Aquila Steel Company Limited v Neumann Steel Pty Ltd

[1994] APO 32

official notice

decision of a delegate of the commissioner of patents

Petty Patent       :    No.629513 in the name of

AQUILA STEEL COMPANY LIMITED

Title             :    A PREFABRICATED REINFORCEMENT SYSTEM

Action: Application for the grant of extension of term under section 69 and a Notice filed under section 28 by

NEUMANN STEEL PTY LTD

Decision: Issued . Grounds that the invention does not comply with paragraphs 18(1)(a) and 18(1)(b) not established. Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for the grant of an extension of term under section 69 of the Patents Act 1990 of Petty Patent No 629513

in the name of AQUILA STEEL COMPANY LIMITED and notice filed

under section 28 of the Patents Act 1990 by NEUMANN STEEL PTY LTD.

background

Petty patent application No 89696/91 was filed on 13 December 1991 being a divisional application made by virtue of section 39 of the Patents Act 1990 of application No 68309/90 which was filed on 19 December 1990. Application No 68309/90 and its complete specification was cognated in respect of provisional
specification No PJ 7992 (filed 22 December 1989) and provisional specification No PK 0488 (filed 6 June 1990). Following acceptance, the petty patent application was sealed on 1 October 1992 as petty patent No 629513. On 25 August 1993, the patentee, AQUILA STEEL COMPANY LIMITED, applied under section 69 for an extension of term of petty patent No 629513 and on 1 September 1993, a notice was filed under section 28 by NEUMANN STEEL PTY LTD.

The matter came to hearing in Canberra on 28 February 1994.  The patentee was represented by Mr Greg Munt, patent attorney, of Griffith Hack & Co. with Mr Ivan Lakatosh of BHP as observer.  The notifier was represented by Mr Grant Adams, patent attorney,

of Grant Adams & Company.

THE PETTY PATENT SPECIFICATION

The specification commences by stating:

" The present invention relates to a prefabricated concrete
     reinforcement system for footings and slabs. "

The specification then describes known reinforcement forms for footings and continues by stating:

" In certain circumstances, the Standards Association of
     Australia prescribes the use of slab ties to couple together
     slab reinforcement and footings reinforcement.  Basically,
     the slab ties comprise lengths of reinforcing steel which
     are arranged at spaced intervals along the footings
     reinforcement to extend upwardly to contact the slab
     reinforcement.

Typically, the slab ties are generally straight lengths of
     reinforcing steel placed vertically in the footings before
     the concrete sets with the top portion of the slab ties bent
     over after the concrete has set.  The slab ties are then
     tied to the slab reinforcement.  It is noted that the
     Standards Association of Australia do not prescribe or
     suggest that the slab ties are mechanically interlocked with
     either the footings reinforcement or the slab reinforcement.

In most instances, in use, the footings reinforcement is
     located on chairs in the trench, the slab ties are
     positioned after the footings reinforcement, and finally the
     slab reinforcement is located on chairs in the slab
     excavation. This can be a tedious and time consuming task.
     Moreover, in most instances, the slab ties can only be
     inserted after the concrete pour, prior to setting and
     preliminary inspection by the local council has been
     completed.

It is an object of the present invention to alleviate the
     disadvantages of known footings and slab reinforcement
     described in the preceding paragraphs. "

The consistory statement then follows which corresponds to     claim 1.

The invention is then further described with reference to the accompanying drawings.

At the end of the description is a list of what is said to be some of the advantages of the preferred embodiments and these are given as:

" 1.  The components are prefabricated, thus saving time and
       therefore cost associated with building the reinforcement
       member from scratch. 

2.  The reinforcement member can be installed quickly and
       accurately on site.  Specifically, once the cage is
       located the prescribed distance from the bottom of the
       footing trench, the support for the perimeter of the slab
       reinforcement is also set.

3.  The reinforcement member eliminates the need for the
       placement of slab ties between the footing reinforcement
       and the slab reinforcement. "

The claims then follow which read:

" 1.  A reinforced concrete footing, for use with a reinforced
       concrete slab, the footing comprising, a prefabricated
       reinforcement member at least partially embedded in
       concrete, the member comprising a folded sheet of welded
       mesh formed from longitudinal and transverse steel rods,
       and the member comprising a generally horizontal planar
       section embedded in concrete in a lower portion of the
       footing adapted to reinforce the footing and an upwardly
       extending planar section at least partially embedded in
       concrete adapted to define a support for a slab
       reinforcement member.

2.  The footing defined in claim 1, wherein the upwardly
       extending planar section comprises at least two
       longitudinal steel rods.

3.  The footing defined in claim 1, substantially as
       hereinbefore described with reference to Figs. 1, 4,
       6a and 6b. "

THE NOTICE UNDER SECTION 28

The notice reads:

" No extension of term should be granted on the above Petty
    Patent as the alleged invention claimed is not a patentable
    invention, as it does not comply with paragraphs 18(a) or
    18(b). "

At the hearing, Mr Adams explained that "18(a)" and "18(b)" should read "18(1)(a)" and "18(1)(b)" respectively.  Since all the evidence provided by the notifier is in accordance with Mr Adams' explanation on this point, in the absence of any objection by the patentee and in accordance with the decision in CSIRO v HBH Technological Industries (1992) 24 IPR 90, I can see no reason why the matter cannot proceed on the basis that the purpose of the Section 28 notice is to assert that the petty patent is invalid on the grounds that the invention is not patentable because it does not comply with paragraph 18(1)(a) or (18)(1)(b) of the Patents Act 1990.

Accompanying the notice were statutory declarations by:

Tony Lawrence, dated 31 August 1993, with annexed sheets A and B,
Bruce Leslie Hargreaves, dated 25 August 1993, with annexed Exhibits BLH-1 to BLH-6,
Ian David Miller, dated 30 August 1993, with annexed Exhibits IDM-1 to IDM-12 and
James Grant Adams, dated 24 August 1993, with annexed Exhibits
JGA-1 and JGA-2 which included copies of statutory declarations by Mark Louis Neumann, dated 11 March 1992 and Peter John Kavanaugh, dated 6 March 1992 respectively.

RESPONSE TO NOTICE

The response comprised a statutory declaration by
Stephen James Rowland, dated 7 December 1993, with annexed Exhibits SJR-1 and SJR-2.

PARAGRAPHS 18(1)(a) AND 18(1)(b)

Paragraphs 18(1)(a) and 18(1)(b) of the Patents Act 1990 read:

" 18(1) ..., a patentable invention is an invention that, so
    far as claimed in any claim:

(a) is a manner of manufacture within the meaning of
         section 6 of the Statute of Monopolies; and
     (b) when compared with the prior art base as it existed
         before the priority date of that claim:

(i)  is novel; and
           (ii) involves an inventive step; ... "

DECISION

Paragraph 18(1)(b) - Novelty and Inventive Step

Documentary Evidence

At the hearing Mr Munt submitted that much of the documentary evidence provided on behalf of the notifier comprised drawing documents but the notifier had not met the requirement of part (c) of regulation 2.7 in that evidence of the date and publication of the respective drawing documents had not been provided.  I will return to this point if I find that any of the drawing documents can be used to anticipate the claimed invention.

I will first consider the documentary evidence provided by way of  the statutory declaration exhibits on behalf of the notifier and determine what it discloses in relation to the claimed invention.

Tony Lawrence

Mr Lawrence's documentary evidence comprises details of Smorgen ARC products.  Of main interest is what is known as a "Banjo Ligature" which comprises a lower case "d" shape reinforcing bar made from 10mm round steel and wherein the lower enclosed part of the "d" is essentially a square while the upright arm of the "d" is a vertical extension of the right side of the square.  The "Banjo Ligature" is said to be sold in bundles of 25.  One diagram shows a "Banjo Ligature" with what I take to be a transverse longitudinal reinforcing bar abutting each corner of the square but there are no details as to how, or if, the longitudinal bars are fixed to the square.  This diagram also shows the upright arm of the "d" bent over in a direction away from the square.  According to Mr Lawrence, what I take to be longitudinal bars are fabric mesh footings but he has not presented any evidence why this should be the case.  I note that the mesh fabric footings shown on the same page have at least three longitudinal bars(wires) joined by cross wires and that all wires making up the mesh are the same diameter.  This being so, I take the view that there is doubt as to whether what I have identified as longitudinal bars are part of fabric mesh, particularly so since the longitudinal bars are depicted as being of a considerably greater diameter than the "Banjo Ligature" wire and are only two in number at each "layer"(one bar at each corner of the "d" square). Mr Lawrence also states that Smorgen ARC have manufactured a prefabricated footing cage using the "Banjo Ligature" since 1984, but no details, other than those I have described, have been provided.

Ian David Miller

Mr Miller's documentary evidence comprises a copy of an Australian Standard 2870 - 1986, a NUCAST STEEL brochure (not dated), A Queensland Region CEMENT AND CONCRETE ASSOCIATION Advisory Note 5 - ANV 5 October 1979, a paper presented to the QUEENSLAND MASTER BUILDERS ASSOCIATION by JE Holland on 27 November 1980, a CEMENT AND CONCRETE ASSOCIATION OF AUSTRALIA Technical Report by J Hasker dated January 1972, a series of drawings produced by I.D. MILLER & ASSOCIATES all dated before the priority date and which show in some drawing sections details of footings and Sections D1 - D6.4  of FABRIC REINFORCEMENT produced by the CONCRETE SOCIETY in conjunction with the FABRIC REINFORCEMENT DEVELOPMENT ASSOCIATION UK and which became available in a library in Australia on 25 June 1990.

In assessing Mr Miller's evidence I will concentrate on what the documents actually disclose.  Considering first Australian Standard 2870.  The most relevant disclosure is the left hand side alternative of figure 3.2 entitled "Tied edge beam".  This shows a concrete footing comprising a layer of mesh reinforcement encased in footing concrete and spaced from and parallel with the footing lower face.  A concrete slab abuts the footing upper face, the slab comprising another layer of mesh encased in the slab concrete and spaced from and parallel with the upper face of the slab. Between the two layers of mesh are what are termed W6 fitments which comprise an "L" shape with the top of the vertical arm of the "L" bent over parallel to but in an opposite direction to the horizontal arm of the "L".  The slab mesh sits on the bent over portion of the vertical arm of the "L" while the horizontal portion of the "L" is shown as being close to the footing mesh.  A further figure, figure 6.1, shows a similar shaped fitment sitting on the footing mesh.  In figure 3.2, the fitments are said to be at 600 mm centres.    

The NUCAST brochure discloses a series of reinforcement cages made from welded mesh, wherein the mesh is folded to enclose a shape.  The cage depicted above the title "Standard Footing Trench Reinforcement" is rectangular in cross-section while the cages depicted above the title "Column & Beam Reinforcement Cages" includes a cage which is a hollow "L" shape in cross-section.

Advisory Note 5 gives details of the dimensions and properties of Australian Fabric Reinforcement.  The note also discusses the bending of fabric.

Holland's paper entitled "Design, Behaviour, and Repair of Housing Slabs" includes diagrams of two stages of construction of a slab sitting on beams (footings).  The first stage shows mesh standing vertically and encased in concrete and extending from adjacent the bottom of the footing to pass through and stand proud of the footing such that three longitudinal wires are left exposed.  The second stage shows the three wire portion bent over and slab reinforcement mesh sitting on the bent over portion with both the bent over portion and slab mesh being encased by the slab concrete.

Hasker's Technical Report shows what appears to be special designs of reinforced slabs  where the slab and footings are poured at the same time.  The footing reinforcement comprises cages of rectangular "Ligs" at 30" centres with longitudinal bars (rods) inside and abutting the corner of the "Ligs".  Whether or not the longitudinal bars are welded or otherwise fixed to the "Ligs" is not disclosed.  The slab reinforcement comprises horizontal mesh bent over in the region of the footing such that the mesh subtends into the footing and the interior of the cage.

I now come to the I.D. Miller & Associates Pty Ltd drawings.  Many of the sectional views show footings reinforced by mesh of inverted "L" shape where the inverted longer arm of the "L" is positioned vertically in and encased by the footing concrete while the shorter horizontal arm of the "L" is situated in the slab concrete and is encased thereby.  The shorter arm of the "L"  underlies slab mesh and can thus be said to be adapted to define a support for slab reinforcement.  In his statutory declaration Mr Miller draws attention to sections C-C and F-F of drawing No 891301 (Exhibit IDM-7).  These particular sections show reinforcement for a slab where the slab has to accommodate a servicing "trench duct" deeper than the slab depth and where the "trench duct" is covered by a floor plate.  In effect the slab in the area of the "trench duct" is "U" shaped in cross-section.  The reinforcement for the slab encompassing the "trench duct" comprises a generally "U" shaped piece of mesh having the vertical arms of the "U" at right angles to the horizontal bottom of the "U" and with the top of the arms of the "U" bent outwardly.  The majority of the "U" is encased in concrete comprising the bottom and sides of the "trench duct" while the bent portions of the arms are encased in slab concrete either side of and outwardly of the top portion of the "trench duct".  The bent portions of the arms underlie slab mesh and can be said to define a support for slab reinforcement.  Other drawings, such as drawing No C1589-04 (Exhibit IDM-9) at section G2, show welded mesh having planar horizontal and vertical sections but positioned in the slab and they are thus not relevant to footings.

The other Miller exhibit, Fabric Reinforcement Sections D1-D6 by the Concrete Society UK were, according to Mr Miller's statutory declaration not received in a library in Australia until 25 June 1990 and, since they are not otherwise dated they have not been established as forming part of the prior art base as it existed before the earliest priority date of the claims.  I note that Mr Miller does not identify in which library this exhibit was received and that the earliest priority date of the claims has not been challenged by the notifier.

Bruce Leslie Hargreaves

Mr Hargreaves' documentary evidence includes Australian Standard 2870-1986 which I have already considered under Mr Miller's evidence.  The majority  of the balance of Mr Hargreaves' documentary evidence comprises what Mr Hargreaves identifies as copies of foundation sketch proposals which he believes were prepared by a staff draughtsman of Foundation Site Investigations Pty Ltd prior to September 1984.  All the sketches are on sheets with Foundation Site Investigations letter heads.  Most of the sketches show foundations with rectangular cage reinforcing mesh encased in concrete with starter bars extending into the cages and up into slabs and whereby the starter bars underlie the slab reinforcement.  An additional page shows what appears to be a series of types of purpose built mesh proposals where the mesh is "L" shaped in cross-section and where in all cases at least three different diameters of wire are used to make up the mesh.  For example in the "Type I" proposal, the "L" in cross-section transverse wires are 600 mm apart, one from the other, and made from what is stated to be "I 5" wire.  At the extremities of the "L" arms are larger diameter longitudinal "I 8" wires, while at the apex of the "L" is a larger diameter still "I 11" longitudinal wire.  There is no indication on this particular page as for what purpose the special mesh is intended or whether it has any relationship to the other sketch pages which are all clearly foundation proposals.  More importantly, there is no indication as to whether the mesh is welded off site or whether the mesh is made up on site from say, "L" shaped starter bars, with the longitudinal bars or wires tied in position.

James Grant Adams

Mr Adams' statutory declaration included as annexures statutory declarations by Mark Louis Neumann and Peter John Kavanaugh.
The Neumann and Kavanaugh declarations in turn were accompanied by documentary evidence exhibits.

Mr Neumann's documentary evidence comprises four drawings, each dated March 1989 or before, showing slab and footing layout and details for proposed residences prepared by Consulting Engineers,
Ray Sargeant and Associates for their client, Craftsman Homes.  In my opinion, the most relevant detail drawing sections in each case are the edge beam detail (detail 1) and garage entry detail (detail 2).  The edge beam details to me show slab footings where the reinforcement between the footing and the slab comprises inverted substantially "L" shaped starter bars (R10 ties) at 900 mm centres with the lower end of the substantially vertical portion of the "L" (as an alternative proposal) either tied to or adjacent to a longitudinal edge of horizontally placed  R8 mesh in the lower portion of the footing.  The upper horizontal portion of the inverted "L" underlies slab mesh.  The garage entry detail shows F8 mesh horizontally placed in the lower portion of the footing.  In the upper portion of the footing is  horizontally placed slab mesh which is stepped down from the slab mesh proper.   Between the two horizontal layers of mesh in the footing are square shaped R6 ties at 900 mm centres.

Mr Kavanaugh's documentary evidence includes a page of "FOOTINGS SLAB-ON-GROUND" proposals the page being annotated "Queensland Master Builder's Association Domestic Construction Manual Edition 2 September 1984".  The most relevant detail sections are annotated.  The "metal or timber frame" proposal (annotated "bent fabric in footing") for a suspended slab on a sloping site comprises  F62 bent mesh, inverted "L" shape in cross-section, with the major part of the vertical portion of the inverted "L" extending to the lower part of the footing and encased by the footing concrete. The rest of the vertical portion and horizontal portion of the inverted "L" are encased by the slab concrete and underlie the slab mesh.  The "masonry or veneer" proposal (annotated "bent bars in footing") appears to comprise starter bars (R10 ties) at 900 mm centres wherein the bars comprise a rectangular shape  with the longer sides of the rectangle being positioned vertically in the footing with one vertical side extended up into the slab and with the top of the extension bent over to extend horizontally away from the rectangle.  The bent top of the extension underlies the slab mesh.  Tied to or adjacent and inwardly of each rectangle corner are longitudinal bars with a similar tied or adjacent bar midway between the corner bars inwardly and adjacent the shorter horizontal sides.     

Another part of the Kavanaugh documentary evidence comprises a sheet annotated "Part Copy - Precast Concrete Culverts 1976 -
G.Burchill & Partners Consulting Engineers".  This exhibit shows "L" shaped bent mesh extending around the corner of various sized culverts.

Also included in the Kavanaugh documentary evidence is the NUCAST brochure which I have already considered under Mr Miller's evidence. 

Finally, Mr Kavanaugh's documentary evidence includes copies of the foundation sketch proposals which I have considered under Mr Hargreaves' evidence.  Mr Kavanaugh states that the proposals are for mesh fabric reinforcements and were prepared by FOUNDATION SITE INVESTIGATIONS PTY. LTD. and supplied to his firm, SWAN & KAVANAUGH, freely, i.e. not under any conditions of
confidentiality.

Novelty

The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 where Aicken J. stated:

" The basic test for anticipation or want of novelty is the
     same as that for infringement and generally one can
     properly ask oneself whether the alleged anticipation
     would, if the patent were valid, constitute an
     infringement. "

Infringement of a claim occurs where " each and every one of the essential integers " of that claim have been taken, see Rodi &
Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at 391.   

Further, a prior disclosure will only invalidate a claim if, after having read it, the skilled addressee would, rather than could, have produced all the essential integers of the claim:

" Any information as to the alleged invention given by any
     prior publication must be for the purpose of practical
     utility, equal to that of the subsequent patent.  The
     latter invention must be described in the earlier
     publication that is held to anticipate it, in order to
     sustain the defence of anticipation. "

See Canadian General Electric v Fada Radio,(1930) 47 RPC 69.

In deciding whether or not the claims are novel I will find it useful to break down the broadest claim (claim 1) into its constituent essential features to allow me to compare these features against the documentary evidence.

Claim 1 defines:

" A reinforced concrete footing, for use with a reinforced
  concrete slab, the footing comprising,

(a) a prefabricated reinforcement member at least partially
     embedded in concrete,

(b) the member comprising a folded sheet of welded mesh formed
     from longitudinal and transverse steel rods,

(c) and the member comprising a generally horizontal planar
     section embedded in concrete in a lower portion of the
     footing adapted to reinforce the footing and

(d) an upwardly extending planar section at least partially
     embedded in concrete adapted to define a support for a slab
     reinforcement member. "

Based on the stated object and the consistory statement features (a), (b), (c) and (d) are essential to the invention and hence, if a citation exhibit does not disclose one or more of these essential features, claim 1 will be novel over the citation     (see Nicaro Holdings v Martin Engineering 16 IPR 545).

Before I go any further, I would state that I understand the qualifying term "prefabricated" before "reinforcement member" in feature (a) to mean that the reinforcement member is made off site as opposed to being made in situ.

Comparing now the essential features of the invention with each of the statutory declaration exhibits which I have already considered and detailed.

Tony Lawrence - the "Banjo Ligature".   

In the absence of any evidence to the contrary, I am of the opinion the "Banjo Ligature" exhibit does not disclose a prefabricated reinforcement member comprising a folded sheet of welded mesh.  This being the case, the citation does not include at least the essential features (a) and (b) of claim 1.

Ian David Miller - Australian Standard 2870.

This exhibit does not disclose a prefabricated reinforcement member comprising a folded sheet of welded mesh having an upwardly extending planar section.  It thus does not at least include the essential features (b) and (d) of claim 1.

- NUCAST Brochure

Given that footing reinforcement, in use, is inherently embedded in footing concrete, I am satisfied that the cage shown above title "Standard Footing Trench Reinforcement" (the rectangular , shaped mesh cage) when embedded in footing concrete, includes features (a), (b) and (c) of claim 1.  If one of the sides of the rectangular shaped cage constitutes the generally horizontal planar section, either of the two vertical sides of the rectangular shaped cage can be said to constitute an upwardly extending planar section.  However, since the brochure does not disclose or discuss a support for a slab reinforcement member there is nothing to lead a skilled addressee to consider such a support.  Consequently, I am unable to say that the vertical sides of the rectangular shaped cage are adapted to define a support for a slab reinforcement member and hence essential feature (d) of claim 1 is not disclosed.

- Advisory Note 5

This exhibit does not disclose any of the essential features.

- Holland's Paper

While I accept that this exhibit discloses essential features (a), (b) and (d) of claim 1, it does not disclose a reinforcement member comprising a generally horizontal planar section embedded in concrete in a lower portion of the footing adapted to reinforce the footing and hence essential feature (c) of claim 1 is not disclosed.

- Hasker's Report

As with the disclosure in the NUCAST brochure, this report shows a rectangular reinforcement cage situated in a footing with slab mesh passing through the top of the cage and into the interior thereof.  Accordingly, while the report can be said to disclose essential feature (a) of claim 1, since there is no disclosure of the cage being welded, it cannot be said that essential feature (b) of claim 1 is present. It therefore follows that essential features (c) and (d), which are dependent on feature (b) are similarly not present.  Further, since the slab mesh passes through the cage, it cannot be said that the cage, i.e. the reinforcement member, defines a support for a slab reinforcement member and hence even if the cage were to be shown to be welded mesh, essential feature (d) of claim 1 would not be present.  

- I.D. Miller & Associates Pty Ltd Drawings

The drawings showing footings reinforced by mesh of inverted "L" shape.  While they disclose essential features (a), (b) and (d) of claim 1, since they do not have a generally horizontal planar section embedded in concrete in a lower portion of the footing adapted to reinforce the footing, essential feature (c) of claim 1 is not disclosed.  With regard to drawing No 891301, since sections C-C and F-F are not for footings, they do not constitute a reinforced concrete footing and are thus not relevant.    

- Reinforcement Sections D1-D6

Since these sections were not published in Australia until after the earliest priority date of the claims, which date has not been challenged, they are not relevant.

Bruce Leslie Hargreaves - Australian Standard 2870

Already considered under Mr Miller's evidence.

- Foundation Site Investigations Pty Ltd
  Foundation Sketch Proposals

Those sketches showing starter bars supporting slab mesh extending into the interior of rectangular cages (which can as an alternative be RIBMESH welded cages) can be said to include essential features (a), (b) and (c) of claim 1, if the cage is taken to be the prefabricated reinforcement member, but, since the starter bars are not integral with the cage, the member does not have an upwardly extending planar section adapted to define a support for a slab reinforcement member.  Consequently, essential feature (d) of claim 1 is not disclosed by these particular sketches.  As the page containing the "L" shaped, in cross-section, mesh proposals gives no indication  as to the purpose of the proposals, I am unable to say that they have any relevance to reinforced concrete footings or providing a support for a slab reinforcement member.

Mark Louis Neumann - Ray Sargeant & Associates Drawings

In both of the details shown on the drawing the reinforcement does not comprise a folded sheet of welded mesh and hence essential features (b, (c) and (d) of claim 1 are not disclosed.

Peter John Kavanaugh - FOOTINGS SLAB-ON-GROUND PROPOSALS

The "metal or timber frame" proposal discloses essential features (a), (b) and (d) of claim 1 but does not show a generally horizontal planar section embedded in concrete in a lower portion of the footing adapted to reinforce the footing and hence essential feature (c) of claim 1 is not disclosed.  The "masonry or veneer" proposal does not disclose a folded sheet of welded mesh in a footing and hence essential feature (b) of claim 1 and consequently dependent essential features (c) and (d) are not disclosed.

- Precast Concrete Culverts 1976

This exhibit is not relevant to footings.

- NUCAST Brochure     

I have already considered this exhibit in Mr Miller's evidence.

- Foundation Site Investigations Pty Ltd
  Foundation Sketch Proposals

I have already considered these proposals in Mr Hargreaves' evidence.

There is another aspect I need to consider before applying the Novelty test and that is what effect would it have, if any, of reading the statutory declaration exhibits in the light of common general knowledge.  For Novelty considerations, the relevant common general knowledge is that at the publication date of the respective exhibit (The General Tire & Rubber Co v The Firestone Tyre and Rubber Company Ltd & Others [1972] RPC 457 at page 485) and I will consider the date aspect if the need arises. Just what is common general knowledge can only be positively established by the evidence of those skilled in the field of the invention (See the judgement of Aicken J. in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] 144 CLR 253).

In their statutory declarations, Messrs Lawrence, Hargreaves and Neumann limit themselves to discussing their exhibits and do not make any statements as to what is common general knowledge.  Mr Miller, in his statutory declaration states:

" Concrete footings are commonly constructed by placement of
     reinforcement in a footing trench with reinforcement
     fittings bent out of the footing which is cast by concrete
     poured to partially form the footings.

Use of prefabricated reinforcing mesh fitments bent to shape
     is common in reinforced concrete footings and concrete slab
     construction generally.

Use of reinforcing mesh in the form of trench mesh is also
     commonly used in reinforced concrete footings "

With regard to claim 1 Mr Miller says:

" The stated features of the Prefabricated Reinforcement
     System are well known and have been used in concrete
     construction in Australia before the priority date of the
     claim. "

In his conclusion he states in part:

" In my opinion, the petty patent application discloses no
     novelty in the application and is in addition obvious and
     was in fact in use in identical and similar forms of
     construction prior to the priority date. "

The response from the patentee comprises a statutory declaration by Stephen James Rowland.  In commenting on Mr Miller's statutory declaration Mr Rowland states in part:

" I am not aware of any commercial use or documentary
     publication in Australia before the development work in 1989
     leading to the invention which is the subject of the Aquila
     patent of the use of such reinforcing mesh configured and
     positioned as defined in claim 1 of the Aquila patent as
     part of a reinforced concrete footing. "

" I disagree with the opinion of Ian David Miller ... that the
     invention as defined in claim 1 of the Aquila patent was
     well known and in use in concrete construction in Australia
     before the priority date of the claim of the Aquila patent."

Leaving aside the fact that Mr Miller is not competent to say that there is no novelty in the application and that the application is obvious (Dennison Manufacturing Company v Monarch Marking Systems Inc 1 IPR 431 at 445), Mr Miller does not provide any corroborating documentary evidence or otherwise that the combination of integers as defined by claim 1 is well known and has been used in Australia before the priority date of the claim. Neither does he say, in relation to any one of his exhibits, that any specific missing integer of claim 1 which I have identified, is nevertheless disclosed by way of reading the document in the light of common general knowledge.

After considering the evidence of Mr Miller in conjunction with that of Messrs Lawrence, Hargreaves and Neumann, I am satisfied that it has not been established that any of the missing integers I have identified are disclosed by way of reading the exhibit documents in the light of common general knowledge.

I am now faced with the conflicting statements of Mr Miller and Mr Rowland.  Since I have nothing before me to throw any doubt on the veracity of either Mr Miller or Mr Rowland, under the circumstances, I can only conclude that Mr Miller's statements on what was well known in the art before the priority date are negated by Mr Rowland.

Reverting to the statutory declaration exhibits, since none of them disclose the combination of essential feature integers defined by claim 1, I find that claim 1 and its dependent claims are novel over the exhibits.

In the hearing Mr Adams expressed the opinion that integer (c) of claim 1 i.e. "the (prefabricated reinforcement) member comprising a generally horizontal planar section embedded in concrete in a lower portion of the footing adapted to reinforce the footing"
is not essential to the invention since a vertically orientated section when embedded in the concrete would be capable of withstanding any "tearout forces" that may be applied.  This may be one point of view, but, the horizontal section of the reinforcement member is defined as being embedded in concrete in a lower portion of the footing adapted to reinforce the footing.  Whether or not a vertically orientated section of reinforcement would reinforce a lower portion of a footing in like manner to the horizontal section is problematical.  Further, if the horizontal planar section was not provided, it is unlikely that one of the specification stated advantages, i.e. quick and accurate installation of the reinforcement member on site, could be met.  Additionally, Mr Rowland, in his statutory declaration states that the improved performance characteristics of the invention include an increased pullout resistance of the footing reinforcement member of the footing and that this is an important parameter in terms of preventing separation of the footing and the slab.  In view of the advantages provided by the generally horizontal planar section feature of the prefabricated reinforcement I do not agree with Mr Adams on his point of view and consider that this feature is essential to the invention.

Inventive Step

Mr Miller, in his statutory declaration says:

" ...the petty patent ... is in addition obvious and was in
     fact in use in identical and similar forms of construction
     prior to the priority date. "

Mr Hargreaves, in his statutory declaration says:

" ... there is nothing inventive ... in substituting folded
     welded mesh, which is a commonly known and used form of
     steel reinforcing for concrete, for individual reinforcing
     bars or rods at fixed spacings. "

I equate inventive step with obviousness.  For an invention to be obvious, it needs to be obvious to a non-inventive skilled worker in the field equipped with common general knowledge as at the relevant priority date (Welcome Foundation Limited v VR Laboratories(Aust) Pty Ltd [1982] RPC 343). In other words I need to consider whether a person skilled in the art of reinforced concrete footings, having become aware of any of the statutory declaration exhibits and desirous of alleviating the previously described disadvantages of known footings and slab reinforcement, would at once have it occur to them to provide a reinforced concrete footing in accordance with the combination of essential integers defined by claim 1 (Allsop Inc & Another v Bintang Ltd & Ors, [1989] AIPC 90-615 at page 39,332). In the light of the statutory declarations and documentary evidence provided by Messrs Miller, Hargreaves, Neumann and Kavanaugh, it has not been established that the combination of essential integers defined by claim 1 was common general knowledge before the priority date of the claim. More importantly, it has not been shown that any person skilled in the art of concrete reinforced footings and with the knowledge of any of the statutory declaration exhibits would at once have it occur to them to provide a reinforced concrete footing comprising the essential integers of claim 1. This being the case, I find that claim 1 and its dependent claims involve an inventive step over the prior art.

Paragraph 18(1)(a) - Manner of Manufacture.

During the hearing Mr Munt drew my attention to the decision of
Northrop, Lockhart and Cooper JJ in WRGrace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) AIPC 90- 974 where at page 39,275 their Honours said:

" The relevant principles governing s.6 of the Statute of
     Monopolies and therefore s.6 of the Act are well
     established: ... Section 6 requires that there be some
     inventive idea sufficient to warrant the grant of a
     monopoly.  To be patentable, a manner of manufacture must
     not only be new, it must also be not something which would
     suggest itself in the ordinary course to anyone using an
     invention already known.  A manner of manufacture must be
     something discovered which is not included in the already
     existing stock of public knowledge and must be the result
     of independent invention. "

At the hearing Mr Adams submitted that there was nothing inventive in replacing starter bars tied to mesh by welded mesh to produce the alleged result of invention.  Mr Munt responded by
stating that if it was all so easy, why was it that nobody had previously produced footings according to the claimed invention.

In their statutory declarations, Messrs Lawrence, Miller, Adams,  Neumann and  Kavanaugh do not specifically discuss the question of inventiveness with respect the manner of manufacture issue.  In his statutory declaration, Mr Hargreaves states that "in my opinion, there is nothing inventive or novel in substituting folded welded mesh, which is a commonly known and used form of steel reinforcing for concrete, for individual reinforcing bars or rods at fixed spacings."

While Mr Adams, at the hearing, and Mr Hargreaves, in his statutory declaration, alluded to the question of lack of inventiveness with respect to the manner of manufacture issue, neither provided substantiating evidence.  I have already found that a person skilled in the art, on being made aware of any of the statutory declaration exhibits, would not be led as a matter of course to the combination of integers defined by claim 1 by the combination simply occurring to them.  As a consequence, since I have no evidence before me from which to conclude that the invention does not meet the relevant principles governing s.6 of the Statute of Monopolies as set out in WR Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (supra), I am unable to say that the claimed invention does not meet the requirements of paragraph 18(1)(a) of the Patents Act.

Mr Miller, in the concluding paragraph of his statutory declaration states:

" If the petty patent application was upheld, it is submitted
     that this would place an unfair, unjustified and restrictive
     burden on the designers and manufacturers of reinforcing
     mesh units. "  

From this statement I gather that Mr Miller is inferring that the petty patent, if the extension of the term is granted, will cause inconvenience.  I do not agree that this will be the case.  Having found that the evidence does not support the assertions that the claimed invention is not novel and does not involve an inventive step, the public will not be prevented from doing anything they did before the priority date of the claims and hence inconvenience is not an issue.

I therefore find that the claimed invention is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

SUMMARY

I find Neumann Steel Pty Ltd has not succeeded in proving any of the grounds raised in the section 28 notice and consequently I find there is no impediment to the term of petty patent No. 629513 being extended. Accordingly, I grant an extension of the term of petty patent No. 629513.

COSTS

Having found that Neumann Steel Pty Ltd has not succeeded in proving any of the grounds in respect of the section 28 notice, I cannot see any reason why costs should not follow the event and I therefore award costs against Neumann Steel Pty Ltd.

J.M.Sellars
Delegate of the Commissioner of Patents

Patent attorneys for the patentee   :  Griffith Hack & Co., Melbourne

Patent attorneys for the notifier   :  Grant Adams & Co., Brisbane