Ajax Technology Centre Pty Ltd v ITW AFC Pty Ltd - [2005] APO 14

NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 729658 in the name of ITW AFC Pty Ltd

Title: Screw Threaded Fastener and Fastening System

Action: Opposition under s59 of the Patents Act 1990 by Ajax Technology Centre Pty Ltd

Decision: Issued 29 March 2005.

Amendments under Section 104 to the complete specification were filed after the evidence in support was completed and after the hearing of the opposition was conducted. The later request to amend arose from action under regulation 5.11.
As a result of these amendments, the claims were found to be novel and inventive.
In the circumstances, it was appropriate to award costs up to the date of the hearing to the opponent and to make no award costs thereafter.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 729658 by ITW AFC Pty Ltd and opposition thereto under s59 of the Patent Act 1990 by Ajax Technology Centre Pty Ltd.
BACKGROUND

Patent application 53013/98 was filed on 9 February 1998 taking priority from PO5029 filed 11 February 1997. The application was filed in the name of W A Deutsher Pty Ltd and on acceptance was allocated patent number 729658. A notice of opposition by Ajax Technology Centre Pty Ltd (herein after called Ajax) was filed on 7 May 2001.
Statement of grounds and particulars was filed on 7 August 2001. After a number of extensions, evidence-in-support was completed on 8 May 2002. A request to assign the patent application under section 113 from the current applicant to ITW AFC Pty Ltd (herein after called ITW) was filed 29 November 2001. This was registered on 10 December 2001 and took effect from that date.
An application to amend the complete specification under section 104 was filed on 1 August 2002. On 24 February 2003, the amendments to the specification were allowed. Evidence-in-answer was completed on 13 June 2003 and evidence-in-reply was completed on 18 September 2003.
A hearing on the matter was set down for 11 February 2004 in the Melbourne State Office. Raymond Hind, patent attorney of Davies Collison Cave, appeared on behalf of ITW. Norman Morcom, patent attorney of Morcom Pernat, appeared on behalf of Ajax. Dr Samna Fernando, a declarant and employee of the opponent, also attended.
THE GROUNDS OF OPPOSITION
Ajax filed two grounds of opposition; namely that the invention as claimed was obvious and did not involve an inventive step in the light of common general knowledge in Australia under subsection 18(1)(b)(ii) of the Patents Act 1990 and that the invention as claimed was not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies under subsection 18(1)(a) of the Patents Act 1990. The latter ground was not pressed at the hearing. However at the hearing, a new ground, under subsection 18(1)(b)(i) alleging lack of novelty was raised.
THE EVIDENCE
Evidence-in-support
Dr Saman Fernando who holds the position of research development and innovations manager for Ajax fasteners filed a statutory declaration. The declaration was accompanied with exhibits SF-01 to SF-07. Exhibit SF-01 is a copy of an Ajax Fasteners Catalogue and price list for building fasteners. It is asserted that the booklet was available in Australia on or before 1 November 1996. Exhibit SF-02 contains copies of pages 16, 17 160 and 161 for a handbook (a 1965 reprint of a 1961 edition) from McPherson’s Ltd. Exhibit SF-03 contains copies of pages 1326 to 1334 from “Machinery’s Handbook” 22ed edition (1984). Exhibit SF-04 is an information sheet summarising national screw thread standards. Exhibit SF-05 contains copies of pages 895 and 896 from “Mechanical Engineer’s Handbook” edited by L.S. Marks 4ed (1941). Exhibit SF-06 is a copy of a catalogue dated 1990 by Research Engineering and Manufacturing Inc. Exhibit SF-07 contains photocopies of images of a number of Pushtite II fasteners in the declarant’s possession.
John Frederick Howell, a structural engineer and general manager and director of Advea Research Pty Ltd, filed a statutory declaration.
Herman Harry Better, principal engineer at ETRS PTY LTD, filed a statutory declaration. The declaration was accompanied with exhibits HB-01 and HB-02. Exhibit HB-01 is a photocopied image of allegedly two self drilling self threading cross head screw in the declarant’s possession. Exhibit HB-02 is a copy of US patent 5,234,301 (Grossberndt et al) 10 August 1993.
Evidence-in-answer
David James Alexander Roberts, one of the inventors, filed a statutory declaration dated 12 June 2003 with exhibits DJAR-1 which is a copy of a Buildex catalogue and exhibit DJAR-2 which is a drawing that shows two schematic sketches of how the “Metal Batten Teks” (the fastener of the invention) works.
Evidence-in-reply
Dr Saman Fernando filed his second statutory declaration dated 15 September 2003 with a number of exhibits. Exhibit SF-08 is a copy of a Buildex catalogue dated April 1995, SF-09, and SF-10 are two examples of Type 17 screws made by Ajax, SF-11 is an example of a HiFIXX fastener manufactured by Ajax, SF-12 is an example of a SteelFIXX fastener manufactured by Ajax, and SF-13 is an example of a “Metal Batten Teks” screw as marketed by the applicant.
REGULATION 5.11 / SECTION 104 AMENDMENT
During the course of writing up the decision of the above application, I became aware of an equivalent family member US 6,185,896 that was published on 13 February 2001 and is available on the USPTO web site. The US family member lists two pieces of prior art, which prima facie are highly relevant to the claims under consideration in the opposition in Australia and having regard to the public interest, they should be considered. These documents are listed below.
US 5,304,023 (Toback et al) published 19 April 1994
US 5,746,039 (Nystrom) published 5 May 1998
As the former document was published before the earliest priority date of the Australian application, it prima facie appears to affect the validity of the patent. As the second document was published after the filing date in Australia of the current application (and in the absence of any Australian equivalent), it does not appear to be part of the prior art base for novelty.
Consequently, both parties were advised that I proposed to invoke regulation 5.11 to introduce US patent 5,304,023 into the current proceedings. I further advised the parties that they had 14 days within which to file any objection to regulation 5.11 being invoked.
No written submissions were received and so on 19 April 2004, I further advised both parties that regulation 5.11 was formally invoked. I advised the applicant that it had 1 month from the date of the letter within which to file any submissions and / or amendments in relation to US patent 5,304,023. If the applicant filed submissions, I advised that the opponent would have 1 month within which to respond with either submissions or further evidence. I further advised that if the applicant proposed amendments, these will be dealt with in the usual manner and that the opponent will be given an opportunity to comment on both the allowability of the amendments and whether they are novel / inventive over the prior art.
On 17 May 2004, the applicant filed a statement of proposed amendments under s104. In that advice Mr Hind commented that neither the applicant nor its Australian attorneys were aware of the reference. Mr Hind also requested that appropriate directions should issue. As a result, I revised my direction and in writing to both parties stated that I would re-consider the appropriate process once the s104 amendments were finalised.
The s104 amendments were allowed and advertisement of the allowance occurred on 17 February 2005.
I wrote to the parties again on 18 January 2005 and advised them that I would reconvene the hearing upon request by either party; otherwise, I would proceed with making my decision in the opposition. I gave the parties 21 days in which to inform me. On 7 February 2005, Mr Hind for ITW filed submissions on its behalf. I will refer to these submissions where appropriate.
THE SPECIFICATION
The invention relates to a screw threaded fastener and a fastening system using the screw threaded fastener. In particular, the invention finds uses in fixing of roofing or cladding material to battens of thin material section and in particular to battens of thin metal section. By “thin metal,” the specification means a “metal having a thickness not significantly greater than one millimetre, and more generally in the range 0.4 to 0.8 mm.” The specification explains that the problem with the prior art is that under high wind loading the fasteners of the prior art fail.
“It is common practice to secure metal roofing material to thin metal battens by means of self-tapping threaded fasteners of the kind having a drilling tip. Selection of such a fastener from the available range of such fasteners is largely determined by the speed with which the fastening operation can be achieved, but the security or strength of the fastened assembly may be compromised in the process.”
“Fastenings of the aforementioned kind have been found to fail particularly in situations involving relatively high wind loading. It has been discovered that such failures are due at least in part to the distorting effect of the thread form of conventional fasteners on the thin metal battens.”
The specification explains that the appropriate form of thread is essential.
“A screw threaded fastener according to the invention is characterised in that the angle subtended between the longitudinal axis of the screw and the trailing flank of the screw thread is greater than the corresponding angle subtended between said longitudinal axis and the leading flank of the screw thread and wherein the trailing flank angle is closer to 90° than is the leading flank angle.”
Selection of this type of thread provides the invention with the advantage that it minimises distortion of the thin metal batten under pull-out loads that would be produced in high wind loadings.
“This angular disposition of the trailing flank relative to the leading flank of the screw thread, in use of the fastener, reduces the angle between the trailing flank and the adjacent thin metal section of a batten surrounding the fastener. This has a lesser distorting effect on the thin metal batten under pull-out loads on the fastener to that produced by the screw thread of a conventional fastener wherein the leading and trailing flanks slope at substantially the same angle relative to the longitudinal axis of the fastener.”
And furthermore tests have demonstrated the effectiveness of the fastener screw.
“Tests conducted with fasteners having the thread form … reveal a substantial improvement over fasteners having a conventional thread form, … Resistance to pull-out under a static load is 30% greater than that of conventional fasteners, and the improvement is as high as 200% in the case of a cyclic load intended to simulate strong or cyclonic wind conditions.”
There are a number of preferred enhancements.
The drilling portion may be fluted.
“It is preferred that the drilling portion has two flutes formed therein on diametrically opposite sides of the fastener axis, wherein each flute extends generally in the direction of the longitudinal axis of the fastener. The terminal end of the fastener shank is formed by the tip of the drilling portion, and that tip preferably comprises two terminal end faces each of which slopes outwardly from the fastener axis in a direction towards the head of the fastener.”
Yet, the specification states that “[D]rill tips of that general configuration are known.”
The maximum cross sectional dimension of the drilling portion may be substantially equal to the root diameter of the thread of the fastener.
“The maximum cross sectional dimension of the drilling portion, which portion may be substantially cylindrical, may be selected to suit requirements, but it is preferably substantially equal to the root diameter of the thread of the fastener. In some circumstances the aforementioned dimension could be greater or less than the root diameter.”
The threaded portion may be tapered.
“The threaded portion of the screw fastener extends over a suitable part of the shank length and is located between the drilling portion and the head of the fastener. It is preferred that a section of the threaded portion adjacent the drilling portion is tapered so that the crest diameter of the thread progressively increases from a minimum at the end of the threaded portion adjacent the tip portion, to a maximum at a location towards the head of the fastener.”
The advantage of this feature is that such a tapered arrangement promotes proper co-action between the threaded portion and the hole formed by the drill tip.
The drilling portion is relatively long so as to cope with the existence of a relatively large gap that is formed when adjacent battens overlap. This has the advantage that the appearance of the roof is not adversely affected as could occur in the prior art.
“Battens 2 are generally supplied in standard lengths and it will occur that two or more battens are required to span a required distance. In such cases it is usual practice to overlap adjacent ends of two battens 2 as shown diagrammatically by Figure 2. As will be apparent from Figure 2 the double thickness of the flanges 7 prevents the top wall 5 of the upper most batten 2 engaging the top wall 5 of the lowermost batten 2, and a gap G is thereby formed between the walls 5. The gap G can create a problem when a fastener 3 is being driven into the battens 2 at the region of the overlap. It will sometimes happen that the fastener 3 enters into threaded engagement with the uppermost wall 5 before the tip 4 penetrates into or through the lowermost wall 5, and in that event the uppermost wall 5 will be forced upwards relative to the lowermost wall 5 thereby increasing the size of the gap G and adversely affecting the appearance of the roof construction.”
THE CLAIMS
As accepted, the main claim read as follows:
“1. A screw threaded fastener including, an elongate shank having a longitudinal axis, a drilling tip at one end of the shank and a head at the opposite end, and a screw thread extending over a part of the length of the shank, wherein the screw thread includes a leading flank having an angular disposition relative to the longitudinal axis whereby it slopes outwardly relative to the longitudinal axis in a direction away from the drilling tip and a trailing flank directed outwardly relative to the longitudinal axis at a different angular disposition to that of the leading flank, wherein the angular disposition of the trailing flank is closer to 90° than is the angular disposition of the leading flank.”
A fastening system, depended upon claim 1 was also defined. This claim reads as follows.
“13. A fastening system including, at least one thin metal batten having a support wall, a sheet of roofing or cladding material, and at least one screw threaded fastener according to claim 1, wherein said fastener extends through said sheet and its screw thread is threadably engaged in the support wall of the batten thereby to attach the sheet to the batten, wherein the trailing flank of the thread extends outwardly approximately parallel to an adjacent surface of the support wall of the batten surrounding the fastener, whereby said trailing flank subtends an angle relative to said adjacent surface of no more than about 10°.”
With the first set of amendments, claim 1 was amended to include the ability for driving into thin metal and a drilling tip. This claim reads as follows.
“1. A screw threaded fastener for driving into thin metal, including an elongate shank having a longitudinal axis, a drilling tip at one end of the shank and a head at the opposite end, and a screw thread extending over a part of the length of the shank, wherein the screw thread includes a leading flank having an angular disposition relative to the longitudinal axis whereby it slopes outwardly relative to the longitudinal axis in a direction away from the drilling tip and a trailing flank directed outwardly relative to the longitudinal axis at a different angular disposition to that of the leading flank, wherein the angular disposition of the trailing flank is closer to 90° than is the angular disposition of the leading flank, and the shank includes a drilling portion which terminates at the drilling tip, the thread commencing adjacent the end of the drilling portion remote from the drilling tip.”
Claim 13 remained unchanged. However, new claim 18, which is directed to a method of fixing sheet material using the screw threaded fasteners of claims 1 to 12 was included. These claims read as follows.
“13. A fastening system including at least one thin metal batten having a support wall, a sheet of roofing or cladding material, and at least one screw threaded fastener according to claim 1, wherein said fastener extends through said sheet and its screw thread is threadably engaged in the support wall of the batten thereby to attach the sheet to the batten, wherein the trailing flank of the thread extends outwardly approximately parallel to an adjacent surface of the support wall of the batten surrounding the fastener, whereby said trailing flank subtends an angle relative to said adjacent surface of no more than about 10°.”
“18. A method of fixing sheet material to a thin metal batten comprising driving screw threaded fasteners as claimed in any one of claims 1 to 12 through the sheet material and into a support wall of the thin metal batten such that the drilling portion forms a hole in the support wall and the screw thread then threadedly engages therein.”
As a result of the second set of amendments (as a result of the regulation 5.11 action), claim 1 was amended to include the characterisation of the fluted drilling tip and the tapering thread.
Claim 1 reads as follows:
“1. A screw threaded fastener for driving into thin metal, including an elongate shank having a longitudinal axis, a drilling tip at one end of the shank and a head at the opposite end, and a screw thread extending over a part of the length of the shank, wherein the screw head includes a leading flank having an angular disposition relative to the longitudinal axis whereby it slopes outwardly relative to the longitudinal axis in a direction away from the drilling tip and a trailing flank directed outwardly relative to the longitudinal axis at a different angular disposition to that of the leading flank, wherein the angular disposition of the trailing flank is closer to 90⁰ than is the angular disposition of the leading flank, and the shank includes a drilling portion which terminates at the drilling tip, wherein the drilling portion has two flutes formed therein on diametrically opposite sides of the longitudinal axis, each flute extends from the drilling tip generally in the direction of the longitudinal axis, and the drilling tip comprises two end faces, wherein each end face slopes outwardly from the longitudinal axis in a direction towards the head of the fastener, the thread commencing adjacent the end of the drilling portion remote from the drilling tip, and the screw thread being tapered over a plurality of turns forming a part of its length whereby a crest diameter of the screw thread progressively increases from a minimum adjacent the said end of the drilling portion to a maximum value towards the head of the fastener.”
Dependent claim types relating a method of fastening and a method of fixing were also defined. Claim 13 was now appended to any one of claims 1 to 10 and claim 18 was amended to include resistance to cyclonic wind conditions. These claims read as follows:
“13. A fastening system including at least one thin metal batten having a support wall, a sheet of roofing or cladding material, and at least one screw threaded fastener according to any one of claims 1 to 10, wherein said fastener extends through said sheet and its screw thread is threadably engaged in the support wall of the batten thereby to attach the sheet to the batten, wherein the trailing flank of the thread extends outwardly approximately parallel to an adjacent surface of the support wall of the batten surrounding the fastener, whereby said trailing flank subtends an angle relative to said adjacent surface of no more than about 10°.”
“18. A method of fixing sheet material to a thin metal batten comprising driving screw threaded fasteners as claimed in any one of claims 1 to 10 through the sheet material and into a support wall of the thin metal batten such that the drilling portion forms a hole in the support wall and the screw thread then threadedly engages therein, wherein the threaded engagement with the support wall of the batten provides resistance to pull-out when the sheet material is exposed to cyclonic wind conditions.”

As a result of the amendments, the features of the fluted drilling tip and the tapering threads, which were described as preferred features had now become essential features of the claimed invention.
DECISION
NOVELTY
The test for determining whether an invention lacks novelty is the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
Infringement of a claim occurs where “each and every one of the essential integers” of that claim have been taken. See e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.
It was common ground that the type of thread referred to in the claims of the opposed specification can be called a buttress thread.
Better Declaration
As previously stated, it became clear that Ajax was, in addition, pleading lack of novelty as a ground of opposition. While novelty was not included in the statement of grounds and particulars, ITW were prepared to make submissions on this ground. The fact that the patent applicant was prepared to make submissions against this ground, I think is indicative of the fact that that there are no over-riding natural justice issues to be considered. In questioning the agent for Ajax, it emerged that the basis of the novelty argument was the “Better screw” and that claims 1-5, 7-10, 13-17 (as amended by the first statement) were allegedly to be not novel. Or, to put it another way, claim 6 (that was directed to drilling portion being fluted), claim 11 (that was directed to the drilling portion having a length which is up to substantially twice the crest diameter of the thread), claim 12 (that was directed to the flutes having a length which is in the range of two thirds to three quarters of the length of the drilling portion), claims 18 and 19 (that were directed to a method of fixing), and the two omnibus claims are not allegedly to be lacking in novelty. As the features of claim 6 have been included in claim 1 as a result of the second statement of amendments, it would appear, prima facie, that current claim 1 is novel in the light of the “Better screw.” However, I will consider the claims as they then were and as they are now currently drafted.
Exhibit HB-01 to the Better declaration shows “images of two samples of some self-drilling self-threading cross-head screws” that the declarant had in his possession prior to the priority date. The technical details of the images are that they have been enlarged to 200% of the linear dimensions of the actual screws with one of the screws being ground longitudinally in order to better illustrate its thread form. The Better declaration asserts that the screws clearly carry a buttress thread. While the Better declaration also alleges that claims 2, 3, and 4 (from the first statement of amendments) are not novel, this was based upon an assumption that if the angles were to be measured they would be found to fall within the scope of the relevant claims.
“I have not as yet accurately measured the angles of the leading and trailing flank of the thread in the sample screws but expect that such measurements would show the screws fall within the scope of claims 2, 3, and 4.”
Mr Better’s declaration states that approximately 100 of the screws were purchased from a retail hardware store in Dandenong, Victoria prior to the priority date. It was stated that Mr Better’s intention was to use them for “fastening into thin sheet metal.”
In relation to the “drilling portion” of the claim, Mr Better refers to the “bullet shaped point on each screw.” The Better declaration refers to the US patent no. 5,234,301 of exhibit HB-02 as teaching that this type of point could be used as a self drilling screw.
“In relation to the bullet shaped point on each screw, I understand that in use the screw could be used as a self-drilling screw in the manner, described in US patent no. 5,234,301, a copy of which is annexed hereto and marked as Exhibit HB-02. I would expect that the bullet tip on the screw could also be used in such a manner that the screw could be subject to an impact in order to burst its way through the substrate into which it is to be fastened, whereafter the screw would be rotated in order to form the thread in the hole so produced.”
Mr Better considered that the bullet head configuration is but one option of many available to a screw designer to provide a self-drilling tip.
The Better declaration also stated that in “US patent 5,234,301 all of the self-tapping screws illustrated have a tapered lead-in portion …on the thread in the manner of the feature specified in [the then] claim 9 of the Deutsher application.”
Claim 9 as it then was, reads as follows:
“9. A screw threaded fastener as claimed in anyone of claims 1 to 8 wherein the screw thread is tapered over a part of its length whereby a crest diameter of the screw thread progressively increases from a minimum to a maximum value towards the head of the fastener.”
The invention of US patent 5,234,301 (Grossberndt et al) 10 August 1993 is a self tapping screw of approximately 6mm in diameter for tapping into a sheet metal of a thickness up to approximately 1mm. The screw comprises a headed portion, a thread shank, and a cylindrical member following having a diameter less than the threaded pitch merging into a tapered hole forming member. The thread shank merges with the cylindrical member over a taper of approximately four threads, which dimension corresponds to a fourfold sheet metal thickness. The screw creates a nozzle shaped hole in the sheet metal by friction of the tapered hole forming member against the sheet metal such that the sheet metal becomes plastic. Upon further tapping the sheet material passes over the cylindrical member, which causes radial expansion of the hole followed by engagement of the thread with the plastic deformed sheet metal material.
There is nothing in the US document, which would suggest that the thread is a buttress thread. The argument submitted by the opponent is that this screw could be used in a different manner, namely it could be used as a self drilling fastener in the manner of the specification under opposition. But, apart from the Better declaration, there is no further evidence that a person skilled in the art would read this US document in that particular way. It is my view that this citation teaches away from such as conclusion. It is simply not a teaching of self drilling fasteners.
Further, in my view, the use of the US patent for an explanation of how the “Better screw” functions is not sound in patent law. The documents cannot be added together to form a single disclosure as the US document is not alleged to be common general knowledge. Thus the disclosures in US 5,234,301 cannot be imported into the features of the “Better screw”.
From my inspection of the images of the “Better screws” I can see a screw thread, followed by a cylindrical portion terminating in a tapering portion. The cylindrical form from the images has a diameter less that the diameter of the threaded portion. Mr Morcom submitted that the thread was a buttress thread, a submission that was not controverted by Mr Hind. However, Mr Hind submitted that the drilling portion of the then claim 1 was not evidenced by the Better screw images.
The declaration of Mr Roberts makes reference to this exhibit.
“The declaration of Herman Better exhibits at “HB-O1” images of screws said to have been purchased in 1995. These are not self-drilling screws which feature a drilling portion which terminates at a drilling tip. It is not clear that these screws were intended to be used in the manner described in US patent 5,234,301 or as a bullet tip, but even if they were they would not be suitable for use in the principal application intended for the screw of the invention, namely the fixing of roofing and cladding to thin metal battens and which will involve, typically, the penetration of two thicknesses of metal and, sometimes, three metal thicknesses.”
Mr Roberts makes two points; that the Better screw was not self drilling and that the Better screw could not function in the fixing of roofing to metal battens when the latter was in overlapping relationship. The first point is well taken; the second goes to function or purpose that is absent from the then and current claim 1.
However, the citation in this case is not the physical screw but rather the photograph of the screw. The issue of a photograph being used as anticipation was considered in Van der Lely NV v Bamfords Ltd, (1963) RPC 61, where it was stated:
“If the photograph is to be held to prove anticipation it must be possible for that man to work from the photograph, and, without himself adding a scintilla of invention, to prepare the necessary drawings and ultimately by a process of trial and error to produce a workable machine which incorporates all the integers in the appellant’s claim 1.”
It is the photograph itself that constitutes the alleged disclosure and not the thing itself. The alleged novelty resides in the photograph not the thing that has been photographed, as the latter would go to prior user, which has not been alleged in the present case. Inspection of the photograph reveals the use of a buttress thread and a bullet tip. It is not possible from visual inspection to determine the angles of the buttress. It is further not possible from the photograph to demonstrate any of the other claimed features of the dependent claims. I note that there is no submission that the illustrated screw is capable of functioning as a roofing fastener in a manner described in the specification in suit and while this is not the subject matter of claim 1, there are no tests in evidence to demonstrate its effectiveness for driving into thin metal. I also note that the tests referred to by Mr Better in his declaration are not in evidence.
Therefore, the “Better screws” do not render claim 1 (as amended by the first statement of amendments) as lacking novelty. However, in relation to claim 1 as accepted and noting the absence of the requirement for fixing the fastener into thin metal and the lack of a drilling tip, claim 1 would be rendered not novel in view of the “Better screw”. In relation to the current claim 1 (as amended by the second statement of amendments), in addition to my comments on the claims as first amended the “Better screw” additionally does not possess a tapering thread. The “Better screw” does not deprive current claim 1 of novelty.
US 5,304,023 (Toback et al) published 19 April 1994
Current claim 1 as amended by the second statement contains the features of old claims 1, 6 and 9. As previously stated, this document was brought into evidence under regulation 5.11.
The invention of this patent relates to fasteners, which are employed to fasten metal panels such as sheet metal, and particularly relates to fasteners, which are employed for fastening panel roofs. The problem to be overcome includes movement of the fastener due to wind loads.
“Roofing systems for metal buildings frequently employ metal roofs comprising corrugated or trapezoidal metal panels which are fastened by conventional “sheet metal fasteners”. A roofing composition is then applied to the panels to provide a water barrier. While conventional metal roof systems have proved to perform satisfactorily over time, it is indisputable that metal roofs do have a significant failure rate. A principal source of failure occurs when the fasteners loosen. If there is poor drainage or the seam seals fail, moisture may migrate to the vicinity of the fastener opening. The moisture may then lead to corrosion, which eventually may attain a magnitude that jeopardizes the integrity of the roof system. A number of metal roof coating systems have been introduced to compensate for the failure problems of the conventional metal roof by enhancing the water barrier system of the roof. However, fastener failure remains a significant problem if there is inadequate roof securement.
In typical metal roof construction, the metal panels are secured by numerous sheet metal fasteners. The sheet metal fasteners are conventionally self-drilling threaded fasteners, which in tandem with a washer are driven by torque guns into the metal supports. The fasteners are typically installed from on top of the roof panel in a routine labor intensive process. The panels will eventually tend to move or slide due to structural settling and also due to environmental factors such as wide temperature differentials, intense heat, winds, and the impact of rain and snow including their collection onto the roof structure. The sliding-type movements of the panels tend to force the fasteners sideways and eventually upwardly out of locking relationship. The immediate vicinity of the panel surrounding the fastener opening, which is exposed by the loosened fastener, becomes a source of collection of moisture and ultimately a source of corrosion, so that the fastener provides no securement function whatsoever. If fastener failure becomes excessive, the roof system will essentially fail and repair or replacement will be required.”
The solution proposed by the citation is to provide a fastener for fastening a pair of metal panels. The fastener comprises a head having an underside, which includes a recess. The head may have a rounded or hex head-type configuration including an integral washer or flange extending radially therefrom. The recess extends axially from the underside of the head with the recess surrounding the proximal head portion. A spiral buttress thread traverses the shank. The support surface of the buttress thread is oriented at an angle between 0 degrees and 15 degrees to a normal line to the axis of the shank. The second driving surface, which defines the buttress thread, is inclined to the normal line at an angle between 25 degrees and 65 degrees. The distal tip of the shank includes a self-drilling configuration for drilling into the metal panel, such as a dual fluted drill tip-type arrangement.
The citation discloses the flutes and drilling tip of the invention as defined by current claim 1.
“The distal portion of the shank terminates in a pair of fluted slots 46 which are structured to provide a drill tip for self-drilling into the metal panel. The distal portion may also be configured for self-piercing into the metal panels. The thread configuration provides for self-tapping. The slots 46 are oriented at an angle of approximately 26 degrees to the axis A of the shank.”
Optionally, in the screw treaded fastener of the citation, a sealant and/or adhesive coating may be applied to the upper portion of the shank and the recess.
In use, the citation discloses that when the fastener is driven through a pair of metal panels, the support surface of the buttress thread engages the underside of the bottom panel and the head is forced downwardly toward the top surface of the upper panel thereby mechanically locking the panels together. The citation discloses that “[T]he combination of the buttress thread and the drill tip enhances the resistance of the fastener to turn-out.”
As the citation does not disclose the feature of tapering screw threads claim 1 is novel. While, I consider that the subject matter of claims 2 to 8, 14, 15, 17 are explicitly disclosed in the citation, an essential feature of the tapering screw threads is not disclosed and hence the claims 2 to 20 are novel.
However, it should be noted that the claim 1 that was the subject of the hearing (those that were amended by the first statement of amendments) clearly lacked novelty in view of US patent 5,304,023.
Summary of novelty
In summary, none of the cited documents disclose the combination of the tapered thread with the specific drilling tip. Hence, the current claims are novel. However, claim 1 as amended by the first statement of amendments, clearly lacked novelty in view of US patent 5,304,023 and that claim 1 as accepted lacked novelty in view of the “Better screw”.
INVENTIVE STEP
Ajax asserted that the claims prior to the second statement of amendments lacked an inventive step. Although the claims are now differently drafted, it is still relevant to consider the evidence as filed against the claims as they were considered during hearing of the opposition, after which, an assessment on the inventiveness of the current claims will be made.
The statutory basis for inventive step is expressed in Section 7 of the Patents Act 1990 which provides that:
“(2) .... an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
Person skilled in the art
ITW suggested that a person skilled in the art was one who was skilled in the design and manufacture of threaded fasteners and especially in the design and manufacture of self drilling fasteners. Ajax submitted that a person skilled in the art was one whose experience was of a more general nature. This would include persons whose experience encompassed the design, manufacture, and installation of cladding for buildings. While I accept that a more generalist skilled person may be able to make statements about the general state of the fastening art, my view is that a person skilled in the art would be one who was skilled in the design and manufacture of self drilling threaded fasteners for use in the building industry.
Dr Fernando is an employee of Ajax and has been since about 1997. Prior to this work he was employed by VIPAC Engineers and Scientist Ltd and was involved in wind tunnel testing of proposed buildings. ITW submitted that while Dr Fernando may be a skilled person in the art at the current time, he was not a skilled person in the art at the date of filing the patent application and therefore cannot attest to the state of the art at that time. I cannot fully agree with ITW on this. I believe that Dr Fernando could attest to what was common general knowledge at the relevant time based upon his experience. However, the question of the weighting of his evidence is another matter and it may be that little weight can be placed upon his statements in relation to what was common general knowledge at that time.
Mr Howell is an independent witness who practises as a specialised consulting engineer. From 1981 to the present, he has worked in the Australian building industry. Initially he worked for VIPAC Engineers and Scientist Ltd but later moved onto other consultancies. In 1983 through VIPAC he was involved in the design of a cladding system for a chimney stack in Hong Kong. His declaration also states that in 1998, after the priority date of the specification, he was involved in designing a clamping system and used a fine buttress thread on a fastener and its associated nut. He also attested that as part of his education as an engineer the knowledge of buttress threads was taught. Ajax submitted that his expertise as a structural engineer was relevant and that he would be considered a man skilled in the art. However, Howell admits to lacking the specialist knowledge of Dr Fernando in relation to threaded fasteners and while he can attest to what was common general knowledge in the building industry, he would lack the expertise to make statements on common general knowledge in relation to self drilling threaded fasteners.

Mr Better is another independent witness for Ajax. His expertise lies in stress analysis in steel components, which included threaded fasteners. He states that he has “extensive experience in the stress analysis and testing of threaded fasteners including screwed fastenings and bolted joints and this has included pull-out tests on roofing materials.” Better like Howell defers to Dr Fernando’s expertise in threaded fasteners. So while Better can attest to the general state of knowledge in the fasteners in the building industry he lacks the expertise to make relevant comments on the design and manufacture of self drilling threaded fasteners.
Roberts is one of the inventors of the current application who has been employed by the applicant since 1981. He is also an inventor of many fasteners. He is clearly a person skilled in the art. ITW suggested that he was perhaps the most skilled person in Australia.
In my opinion, the witnesses in the opposition have the experience to attest to their general understanding of the state of common general knowledge of fasteners as used in the building industry in Australia. Ajax submitted that its witnesses, while not being experts in fasteners or having the day-to-day experience in that industry, nevertheless had the experience to understand the issues. In my opinion, all of the witnesses have sufficient connection to the building industry in Australia to be able to make comments on the common general knowledge in that art. However, only Mr Roberts and Dr Fernando possess the requisite knowledge and Dr Fernando’s evidence may not carry much weight because his experience began around the time of the priority date of the application.
The problem to be overcome
The problem to be overcome is the failure of fasteners in high wind loadings. In particular, the evidence discloses that the inventor sought to overcome the problems with using self drilling threaded fasteners. The specification refers to the prior art drilling tips and illustrates what appears to be a single faced drilling tip that looks remarkably like a type 17 screw. While type 17 fasteners were specifically designed for use with wooden battens they found use for fastening cladding material to metal battens. As such it had the appropriate drilling tip that was suitable for drilling into a wooden batten, which was not the dual fluted drilling tip described in the specification. The Roberts declaration attests that this type of fastening was compliant and could be used to fasten metal sheeting to metal battens. Mr Roberts sought to overcome the shortcomings associated with this type of screw. For some years, he failed to solve the problem, which he initially attributed to the drilling tip. Later, he realised that the thread of the fastener was bending the thin metal sections of the battens and he choose a buttress thread, which overcame the problem.
The opponent, Ajax submitted the proper starting point was the commonly used roof fasteners that were manufactured by both parties. This form of fastener had the appropriate drilling tip and a spiral thread. Ajax submitted the problem to be overcome was pull through and the obvious solution was to use a buttress thread. However, there is no evidence that there was any problem with these types of fasteners.
Ajax submitted that the common general knowledge of buttress threads could be transferred to the application at hand as the principles were the same. Consequently, Ajax submitted that it was obvious to use a buttress thread on known fasteners, which were suitable for the purpose of fastening metal roofing to underlying metal batten.
Common general knowledge
Ajax alleged that all of the elements of the threaded fastener were common general knowledge, in particular, that buttress threads and fluted drilling tips were common general knowledge. Ajax also alleged that a number of fasteners, SteelFIXX, HiFIXX, and Pushtite, were also part of common general knowledge in the art. SteelFIXX and HiFIXX were manufactured by Ajax. An equivalent fastener manufactured by IWT (or its stated predecessor Buildex) is Higrip and while it was suggested that this might be common general knowledge, nothing depends upon it. Pushtite were alleged sold by Ajax before the priority date.
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 292, Aickin J. stated:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The Roberts declaration (one of the inventors and a declarant for ITW) attested that buttress threads were well known but not in the context of a self-drilling screw. He contrasts the elastic deformation that would occur in a nut and screw combination with the plastic deformation that occurs when the fastener of the invention is screwed into thin metal sheets
“It was not obvious to me that a buttress thread would solve the difficulties I was facing in designing a suitable self-drilling screw. The thread form I used was derived from the realisation I had that it was desirable to reduce the plastic deformation of the surrounding metal which arises in a self-drilling, self-tapping, action which occurs with this type of screw in this type of application. The considerations involved here are significantly different to those involved in the cooperation of pre-formed male and female threads of complementary form …”
In contrast to this statement, both the Howell and Better declarations attest that not only were buttress threads well known before the priority date but that they were used in situations requiring “improved pull-out strength in the situation where failure of the fastened joint occurs because of tensile stress failure of the substrate into which the thread is threaded”. Howell, additionally, attested that he used buttress threads in a clamping system for this very reason. But, as this use occurred sometime in 1998, which is later than the priority date, it is of no significance. Even if the use occurred before the priority date, it related to mating fastening screw and nut configurations. Dr Fernando supported his declaration with copies of relevant pages from text books, catalogues, and standards. Howell and Better make similar remarks to Dr Fernando. However, while some of these documents suggest that the buttress thread is found in association with mating screw and nut configurations, the bulk of the evidence suggested that buttress threads per se were well known.
Thus, while I can accept that a buttress thread was well known, it is not apparent that it was common general knowledge to use a buttress thread on a self drilling fastener. Ajax alleged that the pole steps of exhibit SF-02 uses a buttress thread on its fastener to reduce timber failure in a tensile failure mode. ITW, on the other hand, suggest that this is not a fastener for thin metal, it possesses a relatively long shank, and in all probability, the stresses act transversely and not axially. Further, there is a difference between elastic deformation and plastic deformation that differentiates the fastener of the current claim from the prior art screw and nut configuration. Therefore, while a buttress thread is well known in the fastening industry it is only in combination with an appropriately threaded nut that it is found. There is no compelling evidence that convinces me that it was common general knowledge in the self drilling fastening art to use a buttress thread.
Dr Fernando further attested that the reasons for choosing a buttress thread from any other thread are also well known. Ajax argued that buttress threads are used to increase pull-out strength in situation where tensile strength failure occurs. This conclusion would appear to self evidently follow from its design. However, this does not mean that choosing a buttress thread from other threads is an obvious choice to make. And, while I can accept that a buttress thread would increase pull out strength, it needs to be shown that it would be obvious to a person skilled in the art to choose a buttress thread for a self drilling screw fastener. At this point it is relevant to consider what the declarants state was the common general knowledge in the art. In almost identical terms they state that it was common general knowledge that “a buttress thread provides improved pull out strength in the situation where failure of the fastened joint occurs because of tensile stress failure of the substrate into which the screw is threaded.” ITW submitted that the declarants do not have or did not have at the relevant time the experience to make this statement. There is some merit in ITW’s submission and while I conclude that the witnesses have not established that the feature is common general knowledge in the self drilling screw fastener field, I am satisfied that they can make statements about fasteners in general that are used in the building industry.
The Fernando declaration also alleged that a drilling tip was common general knowledge in the industry. This does not appear to be contested and the specification confirms that they are known. I accept that two fluted drilling tips were not only common general knowledge in the building art in general but also in the art of self drilling fasteners.
ITW further submitted that care should be exercised when attributing weight to the opponent’s evidence. Mr Hind referred to Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] 56 IPR 248 at paragraphs [45]-[46] in which the following was stated;
“45 The manner in which the evidence of some of the experts in the present case was bought into existence suggests that relatively little weight should be given to certain of that evidence. For example, witnesses were provided with a copy of the Patent. They were either provided with a large number of other documents or found them in response to the task that was set them. That is hardly calculated to result in objective evidence as to what the hypothetical uninventive but skilled worker would have done. To give the Patent to a prospective witness is tantamount to leading the witness. Further, unless the other documents were part of the common general knowledge in Australia before the Priority Date, they are not relevant to any question of obviousness.
46 Evidence by “experts” on the question of obviousness it is not always likely to be helpful (see Firebelt Pty Limited v Brambles Australia Limited [2002] HCA 21 at [46]). Indeed, where evidence is obtained in circumstances such as just described, the evidence is not likely to be helpful at all.
As noted by ITW, several of the key statements of the declarants were expressed in identical wording. However in this case, it was found that the key statements relating to the use of buttress threads were not accepted and consequently little weight was placed upon their statements.
Test for obviousness
There are a number of tests for obviousness. The test that is particular relevant to this case was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293, 29 ALR 29 as follows;
“In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.” per Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293, 29 ALR 29.
Ajax made a number of submissions on inventive step that relied upon the individual elements of the screw fastener being common general knowledge.
1. SteelFIXX, HiFIXX and buttress thread
SteelFIXX and HiFIXX are Ajax fasteners. It is alleged that these were in common use before the priority date and that the applicant also had fasteners of similar configuration (Higrip). Ajax argued that these fasteners formed part of the common general knowledge of the art and that they formed the proper starting point for the invention.
“The alleged invention is….(a) the extremely well known configuration shown by the SteelFIXX screw with a well known buttress thread added for a well known benefit”
These fasteners contain a spiral thread and a self drilling tip of the two fluted type. The SteelFIXX is described as used for “fixing metal to metal (outdoor) -roofing and cladding”, while HiFIXX is described as securing roofing profile to .7m[m] steel battens. ITW suggested that the invention dealt with thinner metal. However, the specification gives a range of .4 to .8mm so that the HiFIXX fasteners are capable of fixing roofing material to battens of this material. There does not seem to be any dispute about the fluting tip of these fasteners. The specification acknowledges these as known. Fluting drilling tips are part of the common general knowledge in the art before the priority date. Ajax allege that buttress threads are common general knowledge and that it would be obvious to a person skilled in the art to modify the spiral thread to a buttress thread in order to increase the pull through strength of the screw. ITW submitted that the invention took some time to be realised by a very skilled person in the art and hence it would not have been obvious to a skilled person to modify the screw threads of these known fasteners. While it has been agreed that the use of a buttress thread in thread and nut configurations is common general knowledge, there is no evidence that the use of a buttress thread per se was part of the common general knowledge of self drilling fasteners in the building art in Australia. Consequently, there is no lack of an inventive step in the light of these known fasteners.
2. Pushstite fastener and cutting tip.
The Pushtite fastener forms one of the triobular family of engineered fastenings which is designed to be pressed into a hole. The thread on the Pushtite fastener is a buttress thread (having angular dispositions of 70⁰ and 10⁰). It is designed to be pressed into a hole in a thermoplastic material with a single straight line stroke. The Pushtite is described as providing exceptional pullout resistance. Ajax alleged that the drilling tip of this fastener can be replaced with the fluted drilling tip and so a screw complying with claim 1 as amended by the first statement is constructed.
“The alleged invention is ….(b) the well known Pushtite screw with a well known cutting tip added for a well known benefit.”
ITW submitted that the Pushtite fastener would not satisfy the requirements of s7(3) as the screw would not reasonably be expected to be ascertained as it is not a self drilling screw, it is not a screw designed for metal and the holes in the thermoplastic material are pre-drilled. I would agree with this submission and cannot see how a skilled person would consider it relevant. Dr Fernando, in his declaration, states that the Pushtite screws are not stated as being unsuitable for fastening metals, and as they sit side-by-side in the catalogue with other screws and given that multiple uses are made of screws, it would thus be unlikely that the Pushtite fasteners were not used for fastening thin metal substrates. I am unable to agree with this submission; it is speculative and unsupported by any evidence. Furthermore, it is not apparent that it would be obvious to a person skilled in the art to combine the Pushtite screw with the self drilling tip.
3. All features are common general knowledge
Ajax alleged that there are 4 types of drilling tips that are well known and form part of the common general knowledge in the art, namely;
1. Two flutes as in the application and in Ajax catalogue of exhibit SF-01,
2. Single flute e.g. type 17 as referred to by the inventor in his declaration, also in Ajax catalogue of exhibit SF-01,
3. Sharp point tip, and
4. Bullet shaped tip as illustrated in HB-01 exhibit.
Ajax submitted that the alleged invention is “the extremely well known configuration shown by the SteelFIXX screw with a well known buttress thread added for a well known benefit.” In other words, the major thrust of Ajax’s submissions was that all of the elements of a screw thread (the shank, the drilling tip, the thread profiles etc) are well known (i.e. they form part of the common general knowledge in the art) and all that the applicant has achieved is to combine the appropriate elements for the specific use that is intended.
However, as Minnesota Mining (supra) states it is the selection of the integers that must be shown to be obvious, not the features per se. ITW pressed the point that there was no evidence in the opposition that the “claimed invention is an obvious combination as applied to self-drilling screws”: citing Elconnex Pty Ltd v Gerard Industries Pty Ltd 25 IPR 173 at 184 as follows
“where questions of inventiveness arise in respect of a combination patent it is the inventiveness of the combination as a whole that must be examined, it is impermissible to determine inventiveness by a piecemeal examination integer by integer: Minnesota Mining (supra) 44 CLR 253; 29 ALR 29.”
and Flexible Steel Lacing Company v Beltreco Ltd and Another 49 IPR 331, [2000] FCA 890 as follows;
“But it is the inventiveness of the combination as a whole that must be examined; it is impermissible to determine inventiveness by a piecemeal examination, integer by integer: Elconnex Pty Ltd v Gerard Industries Pty Ltd 25 IPR 173 at 184.”
In Aktiebolaget Hässle and Astra Pharmaceuticals Pty Limited v Alphapharm Pty Ltd, Wilcox, Merkel and Emmett JJ stated:
“71 While manufacturers’ literature may well play an important role in the work of a hypothetical formulator, as Lehane J observed at para 42 [of the decision under appeal], in the light of the authorities it would be a “bold” submission to contend that material, which is not part of common general knowledge, can be relied upon to determine the question of obviousness. Nevertheless, by a process that his Honour characterised as taking the routine steps that the hypothetical formulator would take for the purpose of formulating a drug, such documents were held to be admissible for the purpose of raising “general ideas.”
72 If that process were permissible, the concept of common general knowledge would lose much of its significance. If it is shown that the particular skilled worker in the field would, as a matter of routine, read literature beyond the common general knowledge of the field, the distinction becomes quite meaningless. The question is not whether a skilled worker conducting a literature search would find pieces from which there might have been selective elements which make up a patent - Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980)144CLR 253 at 293. What might be found by a diligent searcher is not the same as “common general knowledge.”
The High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [78] stated that the “inventiveness of particular integers is irrelevant, both to the inventiveness of a combination of them and to whether there is fair basing.” So the mere fact that manufacturers’ catalogues illustrate different aspects of the invention does not necessarily mean that they can be put together to arrive at the claimed invention. Even if all of the elements were common general knowledge, and on this I have already expressed my opinion, there is no evidence that a person skilled in the art would combine them in a non inventive manner. In other words, even if Ajax had established that it was common general knowledge to use a buttress thread in the situation of a self drilling fastener to “improved pull-out strength in the situation where failure of the fastened joint occurs because of tensile stress failure of the substrate into which the thread is threaded”, there is no evidence that it would have been obvious to a skilled person in the art to use the buttress thread on a self drilling fastener.

Furthermore, in coming to this conclusion I gave significant weight to the evidence of Mr Roberts who attested to the difficulty he had experienced in developing the fastener. Clearly, it was a long felt want to improve the type 17 screw and while in all probability he could well have tried configurations like SteelFIXX etc in devising a solution, it took some considerable time to realise where the problem lay. It may be that when the problem was recognised that the solution became obvious (to the inventor who is considered to be more skilled in the art that the skilled person of s7), in which case the inventiveness may lay with the recognition of the problem and not the solution.
“the perception of the true nature of the problem was the inventive step which, once taken, revealed that straightforward experiments will provide the solution.” Wellcome Foundation Pty Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 281
The specification refers to the identification of the problem as a discovery, which came about as a result of Roberts’ inspections of the failed assemblies.
“It has been discovered that such failures are due at least in part to the distorting effect of the thread form of conventional fasteners on the thin metal battens.” [my emphasis]
While Ajax’s submissions related to the correlation of the problem with its solution, there is no evidence to suggest that the identification of the problem was obvious. The evidence indicates that this recognition took some time to occur from a person who is considered to have considerable skill in the area. Notwithstanding what I have already said about obviousness, it seems to me and this is supported by the evidence that the recognition of the problem was non-obvious.
After the second statement of amendments, the claims were restricted to including a fluted drilling tip and a tapering thread. The former has already been acknowledged and accepted as forming part of the common general knowledge in the art. In the evidence, the “Better screw”, US 5234301, and the “Taptite” screw of exhibit SF-06 all illustrate a fastener having a tapering thread. In the Fernando declaration, a product called ColourFIXX of exhibit SF-01 is stated as illustrating a tapering thread. Dr Fernando considered that the use of a tapering thread is simply a design choice. The specification attributes a benefit to the use of the taper. As this feature was not the main set of features under consideration by the parties, it is not surprising that there is little comment on it. While this is enough to suggest that it is known in the art, it is not sufficient to establish that the feature is common general knowledge in the art. Consequently, current claim 1 possesses an inventive step.
The Better screw
As referenced above, this screw was allegedly sold in a store before the priority date. ITW state that there is no documentary evidence associated with the screw and that there is no evidence that it can function as a self drilling screw. Furthermore, as ITW pointed out, it is difficult to consider that a skilled worker in the art would be able to ascertain the screw and as noted above the “Better screw” does not possess a tapering thread. Consequently, the “Better screw” does not render claim 1 (as amended by the second statement) obvious.
US 5,304,023
Having considered novelty against US 5304023, it remains to be decided whether claim 1 lacks an inventive step. As previously stated the only difference between claim 1 and the fastener of the citation is the presence of the taper on the buttress thread. I have already commented upon this feature and while the feature appears in the art, it has not been established that this feature is common general knowledge in the art. Hence, current claim 1 possesses an inventive step.
Mr Hind in his submissions of 7 February 2005 argued that the document was not one that a skilled person could “be reasonably expected to have ascertained, understood, regarded as relevant”. His argument is that if neither the Australian Patent Office nor the opponent or its advisors had located the document then it was simply implausible that a skilled person in the art would be able to do so. While this may be superficially attractive, this is not the relevant test. The question, in part, is whether a skilled person could be reasonably expected to have ascertained and understood the document. I note that there is no evidence that any one the relevant parties had at a relevant time undertaken the searches that ITW submitted should have been done.
In a recent decision, Emperor Sports Pty Limited [2004] APO 26 (1 October 2004), the delegate considered the term “ascertained” from section 7(3).
“The term "ascertained" has been given judicial consideration, particularly in recent decisions in the Federal and High Courts. These are: Dyno Nobel Asia Pacific Ltd v Orica Australia Ltd [1999] FCA 1369; Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 (23 May 2002); E.I Dupont de Nemours and Co. v Imperial Chemical Industries PLC [2002] FCA 230; and Lockwood Security Products Pty Ltd v Doric Products [2003] FCAFC 29.”
In analysing the authorities, the delegate concluded:
“[70] Having established it is reasonable for the skilled person to conduct literature searches as a means of remaining informed, it follows that person could reasonably have been expected to ascertain the cited prior art documents.”
And at paragraph [71]:
“[71] Generally speaking, it should be considered that a document dealing with the same technical issues would have been ascertained. (See Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited [1997] APO 40).”

100. Therefore, it is not relevant whether the Australian Patent Office, the opponent, or its advisors had conducted a search. The test is whether it is reasonable for the skilled person to conduct a literature search, which included patent documents. I believe that a skilled person in the art would realise when developing a new threaded fastener that patent documents along with trade documentation would be a means of obtaining relevant technical information. Thus, the cited document is one which a skilled person in the art would have been reasonably expected to have ascertained and understood.
101. ITW further argued that the document was not “relevant” because it does not solve the problem that the inventor was trying to solve. While, I have already discussed the document in detail, ITW raised specific issues on relevance. ITW submitted that the fastener of the citation was for clamping intergagement of two metal sheets whereas the problem to be overcome related to the connection of a crest with the underlying batten and that the purpose of the buttress thread was for clamping action not pull-out. Current claim 1 does not contain any relevant restriction that would support these differences. Accordingly, I do not agree that the document is not relevant. However, the discussion is somewhat moot as I have concluded that current claim 1 is both novel and inventive over the document.
Summary of inventive step
102. In summary, the current claims possess an inventive step in the light of the art cited in the opposition including that of regulation 5.11.
CONCLUSION
103. As a result of the second set of amendments, the opposition fails on all grounds. I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision.
COSTS
104. Costs normally follow the event. While the claims were amended under s104 after the service of evidence-in-support, they were also amended after regulation 5.11 was invoked. The claims as amended by the first statement of amendments removed some of the grounds of opposition. The claims as amended by the second statement of amendments rendered the claims novel and inventive. As none of the material raised by the opponent at the hearing deprived the current claims of novelty and inventive step, I consider that it is appropriate to award costs up to the date of the hearing to the opponent and to make no award of costs thereafter.
Delegate of the Commissioner of Patents
G.M.Cox
29 March 2005-03-29
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Morcom Pernat, Melbourne