Zenon Environmental Inc. v Memcor Australia Pty Ltd

[2006] APO 36

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 715364  in the name of Zenon Environmental Inc.  

Title:          Vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces

Action: Opposition under section 104 by Memcor Australia Australia Pty Ltd

Decision:          Issued  10 November 2006.

Abstract

The proposed amendments are not allowable under s102 and request for leave to amend was refused.

While all the proposed amendments meet the requirements of s102(1), claims 23 to 37  do not define the feature of the fibers being subject to the specific transmembrane pressure differential and therefore do not in substance fall within the scope of the claims before amendment [in contravention of s102(2)(a)]. Claim 13 as proposed to be amended is also not clear in contravention of s102(2)(b).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 715364 in the name of Zenon Environmental Inc. and an opposition under Section 104 of the Patents Act 1990 by Memcor Australia Pty Ltd

BACKGROUND

1.   Patent Application 715364 was filed under the provisions of the PCT on 8 August 1996 by Zenon Environmental Inc (Zenon) claiming priority from two US basic applications (08/514,119 and 08/690045) filed on 11 August 1995 and 31 July 1996 respectively. The Australian application was advertised accepted on 3 February 2000 and on 2 May 2000, a notice of opposition under s 59 was filed by Memcor Australia Pty Ltd (Memcor). Memcor served their statement of grounds and particulars on 2 August 2000 and finalised their evidence in support on 13 August 2001. 

2.   The chronology of the section 59 opposition is summarised in the Commissioner’s decision in Zenon Environmental Inc v Memcor Australia Pty Ltd [2004] APO 16. The applicant filed a first request to amend on 8 May 2002 which added around 60 new claims to the accepted 18 claims. The opponent filed a notice of opposition under section 104 on this first request on 1 November 2002. They completed their evidence in support on 2 July 2003. The applicant did not serve evidence in answer and withdrew their first request to amend on 10 March 2004.

3. On 5 March 2004, the applicant filed a second request (the current request) to amend under section 104. This request added around 20 claims in addition to the 60 claims that had been proposed in the first request. Leave was granted to amend on the second request and this was advertised on 28 October 2004.

4. On 25 January 2005, Memcor filed a notice of opposition to the current section 104 request. The Commissioner’s decision in Zenon Environmental Inc v Memcor Australia Pty Ltd [2004] APO 16 directed that evidence in reply in the section 59 opposition be deferred pending the resolution of the current section 104 opposition. The opponent completed their evidence in support on the section 104 opposition on 23 August 2005. Zenon advised on 7 February 2006 that they did not wish to file any evidence-in-answer and requested a date be set down for hearing the opposition to the request to amend.

5.   The hearing took place in Canberra on 4 May 2006. Zenon was represented by Mr Graeme Clark S.C. and Mr Matthew Swinn, a partner of the firm Corrs Chambers Westgarth, Melbourne. Memcor was represented by Mr David Yates S.C. and Peter Heathcote, patent attorney of the firm Shelston IP, Sydney. Mr Bryan Dwyer of Memcor also attended the hearing. Both parties provided written submissions which were of great value in determining this matter.

EVIDENCE IN SUPPORT

6.   Memcor’s evidence in support consists of a Statutory Declaration and exhibits GL-1 to GL-3 by Gregory Leslie, Associate Professor – Chemical Engineering University of New South Wales.

SPECIFICATION AS ACCEPTED

7.   As supplies of freshwater continue to diminish and environmental regulations become more and more stringent, it is incumbent on industry to develop better applications of wastewater reuse, especially for drinking. The present invention concerns a microfiltration device to remove micron, sub-micron and larger suspended solids such as organic molecules, emulsified organic liquids and colloidal or suspended solids from water for a variety of applications.

8.   According to the specification the present invention resides in an array of a large number of hollow permeable membrane fibres in the form of filaments of equal length. The terminal end portions of each filament is potted or encased in a resinous material to form headers in which the terminal ends are left open for the flow of permeate into collection means which are sealed around the headers to prevent contamination of the permeate.

9.   This specification refers to this inventive arrangement of vertically oriented membranes, headers and collection means as a “vertical skein”. This skein is not encased or confined within a shell of a module and the filtration device is directly immersed in the multicomponent liquid feed or substrate. The permeate or treated water flow is generated from the outside of the membrane to the inside of the fibre by a pressure differential. The contaminants are retained in a process tank by the membrane and solids-free treated water or permeate is withdrawn via the collections means. 

10.  The specification acknowledges that hollow permeable filament fibres were already known in the prior art of microfiltration.  It was also known to use gas bubbles flowing over the fibres during filtration to keep the fibres clean.  The closest admitted prior art was

a.   US patent number 5, 248, 424

b.   US patent number 5, 209, 852 

c.   Yamamoto et al Wat Sci Tech vol 21: pp 43-54

11.  US 5, 248, 424 disclosed an arcuate configuration of flexible fibres where gas bubbles dislodge dirt particles by interfibre scrubbing with the movement of the fibres caused by the gas bubbles.  This arrangement caused abrasion of the fibres limiting their performance.

12.  US 5, 209, 852 disclosed a vertical arrangement of taut fibres where the gas bubbles dislodge dirt particles by induced vibrations in the taut fibres.  However, tension in the fibres was seen as undesirable. 

13.  Yamamoto et al disclosed a skein filtration system but the authors apparently did not realise the critical importance of aerating the “maintaining the flux by aerating a skein of fibres from within and beneath the skein” and hence the system performed poorly.

14.  The specification describes that the problems identified in the prior art are overcome in a first aspect by providing a microfiltration device where the skein of hollow fiber membranes are vertically oriented between opposed headers and where the fibers have a length which is 1% to less than 5% greater than the fixed distance between the headers such that the fibers are restrictedly swayable. The hollow fiber membranes are potted in respective headers and, depending upon the embodiment,  permeate collection means are connected in a fluid-tight manner with at least one headerto the header so as to withdraw permeate from the ends of the fibers.

15.  In a second aspect the specification describes a method of maintaining clean fiber surfaces while filtering a substrate to withdraw a permeate which involves a gas-distribution arrangement which provides bubbles which scrub the fibres in combination with the above microfiltration membrane device. The combined apparatus is termed a “gas-scrubbing assembly” and allows for a more efficient cleaning of microfibres during microfiltration and maintains flux over long periods of time.

16.  A third aspect described relates to a method of forming a header for a skein of fibers using a fugitive lamina and a fixing lamina and later removing the fugitive lamina.  This allows the fibres to be maintained in a closely spaced-apart relationship and does not result in damage to their ends, which was a problem in conventionally made headers.

17.  The broadest aspect of the invention as a whole is a microfiltration device containing the following features:

(1) A vertical skein of hollow fiber membranes where the terminal ends of the fibers are            potted in opposed headers so as to leave their ends open, either protruding from or flush    with a permeate-discharging face depending on whether a conventional header or  the    “novel” header is used;


           (2) the fibers each have substantially equal length which is 1% to less than 5% greater than        the fixed distance such that the fibers are restrictedly swayable.

(3) permeate collection means held in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers.

18.  When the above device is used with a gas-distribution means it is termed a “gas-scrubbed assembly”.

19.  The claims as accepted all relate to one or more of these aspects of the invention albeit defined in a more narrow way.  Claims 1-4 relate to the microfiltration device with a number of additional features which narrow the scope of the microfiltration device broadly described in the patent specification. Claims 5-7 relate to the gas-scrubbing assembly including the microfiltration device broadly disclosed in the description; claim 8 relates to a process using the gas-scrubbing assembly. 

20.  Independent Claims 9-12 are methods of forming a header according to the third aspect of the invention as outlined above.  Claims 13 -14 are claims to the header itself. These claims are not limited to the microfiltration device and are thus in respect of a different invention. However these claims are in the accepted claims set and in any case do not affect my decision on the proposed amendments.

21.  Claims 15-18 are omnibus claims directed to one or other of the above mentioned aspects of the aspects of the invention described above.

22.  Claim 1 as set out in full is

1. A microfiltration membrane device, for withdrawing permeate substantially     continuously from a multicomponent liquid substrate, said membrane device including:
           
  - a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a   module, said  fibers being swayable in said substrate;


  - a first header and a second header disposed in vertically spaced-apart   relationship within said substrate with opposed faces at a fixed distance;


  - said first header and said second header having opposed terminal end portions of                  each fiber sealingly secured therein with potting resin, all open ends of said   fibers extending from a permeate-discharging face of at least one header;


  - permeate collection means to collect said permeate, sealingly connected in open   fluid communication with a permeate-discharging face of each of said headers;   and,


  - means to withdraw said permeate;


  - said fibers, said headers and said permeate collection means together forming a   vertical skein wherein said fibers are essentially vertically disposed;


  - each of said fibers having substantially the same length, said length being from   0.1% to less than 5% greater than said fixed distance so as to permit restricted   displacement of an intermediate portion of each fiber, independently of the   movement of another fiber;


           wherein said fibers are subject to a transmembrane pressure differential in the range from          0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are spaced apart            to a desired lateral spacing between fibers by said potting resin which extends over only     each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.

PROPOSED AMENDMENTS

23.  The proposed amendments add 78 new claims (claims 15 to 96). The new proposed independent claims are outlined in full in Annex A. Claims 1 to 12 and 14 proposed are the same as the accepted claims although there is a minor amendment to accepted claim 13 to change the words “lower portion” to “fixing lamina”.

24.  Proposed claims 15-22 are new claims which are dependent on (and add refining features to) the microfiltration device of claim 1.  Claims 38 – 52 define an apparatus which uses the microfiltration device of claims 1-4.   

25.   Independent claims 23, 27, 29, 53, 57, 59, and their dependent claims (claims 24, 25, 28, 30 – 37, 54, 55, 58, 60 - 66) all relate an apparatus containing a membrane filtration device and a gas-scrubbing assembly.    Claim 67 is an independent claim to a microfiltration device.  The remaining claims (claims 68 - 90) are dependent on claims 1-4, 15-22 or 67.

26.  Independent claim 23  defines:

     An apparatus for treating a multicomponent liquid substrate while leaving particulate      matter therein, including,

(a) a non-pressurized reservoir for containing the substrate;


           (b) a skein of hollow fiber filtering membranes immersed in the substrate wherein the      membranes are disposed generally vertically between upper and lower headers such that (i) outsides of ends of the membranes are each surrounded by potting material so as to be
           sealingly secured to the headers, (ii) lumens of the membranes are in fluid communication           with at least one permeate collection means, and (iii) the membranes have a length          between opposed surfaces of the headers such that the membranes may move when           contacted by rising bubbles in the substrate but wherein the length is from 0.1% to less
           than 5% greater than the distance between opposed surfaces of the headers;


           (c) a source of suction in fluid communication with the lumens of the membranes and      operable to apply a suction to the lumens of the membranes to draw a component
           of the substrate as permeate through the membranes; and


           (d) means for discharging air directly into the substrate between the membranes.

27.  Independent claim 67 to the microfiltration membrane device defines:

A microfiltration membrane device, for withdrawing permeate from a multicomponent    liquid substrate, said membrane device including:


           a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module;
           a first header and a second header disposed in vertically spaced-apart relationship within          said substrate with opposed faces at a fixed distance;


           said first header and said second header having opposed terminal end portions of each   fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate-discharging face of one or both headers;

said one or both headers having permeate collection means to collect said permeate,      sealingly connected in open fluid communication with the permeate-discharging
           face(s) of the or each header; and,


           means to withdraw said permeate;


           said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;


           each of said fibers having substantially the same length, said length being from 0.1% to   less than 5% greater than said fixed distance so as to permit restricted displacement of an            intermediate portion of each fiber, independently of the movement of another fiber;


           wherein said fibers are subjectible in use to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each said header are      spaced apart to a desired lateral spacing between fibers by said potting resin, so as to
           maintain said ends in closely spaced apart relationship.

THE LAW

28.  The allowability of amendments is governed by section 102, which relevantly provides:

102(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

102(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment,

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)       the specification would not comply with subsection 40(2) or (3);

102(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.”

29.  Section 40(2) requires that a complete specification describe the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention. Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

30.  In accordance with regulation 5.3(4), these are the only grounds on which the allowance of a proposed amendment of a complete specification may be opposed.

31.  It is clear from section 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by section 102 is confined to matters which arise as a result of the amendment (see also Kornelis’ Kunsthars Producten Industrie BV v WR Grace &Co-Conn, (1994) AIPC 91-056 at 38,204). Furthermore, and in accordance with regulation 5.3(4), the only grounds for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with section 102. It therefore follows from the combined operation of these provisions that the presence of pre-existing section 102 (and, by implication, section 40) deficiencies which are unaffected by amendment is irrelevant to the present action.

GROUNDS AND PARTICULARS

32.  The statement of grounds and particulars lists three grounds: non-compliance with subsection 102(1) (claims matter not in substance disclosed), non-compliance with paragraph 102(2)(a) (the claims do not in substance fall within the scope of the claims before amendment) and paragraph 102(2)(b) (as a result of the amendment the complete specification does not comply with section 40(2) or 40(3)).

33.  The particulars of subsection 102(1) and paragraph 102(2)(a) are directed to claims 15, 17 – 36, 38 – 91 and 95, and claims 15 – 91 and 95 respectively. The particulars of subsection 102(2)(b) are directed to claims 15, 17 – 92 and 96.

34.  At the hearing Zenon provided an Outline of Submissions with an attached Schedule 1 which addressed each one of the particulars submitted by Memcor. Memcor also provided written submissions at the hearing.  These submissions only focused on some of the claims opposed in the Statement of Grounds and Particulars. The counsel for Memcor Mr David Yates S.C. addressed the written submissions and specifically spoke to the matters raised therein. Counsel for Zenon Graeme Clarke S.C. made arguments in rebuttal.

DECISION

35.  The opponent’s key argument was directed to proposed claims 23, 27, 29, 53, 57, 59 and their dependent claims all relating to an apparatus containing both a gas-distribution means and a microfiltration device and to claim 67 which was directed solely to the microfiltration device. According to the opponent the proposed amendments were contrary to s102(1), s 102(2)(a) and s102(2)(b) and I will deal with these separately.

s102(1)

36.  According to the opponent the inventive microfiltration membrane device in combination with the gas-distribution means originally disclosed and claimed (see claims 1 and 5 as accepted) had, inter alia, six features some or all of which the opponent argued were absent from claims 23, 27, 29, 35, 53, 57 and 59 and their dependent claims as proposed to be amended.  These features were:

a)permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers;

b)all open ends of said fibres extending from a permeate-discharging face of at least one header; and

c)said fibres are subject to a transmembrane pressure differential in the range from 0.7kPa to 345kPa.

d)the gas is discharged at a rate of 0.47 to 14cm³/s per fibre

e)the withdrawal of the permeate is essentially continuous; and

f)the gas distribution means is located within a zone beneath the skein

37.  As a result, Memcor argued that Claims 23, 27, 29, 53, 57, 59,and dependent claims 24, 25, 28, 30 – 37, 54, 55, 58, 60 - 66 claim matter not in substance disclosed in contravention of section 102(1).

38.  Memcor also argued that Claim 67 to the microfiltration device alone was not limited by feature (a) above and thus claimed matter not in substance disclosed in the specification as filed.

39.  The opponent appears to have identified “essential” features of the invention based mainly on the “consistory statement” by analogous comparison between the accepted claims and the consistory clause. They then seek to compare these features with the features of the claims as proposed to be amended and find that the proposed claims are not allowable.

40.  The test of allowability under s102(1), however, is not by comparison with the claims as accepted but with the specification as a whole. I further note that the claims as proposed to be amended must be in substance disclosed in the specification as filed. In this case, the specification as filed had no “consistory statement”.

41.  I note that the new claims are defined in language which is different from that of the accepted claims, however my view is that the new language is still consistent with the broadest aspect of the invention described.

42.  As stated earlier the broadest aspect of the “gas-scrubbed “ assembly comprises

(1) A vertical skein of hollow fiber membranes where the terminal ends of the fibers are            potted in opposed headers so as to leave their ends open, either protruding from or flush    with a permeate-discharging face depending on whether a conventional header or  the    “novel” header is used;


           (2) the fibers each have substantially equal length which is 1% to less than 5% greater than        the fixed distance such that the fibers are restrictedly swayable.

(3) permeate collection means held in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers.

(4) gas distribution means suitable for aerating the fibers from within and beneath the skein, that is, the entire surfaces of the skein fibers is required to be thoroughly scrubbed with sufficient air  in the form of bubbles which keeps the fiber surfaces awash in bubbles.

43.  Feature 1 requires

     A vertical skein of hollow fiber membranes where the terminal ends of the fibers are      potted in opposed headers so as to leave their ends open

I consider that these requirements are met in the following feature defined in claim 23 as proposed to be amended:

     (b) a skein of hollow fiber filtering membranes immersed in the substrate wherein the      membranes are disposed generally vertically between upper and lower headers such that       (i) outsides of ends of the membranes are each surrounded by potting material so as to be

sealingly secured to the headers.

44.  Feature 2 is explicitly defined in claim 23 as follows
     
     (iii) the membranes have a length between opposed surfaces of the headers such that     the membranes may move when contacted by rising bubbles in the substrate but wherein         the length is from 0.1% to less than 5% greater than the distance between opposed       surfaces of the headers;

45.  Feature 3 requires
     
     permeate collection means held peripherally in fluid tight engagement with at least one     header so as to collect permeate from the ends of the fibers

Claim 23 defines (ii) lumens of the membranes are in fluid communication with at least one permeate collection means.

The language of the claim appears to be divergent from the requirement of feature 3. The feature (ii) requires that the hollow of the membrane, the lumens, have to be in fluid communication with at least one permeate collection menas but does not explicitly specify whether the permeate collection means is held peripherally in fluid-tight engagement with at least one header so as to collect permeate from the ends of the fibers. However, given that a large number of fiber membranes are potted in a header the permeate collection can only, for all practical purposes, be connected peripherally of the header in fluid-tight engagement with the headers in order to isolate the permeate from the substrate.

46.  Feature (4) is also considered to be met in claim 23 which defines means for discharging air directly into the substrate between the membranes. This is not inconsistent with the requirement of feature 4 to aereate the skein from within the membranes.

47.  The language of independent claims 53, 57 and 59 is again slightly different to the above independent claims 23, 27 and 29, however the requirements of features 1 to 4 above are defined in substance.

48.  As a result in my view, the invention defined by the claims 23, 27, 29, 53, 57, 59 as proposed to be amended is consistent with the specification as originally filed and they do not claim matter not in substance disclosed in the specification as filed.

49.  Independent claim 67 to the microfiltration device is also in substance disclosed in the specification as filed. It defines

     said one or both headers having permeate collection means to collect said permeate,      sealingly connected in open fluid communication with the permeate-discharging

face(s) of the or each header.

I have found that the microfiltration device need only have permeate collection means to collect said permeate, sealingly connected in open fluid communication with at least one header therefore claim 67 is consistent with the invention as described.

50.  In summary, independent claims 23, 27, 29, 53, 57, 59, and their dependent claims (claims 24, 25, 28, 30 – 37, 54, 55, 58, 60 - 66) all relating to a “gas-scrubbed assembly” are directed to matter in susbstance disclosed in the specification as filed.    Claim 67 as proposed to be amended relates to the microfiltration device alone and is also directed to matter in substance disclosed in the specification as filed.

s 102(2)(a)

51.  The other issue of dispute is whether the claims as proposed to be amended are broader than the scope of the claims as accepted.  Once again the key claims to be considered are claims 23, 27, 29, 53, 57, 59 and 67. Each of these claims, except claim 67 which is directed solely to a microfiltration device, is directed to an apparatus that combines a microfiltration device with gas-distribution means.

52.  The scope of the claims as a whole as accepted can be determined by the scope of the broadest claim in the specification as accepted. Accepted claim 1 defines only the microfiltration device and is not limited by the features of  gas-distribution  means, hence for the purposes of section 102(2)(a) I will consider the scope of the claims as proposed to be amended in comparison to the scope of claim 1.

53.  I will consider claim 23 as proposed to be amended and I accept that there a number of features in accepted claim 1 which do not appear in the claim. These are:

     (a) all open ends of said fibres extending from a permeate-discharging face of at least one         header

     (b) permeate collection means to collect said permeate, sealingly connected in open fluid           communication with a permeate-discharging face of each of said headers

     (c) said fibres are subject to a transmembrane pressure differential in the range from      0.7kPa to 345kPa.

54.  The closest claim 23 comes in language to features (a) and (b) above is in the features:

     wherein the membranes are disposed generally vertically between upper and lower headers       such that (i) outsides of ends of the membranes are each surrounded by potting material so         as to be sealingly secured to the headers, (ii) lumens of the membranes are in fluid           communication with at least one permeate collection means.

55.  I will interpret the feature of claim 23 to equate to feature (a) since if the outside of the ends of the membranes are surrounded by potting material so as to be sealingly secured to the headers and lumens of the membranes are in fluid communication with at least one permeate collection means, it must mean that all open ends extend from a permeate-discharging face of at least one header.

56.  Feature (b) of claim 1 defines:

     permeate collection means to collect said permeate, sealingly connected in open fluid     communication with a permeate-discharging face of each of said headers

whereas claim 23 defines:

(ii) lumens of the membranes are in fluid communication with at least one permeate collection means – through the permeate discharging face of its associated header. I have added the italicised matter as it is obviously implied.

57.  Prima facie it appears and at the hearing it was the opponent’s view that this feature of claim 23 is broader than the scope of claim 1 because at least one header is broader than each of said headers.

58.  I disagree with this construction of claim 1 because after defining at line 17 – 19 of the claim that “open ends of the fibers extending from a permeate-discharging face of at least one header” it is inconsistent and incorrect to require permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers. Therefore “at least one header is required, not “each of said headers”.

59.  Therefore claim 23 meets the requirement of feature (b) of claim 1 as accepted.

60.  Feature (c) relating to the fibers being subject to a specific range of transmembrane pressure differential is missing in claim 23. Although the applicant argued that this feature was only an operating feature and that the device was not required to operate in this range of values, it is clearly a required feature of accepted claim 1 which defines “wherein said fibers are subject to a transmembrane pressure differential….”. The scope of claim 23 without this feature allows the claim to the apparatus per se and not when used in the operation of the device and therefore falls outside the scope of accepted claim 1.

61.  Independent claims 53, 57, 59 as proposed to be amended meet all the requirements of features (a), (b) and (c) above of accepted claim 1 and fall within the scope of the claim.

62.  Independent claim 67 to the microfiltration device similarly falls within the scope of accepted claim 1.

63.  The requirements of section 102(2)(a) is met by all of the claims as proposed to be amended except claims 23 to 37.  These claims do not define the feature of the fibers being subject to the specific transmembrane pressure differential and therefore do not in substance fall within the scope of the claims before amendment.

S 102(2)(b)

S40(2) -fairbasis

64.  The test for fair basis involves a comparison of the amended claims with the amended description. As there are no amendments proposed to the description the consideration for fair basis equates to the test for ‘in substance disclosed’ and as already discussed earlier under section 102(1), I find all the proposed claims fairly based.

S40(3) -  clarity issues

65.  Memcor asserted that the following terms are be lacking in clarity as detailed in their submissions at the hearing. For example

(a)       the phrase "within and near the base of the skein" is unclear. See, for
           example, proposed claims 24, 39 and 54;

66.  Observations regarding the construction of specifications made by Hely J in Flexible Steel Lacing Co v Beltreco Ltd are of assistance in this matter.

“75 It is legitimate, however, to refer to the rest of the specification to explain the
           background to the claims, to ascertain the meaning of technical terms and resolve
           ambiguities in the construction of the claims. Where the language of the claim is
           “obscure or doubtful” (Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 97 per Taylor
           J) the doubt was sometimes resolved by referring to words in the body of the
           document to explain it. (See Welch Perrin at 610-611; Electric & Musical
           Industries at 41-42, Interlego at 478-479, Decor at 400, Melbourne v Terry Fluid
           Controls Pty Ltd (1994) 28 IPR 302 at 308, Freeman v T J & F L Pohlner Pty Ltd
(1994- 1995) 30 IPR 377 at 383-384, Sartas No 1 Pty Ltd v Koukourou & Partners
           Pty Ltd (1994-1995) 30 IPR 479, 486).

67.  The specification with reference to figures 15 to 17 and the corresponding description clearly suggest how air can be discharged within and near the base of the skein.

68.  Similarly it is possible to resolve other lack of clarity issues (items (a) to (f)) raised by Memcor at paragraph 30 of their submissions. It may not be the most ideal manner of drafting  but it does not prevent the addressee of the specification from understanding the scope and monopoly of the claims. It is also noted that some of the offending terms such as “unconfined in a shell of a module” already existed in the claims as accepted and are not introduced as a result of the amendments.

69.  Claim 85 appended to claim 81 defines “wherein the gas distribution means”. Memcor has found that this lacks clarity when appended to claim 1 which does not include this feature.
I find that claim 81 to which claim 85 refers is itself appended to claim 73 which in turn is appended to any of claims 1 – 4 or 15 – 23, 27, 29-38, 42, 44 – 47, 53, 59 – 72, none of which define gas distribution means. The actual term defined in some of the earlier claims is gas distribution system. The occurrence of the feature “gas distribution means” is in the immediately preceding claim 84. Since this matter can be easily resolved I see no lack of clarity.

70.  Claims 87 and 88 are stated by Memcor to be unclear due to lack of clear antecedence for the feature “the potting resin” in claims 23 and 27 which define “potting material”. I do not dispute this fact but I do not consider that there is any serious clarity issue as the terms resin and material have been used interchangeably in the specification. The situation of lack of antecedence with claim 89 is similar and I hold a similar opinion on lack of clarity arising.

71.  A minor clarity issue arises with a proposed amendment to claim 13. It is proposed to amend the underlined terms in the lines “said fixing lamina having a thickness sufficient to maintain said fibers in substantially the same spaced-apart relationship relative to one and another as the spaced-apart relationship in said lower portion,” to “said fixing lamina”. This is not clear as the spacing comparison is between the fixing and the fugitive lamina. The correct term required is “fugitive lamina”.

72.  I find that in regard to section 40(3) the issues raised by the opponent are either without basis or easily resolvable and do not seriously detract from an understanding of the scope and monopoly of the claims. However I find claim 13 as proposed to be amended not clear.

CONCLUSION

73.  While all the proposed amendments meet the requirements of s102(1), claims 23 to 37  do not define the feature of the fibers being subject to the specific transmembrane pressure differential and therefore do not in substance fall within the scope of the claims before amendment [in contravention of s102(2)(a)]. Further claim 13 as proposed to be amended is not clear in contravention of s102.

74.     The proposed amendments are therefore not allowable under s102 and I refuse the request for leave to amend the specification dated 5 March 2004.

COSTS

75.  It is normal practice for costs to follow the event. I see no reason to depart from this principle.  I award costs against Zenon.

Venkat Iyer

Delegate of the Commissioner of patents

Patent attorneys for Zenon:      Corrs Chambers Westgarth, Melbourne
Patent attorneys for Memcor:    Shelston IP, Sydney

10 November 2006