Bailey Aluminium Products Pty. Ltd. v. R.d. Werner Co. Inc.

[1984] APO 9

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Application No. 517200 for a Patent by BAILEY ALUMINIUM PRODUCTS PTY. LTD.

‑ and ‑

In the Matter of an Opposition thereto by R.D. WERNER CO. INC.

DECISION OF A SUPERVISING EXAMINER OF PATENTS
Background
         Patent Application 517,200 in the name of Bailey Aluminium Products Pty. Ltd. and entitled "Apparatus for Assembling Ladder‑Type Frames" was advertised accepted in the Official Journal of 16 July 1981.  Notice of Opposition was lodged by R.D. Werner Co. Inc. on 15 October 1981 followed by evidence‑in‑support on 24 November 1982.  Pursuant to a consideration of the latter, the applicant lodged a request to amend the Complete Specification under Section 77 of Act on 11 February 1983.  The request and proposed amendments were advertised on 14 April 1983 and in the absence of opposition thereto, were allowed and incorporated into the complete specification on 23 January 1984.  No evidence‑in‑answer was lodged and the matter was set down for hearing in Canberra on 10 May 1984.  The applicant was represented by Mr J.R. Gardner, patent attorney, of T.G. Ahearn & Co., Brisbane, and the opponent was represented by Mr L.J. Dyson, patent attorney, of Edwd. Waters & Sons, Melbourne.

The grounds of opposition set down in the Notice were those under Section 59(1)(c); (d); (e); (f); (g); (h); (i); but at the outset Mr Dyson ‑ 2 ‑

stated the only grounds to be argued by the opponent were those under Section 59(1)(e); (g); (h); that is, prior publication, lack of novelty and obviousness.
The Specification
         According to the specification (as amended) the invention relates to assembling ladder‑type frames and in particular to apparatus for assembling metal ladders.  The specification describes the previous methods and apparatus for forming compression joints between the side members or stiles and the transverse members or rungs of aluminium ladders.  These known apparatus are set up for standard width ladders and are described as not suitable for similar frames wherein various widths are to be accommodated.
         There follows a consistory clause which apart from its introductory wording is the same as claim 1.  One embodiment of the invention is then described.  The specification concludes with ten claims all of which, apart from claim 10 which is an omnibus claim, are appended to claim 1.  Claim 1 reads as follows:

Apparatus for assembling frames of the type having transverse members extending between side members and connected thereto at each end by a compression joint said apparatus including a main frame for supporting a pair of connection forming assemblies, each adapted to co‑operate with an end of a respective said transverse member adjacent a respective said side member, each said connection forming assembly including support means slidably mounted on said main frame for movement in a direction parallel to said transverse member, an anvil assembly adapted to be located inwardly of said side member and mounted on said support means for movement therewith, said anvil assembly being adapted to support a said transverse member adjacent its said end; compressing means adapted to be located outwardly of said side member said compressing means being mounted on said support means and including a compressing member movable relative to said support means and towards and away from said anvil assembly and said tranverse member whilst said support means remains stationary, said compressing member subsequently engages with said transverse member to cause outward sliding movement of said support means and said anvil assembly whereupon said compressing member and anvil assembly co‑operate with said end to form said compression joint. ‑ 3 ‑

The claim defines a frame assembling apparatus comprising several features which are operated in a certain manner to form the assembled frame.  The features can be summarized as follows:

1. a main frame for supporting a pair of connection forming assemblies;

2. each connection forming assembly including:
            (a)  support means slidably mounted on said main frame for movement in a direction parallel to the transverse member (rung of the ladder);
            (b)  an anvil assembly mounted on said support means for movement therewith and adapted to support said transverse member adjacent its end;
            (c)  compressing means mounted on said support means and including a compressing member movable relative to said support means and towards and away from said anvil assembly.
            The operation of these features in producing the assembled frame are defined at the end of the claim.  I construe the claim as defining the operation as follows.  With the frame components in position on the apparatus the compressing member of each connection forming assembly moves towards the anvil assembly while the support means on which the anvil assembly is mounted remains stationary.  The anvil assembly and compressing member are disposed on the inner and outer sides of the frame side member respectively.  Once the compressing member moves sufficiently to engage the transverse member it forms a stop against which the support means begins to move in an outward direction relative to the frame side member.  This outward‑moving support means carries the anvil means whereupon the outward‑moving anvil assembly and the inward‑moving compressing member co‑operate with the end of the transverse member to form a compression joint connecting the transverse member to the frame side member.
   Anticipation

   On the question of anticipation, the evidence before me consists of a ‑ 4 ‑

statutory declaration by Alex C. Schales and a statutory declaration by Laurence J. Dyson.  Mr Schales declaration is accompanied by four exhibits:

1. A drawing no. G3372‑E which illustrates a machine used by Bradley Bros. in Australia since 1960.

1. U.S. Patent Specification 3,039,186 by P.E. Stoyer et al and open to public inspection in Australia on 11 October 1962.

1. Australian Patent Application 35,680/78 and its accompanying complete specification as accepted (the opposed application).

1. U.S. Patent Specification 3,140,540 by M. Greenman and open to public inspection in Australia on 28 October 1964.

The statutory declaration by Mr Dyson establishes the publication date in Australia of the U.S. Patent Specifications referred to in the Schales declaration.
         Mr Schales is a retired Divisional Manager of the company Bradley Bros. and has been employed by the company since 1939 and was responsible for the production of metal ladders from 1962 to 1969.  Mr Schales declaration describes in detail the operation of a metal ladder machine built under license from the U.S. Company, R.D. Werner Co., Inc., the present opponent, in 1958.  Mr Schales declares that this machine (hereinafter referred to as the Bradley Bros. machine) is broadly based on the machine disclosed in U.S. Patent Specification No. 3,039,186 by P.E. Stoyer et al.  The Stoyer specification discloses a method of forming the compression joint used to construct ladders of the type in suit however there is no disclosure of the machinery or apparatus controlling the joint forming tools.  Thus I have difficulty in seeing the basis for Bradley Bros. machine in the disclosure given in the Stoyer specification and have not considered this disclosure in relation to anticipation.
         The Bradley Bros. machine as described in the Schales declaration and shown in the first exhibit has similar features to the invention in suit

however its operation differs from the machine described in the opposed ‑ 5 ‑

specification.  It does not provide for automatic width adjustment as does the presently defined machine, in that the Bradley Bros. machine is set manually for various width ladders and the compression joint is always formed at this initially set position.
Mr Dyson submitted at the hearing that the Bradley Bros. machine could be considered as part of the common general knowledge in the art of ladder making machines due to its long continuous use from 1960 to the present day. In respect of this matter I am guided by several comments by the Court of Appeal in General Tire & Rubber Company V Firestone Tyre & Rubber Company Ltd (1972) R.P.C. 458. At page 482 it was stated:

"On the other hand, common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee ‑ the sort of man, good at his job, that could be found in real life".

and at page 484:

"Throughout, when coming to our conclusions on this important matter, we have of course kept in mind that the state of common general knowledge at any specified date is a question of fact to be decided upon evidence, and that it is for those who attack a patent to establish such knowledge as they may seek to rely upon".

In view of these statements I am not satisfied on the evidence before me that the Bradley Bros. machine would be considered part of the common general knowledge of persons skilled in the art of ladder assembly machines.  The fact that the machine has been used in one particular factory over a long period of time does not, in my opinion, establish that such a machine has become part of the common general knowledge of those in the art.  It may be well known to people working in that particular factory but there is no evidence that it is known and accepted by other skilled addressees in the art as part of their common general knowledge.

Thus, in considering the question of anticipation on the basis of the ‑ 6 ‑

Bradley Bros. machine I have come to the conclusion that the invention claimed in the present application is not prior published by the use of this machine due to the differences previously noted.  Furthermore I do not consider the claimed invention lacks novelty in the light of the Bradley Bros. machine as the differences in my opinion provide definite advantages over the prior machine and must be considered to contribute to working of the machine.  In respect of the question of obviousness, as I have rejected the proposition that the Bradley Bros. machine is part of the common general knowledge in the art, I also consider the invention defined in the claims of the opposed specification is not obvious in respect of the Bradley Bros. machine.
         The Schales declaration also refers to a further U.S. Patent Specification No. 3,140,540 by M. Greenman.  Mr Dyson argued that this specification when read in the light of the common general knowledge provided by the Bradley Bros. machine anticipated the claims of the opposed specification.  As I do not consider the Bradley Bros. machine common general knowledge in the art I will consider the Greenman specification on its own merits.
         The Greenman specification discloses a ladder assembly apparatus and method which provides for assembling varying width ladders automatically.  The apparatus disclosed has a similar configuration to the invention defined in the opposed specification in that it discloses two pairs of anvil and compressing means (swedging tools), each pair forming a connection forming assembly as in the opposed specification.  The Greenman specification achieves its automatic width adjustment by allowing the ladder components to move relative to the assembly machine while one anvil means is held fixed.  The machine operation is defined in claim 1 of the specification:

A method for assembling on preapertured ladder rails a hollow rung having spaced inner flanges and terminal shank portions ‑ 7 ‑

said method comprising:

(a)inserting the terminal shank portions of the rung through the apertures in the rails,

(b)approaching swedging tools to the opposite ends of the rung,

(c)slidably engaging and supporting the rung intermediate the inner flanges with two anvils each of which is associated with a different one of said swedging tools,

(d)relatively pulling together each slidable anvil and its associated swedging tool, while permitting one slidable anvil and its associated swedging tool to move axially of the rung away from the other slidable anvil and its associated swedging tool,

(e)terminating such axial movement with the slidable anvils engaging the inner sides of each of the inner flanges,

(f)supporting the inner sides of each of the inner flanges with the slidable anvils, and

(g)then compressing each terminal shank portion against a rail between a slidable anvil that supports the inner side of the inner flange adjacent the inner side of said rail and the associated swedging tool that engages the outer end of said terminal shank portion to form a second flange on the outer side of and engaging each associated rail,

(h)whereby each rail will be compressed between the inner flange and the newly formed second flange so that each end of the rung is secured to a rail.

Thus it will be seen that the operation of machine disclosed in the Greenman specification is different to the invention defined in the opposed specification.  Mr Dyson did not argue that the Greenman specification prior publishes the claims of the opposed specification and on considering the disclosure of the Greenman specification I am satisfied there is no prior publication of the invention claimed in the opposed specification.

On the question of novelty it is necessary to look at the differences in operation of the two machines and consider the contribution these features make to the working of the invention claimed and whether the merit of the two machines can be considered the same.  The primary difference appears to lie in the "floating" aspect of each machine.  In the invention defined in the opposed ‑ 8 ‑

specification each connection forming assembly "floats" independently of the other and the frame components.  Further each operates in engaging the frame components independently, apart from being fed from a common hydraulic source.  In the machine disclosed in the Greenman specification one connection forming assembly and the ladder components "float" with respect to a fixed anvil means included in one of the connection forming assemblies.  The connection forming assemblies do not operate independently and co‑operate with each other to produce engagement with the ladder components.  Thus I am satisfied that the differences in the structure and operation of the machines is sufficient to confer novelty on the invention claimed.
         On the question of obviousness, no evidence has been produced to establish that the Greenman specification was common general knowledge in the art thus I do not consider the invention claimed obvious in the light of the Greenman specification.
Decision
          Consequently, I dismiss the opposition.
         On the matter of costs, the applicant lodged a Section 77 request subsequent to the lodgement of the evidence‑in‑support and these amendments were allowed and incorporated into the specification on 23 January 1984.  This matter obviously arose pursuant to the evidence of the opponent.  Therefore the applicant should bear all costs up to and including allowance of those amendments, while the opponent should bear all subsequent costs in view of the conclusion I have reached in respect of the opposition.

‑ 9 ‑

I will direct that this application is to proceed to sealing after an appropriate period to enable the opponent to lodge an appeal against this decision, should it wish to do so.

(P. HEATHCOTE)
Supervising Examiner of Patents