various assertions made by Mr Wiltshire that the claims are lacking in novelty and an inventive step.

The evidence in reply is another statutory declaration by Martin Wiltshire in which he makes the following points:

·    the invention to which Mr Devine has directed his evidence is at variance with that which is claimed

·    Mr Devine has not given details of methods he says he is aware of for performing the invention, and he (Mr Wiltshire) is not aware of the control systems which are required to carry out the invention

·    the construction Mr Devine has placed on WO 92/00815 that the arrangement disclosed in this document must always operate with the first or second forming stages activated is mistaken

·    the evidence of Mr Devine confirms Mr Wiltshire's evidence that it is common general knowledge to adjust the rollers of a forming stage so that as the strand passes through the forming stage the rollers may either reduce the thickness of the strand or, if the rollers are adjusted sufficiently wide apart, the thickness of the strand may be unaltered.

Further details of the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

At the hearing Mr Ryan argued the opponent's case on the ground of novelty on the basis of a single document only, namely, WO 92/00815.  Mr Ryan conceded that this disclosure does not disclose the use of a mould having a continuous cross section, but said that such moulds form part of the common general knowledge, and "on its face [WO 92/00815] would disclose the use of either kind of mould."  He also conceded that WO 92/00815 lacked the feature that the first, second and third forming stages are able to be activated or not activated so that either none, one, two or all of the forming stages are activated during casting.  However, he relied on the evidence of Mr Wiltshire in contending that in WO 92/00815 the distance between rollers at each of the forming stage can be increased to such an extent that they are rendered ineffective, and in this way the forming stage is de-activated.  He drew attention to Mr Wiltshire's description of this as "a matter of production line variation", and said that if that were not the case the present application would be insufficient because there is no enabling disclosure in the present specification for the requirement that the first, second and third forming stages are able to be activated or not activated so that either none, one, two or all of the forming stages are activated during casting.

Mr Ryan went on to deal with the appended claims, submitting that all lacked novelty.  He did not put forward any argument on lack of an inventive step separate to the consideration of novelty.  On the ground of manner of manufacture he simply asserted that there is no manner of manufacture disclosed in the opposed specification in light of WO 92/00815 because the threshold level of inventiveness is not present.

In her submissions Ms Borham stated that even if Mr Wiltshire's submissions that a person skilled in the art would read WO 92/00815 as disclosing rollers that are "inherently adjustable" are accepted, this does not result in the publication containing "clear and unmistakeable directions" (General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457). Regarding the feature of the present invention of selectively activating or not activating the forming stages, she drew attention to the fact that WO 92/00815 is, according to Mr Devine's evidence, "exclusively to a plant for producing a strip having a thickness of less than 20mm", whereas the purpose of the present invention is to produce an array of steel products. Ms Borham noted that in the relevant passages of Mr Wiltshire's evidence no mention is made of the feature of the open-ended mould being of a continuously constant cross-section not having been disclosed in WO 92/00815.

On inventive step, Ms Borham submitted that the common general knowledge which the opponent claimed to be in existence at the priority date of the claims is, if anything, much more narrowly confined than was suggested by Mr Wiltshire. She also submitted that the three prior art patent specifications adduced by the opponent would not, in terms of section 7(3) of the Patents Act, have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area. However according to Ms Borham even if those two points were to be decided against her the problem-solution approach to inventive step still did not lead to the present invention. She also drew attention to the similarity between this case and another case, Bally Gaming International Inc v I.G.T. (Australia) Pty Ltd [1999] APO 23 (26 March 1999). In that case it was decided that the invention, because of its inherent versatility, did not lend itself to the problem-solution approach. In that case the integers were considered to interact such as to make for an "essentially different machine" and to involve an inventive step.

It was also submitted by Ms Borham that the invention was a manner of manufacture and met the requirements of section 18(1)(a) of the Patents Act. She cited Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd 40 IPR 243 as confirming that any combination of integers between which there was a working interrelationship producing a new or improved result or an old result in a better way is a manner of new manufacture. She stated:

"The present invention involves the combination of a number of elements which interact with each other to produce a new result or product, being the ability to alternatively form one of three different steel products by continuous casting in the one arrangement.  This new result comes about by virtue of the interaction between the components of the apparatus or process."

In regard to whether the invention is a mere working direction, she noted that the present invention is novel and inventive and it produces a new result, and thus is not a mere working direction.

I will set forth the submissions made by the parties in more detail, where material, later in my decision.

DECISION

In proceedings such as these before the Commissioner, in reaching a conclusion on any issue the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). However the onus rests with an opponent to clearly establish its case. In this regard it is a notable aspect of the present matter that the only evidence from the opponent is from an employee of the opponent company, and in the normal run of events it will be appropriate for it to be accorded less weight than had it come from someone independent from the opponent.

Construction of the specification

It is a prerequisite to determining the grounds of opposition in this matter that a construction be given to the claims.  For present purposes I need only consider claim 1.  Only two aspects of claim 1 merit mention in relation to construction.  They are:

(1)The meaning of the phrase "a continuously constant cross section" used in reference to the open-ended mould.  At the hearing, both sides appeared to accept that this meant that the cross section of the mould transverse to its length (that is, the direction of travel of the steel) was constant.  I construe the phrase in question likewise.

(2)The meaning of the phrase "are activated during casting".  Mr Wiltshire in his evidence in support professes to be unclear whether claim 1 defines that the various forming stages can be switched to (and presumably from) an activated state during casting, or merely before casting began.  However, he then states:

"However from a fair reading of the specification as a whole, it appears that the latter interpretation is intended."

My reading of the claim is that it does not impose any limitation upon when the forming stages can be switched to an activated state.  They merely have to have the capability of being in or not being in an activated state during casting.

Novelty

The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).

I do not think there is any doubt that every feature of claim 1 is essential.  A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here.  This was not disputed by Mr Ryan.

At the hearing Mr Ryan indicated that the opponent only wished to rely on a single document - WO 92/00815 - to establish its grounds of lack of novelty and lack of an inventive step.  It was conceded by Mr Ryan, as by Mr Wiltshire, that there was no express disclosure in WO 92/00815 of two of the features defined in claim 1 of the opposed application.  These are, firstly, that the mould has a continuously constant cross section; and, secondly, that the first, second and third forming stages can each be activated or not activated so that either none, one, two or all of the forming stages are activated during casting.  As these features are essential features of the claimed invention, WO 92/00815 would seemingly fail the "reverse infringement test".  However, the opponent contends that each of these features is common general knowledge, and that the person skilled in the art would read WO 92/00815 as disclosing those features.

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (supra):

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.

The evidence put forward by the opponent to establish that the use of moulds having a continuously constant cross-section is common general knowledge in the art is:

·the declaratory evidence of Mr Wiltshire from his own knowledge

·a depiction in United States Patent specification 5,018,569 of a mould which may, or may not, have a continuously constant cross-section and which is described in the text of the specification in these terms:

"……mold 1 [is] for casting a slab ingot having initially about 60mm thickness.  This thickness is basically given and determined by the distance between the wide or broad walls."

According to Mr Wiltshire:

"The fact that the thickness of the strand is determined by the distance between the wide or broad walls of the mold indicates there is little variance in this distance over the length of the mold and further indicates to me that the mold has a constant cross-section."

·    a line of reasoning advanced by Mr Ryan that if the features which were in present claim 1 but were absent from WO 92/00815 were not common general knowledge, then the present specification would be lacking in sufficiency.  This is because the present specification provides very little detail of the actual structure of a steel production plant to be made in accordance with the invention.  Thus, according to Mr Ryan, either all the "missing" information was common general knowledge, or else the specification was not sufficient.

This evidence as to the common general knowledge does not appear to be very strong.  Firstly, Mr Wiltshire is not a disinterested party in this matter.  Secondly, as well as being unique as a documentary disclosure (purportedly) of a mould with a continuously constant cross-section, US 5,018,569 is outside the patent area.  In any case, in my view it does not conclusively show what the opponent purports it to do - in this connection I note the quoted passage says nothing about the configuration of the sidewalls of the mould, which also determine its cross-section.  Thirdly, while the common general knowledge-insufficiency link has some logic to it, the situation is not as clear-cut as Mr Ryan has presented it.  In particular, while I think it reasonable to expect that the skilled addressee would be in possession of all the common general knowledge in the art, as well as this it is also reasonable to expect the addressee to have skills which he or she can bring to bear in carrying out the invention.  For example, in Universal Oil Products v Monsanto (1973) 46 ALJR 658 it is stated:

"The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonably competent skill in the practical mode of doing what was then known."

Also consistent with this is the notion that the skilled addressee should be able to carry out reasonable trials and correct errors in the specification.  In Valensi & Another v. British Radio Corporation, (1973) RPC 337 it is stated:

"We think that the effect of these cases as a whole is to show that the hypothetical addressee is not a person of exceptional skill and knowledge, that he is not expected to exercise any invention nor any prolonged research inquiry or experiment.  He must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in working trials and to correct obvious errors in the specification if a means of correcting them can readily be found."

Thus while I accept that the rather spare manner in which the best method of performing the invention has been described is an indication of the state of the common general knowledge, I do not think it is possible to draw any definite conclusion from it as to what is, or is not, common general knowledge.

On the other hand, I attach considerable significance to the fact that the opponent has not provided any of the sort of evidence that one would normally expect in these circumstances.  There is no evidence from independent experts and the only documentary evidence having a hint of a prior disclosure of a mould having a constant cross-section is one foreign patent specification.  Given the opponent's apparent involvement in the art in question it is surprising that the opponent has not been able to produce more persuasive evidence in the way of hard evidence from its own resources, and given the fairly well-developed state of the industry in Australia it is surprising the opponent has not been able to come up with declaratory evidence from independent experts.  Overall, the evidence seems to me to fall short of establishing, on the balance of probabilities, that the use of moulds having a continuously constant cross-section was common general knowledge in the art of the present invention.

The evidence put forward by the opponent to establish that it was common general knowledge in the art of the invention for each forming stage to be able to be activated or not activated so that any permutation of the forming stages are activated during casting consists of:

·    the common general knowledge-insufficiency link referred to previously

·    the disclosure in US 5,018,569 (supra) of a forming stage which is adjustable

·    the declaratory evidence of Mr Wiltshire from his own knowledge that it was common general knowledge to make such forming stages adjustable - which (as pointed out by Mr Wiltshire in his evidence in reply) Mr Devine did not refute.

I am prepared to accept as fact that it is common general knowledge for the forming stages to be made adjustable.  It is standard engineering practice to build in such adjustability, depending on the cost and complexity it introduces into the particular apparatus.  I also accept as valid the next step in the opponent's reasoning, that implicit in such adjustability is the potential for a forming stage to be adjusted so that it is inoperative.  However, claim 1 defines something more than this.  As I understand it, claim 1 requires that the arrangement of the claim be capable of continuing to function (albeit in a different mode) if one or more of the forming stages is off-line.  There is nothing in the prior art which even discloses this, let alone establishes it as common general knowledge.  Thus I find that the evidence in this matter does not establish it was common general knowledge in the art of the invention for each forming stage to be able to be activated or not activated so that any permutation of the forming stages can be activated during casting.

As a consequence of my findings on the common general knowledge, the opponent fails in its ground of lack of novelty.

For the sake of completeness I will observe that even if I had found that those features of present claim 1 which are not specifically disclosed in WO 92/00815 were common general knowledge, I consider there would still not be any basis upon which to find that claim 1 lacked novelty.  Ms Borham submitted, correctly in my view, that to render a claim not novel the prior art must positively disclose each essential claimed feature, citing the well known quote from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) that

"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

This requirement that each essential feature be disclosed holds, in so far as novelty is concerned, even where the additional matter defined by the claim is common general knowledge or a workshop variation, provided it is an essential feature of the claim in question - Nicaro Holdings v Martin Engineering 16 IPR 545 and RD Werner & Co Inc v Bailey Aluminium Products 13 IPR 513. The opponent has tried to get around this by a process of adding common general knowledge to the disclosure of WO 92/00815 (although it has attempted to characterise it more as a process of reading the prior art in light of the common general knowledge). This cannot give rise to anticipation, although, as is said in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, it may cause the claim to fail on the ground of obviousness.  The same point is made in Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689, except that the term "subject matter" is used rather than "obviousness".

As an alternative avenue of establishing that the present claims lack novelty, Mr Wiltshire in his evidence contended that WO 92/00815 and another patent specification WO 89/11363 should be read together as a single source of information and when this was done they anticipated the present claims.  Mr Ryan did not pursue this approach at the hearing.  In my view, Mr Wiltshire's reasoning fails on two counts.

Firstly, the two documents cannot be read together as a single source of information.  As was stated by Lockhart J in Nicaro Holdings v Martin Engineering (supra):

"It is however, permissible, to refer not only to the patent relied upon as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross-referencing system solely as a shorthand means of incorporating a writing disclosing the invention".

In WO 92/00815, WO 89/11363 is merely referred to as prior art - there is no indication that the draftsman intended WO 89/11363 to be incorporated in WO 92/00815.

Secondly, I do not consider that reading the two documents together would result in a disclosure any closer to anticipating the present invention than WO 92/00815 itself.  The particular disclosure in WO 89/11363 upon which Mr Wiltshire seeks to draw is of an "uncoupling" of the stages of the fabrication process, that is, making the process discontinuous, so that the steel can be transported along the line at different speeds in different stages.  Mr Wiltshire regards this as equivalent to "de-activation".  I cannot agree.  The fact two stages of the process are uncoupled implies to me they operate independently, not that they cease to operate.

Accordingly I find that claims 1 to 20 are novel in light of the prior art in the evidence in this matter.

Inventive step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)   common general knowledge; or

(b)   common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

I have previously found in relation to the ground of novelty that on the evidence the relevant common general knowledge in the art is for the rollers in the forming stages to be adjustable such that, in the words of Mr Wiltshire, they are "sufficiently wide so that the strand did not undergo any deformation and thickness reduction as it passed through the rolling stand".  Given the gulf between the common general knowledge and the subject matter of the claim, it is clear there is no basis upon which to find that the claims lack an inventive step  in light of the common general knowledge alone.

At the hearing Mr Ryan did not make any submissions specifically on inventive step.  Ms Borham submitted in the first instance that none of the three prior art documents in evidence came within the category of documents that could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.  The basis of her argument was that the evidence from Mr Wiltshire was insufficient to establish that fact.

Of the three prior art documents, only WO 92/00815 is, I think, of interest in relation to inventive step, being closest by far to the subject matter of the present claims.  Because of the closeness of its subject matter and because it is a mainstream patent document I am in no doubt that WO 92/00815 falls into the category of documents that would have been ascertained, understood and regarded as relevant.

In the eventuality that I did not accept her submission that none of the prior art documents would have been ascertained, understood and regarded as relevant, Ms Borham submitted that on the basis of the problem-solution approach to inventive step the present invention did have an inventive step.  She formulated the problem as being:

"to provide a process capable of producing strips as thin as possible while offering high operational flexibility"

and considered the solution to be:

"to provide a number of forming stages each having a specific function, and each being able to be activated or not activated to enable the alternative production of a hot-rolled strip, a hot-formed pre-strip or an unformed slab of steel".

I substantially agree with this interpretation of the problem, although I would perhaps have set the problem a little more broadly by confining it simply to the high operational flexibility aspect.  However, so far as the solution goes I am inclined to think that the mould having a continuously constant cross-section is an integral part of the solution because, as I understand it, it contributes to the versatility of the arrangement.

Following this, Ms Borham then submitted that the solution as she considered it to be is not suggested in the prior art.

In my view the present invention can only be regarded as lacking an inventive step if it is considered to be a "mere workshop improvement" in light of WO 92/00815 and the common general knowledge represented by adjustable rollers of the forming stages.  If the only difference between the claimed invention and the prior art was the configuring of the apparatus to enable the alternative production of a hot-rolled strip, a hot-formed pre-strip or an unformed slab of steel, then in light of the common general knowledge I would have some hesitation in answering in the negative the question of whether the invention

"was so obvious that it would once occur to anyone acquainted with the subject, and desirous of accomplishing the end".

(See Allsop Inc & Another v Bintang Ltd & Ors (1989) AIPC 90-615 at page 39,332.)

On first reflection it seems to be reasonable to expect that if part of an overall arrangement becomes inoperative, but the arrangement itself is potentially still operative, although in modified form, the possibility to design it with that capability would occur to the person skilled in the art.

However, as Aickin J said in Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd.:

"It is trite law that a 'scintilla of inventiveness' is sufficient and 'no smallness or simplicity will prevent a patent being good'"

Also, I must make allowance for "the seductive clarity of hindsight" (Allsop Inc & Another v Bintang Ltd & Ors, supra).  It could be that in the environment of the invention the feature in question was not so "very plain" (per General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, supra) an expedient, due, for example, to technical hurdles which may have been generally perceived by the persons skilled in the art to exist.  Here I must once again note the paucity of the evidence on this from the opponent (upon whom the onus lies in this matter), although that could be at least partly explained by the recentness of the prior art, with WO 92/00815 only pre-dating the present invention by a couple of years.

Taking all this into account, on balance I consider the capability of the claimed apparatus to produce a hot-rolled strip, a hot-formed pre-strip or an unformed slab of steel constitutes a "scintilla of invention" (Samuel Parkes & Co Ld v Cocker Brothers Ld, (1929) 46 RPC 241). However, there is more to the invention than just that feature. There is also the feature of the mould having a continuously constant cross section. That feature seems to be part of the inventive concept, in that it facilitates the present invention in overcoming the problems of the prior art by enhancing the versatility of the arrangement which is defined by the claims. The evidence does not establish that such moulds are common general knowledge. When, in considering the advance of the present invention over the prior art, the feature of the mould is also factored in, any hesitation I have as to the non-obviousness of that invention is dispelled.

Therefore, I find that, on the evidence, the claimed invention involves an inventive step.

Manner of Manufacture

On manner of manufacture Mr Ryan cited N V Philips' Gloeilampenfabrieken v Mirabella (1995) CLR 655 in submitting as follows:

"……one asks whether the alleged invention overcomes a threshold hurdle of inventiveness which must be satisfied before one needs to consider at all the issues of novelty and obviousness……Although the opponent in fact asserts lack of novelty, the opponent's further or alternative submission is that there is no manner of manufacture disclosed in the opposed specification in the light of [WO 92/00815] because the necessary threshold level of inventiveness is not present."

In Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (supra) the High Court stated:

"In this respect, the full court was in error in considering under the ground of revocation in s 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side."

I note that section 100(1)(d) corresponds to section 18(1)(a) of the Patents Act 1990, that is, the provision relating to manner of manufacture.

The opponent's approach on manner of manufacture seems completely at odds with what the High Court has decided in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd. Even if I am wrong in this, as I have found that the present invention is both novel and involves an inventive step, I assume that this means that the claimed invention has the threshold level of inventiveness Mr Ryan has said it must have in order to satisfy section 18(1)(a).

I note that in the statement of grounds and particulars in relation to the ground of opposition of manner of manufacture reference is made to the present invention being a mere "workshop variation" and "working direction".  "Workshop variation" is an inventive step issue.  While I do not consider that the present invention falls into the category of being a "working direction", even if it were to, in the circumstances of the present case it would seem to be more of an inventive step issue than one of manner of manufacture.  I have already found the present invention to involve an inventive step.

Ms Borham submitted that there is a working interrelationship between the integers of the present claims, and thus in accordance with Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (supra) the present invention is a manner of manufacture.  I fully concur.

Accordingly I find that the invention is a true combination and a manner of manufacture as required by section 18(1)(a) of the Patents Act 1990.

Section 40

In the statement of grounds and particulars, the opponent has particularised four aspects in which the present specification does not comply with section 40.

The first concerns the fact that the specification, after having discussed the shortcomings of the prior art, states:

"The invention aims at avoiding the above-described disadvantages and difficulties and has as its object to provide a process as well as an arrangement for carrying out the process, which enables the production of strips as thin as possible at a high product quality while offering a very high operational flexibility.  In particular, it is possible to continue casting in case of a failure at a forming stage arranged to follow the open-ended mold."

The statement of grounds and particulars asserts that the claims lack fair basis in that they fail to define an invention which achieves the objectives of the invention as above-stated.

Mr Ryan did not make any submission on this point, and the only evidence from Mr Wiltshire having any relevance probably goes more to sufficiency rather than fair basis.  After setting down every shortcoming that he is able to extract from the discussion in the specification of the prior art, Mr Wiltshire states:

"the specification does not provide directions which would enable me to construct and operate the arrangement or the process by this arrangement in such a way that the aims of the invention could be achieved or all of the disadvantages overcome."

I consider the arrangement defined by claim 1 is potentially capable of achieving the object of the invention, as set out in the specification.  Whether it will actually do so or not is, in my view, a question of utility, which is beyond the scope of this opposition.

The second way in which the specification is claimed to contravene section 40 also involves fair basis, and is that the claims lack fair basis by failing to define all the essential features of the invention.  I presume that the basis of this contention is that the consistory statement in the description part of the specification includes some features which do not appear in claim 1.  However, these features are clearly indicated as being only preferred, so there is clearly nothing to this.

The third aspect concerns the lack of fair basis in the description for the reference in claim 1 to the forming stages being activated during casting.  The expression "during casting" does not actually appear in the description, but I am in no doubt the addressee of the specification would understand this as being what is described by the specification.

Finally, the specification is said to lack sufficiency.  The statement of grounds and particulars states:

"No method or embodiment by which the forming stages can be activated or not activated is described in the specification as filed."

Mr Ryan raised the issue of sufficiency in his submissions, but my understanding was that this was more to reinforce the opponent's position on common general knowledge than to seriously suggest the specification lacks sufficiency.  As mentioned previously, some of Mr Wiltshire's evidence appears to allege lack of sufficiency.  However, Mr Wiltshire is not an independent expert and his evidence is, in any case, contradicted by that of Mr Devine.  Furthermore I note that the level of detail provided in the present specification does not compare that unfavourably with that of the three prior art specifications in the evidence in this matter, one of which (WO 89/11363) is by the opponent.  The weight of evidence thus seems to point to the specification being sufficient, and that accords with my own reading of the specification.

At the hearing, Mr Ryan raised some minor clarity issues with the appended claims.  I have considered those closely, but I have concluded that there is nothing to them.  As nothing of significance attaches to them, I will not say anything further on them.

CONCLUSION

I have found that none of the grounds of the opposition have been established, and so I dismiss the opposition filed by Mannesmann AG.  I direct that the application proceed to sealing, subject, of course, to any appeal being filed to this decision.

COSTS

In accordance with the general principle that costs follow the event, I award costs against Mannesmann AG.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack, Melbourne

Patent attorneys for the opponents   :  Carter Smith & Beadle, Melbourne