Acme Bedstead Co Ltd v Newland Bros Ltd [1996] FCA 654 | Case summary

Although the invention is described as relating to an apparatus for the distribution of particulate feed to animals, the issues at trial related to the use of the invention, and of the alleged infringing device, in the dispensing of particulate feed to dairy cows. According to the field of the invention set out in the complete specification, if the supply of feed to a dairy herd is controlled according to the needs and production capacities of the individual animals in the herd, the profitability of a dairying business is enhanced. The invention described in the specification, in best working form, is an apparatus incorporating a computer and feed dispensing units to control the amount of feed to be supplied to a milking cow and for dispensing such feed to that cow according to data in respect of the animal entered in the memory of the computer, or according to the instruction of the operator of the dairy. The description of the best use of the invention set out in the specification suggests that information as to which cow has taken up position at a feeding site be transmitted to the computer by the supervisor of the milking operation using a key pad held by that person, or installed at each site, or by a signal from a transponder attached to the cow. Units of feed from a reticulated supply of feed are delivered to a cow at a feeding site by a feed dispensing unit connected to the feed supply and controlled by the computer. The number of units of feed delivered to a cow is determined by the computer according to the data entered in respect of that cow. The computer may be used to direct the delivery of a single unit of feed to a feeding site, or to several sites in sequence commencing at the site farthest from the point at which the cows enter the dairy thereby encouraging the cows to move to the most distant sites first. The apparatus may be used also to alert the operator of the dairy that a cow has reached a fertile point in its breeding cycle and is ready for mating. It is apparent from the complete specification that the claim made for the invention is that it combines the known properties of several devices to provide an apparatus that is able to be applied to a new and useful purpose and, therefore, that it is suitable for protection by the grant of a monopoly by letters patent. At the conclusion of the specification there are 14 claims which define the invention. At this stage it is sufficient to look at the principal claims defining an invention being claims 1, 2 and 3. Claims 7-10, 14 are method claims based on the use of the apparatus claimed in claims 1-3. It was contended by the respondents, and not challenged by the applicants, that each of the first three claims was a combination claim able to be divided into the following constituent integers: Claim 1 A particulate feed metering apparatus for supplying particulate feed to an animal, the apparatus comprising: A) a data processing means programmed with details of the feed requirements of the animal to be fed; B) a master data input device connected to the data processing means to allow entry of data relating to the feed requirements of the animal to be fed; C) an interface means interconnecting the data processing means with; D) a plurality of feed dispensing means, the feed dispensing means each comprising; E) an actuator controlled by the interface means for actuating a feed metering unit; F) means for dispensing a single unit of feed from any one or more of the feed metering units irrespective of the said feed requirements. Claim 2 A particulate feed metering apparatus according to claim 1 in which the data processing means A has: G) sequence means for actuating respective ones of the feed metering units in a sequence, some or all of the feed metering units being located side by side; H) the sequence means generating the sequence whereby a single unit of feed is dispensed from a first feed metering unit, then its adjacent feed metering unit and so on; I) delay means for causing a delay in the sequence in the activation of each feed metering unit. Claim 3 A particulate feed metering apparatus according to claim 1 or 2 comprising: J) a plurality of remote data input devices connected to the data processing means; K) each remote data input device being located adjacent to one of the feed metering units; L) the data processing means having an identity means for identifying each remote data input device with respect to the computer, thereby enablng the computer to differentiate between each of the feed metering units. The main question arising in defining the invention contained in the claims is the meaning of integers A and B as understood by a skilled, but non-inventive, addressee in the relevant art. In this case the hypothetical addressee would possess the skill of a person with expertise in the raising and feeding of dairy cows and knowledge of current efficient methods of dairy farming as at the date of priority 2 May 1986; experience in the programming and use of computers and computerised control systems; and skill in the design and use of feed dispensing equipment. (See: Tetra Molectric Ltd v Japan Imports Ltd (1976) 93 RPC 547 at 583.) The evidence of Dr Myers, a lecturer in computer engineering, was relied on by the respondents, in this respect. Although the applicants, in closing submissions, objected to that evidence as being grounded on hearsay, the material of assistance to the Court was clearly admissible evidence of a skilled person as to the understanding gained from the patent of the manner of performing the invention. Dr Myers stated that the specification suggested that a claim was made that integer A of the invention involved more than the use of a micro-processor as a pre-programmed or programmable controller. According to Dr Myers, in the context of the specification, integer A could be understood as requiring a computer to be used to carry out computational steps based on appropriate algorithms. Subject to one qualification Dr Myers was satisfied that in 1986 there would have been no difficulty in persons of ordinary skill in the field devising the appropriate software to programme a computer for this purpose. The qualification made by Dr Myers was that the specification did not instruct a skilled addressee as to the formulae or parameters of the algorithm to be incorporated in the software, particularly if the invention extended to a "closed loop" form of control. Dr Myers described a "closed loop" system as one programmed to issue variable control signals that are designed to attain a certain level of performance for the system by having regard to the outputs of the system. I am satisfied that the specification is not intended to describe an invention which includes a "closed loop" control system. The invention described contemplates calculation of feed rations for individual animals according to the processing of data entered in the computer by an operator. The computer system described in the invention is not one programmed to achieve a level of performance by modifying a feeding plan according to the outputs of the system. Variation of the data on which the computer is to operate, or the entry of new data, must be made by the dairy operator to obtain alteration of the calculated feed rations. Alternatively, the operator may use the computer to direct the delivery of a specified quantity of feed to a particular animal irrespective of computer calculations, a step inconsistent with a "closed loop" system. I am satisfied by the evidence that it would have been common knowledge amongst skilled addressees in the dairy industry that studies had been undertaken of the interrelationship between heat cycles, weight, pasture levels, milk production and other variables and that the outcomes and recommendations based on such research and experimentation would have provided sufficient instruction to a software programmer to construct an appropriate algorithm for the relevant data to provide an approximation of the feed requirements of an individual cow. Dr Myers acknowledged that several levels of software would be needed to programme a computer to perform in the manner described in the specification but was clearly of the view that it would not be difficult for that software to be created, if an "open loop" form of control was used. As stated above, a "closed loop" control system is not part of integer A. The applicants contended that the apparatus described and defined in the specification provided for no more than automatic distribution of feed rations to cows according to amounts "pre-programmed into the control box" by the dairy farmer. Alteration of that amount could only occur if the farmer re-programmed the "control box" to deliver an altered volume of feed or used the "control box" to deliver an un-programmed amount of feed by sending such an instruction to the "control box" from a remote keyboard. In support of their submissions the applicants relied on the evidence of Dr Zaknich, a Senior Research Fellow and Lecturer at the University of Western Australia specializing in electrical and electronic engineering. Dr Zaknich stated that using the knowledge of his discipline he understood the patent to define an invention in which the dairy operator determined the amount of feed to be fed to an animal and entered that amount in the computer. He did not consider that a skilled addressee would understand that the invention claimed that the computer performed computational functions by processing data by use of appropriate software to determine the quantity of feed to be dispensed to a particular cow. Dr Zaknich understood the working of the invention to depend on regular intervention by the operator in that the operator set the amount of feed to be delivered to each animal and entered it in the computer. Unless the operator varied the instruction the control system automatically delivered that ration of feed to the relevant animal. The description of the invention in the specification uses terms that lack certainty in defining the nature of the invention. A broad description of the work of the computer in the apparatus is relied on and in that respect the absence of detail in a claim for a combination may be at the patentee's peril. (See: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 20.) The use of the words "feed ration allotted" to a cow at p 13 (4) of the specification may suggest that the feed requirement of each animal is calculated and entered by the operator of the dairy and not by the computer acting on the data supplied. However, it is difficult to accept that the meaning of integers A and B is as submitted by the applicants. In my opinion, the reference in the claims to "a data processing means programmed with details of the feed requirements of the animal to be fed" and "a master data input device connected to the data processing means to allow entry of data relating to the feed requirements of the animal to be fed" is consistent with an instruction to a skilled addressee that the invention includes a means of receiving and processing data by use of an appropriate software programme to produce electronic signals to operate other elements of the apparatus and that the feed requirements of an animal is calculated by the computer by use of that software programme at the time the animal is fed. Either as a matter of context or by having recourse to the specification to resolve an ambiguity, the specification as a whole provides support for that construction. On p 2 (29) - p 3 (2) under the heading "Summary of the Invention", it is stated that: "The present invention provides a particulate feed metering apparatus to meter out amounts of particulate feed dependent upon the feed requirements of an animal to be fed." At p 4 (31-33) under the heading "Description of the Invention" it is stated that: "the computer means is programmed to receive data via the master keyboard regarding an animal to be fed and being suitable to determine the feed requirements thereof." The nature of the "data" described on p 5 of the specification suggests that a computational function is to be performed in respect of that data. Furthermore, it would be inappropriate to refer to a "data processing means" being "programmed with details of the feed requirements of the animal to be fed" if the data entered in respect of that animal is not processed and the only act of programming of the computer is the selection by an operator of the amount of feed to be fed to an animal. The descriptions of the computer function at p 11 (11-14) and p 12 (17-22) are ambiguous: "A further key labelled 'D' is configured to allow automatic adjustment of feed levels to the cow according to the availability of alternative feeds such as pasture." "In use, the particulate feed metering apparatus of the present invention is installed into a dairy for example, to supply, monitor and control feed provided to milking cows dependent upon the time since last the cow calved and other varient (sic) features as described herein above." The latter passage may mean that it is part of the work of the apparatus to "control" the feed distributed to the animals by using the computer to make calculations that are "dependent upon" the identified variants. On the other hand, it is possible that the "control" referred to is that of the operator who calculates, and enters, the appropriate measure of feed after considering relevant factors, perhaps after retrieving the "data" stored in the computer. The following descriptions in the specification, however, appear to refer to a computing function for the data processing means: "Once the cow is identified the computer means, based on the information previously supplied, computes the feed allotment for the particular cow and sends an automatic control signal via the output to the interface means." (p 15 (23-27)); "Also the apparatus adjusts the feed allotment to the requirements of each particular animal, thus giving further savings in feed useage (sic)." (p 17 (14-16)) I will return to the question of ambiguity in the claims of the patent when the cross-claim for revocation of the patent on the ground of non-compliance with para 40(2)(a) and sub-s 40(3) of the Act is considered. "PATENTABLE INVENTION" a) Quality of Inventiveness The first question raised in the claim of the respondents that the invention is not a "patentable invention" is whether the subject of the patent is an "invention". That is to say whether the idea protected by the patent contains the necessary quality of inventiveness. That issue is raised by the prescription in s 18 of the Act of the essential characteristics of a "patentable invention" for the purpose of the Act. It is not the same question that arises under paras 18(1)(a) or 18(1)(b) of the Act, namely, whether there is, in the alleged invention, an absence of manner of manufacture, want of novelty or lack of an inventive step, although the fields may overlap. As stated in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 132 ALR 117 by Brennan, Deane, Toohey JJ at 121-122 (footnotes omitted): "The effect of those opening words of s 18(1) is that the primary or threshold requirement of a 'patentable invention' is that it be an 'invention'. Read in the context of s 18(1) as a whole and the definition of 'invention' in the dictionary in Sch 1, that clearly means 'an alleged invention', that is to say, an 'alleged' 'manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies'. ...that threshold requirement of 'an alleged invention' will, notwithstanding an assertion of 'newness', remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of 'an alleged invention' corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). 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." In s 6 of the 1952 Act the word "invention" is defined in the same terms as in the dictionary in Schedule 1 of the Act, and as noted by Brennan, Deane and Toohey JJ in Philips at p 123 the Act has retained the threshold requirement of "an invention" established by traditional principles. It may be concluded, therefore, that the ground of revocation in para 100(1)(d) of the 1952 Act ("that the invention, so far as claimed in any claim of the complete specification...is not an invention within the meaning of this Act") raised that issue in the same manner as the combined effect of para 138(3)(b) and s 18 of the Act. For an invention to be a "patentable invention" it must be found to provide some new method of using the "material", or some new adaptation of it, so as to serve a new purpose or to take advantage of a hitherto unknown or unsuspected property of the "material" and apply it to a new purpose after devising a practical method of doing so. (See: National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 per Dixon CJ, Kitto and Windeyer JJ at 262.) The comments in respect of "material" apply equally to the use of machinery for a new and useful purpose, or to the incorporation of that machinery in a new and useful method of producing a known result. (See: NRDC at 263.) To ascertain whether Mr Jacek's invention met such a requirement it is necessary to consider the elements of the invention as defined in the specification and decide whether the known functions of those elements had been combined to produce a new result or a new method of achieving a known result. Although the field of the invention is the supply of particulate feed to animals, the principal problem addressed by the invention is said to be the efficient calculation of the feed requirements of milking cows in a dairy herd and the automatic delivery of particulate feed to those animals in the course of the milking process, the same equipment, however, being used to supply feed to all or any feeding points without regard to the particular requirements of an animal, such a supply being able to be provided to sites in sequence with a selected period of delay. The concept said to be the "patentable invention" is the combined use of equipment of known properties and capacities, as an apparatus that will meet that purpose, and the method of feeding animals involved in the use of the apparatus. The invention assumes the existence of a system for the storage and supply of particulate feed able to be connected to the apparatus and the existence of stalls, or troughs, in which the feed may be placed for each animal to be fed. The apparatus involves a computer-controlled operation in which relevant data in respect of the feed requirements of each animal in the herd is entered in the computer. When an animal in the herd has taken up a position at a feeding bay information conveyed to the computer by automatic signal, or by an operator, will identify the animal in respect of which the feed requirements may be calculated by the computer. The invention includes a feed measuring device connected to the feed supply system and controlled by the computer. The individual parts of the apparatus involve no inventiveness. The task performed by the computer in receiving and processing data and in delivering commands to connected equipment by use of switches is part of the known function of a computer. The feed measuring unit contemplated in the specification involves neither the use of such equipment for a new purpose or a new and useful method of using such equipment. It is said that the necessary spark of ingenuity or inventiveness is found in the devising of a new method that combines several functions of animal husbandry or management, previously required to be done separately, with the automatic feeding of such animals. It may be accepted that the combination of functions set out in the specification gives efficient and useful assistance to the management of a dairy herd with the delivery to the animals of part of their feed requirements but in what way is it an invention properly the subject of letters patent under the Statute of Monopolies? What has been superadded to the existing knowledge in respect of the apparatus that justifies the grant of letters patent? To apply the known properties of the equipment in the apparatus in a useful way is not enough. There must be a use of ingenuity, or quality of inventiveness, to produce a new method of animal feeding. (See: Reynolds v Herbert Smith & Co Ltd (1903) 20 RPC 123.) I am satisfied that the specification indicates a new idea and the means of carrying it out, namely, the use of a computer, and computer-controlled equipment, to provide a feeding facility where the amount of feed to be delivered to a dairy cow is controlled by a computer either according to formulae applied to data relevant to the cow or according to an instruction to the computer delivered by the dairy operator. Furthermore, the system deals not only with the control of feeding but also the control of a dairy herd in the course of a milking process and further enhances the efficient management of a dairy herd by recording, and displaying as required, information relevant to the performance of each animal. It is an idea of substantial utility in the field of primary production. Without examining the question of novelty, on the face of the specification there is a new product derived from the combination of known integers. By reason of the utility of that product, a quality of inventiveness may be discerned in the specification. Therefore, at least in respect of the threshold test, the invention is a "patentable invention". b) Novelty I turn now to the question whether want of novelty denies the invention the character of a "patentable invention". As stated earlier, the question whether a patent is to be revoked for want of novelty or lack of inventive step is to be decided according to the manner of assessing novelty and inventive step under the 1952 Act and any changes in those fields made by the Act are to be disregarded. In particular, anticipation of the invention is to be measured by a prior art base "in Australia" and not, as under the Act, by an art base that includes disclosure anywhere in the world. (See: McKeough and Stewart, Intellectual Property in Australia (NSW: Butterworths Pty Limited, 1991), paras 1213-1214.) As stated above, the inventiveness of the invention is in devising an apparatus and an efficient method of feeding animals, and recording relevant data in respect of the animals and their feed requirements, using the known properties of a number of devices to deliver better management and feeding of the animals and reduction in the costs incurred by a primary- producer. To show that that invention lacked novelty by reason of anticipation it is necessary to show that what was known, or used, in the prior art discloses that the invention is not new. Evidence of prior use presents no problem but evidence of knowledge divulged in a prior publication depends upon the prior publication containing clear and unmistakable directions to do what the patentee claims to have invented. (See: PLG Research Ltd v Ardon International Limited [1993] FSR 197 per Aldous J at 218; reversed on appeal on other issues: [1995] RPC 287.) The respondents claim that the invention was anticipated by the sale display, promotion and installation of the "Hunday Mark 2A programmable feeder control unit" in Australia in late 1983. An engineer and former dairy farmer, Mr Perrie, travelled to England in July 1983 and examined controlled feeding systems for dairy cows. He returned to Australia in September 1983, authorized by Hunday to distribute Hunday products in Australia. He stated that the brochures promoting the Hunday Mark 2A system were distributed at agricultural shows at Shepparton and Dorrigo after he returned. In October 1983 he was commissioned by the Queensland Agricultural College at Gatton to install such a system for a dairy operation. As described by Mr Perrie the Hunday Mark 2A system installed at Gatton was an "out of parlour" feeding system in which a dairy cow was fed in the yard when it attended at a feeding stall. A measure of feed would be deposited in the stall after the controlling system had been activated by a signal from a transponder which identified the cow attending the feeding site. In addition to the evidence of Mr Perrie the respondents also relied upon a manual which described the Hunday system and statements made by Mr Perrie and one Cross, an officer of Hunday, to managers of Gatton College at the time the system was installed. I am satisfied by the evidence of Mr Goodwin, through whom the manual was tendered and who was Manager of the College dairy at the relevant time, that the document tendered in evidence was the document received by the College from Hunday. However, with regard to the evidence provided by Mr Goodwin and Mr Perrie as to the statements made by Mr Perrie and Mr Cross about the capacity of the Hunday system to be expanded beyond the system installed at the College, that evidence provided no detail of disclosures that went beyond the description of the equipment contained in the manual, and I attach little weight to that evidence as evidence of prior disclosure of some other system. Having considered the material I am not persuaded that the invention was anticipated by the Hunday Mark 2A system. As described in the brochure promoting the Hunday system, and in the manual, and according to the description of the system installed at the College, that system was operated by a programmable controller which consisted of a computer with embedded software and limited programmability. If the invention incorporates a computer programmed with software enabling it to process data by computations, the controller in the Hunday Mark 2A system was unable to perform such a function and, therefore, the Hunday Mark 2A did not embody either integer A or B of the invention if the invention is interpreted as containing those features. However, even if the invention includes no more than a computer functioning as a programmable controller, able to receive and store data, and able to be used by a dairy operator to initiate a command from the computer to supply feed to any animal, or a single unit of feed in sequence to a number of animals without regard to the pre-programmed feed levels the computer has been set to command automatically, and to incorporate and retain details of any feed so supplied to an animal in the data recorded in respect of that animal, such a device would be a substantial advance on the Hunday Mark 2A system. In the Hunday system the activation of feeding units to deliver extra feed was effected by use of a separate electric switch and circuit, not connected to the programmed controller, and, therefore, not part of any computerised data recording facility. Next it is said that the patent was anticipated by prior commercial dealing in the invention by the applicants. In particular it is submitted that in about February 1986 Mr and Mrs Jacek entered an agreement with Western Australian Product Innovation Centre Pty Ltd ("WAPIC") in respect of the commercial exploitation of the invention. There is no detail of the invention in the agreement to amount to the disclosure of the invention by that document. The respondents submit, however, that the agreement involved "use" of the invention sufficient to constitute anticipation. However, the "use" anticipated by the agreement was predicated upon application by Mr Jacek for the grant of a patent. The agreement was not for the sale of the product to WAPIC but to obtain the input of capital from a co-venturer to enable a prototype to be constructed and a patent obtained. There was no use of the invention by dealing with it by way of trade, either publicly or privately, and any claim of lack of novelty on that ground must fail. Re Wheatley's Patent Application (1984) 2 IPR 450 upon which the respondents rely is a case where the applicant of the patent not only demonstrated a prototype of his invention to a potential customer but took sale orders based upon that demonstration. How those circumstances may be distinguished from the terms of the agreement between Mr and Mrs Jacek and WAPIC is made clear in the following comments of Lawton LJ at p 451: "The applicant accepted the offer. It is likely that price would have been mentioned and discussed. By accepting the order he had undertaken when the time came for delivery to transfer to the NCB for gain and commercial advantage to himself the products of his invention. The NCB had a legal right to delivery of these pull keys and on delivery to do what they liked with them." WAPIC purchased no product and, therefore, obtained no rights in the product as purchaser. In return for contribution to a plan to obtain a patent for the invention, WAPIC acquired a right to share in the profits of exploitation of the patent. Such an arrangement did not amount to anticipation of the invention. The respondents adduced evidence of the installation of other dairy feeding systems prior to 1987 but did not make submissions that the use of any one of them anticipated the invention. It was said that these systems, and various patents registered in Australia, formed part of the common general knowledge against which the novelty of the invention was to be measured.

The respondents also submitted that prior use of the invention resulted from the installation by the applicants in Mr and Mrs Giglia's dairy in about May 1986 of a system which embodied the invention. The applicants contended the system was a prototype being tested under ordinary working conditions under terms of confidentiality. The system was installed in a commercial operation and formed part of the equipment operated by that business from about May 1986 and was open to inspection by any visitor to the Giglia dairy. Counsel for the applicants submitted in closing that the particulars of grounds of revocation supplied by the respondents did not identify the installation of a feeding system at the Giglia dairy as a circumstance anticipating the invention. The relevant particular relied on by the respondents reads: "Field Trials and evaluation of DFMS 500 Computerised Feeding System in South-West of Western Australia in May 1986." I note that other particulars nominated the locations of such trials and identified the dairies involved. However, the particular, though deficient in detail, does cover the events described in the evidence and the case was conducted as if the use of the system in the Giglia dairy was an issue relevant to the question of novelty. Mr Jacek was cross-examined on the circumstance of the installation of that system in terms relevant to the issue of novelty and I am satisfied that the parties to the hearing were aware of the arguments sought to be made on the use of the system in the Giglia dairy. The applicants contended that the prototype was installed at no cost to Mr and Mrs Giglia and that over the period of fourteen months in which the system was in use it was for the purpose of developing, "fine tuning" and testing the equipment. Pursuant to para 158(1)(h) of the 1952 Act a patent is not invalid by reason only of having been publicly worked in Australia within one year before the date of priority if the working was for the purpose of reasonable trial only and it was reasonably necessary, having regard to the invention, to have the working conducted in public. The priority date is 2 May 1986 if the claim was fairly based on the provisional specification lodged on that day, and is 1 May 1987 if the claim is not so fairly based but is fairly based on the complete specification lodged on the latter date. If it is assumed for the purpose of this issue that the claim for the invention is fairly based upon either one of the specifications, it would follow that the period within which experimental use in public occurred, either did not precede the priority date or did not exceed the period of one year before that date. The questions remaining are whether the use was a reasonable trial and reasonably necessary to be conducted in public. If it may be said that a dairy operated on privately owned property is "in public" for the purpose of the 1952 Act, about which I express no opinion, the use of the invention in such a setting was reasonably necessary having regard to the nature of the invention. If any work was required to determine the usefulness of the invention and its suitability for patent, that work would have to be carried out in a working dairy. I am satisfied that the use of the system on terms of confidentiality and with limited public access was a reasonable compromise by Mr Jacek of a need to protect against disclosure of the invention and to trial the embodiment of that invention. Can it be said that the entire period of use of the invention was able to be characterised as a reasonable trial of the invention? The respondents submitted that the onus of proving that issue was on the applicants. I do not agree that the matter of onus is so clear cut. Section 158 of the 1952 Act states that "objection shall not be taken to an application for a patent" and that a patent is not invalid by reason only of the use described in para 158(1)(h). Those words suggest that a party seeking revocation of a patent is obliged to show the invalidity of the patent by demonstrating that there has been anticipation of the invention by prior use by reason of the use of the invention in terms that did not meet the protection provided by para 158(1)(h). (See: T.A. Blanco White, Patents for Inventions, 5th Ed, (London: Stevens & Sons, 1983) para 4-002, footnote (9).) Whether any onus falls on an applicant for a patent whose application is met by an objection of lack of novelty is unnecessary to decide. (See: Cave-Brown-Cave's Application for a Patent [1958] 75 RPC 429.) The holder of a patent has the benefit of an assumption that there is a prima facie case that the grant was valid, (see: J.C. Lahore, J.J. Garnsey, J.W. Dwyer, A. Dufty, W. Covell, Patents, Designs and Trade Marks Law, (Australia: Butterworths, 1981), 1.5.042) and if there is any onus on the patentee it may be no more than an evidentiary onus to adduce some evidence to show that para 158(1)(h) is relied upon. (See: Norton v Halse, Carr J, Federal Court, unreported, 29 May 1996 at 9-11.) If the holder of a patent provides evidence to show that para 158(1)(h) is relied upon, the absence of any contrary evidence, or the absence of cross-examination of a witness called by the patentee able to speak to the point, is likely to leave undischarged the onus of proof of anticipation resting on the proponent for revocation. There is no evidence of the manner of use other than that provided by the applicants and there was no cross-examination of the relevant witnesses called by the applicants on that aspect. Although, in itself, the length of the period of use may suggest that the trial was used as a foundation for the commercial exploitation of the invention, in the absence of any other evidence on the point it is an inference that I am not prepared to draw. It was contended by the respondents that the invention was anticipated by prior use by the display and exhibition by Mr Jacek of an embodiment of the invention at agricultural field days held at Harvey on 12 March 1986 and 16 April 1986. According to Mr Dawson, the Marketing Director of Electronic Development Corporation Pty Ltd (EDC) which had been contracted by WAPIC and Mr Jacek to design a computer control system to perform the functions required by Mr Jacek's invention, the equipment on display at the field day held on 12 March 1986 was a "mock-up" of the master control box and of the feed dispensing unit. Mr Dawson said that at the field day there was considerable interest in the system and that he, and others manning the stall at the field day, had explained the proposed operation of the system. No details were provided in that evidence of the extent of the disclosures made on that day. Mr Jacek denied that any disclosure of the computerised system of the invention took place at that field day. He stated that although Mr Dawson attended the event, only Mr Jacek worked on the stall where the "mock-up" equipment was displayed. I note that this demonstration was not included in the particulars supplied by the respondents of the alleged anticipation of the invention by prior use. It was submitted by the respondents that Mr Dawson's evidence should be preferred because he had no interest in the proceeding, unlike Mr Jacek. That submission, however, lacks the strength it may appear to have at first sight when it is remembered that at the time the evidence was given the respondents were contending that Mr Dawson, and another, and not Mr Jacek, were the inventors of part of the system. I accept that a "mock-up" of the several items was prepared and displayed and that it may be assumed that it was for that reason that Mr Dawson attended the field day but I regard the evidence of Mr Jacek to be more reliable in respect of the nature of the oral disclosures made on that day. The "mock-up" equipment in itself did not convey any detail of the idea of the invention and the oral statements made by Mr Jacek, according to his evidence, did not anticipate the invention. The respondents failed to show prior use and anticipation of the invention on that occasion. With regard to the events at the field day at Harvey on 16 April 1986 the respondents contend that the display of a system embodying the elements of the invention occurred on that day. Mr Dawson stated that a prototype was completed on the evening before the field day and exhibited as a working system on the following day at Harvey. Mr Jacek conceded in cross-examination that he told enquirers at the field day of the intended computerised function of the system being publicised on that day. The display of an embodiment of the invention was said by Mr Jacek to be a surprise to him and that Mr Dawson had produced the equipment at Mr Jacek's stall without his (Mr Jacek's) knowledge. I do not accept that Mr Jacek has accurately recalled the circumstances of this display and, in particular, that he is in error when he states that no action took place other than the eliciting of information from interested parties as to the requirements perceived by them to be necessary in a computerised feeding system. I am satisfied that the invention, a prototype of which was soon to be installed at Giglia's dairy, was demonstrated and explained at the field day on 16 April 1986, perhaps to promote a market for the sale of the product of the invention in due course. It was not contended by the applicants that the field day disclosures did not include disclosure of some essential integer of the claim. The position of the applicants was that no disclosure at all was made, a contention that I reject. It appears that the system displayed and discussed on 16 April 1986 included all elements of the system being prepared for installation in Giglia's dairy the subject of the provisional claim lodged on 2 May 1986. Harsh though the consequence of that finding may appear to be, it follows that the invention was anticipated by prior use of the invention and the grant of the patent should be revoked. (See: Fomento Industrial SA, Biro Swan Ld v Mentmore Manufacturing Coy, Ld (1956) 73 RPC 87; Acme Bedstead Co Ltd v Newland Bros Ltd (1937) 58 CLR 689; C Van der Lely NV v Bamfords Ltd (1963) 80 RPC 61; Windsurfing International Inc v Petit [1984] 2 NSWLR 196.) The respondents also submitted that the following patents granted in the United States of America and published in Australia before the priority date, 2 May 1986, anticipated Mr Jacek's invention. The US patents relied upon are 4517923, 3157157, 1577023 and 4532892. The respondents concede that none of the patents discloses all of the integers of the invention but contend that an addressee skilled in the art, and possessing the common general knowledge in the relevant field, would have "identified" the integers of the invention without difficulty and without further experiment. However, such a submission begs the question to be answered, namely, has the invention been anticipated in the prior art? The invention is a combination of known functions which provides a new and useful result and the question to be asked, and answered, is whether the invention of the combination of those functions has been anticipated. To some extent the question overlaps the other questions of obviousness and inventiveness in that if it is said that a prior patent which does not disclose all the integers of the invention has anticipated the invention, it must follow that the additional work of the undisclosed integer, or integers, is made obvious by the idea of the patented invention. (See: Hill v Evans (1862) 31 LJ Ch 457 per Ld Westbury LC at 463; Van der Lely NV v Bamfords per Ld Reid at 71.) In US Patent 4517923 the patented invention is the use of a computer to record and store data with respect to the feeding of animals and to calculate the feed requirements of each animal and operate machinery for the delivery of that feed. The invention does not include the function of sequential deliveries of feed to several feeding sites to provide herd control, nor the delivery of additional feed by external instruction to the computer. As stated above the inventiveness of the invention by the combination of particular functions has been demonstrated and the subject of the above US patent does not anticipate that combination. The absence of the additional integers of the combination is not a matter of no consequence made obvious to a skilled addressee by the US patent. It is part of the essence of the invention. In US Patent 3157157 the patented invention does not incorporate a computer to record and store data in respect of animals to be fed nor make calculations of the amount of feed to be delivered to each animal. The system does not contemplate sequential feeding as the animals move to feeding stations. Clearly, this patent has not anticipated the invention. In US Patent 1577023 the patented invention includes a feeding system operated by a pre-programmed controller. The controller has no computing function operating upon data entered and recorded in the controlling unit. The controlling unit is not required to respond to an instruction from the operator of the feeding system to deliver supplementary feed or sequential feeds. The invention is not anticipated by this patent. US Patent 4532892 claims an invention that appears to be substantially narrower in scope than the description of the invention set out in the specification of the patent. The idea described as the invention in the specification refers to a feeding system which incorporates a computer that directs the amount of feed to be supplied to an animal according to data entered in the computer in respect of that animal. It is part of that patented invention that the computer monitor the heat cycle of a cow. The invention described in this patent has many features of the invention protected by the patent in suit but it does not disclose the idea of delivering sequential feeding at separate feed stalls for the purpose of better herd management, or the use of the controlling computer by the feeding operator to direct the delivery of supplementary or additional feed to any animal. The US patent does not anticipate the combination reflected in the invention. c) Lack of Inventive Step - Obviousness Paragraph 100(1)(e) of the 1952 Act provides as follows: "100.(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other ground: ... (e) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim;" It is to be noted that the prior art does not extend beyond that which was known or used in Australia, which may be described as common general knowledge of a notional skilled worker in the field. (See: J.C. Lahore, para 1.5.065.) As stated earlier, in the instant case it is unnecessary to consider the extent to which sub-ss 7(2) or (3) of the Act may have expanded the range of material to be considered under the rubric of prior art. (See: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405.) The obviousness to be considered is that of the invention as a whole, being the combination of known steps for producing a new apparatus or method or procedure, and not the obviousness of each of the constituent parts of the combination. (See: Wood and Ancolite Ld v Gowshall Ld (1937) 54 RPC 37 per Greene LJ at 40.) The question of obviousness is determined objectively. On the case presented by the respondents it is to be determined by having regard to the common general knowledge in the art of animal feeding. As Aickin J stated in Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292-293: "The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. I do not with respect think that it is correct to describe that process as the making of a mosaic although it has often been so described, a usage which however may be misleading. The process of applying such common general knowledge to the solution of a problem is not a process of picking out individual pieces of information and combining them, including inferences from known facts and known principles, as well as the application of such principles. The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process. In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. 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." It is not in issue that as at May 1986 mechanical feeding systems designed to optimise milk production in relation to the amount of feed supplied were well-known in the Australian dairy industry. The use in Australia of pneumatically operated feed dispensing units controlled by a push-button system was also well-known. There was awareness of the use of computers for controlling animal feeding systems used in Europe and the United States but I am not satisfied by the evidence that the detail of the computer function in such systems was part of the common general knowledge possessed by persons skilled in the art in Australia. It was commonly known that sequential or "bait" feeding was desirable as an aid to the control of a dairy herd in a milking parlour comprised of in-line feed stalls. It was also known to be essential husbandry of dairy cattle to be able to allocate additional feed to particular animals from time to time in the dairy parlour over and above the feed supplied according to the calculation of the amount of feed to be distributed to milking cows by use of well-known criteria. It would have been known to a skilled operator at that time that a computer could be programmed to receive and compute data relevant to the calculation of feed requirements and to make such calculations. The respondents' submissions on the question proceed on the premise that if each integer of the claimed invention is an element commonly known in the art, the ultimate invention, the subject of the claim, cannot be isolated from that body of knowledge. Referring to Windsurfing International the respondent submitted that the task of determining whether an invention was obvious involved, inter alia, identifying what, if any, differences existed between matters known or used in the art and the alleged invention. As set out above, in respect of a combination patent, the question must be whether the idea of combining all elements in a useful and productive way advances the art in an ingenious way, or is the selection of such a process using those elements no more than would have been undertaken as a matter of course by a non-inventive hypothetical skilled addressee using the knowledge common to such persons. The fact that the combination had not been anticipated and is a process of substantial practical utility speaks of lack of obviousness in the invention and tends to deny the assertion that the invention involved no more than a routine exercise for a person skilled in the art, or was "so easy that any fool could do it." (See: Edison-Bell Phonograph Corporation Limited v Smith (1894) 11 RPC 389 at 399 per Smith LJ.) A "scintilla of inventiveness" is sufficient to answer the allegation of obviousness. (See: Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701.) As at May 1986 the Hunday Mark 2A system had been installed at Gatton College (December 1983) and a computerised animal feeding system had been installed at Trangie Agricultural Research Centre in New South Wales (April 1985). The former system has been described already. The latter system was devised for the feeding of beef cattle in a feed-lot situation. The system was controlled by a computer for which a programme was written to process data as to weight of feed supplied and unconsumed, the identity of the animal present in the feeding stall, and as to the manner of control of the feed dispensing system. There is no evidence that the installation and function of the Trangie system in 1985 was generally known in Australia in May 1986 amongst skilled addressees. A paper describing the system was published in a journal "Computers and Electronics in Agriculture" in 1992 and a Technical Reference Manual for the system was not published until October 1990. It should be concluded that as at May 1986 common general knowledge would not have supplied a non-inventive skilled addressee in Australia with a detailed understanding of the role to which a computer could be put in an animal feeding system. It should not be concluded that such an addressee would have regarded as routine, the incorporation in such a feeding system, a computerised sequential feeding facility, a computerised supplementary feeding facility activated by operator instruction and the recording of such data in stock and feed files maintained on the computer. It follows that the claim of lack of inventive step by reason of obviousness must fail. d) New Manner of Manufacture I turn now to the claim that the invention did not involve a new manner of manufacture. The respondents submitted that there was an absence of new manner of manufacture in that the use of the known integers in claims 1 and 2 involved the mere collocation of those devices and no working interrelationship between them to constitute a manner of manufacture. The submission is based upon a contention that proper construction of the claims provides such a result. So expressed the submission is more relevant to a question of want of the quality of inventiveness, or lack of novelty, or lack of inventive step by reason of obviousness than the question of new manner of manufacture. However, the respective fields of patentability are not discrete (see: Lahore, 1.3.005) and it is appropriate to consider the submission as made under this heading. The concept of "manufacture" as defined in NRDC is the achievement of a result of practical and economic utility; the creation of an advantage in a new and useful way by inventive skill or art. It is not limited to the creation of a vendible product. The following comments by Dixon CJ, Kitto and Windeyer JJ in NRDC at 269 on the meaning of "manner of manufacture" under the 1952 Act were adopted by Brennan, Deane and Toohey JJ in Philips at p 124-125 as being equally applicable to the construction of the Act: "The word 'manufacture' finds a place in the present Act, not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: 'Is this a manner (or kind) of manufacture?' It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because 'manufacture' as a word of everyday speech generally conveys that idea. The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?'" The claims as made in the specification meet that requirement if they satisfy the other criteria of patentability. The respondents submit that only integers A to E of claim 1 have a working interrelationship and that integer F as described in the claim is intended to function independently of the other elements of the combination. Therefore, it is said, the combination of integers extends no further than integers A to E. The foundation for this submission is the description of integer F as a "means" for dispensing a single unit of feed from any one of the feed metering units "irrespective of the feed requirements" of the animal. It is said that the use of the word "means" is intended to convey that a device other than the actuator controlled by the interface means for actuating the feed metering unit is to be used, and that the words "irrespective of the feed requirements" show that the "means" is something other than the computer which calculates the feed requirements. As stated above the claims must be read in the context of the specification as a whole, although the terms used in the body of the specification cannot be used to supplant words of plain meaning used in the claims. Contrary to the contentions of the respondents, the words used in integer F of the claims are not so plain and unambiguous that they overtake the context in which they are used. It is apparent in that context that the "means" for dispensing a single unit of feed referred to in claim 1 would not be met by a separate device to actuate the feed metering unit, such as a rope-pull mechanism or a second, and separately activated, solenoid switch to operate the pneumatic cylinder. The "means" referred to describes an additional function by which the data processing "means" and interface "means" are instructed to command the actuator of the feed metering unit to deliver a single unit of feed. That is made clear in p 3 of the specification, under the heading "Summary of the Invention", and in pp 5, 11, 12, under the heading "Description of the Invention", where it is stated that:- the method of feeding involves "activating anyone (sic) or more of the feed metering units with the data processing means for dispensing a single unit of feed from anyone (sic) or more of the metering units" (p 3 (22-24)); "The interface means is further configured to allow switching of operation from an automatic mode, wherein the computer generates the control signals, to a manual mode, wherein an operator manually provides control signals, such as via one of the remote keyboards." (p 5 (18-22)); "Each of the remote keyboards also includes a key labelled 'SF' configured to direct the computer means to actuate the respective feed metering unit to meter out a single unit of feed in a manual operation independent of the feed requirements stored in the computer means." (p 11 (27) - p 12 (2)) The "Brief Description of the Drawings" in pp 3-4 of the specification, and the drawings accompanying the specification, also are consistent with that construction. It was further submitted that in respect of claim 2 integers G, H and I thereof worked in interrelationship with integer F and independently of integers A to E of that claim. The foundation for that submission was as for the argument addressed to the construction of claim 1. For the same reasons expressed above, the claim is to be read as requiring integers G, H and I to operate with integers A to E as elements of a combination and not otherwise. I am satisfied that the invention involves a new manner of manufacture. SUB-SECTIONS 40(2), (3) OF THE ACT a) The Complete Specification Must Describe the Invention Fully, Including the Best Method of Performing the Invention (para 40(2)(a)) The obligation imposed on an applicant for a patent by para 40(2)(a) is to provide a complete disclosure of the invention in the specification so that a skilled artisan in the field may understand how the invention works, thereby ensuring availability of the invention after the period of monopoly granted by the patent has expired and awareness of the exact boundaries of the invention so that infringement of the patent is not a risk incurred by any person seeking to develop his or her own inventive skill in the field. (See: No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 per Romer LJ at 243; Proctor & Gamble Inc v Unilever PLC (1995) 33 IPR 627 per Stone JA at 637.) As set out earlier in these reasons, I am satisfied that some of the words used in the complete specification are apt to describe an invention that includes a computerised control system in which the computer is programmed to compute the feed requirements of an animal, such programming being based upon the mathematical equations relevant to the computation of appropriate feed rations for an animal, to wit a dairy cow, based upon studies of methods for the efficient feeding of dairy cows that would be well-known to a person skilled in the field. If read in that way, and I would be inclined to so construe it, the specification describes a system which includes a computer programmed to compute feed allotments according to formulae disclosed by experiment and experience in the field of dairying, the relevant data for such computations being entered in the computer by the operator. The applicants submit that the specification goes no further than describing a system in which the operator pre-determines the amount of feed to be fed to each animal and "programmes" that amount into the computer for the automatic distribution of that amount thereafter until otherwise varied by the operator by altering the "programmed" amount. Being satisfied that the invention described by the specification is capable of extending to the use of more elaborate computerised functions, it must follow that the requirements of para 40(2)(a) have not been complied with in that the parameters of the invention to be discerned from the description of the invention in the specification and from how it is to be best performed, are uncertain and, therefore, the complete specification fails to describe the invention fully. The ambiguity and insufficiency in description are fundamental problems incapable of resolution by a skilled addressee by the application of commonsense and common knowledge. (See: Pioneer Hi-bred Ltd v Commissioner of Patents (1989) 15 IPR 109; Cincinnati Grinders Inc v BSA Tools Ltd (1931) 48 RPC 33 per Romer LJ at 81-82.) The principle is well explained by Dixon CJ in Martin v Scribal Proprietary Limited (1954) 92 CLR 17 at 59: "If we were concerned only with a written instrument operating inter partes and not generally these difficulties would easily be overcome by contruction. But the principles governing the definition of a monopoly operating over the public at large require a description which is not reasonably capable of misunderstanding. If an ambiguity is purposely introduced in order to produce a vagueness in the boundaries of a monopoly this purposeful introduction of an ambiguity destroys the patent, whether the ambiguity be great or small. Here there is no reason to support that there was any such design. The following passage, however, in the judgment of Lord Parker (Natural Colour Kinematograph Co. Ltd. (In liquidation) v. Bioschemes Ltd. (1915) 32 R.P.C. 256) describes what is the duty of the court and provides the test of ambiguity:- 'Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification. It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void. Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may void the Patent. The above principles may be thought to bear somewhat hardly on patentees and their agents. A person may arrive at a valuable invention without adequately comprehending the particular point in which the invention is new or valuable, and a patent agent may be insuffiently instructed by his principal, and, however carefully he may consider the terms of the Specification he is employed to draw, he may quite easily fail to anticipate the points which may be raised, if and when the validity of the Patent comes in issue'." The applicants make no claim that the invention protected by the patent includes a monopoly of the use of a computerised system that is governed by software which carries out calculations on data entered in memory but disavowal in this proceeding of reliance upon the full scope of the invention permitted by one construction of the claims cannot save the patent from invalidity on that ground. The requirement of para 40(2)(a) is directed to the advancement of the public interest by preventing the registration of a patent where the invention is ambiguously or insufficiently described in the specification. The respondents submitted that some further element of description was required under para 40(2)(a) of the Act to show how the invention improved on an existing device. This argument was said to be a separate submission from those addressed to the issue of novelty. As already stated, the invention is a new combination of known integers. As a new combination, no question arises of the need for the specification to spell out how the invention is to be discerned as an improvement upon an existing combination. (See: Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156 at 165.) The respondents also submitted that the "means" for dispensing a single unit of feed, integer F, lacked sufficient description to enable the invention to be understood. In considering the question of new manner of manufacture I have set out how that description would be understood by a skilled addressee having regard to the specification as a whole and it follows from my conclusion on that issue that the contention that the description does not comply with para 40(2)(a) of the Act in that respect cannot be sustained. However, as already stated, the patent does not comply with para 40(2)(a) of the Act and must be revoked. SUB-SECTION 40(3) OF THE ACT The Claims Must Be Clear and Succinct and Fairly Based on the Matter Described in the Specification As to the first limb of sub-s 40(3) there is no issue that the claims are succinctly expressed. The respondents contend that the claims are not clear, however. As has been discussed already, the claims are ambiguous as to the function of integers A and B of the combination described therein and that ambiguity is not resolved by consideration of the specification as a whole. It follows that the first limb of sub-s 40(3) has not been complied with. Fair Basing The question whether the claims set out in the complete specification are fairly based on the matter described in the specification as required by sub-s 40(3) also bears upon the priority date of the claims pursuant to sub-s 40(3) of the Act. Sub-section 43(2) of the Act provides that the priority date of a claim is the date of filing of the specification, or the date determined under the Patent Regulations 1991 ("the Regulations"). Regulation 3.12(i)(b) of the Regulations determines that "if the claim is fairly based on the matter disclosed in one or more priority documents, the date of filing of the priority document in which the matter was first 'disclosed' is the priority date of the claim". Pursuant to s 38 of the Act and reg 3.12(ii)(a) the provisional application filed 2 May 1986 (Exhibit A), being a document associated with the complete specification filed 1 May 1987, is a priority document. Sub-section 40(1) stipulates that a provisional specification must describe the invention whereas sub-s 40(2) states that a complete specification must "describe the invention fully, including the best method known to the applicant performing the invention" and "end with a claim or claims defining the invention". As was noted in Leonardis v Sartas No 1 Pty Ltd, Full Court, Federal Court, unreported, 13 June 1996 the relevant principles arising out of that distinction have been clearly put by Lockhart J in Anaesthetic Supplies Pty Ltd v Rescare (1994) 50 FCR 1 at 20 as follows: "All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting an inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional." (See also: Re Mond Nickel Company Limited Application for Patent (1956) 73 RPC 189.) The respondents submit that integer F ("means for dispensing a single unit of feed from any one or more of the feed metering units irrespective of the said feed requirements") is not "referred to" or "disclosed" in the provisional specification by the following descriptions used therein: "a manual mode, wherein an operator provides manual control" (p 4 (17-18)); and "In the manual mode of operation the operator manually actuates the operation lever [of the feed metering unit] to meter out a unit of feed to a cow" (p 7 (15-17)). The applicants contend, however, that the following description in the provisional specification provides an outline of an invention of which a component would be integer F: "It is envisaged that the apparatus could comprise means to allow metering of one unit of feed to a plurality of active feed metering units in response to a single command from an operator. Thus, a small amount of feed could be made available to each animal while an operator enters the cow identification number at each feed metering unit." (p 7 (23) - p 8 (3)) The broad idea of the invention contained in the provisional specification is not the detail of the invention and nor is the provisional specification the description of the whole of the matter of the invention so that all parts of the description must be the subject of a claim, or claims, defining the invention in the complete specification. It is true that the provisional specification contemplated that the invention could include the dispensing of a single unit of feed by manual operation of a lever which would release particulate feed to feed troughs from feed metering units. Such a function would not have been dependent upon the computer functions of integers A and B of claim 1. However, it is clear that the provisional specification did not restrict the description of the invention in that way and included the distribution of a single unit of feed from a "plurality of feed metering units" in response to a single command from an operator. Such a description was consistent with interaction between the command by the operator and the computer. Furthermore, reference to a plurality of feed metering units would include contemplation of the actuation of a single feed metering unit if necessary. The task of assessing whether a claim is fairly based on a provisional specification is not a search for integers, per se, amongst the descriptive terms of a provisional specification. What is required is a determination of whether the provisional specification has delineated "the general nature of the invention, its field of application and the anticipated result". (See: Imperial Chemical Industries Ltd (Clark's) Application (1969) 86 RPC 574 per Lloyd-Jacob J at 583.) I am satisfied that the words of the provisional specification indicate sufficiently the field and nature of the invention defined in the claims of the complete specification. There is no departure from the provisional specification to introduce a new field of invention. The only issue is whether a combination invention that is anticipated in the provisional specification is capable of including the function defined in the claims for integer F and that question must be answered affirmatively. It was also submitted by the respondents that integer G ("sequence means for actuating respective ones of the feed metering units in a sequence, some or all of the feed metering units being located side by side") defined in claim 2 is not described in the provisional specification and, therefore, that claim was not fairly based on that specification. The description in the provisional specification refers to a dairy as a site for use of the invention to best advantage and the broad description of the invention as an apparatus able to control a plurality of feeding sites would be understood as extending to the distribution of feed to feeding sites in sequence. Again I am satisfied that claim 2 is fairly based on the provisional specification. Being satisfied that the accepted claims are fairly based on the provisional specification, it is unnecessary to consider whether the claims are fairly based on the terms of the complete specification, but the respondents submit that claim 1 of the complete specification, as amended on 8 May 1990, was, in substance, disclosed as a result of that amendment and pursuant to sub-s 114(1) of the Act and reg 3.14(b) the priority date of the claim is the date on which the proposed amendments were filed. The amendment to claim 1 added the words that describe integer F, namely, "and means for dispensing a single unit of feed from any one or more of the feed metering units irrespective of the said feed requirements". By sub-s 102(1) of the Act 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 a specification as filed. The respondents submit that integer F goes beyond the description of the "metering out of a single unit of feed in a manual operation" used in the body of the specification. As stated above, I am satisfied that the import of the description of the invention, including the best method of using it, makes it apparent that the computerised function of the apparatus is to be designed to include capacity for the operator to direct the distribution of a unit of feed to a plurality of sites irrespective of the automatic feed release for which the computer facility would be programmed. Notwithstanding that the amendment to the claim was a significant addition, it was an amendment made to better define the invention disclosed in the body of the specification and not an amendment to enable a claim to be made to matter that was, in substance, only disclosed as a result of amending the specification. The priority date for the claim was established by the filing of the provisional specification on 2 May 1986. Infringement The conclusion that an order should be made on the cross-claim that the patent be revoked denies the applicants' claim that the patent has been infringed by the acts of the respondents. However, I will set out my findings on that issue. If the proper construction of the patent is that it is an apparatus which uses a computer programmed by appropriate software to calculate the feed ration for an animal according to data entered in the computer in respect of that animal, the equipment constructed, and offered for sale, by the respondents has not infringed that patent. If, however, the invention is not an apparatus for the use of a computer programmed to use appropriate algorithms to calculate the feed requirements of an animal to be fed, the question of infringement becomes live. The respondents do not contest that integers A to E and G can be found in the Intelfeeder if the invention is so construed. The issue of the alleged infringement of claims 1, 2, 7 and 8 is whether integers F and H are present in the Intelfeeder. The Intelfeeder as first observed in operation in 1992 by Mr Giraudo, a patent attorney instructed by the applicants, is an apparatus which uses a programmable controller to regulate the distribution of particulate feed to dairy cows whilst in a milking parlour. The amount of feed fed to each cow is calculated by the operator of the dairy and entered in the memory of the controller as one of eight levels of feed distribution. The controller may be used to distribute feed to a single feeding site, or in sequence to all sites, and in a set amount irrespective of the amount that would be distributed to each cow according to the allotments already entered for the eight levels of feed distribution. There was no real contest from the respondents that if the applicants held a valid patent for an apparatus to operate not as a processor of data and calculator of feed allotments, the operation of the Intelfeeder replicated the integers of the invention including integers F and G. The substance of the respondents' claim of no infringement was that the respondents' equipment did not receive or process data and was not programmed to compute feed allotments according to such data and for that reason the performance of integers F and G was not represented in the Intelfeeder equipment. There was no real issue about the method chosen by the Intelfeeder system to perform the functions to which the patent made claim. It was said, however, that the method of delivery of feed used in the Intelfeeder was governed by the period of time over which the delivery by a bucket wheel system operated and not the volume the delivery mechanism was able to deliver. But the distinction sought to be made revealed no difference in truth. The programming of the Intelfeeder to operate for a period of time to deliver a known quantity of feed in that period was to the same effect as programming the controller to cause the feed dispensing unit to deliver a known amount of feed by use of a volumetric feed delivery system. It was submitted that the use of a remote key pad in the invention distinguished it from the Intelfeeder but as demonstrated by the recitation of the integers, the combination and the use of a remote key pad was not material to the operation of the combination defined by the patent. It would follow from the foregoing that the allegation of infringement of claims 1 and 7 would be sustained if the patent were valid. With regard to claim 2 it was contended by the respondents that integer I ("delay means for causing a delay in the sequence in the activation of each feed metering unit") was not reproduced in the Intelfeeder because the period of delay that system was able to produce was too short to successfully operate as a "bait-feeding" method for the orderly control of a dairy herd in the course of milking. Although the best use of the invention was said to be in respect of the feeding of cows in a milking parlour, the configuration of the parlour may bear upon the utility of the period of delay and there is nothing in the terms of integer I of claim 2 that would indicate that a system incorporating the elements of the invention, but unable to produce other than a short period of delay, would not infringe the patent. The object of the delay in delivering the feed incorporated in the Intelfeeder system was to meet the requirements of an operating dairy otherwise the function had no discernible purpose. It should be considered that at least in some respect the Intelfeeder is capable of achieving that object and in doing so that it infringes the patent. This is not a case where the system alleged to be an infringement of a patent has made a significant variation in an integer to obtain a material difference in the operation of the system. (See: Catnic at p 243.) If the patent were valid, claims 2 and 8 also would have been infringed by the respondents. No question of assessment of damages for infringement was submitted to the Court for decision. The applicants claim will be dismissed and a declaration made as sought in the respondents' cross-claim. I will receive submissions from the parties as to the appropriate order in respect of costs. I certify that the preceding sixty-five (65) pages are a true copy of the Reasons for Judgment of his Honour Justice Lee. Associate: Date:

Acme Bedstead Co Ltd v Newland Bros Ltd

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