Anthony William Kennedy & John Charles Hitchen v TMA Corporation Pty Ltd

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 719812 in the name of Anthony William Kennedy and John Charles Hitchen

Title: Method and means for preventing or minimising termite attack or infestation

Action: Opposition under section 59 of the Patents Act 1990 by Termi-Mesh Australia Pty Ltd; hearing.

Decision: Issued
Abstract

The invention concerns methods for forming a continuous termite barrier on building elements whereby any termite activity can be noticed by visual inspection of the barrier to identify movement of termites across it. The methods form the barriers by using a settable or curable termite resistant barrier material.
Opposition grounds of non-compliance with section 40, lack of novelty and not a manner of manufacture were not made out.
However the invention claimed in all claims was found to lack an inventive step in the light of material in evidence. It was found that a skilled person with knowledge of the use of termite resistant parging material as an adhesive for mesh termite barriers (as known from the Australian Standard) would have been led as a matter of course to try such material by itself to form a barrier which termites would need to cross to infest a building element. Thus the skilled worker in the art would have been directly led as a matter of course to try such material by way of the various methods as claimed. Accordingly the methods claimed did not involve an inventive step.
It was also found that the invention made by Kennedy, as joint inventor, was made outside the course of his duties as an employee of TMGC (a company linked to the opponent) and that entitlement to the invention rests with him as an inventor and not with the opponent as alleged.
The issue as to the proper priority date for the claims was not examined in detail because the patentability of the invention could not be affected in the event that the earliest priority date could not be sustained.
The application was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application No. 719812 by Anthony William Kennedy and John Charles Hitchen, and opposition under section 59 of the Patents Act 1990 by Termi-Mesh Australia Pty Ltd.

BACKGROUND

Patent application 719812 arose as application 67810/96, being the national phase application in Australia of PCT application PCT/AU96/00542 filed by Anthony William Kennedy and John Charles Hitchen ("the applicants" hereafter) on 2 September 1996. The application claims priority from Australian provisional application PN 5151 dated 1 September 1995, and this date is the earliest priority date of the claims of the application. Application 67810/96 was advertised accepted on 18 May 2000 and assigned number 719812.
A notice of opposition to the application was filed on 17 August 2000 by Termi-Mesh Australia Pty Ltd, and a statement of grounds and particulars followed on 17 November 2000. Evidence in support, answer and reply were duly filed. Subsequent to filing its opposition the opponent changed its name to TMA Corporation Pty Ltd ("TMA" hereafter).
The statement of grounds and particulars ("the Statement") lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990 ("the Act"): paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b) (novelty and inventive step), sections 40(2) and 40(3) (fair basis and clarity of the claims), and paragraph 59(a) (nominated persons not entitled to the grant).
This matter was set for a hearing in Canberra on 3 and 4 July 2003. The applicants were represented by Mr B James and Mr R Gourley both patent attorneys of Cullen & Co. TMA was represented by Mr R J L McCormack of counsel and Mr J King patent attorney of Wray & Associates. The applicants were also present at the hearing.
Subsequent to the hearing the parties requested that a decision on the opposition be deferred pending negotiations between the parties to settle the opposition. When settlement negotiations were terminated the Commissioner was asked to proceed to determine the opposition.
THE SPECIFICATION
The invention is entitled " Method and means for preventing or minimising termite attack or infestation". The following introductory portion from the specification explains the invention and its background.
"Technical Field
This 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.
Building destroying termites are most commonly subterranean. Their attack/infestation originates from the nest (colonies) located either underground or in the base of trees, with tunnels (foraging galleries) radiating from the nest through the soil to food sources.
At all times termites require moisture but must conceal themselves from direct sunlight. Thus for travel across exposed walls, for example, they build mud-like shelters (tunnels) "plasters" on the outside in which they can travel concealed from sunlight to their food source. The area for subterranean migration may comprise a crack, fissure, joint, opening, perpend or the like in an outer wall or footing.
Background art
Due to changes in government regulations in Australia and elsewhere, past methods of preventing termite attack or entry in buildings which have involved the use of pesticides under the slab and around the outside periphery of a building are now no longer possible to employ because of the detrimental effects of the residual chemical poisons. Whilst new chemicals have been introduced to overcome this problem, such chemicals prove considerably more expensive to use. As a result, a number of different methods have been proposed or are now used with the aim of combating termite infestation or migration.
One such method involves the use of a product known as TERMIMESH which comprises a mesh of stainless steel which has pores of sufficiently small size to prevent the passage of termites therethrough. Whilst such a material is effective, it is required to be "parged" at one edge to secure it in position. This is difficult to accomplish in certain positions and furthermore a number of inspections must be undertaken to ensure that the mesh is effectively secured in position by the parge and/or to ensure that no damage has been caused to the mesh. In addition, the use of this product tends to be particularly expensive."
The specification then briefly refers to 7 Japanese patent specifications which are said to concern treating on or around structures using poisons. It then states that "the use of any poison is disadvantageous and …. would be very costly … ." .
The specification then gives the aim of the invention in these terms:
"The present invention aims to overcome or alleviate at least one of the above disadvantages by providing improved methods of and means for preventing or minimising the passage or migration of termites or other insects into a building. The present invention, in a further aspect aims to provide methods and means which may be applied to protect building products and components from termites or other insects. Other objects and advantages of the invention will become apparent from the following description."
The description which then follows firstly broadly indicates the nature of the present invention in terms rather similar to those of claim 1 along with describing elements in general terms, and secondly describes particular embodiments of the invention with reference to the 6 sheets of drawings.
Of the 12 claims appended to the specification 4 are independent. All claims are method claims. Claims 1 and 9 read as follows, the labelling of features in claim 1 being added by me to aid subsequent reference:
"1. A method of preventing or minimising migration of termites into
(a) a structure having
(ai) 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 and
(aii) an outer wall concealed by an outer skin,
the method including
(b) forming insitu a continuous termite penetration resistant barrier
(c) by applying a settable or curable termite resistant barrier mixture,
(d) which when applied cures to form a continuous flexible penetration resistant barrier which
(di) adheres to and extends between an above ground exposed portion of the outer wall skin and a face of the termite resistant base support
(dii) filling cracks and fissures defined between the outer wall skin and the termite resistant base support,
(e) whereby termite entry to the concealed wall structure from an in-ground nest can occur only if the termites enter across the exposed part of the flexible penetration resistant barrier on the above-ground portion of the outer skin
(ei) thereby providing visible evidence of their penetration."
9. A method of preventing or precluding migration of termites or insects into a structure having columns supporting an above ground structure containing termite consumable material and wherein the columns provide a possible concealed termite or insect entry path between the ground and the consumable material, the method including the steps of:
forming a continuous termite or insect barrier, by applying, during construction of the structure, a settable or curable barrier mixture, being a mixture which forms a flexible, penetration resistant material, to each column so that the top surface of each column and at least a portion of the above ground exposed faces of the columns is continuously coated; and
applying the barrier mixture so that cracks and fissures in the base structure are filled with the barrier mixture whereby termite entry from any column to the structure can only occur across an exposed face of the column coated with the barrier mixture."
Thus the method of the invention of claim 1 concerns forming a continuous barrier by way of a settable or curable termite resistant barrier mixture between a footing structure of a building and the lower outer components of the building affixed to the footing structure. The barrier is positioned such that in order for the termites to reach the building they would need to form a tunnel across the barrier from the ground and footing structure to reach the building components making their existence visibly apparent given the presence of the tunnel.
About the barrier material the specification includes the following:
"The settable or curable barrier material which forms the termite or insect barrier may be selected from a range of different products or combinations of products. It may be in the form of a paste, gel, liquid or a matrix mix. As an example, the barrier material may define a unicellular membrane, that is a membrane in which a cellular chemical agent such as a termiticide is encapsulated.
…….
The settable or curable barrier material may be applied to a building or component in any suitable manner, for example by being sprayed, painted, trowelled, brushed or by splatter machine. Alternatively, where appropriate, the settable or curable barrier material may be supplied in a cartridge tube or the like for application in the nature of mastic."
The specification describes the method in relation to various footing and building arrangements. These include the use of a concrete slab as the footing to buildings, with a building of bricked outer wall and inner timber frame. There are also other footing and wall or flooring interface arrangements described.
Of the other independent claims these concern a method in relation to:
· a base structure supporting an above ground structure (claim 10),
· a ground supported termite resistant base support … which supports an above ground structure (claim 11).
The definitions of claims 10 and 11 are rather similar to claims 9 and 1 respectively.
THE EVIDENCE FILED
Evidence in support
The evidence filed in support of the opposition comprises statutory declarations by the following persons:
· Laurence Glossop, a consultant and a former Executive Director of TMA (Glossop's 1^st). (Declaration includes annexures LGG-1 to LGG-19.)
· Clive Cumming, General Manager of TMA (Cumming's 1^st). (Declaration includes annexure CRDC-1.)
Evidence in answer
This comprises statutory declarations by:
·     Anthony Kennedy, co-applicant, with exhibits AWK-1 and AWK-2 (Kennedy's 1^st).
·     Denis Murray, an accredited Termi-mesh installer from 1995 to January 1998.
·     John Hitchen, co-applicant.
·     Anthony Kennedy (Kennedy's 2^nd).
·     Steven Broadbent, a person with a range of qualifications and experience including Pest Control Qualifications.
Evidence in reply
The evidence filed in reply comprises statutory declarations by:
·     Laurence Glossop (Glossop's 2^nd). (Declaration includes annexures LGG-20 to LGG-25.)
·     Laurence Glossop (Glossop's 3^rd). (Declaration includes annexure LGG-26.)
·     Clive Cumming (Cumming's 2^nd). (Declaration includes annexures CRDC-2 to CRDC-4.)
·     John King, patent attorney (King's 1^st). (Declaration includes annexures JHK-2 to JHK-4.)
·     Laurence Glossop (Glossop's 4^th). (Declaration includes annexure LGG-27.)
Other materials
Prior to the hearing attorneys for TMA indicated they proposed to rely on prior art references referred to in the specification and the prior art referred to in the examiner's report dated 22 October 1998. At the start of the hearing 2 further declarations were presented on behalf of TMA. These were by:
· John King (King's 2^nd). (Declaration includes annexures JHK-5 to JHK-13.)
· Laurence Glossop (Glossop's 5^th) (Declaration includes annexure LGG-28.)
The annexures to King's 2^nd are copies of the prior art as foreshadowed by TMA. Glossop's 5^th is for the purpose of adducing a copy of a "Technical Opinion 158" which had been referred to in Glossop's 1^st but not annexed at that time.
At the hearing Mr McCormack indicated that the omission of a copy of the Technical Opinion from the earlier declaration had been an honest mistake. He said the document was of relevance but not pivotal to TMA's case. With regard to the prior art documents, again he said these were not pivotal but they may bear on matters of common general knowledge and novelty, and issues surrounding the true construction of the specification that the delegate needed to consider. He said it was in the public interest that there be a full review of all materials that are relevant to the matter.
Submissions on behalf of the applicants objected to these materials being brought into the proceedings. It was noted that the opponent had not sought to utilise the further evidence provisions of the legislation. It was submitted that if allowed into the proceedings the applicants would be disadvantaged because their attorneys had not had a chance to discuss these documents with the applicants.
I indicated that I would allow this other material to be referred to during the hearing and rule later on its admissibility after assessing its possible relevance to the opposition issues. During the hearing there was brief reference to some of this material. At the conclusion of the hearing I indicated that I would admit the material into the proceedings. I did so on the basis that the applicants ought to have been aware of at least all the prior art specifications, and the fact that those mentioned in the specification contributed to the overall construction and understanding of the specification and thus were relevant, at least in a general sense, to opposition issues. In order to allay any question of disadvantage to the applicants I afforded them a period of time following the hearing in which they could consider and if necessary file written submissions to fully answer any issues that arose from TMA's submissions from this other material. The applicants availed themselves of this opportunity by filing submissions on 25 July 2003. TMA did not seek to respond to those submissions.
Order for production of documents
During the evidence stages and at the request of TMA the Commissioner issued production of documents notices to Standards Australia, Steven Broadbent and John Hitchen. These were all answered. King's 1^stdeclaration exhibited as annexure JHK-1 a copy of minutes from Standards Australia subcommittee BD/74/2 dated September 1994.
General comments about certain documents in evidence
One document placed in evidence was the subject of repeated reference in submissions on behalf of TMA. It was annexure LGG-10 being a copy of the Australian Standard concerning Termite Control AS 3660. This standard is titled the "Protection of buildings from subterranean termites", and the revised standard published in July 1995 and designated Part 1 concerns "New buildings" and is identified as AS 3660.1. It seems the earlier standard issued in 1993. The document AS 3660.1 indicates that the committee that prepared the standard comprised representatives from industry and government bodies from across Australia. The document is said to "represent a consensus as to practical building details for termite management in new buildings." Furthermore the document states that "This Standard is intended for use in any part of Australia where subterranean termites are a risk or where the local building authority requires protection". Hereafter I will refer to the standard simply as "AS" and where necessary by the clause number (eg. 2.7.2).
Two other documents also figured in repeat submissions. These were:
· Annexure LGG-8 being a copy of a "Training and Reference Manual" by Termi-Mesh Australia Pty Ltd. Glossop says this manual was "supplied to all franchisees and installers of the TERMI-MESH System". The face page of the document bears a copyright date of 1994 and a prominent marking "CONFIDENTIAL".
· Annexure LGG-19 being a part copy of a publication "The Control of Termites in Commonwealth Construction Projects" published in 1993 by the Australian Government Publishing Service. This document discusses likely entry points for termites into building structures from the ground and refers to ways to minimise termite entry.
General comments about the declarants and evidence
Mr Kennedy in evidence raised issue with Glossop's background and hence experience and knowledge to provide views on the field of the invention. However Glossop, who has tertiary qualifications in science, clearly has had direct involvement in the industry by way of his employment with TMA from 1992 to 1998, participation in conferences and research concerning termites, and as a termite specialist on the committee responsible for development of the AS. I believe this experience qualifies him as skilled person in the art in question.
In submissions Mr McCormack indicated that Mr Broadbent's evidence needed to be treated with some caution. He submitted that Broadbent asserts opinions without proper reasoning for those views and makes some statements which from subsequent evidence is seen as questionable. I note Mr Broadbent has qualifications concerning pest control and was a member of the committee which developed the AS. I do not believe Mr Broadbent's evidence can be disregarded but I may need to consider what weight certain aspects of it should carry.
As to the evidence generally, the Commissioner, while functioning as a Tribunal, is not bound by the rules of evidence but nevertheless must reach a decision on rationally probative material, ie. material which tends rationally to show the existence or non-existence of facts relevant to decision. It is for the Commissioner to determine the weight to be given to material of probative value.
DECISION
Construction and section 40 issues
Section 40
TMA's arguments on section 40 grounds centre around the words "flexible" and "continuous" as used in the claims, such as in the expression "continuous flexible penetration resistant barrier" of claim 1. It was argued the terms were unclear, there being no indication in the specification as to their nature and purpose in respect of the barrier. Accordingly non compliance with both sections 40(2) and (3) was advanced.

It is true that the description does not explain the characteristics the terms "flexible" and "continuous" provide to the barrier and in that sense the specification may indeed be worthy of some criticism. However I do not believe the claims are bad for being unclear as argued. In normal usage both terms have clear meanings. As to "continuous", when considered in the context of the technical field of the invention and aims of the invention, I believe it would be evident to an addressee that the barrier needs to be continuous in the sense of providing an unbroken element, free of gaps or apertures, confronting termites which may encounter it. If not free of gaps it is clear that termites would have an avenue available to proceed beyond the barrier by not travelling across it. Thus for a building structure on a termite resistant base to which the method of claim 1 applies, the barrier would need to encircle the base and be uninterrupted. The very nature of a continuous barrier in buildings to confront termites is evident from the AS. AS 2.7.2 when referring to a termite barrier says "The barrier when completed shall be continuous, ie. free of gaps which allow unrestricted access of termites to the building." I believe a skilled addressee would understand "continuous" as in the claims to reflect the meaning mentioned, which is consistent with the reference in the AS.
As to the term "flexible", this also qualifies the penetration resistant barrier. In submissions it was argued that "flexible" is a relative term having a broad range of possible meanings, and that the description conveys no meaning or guidance as to the attributes that "flexibility" provides to the invention. Again I believe that a skilled addressee would have no difficulty in understanding what "flexible" implies in the context of the invention. The invention involves forming a barrier using a settable or curable mixture, the barrier spanning elements of a building construction and filling cracks and fissures in the elements it covers. Given that it spans building elements the possibility of slight movement between those elements would require the barrier, once formed, to cope with such movement but still retain its basic integrity, free of gaps or cracks in order to remain an effective barrier and perform as claimed. It is a flexibility to cope with such conditions that I believe an addressee would understand from the description and claims. If there is any doubt about this, the AS to which I was frequently referred, and which would be well known along with its contents to a skilled addressee, points to support for this view. In AS 5.2.2 for instance, it identifies properties a "parging material" should have for use in bonding a mesh termite barrier to a building substrate material, with one property listed as "(c) be flexible to maintain a strong bond to the substrate material".
Thus I do not consider the claims offend against section 40 because of the terms "flexible" and "continuous".
As to the submission that the description does not provide the best method known to the applicants of performing the invention by reason of the term "flexible" thereby offending against section 40, I do not agree. I believe a skilled addressee would have no difficulty in determining the nature of a settable or curable barrier material to use to achieve a flexible characteristic as discussed above upon curing. The need for some trial and error in order to arrive at a suitable material exhibiting those characteristics does not render the description insufficient (see eg. Poseidon Industrie AB v Cerosa Limited (1982) FSR 209).
In summary, opposition grounds under section 40 are not made out.
Construction
In order to put subsequent discussion and issues in context, some comments about the invention claimed are appropriate at this point.
The aim of the invention is evident from the introductory portion of the specification. It concerns a method of "preventing or minimising termite attack or infestation" in buildings.
Referring to claim 1, it defines the environment to which the present method applies, that is a structure as in feature (a). The structure has a "base support" which is partly below ground level and this supports an above ground structure having a concealed wall and an outer wall concealed by an outer skin. As the claim indicates, it is the concealed wall which contains termite consumable material. The claim defines where the barrier is formed after the mixture is applied, that is it "[adheres to and] extends between an above ground exposed portion of the outer wall skin and a face of the termite resistant base support" (feature (di)). As indicated it also defines that the barrier adheres to the relevant structure elements "filling cracks and fissures defined between the outer wall skin and the termite resistant base support" (feature (dii)). Feature (e) qualifies the method in the sense that it indicates the effect of the barrier to any activity of termites to reach the above ground structure and visual observation of that activity, thus implying prenetration resistant properties of the formed barrier by the result or effect to be achieved. It is evident that such properties apart from the barrier being continuous in the sense already discussed, would include that the material from which the barrier is formed be unpalatable to termites so that they do not cross the barrier by eating through it.
Thus for claim 1 it is evident that the method relates to forming a barrier which extends from a face of the termite resistant base support (whether below or above ground) to a position on the outer wall skin which is exposed above the ground. Any cracks or fissures defined between the outer wall skin and the termite resistant base support are filled by the cured barrier. The barriers indicated as 25 and 25' shown in the embodiments of figures 1 and 3 in the specification are just two examples of the application of the invention of claim 1.
The method of independent claim 9 relates to forming a continuous termite or insect penetration resistant barrier to a structure having columns supporting an above ground structure. This method requires the top surface and at least a portion of the above ground faces of each column to be continuously coated so that any termite travel from the column to the above ground structure can only occur across a column face coated with the barrier material.
The methods of claims 10 and 11 are similar to those defined in claims 9 and 1 respectively. Claim 12 is an omnibus claim.
Priority date
TMA alleged that the claims as accepted claim matter that was in substance disclosed as a result of the amendments made to the specification since filing, and are not otherwise disclosed in the preceding specifications. Accordingly they alleged the earliest possible priority date of the claims is 10 November 1997, and not 2 September 1996 (the filing date of PCT application PCT/AU96/00542) or the earlier 1 September 1995 (the filing date of the provisional application PN 5151, the priority application). If the priority date is as alleged, TMA submitted that the claimed invention was anticipated by PCT application PCT/AU96/00542 which was published internationally on 13 March 1997, or in Australia on 27 March 1997 (as advised in the Official Journal of 22 May 1997). The opposed application is the national phase application in Australia of PCT application PCT/AU96/00542.
I note that similar arguments to those advanced here were also raised and rejected by the delegates in earlier Patent Office decisions. In this regard see The Regents of the University of California v The Dow Chemical Company [2001] APO 34 (26 July 2001), Orenco Systems, Inc v Everhard Industries Pty Ltd [1999] APO 68 (26 October 1999), and Firebelt Pty Limited v MacDonald Johnston Engineering P/L [1994] APO 67 (25 November 1994). I further note that while the court in CCOM Pty Ltd and Anor v Jeijing Pty Ltd and Ors [1994] 28 IPR 481 seemed to indicate a "self prior published" situation may arise (at 486/7), there was no actual discussion or finding by the court on this point (see 504-506).
In submissions on the present opposition there was no suggestion that a change in the earliest priority date as alleged affected any other ground upon which the claimed invention may not be considered a patentable invention. That is, no prior art material or matters of possible common general knowledge available between 1 September 1995 and 10 November 1997, apart from the PCT application, were raised under the novelty or inventive step opposition grounds.
I do not see it necessary to examine the priority date issue in detail and hence definitively determine the relevant priority dates. The argument that the claims could be anticipated by the earlier publication of the specification as filed if a subsequent priority date applies is an interesting one but one with which I cannot agree. For the purposes of determining priority dates, considerations of the "fair basing" of the particular matter is required. For example, if a claim is introduced into the specification by amendment after original filing of the specification and it turns out to be not fairly based on the original disclosure, then it has a priority date based on its date of filing (s.114 and reg 3.14). The fact that the claim is not fairly based on the earlier disclosure, that is, there was not a real and reasonably clear disclosure of the matter, leads to the conclusion that there is also not an adequate disclosure of matter the subject of the amended claim for any prior publication purposes. The test for fair basis and lack of novelty are not the same but it is unreasonable to consider a particular disclosure in one way for fair basis and differently for novelty. Thus the publication of PCT application PCT/AU96/00542 could not render the accepted claims lacking in novelty.
Common general knowledge
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 common general knowledge was referred to in these terms (per Aickin J. at page 292):
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The evidence in this matter provides no definite pronouncements about what may have formed part of the common general knowledge in the art. For instance there is no evidence from an expert witness declaring to any matter being common general knowledge. However I believe the materials before me point to several matters falling into that category of knowledge.
The AS 3660.1 was published in July 1995. This standard was developed by a committee comprised of representatives and experts from the building and pest control industries in Australia. Given the nature of this standard applicable to building development, I have no doubt this standard and the construction methods prescribed therein would have formed part of the common general knowledge at the earliest possible priority date of 1 September 1995, despite the fact this date was only a matter of months after the publication date.
Glossop states that the opponent TMA developed in late 1992 a physical termite barrier control system, the so-called TERMI-MESH System (hereafter "T-M System"), implemented it in 1993, and also states that it has been used extensively in the public domain since then. It seems that this system or at least the concept behind this system, involving metal mesh elements being bonded to buildings to create a termite barrier, led to specific standards being incorporated into the AS in 1995 (see Section 5 of the AS dealing with stainless steel mesh barriers). Thus, as the T-M System was in use for several years prior to the earliest priority date and it seems also known to the committee preparing the AS, it seems reasonable to conclude that the T-M system also formed part of the common general knowledge in the trade at the earliest priority date.
Also, from the material before me, it is clear to me that, in a general sense, the problems termites can cause to building materials and buildings was well known to builders, building owners, pest controllers, and the relevant local government authorities who control building approvals, before the earliest priority date. Against that background I believe the methods to control or minimise termite attack to building structures as set out in the AS would have formed common general knowledge in the art.
Novelty
An accepted test for novelty is the so-called "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235. Under this test if a citation discloses all the essential features of a claim so that it would constitute an infringement of the claim if the claim were in a patent, the claim will lack novelty.
In Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553, the Court noted that in the case of a paper anticipation, the reverse infringement test cannot be applied literally. This is because the infringement arises because someone hypothetically does what is suggested by the document. After reviewing the traditional authorities regarding prior publications, the majority concluded (at 576):
"What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it."
The opponent relied on various documents and aspects of Glossop's evidence for its lack of novelty attack. The documents mainly relied upon were those of the AS and annexure LGG-19, and to a lesser extent two Japanese patent specifications 04-316502 by (Kiyatsutsu) and 57-169136 (Nihon Hodou), and US patent 2352338 (Muirhead). There was also reference to 2 patent specifications of TMA concerning its T-M System and annexure LGG-8. TMA also advanced a lack of novelty because of asserted prior use as discussed by Glossop. I will consider these elements of prior art now in more detail.
The Australian Standard, AS 3660.1 (Annexure LGG-10)
I have already referred to this document in a general sense. As further background, the "Preface" to the AS states that it "is intended to be used in regulations, contracts and the like which relate to new building construction". It also states:
"It is important to realise that there is no system that provides total protection against termite ingress. This Standard is therefore concerned with minimizing, not totally eliminating, the risk of subterranean termite attack."
Section 2 of the AS relates to general requirements for termite protection. It states that "The purpose of termite barriers is to impede and discourage termite entry into a building. Termites can build around barriers but they are then in the open where they can be detected more readily during regular competent inspections." The section also refers in general terms to protection options from beneath concrete slabs, from around the perimeter of concrete slabs, and of suspended floors. Options involve using stainless steel mesh, graded stone, chemical barrier, slab edge exposure and termite shielding, including combinations thereof. Sections 3 to 7 provide detailed explanations of these options and illustrative building situations of their use.
TMA's novelty argument based on this document centred on the reference to "Parging" and "Parging material". In section 5 the following appears:
"5.2.2 Parging   Parging material shall-
(a)       be termite resistant;
(b)      form a strong bond between the stainless steel mesh and the substrate material;
(c)      be flexible to maintain a strong bond to the substrate material; and
(d)      be durable for its intended purpose for the reasonable life expectancy of the building.
See also Clause 1.3.
NOTE: Parging material is used to bond stainless steel mesh to concrete, masonry or steel."
Section 5 of the AS deals with the use of stainless steel mesh barriers as part of a termite barrier system. Such mesh barriers are formed of a particular maximum mesh size through which termites will not pass. The note to 5.2.2 indicates the use of parging material or "parge" as a means to bond the mesh to building elements. Examples are given illustrative of this function for the parging material.
TMA asserted that given the disclosure of the parging material the invention lacked novelty. It was submitted that the parging material was "a settable or curable termite resistant barrier mixture" as in feature (c) of claim 1 and that from the AS it formed "a continuous termite penetration resistant barrier" (feature (b)). There was no reference made to any illustrative installation shown in the AS to support the allegation of lack of novelty of claim 1. Even if the disclosure of "parging material" in the AS is as submitted, I fail to see any disclosure of the method as claimed. There is simply no disclosure in section 5 of the AS of such a method, particularly the requirements features (d) to (dii) place on the method. Figures illustrating typical installations of mesh barriers in section 5 show parging material used to bond an edge of the mesh to concrete slabs, such a slab in the terms of claim 1 constituting " a termite resistant base support" (feature (ai)). But there is no indication or suggestion that the parging material is so applied to extend beyond the slabs to an above ground exposed portion of a structure supported on the slabs (feature (dii) of claim 1).
The AS also refers to Parging in 6.2.6. This clause repeats the properties (a) to (d) as quoted from 5.2.2. Then follows this note:
"NOTE: Parging material is used to fill grooves or crevices in the vertical face of concrete slabs that prevent graded stone achieving complete contact with the concrete."
Section 6 of the AS deals with the use of graded stone barriers as part of a termite barrier system. Such barriers use particular sized stone particles to form layers of the particles which are placed under and around building elements, thus separating the building elements from direct contact with the ground. These layers discourage termites travelling throught the layers to the building elements. The note to 6.2.6 highlights the use of parging material to smooth out imperfections in a vertical face of a concrete slab against which a stone barrier is to be placed, in order that the stone particles can have a "complete contact" with the slab so that a path for the termites to reach the building elements on the slab is not left adjacent the edge face of the slab (see also clause 6.5(a)).
Much reliance was placed on this note in 6.2.6 by TMA to imply that the parging material required by the AS enabled it to fill cracks and fissures on building surfaces. Again it was submitted that the invention, which required the penetration resistant barrier to fill cracks and fissures, was not novel in view of the AS. That allegation is simply not supported by the disclosure in the AS. The parging material referred to in section 6 of the AS is used for a particular purpose on a face of the concrete slab. There is no indication or suggestion that the parging material is so applied to extend beyond the slab to an above ground exposed portion of a structure on the slab as the method of claim 1 requires. The alleged anticipation document does not "contain clear and unmistakeable directions to do what the [applicant] claims to have invented" (see General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited [1972] RPC 457 at 486).

The invention of claim 1 does not lack novelty in the light of the disclosures in the AS. The same conclusion also applies to independent claims 9 to 11.
Annexure LGG-19
As previously mentioned this is a part copy of a publication "The Control of Termites in Commonwealth Construction Projects" published in 1993 by the Australian Government Publishing Service. There was no challenge to it being prior art for consideration as to the novelty of the claimed invention. This document discusses likely entry points for termites into building structures from the ground and refers to ways to minimise termite entry. It indicates that physical barriers may be required across construction and expansion joints, such as between floors and walls and columns (page 16). On page 17 it mentions that if shrinkage cracks arise in concrete slabs this may inadvertently provide termites access to a building on the slab. On pages 18 and 19 possible termite entry points are discussed through suspended floors. The use of steel mesh barriers, stone particle beds under slabs, and termite shields are mentioned as physical barriers for particular situations.
On page 20 diagram 11 is described as showing "ways to protect construction joints in slabs or between slabs and the wall system." The diagram appears to show the use of a physical barrier (probably mesh) extending across such joints, and seemingly the use of "approved epoxy mortar" to fix the barrier at one end to the slab or wall. Text in the diagram refers to allowing "movement in physical barrier across joint" or at corners. There is no other description of the barrier or manner of fixing. Declarants Glossop and Kennedy have different views of what diagram 11 actually discloses, particularly whether there is epoxy mortar extending across the joint between two slabs in one of the figures, or across the joint between the slab and wall in the other figure. From the diagram and the text it is not made clear but to me it seems the mortar is only fixing the physical barrier to one element at one side of the respective joints.
As I understood submissions on behalf of TMA, lack of novelty of the claimed invention was alleged given the disclosure in LGG-19 of the barrier system in diagram 11. However in my view that is not the case. For one thing diagram 11 does not show a structure where a base support supports an above ground structure as feature (a) of claim 1 requires. Secondly, following my comments above, there is no "settable or curable termite resistant barrier mixture" placed to form a barrier which extends across the floor and wall joint as feature (di) requires. Elsewhere in LGG-19 there is no disclosure of a method as claimed using a settable and curable mixture as claim 1 defines.
Accordingly the invention of claim 1 does not lack novelty in the light of the disclosures in the annexure LGG-19. The same conclusion also applies to independent claims 9 to 11.
JP specification 04-316502 (Kiyatsutsu) (Annexures JHK-5 & LGG-15)
The English abstract of this specification (there is no translation of the Japanese specification) indicates that the method of the invention involves spraying a termite and moisture-preventing coating "on the surface of the footing of a building and the surface of the ground around the footing and on the surfaces of target articles for the termite prevention, and curing the sprayed agent to form the cured coating films of the urethane polymer." The abstract gives no hint as to what "target articles" mean but TMA submitted it should be understood as including gaps or avenues that would enable termites access to a structure. Even assuming the urethane polymer film equates with "a continuous flexible penetration resistant barrier" as claimed, I do not see in this document clear and unmistakeable directions resulting in the method of opposed claim 1. Further, even if by target article is included a column supporting an above ground structure as defined in claim 9, the abstract does not disclose the particular method of that claim.
Accordingly the invention as claimed does not lack novelty given this prior specification.
JP specification 57-169136 (Nippon Hodo) (Annexure JHK-13)
The English abstract of this specification (there is no translation of the Japanese specification) indicates that the method of the invention involves depositing a bituminous mixture with chemical additive in and around the footings and the foundation of buildings. Clearly this abstract does not disclose the invention of any of the independent claims.
US patent 2352338 (Muirhead) (Annexure LGG-12)
Whilst said to be relied upon for novelty purposes, I see little relevance of the disclosure in this 1941 patent to the claimed invention. Whilst it discloses a method of building a block wall and incorporating in a course of it a termite barrier by way of a so-called "concrete beam" (thus forcing termites to the exterior of the wall to bypass the particular course), there is no disclosure of a method as claimed.
AU patent specifications 639256 and 695436 (Annexures LGG-2 and LGG-3)
These specifications disclose the use of mesh barriers for termite control. AU 695436 discloses the T-M System wherein a mesh barrier is parged or adhered at one edge to a building element. These specifications do not disclose a method involving features like (di) and (dii) of claim 1 for example. They do not disclose the invention as claimed.
Termi-Mesh Training Manual (Annexure LGG-8)
Glossop says this manual was supplied to all franchisees and installers of the T-M System in late 1994. There was no objection raised by the applicants against this document constituting relevant prior art in this matter, particularly concerning whether it was publicly available before the earliest priority date. However there is a question mark about it since it bears a prominent "Confidential" marking on the face page suggesting a possible restriction on the dissemination and use of the manual. Were the disclosure in this document to be material to any adverse finding in this matter I am of the view that the availability of this document freely to the public has not been established. As it transpires there is nothing in this document which renders a lack of novelty to the claimed invention. Essentially it discloses no more than AU patent specification 695436 already discussed.
Prior use
Glossop in Glossop's 2^nd refers to various alleged events or practices which he says from his personal knowledge occurred in relation to the use of parge material. This is said to arise from the time of his employment with TMA and prior to September 1995. His comments relate to alleged use of a parge material, apparently like that developed and used in the T-M System of termite barrier protection, but using the material essentially on its own as a primary termite barrier.
Where a ground of invalidity is based on assertions of prior use, it is clear from decided cases that the proof of prior use must be very clear. Thus this will normally require, in the absence of cross-examination, corroboration of statements by way of evidence of others or documents contemporary with the fact to be proved. (See eg. Seiller's Application [1970] RPC 103.) I note here that there is no corroborative evidence to support Glossop's statements.
In paragraphs 13 to 19 Glossop relates various alleged prior use practices. The practices are described in general terms explaining how a parge material was employed. Specific details are not given of the location of where the practices were employed and of the resulting structures or objects. No mention is made of the circumstances of the practices, for example whether undertaken in public or not. As mentioned no corroborative evidence about these prior use practices is before me. In the circumstances I believe I cannot rely on this evidence as establishing alleged prior use.
Even if accepted that these uses took place, I do not see that any use as outlined by Glossop is such to be a disclosure of the invention claimed in any claim of the opposed application. The various uses mentioned indicate parge material to have been placed on various building surfaces or between certain building elements to create a barrier. But none of these mentioned practices equate with the specific methods claimed. Thus these alleged prior uses do not disclose the claimed invention.
Summary - Novelty
In summary the opposition ground of lack of novelty has not been established.
Inventive step
Sections 7(2) and (3) of the Act relate to the requirement for assessing the existence of an inventive step. Those provisions, as applicable to the present application and insofar as they apply to the present circumstances advanced under this opposition ground, indicate that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:
(a)the common general knowledge existing in the art before the priority date considered alone; or
(b)the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information as relevant to work in the relevant art in the patent area.
(The provisions of s. 7 applicable to the present application are those applying immediately prior to the amending act which came into effect in 2001.)
It is from the position of a non-inventive worker in the field equipped with the common general knowledge and together with any qualifying prior art information that the invention must be considered to assess the presence of an inventive step.
The present specification mentions several problems with existing termite barriers or treatments that the invention seeks to overcome. One concerns the use of pesticides, either solely or in a coating medium, which substances have been deposited under concrete slabs and around the outer periphery of buildings or building elements to combat termite infestation or migration. The detrimental effects of the residual poisons are a problem. The use of chemicals is also said to be costly. The use of mesh of stainless steel to form a barrier is said to have problems with effectively securing the mesh in certain positions and being expensive.
TMA's arguments in support of a lack of an inventive step for the invention essentially had two fronts. Firstly it was submitted that the invention could have been arrived at as a matter of routine work by the skilled person in the art in the normal course of his duties before the priority date. Secondly, it submitted that the solution to the problem as claimed is one that the skilled person would have considered as "worthwhile trying".
Over the years many approaches have been developed to assist a determination on whether an invention is obvious or lacking an inventive step. They do not, however, replace the requirement of the statute on this validity ground.
One way to approach the issue is to consider "whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not" (per Aickin J in Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd ( 1981) 148 CLR 262 at 286).
As to what “routine” meant in this passage, the majority of the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 (12 December 2002) said:
"51. What Aickin J had in mind as 'routine' appears from an earlier passage in his judgment in which he was discussing the question whether evidence of the steps taken by the patentee was relevant and therefore admissible in a revocation action. His Honour said [at 148 CLR 262 at 280-281]:
'Evidence of what he did by way of experiment may be another matter. It might show that the experiments devised for the purpose were part of an inventive step. Alternatively it might show that the experiments were of a routine character which the uninventive worker in the field would try as a matter of course. The latter could be relevant though not decisive in every case. It may be that the perception of the true nature of the problem was the inventive step which, once taken, revealed that straightforward experiments will provide the solution. It will always be necessary to distinguish between experiments leading to an invention and subsequent experiments for checking and testing the product or process the subject of the invention. The latter would not be material to obviousness but might be material to the question of utility.' (emphasis added)"
The court, in discussing the approach from the Wellcome case, also found a reformulation of the so-called “Cripps question” an acceptable approach. Adapted to the present case, the following question is relevant:
Would a person skilled in the art be directly led as a matter of course to try a method as in the claimed invention in the expectation that it might well produce a useful alternative termite barrier or solve the problems?
In submissions TMA placed much reliance on what the AS (Australian Standard), as common general knowledge, imparted to the skilled person. Thus it was argued that the skilled person would know that parge material could be used as a primary termite barrier since, when used to fix steel mesh barrier to building elements, it had to be resistant to termites to ensure the mesh barrier installation worked to deter termite penetration apart from them going over the barrier. Furthermore the person would also know that parging material could be used to fill grooves and crevices as indicated in the AS at clause 6.2.6. Thus it was submitted that with this background knowledge the skilled person would only need routine steps to arrive at the invention.
The alternative submission was to the effect that the references in the AS to parge material at clauses 5.2.2 and 6.2.6 along with the stated general requirements for effective termite protection, would lead the skilled person to consider it worth trying the use of a parge material as a continuous layer with it filling gaps and crevices so as to provide a termite proof barrier which termites would need to cross to attack a building element. It was submitted that the skilled person would envisage an expectation of success in solving the problem this way because the AS indicates that parge material is to be termite resistant and can be used to fill gaps and crevices.
There is little evidence to directly assist me on this overall question. The AS discloses the use of parging material to fill crevices on the edge of a slab in order to ensure a complete contact of graded stone with that slab to form a barrier. It also discloses the use of parging material with the mesh barriers by using a narrow bead on one building element in order to secure the mesh. The terms of the AS is restricted to using the parging material in specific contexts and beyond those contexts there is no indication of possible matters of routine to suggest the use in other contexts.
Glossop states his personal knowledge of the use of a parge material alone in building situations prior to September 1995 to provide a barrier to termites: these are the alleged prior use situations mentioned previously. I note that Glossop was closely involved with the development of a suitable adhesive mixture to use with the steel mesh in the T-M System developed by TMA in 1992/93. I have found that the T-M System was part of the common general knowledge. Glossop was also involved with the development of the AS prior to June 1995. Given the properties of the "parge" adhesive that TMA required for its system, it is reasonable to accept that Glossop recognised its use in other situations to provide a termite barrier without the use of mesh. Thus even though Glossop was working to exploit and enhance the T-M System, it seems that if confronted with the problems the application identifies, he would have considered using or trying parge material alone as a termite resistant barrier in building situations. It is also reasonable to assume that there may have been a sufficiently high expectation of success in doing this because the TMA parge material had to be termite resistant, flexible to ensure a continuing bond, and durable.
Accordingly I am of the view that with knowledge of the use of termite resistant parging material as an adhesive for mesh barriers, such as by knowledge or use of the T-M System, a skilled worker would have been led as a matter of course to try such material by itself to form a barrier that termites would need to cross to infest a building element. There would have been a reasonable expectation of success given the known properties of a parge material disclosed in the AS. Furthermore the skilled worker would have recognised that a continuous barrier was needed on a building element or structure so as to force termites to cross the barrier in order to infest other parts of the element or structure. The positioning of such a barrier in relation to specific building elements as in the present claims would have been options readily apparent to a skilled worker with knowledge of the characteristics of termite activity, of existing barrier methods, and of methods to detect termite travel. Thus in my view the skilled worker in the art would have been directly led as a matter of course to try such material by way of the various methods as claimed in order to create a termite barrier. Accordingly I consider that the methods as claimed do not involve an inventive step. In my view this finding applies to all claims.
Manner of manufacture
The law on manner of manufacture has been considered in a number of recent decisions by Australian courts: the High Court in NV Philips Gloelampenfabriken v Mirabella International Pty Ltd (1995) 183 CLR 655; 32 IPR 449 and Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd ( 1998) 194 CLR 171; 40 IPR 243, and the Federal Court in Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553.
In the Bristol-Myers case, the majority summarised the effect of the Philips case as:
"Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as 'known'. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the court - or the commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area'. In other words, what is disclosed in such terms may be taken as an admission to that effect." [at page 564 at [30]]
The reference to what is "known" makes it clear that an assessment of whether on the face of the specification there is a quality of inventiveness is based on the common general knowledge as it is presented on the face of the specification. Thus any information which is stated to be common general knowledge or can reasonably be inferred to be common general knowledge can be used.
TMA submitted that the opposed specification identifies features which were well known in the prior art (eg. termites making mud tunnels, parge, treating target surfaces) and that there is nothing which suggests that the features or methods claimed are new. If that is the case, then it was submitted Philips applies.

At best the specification on its face indicates that it is known to require barriers to inhibit or prevent termite activity in reaching building elements. Poison barriers are mentioned along with barriers formed of mesh affixed by parge material. Thus I believe it can reasonably be inferred that these methods were common general knowledge. Against the common general knowledge reasonably inferred from the specification I do not believe the specification on its face reveals a lack of inventiveness in respect to forming barriers as claimed. There is no suggestion that parge material is known other than as an adhesive for the barrier mesh. There is nothing from what is known on the face of the specification to lead the non-inventive and unimaginative skilled worker directly to the claimed invention. The invention as claimed is thus directed to a manner of manufacture.
Entitlement
The present applicants are listed as the inventors of the invention for the opposed application. TMA submitted that Mr Kennedy was not entitled to be granted a patent on the application, claiming that Kennedy arrived at the invention during the course of his duties as an employee of the opponent. Thus TMA submitted that any rights to the opposed application are held by Kennedy on constructive trust for the opponent.
From the evidence of Kennedy and Hitchen it is clear that the present invention evolved following discussions between the two and after Hitchen had done some rendering work on his house. Hitchen gives no precise time of these discussions other than the "early nineties". However Kennedy's evidence provides some insights into the timing and events leading to the application being filed.
Kennedy in Kennedy's 1^st states that he was employed "from 18 April 1994 on a month to month contract for a period of approximately three months." This contract was with TERMI-MESH Gold Coast Pty Ltd ("TMGC") (annexure AWK1 is a copy). Although Kennedy says he was employed under this contract for about "three months", there is no evidence that his employment under the contract ended, and if it did end when it did so. However Kennedy says that he was presented with a fresh contract of employment on or about 1 November 1994, but as he was not happy with it, he says it was not signed (clause 5). Kennedy confirms that he attended a TMA national conference held in Queensland in March 1995. In clause 6 Kennedy also states that "Notwithstanding the above [presumably a reference to his clause 5 and not signing a new contract], I continued to be an employee of [TMGC] on a wages basis until I left on 2 October 1998. Kennedy also states, in clause 9, that "Patent application no 719812 was initially filed on 1 September 1995 whilst I was an employee of [TMGC]." Although Kennedy states in clause 12 that discussions with Hitchen leading to the invention was after "I had been employed by TMGC", this is at odds with his other evidence. I note that Glossop in Glossop's 1^st states that Kennedy entered into a "consultancy arrangement" with TMGC from about 18 April 1994 and that this ceased "on or about 1 November 1994". Glossop further states that Kennedy "entered into a contract of employment with TMGC" on 1 November 1994, although this is at variance with Kennedy's evidence.
On Kennedy's own evidence the patent application was initially filed while he was an employee of TMGC. TMGC was a TMA franchisee. As a franchisee TMGC supplied and installed the T-M System. Kennedy states that during his employment by TMGC he performed a range of tasks, but that on no occasions or instances was he directed to research and develop new techniques on behalf of his employer (clauses 7 & 8). He also states that at the time of filing the application "I had no thoughts of and did not believe that I was obliged in any way to disclose our ideas to" TMGC (clause 13).
The essence of TMA's argument about entitlement was in two respects. Firstly it said that if due to his employment Kennedy possessed confidential information from his employer concerning the use of parge material in a manner representing the concept in the opposed application, then he was not free to disclose it to Hitchen and claim patent rights with Hitchen to it. Secondly, TMA submitted that if the invention developed, and Kennedy's part in it, was within the scope expressly or impliedly of Kennedy's employment and it was consistent with the duties he owed his employer, then Kennedy must account to his employer for it and that his employer owns the part he played. In this event TMA through its franchisee TMGC would be entitled to the invention. TMA said it didn't matter whether Kennedy was a contractor or an employee since the relationship had to be considered as a matter of substance rather than form to determine the actual control exercised over the subject person (per Hollis v Vabu Pty Limited (2001) 207 CLR 21; (2001) HCA 44; see paras 43-45).
Submissions in answer on behalf of the applicants were that, firstly, the information Kennedy was privy to from his employment concerned the use of parge material as an adhesive for the mesh barriers and limited use in other particular situations, eg. filling voids around pipes and on edges of concrete slabs. There was no information for its use of the nature claimed. Secondly, the terms of Kennedy's April 1994 contract were said to be prima facie evidence of the intentions of the parties at that time and as such Kennedy was under no obligation to exercise any inventive or research faculty on behalf of his employer. Reference was made to Spencer Industries Pty Limited v Collins [2003] FCA 542 (4 June 2003).
As to TMA's first argument, I do not believe that Kennedy is in any way disentitled to the invention because of any confidential information he had gained from his employer. It has not been established that Kennedy, in September 1995, possessed information about parge material materially different to that in the AS, a public document available to the trade at the time. There is no evidence to establish that TMA possessed confidential information about using parge material in the manner claimed in the opposed application and that Kennedy had been imparted with that knowledge prior to September 1995. Accordingly I dismiss that argument.

100. TMA's second argument requires consideration of Kennedy's employment duties. The Spencer Industries case refers to various authorities and principles pertinent to employee and employer relationships and considerations about entitlement to inventions made by an employee - I do not see it necessary for me to repeat or detail those authorities and principles here. Suffice me to say that what is clear from that case is that the nature and terms of the employee's employment has to be determined along with all the circumstances at the time.
101. In this case the precise position regarding Kennedy's employment immediately prior to September 1995 is not entirely clear. Kennedy states that he was an employee of TMGC on 1 September 1995. There are some differences in evidence between Kennedy and Glossop about whether Kennedy had or had not signed a new employment contract on or about 1 November 1994. However I accept Kennedy's evidence on this point that he did not sign a new contract because TMA have not provided any evidence to refute that position. However the question remains as to the nature of Kennedy's employment duties. Kennedy's first declaration provides limited details of his duties, and the vagueness regarding the termination or otherwise of his first contract does not assist. However I believe I can rely on two elements of information from Kennedy, firstly the terms of his April 1994 contract and secondly what he states in clause 7 of his declaration, Kennedy's 1^st. I note the applicants' submissions indicated that this contract was prima facie evidence of the intentions of the parties at that time.
102. Under the contract Kennedy was "responsible" for various "duties". The prime ones were:
"1. Use his best endeavours to represent [TMGC] and its interests in the region designated.
2. Determine the most successful and expeditious method of developing our market.
3. Ensure that TERMI-MESH is promoted, sold and installed at the highest saturation level possible.

…
8. Attend to other matters as directed by the Directors or their nominees.
…
13. Ensure installations comply with builder's construction schedule."

The contract also states that "Kennedy will":
"1. …
…
4. Ensure that the intellectual property and confidential information of TERMI-MESH installations and the company [TMGC] shall not be disclosed to any other party without the prior written consent of the Directors of [TMGC].
…
6. … "

103. From the terms of the contract I form the view that Kennedy's prime duties were concerned with promoting and generating sales of the T-M System on behalf of TMGC, and ensuring proper scheduling of installations. There were also duties of regular reporting his activities to the Directors and assisting with certain other business arrangements and accounting practices for the company. There is no express requirement concerning developing new inventions for the company. There is however a specific clause about not disclosing technical and confidential information about T-M Systems and the company. There is no evidence about what "other matters", if any, were directed under duty 8 of the contract.
104. In clause 7 of his declaration Kennedy states:
"During the period of my employment … I performed various duties including management, estimator, office duties, installer, maintenance, stock controller and promotional work and the like and on some occasions, I was called on to perform these tasks outside the Gold Coast region where there was no existing Termi-Mesh franchises [sic]."

As stated by Kennedy, I do not see anything in these duties which implies a research or development role in relation to new products for his employer. There is no evidence from TMA which otherwise explicitly or impliedly establishes a duty on the part of Kennedy to develop new products for TMGC or TMA, or to perform duties other than stated by Kennedy.
105. From the material before me I am of the view that Kennedy was not required by his employment to develop or suggest possible new products to TMGC. His duties involved promoting, selling and installing the T-M System and assisting in other management and accounting duties for the company. Thus the product of his discussions with Hitchen, the opposed invention, was not the product of work that Kennedy was paid to do by TMGC. The fact that the invention involves a technical field with which TMGC was conducting business at the relevant time, namely barriers for termite control, does not of itself give rise to a finding that TMGC is entitled to the benefit of the invention.   It was suggested that in developing an alternative barrier system to the T-M System, Kennedy failed to comply with duty 1 from his April 1994 contract. However I do not see that in developing a different barrier method to that of his employer, Kennedy transgressed against duty 1 and thus somehow enlivened TMA's entitlement to the invention. There is no evidence before me to indicate that Kennedy was bound by either any express term of employment or other agreement with TMGC or a directive from TMGC whereby any intellectual property developed or envisaged by Kennedy during his employment with TMGC resided with TMGC. I see the position in this case of some similarity to the circumstances and outcome in the Spencer Industries case.
106. Accordingly I find that the invention made by Kennedy, as joint inventor, was made outside the course of his duties as an employee of TMGC. The benefit and entitlement to the invention thus rests with Kennedy as an inventor.   I therefore dismiss TMA's claim to entitlement of the invention.
CONCLUSION
107. I have found that the specification does not offend against section 40. I have also found that the claims do not lack novelty and relate to a manner of manufacture.
108. However I have found that the invention claimed in all claims lacks an inventive step in the light of material in evidence. I concluded that a skilled worker with knowledge of the use of termite resistant parging material as an adhesive for mesh barriers would have been led as a matter of course to try such material by itself to form a barrier which termites would need to cross to infest a building element. Thus the skilled worker in the art would have been directly led as a matter of course to try such material by way of the various methods as claimed.   Accordingly the methods claimed did not involve an inventive step.
109. I have also found that the invention made by Kennedy, as joint inventor, was made outside the course of his duties as an employee of TMGC and that entitlement to the invention rests with him as an inventor.
110. As no finding as to the patentability of the invention could be affected in the event that the earliest priority date could not be sustained, I did not see it necessary to examine the priority date issue in detail.
111. Given my findings, I do not see any patentable subject matter in the specification. Accordingly I refuse the application.
COSTS
112. The usual practice is that costs should follow the event and the submissions for the parties were consistent with that approach. As I have found the opposition successful on the ground of lack of inventive step, costs should go against the patent applicant. I see no reason why this should not be the result in this case. Accordingly I award costs in this matter against the applicants Anthony William Kennedy and John Charles Hitchen.
Trevor Bruhn
Delegate of the Commissioner
Patent attorneys for the applicants:   Cullen & Co, Brisbane
Patent attorneys for the opponent:    Wray & Associates, Perth

[2003] APO 50

14 November 2003