Westhill Engineering Construction Pty Ltd v Cameco Industries, Inc

[1999] APO 3

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent  :          No. 681840 in the name of Westhill Engineering Construction Pty Ltd

Title:          Apparatus For Cutting Elongate Articles

Action:          Application under section 69 for an extension of term of the petty patent; notice by Cameco Industries, Inc. under Section 28

Decision:          Issued            .

Abstract

Petty patent found not to comply with section 18(1)(b)(i) of the Patents Act 1990.

Claims 1 to 3 found to lack novelty in light of the Moreno patent (US Patent 4,170,098).

Claims 1 and 3 (only when appended to claim 1) found to lack novelty by virtue of prior use in light of the Brown Disclosure.

Patentee granted 60 days from the date of this decision to file suitable amendments.

Costs awarded against the patentee Westhill Engineering Construction Pty Ltd and in favour of the informant Cameco Industries, Inc.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 681840 in the name of Westhill Engineering Construction Pty Ltd, application under Section 69 for an extension of term of the petty patent and notice by Cameco Industries, Inc. under Section 28.

BACKGROUND

Petty Patent application 70276/96 was filed by Westhill Engineering Construction Pty Ltd on 17 October 1996 claiming priority from provisional application PO 1158 filed on 19 July 1996. The patent was accepted on 18 July 1997 and accorded No. 681840. The petty patent was sealed on 4 September 1997. Cameco Industries, Inc. (Cameco) filed a notice pursuant to section 28 of the Patents Act 1990 on 30 March 1998 giving notice of matters affecting the validity of patent 681840. Westhill Engineering Construction Pty Ltd (Westhill) filed for an extension of term of their petty patent on 4 August 1998.

The matter was heard in Canberra on 1 December 1998. Mr. William Bennett, patent attorney of Pizzeys, Canberra represented the patentee.  Mr. David Yates of counsel and Mr. Ian Millar, patent attorney of Spruson & Ferguson represented the informant Cameco Industries, Inc.

THE SPECIFICATION

The specification indicates that the invention relates to an apparatus for cutting elongate articles with particular but not exclusive application for cutting sugar cane stalks into billets.  In the "Disclosure of Invention" the specification states:

"This invention in one aspect resides in an apparatus for cutting elongate articles into shorter lengths, the apparatus including:-
opposed counter-rotating cutter assemblies each including cutter means which cooperate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies.
According to one preferred feature, each cutter assembly includes mounting means for mounting its cutter means, and the mounting means associated with one cutter assembly leads the mounting means associated with the other cutter assembly.  Preferably, one cutter means leads the other cutter means and the leading cutter means is mounted to the leading mounting means and the trailing cutter means is mounted to the trailing mounting means.
According to another preferred feature, one cutter means extends a greater radial distance from its centre of rotation than the other cutter means extends radially from its centre of rotation.  Preferably, the cutter means rotate at the same speed, the paths defined by the tips of the respective cutter means overlap, and the cutter means which extends the greater radial distance leads the other cutter means.  Preferably also, one cutter means leads the other cutter means and one cutter assembly includes an anvil located adjacent its cutter means, the anvil adapted to cooperate with the other cutter means.
According to another preferred feature, one cutter assembly includes an anvil located adjacent the one cutter assembly's cutter means, the anvil adapted to cooperate with the other cutter means.  Preferably, the one cutter assembly's cutter means is mounted to mounting means with a clamping plate and the clamping plate includes the anvil."

The specification proceeds with a brief description of the drawings and various embodiments of the invention.  The specification ends with three claims as set out below:

1.        An apparatus for cutting elongate articles into shorter lengths, the apparatus including:-

opposed counter-rotating cutter assemblies each including cutter means which cooperate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies, wherein each cutter assembly includes mounting means for mounting its cutter means, and the mounting means associated with one cutter assembly leads the mounting means associated with the other cutter assembly, and wherein one cutter means leads the other cutter means and the leading cutter means is mounted to the leading mounting means and the trailing cutter means is mounted to the trailing mounting means and wherein, one cutter means extends a greater radial distance from its centre of rotation than the other cutter means extends radially from its centre of rotation.

2.        An apparatus as claimed in claim 1, wherein the cutter assemblies rotate at the same speed, the cutter means overlap, and the leading cutter means extends a greater radial distance from its centre of rotation than the trailing cutter means extends radially from its centre of rotation.

3.        An apparatus claimed in claim 1 or 2, substantially as herein described with reference to the figures.

NOTICE UNDER S.28

In their notice Cameco asserted that:

(a) the patentee was not entitled to be granted the Petty Patent; and

(b) that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) and 18(1)(b).

In support of their contentions (a) and (b) they attached a Statutory Declaration of Douglas James Young dated 20 March 1998 including exhibits DJY-1 to DJY-13.  He states that he has been in the sugar cane industry since about 1960 and has been a harvesting contractor since about 1963.  He further states that he has operated, built, repaired and been intimately involved with sugar cane harvesting machinery since about 1963.

The patentee provided evidence in response consisting of declarations made by:

• Wayne Brown dated 10 August 1998 with exhibits WB1 and WB2.  He states that he has been involved in the manufacture and design of chopper systems for sugar cane harvesters since 1972 and that he is the owner and manager of Westhill Engineering Construction Pty Ltd.

• Geoffrey W. Denman dated 10 August 1998 with exhibits GWD1 and GWD2.  He states that he operates a sugar cane harvesting business.

• Roy W. Pietzner dated 17 August 1998 with exhibit RWP1.  He states that he operates a sugar cane harvesting business.

• Frank Beltrame dated 11 August 1998 with exhibit FB1.  He states that he runs an engineering business which focuses on the manufacture, modification and repair of sugar cane harvesting equipment.

SUBMISSIONS

At the hearing Cameco pursued only the ground that the invention is not a patentable invention because it does not comply with paragraph 18(1)(b)(i). They intended to show that the invention of the petty patent lacked novelty. I shall make reference to submissions from both parties wherever necessary in my decision.

DECISION

The Commissioner must consider the material filed by the informant with the Section 28 notice. If the Commissioner is satisfied that a ground mentioned in subsection 28(1) is made out, the extension of the term of the petty patent may be refused. If not satisfied, the Commissioner must grant an extension of the term under Section 69 and regulation 6.6.

Novelty

The test for anticipation is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235 where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

The test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (per Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at page 517; 116 IPR 545 at page 549).

The informant stated that they would show that claims 1 to 3 of the petty patent lacked novelty in light of the following items of prior art information;

1. United States Patent 4,170,098 issued 9 October 1979 in the name of Moreno et al., exhibit DJY-10 (referred to as Moreno hereafter).
2. Paragraphs 16 to 19 of Mr. Young's declaration in conjunction with his exhibits DJY-12 and 13 (referred to as Young hereafter)
3. United States Patent 3,673,774 issued 4 July 1972 in the name of Mizzi, exhibit DJY-9 (referred to as Mizzi hereafter).
4. Paragraph 2 of Mr. Brown's declaration in conjunction with his exhibit WB-1 (referred to as Brown hereafter).

They indicated that claims 1 and 2 definitely lacked novelty in view of the prior art cited.  Regarding omnibus claim 3 they indicated that if only the essential features (and any variations thereof) were considered, then as claim 3 was appended to claim 2 and claim 1 it would also lack novelty.

The patentee submitted that none of the cited prior art disclosed the invention particularly if the claims were properly construed.  They then drew attention to the description for interpretation of the term "leads" (as used in the claims) and based on this interpretation they contended that the invention was novel in light of the prior art.  However if the term "leads" was not considered to be clear in claims 1 and 2, this was clarified in claim 3, which made reference to the description and drawings.  Both parties made submissions with regard to filed declarations relating to the issue of novelty.  I shall refer to these submissions wherever relevant in my decision.

The essential features of the invention as set out in claim 1 of the opposed application are as follows:

A.       An apparatus for cutting elongate articles into shorter lengths, the apparatus including:-

B.       opposed counter-rotating cutter assemblies each including

C.       cutter means which cooperate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies, wherein

D.       each cutter assembly includes mounting means for mounting its cutter means, and

E.        the mounting means associated with one cutter assembly leads the mounting means associated with  the other cutter assembly, and

F.        wherein one cutter means leads the other cutter means and

G.       the leading cutter means is mounted to the leading mounting means and

H.       the trailing cutter means is mounted to the trailing mounting means and

I.         wherein one cutter means extends a greater radial distance from its centre of rotation than the other cutter means extends radially from its centre of rotation.

As claims 2 and 3 are appended to claim 1, I shall consider the additional features added by these on an individual basis.

The Moreno Patent

The patentee did not contest the date of publication of this patent.  I shall now refer to relevant parts of the patent specification to determine the relevance of the disclosure to the invention as claimed.

The Moreno patent specification begins with the following disclosure at column 1, lines 5-8:

"The present invention relates to harvesting machines.  More particularly, the invention is directed to combines for mechanized harvesting of sugar cane in an efficient and economical manner."

Then at column 1, lines 26 to 30 it states:

"Also known are crosscutting devices which divide the cut cane into chunks of a given length, which employ two pair (sic) of radial blades diametrically opposed with respect to each pair, which rotate in an opposite direction and toward the encountering mass."

Some deficiencies of the prior art are identified at column 3, lines 6 to 14:

"Other deficiencies which have been detected in connection with these prior art harvesting machines are that the cleaning is very sensitive to the degree of cutting of the vegetable mass harvested.  During the utilization of the equipment, the crosscutting blades are worn out very rapidly and the minimum of clearances between the sharp edges of these elements reduces crosscutting effectiveness and in turn a loss of suitable cleaning."

The Summary of the Invention discloses the following:

"The principal features of the invention are directed to an automatic harvesting machine, for the crosscutting and separation of the vegetable mass and for subsequent unloading; the machine employs micro-relief copying wheels which rotate freely when in contact with the ground, while the machine moves forwards and when activated by the hydraulic cylinders, the position of the harvesting section alters with respect to the ground; a crosscutting device comprising two drums of different diameters in which the blades are arranged with their inside working surfaces for the entire length of the drum, off-center with respect to the axis of rotation, this eccentricity being different for each drum; …"

The bolded portion above relating to the crosscutting device is of direct relevance to the invention as claimed in the petty patent.  In the Preferred Embodiment the Moreno patent discloses at column 4, line 64 onwards:

"The device for the crosscutting of the stems (14) (see FIG. 2) is attached to the structure (11) and chassis (12) and is formed by two drums (28) and (30) (see FIG. 3) one parallel to the other and transverse to the flow of cane, for the entire width of the machine.  Each on top of the other forms a convenient angle with the vertical of different outside diameters, the upper being larger and the lower being smaller.  Located on each drum are two pairs of blades (29) with their sharp edges diametrically opposed for the entire length of the drum and with the inside working surface off center with respect to the rotation axis.  This eccentricity being different for each one of the drums which are attached by means of screws to drum supports.  The eccentric arrangement of the blades (29) guarantees that their contact with the vegetable mass takes place under the same cutting angle, making certain that both blades (29) are equally activated and that during the bigger angle of rotation of the drums (28) and (30) the smaller possible play is maintained between the sharp edges when brought face to face."

The at column 6, lines 30 to 41 it discloses:

"The cutting device has disks (25) for producing a cutting impact and since both rotate in opposite directions, toward the inside of the machine, the cane stalks and part of the foreign matter collected by the stems are introduced into the interior of the receiving chamber, where the pairs of feeding drums (17), (24), (20), (23), (21) and (22) arrange them and proportion them for delivery to the crosscutting device (14).  There, the stems are divided into chunks of a given length, when the drums (28), (30) rotate (see FIG. 3) in opposite directions and when the blades coincide twice during each revolution."

Similar disclosures are made in claims 1 and 3 of the citation, the relevant portions being:

"Claim 1.  An improved apparatus for harvesting a vegetable mass, such as sugar cane, employing means for crosscutting and separating a vegetable mass and for unloading said mass from said apparatus, ….wherein said improvement comprises; providing said apparatus with said crosscutting means including a cross cutting assembly attached to the chassis of said apparatus defined by two differently dimensioned rotatable drums having associated cutting blades respectively located off center with respect to the axis of rotation of said drums, and mounted in a non-tangential orientation thereto …"

"Claim 3.  An improved apparatus as claimed in claim 1, wherein: said crosscutting assembly being defined by drums of different diameters, having an upper one of said drums larger than the lower and being further defined by cutting blades arranged having lower working surfaces off center with respect to the axis of rotation of the respective drums, and the resultant eccentricity being different for each of said drums, such that contact with the vegetable mass is made at the same cutting angle."

Looking at the essential features of claim 1 of the petty patent I consider that features A to D and I have been disclosed in the Moreno patent.  Feature E states:

"the mounting means associated with one cutter assembly leads the mounting means associated with the other cutter assembly,"

An issue arose as to how the term "leads" should be construed.  The informant submitted that in the clear absence of any specific definition in the specification it should be given its plain meaning.  The patentee submitted that the description at page 4 onwards when read in conjunction with the figures gave a specific definition to the term "leads".  The particular part of the description reads as follows:

"With particular reference to FIG 4, it will be noted that mounting means 20 associated with the upper cutter assembly leads mounting means 24 associated with the lower cutter assembly.  This means that, when in the position illustrated in FIG 4, the respective mounting means 20 and 24 are horizontally off-set.  In the prior art, the respective mounting means 20 and 24 were not horizontally off-set but rather directly opposed each other.  This resulted in the sugar cane being pinched and crushed between the opposed mounting means resulting in a loss of quality of the cut billets and also an unnecessary consumption of power."

The patentee submitted that as the citation did not disclose the off-set between opposing mounting means, nor did it indicate that the cane was not pinched or crushed between opposed mounting means, then it did not render claim 1 not novel.

The informant submitted that the disclosure at page 4 was not applicable throughout the specification as it merely referred to the preferred embodiment.  Also if it did apply then the citation showed an offset between opposed mounting members as one cutter lead the other.  The term leads should be given its plain meaning in claim 1, that is "to go before".  The claim was not confined to a preferred embodiment or limited by result, e.g. no pinching or crushing of the cane.

I shall now determine the plain meaning of the term leads and how it affects the "horizontal offset" referred to in the embodiment of the patent specification.  The Macquarie Dictionary and Thesaurus Combined Budget Edition reprinted 1995 gives the following definition of the term lead:

1. to take or conduct on the way; go before or with to show the way.

8. to go first; be in advance

Reading the specification as a whole the meanings "be in advance" or "go before" apply.  In this case, I shall look at the invention of the patent at the position referred to in the embodiment of FIG 4.  At this position the cutters and their respective mounting means oppose each other and the centre of rotation of both assemblies lie in the same vertical plane, one above the other.  There is a leading cutting means, a trailing cutting means, a leading cutter means and a trailing cutter means.  In effect this means that, as the various means rotate past a fixed point in the vertical plane the leading edges/faces of the leading means pass that point ahead of the leading edges/faces of the respective trailing means.  Thus the leading mounting means proceeds ahead of the trailing mounting means.  At the position shown in FIG 4 one can determine the horizontal offset between features by dropping vertical lines from the leading edges/faces of each feature to a horizontal line drawn between the two assemblies.  As the direction of feed of the cane is from left to right, the vertical from the leading mounting means lies further to the right than the vertical from the trailing mounting means; ie the leading mounting means is horizontally offset from the trailing mounting means.  Thus at this position the leading mounting means will always be horizontally offset from the trailing mounting means.

I conclude that for the combination of features shown, the horizontal offset is implicit when there is a leading means and a trailing means.  Thus, the meaning of leads in the preferred embodiment referring to "horizontal offset" is no different from the plain meaning of leads.  Looking at the citation and FIG 3 in particular, I note that there is a leading cutting means, a trailing cutting means, a leading mounting means and a trailing mounting means consistent with the plain meaning of the term leads.  Hence I am satisfied that in addition to essential features A to D and I, essential features E to H are disclosed in the citation.  Thus claim 1 lacks novelty in light of the Moreno patent.

Looking at claim 2 which adds the features of:

• The cutter assemblies rotate at the same speed

• The cutter means overlap

• The leading cutter means extends a greater radial distance from its centre of rotation than the trailing cutter means extends radially from its centre of rotation.

The citation discloses "…the stems are divided into chunks of a given length, when the drums (28), (30) rotate (see FIG. 3) in opposite directions and when the blades coincide twice during each revolution."  This indicates that the cutter assemblies rotate at the same speed.  FIG 3 of the citation discloses the remaining two features of claim 2.  Thus claim 2 lacks novelty in light of the Moreno patent.

Looking at claim 3 which states:

"An apparatus claimed in claim 1 or 2, substantially as herein described with reference to the figures."

One can see that the essential features of claim 1 or claims 1 and 2 form part of the claim, the restriction being that these essential features are as described with reference to the figures (see Witty v Turbon Engineering Co. Pty. Ltd., (1961) AOJP 2760.  From the figures one can see that each mounting means has a leading section and a trailing section.  Further in one cutter assembly the leading section of the mounting means leads the leading cutter which is mounted on it, whereas in the other cutter assembly the trailing section of the mounting means leads the trailing cutter which is mounted on it.  However these features have not been disclosed as essential to the invention, the description at page 4 merely indicating that the term leads means that, the respective mounting means are horizontally off-set.  Thus I consider that the citation has disclosed all the features of claim 3 thus rendering it not novel.  In conclusion claims 1 to 3 of the petty patent lack novelty in light of the Moreno patent.

The Young Disclosure

At paragraph 16 of his declaration Mr. Young states:

"….Exhibit DJY-12 is a photograph of a chopper drum assembly which was installed by myself in a Walker Mizzi harvester in 1989 or 1990.  Shown in Exhibit DJY-12 are two drums.  The drum at the left of the photograph holds blades at an approximate rotational tip diameter of 320mm.  This drum was situated beneath the drum at the right in the photograph.  The drum at the right holds blades at a rotational tip diameter of approximately 360mm.  This was the upper blade in the assembly.  Each drum includes four elongated blades which interact with one another to chop cane stalks into shorter billets.  The drums were driven by hydraulic motors to rotate at equal angular velocities and the blades of the upper drum lead the blades of the lower drum in use."

At paragraph 17 of his declaration Mr. Young states:

"….Exhibit DJY-13 is a photograph of a chopper assembly identical to that of Exhibit DJY-12 but in situ in a Walker Mizzi harvester.  The photograph was taken from behind the assembly in the harvester.  The photograph shows an upper blade (shiny) overlapping a lower blade (orange).  The apparatus shown in the photograph of Exhibit DJY-13, is the same as it was in a Walker Mizzi harvester modified by myself in 1989 or 1990.

The patentee did not challenge this disclosure other than to note that the cutting means in both cutting assemblies had the mounting means placed on the trailing side of the cutting means for both assemblies and that this placement would lead to pinching or crushing of the cane.

Based on Mr. Young's statement and exhibits there appears to be a full disclosure of all the essential features of the invention for claims 1 to 3.  In order to establish lack of novelty in this instance I have to determine however if this information was made publicly available through doing an act anywhere in the patent area, prior to the relevant priority date.

Regarding "publicly available" and "publication by use" the courts have indicated that:

"Information that is "publicly available" is 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).

I shall now consider the evidence before me to determine if the invention was made available to the public.  Mr. Young states "…a chopper drum assembly which was installed by myself in a Walker Mizzi harvester in 1989 or 1990".  However there is no independent evidence to show that this did occur at the stated dates and that this information was freely available to the public.  Again there is no evidence to show in what form this was made available to the public, that is, if it was made available in the form of an enabling disclosure (see Stanway Oyster Cylinders Pty Ltd v Marks (1996) AIPC 91-255). The onus in this instance is on the informant to prove their case. In this case, supporting evidence to show public availability/possession of an enabling disclosure has not been provided. I find that the Young Disclosure does not render claims 1 to 3 of the petty patent specification lacking in novelty by virtue of prior use.

The Mizzi Patent

The patentee did not contest the date of publication of this patent.  I shall now refer to relevant parts of the patent specification to determine the relevance of the disclosure to the invention as claimed.

The Mizzi patent specification begins with the following disclosure at column 1, lines 4-10:

"The general object of the invention is to provide a sugar cane harvester which, although simple and economical to manufacture, is particularly efficient in harvesting sugar cane which is topped, cut and chopped into billets, and effectively cleaned of leafy matter, before being discharged to be received in a bin or other suitable receptacle drawn behind and to one side of the harvester.

Then at column 1, lines 22-25;

"….the chopping cutter being adapted to cut the cane stalks into billets and discharge the billets to a cane cleaner assembly on the main frame;"

The description related to the preferred embodiment discloses the following at column 2, line 63 to column 3, line 16:

"The said conveyor system feeds the stalks upwardly and rearwardly to a chopper assembly indicated generally at 44.  This assembly has a pair of parallel side plates 45 between which are upper and lower rotors 46 and 47.  The upper rotor has a driven transverse shaft 48 on which are secured end discs 49, between which three equally spaced blade carrier vanes 50 radiating from the shaft are secured.  To each of these blade carriers a chopper blade 51 is secured in a radially adjustable manner.  The lower rotor has a transverse driven shaft 52 on which are secured end discs 53 between which there are secured three angle members 54 to form an arrangement substantially hexagonal in cross-section, the three angle members being spaced apart to form three transverse slots 55, at alternate angles of the hexagonal arrangement.  Wearing strips 56 are secured to both sides of each of these slots.  From the other angles of the hexagonal arrangement, feeder vanes 57 extend radially outwards.
….The diameter of the lower rotor 47 is similar to that of the lower rollers 42 and all are driven in the same direction and at the same speed.  The diameter of the upper rotor 46 is double that of the lower rotor, and the upper rotor is counter-rotated at such speed that the peripheral speeds of the two are similar, and the chopper blades of the upper rotor 46 enter the slots 55 of the lower rotor 47, chopping the cane stalks into billets which are thrown rearwardly by the counter-rotating rotors."

The informant further submitted that the term "cutter means" was not confined to blades, hence the wearing strips 56 constituted cutter means.  The informant submitted that in light of the above disclosures the invention claimed in claims 1 to 3 was disclosed in the Mizzi patent.

The patentee submitted that:

"The citation disclosed a blade inserted between wear plates or a pair of anvils, not opposed cutters with one leading the other.  Further the assembly with the wear plates did not show a mounting means.  Also as the peripheral speeds of the assemblies are the same they did not rotate at the same speed as they had different diameters.  In conclusion this citation did not anticipate claims 1 to 3."

On consideration of the disclosure of the Mizzi patent I find that the features B to I of claim 1 of the petty patent are not disclosed.  Specifically I do not consider that the wear plates on one assembly constitute a cutter means.  I am in agreement with the patentee that the wear plates function as anvils and do not function actively to cut the cane, rather they provide a base on which the cane is rested/positioned while the cutter from the upper assembly cuts the cane.  I have found that claims 1 to 3 of the petty patent do not lack novelty in light of the Mizzi Patent.

The Brown Disclosure

Paragraph 2 of Mr. Brown's declaration states:

"That, during the 1996 cane harvesting season, I requested Mr Geoff Denman, who together with his brother operates a sugar cane harvesting business, to trial a prototype chopper system that I designed.  Annexed hereto and marked "WB1" is an illustration of the prototype chopper system which I requested Mr Geoff Denman to trial during the 1996 cane harvesting season.  It will be noted that the prototype chopper system features different sized drums, however the mounting clamps are directly opposed to each other."

The informant submitted that:

"The trial of the prototype chopper system was not carried out under a confidentiality agreement.  The applicant states that the mounting clamps are directly opposed to each other, but the exhibit WB1 shows that the upper blade leads the lower blade by half a blade width.  Mr. Brown therefore does not differentiate this system from the claims of the petty patent.
Further he states that the trial was carried out during the 1996 cane harvesting season.  Cane crushing commences in the first half of 1996, therefore the harvester was in use prior to 19 July 1996 which is the earliest priority date of the petty patent.  Hence the claims of the petty patent are anticipated by the Brown disclosure."

The patentee submitted that this disclosure was not relevant as the mounting means oppose each other and further the informant must show that the disclosure was in the public domain to constitute prior art.

Viewing the exhibit WB1 I find that even though the mounting means oppose each other, one mounting means still leads the other mounting means, which satisfies the requirements of claim 1.  I find that the Brown disclosure anticipates at least claim 1 of the petty patent, as the exhibit WB1 shows all the essential features of the invention as defined in claim 1.  Thus I consider that the disclosure of the chopper system made to Mr. Denman constituted an enabling disclosure (see Stanway Oyster Cylinders Pty Ltd v Marks (supra)).  I now have to determine if this disclosure was placed in the public domain prior to 19 July 1996.

I shall refer to Mr. Geoffrey W. Denman's declaration in which he states:

1. That I operate a sugar cane harvesting business together with my brother.

2. That during the 1996 cane harvesting season we installed, at the request of Mr. Wayne Brown, a prototype chopper system.  Annexed hereto and marked "GWD1" is an illustration of the prototype chopper system.

3. That prior to seeing the prototype chopper system, I had never seen or heard of a chopper system of this type employing different sized drums.

4. That when we first discovered that the prototype chopper system would have drums of different diameters, we were quite surprised as we did not initially think that they would work.

5. That, notwithstanding our reservations, it was soon proven to us that the prototype chopper system performed quite well.

Mr. Denman states that he was in possession of the equipment and the relevant drawing relating to the patentee's invention prior to 19 July 1996 and I have no reason to doubt his statement.  There is no indication from Mr. Brown or Mr. Denman that the installation of the prototype chopper system was carried out under a confidentiality agreement.  The patentee's attorney did not indicate that a confidentiality agreement was in place when the informant stated that there was no confidentiality agreement.  Regarding placement of the invention in the public domain; "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). Given the above circumstances I consider that the invention was placed in the public domain prior to the earliest priority date of 19 July 1996.

As indicated previously I had determined that the material placed in the public domain constituted an enabling disclosure.  All the essential features of the invention as set out in claim 1 are clearly disclosed in the drawing.  Regarding claim 2, I note that the feature stating "the cutter assemblies rotate at the same speed" has not been disclosed.  I therefore consider that the novelty of claim 2 has not been destroyed by this disclosure.  Regarding claim 3, on a proper construction of this claim, one can see that the essential features of claim 1 or claims 1 and 2 form part of the claim, the restriction being that these essential features are as described with reference to the figures.  Thus claim 3 when appended to claim1 lacks novelty in light of the Brown disclosure as it is restricted to the essential features of claim1 as they are described and illustrated in the specification.

In conclusion, the invention of the petty patent as defined in claims 1 and 3 (only when appended to claim 1) lacks novelty by virtue of prior use.

CONCLUSION

I have found that the invention of the petty patent is not a patentable invention because it does not comply with paragraph 18(1)(b)(i) of the Patents Act 1990.

The lack of novelty ground was found to be applicable in respect of two items of prior art information and my findings are:

A) Claims 1 to 3 lack novelty in light of the Moreno patent (US Patent 4,170,098).

B) Claims 1 and 3 (only when appended to claim 1) lack novelty by virtue of prior use in light of the Brown Disclosure.

I believe that there is still some patentable subject matter that could allow the above deficiency to be overcome by suitable amendments.  Given the provisions of section 69(4), I allow the patentee 60 days from the date of this decision to request an amendment to the specification of the petty patent for the purpose of removing the ground of invalidity.  If a request to amend is not made within the period allowed I will formally refuse to grant an extension of term of the petty patent.

COSTS

Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.  In this proceeding I see no reason why costs should not follow the event.  Accordingly, as the informant has established a ground of invalidity, I award costs against the patentee Westhill Engineering Construction Pty Ltd and in favour of the informant Cameco Industries, Inc.

Jacob Elijah
Delegate of the Commissioner of Patents

Patent attorneys for the patentee    :  Pizzeys, Canberra

Patent attorneys for the informant  :  Spruson & Ferguson, Sydney