Ajax Cooke Pty Ltd v Loi & Tran Pty Limited - [2006] APO 10

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 757669 in the name of Ajax Cooke Pty Ltd

Title: Threaded Fastening System

Action: Opposition under S59 of the Patents Act 1990 by Loi & Tran Pty Limited

Decision: Issued 17 March 2006 .
Abstract

The application related to a threaded screw fastener for attaching profiled sheeting panels to support. The opponent alleged that a particular phrase “linear circular incision” appearing in claim 1 was unclear. When properly construed in the context of the specification and claims, the phrase was found to be clear.
The claims were also found to be novel over an alleged anticipation because the latter did not disclose a characterising feature of the invention. The citation was considered to be a “mere paper anticipation” and does not provide “clear and unmistakable directions” provide a screw fastener with the functionality to make a “linear circular incision through the panel”. The citation was not directed to the same problem and it would not lead a non inventive skilled worker to modify the features of the citation for the particular application. Consequently, the ground that the claims lacked an inventive step was not made out.
Consequently, the opposition was dismissed with costs going against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 757669 by Ajax Cooke Pty Ltd and opposition thereto under s59 of the Patents Act 1990 by Loi & Tran Pty Limited

BACKGROUND

Patent application 10193/00 was filed on 6 October 1999 in the names of Hanstock Fasteners Pty Ltd and Reid Constructions Systems Pty Ltd. The application is the National Phase application of WO00/20767 and claims priority from a provisional patent application PP6379 dated 6 October 1998. The patent applicant requested expedited examination. The application was subsequently advertised as accepted on 27 February 2003. Loi & Tran Pty Limited (hereinafter called Loi & Tran) filed a notice of opposition on 27 May 2003. On 2 October 2003, a request to assign the application to Ajax Cooke Pty Ltd was received. This was subsequently registered and the application is now proceeding in the name of Ajax Cooke Pty Ltd (herein after referred to as Ajax).
Evidence–in-support was completed on 27 November 2003. After nine extensions of time, the evidence-in-answer was completed on 27 October 2004 and after four extensions of time evidence–in-reply was completed on 26 May 2005. A hearing was set down on 16 November 2005 in Melbourne. Norman Morcom, patent attorney from Morcom Pernat attended on behalf of the applicant, Ajax and Alfred Tatlock, patent attorney of A Tatlock & Associates attended on behalf of the opponent, Loi & Tran.
Statement of Grounds and Particulars
The statement of grounds and particulars asserted that the application was not directed to a manner of manufacture within s18(1) of the patent Act 1990 as it was “no more than a combination of existing features whose characteristics and properties are already known.”
The statement also alleged that the invention as claimed was not novel in the light of US 3500713 (Bell). An allegation of lack of inventive step was alleged on the basis of a number of prior art documents which the opponent asserted were common general knowledge. These patent documents are as follows;
D1: US 3500713 (Bell) 17 March 1970
D2: UK 2159745 (SFS Stadler AG) 11 December 1985
D3: UK 1385139 (W.A. Deutsher Pty Ltd) 26 February 1975
There was also an allegation that D1 when viewed in the light of D2 and D3 rendered the claims as lacking an inventive step.
The Evidence
Evidence-in-support consisted of a single declaration by To Ha Loi accompanied with 3 exhibits. Exhibit L1 is a drawing from US 3500713 (Bell), exhibit L2 is a copy of GB 2159745 (SFS Stadler AG), and exhibit L3 is a copy of GB 1385139 (W.A. Deutsher Pty Ltd). Mr Loi is the Managing Director of Loi & Tran Pty Ltd.
The evidence–in–answer consisted of a single declaration by Dr Saman Fernando. Dr Fernando stated in his declaration that he is one of the inventors of the opposed application and that he is the Engineering Manager for Global Engineering Fasteners Pty Ltd which was a business formed in April 2004 from what was one of the businesses that was owned by Austrim Nylex Pty Ltd and operated under the business name of Ajax Fasteners. Exhibit SF-1 to his declaration was a complete copy of the Bell patent.
The evidence-in-reply consisted of a declaration by Mr Loi.
The Specification
This invention concerns the use of threaded screw fasteners and has particular relevance to screws for affixing architectural sheet profiles made from materials that have a high coefficient of thermal expansion to an underlying structure. The screws are especially useful when affixing roofing profiles made from non-metallic roofing profiles such as those made from polycarbonate, PVC or fibreglass reinforced polyester resin to a support surface.
The specification states that transparent and translucent roofing materials made from non-metallic materials are becoming increasingly popular and that these are used alone or in conjunction with roll formed steel sheeting to allow light transmission through the roof. However, when compared with glass, such plastics are lighter in weight, more resistant to impact damage, easier to install and considerably cheaper. In particular, the specification indicates that polycarbonate sheeting is becoming increasingly popular because of its perceived superior performance.
The specification states that a major difficulty with non-metallic sheeting is its relatively high coefficient of thermal expansion. For example, a 3 metre long sheet of polycarbonate will expand by approximately 2.1 mm for each 10°C temperature increase and a 5 metre long sheet restrained at one end by being butted up against a brick wall can have its free end move by over 10mm in the course of a day with a 30°C temperature rise. PVC sheeting is now used less often than polycarbonate and, although PVC has the advantage of a lower cost, PVC also has a high coefficient of thermal expansion.
The specification concludes that while conventional sheet fastening practices for a wide range of other building materials involve drilling a hole just sufficiently large enough for the screw being used, this practice does not take account of the properties of materials with a large coefficient of thermal expansion (eg PVC and polycarbonate) and that buckling and other distortion of sheets often occurs as a consequence of incorrect fastening practice.
The solution proposes a fastener having a cutter that will excise a linear circular incision through the panel. The specification ends with 14 claims with claims 1 and 11 been independent. These claims are listed below.
The Claims
There are 14 claims with claims 1 and 14 being independent. Claim 1 is directed to a screw fastener while claim 14 is directed to a method of fixing a threaded fastener to profiled architectural sheet. The claims are as follows:
1. A screw fastener for attaching a profiled sheeting panel to a support, said fastener comprising:
(i) an elongate cylindrical shank;
(ii) an enlarged head at one end of the shank adapted for engagement with a driving tool;
(iii) a piercing tip on the other end of the shank;
(iv) a threaded portion on the shank, adjacent the piercing tip, adapted to screw into the support; and
(v) a cutting means attached to the shank and spaced from the head and adapted to make a linear circular incision through the panel and spaced from the shank during the screwing operation.
2. A fastener according to claim I wherein the cutting means is cup shaped.
3. A fastener according to claim 2 wherein said shank passes axially through the cup shaped cutting means.
4. A fastener according to any one of claims 1 to 3 wherein the cutting means comprises a circular cup with cutting teeth spaced around its perimeter.
5. A fastener according to any one claims 2 to 4 wherein the cutting means is captive upon said shank and the shank passes axially through the centre of the cup.
6. A fastener according to any one of claims 1 to 6 wherein the cutting means engages with the shank by means of a keyed bore on the cutting means engaging with a matingly keyed portion on the shank.
7. A fastener according to any one of claims 1 to 6 wherein the cutting means has a smooth bore which frictionally engages with a tapered serrated collar on the shank.
8. A fastener according to any one of claims 1 to 6 wherein the cutting means has a bore which frictionally engages with tapered ramps upstanding from the shank.
9. A fastener according to any one of the previous claims wherein an elastomeric sealing means is fitted on the fastener between the cutting means and the head.
10. A fastener according to claim 9 wherein the sealing means comprises a domed topside, a central bore and a dished underside, said underside having two concentric sealing rims each of larger diameter than said circular incision.
11. A method of fixing a profiled architectural sheet to a support member whereby a threaded fastener passes through the sheet and into the support member, said fastener having a head at one end and a tip on its threaded portion at the other end and a cutter portion distant from the tip, said method comprising:
(i) with the tip of the fastener, piercing the sheet with a hole having a diameter about that of the threaded portion of the fastener,
(ii) extending the fastener into the hole to engage the support member and driving the thread partly into the support member;
(iii) as the thread continues to screw into the support member, engaging the cutter portion with the sheet to incise the line of a circle, spaced from said hole, into and through the sheet; and
(iv) continuing to screw the fastener into the support member.
12 A method according to claim 11 wherein the fastener is screwed into the support member until the cutter portion bears against the support member.
13. A method according to claim 11 or 12 wherein the fastener cuts out a washer shape from the sheet and that washer shaped cutout is retained on the fastener.
14. A method according to any one of claims 11 to 13 wherein a resilient washer is provided on the fastener between the cutter portion and the head, and the washer forms a waterproof sealing means between the head and the sheet when the cutter portion bears against the support member.
DECISION
In its opening statements, Ajax submitted that the usual practice of drilling or reaming a hole in steel sheet for the attachment of the roofing does not work for materials, such as polycarbonate, that have a high degree of thermal expansion. As these materials are thinner the sheeting around the hole gets damaged when the material is removed in a short space of time by the action of the drill.
The solution as provided by Ajax allows only a small amount of material to be removed and so the problems experienced in the prior art do not occur. In the language of claim 1, the cutting means produces a “linear circular incision” through the panel.
In it opening arguments, Loi & Tran submitted that the claims do not define the invention disclosed in the specification and in particular the opponent submitted that the Bell patent deprived most of the claims of novelty. The opponent indicated that their submissions related to clarity and lack of novelty in view of the disclosures of the Bell patent. The grounds of lack of manufacture and lack of inventive step were not pursued.
The submission of the parties chiefly centered on the language of the claims, in particular on the meaning of the term “linear circular incision” appearing in claim 1 and on the disclosure in the Bell patent. The evidence submitted in the opposition also focuses on these issues.
Linear circular incision
As previously stated the meaning of this phrase is in dispute. The opponent pointed out that the phrase appears to be self-contradictory, as a linear incision does not seem to the same thing as a circular incision. Ajax submitted that the term refers to a line that is in the form of a circle and that excavating an entire circle (ie the area within the periphery of a circle) does not satisfy the requirement that a “linear circular incision” be formed through the panel.
The specification, in its preferred embodiment, refers to cutting process as such;
“…the teeth then cut, in the manner of a band saw, a circular groove in the cladding.” - at page 6 lines 27-28.
“The teeth cut the enlarged hole by cutting along the line of a circle which circumscribes cladding material which has not being cut.” – at page 6 lines 29 -31.
“The cutter mechanically works the sheet material in the peripheral groove.” – at page 7 line 5.
“The teeth then cut, in the manner of a hole saw, a circular groove into and finally through the sheeting” – at page 10 lines 10-11.
“The present invention utilises a cutter which cuts only the circumference of a circle.” – at page 10 line 25.
“…to incise the line of a circle, spaced from said hole, into and through the sheet” –at claim 14 line 10.
[underlining my emphasis]
I note that the consistory statement only refers to a “circular incision” and that the phrase “linear circular incision” makes its appearance solely in claim 1.
The opponent submitted that the term has a wide meaning and includes an incision not only in the form of a circle but also in the form of a cylinder. Therefore, the opponent submitted that if thin material was been cut, a circular hole would be formed but if thicker material (as exemplified in the Bell patent) was been cut then a cylindrical bore would be formed. Consequently, it was argued that as the words of the claim would encompass the formation of a cylindrical bore, the claim must be rendered not novel in view of the Bell patent.
When taken out of context, the phrase “linear circular incision” is unclear. The opponent submitted that one definition of incision is a “depression scratched or carved into a surface”. However, the words following the phrase in the claim are relevant and should be taken into account. The claim continues with the words “through the panel and spaced from the shank during the screwing operation”. From this it can be inferred that a “linear circular incision” is an circular incision that, during the screwing process, goes through the panel and produces a circular cut (ie a cut that is in the form of a line of a circle) that is spaced from the shank of the screw. This interpretation appears to be consistent with the expressions which I have noted above. Consequently, a depression scratched or carved into a surface is not an “incision” as a “linear circular incision” is a cut that passes through the sheet.
In the context of the specification and in the context of the phrase as used in claim 1, the term “linear circular incision” relates to incising or cutting of profiled sheet material (ie the formation of a cut that is in the form of a line of a circle) with a reaming functionality being thereby excluded. The term does not extend to the concept of excising a cylindrical bore as suggested by the opponent. The characterising feature of the invention lies in the formation of an incision in the form of a line of a circle that cuts through a profiled sheet.
Bell Patent
The Bell patent discloses a self-drilling and self tapping screw for drilling and fastening a first work member to a harder second work member. In its preferred embodiment the first member is wood and the second member is steel. The self drilling screw includes a threaded shank and drilling tip. A reaming collar is provided on the threaded shank. The collar comprises at least one but preferably four tines that are curved downwardly and outwardly. The collar may be solid or hollow in which case it will contain chips or waste material from the reaming operation. The collar is force fitted to the screw so that it does not ride up the threaded portion of the shank as the reaming operation progresses.
As the tip of the screw penetrates the first softer panel (eg made of wood), the collar rotates and the material of the first panel is reamed and a counter bore is created. When the tip penetrates the second panel that is of harder material, the tines of the collar bite into the panel and the collar will stop rotation. The screw can then be further axially turned to lock the panel together. In this last operation the collar will be forced to ride up the threads of the shank.
Novelty
In terms of the claims of the application, there is a clear disclosure of features (i) to (iv) of claim 1 in the Bell patent. I note that there does not appear to be any dispute between the parties on this point. The central argument in the opposition focuses on feature (v) of claim 1 and its apparently “equivalent” feature (iii) of independent method claim 11.
Dr Fernando, in his evidence-in-answer, submitted that the Bell patent did not disclose the making of a “linear circular incision” as the screw bored a hole through the softer material of the panel. Dr Fernando emphasised that the screw of the invention works only a small amount of material, whereas in the Bell patent the cutter mechanically works all of the material that is to be removed. He also pointed out that in the current application a washer shaped cutout is retained on the fastener whereas this does not occur with the screw of the Bell patent. While Bell discloses that a collar containing chips or waste material from the reaming operation may be formed, this is not comparable to the disc of material that is formed by the screw of the invention. In my mind this distinction emphasises the difference between the Bell patent and the invention that the former relates to reaming while the latter relates to cutting or incising.
Dr Fernando emphasised in his declaration that the cutting occurs within a single revolution as compared with the screw of the Bell patent. While I agree that the Bell patent does not disclose the reaming within a single revolution and that all of the material is worked rather than a small portion as required in the current invention, the issue is not the number of revolutions but whether the claims as presently defined are capable of an interpretation in which the working of large amounts of material is included. From my discussion of the meaning of the phrase “linear circular incision”, an interpretation which favours removing large amounts of material is not within the ambit of this phrase as an incising function is not a reaming function.
Dr Fernando also stated that in the Bell patent the teeth do not protrude from the back face of the panel before the main body of the cutter starts to chew its way into the panel. While this is a difference between the method of the invention as compared with that of the citation, it is not a limitation to invention as defined by claims 1 to 10. It is, however, a limitation to the method of claim 11 for which there is no disclosure in the citation.
In the Bell patent the cutter cuts its way through a large amount of material. The claims of the present invention are directed towards a screw fastener for attaching a profiled sheeting panel to a support / a method of fixing a profiled architectural sheet to a support member. The Bell patent does not disclose this functionality and I note that there is no evidence that the screw of the Bell patent would function in a similar manner. There is no evidence to suggest that the cutters as used in Bell would be suitable of cutting thin (ie profiled) sheeting material. As the cutters in Bell are in the nature of a reamer (the teeth extend downwardly and outwardly), it would be logical to suppose that if they were used in the instant application there would be a tendency for it to perform this function.

Furthermore, there does not appear to be any evidence suggesting that the Bell patent screw could be modified, in a non inventive manner, for the specific application of the current invention. There is no teaching in Bell that the teeth of the cutter should be modified for an incising function rather than a reaming function. There does not seem to be any evidence that it would be obvious to modify the screw of the Bell patent to fix a profiled architectural sheeting to a support member. The screw of the Bell patent does not produce a “linear circular incision”. Hence, the screw fastener of the Bell patent does not deprive claim 1 of novelty.
In relation to feature (iii) of claim 11, in addition to the failure of the citation to produce an incision in the form of a line of a circle, the citation also does not disclose the engagement of the cutter “into and through the sheet”.
It seems to me that the Bell patent is a “mere paper anticipation” and does not provide “clear and unmistakable directions” to provide a screw fastener with the functionality to make a “linear circular incision through the panel”. The Bell patent is not directed to the same problem and in my view there was no evidence filed in this opposition that would lead a non inventive skilled worker to modify the features of the Bell patent for the particular application. I note that there was no evidence filed in the opposition in relation to the allegation of lack of inventive step. Consequently, for the reasons discussed above, the claims are both novel and possess an inventive step.
CONCLUSION
When properly construed in the context of the specification and claims, the phrase “linear circular incision” was found to be clear. It was considered that the phrase relates to the incising or cutting of profiled (ie thin) material (ie the formation of a cut that is in the form of a line of a circle) with a reaming functionality being thereby excluded. The term does not extend to the concept of excising a cylindrical bore as suggested by the opponent. The characterising feature of the invention is the formation of an incision in the form of a line of a circle that cuts through a profiled sheet.
The claims were also found to be novel over an alleged anticipation because the latter did not disclose a characterising feature of the invention. The citation was considered to be a “mere paper anticipation” and does not provide “clear and unmistakable directions” to make a “linear circular incision through the panel”. The citation was not directed to the same problem and it would not lead a non inventive skilled worker to modify the features of the citation for the particular application. Consequently, the ground that the claims lacked an inventive step was not made out. Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.
COSTS
It is usual for cost to follow the event. In this case I have found that the opposition was not successful. Accordingly, I award cost against the opponent, Loi & Tran Pty Ltd.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Morcom Pernat, Melbourne
Patent attorneys for the opponent : A Tatlock & Associates, Melbourne