Alterm National Pty Ltd v Magisurf Pty Ltd - [2013] APO 38

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Alterm National Pty Ltd v Magisurf Pty Ltd [2013] APO 38

Patent Application: 2006292026
Title:Method of forming a termite barrier

Patent Applicant:                   Magisurf Pty Ltd
Opponent:  Alterm National Pty Ltd
Delegate:  O L Haggar
Decision Date:  26 June 2013
Hearing Date:  13 December 2012 in Canberra
Catchwords:  PATENTS – section 59 – opposition to the grant of a patent – construction of claims – claims phrased in terms which when read in context would be understood by the skilled addressee - sufficiency of description – whether examples are required – insufficiency not established - whether the claims are clear – whether the claims are fairly based – certain claims found to lack clarity and/or fair basis - whether the claimed invention is novel – anticipatory use or publication not established - whether the claimed invention involves an inventive step – person skilled in the art – common general knowledge – ascertained – whether the skilled person could reasonably be expected to consult patent literature – obviousness not established - opposition partly successful – costs awarded against the applicant

Representation: Patent Applicant: Jonathan Lewis, patent attorney of Cullens, Brisbane
Opponent:Greg Gurr, patent attorney of Spruson & Ferguson, Sydney

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006292026

Title:Method of forming a termite barrier

Patent Applicant: Magisurf Pty Ltd
Date of Decision: 26 June 2013
DECISION
The opposition succeeds on the ground that the specification does not comply with section 40(3). The applicant is allowed 60 days from the date of this decision to file suitable amendments. Costs according to Schedule 8 are awarded against the applicant.
REASONS FOR DECISION
Background

Patent application 2006292026 (the present application) was filed by Magisurf Pty Ltd (Magisurf) on 12 September 2006 under the provisions of the Patent Cooperation Treaty as international application PCT/AU2006/001340 claiming priority from provisional application 2005905011 filed on 12 September 2005. The present application was advertised accepted on 16 December 2010.
Alterm National Pty Ltd (Alterm) filed a notice of opposition to the present application on 16 March 2011 followed by a statement of grounds and particulars on 16 June 2011. The statement was amended under regulation 5.9 on 3 November 2011 and again on 3 September 2012.
The service of evidence in support, evidence in answer and evidence in reply was eventually completed on 9 August 2012 after both parties had been granted a number of extensions of time without objection.
On 3 February 2012 Magisurf filed a request under section 104 to amend the claims of the specification. Leave to amend was granted and advertised on 12 July 2012. The amendments were allowed unopposed on 1 November 2012. Consequently, the opposition has proceeded on the basis of the amended claims.
The matter was heard in Canberra on 13 December 2012. Magisurf filed additional submissions on 21 December which were objected to by Alterm on 15 January 2013. However, as these further submissions were not considered to add significantly to the submissions already on file, responding submissions were not sought.
The Specification
The specification indicates that the present invention relates to a method and means for preventing or minimising termite attack or infestation which is particularly but not exclusively suited to applications in buildings.
The specification initially explains that termites must conceal themselves from direct sunlight and thus their attack or infestation of buildings commonly results from subterranean migration from their nest to food sources. The areas for subterranean migration may include cracks and mortar joints in the outer walls, footings or slab cavities of a building. When travelling across the exterior walls of buildings, for example, to their food source, the termites build mud-like tunnels or “plasters” so as to remain protected from sunlight.
The specification next describes various known methods of forming physical termite barriers that have resulted from government regulations and other difficulties relating to the previous use of chemical barriers. An approach adopted in buildings having a concrete slab involves the use of physical termite barriers such as stainless steel mesh or barriers formed in-situ which extend between the slab and the external masonry walls of the building. The physical barriers generally terminate at or near the edge of a mortar course in the external masonry wall. However, it has been found that termites can breach these barriers through imperfections in the mortar or the bricks/blocks of the masonry wall and circumvent the barrier with a short plaster that simply extends across the edge of the barrier in a manner that makes the detection of such plasters difficult.
The present invention aims to overcome or alleviate this shortcoming.
The specification as amended ends with nineteen claims of which the independent claims are in the following terms:
“1. A method of inhibiting the migration of termites into a structure wherein the structure comprises a termite resistant base support supporting an external masonry wall, the method including applying a termite resistant sealant as a liquid, from the termite resistant base support over an exterior face of the external masonry wall and an exterior face of at least one exposed course of mortar at least partially penetrating the base support, masonry wall and mortar whereby a band of sealant is formed across a portion of an exterior face of external masonry walls of the structure to form a visual inspection zone on an exterior exposed face of at least a portion of the external masonry wall and at least a portion of an exterior exposed face of the termite resistant base support.
2. A method of inhibiting the migration of termites into a structure wherein the structure comprises a masonry support wherein said method includes applying a termite resistant sealant as a liquid, extending over or through the masonry support and onto any exterior faces of the masonry support to provide an inspection band on an exterior exposed face of at least a portion of an exterior masonry wall and at least a portion of the masonry support viewable from the exterior of the structure, which inspection band extends down to the masonry support wherein the sealant at least partially penetrates the masonry support and masonry wall.
14. A method of inhibiting the migration of termites into a structure wherein the structure comprises a concrete slab, a footing and an external masonry wall, the concrete slab and the external masonry wall being supported on the footing, the external masonry wall abutting the slab, the method including applying a bead of termite resistant sealant to the joint between the slab and a course of the bricks or blocks of the external masonry wall and further applying a termite resistant sealant as a liquid extending from the slab, over the bead of termite resistant sealant and at least partially over the course of bricks or blocks and extending onto an exterior face of the external masonry wall to provide an inspection band on an exterior face of at least a portion of the external masonry wall and at least a portion of an exterior exposed face of the concrete slab or footing viewable from the exterior of the structure wherein the sealant at least partially penetrates the bricks or blocks, masonry wall and concrete slab or footing.”
Claims 3 to 11, 13, 18 and 19 are to a method as claimed in any one of the preceding claims. Claim 12 is to a method as claimed in either of claims 10 or 11. Claim 15 is to a method as claimed in claim 14, and claims 16 and 17 are to a method as claimed in claim 15.
It can be seen from the foregoing that the present invention generally resides in a method of inhibiting the migration of termites into a structure having an external masonry wall and a support or footing by applying a termite resistant sealant in liquid form which extends from the support or footing over an exterior face of the external masonry wall so as to provide a visible inspection band across which termites would need to construct plasters in order to bridge the termite resistant sealant.
The Evidence
The evidence in support consists of statutory declarations by Te-Huia Hakopa dated 7 October 2011 with exhibits THH-1 to THH-7, and Clyde Freeman dated 7 October 2011 with exhibits CF-1 to CF-13.
The evidence in answer consists of statutory declarations by John Charles Hitchen dated 8 March 2012, Anthony William Kennedy with exhibits AWK-1 to AWK-9, and Jonathan Stretton Lewis dated 9 March 2012 which in turn exhibits a statutory declaration by Ronald James Whitmore dated 15 November 2010.
The evidence in reply consists of statutory declarations by Te-Huia Hakopa dated 2 July 2012, and Clyde Freeman dated 8 August 2012 with exhibits CF-14, CF-15 and CF-17 to CF-20.
Mr Lewis appeared for Magisurf in these proceedings. Mr Whitmore is the only independent declarant. He discusses some differences between what he refers to as Magisurf’s “new product” and the “original product” disclosed by Australian patent specification 719812, but does not identify the precise nature of the former product and in particular its relationship to the presently claimed invention. This is hardly surprising since Mr Whitmore’s evidence was adduced during examination of the present application and, as a consequence, could not have possibly taken account of the claims as they now stand. His evidence is therefore of no assistance to Magisurf.
The remaining declarants are each stated to have acquired experience in the termite proofing industry. While there was some debate as to the credibility of their evidence, I accept that all are in a position to provide evidence having some probative value. I would however mention that the evidence of Mr Hakopa is based on the claims as accepted (i.e. before amendment). In the event, this has not influenced the reliance I have placed on it.
Grounds of Opposition
The grounds for opposing the grant of a patent which have been pursued by Alterm are that:
- The claimed invention is not novel;
- The claimed invention does not involve an inventive step (obviousness); and
- The specification does not comply with section 40(2) or 40(3).
Onus of Proof
The onus of proof in these proceedings lies with Alterm who must establish that it is clear that a valid patent cannot be granted (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319).
The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty (Aspiring IP Limited v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 at [35]).
Construction of Claims
The principles to be applied in claim construction are well settled in law (Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [70] – [81], Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [247] – [250], H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC at [52] – [54]).
Relevantly for present purposes, the words used in a claim are to be given the meaning a person skilled in the art would attach to them, having regard to his or her own personal knowledge and to contextual disclosures in the body of the specification which, together with the claims, must be read as a whole.
The grounds of opposition pressed by Alterm turn to a large extent on the construction to be placed on certain terms in the claims.
Applying “a termite resistant sealant as a liquid”
One of the effects of the amendments made to the claims subsequent to acceptance was to introduce the requirement into each of the independent claims of “applying a termite resistant sealant as a liquid”.
Mr Lewis submitted that the term “termite resistant sealant” would be understood by the skilled addressee as only applying to those products which have been certified for such use in accordance with relevant industry standards. However, no evidence has been tendered on behalf of Magisurf to substantiate this submission. Nevertheless, Mr Hakopa has exhibited as THH-4 a copy of the 2000 edition of Australian Standard No AS-3660.1-2000 entitled “Termite Management Part 1: New Building Work” (the Termite Management Standard) which at page 9 establishes to my satisfaction that the meaning of “termite resistant sealant” would be readily understood by those engaged in the art. Alterm has not advanced a contrary view.
This brings me to the issue to which the parties have devoted most of their attention, namely, the meaning of the term “liquid”. There is nothing in the expert evidence which indicates that “liquid” is a term of art, or that it has been used in some special sense, so as to give it a meaning it would not otherwise bear. In these circumstances, the term must be construed according to its ordinary meaning in the context in which it is used.
It appears to be common ground that “liquid” generally means a (non-gaseous) material that flows and can be poured. Mr Kennedy has submitted that a mixture of a powder component and a liquid component does not fall within this plain meaning. I do not accept this submission. It seems to me that the two components could be mixed in varying ratios to produce consistencies ranging from a thick paste-like consistency to a flowable liquid consistency. In other words, the capacity of such a mixture to exhibit the properties of a liquid is entirely dependent upon the amount of the liquid component added to the mixture. As succinctly put by Mr Freeman:
“… [the definition of the term “liquid”] is consistent with my understanding of the term … as material that flows and can be poured into a container will adopt [sic] the shape of that container. I can see no reason why a mixture of a powder component and a liquid component cannot result in a liquid, if sufficient liquid is used for the mixture to take on the flowable characteristics of a liquid. In my experience, my general understanding of the term “liquid” is consistent with that used by others throughout the [relevant] industries.”
I therefore consider the meaning of “liquid” to include solutions of powders and solvents or even possibly suspensions and slurries. However, it does not embrace materials having the consistency of paste or the like such as bitumen.
Form a “visual inspection zone” and provide “an inspection band”
Claim 1 requires a termite resistant sealant to be applied to a structure whereby a band of sealant is formed “to form a visual inspection zone” on exterior exposed faces of the structure. Claims 2 and 14 similarly require application of a termite resistant sealant to a structure “to provide an inspection band” on exterior exposed faces of the structure. These are unquestionably crucial features of the claims.
Mr Gurr argued that the initial act of forming or providing the inspection zone or band would satisfy this requirement of the claims. He further argued on this footing that:
“There is no requirement set out in the claims, or the description, of the opposed application setting out that the inspection zone or band must be maintained for any specific period, or that finished ground level is to be entirely below the full width of the inspection zone or inspection band … Termite barrier installers have no control over where the finished ground level might be, as property owners may lay garden beds and the like at any time after completion of the building. This may occur several years after installing the termite barrier and completion of the building. It would thus make no sense to require the person carrying out the termite barrier installation defined to ensure that the sealant remains exposed in perpetuity.” [Original emphasis]
Mr Lewis submitted that this construction would lead to an absurd result or one not contemplated by the specification since:
“The skilled addressee (a termite inspector) will attend a building months or years after construction is complete to check for the presence of termites. Immediately covering the termite resistant sealant at the conclusion of construction will mean that it will not be possible for a termite inspector to use a visual inspection zone to visually inspect the building for the presence of termites, as no visual inspection zone will be present.
It is illogical to suggest that a termite resistant product applied to a wall that is covered at the end of construction (when no termites would be present) so that the termite resistant product is no longer visible to a termite inspector could constitute a ‘visual inspection zone’.”
The importance of an inspection zone to any termite barrier is underlined by the fact that “inspection zone” is one of the few terms defined in Section 1.7 of the Termite Management Standard where it is said to refer to “[a]n unobstructed space which termites must cross or pass in order to gain access to a building or structure and, as a consequence, reveal their presence during visual inspection.”
The provision of means of enabling the detection of termite attack by visual inspection lies at the heart of the claimed invention. The specification makes it plain that the invention seeks to fulfil the objective of deterring the concealed entry of termites into a building or other structure by forming a visual inspection zone or band to thereby force the termites to build their plasters over exposed surfaces of the building around the zone or band, such that evidence of termite activity may be visually inspected.
What transpires from the bulk of the evidence is that the likelihood of termite activity immediately after the installation of an inspection zone is negligible, and that as a result it is necessary to conduct inspections at a later date when termite ingress would most likely have occurred. There can of course be no guarantee that the visibility of an inspection zone will never be compromised by the subsequent activities of the property owner in installing garden beds, paving or other landscaping. These activities could occur months or years after completion of the building and installation of the termite barrier and in that event would have the effect of raising the finished ground level to the point where the zone can no longer be inspected visually. This prospect has been alluded to in the evidence of Mr Hakopa where he states that when installing barriers he was often conservative with their height above estimated finished ground level.
Mr Freeman has asserted that the existence of backfill or other material is irrelevant as the termite barrier is in his experience typically inspected at the time of its installation. However, Mr Freeman is here speaking of a sheet metal physical termite barrier which is installed between adjacent courses of an external masonry wall. As stated by Mr Freeman, “these forms of termite barriers are inspected … before the next course of bricks or blocks are laid on the sheet termite barrier”. The barrier must necessarily be inspected during construction since, once the wall is complete, the edge of the barrier is all that remains visible from the exterior of the building. It is apparent from the start that this inspection is not conducted through the agency of an “inspection zone” of any type, let alone one formed by the application of a termite resistant sealant in liquid form across exterior exposed faces of the building.
Consequently, the position for which Mr Freeman contends does not detract from the weight of the evidence which in my view has established that when informed contextually, the skilled addressee would understand that the inspection zone according to the claimed invention is intended to afford the ability to monitor termite activity on an on-going basis. Put another way, if the claims were to be construed as allowing for the possibility of soil infill above the finished ground level to thereby cover the visual inspection zone immediately following construction of the building, the purpose of the inspection zone would be entirely defeated.

The same reasoning applies to the construction of the term “inspection band”.
“Exposed face” and “exposed course of mortar”
The independent claims all require the application of a termite resistant sealant to a structure to form a visual inspection zone or provide an inspection band on the exterior face of exposed elements of the structure.
Mr Gurr submitted that while it is clear that the elements must be exposed when the inspection zone or band is first created by the application of termite resistant sealant, there is nothing in any of the claims that requires the elements to remain exposed following this process. Mr Lewis has countered that the sealant must be applied to permanently exposed faces of the structure so as to be able to be inspected for the presence of termites.
This conflict in essence raises the same issues as those dealt with above where I expressed the opinion that an inspection zone or band installed in accordance with the claimed invention would be understood by the skilled addressee to serve the purpose of enabling regular inspections, and hence the detection of termite entry, well after installation notwithstanding the potential for subsequent backfilling. As a matter of logic, the term “exposed” must be read in this context.
Section 40: Sufficiency of Description
The requirement for a full description of the invention was said in Kimberly-Clark Australia PtyLimited v Arico Trading International Pty Limited [2001] HCA 8; 207 CLR 1 at [25] to be satisfied if the disclosure contained in the specification is sufficient to “enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty”.
Mr Gurr submitted that the specification did not provide sufficient information to enable the skilled addressee to implement the claimed invention so far as it related to the step of “applying a termite resistant sealant as a liquid”. He argued this was because there is no description of any specific termite resistant sealant composition, including any such sealant in liquid form.
The claimed invention relates to a method of inhibiting the migration of termites into a structure which involves the application of a termite resistant sealant. As previously discussed, the evidence has established that “termite resistant sealant” is a term of art and as such would be readily understood by the skilled addressee. The specification states that the sealant includes, at least in part, a settable termite resistant composition which may be in various forms including a liquid. The specification treats the reference to “settable” as meaning:
“… a composition that may be applied in liquid form and which, upon setting, forms a solid or semi-solid member. Examples of settable compositions include compositions that may be applied “hot” and allowed to “set” upon cooling of the composition in situ. Also composition [sic] which are chemically cooled in situ will be considered settable compositions.”
The nature of the settable composition is further disclosed as follows:
“… the settable composition may form a uni cellular membrane, that is a membrane in which a cellular chemical agent such as a termiticide is encapsulated. The settable composition may include polymer binders, mineral extenders, biocides, fungicides, mould inhibitors, acrylic resins, acrylic emulsions, powered acrylic polymers, and/or moisture control, reinforcement such as fibrous matting, waterproofing or water repellent agents and plasticising agents. The settable composition may additional [sic] include a chemical or chemicals which may comprise a termiticide, and insecticide or a termite deterrent. Suitable termite resisting compounds may be borax, boron or boric acid … In a preferred form of the present invention, the settable composition may be a silicone, or an acrylic based composition such as may be used as a gap filler or corking agent.”
These characteristics are in many respects reflected in claims 3 and 4. The specification next discloses that the settable composition may be applied in any suitable manner such as by spraying, painting, trowelling, brushing, splattering or extrusion using for example a cartridge tube or the like.
The specification does not continue in the usual fashion to provide any specific examples of a suitable termite resistant composition which on my understanding is Mr Gurr’s main point of contention. However, there is no requirement that a specification must contain examples (see for instance Aktiebolaget Hassle v Alphapharm Pty Ltd [1999] FCA 628; 44 IPR 593 at [209]). The absence of examples might be fatal to the sufficiency of a specification if the examples were necessary to enable the skilled addressee to reproduce the claimed invention. In the present case the specification has, albeit widely expressed, set out a range of constituents and other properties of the composition from which the skilled addressee can make an appropriate selection. There is no evidence before me to show that this information is, without further detail or examples, insufficient to enable the skilled addressee to achieve a composition necessary to work any particular claim. Indeed, Mr Hakopa and Mr Freeman have given evidence that the specification does not disclose anything in this matter that they were not already aware of before the priority date. Based on its own evidence, Alterm can hardly suggest that in following the disclosure of the specification the claimed invention could not be put into effect without the exercise of inventive ingenuity or an impermissible degree of difficulty.
Accordingly, I find that this ground of opposition fails.
Section 40: Clarity
The issue of clarity was considered in Austal Ship Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 where it was said that a claim is clear if the addressee is left in no doubt whether or not an act he or she proposes to do falls within the ambit of a claim. The Full Court also noted that it was not necessary that there be a precise definition of a term in a claim, citing with approval the following passage from Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81]:
“It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
It was asserted by Alterm that a number of the claims cannot be ascribed a clear meaning.
Claim 2
Claim 2 speaks of the application of a termite resistant sealant “extending over or through [a] masonry support and onto any exterior faces of the masonry support to provide an inspection band on an exterior exposed face of at least a portion of an external masonry wall and at least a portion of the masonry support”.
Mr Gurr submitted that “it makes no sense how application of a sealant to one element can provide an inspection band on another element”. He further submitted that “it is not clear how an inspection band provided on a masonry support, by application of a termite sealant to the masonry support, can be said to extend ‘down to the masonry support’, suggesting that the band extends from another element down to the masonry support”.
I find both submissions convincing. Claim 2 recites that the sealant is applied to the masonry support, yet does not explain how this somehow leads to the provision of an inspection band on at least a portion of the external masonry wall. Mr Kennedy has expressed the opinion that a skilled addressee would understand that a masonry support could form part of the external masonry wall. However claim 2 does not indicate as much and indeed it seems to me that in construing the claim Mr Kennedy has impermissibly sought to draw glosses from the description (Flexible Steel at [71]-[78]). Similarly, it cannot be reasonably understood from claim 2 how sealant applied to the masonry support can “extend down to” the masonry support itself. Claim 2 therefore lacks clarity.
Claim 5
Claim 5 is appended to any one of the preceding claims and defines that “the band is of sufficient width to form a clearly visible inspection zone”.
While the parties are agreed that the term “visual inspection zone” refers to a portion of the relevant structure which may be viewed and thus visually inspected, it is not apparent to me what further limitation of the inspection zone is imported by the term “clearly”. Claim 5 therefore lacks clarity.
Claim 6
Claim 6 is appended to any one of the preceding claims and defines the termite resistant sealant as being applied to “the external masonry face or render”. Mr Gurr submitted that claim 6 accordingly lacks clarity since none of the preceding claims make any reference either to an external masonry face or to render. However claim 6 is chiefly appended to claims 1 and 2 each of which refers to an exterior exposed face of an external masonry wall. I consider that when sensibly construed it is apparent that the external masonry face of claim 6 is synonymous with this feature. There is also no practical difficulty in understanding that the exterior exposed face of the external masonry wall may be rendered prior to the application of the termite resistant sealant.
Even so, I note with interest that claim 6 stipulates that the termite resistant sealant is applied “to form a termite resistant barrier and inspection zone”. As a matter of ordinary construction, this outcome would be considered to be implicit in, and in fact lie at the core of, claims 1 and 2. The presence of claim 6 however suggests otherwise, and it is not at all apparent how this claim is on a reasonable construction to be given proper effect. Claim 6 therefore lacks clarity.
Claim 7
Claim 7 is appended to any one of the preceding claims and defines the termite resistant sealant as being applied “over the exposed faces of mortar courses of an external masonry wall of a structure”. Mr Gurr argued that it is not clear whether the external masonry wall and structure are the same as those defined in claims 1 and 2. He was similarly critical of the reference in claim 7 to a band of sealant. While certainly lacking in precise definition, I consider that claim 7 is not incapable of a reasonable interpretation such that it can be clearly reconciled with its parent claims. To adopt the approach pressed by Mr Gurr would, in my opinion, be contrary to authority in leading to an absurd result. Claim 7 is therefore clear.
Claim 9
Claim 9 is appended to any one of the preceding claims and defines that the termite resistant sealant “extends into the cavity between the external masonry wall and the concrete slab”. As noted by Mr Gurr, and conceded by Mr Lewis, the references to “the cavity” and “the concrete slab” are both without antecedent and as a consequence prevent a reasonable determination of the scope of the claim. Claim 9 therefore lacks clarity.
Claim 10
Claim 10 is appended to any one of the preceding claims and defines the termite resistant sealant as “being applied to an exterior portion of the termite resistant base support and at least a part of the external masonry wall”.
Mr Gurr argued that claim 10 is redundant. He reasoned that claim1 already defines in equivalent terms that the termite resistant sealant is applied to the external masonry wall and termite resistant base support. While this may be so, it is not to the point. Claim 10 clearly differs from claim 1 in that it restricts the termite resistant sealant to being a settable or curable composition.
It was further argued that claim 10 lacks clarity when appended to claim 2 which does not define a termite resistant base support. However, in my opinion, the proper approach is to consider claim 10 to be appended only to those claims that would result in a sensible construction, i.e. only those claims that include a termite resistant base support. When construed in this way, the appendancy of claim 10 does not embrace claim 2. Claim 10 is therefore clear.
The same approach applies to the appendancies of claims 11 and 13.
Claim 14
Claim 14 defines a method of inhibiting the migration of termites into a structure comprising an external masonry wall which abuts a concrete slab, and a footing on which the external masonry wall and concrete slab are supported. Claim 14 then defines that termite resistant sealant is applied to form an inspection band on “an exterior exposed face of the concrete slab or footing viewable from the exterior of the structure”.
Mr Gurr submitted that as the masonry wall is defined as being external, the slab must be located interiorly of the structure and therefore it is not apparent how the slab could have an exterior exposed face that is viewable from the exterior of the structure. However, claim 14 does not on any reasonable interpretation suggest that the slab is totally hidden from view by the external masonry wall, and it is also the case that Mr Gurr’s submission does not take account of the alternative provided by claim 14 whereby the inspection band is formed on an exterior exposed face of the footing rather than the slab.
Claim 14 further defines that the termite resistant sealant penetrates “the bricks or blocks, masonry wall and concrete slab or footing” which was said by Mr Gurr to be unclear as to whether the bricks or blocks form part of the masonry wall or part of another (unspecified) structure. This is easily resolved by applying a common sense approach, particularly given the earlier reference in claim 14 to “the bricks or block” of the masonry wall. Claim 14 is therefore clear.
For the above reasons, I find that this ground of opposition succeeds.
Section 40: Fair Basis
Generally speaking, the test for fair basis is whether the claims are consistent with what the specification as a whole describes as the invention.
The body of the specification must provide “a real and reasonably clear disclosure” of the invention claimed (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; 212 ALR 1 at [69]). Correlatively, the claims must not travel beyond the matter described in the body of the specification (Lockwood at [91]).
Mr Gurr has contended that there a number of instances where the claims lack conformity with the body of the specification. As will become apparent, there is a good deal of overlap between Alterm’s case on lack of fair basis and its challenge on the ground of lack of clarity.
Claim 1
Claim 1 requires that a termite resistant sealant be applied from a termite resistant base support over an exterior face of an external masonry wall and an exterior face of at least one exposed face of mortar such that the sealant at least partially penetrates the base support, masonry wall and mortar.
Mr Gurr’s attack on claim 1 was two-fold. He firstly contended that there is no real and reasonably clear disclosure of the termite resistant sealant at least partially penetrating the termite resistant base support.
My initial impression is that this contention appears justified. The body of the specification broadly summarises several aspects of the invention. There is no reference in the broad summary to the sealant at least partially penetrating any structural element to which it is applied. The only mention of this feature is to be found in the passage bridging page 7 line 31 and page 8 line 2, but even here the sealant is merely said to be preferably absorbed into a termite resistant barrier comprised of a friable particulate material which is disposed in a cavity between the termite resistant base support and the external masonry wall. The friable particulate material is accordingly quite distinct from the termite resistant base support. A detailed description of a number of illustrated embodiments of the invention then follows. The detailed description states at page 11 lines 15 to 17 that the termite resistant sealant is absorbed into the porous masonry (being bricks and blocks) and mortar, but again there is no explicit mention of the sealant at least partially penetrating the termite resistant base support.
Nevertheless, it is common ground that the termite resistant base support would be understood by the skilled addressee to comprise a footing or slab which supports the masonry wall. The footing and slab may be formed separately (as shown for example in Figures 1A, 1B, 3 and 4) or integrally as a “monolithic slab” (as shown for example in Figure 5). It appears from the specification that the slab and footing are conventionally made of concrete and this is confirmed by Mr Hakopa. However he argues that the ability of the termite resistant base support to absorb the termite resistant sealant as required by claim 1 is not supported by any disclosure in the specification since “the concrete slab or footing … would be much less porous than the masonry or mortar”.
I do not find this line of argument persuasive. As noted by Mr Kennedy, Mr Hakopa does not suggest that a concrete slab or footing is incapable of absorbing a termite resistant sealant applied to it in liquid form. To the contrary, Mr Hakopa has deposed to his experience in installing termite barriers using a sealant known as Alterm CemParge which he says was applied as a liquid and “sinks into concrete slabs, bricks and blocks and mortar”. Thus Mr Hakopa by his own evidence allows for the conclusion that although a concrete slab or footing may be relatively non-porous as compared to masonry or mortar, it is not impervious to penetration by a liquid sealant. I am, as a consequence, of the opinion that, when construed by the skilled addressee, the specification provides a real and reasonably clear disclosure of at least partial penetration of the sealant into the termite resistant base support.
Mr Gurr’s second criticism of claim 1 relates to its reference to the formation of a visual inspection zone on at least a portion of an exterior exposed face of the termite resistant base support. In his submission there is “no real or reasonably clear disclosure of the termite resistant sealant forming a visual inspection zone on a portion of a termite resistant base support that is above finished ground level … nowhere is it disclosed that the entirety of the applied sealant, including that applied to the footing, must remain above finished ground level or that the sealant applied to the footing forms part of a ‘visual inspection zone’.”
I consider this issue to have already been addressed by my discussion of the construction to be attributed to the claims where I found from a contextual perspective that as the intention of the visual inspection zone is to provide an on-going ability to monitor termite activity by visual inspection, the skilled addressee would understand from the specification that the finished ground level must not be such as to conceal the inspection zone.
To the extent that Mr Gurr has taken issue with the reference in claim 1 to the formation of a visual inspection zone which includes at least a portion of an exterior exposed face of the termite resistant base support, I further note that the specification has at a number of instances indicated that the termite resistant sealant may be applied so as to extend down to or from the termite resistant base support as well as “across exposed faces of external masonry walls of the structure” so as to form a visual inspection zone. Although the language employed goes no further than this, the specification does refer to a number of illustrated embodiments (see in particular Figures 5, 9 and 10) in which the visual inspection zone formed by the application of the termite resistant sealant is shown to extend at least partly along what may be regarded contextually as an “exterior exposed face” of the termite resistant base support. Claim 1 is therefore fairly based.
Claim 2

Claim 2 calls for the application of a termite resistant sealant to a masonry support to provide an inspection band on an exterior exposed face of “at least a portion of the masonry support viewable from the exterior of the structure”. Mr Gurr claimed that there is no disclosure of a masonry support that is viewable from the exterior of a structure which is comprised of the masonry support, along with an external masonry wall.
This attack on claim 2 seems to be principally grounded on its reference to a “masonry support”. The body of the specification indicates at the foot of page 8 that the masonry support may include “piers, retaining walls and supporting walls and other masonry elements of a structure”. According to Mr Hakopa, the only disclosed structure of this kind resides in the engaged pier arrangement of Figure 7. He deposes that in his experience the engaged pier (that is, the masonry support) would be arranged adjacent the inside face of the external masonry wall 71 illustrated in this figure and observes that as far as he is aware it is, as a consequence, “always necessary to inspect piers from interior of the building structure, beneath the floor”. The evidence of Mr Kennedy is on the whole corroborative of this observation. He states that one side or wall of a pier or similar masonry support may form part of an external masonry wall and that “[w]hile not all of the masonry support may be viewed from the exterior of the building [structure] it can be seen from the accessible cavity under the floor space”.
Mr Gurr submitted that as an accessible cavity under the floor space would be within the confines of the building structure, it would not be viewable from the exterior of the structure. I entirely agree. Furthermore, it is evident from Figure 7 that the masonry support is not visible since it is located behind the external masonry wall. This inevitably leads to the conclusion that the masonry support is incapable of being viewed exteriorly of the external masonry wall as recited by claim 2. Claim 2 therefore lacks fair basis.
Claims 9, 10, 11 and 13
The concerns underpinning Mr Gurr’s case on the lack of fair basis of these claims have already been addressed under the head of clarity. However I would add that in defining that the termite resistant sealant extends into [a] cavity between the external masonry wall and [a] concrete slab and engages with a physical termite barrier disposed within the wall cavity, claim 9 is entirely consistent with the disclosure at page 5 and more particularly at page 6 lines 1 to 4. The disclosure at page 5 also lends support to the definition in claim 13 of the extension of the termite resistant sealant into the external masonry wall [through the mortar course] to engage with a physical termite barrier. Claims 9, 10, 11 and 13 are therefore fairly based.
Claim 14
There were two strands to the allegation that claim 14 lacks fair basis. The first strand was that the requirement for partial penetration of an applied termite resistant sealant into a concrete slab or footing is not supported by any disclosure in the body of the specification. However, in view of its specific reference to a “concrete slab or footing” (emphasis added), I do not consider that there is any merit in this strand for essentially the same reasons as those set out above in relation to claim 1.
As to the second strand, the structure to which claim 14 relates is said to comprise an external masonry wall which abuts a concrete slab, and a footing on which the external masonry wall and concrete slab are supported. It was generally agreed between the parties that a structure of this form is depicted in Figure 3 which is described as showing:
“… a building structure comprising a footing 31 on which a slab 32 is formed. [An outer] masonry wall 33 is formed on the footing 31. At about the height of the top of the slab 32 in the rebate a termite resisting sealant [34] is applied from the slab across the adjacent masonry course. A termite resistant bead 35 is disposed between the slab and the adjacent masonry course to provide a termite resisting barrier. The termite resisting sealant 34 extends from the slab across the adjacent bead 35 and the masonry course and across the outer surface of the external wall 33 to provide a visible barrier across which termites would need to construct plasters in order to bridge the termite resisting barrier. It is preferred that the termite resisting sealant be applied so as to extend over a second mortar course 36 which, in another embodiment may extend down to footing 31.”
Figure 3 also illustrates an inner wall supported on the slab, but there is no further disclosure of this feature.
In developing the second strand, Mr Gurr argued that Figure 3 fails to support claim 14 when it speaks of the creation of an inspection band “on an exterior exposed face of the concrete slab or footing viewable from the exterior of the structure”. He further argued this is because:
“… the slab 32, and particularly the portion of the slab to which the termite resistant sealant is applied, is located within a cavity between the outer and inner walls and will not be viewable from the exterior of the structure. The two courses of blocks 33 of the external wall shown in Figure 3 and described as being part of an external wall which will clearly comprise further course of masonry elements to the full height of the external wall, prevent the slab from being viewed from the exterior of the structure.”
Nothing said in the specification indicates the full vertical extent of the outer wall (i.e. external wall 33 shown in Figure 3). Thus, while plausible, Mr Gurr’s contention that the portion of the slab to which the termite resistant sealant is applied would necessarily be located within a cavity formed between the inner and outer masonry walls is not confirmed by the disclosure and as such cannot be treated as other than mere speculation on his part. The reference to a “visible barrier” in connection with Figure 3 would be made entirely meaningless if I were to determine otherwise.
Furthermore, at the very least it can be said that Mr Gurr’s argument overlooks the fact that the inspection band is in accordance with claim 14 provided on an exterior exposed face of the concrete slab or footing. As noted earlier, the specification states that the termite resistant sealant may be applied so as to extend down to the footing which, when read together with the previously discussed interpretation of the term “exterior”, in my opinion provides adequate support for the latter alternative permitted by claim 14.
The second strand is as a consequence also without merit. Claim 14 is therefore fairly based.
It follows from the above that this ground of opposition is successful.
Novelty
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test. The classic formulation of this test is that given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]:
“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.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co ([1990] FCA 40; 16 IPR 545 at [19]. To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the claimed invention (Pfizer v Eli Lilley FCAFC; IPR at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would at least as likely be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v FirestoneTyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138). This approach was recently approved in Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [177]:
“At the expense of repetition, it is here useful to remind ourselves of what the Court of Appeal said in that case:
… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated. [Emphasis added]
This proposition is explicitly hypothetical. It is concerned not with what has happened or with what could have happened, but with what would have happened if the directions were carried out. As such, the proposition is in complete harmony with s 7(1), and with every other presently relevant aspect of the jurisprudence in this area. It is not the doing of it, nor even the ability to do it, that amounts to anticipation: it is the content of the information. If the information contains directions which, if carried out, would constitute an infringement of the patent in suit, the invention under the latter is not novel.” [Original emphasis]
The same level of disclosure is required of an alleged prior use of the invention as claimed (Old Digger Pty Ltd v Azuko Pty Ltd ([2000] FCA 676; 51 IPR 43 at [152]). Furthermore, a relatively high standard of proof is required to establish prior use. The level of proof required was discussed in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]-[200] as follows:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
It is alleged by Alterm that the claimed invention is anticipated by the disclosures of two prior art documents as well as by the prior use of a material referred to in the evidence as Alterm CemParge.
The entitlement of the present application to its claimed priority date of 12 September 2005 is unchallenged.
Anticipatory publication
Alterm has relied on the following prior art documents:
- Australian patent no 719812 published on 18 May 2000 and exhibited as THH-2 (the Kennedy patent); and
- International application no WO 03/079780 published on 2 October 2003 and exhibited as THH-3 (the Hannay application)
The Kennedy patent
Alterm asserts that the Kennedy patent deprives claims 1 to 13, 18 and 19 of novelty. In Annexure B to his evidence in support, Mr Hakopa has drawn up a table which compares the features of these claims against the disclosure of the Kennedy patent.
The Kennedy patent is directed to a method or means of preventing or minimising the passage of termites into a structure which is particularly applicable to buildings. Briefly put, the Kennedy patent is said to meet this aim by providing for the application of a settable or curable termite resistant barrier mixture to the elements of the building so as to fill cracks, fissures or joints in an outer brick wall and a termite resistant base support such as a concrete slab, or a masonry support such as an engaged pier, and thus form a continuous termite penetration resistant barrier. Notably, the settable or curable barrier mixture may be “in the nature of a liquid or a material with flowable properties”.
The disclosure of the Kennedy patent thus far can be read directly onto a number of the features as listed by Mr Hakopa in relation to claims 1 and 2. With further regard to claim 1, the features itemised as 1.6 and 1.7 collectively read “to form a visual inspection zone on an exterior exposed face of at least a portion of the external masonry wall and at least a portion of an exterior exposed face of the termite resistant base support”. It is at this juncture that the case for Alterm revisits the proposition that the exterior face of the termite resistant base support need only be exposed when the termite resistant barrier mixture is originally applied to form the termite penetration resistant barrier. As contended by Mr Hakopa:
“Referring to Figure 2, whilst the external edge of the slab 31 directly beneath the wall 39, which has the layer 42 of barrier material applied thereto, is shown covered with earth … the external face of the slab 31 would have necessarily been exposed prior to back filling to allow the layer to be applied to the slab. Accordingly, when the layer or [sic: of] barrier material was applied to the slab 31 it would have formed a visible inspection zone.”
I have previously rejected this line of attack on more than one occasion. To reiterate, when properly understood claim 1 is directed to the formation of a visual inspection zone which is intended to remain exposed above finished ground level so as to facilitate the monitoring of termite activity long after installation of the inspection zone. On the other hand, it is most telling that the Kennedy patent goes no further than disclosing a termite resistant base support:
“… which on completion extends below the adjacent ground level and supports an above ground structure including a concealed wall structure containing termite consumable material concealed by an outer [brick] wall skin.”

100. For his part Mr Freeman has inferred that any external exposed surface of the building over which the termite penetration resistant barrier is formed will force termites to build their plasters around the barrier such as to constitute a visual inspection zone. However, this ignores the requirement in claim 1 that a visual inspection zone is formed so as to encompass at least a portion of an exterior exposed face of the termite resistant base support. The Kennedy patent merely states that the barrier “extends between an above ground exposed portion of the outer [brick] wall skin and a face of the termite resistant based support which is below the concealed [brick] wall structure”.
101. Consequently, in the absence of any clear and unmistakable direction to extend the termite resistant base support above ground level after backfilling, the base support cannot in the present context be deemed to include an exposed face on which a visible inspection zone could be formed that would retain its visibility once the ground level is finished. Claim 1 is therefore not anticipated by the Kennedy patent.
102. As regards claim 2, Mr Hakopa has directed attention to Figure 10 of the Kennedy patent which discloses a structure including an external brick wall with a masonry support in the form of an engaged pier. The migration of termites into the structure is said to be inhibited by the application of a layer of a termite resistant barrier mixture so as to extend over the top of the brick wall and the pier “and down the sides thereof”.
103. The feature of claim 2 itemised as 2.5 by Mr Hakopa relates to the provision of an inspection band on an exterior exposed face of “at least a portion of the masonry support viewable from the exterior of the structure”. Here the “masonry support” can be suitably equated with the engaged pier (see reference numeral 61) represented in Figure 10 of the Kennedy patent. Mr Hapoka has claimed that:
“The inspection band formed by the layer [of termite resistant barrier mixture] can be seen to extend down face of the pier [sic] that is facing what I understand to be a door jamb secured to the end of the [brick] wall. This door jamb clearly forms the boundary of a door opening, presumably for access to the underneath the floor space of the building structure. The layer in the face of the pier [sic] would be visible through such door way from the exterior of the building structure.”

104. However, there is nothing in the disclosure of the Kennedy patent to support Mr Hakapo’s view that Figure 10 shows a door jamb. The Kennedy patent does not explicitly refer to a door jamb and, even if Mr Hakopa’s analysis of Figure 10 is accepted, it still could not be said to the requisite degree of certainty that a door opening formed by the door jamb would enable an exterior exposed face of at least a portion of the engaged pier illustrated by this figure to be viewed from the exterior of the building. Claim 2 is therefore not anticipated by the Kennedy patent.
105. Since claims 1 and 2 are not anticipated by the Kennedy patent, neither are any of appended claims 3 to 13, 18 and 19.
The Hannay application
106. It is asserted by Alterm that the Hannay application deprives claims 1, 3 to 7, 10 to 12, 18 and 19 of novelty.
107. The Hannay application concerns the use of a composition that can be supplied in liquid form and applied so as to seal cracks, holes or gaps in building structures and thereby create a barrier that is waterproof and resistant to termite attack. However, the Hannay application states at page 6 line 3 that “a construction joint cannot be sealed in this way”. Instead, the construction joint is sealed by placing a membrane across the joint. The detailed description of the embodiments illustrated by Figs 4 to 8 indicates that the membrane may be applied so as to extend for example over the exterior face of an external brick wall and across the top surface of a footing. Most notably, the membrane is said to be formed by coating or impregnating a construction material such as stainless steel mesh, fibre glass, and geotextile or other similar fabrics, with the composition.
108. I do not perceive any material distinction between the termite resistant sealant of claim 1 and the composition disclosed by the Hannay application. Furthermore, it seems reasonable to suppose that the structural elements recited by claim 1 to which the termite resistant sealant is applied define between them what the Hannay application has broadly referred to as a “construction joint”. However, the termite resistant sealant is in accordance with claim 1 applied to the structural elements as a liquid, whereas the Hannay application discloses that the composition cannot be applied in liquid form unless used in conjunction with a construction material to form a membrane.
109. Mr Gurr submitted that the specification, including the claims, similarly envisages the use of a membrane. He drew attention to the fact that claim 3 allows for the possible inclusion of “reinforcement” in the termite resistant sealant, and that the only form of reinforcement described is “reinforcement such as fibrous matting”. However, this does not elevate the relevance of the Hannay application to claim 1 since the effect of construing the claims against redundancy is that claim 1 does not necessarily make use of a reinforced termite resistant composition. Even if I am incorrect in this, there is in my opinion a distinct failure by the Hannay application to disclose the application of a membrane composed of a termite resistant sealant in liquid form and fibrous reinforcement to provide a visual inspection zone on the exterior exposed faces of each of the structural elements, and in particular the termite resistant base support, specified by claim 1.
110. Therefore claim 1 and appended claims 3 to 7, 10 to 12, 18 and 19 are not anticipated by the Hannay application.

Anticipatory use
The nature of Alterm CemParge
111. Mr Hakopa deposes that when he first entered the termite barrier installation industry in around 1998, the barriers he installed were usually formed from sheet aluminium coated with bitumen and known as the Alterm Barrier. As explained by Mr Hakopa:
“The standard process of installing aluminium sheet terminal barriers, such as the Alterm Barrier … was to lay one edge of the aluminium sheet along the top of one course of bricks on the external wall of the building so as to completely cover the course and then have the sheet extend across the gap between the inside face of the external wall and the vertical face of the rebate in the slab on which the external wall was built. The edge of the sheet was then stuck (or “parged”) to this face of the slab with a two-part epoxy material.”

112. He continues as follows:
“… some time in the early 2000’s, the bitumen coated aluminium barrier was replaced with a marine grade aluminium that was not bitumen coated. Rather than fixing the edge of the Alterm Barrier to slabs with a two-part epoxy, I started using a cemtentitious [sic] parging material known as Alterm CemParge to fix the Alterm Barrier to the slab in around 2000.”

113. Mr Hakopa indicates that the Alterm CemParge was supplied as a two-part formulation comprising a powder component and a liquid component the ratios of which could be adjusted to produce a mixture of varying consistencies.
114. This evidence is corroborated by Mr Freeman, and is by and large consistent with the technical content of the Alterm advertising brochure exhibited as CF-8 and the CSIRO technical assessment exhibited as AWK-9. I note in passing that Mr Hakopa further indicates that he was aware of “a similar form of physical termite barrier using woven mesh, stainless steel material, known as Termi-Mesh”.
The alleged prior use
115. Mr Hakopa claims that from about 2002 and before September 2005, he used Alterm CemParge as a physical termite barrier either by itself or in conjunction with an Alterm Barrier in the manner described above. He says the Alterm CemParge was usually applied by him in a liquid form with the assistance of a broom head attached to a broomstick.
116. According to Mr Hakopa:
“It was always necessary to apply the Alterm CemParge down to the footing and across at least part of the exposed face of the footing/slab to ensure that no termites could penetrate the building between the slab and the first course of bricks or blocks, or through the mortar between bricks or blocks that might eventually be located either below ground level or only slightly above ground level. I always applied the Alterm CemParge to a distance at least 75 mm above the intended finished ground level so as to provide a visible protected band of the wall surface above ground level, so that termites would need to build [plasters] over that protected band if they tried to enter the building though mortar or any cracks above the barrier, thereby allowing the termite activity to be identified by visual inspection. This application was consistent with the requirements in the Termite Management Standard … I often used the Alterm CemParge to prevent entry of termites without the benefit of a metallic physical barrier to stop termites accessing the interior of the building by penetrating the external wall below ground level and then moving up through the cavity behind the external wall. Accordingly, it was essential to coat the external wall from above the finished ground level down to the bottom of the wall and onto the footing, so that the external wall and the joint between the wall and the footing were fully protected from penetration.”

117. However, Mr Hakopa acknowledges that he is unable to substantiate these statements with contemporaneous photographic evidence. Instead, Alterm has sought to rely on a series of photographs taken by Mr Freeman (exhibited as CF-7 and also the subject of exhibit THH-6) of what are alleged to represent termite barriers which Mr Hakopa had installed utilising Alterm CemParge.
118. A number of considerable difficulties arise here. In the first place, Mr Freeman states that he took the photographs forming exhibit CF-7 “over the period 2008 to 2010”. This is well after the priority date and therefore the photographs could hardly be said to constitute direct evidence of the manner in which the termite barriers they are said to depict were installed. In fact, the photographs do not even establish the stage at which installation of such termite barriers occurred and, in particular, whether this was before the priority date. Further to this, it is a striking feature of Mr Hakopa’s evidence that his discussion of the photographs is almost entirely based on what he has been “advised” they purportedly disclose. It is therefore clear that Mr Hakopa was not present when the photographs were taken by Mr Freeman and, as a corollary, none of the photographs can be reconciled with the Alterm installation certificates exhibited as THH-7 or
CF-13.
119. Secondly, Mr Freeman has conceded that the photographs labelled as Figures 1a and 1b actually show an installation using a product known as Termortar. He submits though that this product has similar characteristics to Alterm CemParge, save that it is supplied in a single-part powdered form for mixing with water as a traditional building mortar. Whatever the case may be, these photographs are not evidence of the alleged prior use of Alterm CemParge.
120. Thirdly, and most significantly, it is not possible to determine from the photographs whether the termite barrier installations shown by them included a visual inspection zone as presently recited especially as the area around the installations has been backfilled by one means or another so as to conceal the slab/footing. This much is also evident from the photographs exhibited by Mr Kennedy which were taken during November 2011 when he and Mr Hitchen attended the sites of the installations said to be depicted by exhibit CF-7. It is as a consequence impossible to determine from any of these photographs whether any form of termite resistant sealant was applied at any time during installation of the termite barrier to an exposed exterior face of the slab/footing.
121. Exhibited as CF-9 are copies of pages taken from a register Mr Freeman maintained from early 2003 of all termite proofing installations undertaken by sub-contractors engaged by Alterm. Some of the job entries are said to reflect the use of Alterm CemParge. The first of these relates to one of two Alterm CemParge installations referred to in evidence as the “Jewells Installation”. The Alterm Barrier installation certificates exhibited as CF-10 confirm that this work was first carried out on 24 March 2003 and subsequently on 5 February 2004. On 4 October 2011 Mr Freeman took a series of photographs of the second Jewells Installation. These photographs are exhibited as CF-12.
122. Mr Freeman says that he personally inspected both parts of the Jewells Installation and on this basis alleges that Alterm CemParge was applied as a band which extended down external masonry walls of the building and onto an exposed concrete footing. However, aside from the fact that the photographs forming exhibit CF-12 were taken more than 7 years following the completion of the Jewells Installation, they show that the concrete footing has at some unknown point been covered by soil and wood chips. Consequently, these photographs suffer from the same fundamental deficiency as those of exhibit CF-7.
123. As established by authority, an opponent asserting prior use carries a high evidentiary burden. In the present case Alterm has not discharged that onus since the evidence tendered on its behalf has as explained above failed in a number of respects to strictly prove that the claimed invention is, as alleged, anticipated by prior use.
124. Having regard to the foregoing, I find that this ground of opposition fails.
Inventive Step
125. Section 7(2) provides that an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could be reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the relevant art.
126. Inventive step may be assessed having regard to the reformulated so-called “Cripps question” set out in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59; 212 CLR 411 at [53]:
“Would the notional research group at the relevant date in all the circumstances … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?”

127. While inventiveness requires more than novelty, even a “scintilla of inventiveness” is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd [1993] FCA 93; 25 IPR 273; (1993) AIPC 90-971; 113 ALR 63 at [21] – [23]).
128. As the question of inventiveness is to be assessed in the light of the common general knowledge as it existed before the priority date, and by reference to the perspective of a person skilled in the relevant art, it is first necessary to determine who the person skilled in that art would have been, and what would have constituted the common general knowledge available to such a person.
The person skilled in the relevant art
129. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 49 IPR 225 at [71] it was observed that, generally speaking, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. It is also recognised that while the skilled person against whose efforts the claimed invention is to be tested may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 293).
130. Mr Lewis submitted that the identity of the skilled person is someone having knowledge and expertise in the inspection of structures for the presence of termites. He said that as termites are not present in a structure during its construction, the only person who would have a practical interest in using the visual inspection zone of the claimed invention is a termite inspector when looking for evidence of termite activity well after the structure is complete.
131. I think that Mr Lewis has understated the relevant person. The claimed invention is directed to a method of inhibiting the migration of termites into a structure which includes applying a termite resistant sealant in liquid form over exterior faces of elements of the structure. I therefore consider that in addition to termite inspectors, the skilled person would also include pest controllers engaged in carrying out termite barrier installations. Mr Kennedy has suggested as much when challenging the suitability of Mr Freeman’s qualifications to provide expert evidence.
Common general knowledge
132. The notion of common general knowledge was described in Minnesota at 292 as involving:
“… 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.”

133. The common general knowledge will encompass not only material that is retained in the memory of the skilled person, but also material that the person knows of, and to which they might refer as a matter of course, or habitually consult. This material could include, for example, standard texts and handbooks (ICI Chemicals & Polymers Ltd vLubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]).
134. Mr Gurr claimed, and Mr Lewis disagreed, that the common general knowledge includes each of the following matters:

the characteristics and activities of termites, including the fact that they are averse to natural light and construct plasters from the ground surface across the external exposed faces of buildings to remain concealed from sunlight;

the purpose and principle on which all physical termite barriers are based is to deter concealed entry by termites by forcing the termites to build their plasters over any exposed surface of the building around the barrier, such that evidence of their activity may be visually inspected;

the Termite Management Standard.

the use of physical sheet termite barriers, located between adjacent courses of masonry elements of an external wall and extending across any cavity behind the external wall to prevent termites from entering the building through the external wall anywhere beneath the sheet termite barrier;

the use of an exposed edge of a slab as another form of a physical termite barrier; and

the use of termite resistant parging materials to bond physical termite barriers.

135. The state of the common general knowledge is a question of fact which must be determined on the basis of expert evidence. Unfortunately, the evidence advanced by both parties provides very little insight of what had entered the realm of common general knowledge. Nevertheless, there can be little doubt that anyone involved in the termite proofing industry would be acutely aware of the characteristics and activities of termites. Indeed, one of the few examples of common ground in this proceeding is that such awareness is central to any development in the field of termite resistant systems for use in buildings or other structures. As conveniently summarised by Mr Kennedy, the skilled person would be particularly aware that:
“[termites] are subterranean insects that would generally attack structures from below the ground surface or from above the ground surface if they were able to construct … “plasters” from the ground surface up a wall or other structure. These [plasters] protect the termites from natural light that they have an aversion to.”

136. The next contested issue in relation to common general knowledge concerns the Termite Management Standard. Mr Kennedy has stated that he is aware of the Termite Management Standard, but expresses the opinion that “no ordinary Australian pest controller would be familiar with [its] exact contents”. However, this is not determinative of whether the Termite Management Standard may be regarded as common general knowledge. All that is required is that it constitutes a source of information known to the skilled person which might be consulted habitually or referred to as a matter of course by them. It would be most surprising if an Australian building standard did not fall squarely within this category. The Termite Management Standard discusses the use of slab edge exposure as part of a termite barrier system which can therefore be likewise considered as having entered the common general knowledge.
137. I further conclude that the use of physical termite barriers is also well known in the art. The discussion by the specification of the background to the present invention acknowledges that the formation of a physical termite barrier between the slab and the external masonry walls of a building is an approach known in the art to have been adopted to combat termite infestation or migration. The specification specifically refers to the use of a physical termite barrier formed of stainless steel mesh and known as Termi-Mesh which, as mentioned earlier, has been spoken of by Mr Hapoka.
138. The position with respect to the employment of termite resistant parging materials is not so clear cut. Aside from what could be regarded as a fleeting reference to Termortar, the evidence does not mention any parging material other than Alterm CemParge. Mr Freeman has deposed that upon its publication in 2004, the Alterm advertising brochure of exhibit CF-8 (the advertising brochure) was widely distributed within the industry. However, as observed by Mr Kennedy, the advertising brochure does not verify when it was published. Mr Kennedy has additionally criticised the brochure as failing to expressly identify a parging material by the product name CemParge. This is not entirely correct. The advertising brochure advocates the use of a parging glue developed by Alterm for adhering an aluminium barrier to masonry surfaces which is said to serve the dual purpose of damp proofing and forming a barrier against termites. The last two pages of the brochure briefly describe a range of Alterm products. One of these products is referred to as Cemparge which is described as “a cementitious parge for rendering retaining walls etc for termite proofing”. Nevertheless, in light of this description of Cemparge as a rendering material, it cannot, in my opinion, be correlated with the parging glue which the advertising brochure seeks to promote.
139. It is also of relevance to note that, as stated in British Acoustic Films Ltd v Nettlefold Productions 53 RPC 221 at 250:
“A piece of particular knowledge … does not become general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.”

140. See also Minnesota Mining at [294]-[295]. There is no evidence that the content of the Alterm advertising brochure had become part of this “common stock of knowledge”. However, the brochure refers to “patent no 709314” which I have determined pursuant to section 60(3) was granted on a national application published in 1998. Generally speaking, the application is directed to termite barrier installations in which a mesh structure extends between and is bonded to at least one of a concrete slab or footing and an external brick wall by an ant/termite resistant parging adhesive. A number of proprietary adhesives are listed as being suitable for this purpose, with the stated preference being what is referred to as “Alterm parging adhesive”. Although certainly not proof that Alterm CemParge had itself assimilated into common general knowledge, to my mind this disclosure indicates that termite resistant parging materials per se, including those made available by Alterm, were well known in the art long before the priority date. The absence of evidence to the contrary from Magisurf, together with the inclusion of a definition of “parging” in the Termite Management Standard (which, it will be recalled, was published some 5 years before the priority date), reinforces the view that I have reached.
Prior art information
141. Alterm does not suggest that the Kennedy patent or the Hannay application were part of, or reflected, the common general knowledge. Nevertheless, it still needs to be established whether their content can alternatively be considered as prior art information for the purposes of section 7(3) as a result of ascertainment in the sense of having been “found” or “discovered” (Commissioner of Patents v EmperorSports Pty Ltd [2006] FCAFC 26; 67 IPR 488 at [29]-[30]).
142. The Full Court in Emperor Sports did not depart from the decision in Dyno Nobel Asia PacificLtd v Orica Australia Pty Ltd [1999] FCA 1369; 47 IPR 257 at [183]-[196] which took the enquiry of whether a document was part of the prior art base one step further in applying a “diligent searcher” test. In the present case, the question becomes whether the skilled person could reasonably be expected to have ascertained the existence of either the Kennedy patent or the Hannay application by searching patent literature.

143. Mr Kennedy is quite adamant that in his opinion “no pest controller in Australia would search patent documents”. I do not see any tension between this assertion and the fact that Mr Kennedy is named as a co-inventor by the Kennedy patent. Ascertainment in the relevant sense involves an assessment of what could reasonably be expected of the skilled but non-inventive worker in the field who is far removed from someone engaged in creative or intellectual endeavours. In supporting the converse view, Mr Freeman has stated that:
“I have personally conducted many patent searches when considering the development of new termite barrier solutions, including prior to [the priority date]. I have particularly searched for Australian patents, and various international patents, including US patents and international (PCT) patent publications using electronically available databases, such as the AusPat database of the Australian Patent Office, the USPTO patents database and general internet tools, including Google.”

I note in passing that Mr Freeman must be mistaken in his reference to AusPat since this data base was not available before the priority date.
144. It was said in Emperor Sports that it may be assumed in “high technology” areas that the relevantly skilled person would be familiar with professional journals and other technical information. On the other hand, unless an appropriate inference could be drawn, evidence would generally be required about what that person may reasonably be expected to have done (Emperor Sports at [32]-[33], and see also JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v CamoflagPty Ltd [2006] FCAFC 141 at [77]-[81]). The Termite Management Standard in particular establishes a clear imperative for the effective control of termite infestation in buildings and other structures. Common problems in achieving this aim are, no doubt, well known in the art, including those associated with the provision of suitable termite barrier systems. Nevertheless, the relevantly skilled person is as discussed beforehand someone who simply installs or inspects termite barriers. This is in no way suggestive of a complex scientific area of expertise. Thus, while it seems reasonable to assume that the relevantly skilled person would seek to keep track of developments in the art, I do not in following the principles espoused in Emperor Sports regard Alterm’s argument that the Kennedy patent and the Hannay application could reasonably be expected to have been ascertained by the skilled person as sustainable without evidence which establishes otherwise.
145. The only evidence before me in this regard is that provided by Mr Kennedy. His evidence unfortunately refers to only one specific instance where a search was undertaken by him and this appears to have occurred as early as 2003 “in conjunction with” an independent party. Even here he does not confirm whether the search was conducted of his own volition or only under the direction of the independent party (in this case, Dow Corning). No other examples are mentioned by him to suggest a regular practice on his part of acquiring knowledge of the existence of patent material relevant to the art of termite barrier systems. It is notable in this respect that Mr Freeman does not claim that the Kennedy patent or the Hannay application was, as a result of any searching practices he had routinely adopted, known to him at the relevant time.
146. The evidence is therefore insufficient to confirm that the skilled person could be reasonably expected to have consulted the patent literature and thereby ascertained the existence of the Kennedy patent and the Hannay application. Consequently, their content cannot be considered as prior art information for the purposes of section 7(3). However, as I later explain, nothing turns on this.
147. Having determined the common general knowledge existing at the priority date, it is necessary then to consider whether, in the light of the common general knowledge, the claimed invention would have been obvious to the skilled person.
Is the claimed invention obvious?
148. As put by Mr Gurr, the case for Alterm is that:
“The claims of the opposed application define nothing more than the application of a known termite resistant composition, in a known form, by a known manner to various known forms of structures in a manner that forms a physical termite barrier, forcing termites to build mud tunnels over an exposed portion of the structure to enable known visual identification of termite activity over the visual inspection zone created during standard visual termite inspections.”

149. It is a matter of law that where, as in the present case, the question of inventiveness arises in respect of an invention involving a combination of features, it is the inventiveness of the combination as a whole that must be determined (see for example Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[No 2] [2007] HCA 21 at [69]). I have undertaken the following analysis with this principle firmly in mind.
150. The proposition that the claims are couched in terms of known forms of structures is beyond dispute given their reference to structures as common as a masonry wall or a concrete slab. The second issue in contention, namely, whether the claims involve the use of a known termite resistant composition, is a different matter altogether. As mentioned earlier, both Mr Hakopa and Mr Freeman have attested to their prior knowledge of the various forms of termite resistant materials disclosed by the specification. While this may well be the case, the fact remains that the only materials shown by the evidence to be within the common general knowledge are those used for parging. Furthermore, while I accept that such materials act as a termite resistant sealant, their primary function as an adhesive suggests that, notwithstanding Mr Hakopa’s evidence in relation to this issue, they are not necessarily applied in liquid form. Nevertheless, the specification has indicated that a liquid is only one of several forms of termite resistant sealant contemplated by the present invention. There is no mention of any unexpected advantage to be derived from the choice of a liquid as compared to, say, a paste or gel. In the circumstances the restriction in the claims to the application of a termite resistant sealant “as a liquid” seems quite arbitrary.
151. What remains to be decided, then, is whether the creation of a visual inspection zone in accordance with the claimed invention was already taught by the existing knowledge in the field at the priority date. The key piece of evidence in this connection is the Termite Management Standard.
152. The Termite Management Standard indicates that its objective is to provide interested parties, such as regulatory authorities and termite management system manufacturers and installers, with methods of installing termite barrier systems during construction of new building work
The Termite Management Standard emphasises that a termite barrier system installed in accordance with the performance criteria it specifies cannot prevent termite attack since the barrier may be bridged or breached. Rather, the purpose of the barrier is to deter concealed entry by termites into the building. It does this by enabling evidence of a bridge to be detected by regular visual inspections after installation. To ensure that detection of termite ingress is not obstructed, the Termite Management Standard prescribes minimum visual inspection zone clearances between finished ground, paving or landscaping level and elements of the building. As explained by Note 4 to Section 1.1:
“Activities such as turfing, paving and landscaping adjacent to the building might compromise the inspection zone clearances required throughout the Standard. Where it is known that these activities will be undertaken, the clearances given in the Standard may need to be increased to maintain the required minimum inspection zones.”

153. Most relevantly, the Termite Management Standard states that the performance criteria required of a termite barrier system which is designed to deter termites from gaining concealed access to a building may be satisfied by employing a concrete slab or footing as part of the termite barrier system. For this purpose, an inspection zone is created by ensuring that the edge of the slab or footing remains exposed by a minimum distance above finished ground, landscaping or paving level so as to permit ready detection of termite entry into the building.
154. In the present context, the disclosure of the Termite Management Standard to this point can be considered to teach the provision of a “visual inspection zone”. However, and to borrow the language of the claimed invention, it does not suggest the formation of a visual inspection zone on “at least a portion of an exterior exposed face “ of a concrete slab or footing by the application of a termite resistant sealant in any form, liquid or otherwise.
155. The Termite Management Standard additionally sets forth various termite barrier systems and materials that are deemed to satisfy the specified performance criteria. These are predominantly centred on the employment of a physical termite barrier, in particular woven mesh or sheet material, which is bonded to concrete and masonry elements of the building by a termite resistant parging material. The parging material is characterised in Section 6.3.2 as a cementitious grout consisting of “a water-dispersed copolymer and a dry mixture of cement and sieved aggregate that can pass through the woven stainless steel mesh”. This brief explanatory text is inconclusive as to whether the termite resistant parging material is applied in liquid form, but it seems to me that in addition to the seemingly arbitrary nature of this requirement of the claimed invention, the skilled person would in any event recognise that the consistency of the parging material could be varied to suit particular conditions by simply adjusting the proportions of water-dispersed copolymer and dry mixture. I am also prepared to accept that in view of their inherent porosity as discussed earlier, the parging material could be said to at least partially penetrate the concrete and masonry elements to which it is applied.
156. The requirements for installing a termite barrier system formed in part from stainless steel mesh are provided in Section 6.5.2 where it is said:
“A strip of woven stainless steel mesh shall be parged onto the concrete slab … It shall be draped across the cavity (if one exists) and be built into the outer masonry wall finishing flush with the outside face. The mesh shall be placed at least 75 mm above finished ground, landscaping or paving level. The woven stainless steel mesh shielding shall extend through the wall with the edge being visible in the horizontal mortar joint at the outside face (see Figure 6.2).”

157. The physical termite barrier system illustrated by Figure 6.2 is markedly similar to some of those depicted in the Kennedy patent and the advertising brochure. It consists of a strip of stainless steel mesh which spans the cavity between internal and external masonry walls. One end of the strip is parged to the vertical face of an internal rebate in a concrete slab while the other end extends through a mortar joint in the external wall. However, the strip stops short of extending beyond the mortar joint and across the exterior face of the external wall, and in fact as made clear by the above text (and see also Section 5.4.1.1) the strip is installed such that only its edge is visible from the exterior of the building.
158. That does not quite put the matter to an end since Option A of Figure 6.6 shows the installation of a physical termite barrier system in a structure comprised of a split level concrete slab in which a strip of stainless steel mesh extends across the exterior face of what is designated as (an external) “masonry dwarf wall”. Other than a passing cross-reference, the Termite Management Standard does not discuss this installation. Nevertheless, Figure 6.6 has been annotated such as to indicate where the strip is parged to the underlying structure from which I deduce that although parged at one end to an exterior exposed face of the upper concrete slab, and at its other end to the top surface of the lower slab, the strip is not parged to the exterior face of the external masonry dwarf wall. In other words, and in terms of the claimed invention, Figure 6.6 does not disclose an installation wherein a termite resistant sealant is applied over an exterior face of an external masonry wall. The same shortfall in disclosure occurs in those sections of the Termite Management Standard governing the installation of the physical termite barrier system with an engaged pier which the evidence has confirmed is an exemplification of the “masonry support” of claim 2. In fact there is no mention of the barrier system being parged to any portion of the engaged pier (see for example Section 5.4.2.3).
159. The foregoing analysis has led me to conclude that the common general knowledge is at variance with the combination of features presently defined in that it does not foreshadow the application of a termite resistant sealant so as to form a visual inspection zone either on an exterior exposed face of an external masonry wall, and/or at least a portion of an exterior exposed face of a concrete slab or footing. I should mention that is the case irrespective of whether, contrary to my earlier findings on construction, claim 1 (or for that matter claim 2 or claim 14) is interpreted as necessarily including a physically reinforced termite resistant sealant.
160. Mr Freeman acknowledges the references throughout the Termite Management Standard to the formation of a visual inspection zone on an external face of a building by the use of various forms of physical termite barrier systems, or the exposed edge of a concrete slab, but argues that as evidenced by section 1.3 the visual inspection zone may be formed by alternate non-specified termite barrier systems. The inference here that the skilled person would as a matter of routine consider supplying the features of the claimed invention missing from the disclosure of the Termite Management Standard by adopting an “alternate non-specified” approach is misconceived.
161. So far as is relevant, the disclosure of the Termite Management Standard overwhelmingly establishes that where a physical termite barrier system involves the use of sheet or stainless steel mesh material which extends between a concrete slab and a mortar course in an external masonry wall, only the edge of the sheet or mesh material need be visible from the exterior of the masonry wall in order to satisfy industry standards as they relate to the formation of a visual inspection zone. Such an installation is merely representative of one example of admitted prior art which has been discussed in the background to the present invention. There is no evidence before me for justifiably concluding that the skilled person would be somehow prompted to depart from conventional thinking by extending the visual inspection zone formed solely by the edge of the sheet or mesh material by way of the application of a termite resistant sealant across the exterior face of the external masonry wall. To determine otherwise would, in my opinion, be a misuse of hindsight (Minnesota at 293).
162. Furthermore, as I have previously indicated, the Termite Management Standard discloses the formation of a visual inspection zone by means of slab edge exposure. Clearly, the utilisation of the concrete slab itself as part of a termite barrier system teaches away from the reliance by the claimed invention on the application of a termite resistant sealant to an exterior exposed face of this structural element.
163. The position would remain unchanged even if either of the Kennedy patent or the Hannay application was brought together with the established common general knowledge. As already discussed under the head of novelty, these documents do not teach or suggest the formation of a visual inspection zone over at least a portion of an exterior exposed face of an external masonry wall and a termite resistant base support or concrete footing and exterior masonry (as in claims 1 and 14, respectively), or an exterior masonry support (as in claim 2) such as to lead by direction to the claimed invention. In other words, these documents do not take the matter any further than does the content of the Termite Management Standard.
164. For the above reasons, I find that this ground of opposition fails.
CONCLUSION
165. I have found that claim 2 is not fairly based, and that claims 2, 5, 6 and 9 are not clear. The opposition therefore succeeds on the ground that the specification does not comply with section 40(3). As these findings may be overcome by amendment, I allow Magisurf 2 months from the date of this decision in which to file suitable amendments.
COSTS
166. Alterm has been successful in its opposition to the present application. I see no reason to vary the usual practice that costs follow the event. I therefore award costs according to Schedule 8 against Magisurf.
O L Haggar
Delegate of the Commissioner of Patents