Obviousness
154 DS, DSQ and GSA submit that the invention claimed in the petty patent is not a patentable invention because it does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims as required by s 18(1)(b)(ii) of the Act.
155 The term "prior art base" is a defined term in Schedule 1 to the Act. It means :
"(a) in relation to deciding whether an invention does or does not involve an inventive step:
(i) information in a document, being a document publicly available anywhere in the patent area; and
(ii) information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area;"
156 Section 7(2) of the Act provides :
"7(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately."
157 Section 7(3) of the Act provides :
"7(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
158 The decision in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 was in respect of obviousness under s 100(1)(e) of the Patents Act 1952 (Cth). Subject to a qualification I will refer to shortly, the statement of Aickin J, agreed in by the other members of the court as to the approach to be taken in determining obviousness, remains valid. His Honour said (at 293 - 295) :
"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 in relation to this process that the misuse of hindsight is most common. When once an idea or an object or a process or a combination, admittedly novel, has been published, it is very easy to say after perhaps months of search and study in the Patent Office and the public libraries that the integers into which the patent might be dissected could be found scattered amongst the prior documents by a person who already knew the solution to the problem and therefore knew what to look for and what to discard. But that process does not demonstrate lack of an inventive step. The opening of a safe is easy when the combination has been already provided.
.....
It may be observed that in the cases where obviousness is in issue very often the larger the number of prior publications which are relied upon as together establishing absence of an inventive step, the more likely it is that the alleged invention was not obvious for the wider one has to look to find all the integers the less likely it is that it would have been obvious to put them together in the particular manner in which the inventor did.
It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which 'can be put together by an unimaginative man with no inventive capacity' - see per Lord Reid in Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd [1972] RPC 346, at p 355.
There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245, at pp 279-280 and British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 259, at p 280. Indeed in the present case it appears that the first appellant in its establishment in the United States at one time had employees who did just this in the field of adhesives. But this is not so in all fields or in all countries. There was no evidence in the present case that those working in Australia in the field of adhesives or of surgical tapes followed such a practice or that any of the specifications relied upon was part of the common general knowledge of those working in these fields in Australia.
The respondent relied upon a number of prior specifications which had been available in Australia for public inspection before the priority date as providing a basis for the argument that the invention claimed was obvious. For the reasons which I have set out above I do not regard such specifications as capable of sustaining that argument without evidence that they were part of common general knowledge at that time . ..."
159 When Aickin J speaks of the selection of integers in a combination patent, he is not speaking merely of the individual items or components which together constitute the combination. It is the choice of those integers having the particular characteristics claimed which interact with one another in the manner and sequence claimed to produce the final desired product or result.
160 The observations of Aickin J must now be read subject to the statutory provisions in s 7(2) and s 7(3) of the Act. As to this, Burchett J said in Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414 :
"These provisions in s 7 seem to be designed to overcome the rejection in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 295; 29 ALR 29 of the availability, when obviousness is being considered, of specifications of prior patents not actually proved to be part of common general knowledge at the relevant time. But it is one thing to say that the rule forbidding the use of such a specification is relaxed; it would be another to say that in all circumstances such a specification may be used to some relevant effect. The new provisions are limited by the words 'being information that the skilled person ... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area'. And if a prior specification passes those tests, it must still be able to be said that, if that specification had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, 'the invention would have been obvious'. In Minnesota Mining & Manufacturing Co at CLR 294; ALR 59 Aickin J said :
'It may be noted that even in England where the process of making a mosaic out of prior publications is regarded as permissible under the Patents Act 1949 it is still necessary that the mosaic must be one which 'can be put together by an unimaginative man with no inventive capacity': see per Lord Reid in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 355.'
I do not think s 7 avoids this. If there be any doubt about it, reference may be made to the explanatory memorandum circulated when the Patents Bill 1990 was before the Senate, in which the following statement appears (p 3):
'In assessing whether an invention involves an inventive step, publicly available information from a prior document or prior use may be considered together with the common general knowledge, provided that the information would have been ascertainable, understandable and seen as relevant by a person skilled in the relevant art.'"
I agree with the observations of Burchett J in Tidy Tea.
161 DS, DSQ and GSA, by their "Further Corrected Amended Further Particulars of Objections" filed 26 February 1998, pleaded the following objection :
"3. The alleged invention, so far as claimed in each and every claim of the said complete specification, is not a patentable invention in that it was obvious and did not involve an inventive step when compared with the prior art base as it existed before the priority date of each such claim.
PARTICULARS
(a) Hereunder the respondents will rely upon common general knowledge in Australia at or before 10 November 1993 which is the earliest priority date of each claim of Australian Petty Patent No 645740 and also upon each and all of the instances of prior publication, prior user and/or prior art information set out in the particulars provided under paragraph 2 above.
(b) Further to paragraph (a) above, the prior art base consists of information used or made publicly available by reason of the publication in Australia of the following:
(i) The Philmac water meter assembly. The Philmac water meter assembly which is depicted in drawing No D1107 dated 15 February 1990 and which is exhibit 'WAH2' to the witness statement of Wayne Albert Harris dated 26 November 1996, was disclosed to the Power and Water Authority Northern Territory shortly before 19 September as described in paragraph 8 of the said witness statement of Wayne Albert Harris by a photograph of a three dimensional version of that drawing being disclosed to the Authority. The Philmac water meter assembly or a photograph or a drawing thereof in accordance with drawing D1107 was also disclosed to Mr Terry Barnes and Mr Ian Montgomery of Schlumberger Industries during February 1992 as described in paragraph 10 of the said witness statement of Wayne Albert Harris. The Philmac water meter assembly was also offered for sale to the persons set out in exhibits 'GRB3' and 'GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked 'A' and annexed hereto).
(ii) The Watts dual check valves model Nos 7, 7C, 9D, 709, 909, 909RPZ and NLF9 as described in paragraphs 8 to 12 (both inclusive) of the witness statement of Rodney Walter Sengstock dated 27 November 1996. The said Watts dual check valves were sold in Australia during the period January 1990 to August 1990 inclusive as described in paragraph 13 of the said witness statement of Rodney Walter Sengstock and as described in exhibit 'RWS7' to the said witness statement.
(iii) RMC double non-return valves Nos NRD50, BDNR50, DN15, BDNR-75-DN22, DNR-75H and BDNR 100-DB28. Each of the said RMC double non-return valves is depicted in the bundle of drawings which is exhibit 'RWS8' to the witness statement of Rodney Walter Sengstock dated 27 November 1996. Each of the said valves was manufactured by RMC and sold and supplied in Australia prior to 30 August 1990 on the dates set out in exhibit 'RWS7' to the said witness statement of Rodney Walter Sengstock (and as set out in the schedule which is marked 'A' and annexed hereto).
(iv) The Febco dual check valve No 810 which is depicted at page 18 of exhibit 'RWS9' to the witness statement of Rodney Walter Sengstock dated 27 November 1996. The Febco dual check valve was sold and supplied by GM Unman (Aust) Pty Ltd in Australia prior to 1989 as described in paragraph 15 of the said witness statement of Rodney Walter Sengstock.
(v) The KGG water meter which is described in paragraph 1.10 of the witness statement of John Harold Hubbard dated 27 November 1996. The KGG water meter was sold by Davies Shephard Pty Ltd in Australia prior to 10 November 1993 on the dates and to the persons set out in exhibit 'GRB3' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked 'A' and annexed hereto).
(vi) The Ebco manifold and meter assembly which is depicted in exhibit 'JHH4' to the witness statement of John Harold Hubbard dated 27 November 1996 and described in paragraph 4.6(a) of the said witness statement of John Harold Hubbard. A sample of the Ebco manifold and meter assembly was disclosed to the Brisbane City Council in 1989 as described in paragraph 4.3(a) of the said witness statement of John Harold Hubbard.
(vii) The Neptune T 10 water meter which is described in paragraph 4.4 of the witness statement of John Harold Hubbard dated 27 November 1996. The Neptune T 10 water meter was sold, supplied and installed in Australia in or about 1987 as described in paragraph 4.4(a) of the witness statement of John Harold Hubbard dated 27 November 1996.
(viii) The Sentinel meter assembly and the modified Sentinel meter assembly which are described in paragraph 4.5 of the witness statement of John Harold Hubbard dated 27 November 1996. The Sentinel meter assembly and a modified version of the Sentinel meter assembly has been sold by Davies Shephard Pty Ltd to the Brisbane City Council on the dates set out in exhibit 'GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked 'A' and annexed hereto).
(ix) The MSM meter which is depicted in exhibit 'JHH9' to the witness statement of John Harold Hubbard dated 27 November 1996. The MSM meter has been offered for sale, sold and supplied in Australia by Davies Shephard Pty Ltd prior to 1989 on the dates and to the persons set out in exhibit 'GRB7' to the witness statement of Garth Bellingham dated 27 November 1996 (and as set out in the schedule which is marked 'A' and annexed hereto).
(x) EP0125010 (Hudson Patent) published 14 November 1984.
(xi) AU PK0921 (Philmac Patent) dated 29 June 1990.
(xii) The tender options delivered to the Brisbane city Council in response to invitations to tender for contracts WS 104/89/90 and WS34/90/91 as listed in the schedule 'A' hereto."
Schedule A Part 1 to the Further Corrected Amended Further Particulars of Objections lists by name the tenderers by reference to the tender option of each tenderer and the date upon which the tender was lodged for contract WS104/89/90. Schedule A Part 2 lists the name of each tenderer together with the number of options of each tenderer together with the date of submitting the tender for contract WS34/90/91.
162 The priority date for Claims 1 and 2 of the petty patent was 30 August 1990.
163 In their final submissions DS, DSQ and GSA abandoned reliance upon paragraph 3(b)(i) - the Philmac meter assembly as an item of prior art.
164 There was evidence from Rodney Sengstock, who was at the relevant time the business development manager of RMC employed by GSA, of the sale of Watts dual check valves models 7, 7C and 9D in Australia since 1985. Each of these model valves have two non-return valves arranged in tandem within a common tubular housing. The exhibit "RWS7" does not record model 709 and 909 valves and discloses that no model 7C valves were sold in Australia in the period January to August 1990 inclusive. It shows that 203 model 7 valves, 40 model 9D valves, 144 model 909RPZ valves and 129 model NLF9 valves were sold within Australia during the same period. However, in cross-examination Mr Sengstock admitted that the Watts dual check valves sold by GSA were not arranged in the same manner as the check valves in Exhibit 41, which valves were identified as dual check valves of GST manufacture, being the valves disclosed in the petty patent. Further, Peter Flynn, the then design engineer at RMC Brisbane gave the following evidence as to the Watts 9D valve :
"What product do you call that? --- It is what we refer to as a Watts 9D.
And what is it used for? --- Different levels of backflow prevention. The dual check values we have been discussing are the lowest level, used for low-risk domestic applications up through - this is a higher risk, if you like, for use in higher risk applications.
Is this the one for use in laboratories or at the dairy farm? --- I would have to read the instructions to tell you. I haven't had a lot to do with the product. It would suggest from the application that it is for use in heating systems and higher risk areas where there is greater risk of contamination.
Could you look at this catalogue, page 14. Does that assist you with what the 9D valve does? --- It is used, once again, in areas such as livestock - well, examples listed are livestock, drinking fountains, residential boiler applications, those sort of areas, to prevent contamination through the drinking water supply.
Does that have any application to water meters supplied to Brisbane City Council? --- Other than very, very - drawing the long bow, I suppose. It has got moving values inside it, but, no, it is not a typical domestic back-flow prevention device."
165 As to the use of tandemly arranged dual valve backflow prevention assemblies, John Hubbard, the then managing director of and now consultant to DS, said :
"Feature 8 is a removable back-flow prevention assembly which includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein. Can you comment on that as to whether that was known or common in Australia before 30 August 1990? --- No, that was not common.
Not common? --- No.
Now, can you comment on whether there were, prior to that date, back-flow prevention assemblies which were in a cylindrical sleeve-like housing? --- They certainly were. They certainly were.
Can you comment on whether it was known that they might contain two valves rather than one? --- It was known, yes, it certainly was.
And what about whether they were tandemly arranged? --- They were tandemly arranged, yes.
So in terms of feature 8, was it known, prior to 30 August 1990, that there were such assemblies? --- Yes. Yes, it was known.
But they were not common? --- They weren't common."
166 The knowledge of Mr Sengstock and Mr Flynn as to the range of Watts valves available in August 1990 comes, I find, from their employment with RMC, which has been since 1 January 1989 the Australian agent for the sale of Watts valves. In the case of Mr Sengstock, his employment was from November 1988. In the case of Mr Flynn his employment commenced in March 1990. It is clear from the cross-examination of both witnesses that the valves are intended for a wide range of applications which, in August 1990, did not commonly include domestic water meter assemblies. I am satisfied that the valves specified in paragraph 3(b)(i) were, on 30 August 1990, not reasonably regarded by an objective person reasonably skilled in the art of designing and building water meter assemblies as information relevant to work in the relevant art in the patent area.
167 The irrelevance of the information specified in paragraph 3(b)(ii) of the objections to the skilled addressee is demonstrable from the evidence of Mr Hubbard. Mr Hubbard was put forward as a skilled addressee. In August 1990 he was also the managing director of DS, a large designer, manufacturer and supplier of water meter assemblies. In evidence he said :
"Now, at (ii) on the document I am showing you there, you referred yesterday to the Watts number 7 valve, which was known to you? --- The 7 series, yes.
And as I understand the Watts number 7 valve it is an inline valve which has the availability of screw thread arrangements at each end to be attached to existing pipework; that correct? --- That's correct, yes.
Do you have any knowledge at all of the number 7C which is next referred to? --- Not specifically, no. I remember the 7 series.
That would be just perhaps a different sort of model, would it, to the - - -? --- Well, in that the same number 7 is used you would expect that to be the case, yes.
And the 9D; are you able to? --- No, I can't remember specifically what that was, no.
Any of those other numbers there; 709 through to the NLF9. Do they mean something to you in the use of water meter assemblies? --- Well, other than
they are obviously some form of protection device for flow protection - backflow prevention of some form. I don't specifically know which model each one is. We didn't sell those products other than as part of assemblies when required.
Do you have any recollection of perhaps referring to RMC of some other company who might be the supplier to Watts? Did you perhaps contact Watts in preparing for your tender contract? --- No.
WS34? --- No.
They would have been done in house more or less because Tita fittings is available to you? --- Yes, partly, yes. We did also tender for the series 7 valve at one stage.
I see? --- Yes.
And but there are other companies in the Davies Shephard group, are there not? --- Yes, yes.
Who have specialities in valve manufacturing? --- Yes, Tita fittings as you said. Tita fittings.
Now, what about the next one, (iii). Do you have any knowledge of those NDR50s? --- No.
NR75H? --- Not specific knowledge, no. Our only involvement with those sort of products is where we were selling them in conjunction with our water meters.
And what about the Febco water meter assembly? Do you know of such an assembly by Febco as might be referred to in (iv)? --- Water meter assembly? No, I'm not aware of a Febco water meter assembly.
It is likely, is it not, that the number 810, the Febco 810 is in fact a valve and not an assembly at all? --- It says here a dual check valve. I will accept that as being perhaps what it is."
168 The evidence as to dual backflow valves goes no further than establishing that the idea of a dual valve backflow device with the valves tandemly arranged in the device was known to engineers and persons skilled in fluid management in August 1990.
169 The same conclusion arises in respect of the valves specified in paragraph 3(b)(iii) because the evidence leaves the valves in no different position to those specified in paragraph 3(b)(ii). Similarly with the Febco dual check valve model number 810 particularised in paragraph 3(b)(iv). It is a separate component designed to be attached to a water line by the use of union connectors, and the drawing referred to as "RWS9" to Mr Sengstock's affidavit shows it as being a component independent of other components in the water line and performing its particular function independent of any other component attached to the line.
170 The KGG water meter referred to in paragraph 3(b)(v) of the objections is alleged to have been disclosed after 30 August 1990. It is therefore irrelevant for present purposes.
171 There is no evidence that the Ebco manifold and meter assembly referred to in paragraph 3(b)(vi) of the objections was disclosed to the BCC in 1989, or that if it was, its disclosure was publicly known. Nor is there any evidence that inquiry by a skilled addressee to the BCC in August 1990 generally, or in respect of tender WS34/90/91, would have resulted in the material being disclosed by the BCC. The manifold and meter assembly was not part of the prior art base in the patent area at the priority date.
172 Mr Hubbard gave evidence that the Neptune T10 and the promotional material relating to it had been available in Australia since at least 1987. I am prepared to treat that material as part of the prior art base having regard to his evidence that the assemblies and the material were widely used throughout Australia.
173 In respect of paragraph 3(b)(viii) of the particulars of objection, Mr Hubbard gave the following evidence :
"Now, the Sentinel similarly exhibited to your material? --- Yes.
Could you look at that paragraph (viii). Did you ever sell those to the Brisbane City Council? --- No, no. We did not.
Did you sell a modified version of that Sentinel to the Brisbane City Council? --- We never used the term Sentinel for our final version which was sold to the BCC.
And the MSM, of course, was that separate unit you would have sold to the Brisbane City Council; is that correct? --- No. We didn't sell MSMs to the BCC.
All right? --- That is the metering unit."
174 Exhibit "GRB7", which is pleaded in paragraph 3(b)(viii) of the objections, contains details of the tenders to the BCC for contract WS34/90/91 in respect of which DS was an unsuccessful tenderer.
175 On the evidence of Mr Bellingham, the Director Water Services Branch of the BCC, and on the basis of Exhibit 1, the tender did not close until 31 August 1990. All tenders remained in a locked box until closure of the tender. The details of tenders were not disclosed by the BCC to competing tenderers. Accordingly, the information contained in the tenders was not publicly available on the priority date and could not have been obtained on that date. This paragraph of the objection is not made out.
176 Mr Hubbard gave further evidence as to paragraph 3(b)(ix). This evidence follows immediately upon the evidence set out in respect of paragraph (viii). He said :
"If you could just look at - have you got (ix) on your sheet? --- Yes.
It seems to assert that you did. It seems to assert that Davies Shephard sold and supplied to the Brisbane City Council. Are you saying that is wrong? --- We supplied - we supplied them samples. Samples.
But not by way of a sale? --- Not a large sale, no."
177 There is no direct evidence of sales of the Kent MSM to any persons in Australia prior to 30 August 1990. Mr Hubbard gave evidence that he saw the brochure for the meter in Australia in early 1989. He gave no evidence as to the circumstances in which he came to see the brochure and the nature and extent of its distribution at that time and subsequently. He was not cross-examined on this evidence. The brochure (Exhibit 106) in terms relates to one component of a water meter assembly and I find it was part of the prior art base at the priority date.
178 Paragraph 3(b)(x) of the objections relates to the Hudson Patent EP0125010 published on 14 November 1984. The patent had not been read by Mr Hubbard in or before 1990. Nor had it been read by Mr Sengstock. If they are to be treated by the Court as persons skilled in the art in August 1990 as DS, DSQ and GSA submit should be the case, their failure to search the patent out is some evidence that the patent was not reasonably regarded as relevant to those skilled in the art in the patent area on the priority date. Nor is there any evidence that in the art of water meter assembly design and manufacture, those skilled in the art ordinarily engaged in patent searches as part of acquiring common general knowledge. Neither person gave evidence that this patent was relevant to a skilled addressee on 30 August 1990.
179 A perusal of the Hudson patent reveals a different problem which the patentee sought to overcome from the problem with which the hypothetical skilled addressee is confronted with by the petty patent on 30 August 1990. The Hudson patent states :
"Pipes have to be led into and out of such a box, but one standard Water Board requirement is that there should be adequate insulation down to a depth of at least 750 mm. To avoid insulating the entire pipe, therefore, it is convenient to lay it at a greater depth, and to bring it up near the surface only locally, as for example to the assemblies referred to above. Only short lengths then require insulation.
Another requirement is that the connection between the pipes and the assembly should allow for slight ground movement and settling.
A further problem is that the lid of the box should be flush with the surface of the ground, particularly if the box is set into a pavement or roadway. If the lid seats firmly, as it should, it will have a fixed position relative to the box, which will therefore have to be sunk to a very precise depth in order to make the lid flush with the ground surface. That is not always easy to achieve, and in any event when re-surfacing of a pavement, for example, takes place, the levels change leaving the lid proud or sunk.
It is therefore the aim of this invention to provide an assembly which can accommodate to ground movement and differing surface levels, and which can provide the necessary insulation above the critical depth."
180 The document does not of itself indicate a relevance to the problems sought to be addressed in the petty patent. I am therefore of the view that a skilled addressee would not treat the patent as relevant. There is no evidence in support of the contrary view.
181 So far as paragraph 3(b)(xi) is concerned, there is no evidence that the Philmac Patent AU PK0921 was available for public inspection on or before 30 August 1990. Nor is there any evidence that the contents of it were generally available to the public. Further, neither Mr Sengstock nor Mr Hubbard had had recourse to AU PK0921 in 1990. Nor do either of them express the opinion that it would have been relevant to a skilled addressee on 30 August 1990 to have recourse to AU PK0921.
182 The final assertion of material in the prior art base is that contained in paragraph 3(b)(xii) of the objections. It involves tenders for water meter assemblies to the BCC under tenders WS104/89/90 and WS34/90/91.
183 Tenders to the BCC are conducted under a Council policy recorded in a document "Principles of Contracting and Tendering". That document provides that the evaluation of tenders will be conducted in commercial confidentiality. Evidence was given that the tenders were conducted on a confidential basis and the contents of the tenders were not and would not be released publicly. Tender WS104/89/90 closed on 20 December 1989. It included eleven tenders providing for one hundred and nineteen options of fourteen different makes of water meters. The contents of the tenders were never made publicly available. Tender WS34/90/91 closed on 31 August 1990. It included tenders from twelve companies and covered at least one hundred and thirty-seven options. The contents of these tenders were never made public by the BCC. The procedure of the BCC in receiving and evaluating tenders is set out in a document Exhibit 1 which was admitted into evidence without objection. The procedure revealed in Exhibit 1 excludes access to the information in the tenders, to evidence of information solicited by the BCC by interview, or, to the tender samples. There is no evidence that the content of these two contract tenders was publicly available on 30 August 1990. The evidence does not show how the hypothetical skilled addressee acting reasonably would have got access to the material. Accordingly, it was not part of the prior art base. However, the material is relevant as demonstrating the type of water meter assemblies that were being designed and manufactured by those engaged in the art of water meter assembly design and manufacture in 1989 and 1990; a matter to which I will refer later.
184 DS, DSQ and GSA contend that the invention claimed in Claim 1 was obvious, because :
(a) Claim 1 was properly reduced to thirteen elements, the content of which was known generally within the water meter assembly industry prior to August 1990;
(b) the terms of the specification WS34/90/91, and in particular a drawing WM8 entitled "TYPE OF METER MANIFOLD", by themselves or in conjunction with the common general knowledge of the industry required or inevitably led to production of the piece of equipment claimed in Claim 1;
(c) the product which results from the combination claimed is, upon analysis, nothing more than a collocation of integers, each operating independently of the others.
185 To prove that each of the thirteen elements which make up Claim 1 is known to the water meter industry generally does not address the statutory question. Nor does it answer the statutory question that particular persons who are engaged in different facets of the water meter assembly industry have particular knowledge of certain elements of the combination because of service on specialist bodies such as the sub-committees of the Australian Standards Association of Australia. In the present case, for example, part of the knowledge of Mr Hubbard, Mr Lancaster of Email Ltd and Mr Manthey, the former officer of the South Australian Engineering and Water Supply Department, was acquired through their membership of the committee which was attempting to write an Australian Standard for water meters. Without evidence that such knowledge as was acquired by them as members of the committee was also part of the prior art base of a person skilled in the art in the circumstances provided in s 7(2) and s 7(3) of the Act, their knowledge so acquired does not satisfy the statutory test. Even assuming against Stack and GST that the concepts underlying each element of Claim 1 was part of the common general knowledge of a skilled addressee prior to August 1990, an assumption I would not lightly make based as it is on only the evidence of Mr Hubbard and Mr Manthey, I am not satisfied that such a skilled addressee would have chosen the integers with the defining characteristics which make up Claim 1 of the petty patent.
186 The circumstances which lead me to this conclusion are several. The evidence of Mr Sengstock, Mr Flynn, Mr Lancaster and Mr Hubbard satisfies me that in 1989 and 1990 the use of a unitary water meter manifold was rare in Australia, although it was becoming common in the United Kingdom and the United States of America. Indeed, the evidence of Mr Sengstock was that in February 1989 there was nothing in Australia other than arrangements similar to the in-line water meter assemblies then used. The preference in Australia was for in-line water meter assemblies where three separate components, the stop cock, the water meter and the non-return valve were co-linear with the outlet of the pipes to which they were attached. The water meters in the United Kingdom and the United States of America also tended to be inground meters because of the lack of space to mount the meter above ground in many developed city locations in the United Kingdom and/or because of climatic conditions eg to prevent freezing. That was generally not the situation in Australia. Further, some parts of the industry, at least Email, were actively attempting to dissuade the BCC from introducing manifold assemblies. It follows, in my view, that a skilled addressee would be unlikely, in August 1990 if free to do so, to choose a unitary manifold forming a flow passage having an inlet, an outlet and two outwardly access ports intermediate the inlet and the outlet. If the skilled addressee chose a traditional in-line arrangement or something similar, that choice would exclude certain other elements of Claim 1 of the petty patent, especially in relation to the backflow prevention assembly and the means of access to it.
187 Accepting the evidence of Mr Hubbard that dual backflow prevention assemblies were not a common feature of water meter assemblies in August 1990, and the evidence of Mr Manthey that there was a controversy within Australia in the 1980's as to whether backflow prevention assemblies were necessary in domestic water supply situations, the likelihood is against a skilled addressee choosing a removable backflow prevention assembly which has all of the characteristics of features 6, 8, 9, 10, 11, 12 and 13 of the elements of Claim 1. That the skilled addressee was aware that there existed dual valve backflow prevention assemblies where the valves were retained in a single sleeve and were used in other situations of fluid management, being valves or pieces of plumbing of the type revealed in the exhibits to the statements of Mr Sengstock and Mr Gaskell, and that they may in a functional sense be used in a water meter assembly, does not incline me to the view that the choice of such a component would be made by that addressee in August 1990.
188 In the present case it is important that the question of obviousness place before the hypothetical skilled addressee the problem which the invention claimed in the petty patent sought to solve. That problem related to maintenance and replacement of the components of a water meter assembly placed in the ground.
189 No witness cast any serious doubt on the contention in the petty patent that there were problems associated with servicing and maintaining traditional in-line water meters in the ground. Mr Sengstock in his evidence identified the problems which existed in 1990 as :
(a) the ability to service or replace the non-return valve;
(b) the siting of the water meters;
(c) how the workman can best execute a repair;
(d) backflow prevention to prevent contaminants from entering the public water supply;
(e) maintenance, testing and replacement of the measuring assembly if it is broken or is alleged to be reading incorrectly.
190 Mr Flynn also spoke of the problems and different solutions or choices taken to attempt to solve them. He said :
"I would just like to show you Coughlin as part of exhibit 35, item number 11. Have you seen this particular patent, Coughlin and Others? --- No, I haven't.
Looking at it, it seems to involve three separate shells? --- No, it would appear to be three chambers for some purpose.
Three chambers, yes? --- Yes.
And nothing like the water meter assembly which is the subject of Stack patent 745740, would you agree, just by looking at it briefly? --- It's very difficult to say but I believe it is another approach to the same problem but it's essentially different.
What are the sort of problems that spring to your mind in water meter assemblies? --- Basically packaging of a meter feature with backflow prevention and some form of shut off in such a format that will achieve maintainability common - maintainability, ease of servicing, all those sort of things within a meter environment buried at the bottom of your front garden type situation.
And having read the Stack patent 645740, would you agree that that provides one solution to those sorts of problems? --- Yes, it does."
191 These were the problems which the BCC tender raised for solution in tender WS34/90/91 in addition to providing a water meter assembly which had a stop cock, a meter assembly and a backflow prevention assembly and which achieved certain stated performance criteria. The BCC attracted tenders from Australia and overseas. Each of the tenderers were faced with the same problems which faced Russell Plastics, Stack and Grieves. It is a fair inference to draw that the 137 different options tendered by twelve companies included work of persons in the position of the hypothetical skilled addressee as contemplated by s 7(2) and s 7(3) of the Act. No tenderer and no tender option other than that of Russell Plastics is shown as making the choice of integers with the characterising features which appear in Claim 1 of the petty patent. That no other tenderer is shown as making the same selection of integers is strongly against the choice of integers in Claim 1 being obvious.
192 The result of the tender process also goes a long way to refuting the second argument advanced by DS, DSQ and GSA. Although the witness statements of Mr Hubbard, Mr Sengstock, Mr Bellingham from the BCC and Mr Lancaster to varying degrees assert that the tender specification for contract WS34/90/91 and drawing WM8 would lead by direction to choosing some or all of the elements of Claim 1 of the petty patent, their oral evidence, particularly under cross-examination, retreated from that position. The specification and drawing, I find, gave to each tenderer a wide choice of integers with a range of characteristics which would satisfy the tender. The drawing WM8 was diagrammatic only, it was not to scale and it did not necessarily represent the way one should make the manifold. So much appears from the evidence of Mr Lancaster, Mr Sengstock and Mr Hubbard. The meter depicted could not be constructed because it would not allow for the flow of water through the measuring element. It would be necessary to design a transition piece and an adaptor to allow the arrangement depicted in WM8 to work.
193 In addition to the engineers, who conceded that WM8 required choices to be made from a number of options available, evidence was also given by Mr David Connor, an engineering draftsman employed by RMC at the relevant time. Mr Connor was not a skilled addressee. He was, however, familiar with reading and drawing plans in respect of equipment made in the industry. He saw at least three choices available in the choice of isolating valves. He also saw options as to the use of union end connectors to separate the isolating valve from the body of the manifold.
194 There was no consistency in what the engineers called by DS, DSQ and GSA saw in WM8. In particular, there was dispute as to whether the manifold was a unitary manifold, there was disagreement as to whether the valves were shown as two valves in a single sleeve or whether there were two separate valves each in its own casing. There was disagreement as to whether the drawing showed any particular and, if what, mode of securing the backflow prevention assembly in place.
195 That manifold meters of the type claimed in the petty patent had advantages over traditional in-line arrangements was acknowledged by an internal memorandum circulated within DS in May 1992. The occasion for the memorandum was the decision to design a manifold meter for the BCC and add it to the range of available meter assemblies. The document, in part, said :
"Scope
This document specifies preliminary requirements for development of a 20mm Manifold Meter suitable for the Brisbane City Council (BCC).
Introduction
Manifold meters are seen to have certain advantages over traditional water meters. These advantages are outlined below.
1. The manifold forms an integral and permanent part of the pipework between the water supply mains and the user's property.
2. The manifold incorporates a valve which alleviates the need for a separate meter stop cock in the pipework.
3. The pipework remains below ground at all times, unlike traditional 'above ground' meter installations. This alleviates the need for additional bends and riser pieces to bring the pipework above ground.
4. To replace the meter, it is a simple matter to unscrew the old meter insert and screw in a new one. There is no need to 'break' pipework as the case with traditional meters. The manifold remains fixed in its position.
5. Replacement meter inserts cost less than traditional meters.
Manifold meters are attractive even though initial package cost is higher than for traditional meters. Generally the higher initial package cost is offset by lower installation and life-cycle costs compared to traditional meters.
Applicable Documents
Australian Standard AS3565
BCC Tender Specification W.S. 34/90/91
Meter Construction
The manifold meter consists of the following major items:
Andrae Leonberg MO-D MODULMETER
Closing Ring
Adaptor Ring
NRV-Adaptor Tube Assembly
Manifold
Ball Valve"
196 Mr Flynn from GSA, in evidence, agreed with the five stated advantages.
197 There was, in my view, sufficient choices to be made to satisfy the test articulated by Aickin J in Minnesota Mining and Manufacturing Co at 293 that the invention was not obvious.
198 Finally, I turn again to the question of the claim being a mere collocation. In support of this contention DS, DSQ and GSA principally rely upon the evidence of Mr Peter Kleins, an engineer employed by RMC as a production engineer in December 1992. Mr Kleins had had no previous experience in the water meter assembly industry. On his own evidence "I don't design water meter assemblies." His first major task upon employment with RMC was to co-ordinate the different departments to produce product. Mr Kleins had never seen a manifold meter other than as shown in Exhibit 169 which was a RMC drawing of a water meter assembly dated 2 June 1993. Mr Kleins was not, and I do not accept him as, a skilled addressee in the art in the patent area.
199 Mr Kleins was not addressing the problem which the petty patent sought to address and did not address the choice of elements assembled in the order and sequence specified in Claim 1 and the way that they interacted to overcome the problem addressed. The invention claimed in Claim 1 is not a mere collocation of integers involving no inventive step.
200 The allegation of want of inventive step and obviousness fails.