Waipuna International Limited v Aqua Tech International Pty Ltd
[2001] APO 26
•29 May 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application No. 688291 in the name of Waipuna International Limited
TitleVegetation Control Using High Pressure Liquid Spray
ActionOpposition under s59 to the grant of a patent by Aqua Tech International Pty Ltd
DecisionIssued .
Abstract
I have found that the claims are unclear in their use of "about" when describing the lower end of the range of "about 100 psi". I have also found that claims 1 to 11 are not novel and lacking an inventive step. They are, however, directed to a manner of manufacture. I found that the specification satisfies s40(2)(a) in that it contains a full description and discloses the best method of performance known to the applicant. As I was satisfied that there is clearly patentable subject matter disclosed, I allowed 60 days from the date of this decision for the applicant to propose suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 688291 by Waipuna International Limited and opposition thereto under s59 by Aqua Tech International Pty Ltd.
BACKGROUND
Patent application 55894/94 was filed as the Australian designated application of international patent application WO 94/11110. The application was based upon US basic application 972595 that was filed 6 November 1992 which is a continuation-in-part (cip) of US basic application 935865 filed 26 August 1992 which is a cip of US basic application 906032 filed 26 June 1992 which is a cip of US basic application 583576 filed 14 September 1990. The application which was filed in the name of Aquaheat Technology, Inc was subsequently assigned to the current applicant, Waipuna International Limited (Waipuna) on 6 June 1996. The application was advertised accepted as 688291 on 12 March 1998. A notice of opposition by Aqua Tech International Pty Ltd (Aqua Tech) was filed 2 April 1998 with the statement of grounds and particulars being served on 1 July 1998.
Evidence-in-support was completed 29 March 1999. Evidence-in-answer was completed on 29 March 2000 with evidence-in-reply being completed on 6 April 2000.
The matter was set down to be heard in Canberra on 1 February 2001. Dr Ian de Jonge, patent attorney of Cullen & Co, represented the applicant, Waipuna. Mr Bill Bennett, patent attorney of Pizzeys, represented the opponent, Aqua Tech.
The specification
The invention relates to both an apparatus and method for controlling vegetation using a heated high pressure liquid spray. The aim of the invention is to reduce the amount of herbicides and insecticides that are used. Through use of the invention from about 0% to about 50% of the normally recommended doses would need to be used. Specifically, the invention utilises the combination of pressures at about 100 psi to about 4,000 psi with a heated liquid to achieve its objectives. The specification teaches that the use of a heated water spray under high pressures allows smaller amounts of chemicals to be used. The invention also contemplates the use of insecticides and thus it can be used to control insect infestation.
While the invention is described in terms of use with a tractor, the invention also contemplates that a smaller apparatus may be suitable for "personal use in edging driveways, patios or walks and even for maintaining flower beds and small gardens."
Although the specification indicates that the liquid spray may be heated, claim 1 and the identical drafted consistory clause require that the liquid is heated.
The specification states that the applicant's prior application 935865 discloses the use of heated water for controlling vegetation. A temperature range for heating the liquid from about 1000F to about 2400F is disclosed. The Australian equivalent application for this prior art is AU 673718 (58921/94) (Waipuna International Limited) that was published on 29 March 1994 and which has a priority date of 26 August 1992.
The specification discloses that "spray pressures serve to lacerate the vegetation to various degrees, speeding dehydration and death of the undesired growth." At the pressure range disclosed, not only may lower temperatures be used, but a lesser concentration of chemicals may be used. As the temperature of the spray material increases, concentration of chemicals can decrease and conversely when higher concentrations are used, lower temperature may be used. When no chemicals are used, the temperature may approach 2400F. When spray pressures are used in the range of about 100 psi to about 4000 psi, lower temperatures and lower concentrations of chemicals can be used.
"In yet another embodiment…[a]mbient temperature water is sprayed at high pressure from the leading boom's spray tips, and heated water, or water and chemicals, are sprayed from the trailing boom's nozzles at a much lesser pressure. The pressurized spray lacerates the stems and leaves of the plants, while the heated spray scalds the plants and removes cuticular wax to accelerate the dehydration process".
Thus the invention may involve the application of high pressure unheated water and a separate application of a heated spray. While the specification mentions the use of a high pressure spray to cut and lacerate the vegetation, I note that there is no mention of the use of pressure solely to achieve greater penetration or dousing of the vegetation.
The claims
The specification ends with 11 claims. There are two independent claims.
Claims 1 to 7 are directed to an apparatus.
"1. Apparatus for controlling vegetation by the application of a high pressure liquid spray, said apparatus comprising: a supply of liquid to be sprayed, said liquid being selected from the group consisting of water, herbicide, insecticide oil, surfactant, fertilizer and aqueous mixtures thereof; a first boom comprising at least one first spray tip mounted thereon; means for delivering said liquid from said supply to said first spray tip; said means comprising pump means for delivering said liquid to said first spray tip at a pressure of from about 100 psi (689 kPa) to about 4,000 psi (27580 kPa), and further comprising means for heating said liquid intermediate said supply and said spray tip, whereby a high pressure liquid spray may be applied to the vegetation."
2. Apparatus as in claim 1 wherein said means for heating is intermediate said supply and said pump means.
3. Apparatus as in claim 1 wherein said means for heating is intermediate said pump means and said spray tip.
4. Apparatus as in claim 1 further comprising a second boom comprising at least one second spray tip mounted thereon, said second boom being disposed in spaced apart, substantially parallel relation to said first boom, said means for delivering being further connected to said second boom whereby a liquid spray may be emitted from said second spray tip.
5. Apparatus as in claim 4 wherein said means for delivering comprises a second pump disclosed in fluid-communication relation between said supply and said second boom.
6. Apparatus as in claim 5, in which said means for heating said liquid is intermediate said supply and said second spray tip.
7. Apparatus as in claim 1 further comprising control means operatively connected to said apparatus whereby an operator may regulate the flow rate of said liquid; the delivery pressure of said liquid, and the passage of said pressurized liquid through said first spray tip."
The method claims are as follows.
"8. A method for controlling vegetation, said method comprising the steps of:
a. preparing a liquid spray material;
b. heating the liquid spray material, andc.spraying said liquid spray material onto the vegetation to be controlled at a pressure of from about 100psi (689 kPa) to about 4,000 psi (27580)."
9. A method as in claim 8 including the step of heating said spraying material to a temperature of about 1000F (380C) to about 2400F (1160C) before said spraying step."
The omnibus claims are as follows.
"10. Apparatus for controlling vegetation by the application of a high pressure liquid spray, substantially as hereinbefore described with reference to Figures 1-5, 6-11, 12, 13, 14 or 15.
11. A method for controlling vegetation, substantially as hereinbefore described with reference to Figures 1-5, 6-11, 12, 13, 14 or 15."
Evidence
Evidence-in–answer
Geoffrey Modra of Aqua Tech International Pty Ltd filed a first statutory declaration dated 20 October 1998 with accompanying annexes GM-1 to GM-5.
GM-1 is a copy of the Operating and Maintenance Manual, the front page of which refers to Aquaheat Junior (AH-200) 10 GPM/8500BTU/hr and also refers to US Patents 5366154 and 5297730 which are equivalent family members of the current application and the applicant's prior Australian patent application 673718. As US 5297730 was granted on March 29 1994 (exhibit GM1 Dated 21 June 2000), this places the publication of the Manual post March 1994. While Mr Modra states that the Manual was printed after the priority date of 6 November 1992, clearly it is at least a couple of years after the priority date. Mr Modra attests that the information contained in the Manual was made known to him during his visits to the USA in April 1991 and July 1992. Section 3 of the Manual refers to a pressure limiting valve rated at 300 psig. While the manual refers to typical heating ranges, spraying speeds over the vegetation and duration, there is no reference to any values of spraying pressure. The unit described in the manual appears to be a small unit. Mr Bennett referred to this as the 'generator version'.
GM-2 is a single sheet of paper upon which is glued two photographs. One is a photograph of a machine labelled "Aqua Heat Machine" while the other is a photograph of a field labelled "after treatment and before treatment". The back of the photograph bears the words:
"This is the machine I saw working on 2 visits in 1991 and July '92. Note canopy and spray boom with nozzles to spray hot water mounted on side of machine".
However, there is no indication in these photographs that the machine can operate at the pressures required. This is the version referred to by Mr Bennett as the 'milk tanker version'.
GM-3 is a copy of a paper entitled "Effects of a Hot water Spray Applied to Two Ages of Twelve Weed and Two Crop Species" by Gary L Ritenour, Director of Agricultural Operations and Professor Plant Science California State University, Fresno. The paper refers to the use of hot water sprays of 210-2200F that were applied to a field on 8 September 1992. I note there is no indication of when this paper was published and there is no reference to spraying pressures.
GM-4 is a copy of Aquaheat newsletter dated 9 November 1992 (3 days after the priority date). The one sheet newsletter has on its front-page text describing the benefits of the machine. This text clearly states that the machine "kills weeds using only hot water". Again, there is no reference to any spraying pressures. The drawing on the back of the newsletter is identical to embodiment described in Figure 6 of the current specification. This is the version referred to by Mr Bennett as the 'milk tanker version'.
GM-5 is a copy of 3 Aquaheat personal data sheets dated 5 November 1992 (1 day before the priority date). These sheets contain statements made by Art Foster, and Peter Andersson on the weed project (ie killing weeds by the use of hot water). Dean Buendorf makes the third statement but it does not refer to the weed project. There is no indication if these data sheets were published and I note there is no reference to pressure values in any one of the data sheets.
Geoffrey Modra filed a second statutory declaration dated 17 November 1998. Annexed to this declaration as GM-1 is a copy video tape of an apparatus that Mr Modra attests is "functionally the same as the apparatus described, illustrated and claimed" in the current application. Mr Modra attests that the video tape is "a true copy of a tape which I brought into Australia prior to 6 November 1992". This tape was viewed during the hearing. There was no indication of the use of a pressure range for spraying. Mr Modra attested in his third declaration that the "pump of the apparatus shown in the video tape was capable of pumping pressures greater than 100 psi in order to spray hot pressurised water against the weeds". The machine displayed on the video is the "milk tanker version".
Geoffrey Wayne Modra filed his third declaration dated 3 March 1999 with accompanying annexes GWM-1 and GWM-2.
GWM-1 are copies of 4 photographs of an apparatus that was demonstrated between 22 to 25 April 1991. Again, there is no indication of spraying pressure. These photographs illustrate a version that appears more developmental than the "milk tanker version".
GWM-2 is a copy of an article entitled "'Ultimate' weed killer invented Floridian devises technique using hot water spray" by Ian Fisher, Florida Grower and Rancher Magazine, September 1990 at pages 12-13. The picture of the apparatus illustrated in the paper seems similar to the apparatus depicted in GWM-1. Mr Modra stated that what is described at pages 9 to 16 and figures 1 to 5 of the current specification was "identical or very close to the apparatus" that he saw in 1991 and this is illustrated in the photographs of GWM-1 and is described in the Growers article.
Geoffrey Wayne Modra filed his fourth declaration dated 23 March 1999 with annex GM-1.
GM-1 contained copies of the following documents:
US 1042688
US 4991342
CA 1196318 and equivalent GB 2122511
September 1990 issue of Florida Grower and Rancher, pages 12–14 (Grower)
AU 673718
US 1709270
US 3830014
US 3915384
US 1727995
GB 630370
GB 406370
Graham Dalton filed a statutory declaration dated 14 January 1999 with attached photocopy of GM-2 from Mr Modra's first statutory declaration. Mr Dalton declares that Geoff Modra went to the USA in April 1991 and July 1992 and on his return, but before the priority date of the application, had disclosed to him all the details of the present invention.
Megh Singh, Professor of Weed Science, Citrus Research and Educational Centre University of Florida, filed a statutory declaration dated 18 January 1999. Professor Singh attests in a similar manner to Mr Dalton that in April 1991 and July 1992 he had disclosed all of the details of the present invention to Geoff Modra.
Scott Kelvin Thompson, owner/vice-president of Concept Prototyping Research & Development Company, filed a statutory declaration dated 16 January 1999. He attests in similar manner to Professor Singh and Dalton that on April 1991 and July 1992 he disclosed all the details of the present invention to Geoff Modra.
Dr Ian de Jonge filed a statutory declaration with annex IDJ-1 containing the curriculum vitae of Professor Megh Singh.
Evidence-in-answer
Dennis Walter Tindall, managing director of Waipuna International Limited filed a statutory declaration dated 25 June 1999 with annexes DWT-1 to DWT-21. As previously stated Waipuna acquired the right to the Aqua Technology Inc in February 1996. These exhibits date from January 1995 to September 1997 and discuss business dealings etc which occurred after the priority date and hence are clearly of no particular interest in this opposition. In the declaration, Mr Tindall also challenges the alleged disclosures of the invention to Mr Modra by Messrs Dalton, Singh, and Thompson.
Everlyn Brigid Body, solicitor employed by Pipers, Patent & Trade Mark Attorneys filed a statutory declaration dated 24 March 1999 giving a legal opinion on the Distributor Agreement dated 9 January 1995 (exhibit DWT-1). As this deals with events after the priority date, they are not relevant to this opposition.
Trevor John Horder, a company director of Searcy Pty Ltd filed a statutory declaration dated 27 March 2000 with accompanying exhibits TJH-1 and THJ-2. This company has held exclusive distribution rights for the Waipuna system since February 1998. Exhibit TJH-1 is a letter dated 1 June 1998 and is of no particular relevance to events that took place before the priority date. Exhibit THJ-2 is a photocopy of a photograph of a smaller Waipuna machine. Mr Horder states that Mr Modra imported this machine into Australia during 1997 and 1998. The machine is a "trailed mounted machine, designed to be drawn behind a truck". The machine depicted is unlike any of the other machines put into evidence except that it looks as if it has a generator unit similar to that disclosed in the manual of exhibit GM-1 to Modra's first declaration. While this declaration deals with events occurring after the priority date, it identifies "Mr Dalton" as an employee of Spray Tech and this becomes a significant point in assessing the importance of the declaration by Graham Dalton.
Everlyn Brigid Body filed a second statutory declaration dated 28 March 2000 with annexes EBB-1 to EBB-3. This declaration deals with searches conducted on the Australian Companies Records. Exhibit EBB-1 identifies the opponent Aqua Tech International Pty Ltd, while EBB-2 identifies Aqua Tech Australia Pty Ltd and EBB-3 identifies Farm Tech Machinery Pty Ltd. From the last record, Ms Body surmises that Spray Tech Australia changed its name in March 1998 to Farm Tech Machinery Pty Ltd. Mr Bennett raised the query that the opponent seems to have been "misidentified", presumably as the dealings with Aquaheat Technology Inc were apparently with Spray Tech Australia and not with Aqua Tech International Pty Ltd. Mr Bennett raised this point for my information and did not make any detailed submissions. I note that there is no restriction on the class of "person" who may oppose in oppositions under s59 of the 1990 Patents Act. Accordingly, I need not consider this argument any further.
Dennis Walter Tindall filed a second statutory declaration dated 24 March 2000.
Dr Ambrose Harry Jesudasan Rajamannan, President of Aquaheat Technology, Inc filed a statutory declaration dated 27 March 2000. In this declaration, Dr Rajamannan describes the early machine as a "low pressure high volume hot water machine" and submits that Geoff Modra would have not been shown the high pressure version of the machine as it had yet to be invented.
Evidence-in–reply
Geoff Modra filed his fifth statutory declaration dated 21 June 2000 with accompanying exhibits GM1 to GM4.
GM1 is a copy of US 5297730.
GM2 are a photocopies of a newspaper articles dated 1998 and 21 April 1999 both critical of the way Waipuna conducts its business.
GM3 includes an article and copies of press releases made by Aqua Heat Technology, Inc. These releases are dated 9 November 1992 and refer to the use of hot water to kill weeds. The copy of an article in Farm Industry News Volume 26 Number 14 January 1993 refers to the use of hot water and contains a photograph of the "milk tanker version".
GM4 is a copy of Mr Modra's activity statement showing that he had been in the USA in April 1991 and July 1992.
Francois Mandy, businessman, filed a statutory declaration dated 27 July 2000. He makes some statements on the credibility of Mr Tindall. Again this is in reference to events occurring after the priority date.
DECISION
S40 matters
Before considering the evidence, it is useful to consider the meaning and scope of claim 1. In particular, the critical feature to be considered is the "pump means", viz
"said means comprising pump means for delivering said liquid to said first spray tip at a pressure of from about 100 psi (689 kPa) to about 4,000 psi (27580 kPa)".
The first issue is the meaning of the phrase "about 100 psi". It is argued that the scope of "about 100 psi" includes mains water pressure. But, no evidence was filed on whether mains water pressure is "about 100 psi". Dr de Jonge suggested that mains water pressure ranged from 30-145 psi and in Brisbane was 100 psi. Mr Bennett stated that while mains water pressure in Canberra was 100 psi in the large water pipes that this would be far less at the tap. But as there was no evidence of a declaratory nature that established any of these facts, I am not satisfied that the term "about 100 psi" includes mains pressure. Mr Bennett submitted that the issue of "mains pressure" is fundamentally an argument that the term "about 100 psi" includes known operating pressures utilised in agricultural machines and is an argument about "mains pressures" per se. There is some merit to this argument. However, this issue only becomes relevant when considering novelty matters.
The second point is the scope of "about 100 psi". If this were to include pressures say of 20psi or say 60 psi, would these be considered to be within the range of "about"? Could the term "about 100 psi" include the low pressure hot water device of the applicant's prior art? This appears to be the essence of the opponent's argument. In my mind, there is a real argument that the term is broad enough to encompass lower pressures than 100 psi. How much lower is open to speculation. Neither, the evidence of the applicant nor that of the opponent was able to resolve my doubts. Dr Rajamannan referred to the prior device as being low pressure but gave no values. Mr Modra in his fourth declaration submitted that the device of the applicant's prior patent has a pump that would have the capability to operate at the required pressure (ie at about 100 psi). Given the evidence presented before me, I am of the view that the term "about" in the expression "about 100 psi" renders the ambit of the claims uncertain.
The third point, an obvious one, is that pressure must be used to dispense the liquid. In one embodiment, the heated liquid and the pressurized liquid are dispensed from different spray tips (ie there are two pumps). One pump uses high pressure to provide a spray liquid that is used to lacerate the vegetation. The other pump supplies heated liquid to a second array of spray tips at a "much lesser pressure". It appears from the submissions of Dr de Jonge that the opponent is arguing that the prior art implicitly teaches either the use of pressures about 100 psi or that it would be obvious to use such pressures from the point of view of more effective dousing of the vegetation. However, this is a novelty/ inventive step argument and I will defer consideration of this point until then.
The fourth point is that the claims are not limited by purpose. The claims define an apparatus and a method for delivering heated pressurised liquid. There is no characterisation in any one of the claims that relate to the heating and pressurising of the liquid for the achievement of any particular purpose. That is, the claims are not limited by purpose. I will say more on this topic when I consider novelty and inventive step. However, for present purposes, the lack of any limitation of purpose does not give rise to any fair basis issues.
One further point is that claim 1, on face value, appears to be unclear in its reference to the apparatus as producing "high pressure liquid spray" while the claim includes heating as an essential feature. The apparatus (and method) as described produce a high pressure, heated liquid spray" as opposed to merely producing a "high pressure liquid spray". In resolving this issue, I take cognisance of the decision in AMP v Utilux, (1971) 45 ALJR 123, at page 128, where McTiernan J pointed out that:
"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
However, this is not a major defect and following the principle enunciated above, the claims are not unclear on this point. I intent to ignore it as a skilled reader could readily resolve the issue.
Hence, in conclusion, the claims are unclear in their use of the term "about 100 psi" as it renders the ambit of the claims uncertain.
Novelty
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken. See e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.
AU 673718 (58921/94): Novelty-whole of contents
The basis of the 'whole of contents' objection exists in the definition of the "prior art base", which provides that, for the purpose of assessing novelty, the prior art base includes:
"... information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published. "
So long as a document satisfies the above criteria, the citation can be considered for novelty purposes. And like any other document cited for novelty purposes, the citation can be read in the light of the knowledge possessed by a skilled addressee: Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545.
Before considering the criteria in detail, it should be noted that neither party commented on these issues.
The priority date of the citation is 26 August 1992 and its publication is 23 March 1994, such date occurred after the priority date of the current application. Hence criterion (B) is satisfied.
While a copy of the accepted patent was put into evidence, no copy of the specification at filing and at OPI was put in. I am aware that the delegate of the Commissioner was not satisfied in Laboratoires Prographarm v FH Faulding & Co Ltd [1998] APO (19 November 1998) because the "published document has some substitute pages, suggesting that the filed version was different, and the basic document is also different to the published document". In a later decided case of National Starch and Chemical Investment Holding Corporation v Goodman Fielder [1999] APO 41 (9 July 1999), the delegate was satisfied, on balance, that "the information contained in the description in this specification was contained in it both on its filing date and when it was published". In that case the Hearing Officer carried out an inspection of the copy of the document on file which indicated that the claim pages had been subject to amendment within the Australian Patent Office and that "there is no reference on the cover page of the specification to any amendments having been made before the application entered the national phase."
In the present case, I also made an inspection of the case file and conclude that while no changes were made to the description, the claims of the accepted patent were amended both before the International Preliminary Examination Authority (IPEA) and the Australian Patent Office. As the information sought to be relied upon lies in the description, I am satisfied that the information was present in the specification at filing and at publication. Therefore criterion (C) is satisfied.
The only alleged difference between the disclosures of this specification and that of the claims of the currently opposed specification lay with the pressure range at which the liquid is sprayed. In the citation, no mention is made of the pressure at which the liquid is sprayed. Dr de Jonge submitted that a person skilled in the art when reading the citation would realise that the pressure used would be at about 100 psi which he stated was a low pressure.
Dr de Jonge states:
"The citation clearly describes the existence of a pump 26 to pump liquid through the spray nozzles. As 100 psi is no more than mains water pressure, we would find it difficult to believe that pump 26 would pump at [a] pressure [that] is less than 100 psi."
A second argument put by Dr de Jonge was that a man skilled in the art interpreting the citation would consider it obvious to use a pump pressure of about 100 psi.
Mr Modra put it another way.
"I therefore do not believe that Waipuna can claim that an apparatus which is, to all practical purposes, the same as their earlier patent application could constitute an inventive difference merely by making the water pressure higher (it being realised that the earlier patent specification already described the use of pressurised hot water to kill weeds)."
These comments bring out some differences in the opponent's arguments. While Dr de Jonge argues that the prior patent would inherently use a pressure at 100 psi, he also argues and is in agreement with Mr Modra that the difference is in reality one of obviousness. The former is a clearly a novelty argument while the latter is clearly an inventive step argument. However, the latter argument in the context of "whole of contents" is without any statutory backing and thus can be dismissed.
Referring back to the novelty argument, if I were to find that the claims, in their lower range of pressures, include the prior disclosure then at least claims 1 and 8 of the current application would lack novelty.
Dr Rajamannan states that the machine that Mr Modra saw and the machine of the earlier patent was a low pressure high volume hot water device and thus would not be capable of operating at the pressures claimed.
"The initial work carried out by James Thompson [the inventor] involved the application of hot water, at low pressure, delivering a large volume of water onto the ground, in order to completely soak or douse the vegetation with enough hot water that would kill the vegetation."
However, it could be argued that the earlier application also describes a pressurised hot water system albeit a low pressure system, recognising that pressure is a requirement for spraying. From the comments of both parties, there is agreement that pressure was used to dispense the heated water of the early patent.
However before I can complete my considerations on novelty, I need to decide whether the information "is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration". The information sought to be found within the early document relates to heating and pressurising a liquid. While heating is clearly disclosed, only a pump is mentioned for supplying the liquid to the spray tips.
If I take Dr de Jonge's primary submission as an invitation to read the citation in the light of common general knowledge, I would note that apart from Mr Modra whose company has filed the opposition there is no evidence from independent witnesses to attest on how the skilled addressee should construe the prior art citation. While no evidence has been filed to suggest a skilled addressee would as a matter of course use a pressure comparable with normal agricultural spraying, and no evidence has been filed of what pressures constitute normal agricultural spraying pressures, it seems to me to be absurd to reject a suggestion that a skilled addressee would not realise that higher pressures would not be contemplated. - It seems absurd that the pump of the prior art could not be replaced with a higher pressure pump. Thus I accept the proposition that it is well known to use "high pressure" water jets in horticultural spraying machines to dispense a liquid.
While not forming part of this opposition, I note the contents of the examiner's first report that was issued 30 September 1996. In objection 3 to that report, the examiner stated that claims 1 and 9 as filed, which were not limited to providing a heated pressurised liquid, were not novel as agricultural spraying equipment operating at pressures within the defined range have been readily available for many years. The examiner annexed two documents to his report. These documents are as follows.
a) "Power Framing Technical Annual" 30 ed. (1973) at page 223. This page illustrates a number of agricultural machines and states that they operate up to 200 psi.
b) "Machines for Power Farming" Stone A. A. and Gulvin, H.E. (1963) page 411. This refers to machines operating at 600 psi.
It is well known that it is legitimate to read a citation in the light of common general knowledge:
"a given specification is not to be read in a vacuum. The reader must be regarded as having at least the common knowledge of the art." See Acme Bedstead v Newlands, 58 CLR 689 at page 704.
"Common general knowledge is that knowledge which every worker in the art may be expected to have as part of his or her technical equipment" (Automatic Coil Winder Co Ltd v Taylor Electrical Instruments Ltd, (1944) 61 RPC 41 at page 43). Common general knowledge is compounded of training, experience, observation, and reading. In relation to this, as a Hearing Officer with technical qualifications and many years experience in examination of patent documents, I am of the view that agricultural spraying machines operating at pressures within the range of the current application are well known.
Hence, criterion (A) is satisfied and the document forms part of the prior art base.
From my understanding of the submissions of both parties, the only difference between the 'whole of contents' citation and the claims of the current application lies in the pump pressure range. As I am prepared to read the 'whole of contents' citation in the light of common general knowledge, I conclude that the claims lack novelty in view of the information disclosed in the citation.
While I am prepared to read the citation in the light of common general knowledge of agricultural spraying, it should be noted that I am not prepared to extend the common general knowledge to include its use in lacerating weeds. However, as purpose or function does not limit the claims, I need not consider this argument any further.
Consequently, I conclude that the information sought to be present in the prior patent forms part of the prior art base. Given the nature of the early patent document, I conclude that claims 1 to 11 are not novel. While the claims include matter that was clearly disclosed in the citation, they also include matter that is not clearly disclosed. In particular, the embodiments relating to the dispensing of high pressure from one set of spray tips and the heated liquid for the other spray tip are in my view not disclosed in the citation and in my mind cannot be read in.
US 1042688 (Key) 29 Oct 1912: Novelty of claims 8 and 9
This application relates to an apparatus for scalding grass and aims to eliminate weed growth around train tracks. The device forces "under considerable pressure, hot water down between the crevices of the stones". The citation acknowledges that it has "been proposed to kill grass or weeds on the road-beds of railways by the use of steam or hot water or steam and hot water combined…"
Although no pressure values are mentioned, Dr de Jonge suggested that a person skilled in the art would realise that pressure of about 100 psi would be involved and this fact would be implied by the use of such expressions as "considerable pressure" and "relatively high pressure" that are used in the citation. The whole point of the invention of the citation is to force water and/or steam between the cracks of the stones so that the roots of the weeds are killed. The current invention describes the range of 100 psi to 4,000 psi as high pressure. I cannot see that the mere fact that a range is not referred to in the citations necessarily means that there is no disclosure. The expressions used to describe the "pressure" used in the citation clearly fall within the scope of the opening words "of high pressure" of the opposed claims.
Although the citation makes no specific reference to the temperature of the hot water, I am satisfied that the hot water dispensed by the apparatus of the citation will fall within the range defined in claim 9.
As the invention of this citation falls completely within the scope of claims 8 and 9, they are thereby rendered not novel.
CA 1196318 (Maker) 5 Nov 1985
This application relates to a "nonchemical method" of eradicating weeds by heating a liquid "to near at least 100oC" which is then sprayed onto the weed via a spray nozzle. The application also teaches the use of steam instead of the use of water near its boiling point. Up to two ounces of water are sprayed on each weed over a period of about 2 seconds. The apparatus is hand held with water being supplied through a garden hose.
Dr de Jonge clearly admits that this document does not disclose the claimed range. However, he points out that the apparatus has a pressure relief valve. From this, he deduces that a skilled addressee when reading the citation would realise that the pressure of spray must be at about 100 psi which he again asserts is merely mains pressure. As pressure is supplied by connection to a domestic house supply, Dr de Jonge argues that this would disclose a pressure of about 100 psi. Mr Bennett pointed out that the water simply pours out. I disagree with Mr Bennett. From my understanding of the operation of the device, it appears that it is dispensed by water pressure provided through the connection to the garden hose that forces the hot liquid out through the spray nozzle.
However, given that I have already concluded that there is no evidence to establish "mains pressure", the claims are novel as an essential feature has not been shown to be present in the citation. Hence the claims are novel in view of this citation.
Florida Grower & Rancher Magazine- September 1990
This article discloses the use of hot water to kill weeds and immature fire ants. While the article discusses some of the details of the apparatus, there is no mention of using pressure as a feature essential to the invention. For example, the article refers to the boom as "similar to the one used for herbiciding, only heftier". The method described in the article refers merely to "dousing them [the weeds] with very hot water". There is a report of an interview with Dr Megh Singh, a declarant in this opposition. Dr Singh refers to the machine as a "thermal machine". He refers to testing of the machine against "speed, temperature and the amount of water used" and how frequent repeat operations would need to be. Dr de Jonge suggested that a skilled reader of the article would realise that a pump would be used and that it would give rise to a pressure at the tips of about 100 psi. While there is simply no discussion in the article on the use of pressurised liquid, I am prepared to read the document in the light of common general knowledge. In particular, I am prepared to read the publication in the knowledge that agricultural spraying pressures are included within the range defined. As noted in respect of the 'whole of contents' citation, purpose or function do not limit the claims.
I note that in relation to the other features of the machine, Dr de Jonge provided a very detailed analysis, which apart from the issues of pressure was not contraverted by Mr Bennett. In conclusion, this article renders the invention as claimed in claims 1 to 11 as lacking in novelty.
Exhibit GWM1 (Geoff Modra's second statutory declaration)
This exhibit contains photographs taken in April 1991 of an apparatus that was being demonstrated at the patentee's facilities in the USA. For these photographs to be considered for the purposes of novelty they need to have been made "publicly available". By "publicly available" I refer to "information that the public has or can acquire by consulting some source open to it, i.e. material that can be inspected "as of right" by the public. It is enough that the information is available to a single person so long as that person is able to use the information freely without an obligation of confidence. See Gadd v Mayor of Manchester, (1892) 9 RPC 516 at page 527, Fomento v Mentmore, (1956) RPC 87 at page 105, Monsanto (Brignac's) Application, (1971) RPC 153 at page 159.
The definition of prior art base includes;
"(i) information in a document, being a document publicly available anywhere in the patent area; and (ii) information made publicly available through doing an act anywhere in the patent area; and (iii) where the invention is the subject of a standard patent or an application for a standard patent—information in a document publicly available outside the patent area;"
Mr Modra attests that the device shown in these photographs is the same as that referred to in the Grower article and is identical to that currently claimed. He states that these photographs were taken before the priority date and that on return to Australia he showed these photographs to Mr Dalton. The evidence of several of opponent's declarants (Dr Singh, Mr Modra, Mr Scott Thompson, and Graham Dalton) corroborate these dates as does Mr Modra's activity statement (GM-4 of 21 June 2000). While Dr Rajamannan, a declarant for Waipuna, cannot state with certainty the dates Mr Modra was in the USA, he was able to attest to the fact that Mr Modra visited the Aquaheat facilities "at the early stages of Aquaheat's equipment development and patent applications."
Dr de Jonge takes me through a very thorough analysis of the photographs and compares them with the description of the invention. However, there is no evidence to corroborate that the device seen at that time was capable of producing a high pressure spray. Mr Modra merely states that the device he saw had "a pump able to achieve pressures of 100 psi or more". There is no evidence to corroborate the observation of Mr Modra's. The evidence of Dr Rajamannan contradicts this suggestion.
Dr Rajamannan declares.
"We [the inventor and Dr Rajamannan] never showed or consulted with Dr Singh, Mr Modra or Mr Scott Thompson or anyone, a machine with high pressure gauges until several months after the patent application date…"
While the declarations of Dr Singh, Mr Modra, Mr Scott Thompson, and Graham Dalton stated that the machine witnessed by Mr Modra was that of the current invention, I find their declarations less convincing than that of Dr Rajamannan. Indeed, I find the repetitious and rather superficial natures of these declarations are not as persuasive as the logical and detailed declaration of Dr Rajamannan. What is missing in these declarations is the detail evidence of the production of a high pressure spray. Therefore, the photographs do not render the claimed invention as lacking novelty.
An important feature of the Dr Singh, Mr Modra, Mr Scott Thompson, and Graham Dalton declarations is the argument that Mr Modra was not under any fetter and was free to disclose the invention. It is further alleged that the information about the invention was communicated to a person in Australia before the priority date.
The evidence of Dr Rajamannan suggests that it was most unlikely that Mr Modra would have viewed the machines before signing a confidentiality agreement given the understanding and experience about the patent system possessed by the inventor and Dr Rajamannan. He also suggested that Mr Modra saw one of the machines that Aquaheat Technology Inc was unable to patent. It must be remembered that the first two patent applications filed by the Company were abandoned. Therefore, it would appear likely that what Mr Modra saw in 1991 was one of these early machines and not a machine that satisfies the requirements of the current specification.
In relation to the other features of the machine, Dr de Jonge provided a very detailed analysis, which apart from the issues of pressure was not contraverted by Mr Bennett.
In conclusion, there is insufficient evidence to convince me that on the balance of probabilities the photographs were made publicly available before the priority date. I also note that there is also a lack of evidence that, on balance, the machine viewed was operated at high pressures.
Oral communication
Mere "importation of knowledge into Australia without inhibiting fetter" is not information that necessarily forms part of the prior art base. For this importation to amount to disclosure, it must be made publicly available. The only person in Australia Mr Modra communicated his knowledge to was Graham Dalton. However, some details about this disclosure are missing. When and where it took place is not stated. It is not clear whether there was any issue of confidentiality between Mr Modra and Mr Dalton. Furthermore, there is some doubt about the independence of Mr Dalton. In Trevor Horder's declaration, a "Mr Dalton" was named as an employee of Spray Tech, a company operated by Mr Modra. Mr Tindall of Waipuna stated in his second declaration that "Mr Dalton" may be the same Mr Dalton who had attested to the communication from Mr Modra. This somewhat contrasts with Mr Tindall's first declaration in which he identified a Mr Malcolm Dalton as Spray Tech's Marketing Manager who met with Mr Horder in 1997. I note that Mr Dalton's declaration is without any statement as to his occupation. Given the importance of Mr Dalton's declaration, I am not convinced that the opponent has discharged its onus and thus I am not convinced that communication took place without fetter or confidentiality being involved.
The Video: Exhibit GM-1 of 17 November 1998
Mr Modra attests that the machine shown in the video was of the apparatus that he saw during his visits to Aquaheat that occurred before the priority date. The video shows the machine in operation and it also includes an interview with Dr Singh. Mr Modra states that he brought the video back into Australia before the priority date of the application. In his 3 March 1999 declaration, Mr Modra analyses the video tape and compares it with the description of the invention. Specifically he declares that the "pump of the apparatus shown in the video tape was capable of pumping pressure of greater than 100 psi in order to spray hot pressurised water against the weeds." Yet at the same time, he also states that the spray means consists of "two spaced apart booms and hot water can be sprayed through the nozzles along each boom." However, this reflects the structure of the early Waipuna machine. In the current Waipuna machine, only one of the spray nozzles delivers hot water, the other delivers pressurised water at ambient temperature. This would suggest that Mr Modra witnessed the early Waipuna machine and not the one of the current application. Mr Bennett points out that there is no indication by Dr Singh that high pressure was being used. If high pressure were being used to lacerate weeds then I would have expected that Dr Singh would have mentioned it. Further, there is no indication from the operation that high pressure was being used. Mr Bennett stated that there was one section on the video in which the water was dripping out. He suggested that the machine might well have been operated at very low pressures so that steam would not have obscured workings of the machine. However, it is permissible to 'read' the video tape in the light of common general knowledge as per the definition of "documents" as defined by sec 25 of the Acts Interpretation Act 1901. Under s25 of the Acts Interpretation Act 1901 a document includes:
"a) any paper or other material on which there is writing;
b) any paper or other material on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and
c) any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device".
Therefore, as a video tape is a document I can interpret it in the light of common general knowledge of horticultural spraying pressures and in doing so I am prepared to accept the images presented on the video tape as disclosing to a skilled addressee the use of a high pressure hot water machine for controlling vegetation. In relation to the other features of the machine, Dr de Jonge again provided a very detailed analysis, which apart from the issues relating to pressure were not contraverted by Mr Bennett. Hence, the information disclosed in the video tape is, prima facie, novelty destroying.
For the document to deprive the claimed invention of novelty, it must be made publicly available either inside or outside of the patent area. A document is made available to the public if it is communicated to a single member of the public without inhibiting fetter: Bristol-Meyers Co. 's Application [1969] RPC 146 at 155. Although there is no evidence that Mr Modra showed this tape to anyone he is nevertheless a member of the public. Given that Mr Bennett submitted that the video tape was a promotional video tape, I am prepared to conclude that Mr Modra was not under any fetter regarding the information disclosed by the video tape. Consequently, I am satisfied that the tape was made publicly available.
Accordingly, for these reasons the information disclosed by the video tape when interpreted in the light of common general knowledge renders the claimed invention not novel.
Inventive step: Common General Knowledge alone
Under s7(2) it is permissible for an invention to lack an inventive step in the light of common general knowledge alone.
"7(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately."
"7(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
In relation to claim 1, Dr de Jonge submitted that it was extremely well known in Australia:
To apply a liquid spray optionally containing chemicals over crops under pressure,
To use an apparatus to spray crops, the apparatus having a boom and an array of spray tips mounted on the boom,
To use such an apparatus where the liquid is pumped through the spray tips under pressure using a pump to use a pressure which would be sufficient to ensure good contact with the plants,
It would be common general knowledge to use a pressure of at least 100 psi which is about the mains pressure of city water pipes, and
To heat a liquid to any elevated temperature.
Similar comments were made regarding the remaining claims.
However, the combination claimed must be considered as a whole. It is insufficient to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. The opponent must also establish that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem.
"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided." Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at page 293:
While Mr Bennett conceded that booms for spraying were known, I do not consider that it would be obvious to a person skilled person in the art to construct the machine without inventive ingenuity. I am therefore not satisfied that the opponent has discharged its onus of proof in this matter.
Inventive step: Common general knowledge in combination with documents
Dr de Jonge presented alternative arguments on lack of inventive step. In these arguments, Dr de Jonge added common general knowledge to the citations. The common general knowledge he sought to add was that relating to spray cleaning of driveways. Mr Bennett submitted that there was no evidence filed in the opposition to substantiate this. Mr Bennett also suggested that cleaning driveways was not the technical field of the invention. I would agree with this assessment. In my view, the appropriate common general knowledge is that relating to the pressures used in agricultural spraying machines and not that relating to the use of high pressure to lacerate weeds from driveways.
US 1042688 (Key) 29 Oct 1912: Inventive step of claims 8 and 9
Clearly, the citation when combined with the common general knowledge that liquid at a high pressure will have greater penetrating power would render claim 8 as lacking an inventive step. In relation to claim 9, it is clearly admitted that the use of hot water to kill weeds has a long history. Hence these claims lack an inventive step.
CA 1196318 (Maker) 5 Nov 1985
In arguing lack of inventive step on this application, Dr de Jonge submitted that;
"…a person skilled in the art would read interpret and understand the Canadian patent and would have little difficulty in developing an apparatus identical with that described in the Canadian patent by where the water temperature is increased to increase the pressure."
I am far from convinced. There is simply no evidence before me that would lead me to think that a person skilled in the art would read the citation in this light and arrive at the claimed invention. The real issue in this case is whether a skilled person would realise that a higher pressure should be used. I do not believe that they would. The invention of the citation is clearly limited to domestic water pressures. Hence, the claims do not lack an inventive step in the view of this citation.
Florida Grower & Rancher Magazine- September 1990
Dr de Jonge submitted that it would be obvious to for a skilled person to realise the importance of using high pressure. Dr de Jonge stated.
"We submit that a person skilled in the art interpreting this article would consider it obvious to provide a pump which would have a pressure of at least 100 psi to ensure that hot water sprays at sufficient pressure to properly douse the weeds."
Dr de Jonge continues with his submission by suggesting that the use of the lower pressure of 100 psi is obvious.
"A person skilled in the art would probably consider that a pressure of larger than 100 psi would be normal or plainly evident, as 100 psi is merely approximately mains water pressure."
I would agree with Dr de Jonge that raising the pressure to ensure more effective dousing would be an obvious solution to a problem, if the problem to be overcome were to be providing adequate coverage. However, the purpose or function of the use of high pressure in the current invention is to lacerate or cut the vegetation. As such a purpose or function does not limit the ambit of the current claims, then the solution provided by the claims must be directed to solving a more generic problem. Such a problem, if constructed, could be directed to providing an improved method and apparatus for more efficient control of vegetation in such a manner that would not result in the "addition of new and increased levels of chemical poison to our environment." An obvious solution would be to improve the dousing of the vegetation by increasing the pressure at the spray tip of the applicant's prior art to normal spraying pressures. This is the current solution as provided by the claims. Hence, the claimed invention lacks an inventive step.
An alternative approach would be to add common general knowledge of agricultural spraying pressures to the disclosures of the citation. There appears to be no reason for not doing so. Hence, the claimed invention lacks an inventive step.
Best Method of Performance
Dr de Jonge referred me to S40(2)(a), which states that a complete specification must "describe the invention fully, including the best method known to the applicant of performing the invention". I was referred to the case of Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1997) 37 IPR 523 at 530:
"The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject and also makes it plain, to persons having reasonably skill, how to perform the invention."
In the more recent case of Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689, the Federal Court made some comments on this issue.
"This holding by the primary judge involves, in our respectful view, a misunderstanding of what is required by s 40(2)(a) of the Act concerning a description of the best method known to the applicant of performing the invention. In Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 in the Court of Appeal, Fletcher Moulton LJ said at 269:
'It is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out.'
This requirement is to ensure good faith on the part of the patentee, and to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention. It is relevant in this case to recognise that the statutory obligation is an obligation to disclose the best method of performing the invention known to the applicant."
The Court then went on to state.
"The requirement of s 40(2) of the Act is that the patentee is required to give the best information in his power as to how to carry out the invention. That requirement is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention offered, with reference to drawings of specific mechanisms or structures or examples of specific process conditions or chemical formulations, depending on the field of the invention and the nature of the instruction to be conveyed. It is necessary to have regard to what is the invention claimed…"
The analysis of S40(2)(a) issue is provided by Mr Modra.
"…I am unable to find any enablement or full description in the opposed application which would allow me to come to the conclusion that the use of hot water in a particular pressure range provides surprising and unexpected results."
Mr Modra continues with his analysis by suggesting that there is insufficient knowledge for a person skilled in the art to perform the invention.
"I have carefully reviewed the patent specification and am unable to find any comparative examples, graphs, charts, tables or anything that would lead me to agree that the use of high pressure water provides a surprising and unexpected advantage."
and
"I would expect that the patent specification would provide …for instance, an increased killing rate or the ability to treat more area per unit time, or other such advantages which I would find surprising and unexpected."
Notwithstanding these comments from Mr Modra, I believe that the evidence indicates that there is sufficient disclosure, even with some experimentation, in the specification for a skilled worker to perform the invention. It is very clear from the evidence of Dr Singh, Gary L Ritenour, the Aquaheat Manuals, and the various press releases and articles what steps and processes can be taken in order to implement the teachings of the invention. Indeed the evidence indicates that a skilled worker in the art would expect to be involved in experimentation. Therefore, I believe that in the context of the present invention, there is sufficient description for a skilled addressee, even with some experimentation, to be able to perform the invention.
A further argument put by Mr Modra relates to the fact that the earlier Waipuna machine used hot water:
"If the earlier known apparatus did not use these pressures, it would have been merely for routine engineering reasons (that is, in not requiring more expensive high pressure tolerant components) but not due to any lack of appreciation that the higher pressure would shed or lacerate weeds."
The mere fact that it may be known (allegedly-as the opponent disputes this) that high pressure sprays will shred or lacerate weeds as examplied by the use of high pressure water sprays to clean driveways is not an argument on performance and full description. Rather this is an inventive step argument that I have already considered.
In conclusion, while I agree that there are no "comparative examples, graphs, charts, tables" or any data on "increased killing rate or the ability to treat more area per unit time", there is sufficient information in the specification for a skilled person in the art to perform the invention albeit with some experimentation.
This ground of opposition fails.
Manner of Manufacture
Dr de Jonge for the opponent alleged that the claims did not pass the threshold test for a manner of manufacture. The test is usually expressed as follows.
"It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further" per NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449.
I disagree with the opponent on this matter. While I am prepared to agree that the claims, as currently drafted, are merely directed to the admitted prior art having a high pressure pump installed as compared to a low pressure pump, the document in question was not known before the priority date of the specification. As the specification draws a distinction between the disclosures of this admitted prior art and the current invention, I am unable to conclude that the test enunciated in NV Philips (supra) is satisfied. Hence, the claims are directed to a manner of manufacture.
CONCLUSION
I have found that the claims are unclear in their use of "about" when describing the lower end of the range of "about 100 psi". I have also found that claims 1 to 11 are not novel and lacking an inventive step. They are, however, directed to a manner of manufacture. I found that the specification satisfies s40(2)(a) in that it contains a full description and discloses the best method of performance known to the applicant.
I am also satisfied that there is clearly patentable subject matter disclosed and I allow 60 days from the date of this decision for the applicant to propose suitable amendments.
COSTS
Costs normally follow the event. The opponent has been successful. I see no reason for departing from normal practice. Hence costs are awarded against the applicant Waipuna International Limited.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant :Pizzeys, Canberra
Patent attorneys for the opponent :Cullen & Co, Brisbane
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