FEDERAL COURT OF AUSTRALIA

Bartlem Pty Ltd v CMMC Pty Ltd  [2001] FCA 1218

INTELLECTUAL PROPERTY - patents - infringement - "pith and substance" of the specification - whether the language of the claim has been ignored and a test of functional equivalence applied - whether the inventive step is based on the choice and arrangement of the particular combinations, as opposed to an improvement over the known collection of integers

INTELLECTUAL PROPERTY - patents - revocation - priority date of patents - whether claims are fairly based on the disclosures contained in the provisional specification

INTELLECTUAL PROPERTY - patents - compliance with ss 40(2)(a) and (3) Patents Act 1990 (Cth) - whether claims are fairly based on what is disclosed in the specification

INTELLECTUAL PROPERTY - patents - manner of manufacture within s 6 Statute of Monopolies - whether the invention claimed is a manner of manufacture - whether the invention was an analogous use of known integers - whether inventive step disclosed in complete specification

INTELLECTUAL PROPERTY - patents - obviousness - prior art base - whether the invention claimed had inventive step when compared to the prior art base - whether integers were part of common general knowledge

INTELLECTUAL PROPERTY - patents - novelty - compared with prior art base - consideration of the test "reverse infringement" for novelty

Patents Act 1990 (Cth)  ss 40, 18, 7

Electrical & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23  Cited

Ludlow Jute Co Ltd v Low (1953) 70 RPC 69  Cited

AMP Incorporated v Utilux Pty Ltd (1971) 45 ALJR 123  Cited

Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385  Cited

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8  Cited

Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588  Cited

Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461  Cited

Sunbeam Corporation v Murphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98  Cited

Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477  Cited

Re Erickson’s Patent (1923) 40 RPC 477  Cited

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79  Applied

Old Diggers Pty Ltd v Azuko Pty Ltd (2000) AIPC 91-571  Cited

May v Higgins (1916) 21 CLR 119  Cited

Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156  Cited

Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262  Cited

Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205  Cited

Clark v Adic (1875) LR 10 Ch App 667  Applied

Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236  Cited

Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253  Applied

Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36  Applied

Populin v HB Nominees Pty Ltd (1982) 59 FLR 37  Cited

Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160  Cited

Marconi v British Radio, Telegraph & Telephone Co Ltd (1911) 28 RPC 181  Cited

Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183  Cited

Codex Corp v Racal-Milgo Limited [1983] RPC 369  Cited

Willemijn Houdstermaatschappij BV v Madge Networks Ltd [1992] RPC 386  Cited

CCOM Pty Ltd v Jiejing Pty Ltd [No 2] (1993) 27 IPR 577  Cited

Stack v Brisbane City Council (1999) 47 IPR 525  Applied

Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405  Cited

Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228  Cited

Hendriksen v Tallon Ltd [1965] RPC 434  Cited

Valensi v British Radio Corp [1973] RPC 337  Cited

BARTLEM PTY LTD v CMMC PTY LTD AND OTHERS

QG133 OF 1996

COOPER J

BRISBANE

30 AUGUST 2001

THE COURT ORDERS THAT:

1.                  The applicant’s claim for infringement of Australian Patents 664820, 692882, 698806 and 723748 (“the Patents”) against the respondents be dismissed.

2.                  Judgement be entered on the claim for the respondents with costs, including reserved costs, if any, to be taxed if not agreed.

3.                  The respondents’ cross claim for revocation of the Patents be dismissed.

4.                  Judgment be entered on the cross claim for the applicant with costs, including reserved costs, if any, to be taxed if not agreed.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

background

1                     The applicant is the patentee of:

(a)        Australian Standard Patent No 692882 (“AS 692882”) in respect of an invention entitled “Improved Drive Mechanisms” for a term of twenty years commencing 1 May 1991;

(b)        Australian Standard Patent No 698806 (“AS 698806”) in respect of an invention entitled “Improvements to Power Driven Mowers” for a term of twenty years commencing 18 June 1992;

(c)        Australian Petty Patent No 664820 (“AP 664820”) in respect of an invention entitled “Improved Drive Mechanisms” for a term from 30 November 1995 until 1 May 1997;

(d)        Australian Petty Patent No 723748 (“AP 723748”) in respect of an invention entitled “Improvements to Drive Mechanisms” for a term of one year commencing 7 September 2000.

2                     The inventions claimed in the above patents lie in the use of a differential drive and locking mechanism in the rear drive assembly of a chain driven ride-on motor mower.

3                     The applicant brings the within proceedings alleging infringement of certain of the claims of its patents by the respondents in the manufacture and sale of a “Stockman” range of ride-on motor mowers incorporating a lockable differential drive assembly through the business of “Cox Mower and Machinery Co”. The respondents denied infringement and cross-claimed for revocation of each of the patents in suit.

4                     The proceedings, in their final form, were litigated against the third and fourth respondents alone, it being agreed that the other respondents would not be proceeded against.

5                     The trial of the proceedings was limited at first instance to the issues of infringement and revocation, all other issues to be stood over and tried as separate issues if a further trial was required.

the issues

6                     The applicant alleges that the following claims have been infringed by the respondents:

(a)        AP 664820:  claims 1 and 2;

(b)        AS 692882:  claims 1, 7, 8 and 9;

(c)        AS 698806:  claims 1, 5, 6, 7 and 8;

(d)        AP 723748:  claims 1, 2 and 3.

7                     The respondents deny that any of the claims were infringed by the drive mechanism which is fitted to and sold as part of the “Stockman” range of ride-on motor mowers.  Further, they seek revocation of each of the patents on the ground that none of the claims relate to a patentable invention within the meaning of the Patents Act 1990 (Cth) (“the Act”).  The grounds on which each of the patents are sought to be revoked are:

(a)        lack of an inventive step;

(b)        want of novelty;

(c)        not a “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies;

(c)        failure to comply with s 40(2)(a) and s 40(3) of the Act.

the claims on the patents

8                     So far as is relevant for the present proceedings, AP 664820 contains the following claims:

“1.       A ride-on mower including a chain driven reversible rear drive axle assembly of the type wherein:  a differential gear case is mounted rotatably on and supported by a transverse axle which supports respective wheel hubs at opposite ends thereof and which is supported for rotation by spaced chassis mountings intermediate said wheel hubs and through which spaced chassis mountings the transverse axle is attached to the mower’s chassis;  the gear case is mounted on the transverse axle between one wheel hub and the adjacent chassis mounting and said one wheel hub is rotatable about the transverse axle;  a driven sprocket for the chain drive is attached to the gear case for driving the reversible rear drive axle assembly;  the gear case includes a housing which extends co-axially of the transverse axle and which housing carries a pair of opposed planetary gears therein for orbital motion about the transverse axle;  opposed sun gears are supported in axially spaced relationship on the transverse axle adjacent said one wheel hub and are differentially driven by the opposed planetary gears;  the sun gear nearest said one wheel hub is rotatable about the transverse axle and is drivingly connected to said one wheel hub, and the other sun gear and the other wheel hub are locked for rotation with the transverse axle, and characterised in that:-

            the gear case includes fixed end walls at the opposite ends thereof which enclose the sun gears and planetary gears within the housing;

            the sun gear nearest said one wheel hub is drivingly connected to said one wheel hub by a tubular portion which passes rotatably through the fixed end wall interposed between said one wheel hub and the sun gear nearest said one wheel hub,  and

the transverse axle passes rotatably through the other end wall and said tubular portion.

2.         A ride-on mower including a chain driven reversible rear drive axle assembly as claimed in claim 1 and further characterised in that there is provided selectively engageable differential locking means operable and disposed externally of the gear case and at the side of said one wheel hub which is remote from the gear case for effecting locking of the gear case for rotation with said transverse axle and with said one wheel hub, whereby the respective wheel hubs are locked for rotation in unison with both said transverse axle and said gear case.  ...”

9                     The claims in AS 692882 are:

“1.       A ride-on mower including a chain driven reversible rear drive axle assembly of the type wherein:  a differential gear case is mounted rotatably on and supported by a transverse axle which supports respective wheel hubs at opposite ends thereof and which is supported for rotation by spaced chassis mountings intermediate said wheel hubs and through which spaced chassis mountings the transverse axle is attached to the mower’s chassis;  the gear case is mounted on the transverse axle between one wheel hub and the adjacent chassis support and said one wheel hub is rotatable about the transverse axle;  a driven sprocket for the chain drive is attached to the gear case for driving the reversible rear drive axle assembly;  the gear case includes a housing which extends co-axially of the transverse axle and which housing carries a pair of opposed planetary gears therein for orbital motion about the transverse axle;  opposed sun gears are supported in axially spaced relationship on the transverse axle adjacent said one wheel hub and are differentially driven by the opposed planetary gears;  the sun gear nearest said one wheel hub is rotatable about the transverse axle and is drivingly connected to said one wheel hub, and the other sun gear and the other wheel hub are locked for rotation with the transverse axle, and characterised in that:-

            the gear case includes fixed end walls at the opposite ends thereof which enclose the sun gears and planetary gears within the housing;

            the sun gear nearest said one wheel hub is drivingly connected to said one wheel hub by a tubular portion which passes rotatably through the fixed end wall interposed between said one wheel hub and the sun gear nearest said one wheel hub, and

            the transverse axle passes rotatably through the other end wall and said tubular portion.

...

7.         A ride-on mower including a chain driven reversible rear drive axle assembly as claimed in any one of claims 1 to 6 and further characterised in that there is provided selectively engageable differential locking means operable and disposed externally of the gear case and at the side of said one wheel hub which is remote from the gear case for effecting locking of the gear case assembly for rotation with said transverse axle and with said one wheel hub, whereby the respective wheel hubs are locked for rotation in unison with both said transverse axle and said gear case.

8.         A ride-on mower as claimed in claim 7, wherein the differential locking means locks together any of the differential components which can otherwise rotate differentially.

9.         A ride-on mower as claimed in claim 7 or claim 8, wherein the differential locking means includes an offset locking member which is supported by and extends from said one wheel hub offset from said transverse axle.  …”

10                  The claims in AS 698806 are:

“1.       A chain driven reversible rear drive axle assembly for a ride-on mower, including:-

            a transverse axle supporting respective wheel hubs at opposite ends thereof one hub being freely rotatable about said transverse axle and the other hub being fixed to said transverse axle;

            a differential gear case mounted rotatably on and supported by said transverse axle and forming a housing extending along the transverse axle;

            a driven sprocket for the chain drive attached to the gear case;

            a pair of opposed planetary gears supported by said housing for orbital motion about the transverse axle;

            opposed sun gears supported in axially spaced relationship along and co-axially about the transverse axle and within said housing and meshed with said opposed planetary gears for differential rotation thereby;

            a tubular stub axle rotatable about said transverse axle and drivingly connected to said one hub and the sun gear which is nearest said one hub, the other sun gear being locked for rotation with said transverse axle,  and

            an externally accessible locking member associated with said one hub and manually moveable to a locking position at which it locks said one hub for rotation with said gear case and said transverse axle.

...

5.         A chain driven reversible rear drive axle assembly as claimed in any one of the preceding claims, and including biassing [sic] means biassing [sic] said locking member into its locking position and latching means for maintaining said locking member disengaged against said biassing [sic] means.

6.         A chain driven reversible rear drive axle assembly as claimed in any one of the preceding claims, wherein said housing encloses said sun gears and planetary gears and said tubular stub axle and said transverse axle pass sealably through opposed end walls of said housing.

7.         A chain driven reversible rear drive axle assembly as claimed in any one of the preceding claims, wherein said gear case is mounted on the transverse axle closely adjacent said one wheel hub.

8.         A chain driven reversible rear drive axle assembly as claimed in any one of the preceding claims, wherein said locking member is disposed at the side of said one wheel hub which is remote from the gear case.  …”

11                  The claims in AP 723748 are:

“1.       A ride-on mower having a rear axle assembly including:-

            a transverse axle

            a fixed wheel mount at one end of the transverse axle;

            a further wheel mount supported rotatably about the opposite end of the transverse axle;

            a sun gear fixed on the transverse axle adjacent the further wheel mount;

            a gear case assembly having planetary gears therein which engage with said fixed sun gear;

            a mounting means for mounting the gear case rotatably about the transverse axle;

            a chain drive for rotating the gear case about the transverse axle;

            a further sun gear rotatable about said transverse axle and meshed with said planetary gears to form a differential drive;

            a connector means for connecting the further wheel mount to the further sun gear;  and

            a selectively operable locking means for locking the transverse axle to the further wheel mount.

2.         A ride-on mower according to claim 1 wherein the locking means includes a manually operable lock member supported on the further wheel hub and accessible at the outside thereof.

3.         A ride-on mower according to either claim 1 or claim 2 wherein the locking means is biased to its locking position and is associated with retention means for retaining the locking means in its unlocked position.”

the proper construction of the claims

12                  The claims define the invention, which is the subject of the patent, and outline the ambit of the patentee’s monopoly; it is the specification which describes the invention:  Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 41;  Ludlow Jute Co Ltd v Low (1953) 70 RPC 69 at 76;  AMP Incorporated v Utilux Pty Ltd (1971) 45 ALJR 123 at 128;  Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;  Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [14].  What is not claimed is disclaimed:  Electric & Musical Industries Ltd v Lissen Ltd at 39.

13                  There are no special rules for the interpretation of patent claims or specifications.  They are to be interpreted in the same way as any other written document upon ordinary principles of interpretation:  Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610-611;  Decor Corporation Pty Ltd v Dart Industries Inc at 391, 400.  Thus, any purely verbal or grammatical question that can be answered according to the ordinary rules of construction are to be resolved in that way:  Welch Perrin & Co Pty Ltd v Worrel at 611.

14                  Although the specification and the claims must be read as a whole, it is not permissible to vary or qualify the plain and unambiguous meaning of a claim by reference to the body of the specification:  Electric & Musical Industries Ltd v Lissen Ltd at 39;  Welch Perrin & Co v Worrel at 610;  Decor Corporation Pty Ltd v Dart Industries Inc at 391, 400, 419;  Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd at [15].  However, if an expression in a claim is not clear, then it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim:  Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd at [15];  Interlego A.G. v Toltoys Pty Ltd (1973) 130 CLR 461 at 479.

15                  The claims and specification are not to be read in the abstract.  The words used are to be given the meaning which a normal person, having a knowledge of the art and the manufacture at the relevant time and in light of the then common general knowledge, would give to such words:  Sunbeam Corporation v Murphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 102;  Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496;  Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd at [24].

16                  It is not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment.  The preferred embodiment cannot properly be used to introduce into the definite words of a claim an additional definition or qualification of the patentee’s invention:  Re Erickson’s Patent (1923) 40 RPC 477 at 491;  Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 89;  Decor Corporation Pty Ltd v Dart Industries Inc at 397.  Nor does the body of the specification, insofar as it describes “the method of performing the invention” delimit an area in which the patentee has a monopoly:  AMP Incorporated v Utilux Pty Ltd at 130;  Decor Corporation Pty Ltd v Dart Industries Inc at 400;  Old Diggers Pty Ltd v Azuko Pty Ltd (2000) AIPC 91-571 at 37,565.

17                  Having regard to the construction of the claims pressed by the respondent, the words of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd repay repetition (at p 95):

“... The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. ...”

18                  I turn to the specification of AP 664820 to determine what exactly is the invention which it describes and for which a monopoly is claimed:  Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 609.

19                  The specification acknowledges that the invention “relates to improvements to ride-on mowers incorporating reversible belt drive mechanisms”.  It identifies the features ordinarily found in a ride-on motor mower incorporating reversible belt drive mechanisms.  These are described as:

“Ride-on mowers often utilize reversible belt driven assemblies which transfer drive in the forward and reverse direction through a step down chain drive to the mower’s rear transverse drive axle.  The drive is actuated by a rocking type pedal in which heel pressure is used to engage reverse drive and toe pressure is used to engage forward drive.  For simplicity, light weight and ease of construction, ride-on mowers mostly utilise a transverse drive axle having respective wheel hubs fixed thereto at opposite ends thereof and intermediate spaced chassis mountings which are normally in the form of flangette bearings supporting the transverse axle for rotation.  The transverse axle is directly chain driven to a sprocket mounted rigidly on the axle for rotating the driving wheels in unison.

As the width of such mowers is increased for added stability and better traction through wider wheels, the disadvantages of poor steering control inherent in such drive systems becomes more noticeable.  Such disadvantages can be overcome to a large extent by the provision of a differential in the drive train to the rear wheels.  Unfortunately the differentials available to date have not suited the simple drive trains which utilise a common driving axle as used in most mowers and additionally the available differentials have not had the ability to be selectively utilised or locked in a convenient manner.”

20                  The specification refers to the prior art base with respect to provision of differentials and differential locks, and identifies the alleged deficiencies in their use and operation.  Relevantly, for the invention claimed in this patent, the specification concludes:

“... Accordingly they are not suited for location outwardly of the chassis supports for coupling to the correspondingly located drive sprocket of the final chain drive.

Furthermore the housings for this type of differential have to be made exceedingly robust if they are to cope with the high loadings applied through such drives without misalignment of the respective drive shafts being induced through the applied loads and leading to premature failure.

The locking mechanisms proposed in the abovementioned patent specifications and conventional differential locking mechanisms are not satisfactory for use with ride-on mowers.”

21                  The specification deals with a turf aerating machine manufactured by OMC in the United States of America and described as the “OMC Greensaire Mk II” as part of the prior art base.  The machine had a chain driven differential supported outwardly of simple axle bearing blocks at opposite sides of the vehicle chassis, which support a continuous exposed transverse axle.  The arrangement was described in the specification as “much in the manner as described above in relation to ride-on mowers”.

22                  The differential housing of the OMC machine is open at one end in order to transmit drive from the rear one of a pair of differentially driven sun gears to the adjacent wheel hub.  A resilient peripheral seal is used to close the gap between the adjacent wheel hub and the open end of the differential housing.  The purpose of the seal is to retain lubricant in the geared differentials and to keep out water, dust or other particulate material.  After stating the perceived deficiencies of the OMC arrangement, the specification concludes:

“While it may be possible to make all the components of such a differentially driven transverse axle sufficiently robust to accommodate these wear factors the resultant assembly would be very heavy and expensive to produce.  Such a differential would have a large flywheel effect and would place extreme loads on the rest of the drive train during rapid change from forward to reverse drive.”

23                  The specification then identifies the advantages, which the invention seeks to achieve over the present art base as disclosed in the specification:

“The present invention aims to provide a ride-on mower including a reversible chain drive to a differentially driven rear drive axle assembly which is operable in harsh operating environments safely, reliable and efficiently and which may also be operated without leaking of lubricant from the differential and consequent damage to the differential and or grassed surfaces onto which lubricant may leak.

In a further aspect this invention aims to provide a ride-on mower including a reversible chain drive to a differentially driven rear drive axle assembly which can be selectively locked and unlocked in a convenient and safe manner remote from the differential assembly and/or chain and belt drive assemblies incorporated in the ride-on mower as well as the cutting blades.”

24                  The balance of the consistory clause sets out that which appears in claim 1 of the claims defining the invention.

25                  In the preferred embodiment there is provided:

“... selectively operable differential locking means operable and disposed externally of the gear case and at the side of said one wheel hub which is remote from the gear case for effecting locking of the gear case assembly for rotation with said transverse axle and with said one wheel hub, whereby the respective wheel hubs are locked for rotation in unison with both said transverse axle and said gear case.”

26                  Save for the substitution of the word “operable” in the first line quoted for “engageable”, this formulation is carried over into claim 2 of the claims.

27                  The specification goes on to describe, by reference to the accompanying drawings, a typical embodiment of the invention.

28                  When the specification is read as a whole, it appears that the invention consists of a differentially driven rear axle assembly, capable of being selectively locked and unlocked from a convenient location remote from the differential assembly, adapted for use in a typical ride-on mower which utilises a reversible chain drive.

29                  The components of the combination claimed in claim 1 are a ride-on mower, including a chain driven reversible rear drive axle assembly of a type wherein:

(i)         a differential gear case mounted rotatably on and supported by a transverse axle, which supports wheel hubs at opposite ends and which is supported for rotation by spaced chassis mountings intermediate the wheel hubs and through which spaced chassis mountings the transverse axle is attached to the mower’s chassis;

(ii)        the gear case is mounted on the transverse axle between one wheel hub and the adjacent chassis mounting and that wheel hub is rotatable about the transverse axle;

(iii)       a driven sprocket for the chain drive is attached to the gear case for driving the reversible rear drive axle assembly;

(iv)       the gear case includes a housing, which extends co-axially of the transverse axle and which housing carries a pair of opposed planetary gears therein for orbital motion about the transverse axle;

(v)        opposed sun gears are supported in axially spaced relationship on the transverse axle adjacent to the wheel hub and are differentially driven by the opposed planetary gears;

(vi)       the sun gear nearest the wheel hub is rotatable about the transverse axle and is drivingly connected to the said wheel hub, and the other sun gear and the other wheel hub are locked for rotation with the transverse axle.

30                  The decisive characteristics of the combination claimed in claim 1 are:

(i)         the gear case includes fixed end walls at the opposite ends thereof which enclose the sun gears and planetary gears within the housing;

(ii)        the sun gear nearest the wheel hub is drivingly connected to that wheel hub by a tubular portion, which passes rotatably through the fixed end wall interposed between the wheel hub and the sun gear nearest the wheel hub;

(iii)       the transverse axle passes rotatably through the other end wall of the gear case and rotatably through the tubular portion.

31                  The components of the combination in claim 2 are the same as for claim 1 as characterised with the following additional characteristics:

(i)         there is provided a selectively operable differential locking means, operable and disposed externally of the gear case and at the side of the wheel hub which is remote from the gear case;  and

(ii)                the locking means is for effecting locking of the gear case for rotation with the transverse axle and with the wheel hub, whereby the respective wheel hubs are locked for rotation in unison with both the transverse axle and the gear case.

32                  For the purposes of claims 1 and 2 of AP 664820, the essential integers in terms of the issues raised between the parties are the characterising integers (i), (ii) and (iii) in respect of claim 1 with the additional integers (i) and (ii) in respect of claim 2.

33                  Claim 1 in AS 692882 is identical with claim 1 in AP 664820, save for the immaterial substitution of the word “mounting” for “support” in line 11 of claim 1 of AP 664820.  Claim 1 and claim 6 of AS 692882 are identical save for the description of the gear set carried by the gear case housing.  In claim 6 the words are “...which housing carries a differential gear set having opposed differentially driven sun gears supported in axially spaced relationship on the transverse axle”.  In claim 1 the words “...which housing carries a pair of opposed planetary gears therein for orbital motion about the transverse axle; opposed sun gears are supported in axially spaced relationship on the transverse axle adjacent said one wheel hub and are differentially driven by the opposed planetary gears.”  Each of claim 1 and claim 6 are characterised by the three essential characteristics which limit the claim made.

34                  Claims 7, 8 and 9 of AS 692882 each require as a component of the claimed combination a ride-on motor mower as claimed in claims 1 or 6 together with further characterising elements.  These elements all relate to the differential locking means.

35                  The claims in AS 698806 relate to specific combinations of integers for differential locking of chain driven reversible rear drive axle assemblies.  The need sought to be satisfied by the claimed invention is identified in the specification as follows:

“Many domestic and ride-on mowers have driven rear wheels utilising a simple drive train to transmit power from the motor to the rear wheels.  Typically the drive is transmitted by belts or chains to a transverse rear axle which supports the rear wheels.  This system is generally satisfactory.  However as the width of mowers increase the disadvantages inherent in such drive systems becomes more noticeable.  Such disadvantages can be overcome to a large extent by the provision of a differential in the drive train to the rear wheels.  The differentials available to date have not suited the simple drive trains which are utilised in most mowers and additionally such differentials have not had the ability to be selectively utilised or locked.  Furthermore, the locking mechanisms for such differentials have been difficult and inefficient in use and/or increased the risk of damaging the drive mechanism and/or wheel mountings.

This invention aims to alleviate the abovementioned disadvantages and to provide a chain driven reversible rear drive axle assembly for a ride-on mower which will be reliable and efficient in use.”

36                  The components which make up the chain driven reversible rear axle assembly for a ride-on mower as claimed are:

(i)         a transverse axle supporting respective wheel hubs at opposite ends thereof one hub being freely rotatable about said transverse axle and the other hub being fixed to said transverse axle;

(ii)        a differential gear case mounted rotatably on and supported by said transverse axle and forming a housing extending along the transverse axle;

(iii)       a driven sprocket for the chain drive attached to the gear case;

(iv)       a pair of opposed planetary gears supported by said housing for orbital motion about the transverse axle;

(v)        opposed sun gears supported in axially spaced relationship along and co-axially about the transverse axle and within said housing and meshed with said opposed planetary gears for differential rotation thereby;

(vi)       a tubular stub axle rotatable about said transverse axle and drivingly connected to said one hub and the sun gear which is nearest said one hub, the other sun gear being locked for rotation with said transverse axle, and

(vii)      an externally accessible locking member associated with said one hub and manually moveable to a locking position at which it locks said one hub for rotation with said gear case and said transverse axle.

37                  The combination claim is for a substantially new thing, wherein the inventive step lies in the choice and management of the integers and therefore each of the integers claimed is an essential integer:  May v Higgins (1916) 21 CLR 119 at 121;  Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156 at 164 - 165;  Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 281;  Winner v Ammar Holdings Pty Ltd (1993) 41 FCR 205 at 226.

38                  Claims 5, 6, 7 and 8 of AS 698806 all include as an integer a chain driven reversible rear drive axle assembly as claimed in claim 1, with additional specific integers relating to the locking means (claims 5 and 8) or the gear case and housing (claims 6 and 7).

39                  AP 723748 like AS 698806 is a claim for a combination, wherein it is claimed that the inventive step lies in the choice and management of the integers comprised in the rear axle assembly for a ride-on mower as claimed in claim 1, with a locking means as claimed in claim 2.

40                  The essential integers of claim 1 of AP 723748 are:

(i)         a transverse axle;

(ii)        a fixed wheel mount at one end of the transverse axle;

(iii)       a further wheel mount supported rotatably about the opposite end of the transverse axle;

(iv)       a sun gear fixed on the transverse axle adjacent the further wheel mount;

(v)        a gear case assembly having planetary gears therein which engage with said fixed sun gear;

(vi)       a mounting means for mounting the gear case rotatably about the transverse axle;

(vii)      a chain drive for rotating the gear case about the transverse axle;

(viii)      a further sun gear rotatable about said transverse axle and meshed with said planetary gears to form a differential drive;

(ix)       a connector means for connecting the further wheel mount to the further sun gear;  and

(x)        a selectively operable locking means for locking the transverse axle to the further wheel mount.

41                  The additional integers required by claim 2 are:

(i)         the locking means includes a manually operable lock member supported on the further wheel hub;

(ii)        which is accessible at the outside thereof.

42                  I turn to claim 1 of AP 664820.  The only area of controversy as to the proper construction of the claim lies in the clauses which characterise the combination claimed.  The respondents submit that there are ambiguities of meaning in the words and phrases “fixed end walls”, “enclose” and “within” in the first characterising paragraph;  by the phrases “tubular portion” and “passes rotatably through the fixed end wall” in the second characterising paragraph;  and finally “drivingly connected ... by a tubular portion which passes rotatably through the fixed end wall”.

43                  The respondents rely upon the evidence of Dr Duncan Gilmore, a mechanical engineer, to submit that there is ambiguity sufficient to entitle limitations which appear in the drawings forming part of the body of the specification and in the preferred embodiment to be imported into the language of the claim.  The applicant submits that such a course is impermissible and that the meaning of the words is clear in the context and that no words of limitation should be imported. 

44                  Dr Gilmore expressed the opinion that the word “fixed” can have either of two meanings, being fixed as in stationary, or fixed as in fixed and able to be detached.  Dr Gilmore favours the second meaning because the preferred embodiment shows end walls fixed in place by bolts which enables the end walls to be detached by releasing the bolts holding them in place.

45                  In my view, there is no ambiguity present in the wording of claims 1 and 2 of AP 664820, which permits or requires features that appear in the preferred embodiment to be incorporated into the language of the claims.

46                  The integers of the combination for present purposes commence with a differential gear case mounted rotatably on and supported by a transverse axle.  The gear case “... includes a housing which extends co-axially of the transverse axle and which housing carries a pair of opposed planetary gears therein for orbital motion about the transverse axle”.  The planetary gears are within the housing and by some means supported within the housing;  the housing co-axially rotates around the transverse axle with the orbital motion of the planetary gears.  The planetary gears differentially drive opposed sun gears which are supported in axially spaced relationship on the transverse axle adjacent to one wheel hub.  Because the gear case housing extends co-axially of the transverse axle, the housing will of necessity have two opposed ends through which the transverse axle passes.  The claim specifically provides for the integers present at each end of the housing by way of “fixed end walls”.

47                  The phrase “the gear case includes fixed end walls” means in this context that the fixed end walls are added and form part of the gear case at the opposite ends of the housing.  So much flows from the use of the word “includes” in its ordinary meaning in this context, namely “to add as part of something else”:  Collins English Dictionary;  Australian Edition (1979) at p 740.  So understood, “fixed” means fixed as part of the gear case.  Save for the transverse axle and a tubular portion, which pass rotatably through the end walls, as provided in the language of the claim, the end walls are to perform the function of enclosing the sun and planetary gears within the housing.  That is, the end walls are used to enclose all the gears within the housing of the gear case.

48                  The words “enclose” and “within” bear their ordinary meaning in the claim.  That is, the end walls which are fixed to the housing close off the ends of the housing to contain or hold the gears within the housing.  The word “within” means “in;  inside;  enclosed or enclosed by”:  Collins English Dictionary at 1165.

49                  The words of the claim mean that the gears are wholly encased by the housing and the fixed end walls at the opposite ends of the housing.  Such a construction is confirmed by reference to the body of the specification wherein the claimed invention is distinguished from the OMC turf aerator.

50                  The feature identified in the OMC turf aerator which is regarded as a disadvantage, and which the claimed invention seeks to overcome, is the use of a resilient peripheral seal to close the peripheral gap between the adjacent wheel hub and the open end of the differential housing.  The use of such a seal to prevent lubrication loss or the entry of water, dust and other particulate material, is claimed to be ineffective and liable to fail wholly or partially, over time.  The invention in suit seeks to overcome such problems by the provision of a fixed end wall to the otherwise open end of the differential housing.

51                  The claim is silent as to how the end wall is to be fixed to the casing.  Dr Gilmore introduces the requirement that the end walls be attachable and detachable because the drawings in the body of the specification show the end walls in the preferred embodiment being held in position by four bolts passing through the end walls and clamping the end walls to the housing when tightened.  To import such a limitation into the claim is neither necessary nor permissible for the reasons I have outlined earlier.

52                  The sun gear nearest to the wheel hub is drivingly connected to that hub “by a tubular portion which passes rotatably through the fixed end wall interposed between” the wheel hub and the sun gear.

53                  Mr Arthur William Chaseling, an engineer, gave evidence on behalf of the applicant.  He expressed the opinion that in engineering terms and in ordinary speech “tubular” meant “of or pertaining to a tube”, and that tube meant “a hollow usually cylindrical body of metal, glass or rubber, or other material used for conveying or containing fluids and for other purposes”.  In this regard, he adopted the primary definition contained in The Macquarie Dictionary 3rd Ed (1977) at 2271.  In his view the only essential features were that there should be a body which was hollow and that there was no requirement of a length to diameter ration.

54                  Dr Gilmore on the other hand expressed the opinion that, in engineering terminology “tubular” required that the object have an elongated shape, where the elongation has a ratio of length, the inner diameter of which greatly exceeds unity.  The distinction which Dr Gilmore draws is between a ring or washer, which is hollow and cylindrical in shape, and a tube.  A ring or washer would never in engineering terminology be regarded as meaning a tubular section.

55                  The dictionary definitions in the Collins Dictionary and Oxford Short Dictionary support the position taken by Dr Gilmore.  The Collins Dictionary defines a tube as “a long hollow and typically cylindrical object used for the passage of fluids or as a container”.  The Oxford Short Dictionary defines the primary measuring of a tube as “a hollow body, usu. Cylindrical, and long in proportion to its diameter, of wood metal glass etc used to convey or contain a liquid, or for other purposes;  a pipe 1658”.  The Oxford also defines “tubular” as “tube shaped;  constituting or consisting of a tube;  cylindrical, hollow and open at one or both ends.”

56                  In my view, in the context of claim 1, “tubular” has the meaning to be found in the Collins and Oxford Dictionaries, as explained by Dr Gilmore in its application in engineering terminology.  The extent of the elongation necessary is always a question of judgment and degree.  However, there must be, in my view, more than the existence of a hollow in an object before that object can be described as being a “tubular portion” within the meaning of claim 1.

57                  The other area of contention between the applicants and the respondents’ witnesses relates to the meaning to be given to the term “tubular stub axle” in claim 1 of AS 698806.  Dr Gilmore expressed the opinion that a “tubular stub axle” would be interpreted by a person skilled in the art as a short hollow axle which occupies the centre line of rotation.  He continued:

“To a reader of the specification, the term ‘stub axle’ has a particular meaning in my opinion ie. a stationary but relatively short axle which might have a length to diameter ratio between approximately 1.0 and 5.0.”

58                  Dr Gilmore was cross-examined on this part of his report and gave the following evidence:

“I think in, as it were, general engineering, you’re saying, is this right, in the first paragraph, no, a tubular stub axle is a short hollow axle which occupies the centre line of rotation and this doesn’t do that because the transverse axle does that?---That’s correct.

But in our area of discourse here, where we have a transverse axle and we’re told in the specification that the tubular stub axle or tubular portion is outside that and bearing on it, I think you go into the next paragraph to say, well, we have a different area of discourse here where we’re not occupying the centre.  Have I got that right?---Yes, it’s not - it doesn’t occupy the centre line, therefore the terminology is probably inappropriate.

But doing the best we can to give the patent a sensible meaning, I think is what you’ve done, with respect, in that paragraph.  You say:

            To a reader of the specification the term, stub axle, has a particular meaning, namely -

is that right -

            namely, one that does not -

so far -

            does not occupy the centre of rotation?---Well, I come back to the fact that and I suggest an alternative description there.  I think that it should be called a tubular sleeve really rather than tubular stub axle.  Tubular stub axle does give the wrong impression.

But given the fact that I’m stuck with a tubular stub axle in one of the cases?---Well, I can’t help that.

But you say there - you did try there to help it and you gave it a particular meaning, ie:

            ... a stationary but relatively short axle which might have length to the diameter ratio between approximately one and five -

Now the tubular part, that you and I have been describing where bolted together, is that, isn’t it?---Well, that’s to the reader of the specification because the specification includes drawings.

Yes?---And the drawings do show you which - forgetting the English, the meaning of the English language - the drawings and the specification do show you what the person who drew up the patent was meaning when they referred to a tubular stub axle.  They say, well, this part is a tubular stub axle;  forget what - forget what else it might mean, this is what I define as a tubular stub axle.  And if you read the specification and the drawings they will point you to what the patents refer to as a tubular stub axle.

And, in that case, the portion that we’re talking about is a tubular stub axle - part, sorry - joined up together part - is a tubular stub axle?---As shown in the specifications and drawings and as we discussed between - yes, between gears and flange, not - yes.  Including the hobs and collars and - - -

Binding it all together?---Well, yes, throwing away the meaning of some of the other collars and hubs that are elsewhere described;  dismissing those and lumping them all together, then you would come to that conclusion.

...

I just wanted to show you Exhibit 3.  I think that’s the one that talks about the tubular stub axle on page 9.  Take your time to read it but this is what I want you to think about.  I just want to suggest that it’s clear on the face of claim 1, without resort to the specification, that the tubular stub axle does not occupy the centre line of rotation?---Yes, I agree with you there.  It does say ‘a tubular stub axle rotatable about said transverse axle.’

So the particular meaning that you give in your section on page 15 can be discerned without resort to the body of the specification?---Well, it can be, with difficulty though I must say, because it is - it does throw up confusion in the reader’s mind, I believe, because it’s not what you would expect to be a - reading that you wouldn’t expect that sort of component to be described as a stub axle in my opinion.

But we discard the centre line of rotation by reading the claim, don’t we?  Sorry, let me start again?---Well, that’s the - I think that is the confusion that’s thrown up, I guess, in the reader’s mind.

But a mechanic or an engineer interprets it in a - just asked in a pub what’s a tubular stub axle, would say a short, hollow axle which occupies the centre line of rotation - I’m looking at your page 15?---Yes.

If the mechanic is then handed claim 9 and told that rather than occupying the centre line of rotation it is rotatable about an axle, a transverse axle, they’ll keep the short, hollow axle part of their definition in their mind and abandon the centre line of rotation part of it?---Yes, but what you said there was that the mechanic was told that the tubular stub axle - I think you said the words were rather than occupy the centre line of rotation, it rotates about a transverse axle.  Unfortunately, the claims don’t tell you that.  They just tell you one part of it and so you’re left without that preface.  So where do you go for the preface?  Perhaps you go back to the specifications and drawings for the preface.

But if you’re looking at line 19, you’ve got no doubt that the tubular stub axle which we know is short and hollow - do we know that so far?  I bring that with me, don’t I, as a mechanic or an engineer, that it’s short and hollow?---As I say in the report, short and perhaps length to diameter ration is between 1 and 5, yes.

I carry that with me, and I know from reading line 19 and line 20 that it is rotatable about the axle - the transverse axle, which I’ve already just read - and drivingly connects the hub and the sun gear?---So what’s the question, sorry?

Well, do you agree with what I just said:  a skilled mechanic, or an engineer who carries with them the notion of a stub axle as being short and hollow, and occupies the centre of rotation, then reads claim 9 and sees that this tubular stub axle is rotatable about a transverse axle that goes from - all the way from hub to hub and is drivingly connected to one of the hubs and the sun gear, they will be able to get a stationery, using your words, but relatively short axle which might have a length to diameter ratio between approximately 1 and 5, that sits on the outside of the transverse axle?---That would be one interpretation, but I just suggest that they may come up with others and they may look further for - just to confirm their - the opinion which is gained from a short number of words.”

59                  Mr Chaseling, in his report, expressed the following opinion:

“4.3     Claim 1 of this patent also includes the feature:-

                        ‘A tubular stub axle’

4.4       In engineering circles, the term ‘axle’ is used for two types of component.  It can be used to describe the structural component to which a wheel is attached for rotation thereabout, or as a torsion member which applies torque to a wheel.  The use of the term ‘axle’ for both of these applications is shown in Appendix A, taken from the spare-parts book for a Caterpillar 769 truck.  In the front wheel sub-assembly, the term ‘axle’ is applied to a structural member on to which the wheel is mounted through bearings and about which it rotates.  In the rear-drive assembly, the term ‘axle’ is applied to a drive shaft which does not support the wheel, but which supplies drive torque to it.  The term ‘stub’ is merely added where a component is relatively short compared with its other dimensions, and is used in connection with other elements such as gear teeth and screw threads.

4.5       Thus the application of the terms ‘axle’ or ‘stub axle’ to a ‘tubular portion’ which carries drive torque to a wheel is within normal engineering usage.  In my opinion, the term is an appropriate one in terms of function, and it is irrelevant to the terminology whether this component contains internal bushings or the like to accommodate yet another shaft.”

60                  Under cross-examination, Mr Chaseling gave the following evidence as to the meaning and use of the phrase “tubular stub axle”:

“A tubular portion is a wider description than a tubular stub axle.  That is correct, isn’t it?---Yes.

In other words a tubular stub axle would be sub-set of what otherwise could be regarded as a tubular portion?---Yes.

And both a tubular portion and a tubular stub axle are each narrower definitions or terms than the term ‘connector means’?---Yes.

Could I take you to patent 698806, exhibit 3?  If I could take you to page 9, line 19?  Do you recall that in the petty patent the claim 1 refers to the wheel hub and the sun gear being connected by a tubular portion?---Yes.

The word ‘by’ is used.  If you look at page 9 of this patent, line 19:

            A tubular stub axle rotatable about said transverse axle and drivingly connected to said one hub and the sun gear which is nearest the said one hub.

Which is a different form of language than in the petty patent because it’s talking about connecting something to something rather than connecting by?---Yes.

The use of the word ‘to’ would make it even clearer, wouldn’t it, that what is being connected are in effect three things, a tubular stub axle, a hub and a sun gear?---Yes.

...

The term, tubular stub axle, to a mechanic reading a patent which includes that term, it would be read as meaning a short tubular axle which bears the wheel or the wheel hub wouldn’t it?---Not necessarily.  An axle is often described as a component which provides torque drive rather than supports a wheel.

...

But when you add the word ‘tubular’ to stub axle and you have a tubular stub axle in the context of this patent, it’s clearly referring to a sleeve isn’t it that fits over an axle and being a sleeve that bears the wheel hub?---No, not necessarily.  There is nothing in the concept to say that - say in that particular axle that there couldn’t be a hole down the middle of it.  In fact, there is a hole part-way down it, but there is nothing in the well to stop that from being a tubular axle which drives, but doesn’t support a wheel.

Could I take you to paragraph 6.6 of your first report where you talk about tubular stub axle and you say:

            This feature was most important to the invention as it allows the adjacent wheel hub to be supported on an axle which passes through the centre of the tubular portion.

?---Yes.

And the way in which you have read the specification and that description as to what is important about the tubular stub axle would be the way I assume that you would regard anyone else skilled in the art would read it?---Yes.

So it has the effect of allowing the rear axle to be supported on two bearings?---Yes.

And it allows the - more accurately the wheel hub to be supported on two bearings;  it’s supported by the axle and by the tubular stub axle;  that’s correct isn’t it?---No.  Well, the tubular stub axle is intended as a driving component and the support for the wheel hub comes from the axle.”

61                  The axle of which Mr Chaseling is speaking in this last answer is the transverse axle, which passes through the tubular stub axle and which is rotatable around the transverse axle.

62                  The meaning to be given to the term tubular stub axle in claim 1 of AS 698806 is to be ascertained firstly from the context in which it is used in the claim.  The tubular stub axle described in the claim is but one of a number of components making up the claimed combination of a “chain driven reversible rear drive axle assembly for a ride-on mower”.

63                  The first component claimed is “a transverse axle supporting respective wheel hubs at opposite ends thereof one hub being freely rotatable about the said transverse axle, and the other being fixed to the said transverse axle”.  What is taught is that the wheel hubs are supported at opposite ends of the axle by the axle and that one hub is supported in such a way to allow it to be freely rotatable about the transverse axle.  Next there is a differential gear case mounted rotatably on and supported by the transverse axle.  One of the features of the gear case is that it contains opposed sun gears supported in axially spaced relationship along and co-axially about the transverse axle.

64                  The tubular stub axle specified in claim 1 has two defining features.  Firstly, it is rotatable around the transverse axle.  Secondly, it is drivingly connected to one wheel hub and the sun gear in the differential gear, which is nearest that wheel hub.  The requirement that the other sun gear is locked for rotation with the transverse axle, indicates that the tubular stub axle is drivingly connected to the wheel hub, which is rotatable around the transverse axle.  In the context of the claim, it is not an essential characteristic of the tubular stub axle that it support the wheel hub, as this is provided by the transverse axle, or that it occupy the centre line of rotation, as it is clear that the stub axle as claimed is rotated around the transverse axle.  Upon analysis, I am not persuaded that there is any real difference between the understanding of Dr Gilmore and Mr Chaseling as to what is for the purposes of the patent a tubular stub axle, and what function it performs.  As Dr Gilmore says in his report:

“... As defined by Bartlem Pty Ltd, the ‘tubular stub axle’ provides a sleeve which transfers mechanical power from the differential to the wheel.  If the ‘tubular stub axle’ was absent, the ride-on mower could not be driven or moved under its own power.”

65                  My observations made earlier in these reasons to the meaning of “tubular portion” in respect of claim 1 of AP 664820 are also relevant to so much of the tubular stub axle as is constituted by a tubular portion of it.

infringement

66                  In Clark v Adic (1875) LR 10 Ch App 667 at 675, James LJ said:

“The patent is in the entire combination, but there is or may be, an essence or substance of the invention underlying the mere accident of form;  and that invention, like every other invention may be pirated by theft in a disguised or mutilated form, and it would be in every case a question of fact whether the alleged piracy is the same in substance and effect or is a substantially new or different combination.”

67                  The doctrine stated in Clark v Adic remains good law:  Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246;  Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 286.  However, there will be no infringement, notwithstanding the pith and substance principle, where the patentee has by the form of the claim left  open what the alleged infringer has done:  Olin Corporation at 246.  A person may not take the pith and substance of an invention unless the wording of the claims make it clear that the relevant area has been deliberately left outside the claim:  Minnesota Mining and Manufacturing at 286.  The “pith and substance” of a patent is to be found in the claims read in the light of the whole specification.  Where one essential element as claimed is left out but an “equivalent” element is substituted, it may be that the pith and substance of the invention is taken:  Rhone-Poulenc Agrochimie at 485 per Bowen CJ with whom Jackson J agreed on this point.

68                  The test to be applied was stated by Dixon J in Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 at 51:

“…On a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe.  It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing.,”

This test was adopted by a Full Federal Court in Populin v HB Nominees Pty Ltd (1982) 59 FLR 37 at 41.

69                  Patent rights are not to be set at nought by subterfuge, by avoiding the literal meaning of a claim, by a modification so small as to be insignificant and to have no material effect upon the way the invention as claimed works:  Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 167-168;  Rehm at 91-92.  Nor by immaterial variations, for example, by dropping an inessential step or part and substituting another part or step as its equivalent:  Marconi v British Radio, Telegraph & Telephone Co Ltd (1911) 28 RPC 181;  Populin v HB Nominees Pty Ltd at 42.

70                  However, it is important to emphasise that there is no principle of “non textual” infringement and the language of the claims cannot be ignored by resort to function.  Clear and unambiguous wording in claims will be given due and limiting effect because the patentee, in words of its own choosing addressed to those skilled in the art, informs them what the patentee claims to be the essential features of the new product or process for which the letters patent grant the patentee a monopoly:  Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 at 243;  Rehm at 92;  Codex Corp v Racal-Milgo Limited [1983] RPC 369 at 381;  Willemijn Houdstermaatschappij BV v Madge Networks Ltd [1992] RPC 386 at 388-9, 399;  CCOM Pty Ltd v Jiejing Pty Ltd [No 2] (1993) 27 IPR 577 at 616.

THE ALLEGED INFRINGEMENT OF AP 664820

71                  The substantial idea disclosed by claim 1 is the use of a tubular portion rotating around a transverse axle as the means by which drive is transmitted from the sun gears, enclosed within the gear case housing, to the wheel hub closest to the sun gears.  This wheel hub itself rotates around the transverse axle.  The means by which this is achieved is characterised by a tubular portion, which passes rotably through the fixed end wall of the gear case interposed between the sun gear nearest the wheel hub and the wheel hub itself.  The tubular portion is drivingly connected to the sun gear within the gear case housing; the sun gear is enclosed within the housing by the body of it, which extends co-axially along the transverse axle, and, the two fixed end walls.  The tubular portion is drivingly connected to the wheel hub externally of the fixed end wall interposed between the wheel hub and the sun gear.

72                  The drive assembly and gear case used on the Cox “Stockman” range of ride-on motor mowers does not infringe claim 1 of AP 664820 because it does not include a tubular portion which can be characterised in the manner claimed in claim 1 of AP 664820.

73                  The wheel hub used by the respondents is moulded and incorporates a housing for the locking mechanism used to stop the differential action of the gears.  The locking means adopted uses a spring loaded pin which, when engaged, passes into a flange attached to the end wall of the gear case housing and the end wall itself nearest to the wheel hub.  When locked, the wheel hub is locked to the housing of the gear case and the attached flange.  The wheel hub has an extension of approximately 80 mm in length and a diameter of approximately 580 mm.  This extension, as has the wheel hub, has provision for the transverse axle to pass co-axially through it and provision for three bolts which also pass co-axially through the wheel hub and extension to bed into the collar of the sun gear nearest the wheel hub.  The bolts when tightened enable the wheel hub to be driven by torque transmitted from the rear face of the sun gear bolted to the wheel hub extension.

74                  The sun gear in the Cox gear box is not enclosed wholly within the gear box housing. 

75                  On the evidence of Dr Gilmore, which I accept on the matter, I find the collar of a sun gear is not a separate and discrete item different from the sun gear.  Nor is the sun gear merely the face of the gear where the teeth are situated.  The collar is an integral part of the sun gear and functionally necessary for its performance.  Although the teeth of the sun gear are contained within the Cox housing, the collar of the sun gear penetrates the end wall of the housing almost to its full depth.  The extension to the wheel hub is drivingly connected to the sun gear within the end wall and the flange attached to the end wall for use with the locking mechanism.

76                  The applicant submits that when the Cox gear box and drive is assembled the wheel hub and sun gear constitute one item of equipment wherein four functional parts may be identified by reference to the language of claim 1 of AP 664820.  In particular, ignoring the housing for the locking mechanism on the Cox wheel hub, the witnesses called by the applicant contend that the metal section between the inner face of the wheel hub and the back of the teeth of the sun gear is cylindrical in shape and functionally drivingly connects the sun gear to the wheel hub and does so by passing through the fixed end wall of the gear case housing.  As the cylindrical metal section of the single component when bolted together is generally tubular in shape, the applicant contends that it falls within the description of a tubular portion of the type characterised in claim 1.

77                  In my view, the approach taken by the applicant on the issue of infringement is not open to it; it seeks to apply a test of functional equivalence which ignores the language of the claim.  The wording of claim 1 requires as a separate item a tubular portion, characterised in terms of the claim.  Parts of other items although functionally performing the same task as a separate tubular portion, do not become a discrete and separate item simply because it is possible to discern a cylindrical or tubular shape.  This is particularly so where the shape is only discernible by choosing two arbitrary extremities of the alleged cylindrical or tubular section.  Such an approach ignores the extent to which any part of the metal section claimed to represent the tubular portion forms an integral part of the wheel hub or sun gear itself and is necessary for the proper function of the respective wheel hub and sun gear.

78                  The Cox “Stockman” drive mechanism uses two components to transmit drive from the sun gear nearest the wheel hub to that wheel hub in a way which does not infringe claim 1 of AP 664820, whereas claim 1 of AP 664820 uses not less than three components to achieve that end.

79                  As claim 1 is an integral part of claim 2 of AP 664820 the Cox “Stockman” drive mechanism does not infringe claim 2 of the petty patent.

80                  For the same reasons that the Cox “Stockman” drive mechanism does not infringe claims 1 and 2 of AP 664820, it does not infringe claims 1, 7, 8 or 9 of AS 692882.

81                  In AS 698806 the combination requires as an essential integer a tubular stub axle, which in the context of claim 1 means a tubular sleeve which transfers mechanical power from the differential to the wheel.  The sleeve is characterised in two ways.  Firstly, it is rotatable about the transverse axle.  Secondly, it is drivingly connected to the wheel hub and to the sun gear closest to the wheel hub.  There is no dispute on the evidence and I find that claim 1 of AS 698806 requires that there be as part of the combination claimed, a separate component, being a tubular stub axle as characterised.

82                  The approach taken by the expert evidence called by the applicant was once more to attempt to characterise part of the Cox “Stockman” drive mechanism when assembled as such a tubular stub axle.  Again this was sought to be done on the basis of functional equivalence and the appearance of a cylindrical section of metal limited by the back face of the wheel hub at one end and the back of the face of the sun gear at the other.  For the same reasons that I rejected such an approach to the infringement issue in respect of AP 664820 and AS 692882, I reject such an attempt in relation to this patent also.  The Cox “Stockman” drive mechanism does not have as a separate and essential component a tubular stub axle as characterised in claim 1 of AS 698806.  Accordingly, it does not infringe that claim.

83                  Claims 5, 6, 7 and 8 of AS 698806 all include as an integer a chain driven reversible rear drive axle assembly as claimed in claim 1, with additional specific integers relating to locking means and gear case housing.  In consequence, the Cox “Stockman” drive mechanism and gear case does not infringe the later dependent claims.

84                  Finally, on the question of infringement I turn to AP 723748.  This petty patent was issued on 7 September 2000.  The claims have been drawn up on the basis that the inventive step lies in the choice and arrangements of the particular combination, as opposed to an improvement over the known collection of integers present in power drive assemblies for ride-on mowers.  In this circumstance it is necessary to prove the presence of all of the integers which make up the combination to establish an infringement.

85                  The integers claimed in claim 1 of AP 723748 include “a selectively operable locking means for locking the transverse axle to the further wheel mount”.  The applicant in its particulars contends that the locking means utilised in the Cox “Stockman” rear axle assembly, whereby a pin extends into the gear case and locks the wheel hub to the gear box case, satisfies this integer in claim 1 of AP 723748.

86                  The formulation of this integer in claim 1 of AP 723748 can be usefully compared with the locking means claimed in claim 2 of AP 664820.  In the earlier petty patent the claim was for a “selectively engageable differential locking means operable and disposed of externally of the gear case ... for effective locking of the gear case for rotation with said transverse axle and with said one wheel hub, whereby the respective wheel hubs are locked for rotation in unison with both said transverse axle and said gear case”.

87                  The distinction between the two claims as formulated lies in the requirement in claim 1 of AP 723748 that the locking means locks the transverse axle to the further wheel mount, as opposed to the requirement in claim 2 of AP 664820 to lock the gear case for rotation with the transverse axle whereby the wheel hubs are locked for rotation in unison with the transverse axle.

88                  The distinction between locking the wheel hub to the transverse axle so that it rotates with the transverse axle and locking the wheel hub in some other way so that it rotates with the transverse axle I find is a distinction of substance.  The matter was not addressed in the evidence of those skilled in the art save for some short cross-examination put to Mr Chaseling.  Mr Chaseling agreed with the proposition that the wording in claim 1 of AP 723748 required an actual physical connection between the transverse axle and the wheel mount or hub to provide a locking.  He said:

“It includes within its claim 1 a selectively operable locking means for locking the transverse axle to the further wheel mount.  The use of the word ‘to’ in that description contemplates, does it not, an actual physical connection between the transverse axle and the wheel mount or the hub to provide a locking?---Yes, a disconnectable - - -

Yes?---Yes.

Because you can either lock something to something, which would tend to suggest that there is a locking means which actively engages the two items you are referring to.  Alternatively you could indirectly lock two items together and you would use the term ‘with’ rather than ‘to’?---Yes.

And hence if we go to the petty patent, exhibit 1 and we see claim 2 which makes the claim for the locking device, we see there that it uses the term ‘with’ rather than ‘to’ when talking about the items are locked together.  Do you see the difference that I’m talking about?---Yes.”

89                  I am satisfied that this integer, as claimed in claim 1 of AP 723748, would lead an addressee skilled in the art to understand that the claim was in respect of a locking means, which locked the transverse axle to the further wheel mount as defined in claim 1 and did not include within the claim any other method or means whereby the further wheel mount was locked indirectly so as to rotate in unison with the transverse axle.

90                  The Cox “Stockman” rear axle assembly does not include the locking integer claimed in claim 1 of AP 723748 because the locking mechanism utilised does not directly lock the transverse axle to the wheel hub as required by claim 1.

91                  It follows that there is no infringement of claim 1 of AP 723748 or the dependent claims 2 and 3 of that patent.

92                  The claim for infringement fails.

REVOCATION

93                  The applicant submits that the priority date of the patents in suit is 30 May 1990, the filing date of Provisional Specification PK0378.  It submits that the claims of the patents in suit are fairly based on the disclosures contained in the provisional specification. 

94                  The respondent submits that 30 May 1990 is not the true priority date because the essential integers of the claims made in the patents in suit, in particular, that a tubular portion passing through the end wall of a gear box housing which drivingly connects the wheel hub and the sun gear nearest to the hub or a stub axle which drivingly connects the free moving wheel hub and the sun gear nearest to it, are not disclosed as essential integers or at all in the provisional specification PK0378 or in the complete specification PCT/AU91/00176 filed on 1 May 1991.

95                  The test for fair basing does not involve finding a correspondence of essential integers in the provisional or complete specification and in the claims of the patents in suit:  CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 261 at 281-282; Stack v Brisbane City Council (1999) 47 IPR 525 at 551-552.  In Stack, I stated the correct approach to the issue of fair basing as:

“[129]  The question of whether claim 1 of the petty patent is fairly based on matter disclosed in a prior specification is a narrow one.  It involves a question of whether the claim as expressed travels beyond matter disclosed in the prior specification: Olin Corp v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240; 1A IPR 197; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 279; 28 IPR 481 (FC).  The task is not one which involves an overly meticulous verbal analysis of the documents.  It is sufficient if a new feature was a development along the same line of thought which constitutes or underlies the invention described in the earlier document, provided the additional feature does not involve a new inventive step or bring something new into the combination which represents a departure from the idea of the invention described in the earlier document:  Re Stauffer Chemical Co’s Application [1977] RPC 33 t 52; Coopers Animal Heath Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 at 385, 389, 401; 11 IPR 20 (FC); CCOM Pty Ltd v Jiejing Pty Ltd at FCR 281.  A claim may be fairly based on matter in the specification which is not verbal description, but accompanying drawings, and upon matter disclosed in a portion of the specification which does not include the description of the preferred embodiment: CCOM Pty Ltd v Jiejing Pty Ltd at FCR 280, 283.”

I apply that test in the present case.

96                  The drawings attached to PK0378 are the same drawings which are attached to the patents in suit.  In each of those drawings there is a tubular section which drivingly connects a sun gear nearest the free moving wheel hub to that free moving wheel.  That part is described as a “tubular stub axle” or “tubular portion” which is adapted to mesh via the sun gear with the planetary gears in the gear box.  On any fair reading of the provisional specification and drawings the tubular stub axle or tubular portion is also the connector means for connecting the free wheel mount and the further sun gear closest to it.  Additionally, PK0378 in one embodiment describes in the provisional specification and in the drawings one embodiment wherein the differential gear case has fixed end plates being the plate 20 and the drive sprocket 17 joined by four bolts.  The drawings show that in such an embodiment the sun gears are wholly enclosed within the gear case housing by the fixed end plates and that the “tubular stub axle” or “tubular portion” passes through the end wall nearest the wheel hub and is drivingly connected to the sun gear within the gear box housing, and, to the wheel hub external to the housing.  The provisional specification and the drawings show that the wheel hub and sun gear closest to it are drivingly connected by a connecting means.  Further, the provisional specification describes as part of the invention a “selectively operable locking means for locking the axle to the free wheel mount”. 

97                  The invention claimed in each of the patents in suit is fairly based on matter disclosed in PCT/AU91/00176 which itself is fairly based on matter disclosed in PK0378.

98                  The relevant priority date is 30 May 1990.

THE REQUIREMENTS OF SECTION 40 OF THE ACT

99                  For the purposes of s 40(3) of the Act, the respondents submit that the claims in the patents in suit go beyond the matters described in the relevant specifications because AP 664820 claim 1 covers all fixed end walls of gear cases and all tubular portions used to connect a wheel hub to an adjacent sun gear.  The complaint in respect of claim 2 is that all locking means which would lock a differential and which are disposed externally at the side of one wheel hub, remote from the gear case, are covered.  The respondents submit that the breadth of these claims goes beyond what is disclosed in the specification.  This argument is based on the submission that what is disclosed and described in the specification is the preferred embodiment described therein.  For reasons which I have set out above, the specification is not to be read in such a limited way.  The claims objected to in AP 664820 in my view are fairly based on the specification properly construed.  The respondents have based their objections to fair basing for the purposes of s 40 of the Act in respect of AS 692882, AS 698806 and AP 723748 on the same limited approach to the specification, including the drawings in each of the respective patents.  For the same reason I reject the objection and find that the claims objected to are fairly based on the relevant specification of each patent.

100               The respondents further complain that AP 664820 does not satisfy the requirements of s 40(2)(a) of the Act because the best method known for performing the invention claimed is not disclosed.  In particular it is said that it is not shown how the claimed invention performs a claimed advance over the OMC turf aerator.

101               The patentee is not required to describe in detail how the invention is performed.  He or she is entitled to presume that the addressee is a person normally skilled in the art and possessed of the common general knowledge pertaining to the art:  Hendriksen v Tallon Ltd [1965] RPC 434 at 441; Valensi v British Radio Corp [1973] RPC 337 at 377; Stack v Brisbane City Council at 548.

102               The deficiency identified with the OMC turf aerator is that there is a risk of the entry of water, dust and other particulate matter into the meshing gears and central bearing of the supporting bos, and, the escape of lubricant from within the gear case housing by the flexing of a resilient peripheral seal used to seal the gap between the adjacent wheel hub and the open end of the differential housing during operation and ultimately due to wear in the seal.  The claimed invention seeks to overcome these problems in the way described in the specification and drawings. 

103               The specification in AP 664820 discloses, as does claim 1, the incorporation in the drive assembly of a gear case with fixed end walls at opposite ends of the housing which enclose the gears within the housing.  The specification also discloses the inclusion of a tubular portion which passes rotatably through one end wall to connect the sun gear drivingly to the wheel hub closest to it.  Any reasonable reading demonstrates that the advance over the OMC turf aerator is the use of the fixed end wall through which passes the tubular section which rotatably drivingly connects the sun gear to the wheel hub.  The advance is the sealing of the gear case to prevent entry of water, dust or particulate matter and the discharge of lubricant by the use of a fixed metal end wall in lieu of a resilient peripheral seal.

104               I am satisfied that AP 664820 complies with the requirements of s 40(2)(a) of the Act.

105               The same objection is taken to AS 692882 based on the same ground.  It is also rejected for the same reason.

MANNER OF MANUFACTURE

106               The respondents submit that the invention the subject of the patents is simply an analogous use of known integers applied to ride-on mowers with inflatable tyres and utilising the known contrivance of being able to lock the differential.  There is, it is submitted, no new use, and no new interaction of integers.  Accordingly, the respondents submit there is no invention which is a manner of manufacture within s 18(1)(a) of the Act.

107               As to the approach to be taken to this question, I said in Stack v Brisbane City Council (at pp 555-556):

“[144]  The question posed by s 18(1)(a) of the Act 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?’:  NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 667; 32 IPR 449 at 456.

[145]  The formulation of the question comes from National Research Development Corp v Commissioner of Patents (1959) 102 CLR 252 at 269; 1A IPR 63.  The provisions in s 18(1)(a) continue in force the notion of manner of new manufacture present in s 100(1)(d) of the Patents Act 1952 (Cth):  Phillips at CLR 668.  Further, the effect of the opening works of s 18(1) is to incorporate a primary or threshold requirement that a patentable invention, for the purposes of the section, is one which is an alleged manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies, and that should appear on the face of the specification:  Phillips at CLR 663-4; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 192-3; 40 IPR 243.

[146]  In the present case DS, DSQ and GSA must demonstrate that the specification fails to disclose such an invention or that the specification contains an admission of the lack of an inventive step.  For the purposes of this exercise it is not permissible to look beyond the terms of the specification, as there is, in my view, no difference in approach to be taken whether revocation is sought under s 138(3)(b) of the Act or was sought under s 100(1)(d) of the Patents Act 1952 (Cth).  That one is so confined for the purposes of an inquiry into the issues arising under s 100(1)(d) of the Patents Act 1952 (Cth) follows from the decision of the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd at [22] and [35].”

108               Applying that approach I find that the specifications in AP 664820 and AS 692882 identify problems associated with ride-on motor mowers, conventionally constructed, in respect of poor steering control, and, claims as an invention the solutions proposed in the specification to overcome those problems and thereby to provide an improvement to ride-on mowers incorporating reversible belt drive mechanisms.  The new use and new interaction of integers is to provide for differential drive in respect of a single transverse axle including a means to safely and efficiently lock up the differential drive when the operational requirements of using the ride-on motor mower require it.  The new use of the integers, and their interaction having regard to their placement, lies in adapting them to the constraints imposed by the common design features of ride-on motor mowers and the range of environments within which they are required to operate.  Those matters are disclosed in the relevant specifications.  The claimed invention is in my view a new method of manufacture sufficient for the purposes of s 18(1)(a) of the Act.

109               The invention claimed in AS 692882 and AP 723748 are claims for substantially new things; the inventive steps lying in the choice and management in combination of each of the integers claimed.  The specification in AS 692882, for example, identifies the particular problems in operating ride-on motor mowers in particular operating conditions and the utility in overcoming those problems by the use of a differential provided it can be locked as required from time to time by a locking means which can be efficiently and safely engaged.  The specification shows that different choices of known integers were available and that particular choices as to which integers to be used were made.  Additionally, certain integers were rejected as unsuitable or unworkable.  The specification also sets out how the integers were to interact to produce a substantially new combination to overcome the perceived problems which existed in existing combinations of integers employed in common forms of ride-on motor mowers.  The claims in these two patents satisfy s 18(1)(a) of the Act.

OBVIOUSNESS

110               The respondents submit that the claimed inventions involved no inventive step when compared with the prior art base as it existed before the priority date of the claims: s 18(1)(a)(ii).

111               The claimed inventions, the respondents submit 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 and material published or used before the priority date of the relevant claim: ss 7(2) and (3).

112               Subject to the requirements of ss 7(2) and (3) of the Act, the approach to be taken in determining obviousness was stated by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 293-5.  His Honour stated:

“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 21 or 22, prior publications and then select from them appropriate extracts of 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 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 among 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 & Rockley (Electronics) Ltd [1972] RPC 346 at 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 is 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 279-80 and British Celanese Ltd v Courtaulds Ltd (1933) 50 RPC 259 at 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 the argument without evidence that they were part of common general knowledge at the time.”

113               Sections 7(2) and (3) now allow reference to prior published material in addition to the common general knowledge in the circumstances provided in the subsections.  That is, the prior publication or use may be considered together with the common general knowledge provided the information would have been reasonably expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area: s 7(3); Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414; Stack v Brisbane City Council at 559.

114               In relation to claim 1 of AP 664820 the respondents submit that:

(a)                the evidence of the respondents’ employees and of Mr Kean, the mechanic called by the applicant, and that of Mr Reinhold establishes that each of the integers used was known by those persons engaged in the design and construction of motor mowers and was part of the common general knowledge of those skilled in the patent area on 30 May 1990;

(b)               each of the witnesses called by the respondents and Mr Kean would, if called upon to have made choices to address the problem addressed by Mr Reinhold, have made the same choices;

(c)                the OMC “Greenaire Mk II” turf aerator had all of the integers claimed in claim 1 of AP 664820 save that it did not have a fixed end wall through which a tubular portion passed, rotatably and drivingly, connecting the hub and the sun gear;

(d)               the Cox “Mowmobile” had all the integers claimed in claim 1 of AP 664820 save that it did not have a tubular portion passing rotatably through a fixed end wall which connected the sun gear to the hub;

(e)                choice of a single transverse axle on a ride-on mower made it obvious that any differential would be positioned at one end of the axle and that it would be drivingly connected to the wheel hub as the employees of the respondents had done when asked to design a ride-on mower with a differential and as had earlier been done with the Cox “Mowmobile”;

(f)                 having regard to the above matters the evidence establishes as a matter of fact that the invention claimed in claim 1 of AP 664820 would have been obvious to a person skilled in the relevant art in the light of the common general knowledge.

115               The evidence relied upon and the approach taken by the respondents to this issue are inconsistent with the proper approach to be taken to the question of obviousness as explained by Aickin J in the passage cited above and exhibit the pitfalls his Honour identified.  Additionally, the evidence of the employees of the respondents and the cross-examination of Mr Kean by reference to the OMC turf aerator involved a step by step reconstruction by reference to the integers of the invention beginning with something known in order to lead by a series of steps to the final invention and thereby claim it was obvious.  Such an approach is inappropriate.  It is a misuse of hindsight and misses the question whether the invention itself is obvious and whether it would have been obvious to a non-inventive skilled worker in the field to select the particular integers chosen, to reject the integers rejected and to arrange and manage the integers to interact in the way chosen in the claimed invention.

116               The evidence does not establish, in my view, that the OMC turf aerator with its particular choice and management of integers was part of the common general knowledge as at May 1990.  Indeed, the evidence is all the other way and the discovery of the OMC turf aerator appears to have arisen from the litigation rather than from any reasonable ascertainment of what was or would be regarded as relevant to work in the relevant art in the patent area and had regard to by the hypothetical non-inventive skilled worker.  Similarly, the existence of a “Mowmobile” being offered by Cox in the 1960s with an optional differential gear case with certain integers which are also found in the patents in suit appears only to have been known by Mr Hooper and was not something that was part of the common general knowledge of the skilled addressee.  Nor was it something to which regard would reasonably have been had to in May 1990 by a hypothetical skilled addressee.  The response by the respondents to the success in the marketplace of the applicant’s ride-on motor mower with a lockable differential, was to design and construct a competitive product.  This process occurred over a period of six months and included an inspection of the applicant’s product and examination of AP 664820.  The development of the Cox “Stockman” ride-on mower with lockable differential gear case was not a simple development of the “Mowmobile” nor an attempt to overcome problems which the respondents perceived in existing ride-on motor mowers in the early 1990s.

117               Finally, the combination of integers which includes fixed end walls to the gear case housing and the use of a tubular portion or tubular stub axle as described passing rotatably through one end wall to drivingly connect the sun gear and wheel hub between which the end wall is interposed has not been shown to be obvious in the required sense.  The invention of the OMC turf aerator and the Cox “Mowmobile”, notwithstanding the commonality of many integers, nonetheless did not include these integers for whatever reason.  It has not been shown that a non-inventive skilled worker would in May 1990 have chosen a combination which included these integers as an obvious choice of combination when other inventive minds, or non-inventive skilled minds if it is contended that the OMC turf aerator and the Cox “Mowmobile” involved no inventive step, had failed to include them or had rejected them in the development of the OMC turf aerator and the Cox “Mowmobile”.  It is no valid answer to say that each of the additional integers was known and their use part of the common general knowledge relevant to the art base in the patent area.  Such an approach fails to address the question of obviousness by reference to the invention claimed as the sum of all the integers of the claimed invention and the particular use and interaction of them in the whole of the invention as claimed.

118               I am not persuaded that what appears with hindsight to be a simple and straightforward choice of integers to provide a differential drive to a standard ride-on motor mower in the way chosen in claim 1 of AP 664820 by Mr Reinhold would have been obvious to a skilled addressee in May 1990.  Nor does the evidence establish that no inventive step was involved on the part of Mr Reinhold in arriving at the particular choice and arrangement and management of the integers.  No substantial degree of invention is required to satisfy s 18(1)(a)(ii) of the Act: Winner v Ammar Holdings (1993) 41 FCR 205 at 225-226.

119               Similarly with claim 2 of AP 664820.  The use of a lock to cause the gear case and the free turning wheel to turn in unison with the transverse axle when required to do so was, on the evidence, a known means to produce a desired result.  However, the evidence establishes to my satisfaction that there were available choices for the means for locking up the gear case which included those which operated externally of the gear case and choices as to the location of the locking means which included being located and operable at the side of the wheel hub remote from the gear case.  The choice of the particular integer in claim 2 having regard to the combination of integers claimed in claim 1 in its final form has not been shown to be obvious in the required sense.

120               Having regard to my views as to claims 1 and 2 of AP 664820 the challenge to claims 1 and 6 of AP 692882, on the basis of no inventive steps, also fails.  Claims 7, 8 and 9 of AS 692882 are in a stronger position as the additional integers relate to the differential locking means taken in conjunction with the combination of integers claimed in claim 1 or claim 6 of AS 692882.

121               The claims in AS 698806 and AP 723748 are claims to a substantially new thing wherein the inventive step lies in the choice and management of the integers.  The approach taken by the respondents to each of the claims in suit contained in these two patents was to dissect the combination into its separate parts and contend that each part was a known process or means, and then, by a process of reassembly, contend that the combination as claimed was both known and obvious.  For the reasons explained by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd in the passage cited above, such an approach is erroneous.

122               While it is correct that the evidence established that each of the claimed combinations in AS 698806 and AP 723748 involved well understood mechanical principles and componentry it did not establish that their use in the construction of ride-on mowers in the particular way that they were employed by Mr Reinhold to overcome the particular problems in steering control consequent upon the increase in the width of ride-on mowers would have been obvious to a hypothetical skilled addressee.  If the combination is a substantially new thing and an advance on the common general knowledge as it existed on the priority date then s 18(1)(a)(ii) of the Act is satisfied.  In my view, the respondents have not succeeded in showing to the contrary.  The problems which the invention set out to overcome I am satisfied were real and not imagined.  The sales of the applicant’s machines incorporating the improvements over earlier models demonstrate a need to be overcome as does the production by the respondents of a machine with some of the same features to meet the demand for the improved ride-on lawn mower albeit in a different and non-infringing combination.  I am satisfied on the evidence that the claimed invention solved the technical problems of steerage associated with the increased width in ride-on mowers in an inventive way by the use of lockable differentials which operated in conjunction with a single transverse axle in a combination which was substantially new having regard to the way ride-on lawn mowers were previously constructed and operated.

123               The challenge to the claims in these two patents for want of inventive steps also fails.

NOVELTY

124               The respondents conceded that if the priority date was 30 May 1990 and, if the attacks based on each for want of inventive step, and, under s 40 of the Act failed, then the system as claimed in the patents in suit with a locking means had not been prior published or used in that, the United States patents were not for transverse axles and did not incorporate a locking means adjacent to the wheel hub, and, the OMC turf aerator and the Cox “Mowmobile” did not incorporate a locking means.  Having regard to this concession and in the light of my findings above, none of the prior art base relied upon by the respondents satisfies the “reverse infringement” test.  The claimed inventions are not bad therefore for anticipation or want of novelty:  Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at 235.

CONCLUSION

125               The applicant’s case for infringement of the patents in suit fails and will be dismissed with judgment on the claim for the respondents.  Costs of that claim should follow the event in the ordinary way.

126               The cross claim for revocation also fails and will be dismissed with judgment for the applicant on the cross claim.  Costs of the cross claim should follow the event in the ordinary way.

Associate:

Dated:              30 August 2001