Barrie David Cooper v Sten-Crete Pty Ltd

[1997] APO 33

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 651752 in the name of BARRIE DAVID COOPER

Title:          Stencilled Paving

Action:          Opposition by STEN-CRETE PTY LTD under Section 59 of the Patents Act 1990

Decision:          Issued            .

Abstract

The invention relates to a method of pavement stencilling and a stencil for use in the method which has a pressure sensitive adhesive on one surface and a release coating on its other surface.

Opposition dismissed.  Grounds of novelty, inventive step and section 40 not established.

Prior use relied on for novelty had not been established as an enabling disclosure.

Invention not lacking an inventive step since stencils having a pressure sensitive adhesive on one surface had not been shown to be common general knowledge, nor did the evidence establish that it would have been obvious to provide a release coating on the opposite surface.

Amendments proposed prior to the hearing taken into account when awarding costs.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 651752 by Barrie David Cooper and opposition by Sten-Crete Pty Ltd under Section 59 of the Patents Act 1990

background

Patent application 651752 was filed on 25 January 1993 by Barrie David Cooper claiming priority from provisional application PL 0598 which was filed on 28 January 1992.  The application was advertised accepted on 28 July 1994.

Sten-Crete Pty Ltd filed a notice of opposition to the grant of a patent on the application on 29 September 1994 and a statement of grounds and particulars on 30 December 1994. An amendment to the statement was allowed unopposed on 26 October 1995. All evidence was served by 26 February 1996 following the grant of a number of extensions of time. I note for the sake of completeness that on 4 May 1995 Mr Cooper applied for an extension of the term of divisional petty patent 650415 which precipitated notification by Sten-Crete Pty Ltd of matters pursuant to section 28 of the Patents Act 1990.

On 26 September 1994 the applicant filed a request to amend the complete specification.  The amendments were allowed on 30 August 1995.  The applicant filed a second request to amend on 25 July 1995 but for reasons unknown to me the allowability of the further amendments had not been formally considered at the time the opposition came to hearing.

The matter was heard jointly with the application for extension of term in Sydney on 21 October 1996.  Dr Ian  Ernst, patent attorney of Shelston Waters, represented the applicant and Mr Brian Munday, patent attorney of Spruson & Ferguson represented the opponent. 

the specification

The specification commences by indicating that the invention relates to a method for providing a pavement and to an article for use in the method.

The specification explains that traditional methods of paving involve laying cobbles, bricks, paving stones or other pavers in pattern on a suitable flat foundation with the joints between adjacent pavers being filled with a cementitious material or with sand or soil.

Pavements which simulate the appearance of this hand laid paving have been provided by forming grooves in a wet cement surface by means of a trowel or a suitably shaped rigid grid form work.  In a recent development of this technique a stencil is positioned on an existing fully cured concrete slab and then oversprayed with a coating material.  When the coating material is sufficiently hardened, the stencil is removed leaving a grooved pattern resembling paving joints.
The stencils used to produce simulated paving have to date been made from plastic sheets which are diecut to provide the “paving joint” shapes required.  The stencil sheets are placed on the concrete base in contiguous alignment and fixed in position prior to application of the coating material.  As a consequence these sheets must have sufficient dry and wet strength to withstand rough handling during laying and alignment as well as during spraying and subsequent removal.

According to the specification stencils hitherto available have been costly to manufacture and labour intensive to set out in arrays.  The specification states that it is an object of the invention to provide a less labour intensive method of pavement stencilling and to provide improved stencils for use in the method.

The specification as amended by the statement filed on 26 September 1994 ends with twenty-four claims of which the independent claims are as follows:

“1. A method of forming a simulated paver comprising the steps of:

unwinding a continuous length of stencil from a roll, the stencil being comprised
     predominantly of a paper, or a reinforced paper, which has been cut to define
     apertures;

adhering the stencil to a substrate; and

applying a composition to the substrate through apertures of the stencil.

12. A stencil comprising paper or reinforced paper from which apertures have been cut, the total area of the cut apertures being greater in comparison with the area of the remainder, the stencil having

(i)  sufficient dry and wet strength to withstand rough handling and application of
     cementitious composition,

(ii) a pressure-sensitive adhesive on one surface and being wound into a roll.

The amendments proposed to the specification on 25 July 1995 seek to replace the amended claims and to make corresponding changes to the description.  The only claims which I need consider for the purposes of this decision are proposed claims 1 and 13 which read:

“1. A method of forming a simulated paver comprising the steps of:

unwinding a continuous length of stencil from a roll, the stencil being comprised
     predominantly of a paper, or a reinforced paper, which has been cut to define
     apertures, said stencil having a pressure sensitive adhesive on one surface and
     a release coating on the other surface;

adhering a continuous length of the unwound stencil to a substrate; and

applying a composition to the substrate through apertures of the stencil.

13. A stencil comprising paper or reinforced paper which has been cut to define apertures, the total area of the cut apertures being greater than the area of the remainder of the stencil, the stencil being wound as a roll and having

(i)   sufficient dry and wet strength to withstand rough handling and application of
      cementitious composition,

(ii)  a pressure-sensitive adhesive on one surface

and

(iii) a release coating on the other surface.

The text shown in italics above has been added to the originally amended claims as a result of the proposed amendments.

statement of grounds and particulars

The amended statement of grounds and particulars is reproduced below.

“ The grounds of opposition upon which the Opponent relies are those set out in Section 59(b) and 59(c) of Patents Act 1990 [sic] and specifically:

1. That the alleged invention, so far as claimed in any claim, when compared with
    the prior art base as it existed before the priority date of that claim, was not
    novel.

PARTICULARS

1.1 The invention as claimed in claims 1, 2, 5, 6, 7, 10, 11 and 23 was in common
     use in Australia prior to the priority date of those claims and in particular was
     being used by Faux Brick Pty Limited of Padstow, New South Wales, and
     Frank Williams Constructions Pty Ltd of  Charlestown, New South Wales,
     among others; the additional integers claimed in claims 3, 4, 8     and 9 not
     themselves being novel or novelty conferring.

1.2 The invention as claimed in claims 1, 2, 5, 6, 7, 10, 11 and 23 was the same
     method as formed the basis of a Licence Agreement between Frank Williams
     Constructions Pty Ltd and Coloration Systems, Inc. dated 28 May 1991,
     that method being employed by Frank Williams Constructions Pty Ltd in
     Australia prior to the priority date of any one of those claims.

1.3 The invention as claimed in claims 12, 13, 16, 17, 18, 21 and 22 was imported
     into Australia in May 1991 by Frank Williams Constructions Pty Ltd,
     Charlestown, New South Wales, from Coloration Systems, Inc. of Florida,
     USA.

1.4 The invention claimed in each of claims 1, 2, 5, 6, 7, 10, 11 and 23 was used in
     public in or about November 1989 at the premises of the applicant in Bass Hill,
     New South Wales, in laying a driveway at the applicant’s home, the stencil
     being provided by Faux Brick Pty Limited, and the method being carried out in
     the presence of at least twenty sub-contractors employed by Faux Brick Pty
     Limited.

1.5 The invention as claimed in any one of claims 1, 2, 5, 6, 7, 10, 11, 12, 13, 16,
     17, 18, 21, 22 and 23 was not novel by reason of publication in the following
     documents published prior to the priority date:

1.5.0 US 4239820 (Salvador): Whole document including all figures.
     1.5.1 DE 3607739 (Eifler): Whole document but in particular claim 1;
             figure; column 3, lines 10-38
1.5.2 US 3929068 (Budden): Whole document but in particular column 1,
             lines 23-34; column 2, lines 39-47; and the claims.
1.5.3 US 4510729 (Syring): Whole document but in particular the abstract;
             figures 1, 3, 4 and 5; column 2, lines 30-45
     1.5.4 WO 89/09862 (PCT/GB89/00329) (International Coating Products
             (U.K.) Ltd): Whole document but in particular abstract; page 1;
             page 2 lines 1-19; claims 1-6 before and after amendment.
     1.5.5 “Concrete International”, (the magazine of the American Concrete
             Institute) December 1991 edition, page 97 (code 59).

2. That the alleged invention, so far as claimed in any claim, when compared with
    the prior art base as it existed before the priority date, did not involve an
    inventive step.

PARTICULARS

2.1 Each of the claims would have been obvious to a person skilled in the use of
     stencils and in particular in the use of stencils to create simulated paving, when
     compared with the common general knowledge as it existed in the patent area
     before the priority date and considered in the light of:

2.1.1 Any of the acts or documents set out in paragraph 1 above;

2.1.2 The use and availability in Australia of paper stencils in sheet form, adhesive
        and non-adhesive; plastic stencils in roll and sheet form, adhesive and non-
        adhesive; paper stencils in roll form, adhesive backed.

2.1.3 The availability from the United States of America of paper stencils in roll
        form, with and without adhesive backing.

2.1.4 Each of patent specifications US 4647000; GB 1366343; US 5038714; US
        4129669; DE 2515299; US 3678887; EP 307624A;

2.1.5 The documents on the prosecution file for application No. 615752 [sic]
        lodged pursuant to Regulation 2.7 of the Patents Regulations by R.C. Arthur
        and by G. Iles.

3. That the complete specification does not comply with the requirements of
Section 40(3) of the Patents Act 1990.

PARTICULARS

3.1 Claims 1-7 are not fairly based upon the specification because of the wide and
     indefinite meaning and ambiguity in the use of the word “adhering” in claim 1
     line 7.”

evidence

The evidence filed in this matter comprises declarations made by the following:

Evidence in Support

Frank Clifford Williams with exhibits FCW-1 to FCW-6
Richard Archie Lowe dated 28 March 1995 with exhibits RAL-1 to RAL-7
Richard Archie Lowe dated 23 June 1995
Fiona Margaret Bathgate
Brian Marsden Munday (the attorney for the opponent) dated 29 March 1995 with exhibits
BMM-1 to BMM-5
Brian Marsden Munday dated 29 June 1995 with exhibits BMM2-1 to BMM2-4
Scott Paul with exhibits SP-1 to SP-7
Gillian Bullock with Annexures A and B

Evidence in Answer

Barrie David Cooper (the applicant) dated 25 September 1995 with exhibits BDC-1 to BDC-3
Barrie David Cooper dated 24 October 1995 with exhibits BDC-4 (a sample roll of the stencil according to the invention which because of its bulkiness could not be served on the opponent and was instead made available for inspection at the Patent Office) and BDC-5 (a copy of a promotional video)
Wilfrid Barrington Butler with exhibits BB-1 to BB-4

Evidence in Reply

Alan Christopher Bate with exhibits ACB-1 to ACB-4

Both parties provided me with written summaries of their oral submissions at the hearing which I note were substantially the same as those presented in relation to the divisional petty patent.  I will refer to the evidence and submissions where appropriate later in this decision.

decision

Basis of the Decision

As mentioned earlier, the allowability of the amendments proposed to the specification on 25 July 1995 had not been assessed at the time of the hearing.   These amendments have now been allowed.  Nevertheless, it may be argued in the first instance that this decision is in accordance with the principles of natural justice restricted to a consideration of the specification as originally amended and should therefore overlook the proposed amendments.

However, I note that pursuant to subregulation 10.2(6) a copy of the request and statement of proposed amendments was sent to the opponent on 2 August 1995 which is over twelve months before the date of the hearing.  Furthermore, the evidence put forward on behalf of the opponent is not necessarily confined to the originally amended specification and, more relevantly, Mr Munday came to the hearing prepared to argue on the basis of the specification in its proposed form.

Having regard to the foregoing, I do not believe that it would be contrary to natural justice to direct this decision to the specification as proposed to be amended, and I therefore intend to proceed on that basis.  I am, however, mindful of the fact that the proposed amendments will as a consequence need to be taken into account in any award of costs. 

Admissibility of Evidence

Dr Ernst submitted that the evidence in reply introduced new evidence into the proceedings and was not limited to evidence strictly in reply.  As already mentioned, the evidence in reply consists solely of a declaration by Alan Christopher Bate with accompanying exhibits.

Whilst paragraph 16 onwards of Mr Bate’s declaration is concerned with rebutting at least some of the broad range of issues raised in the evidence in answer, the preceding paragraphs do not in my opinion properly respond to the evidence put forward by the applicant.  Notably, paragraphs 3-6 and 9-14 appear to do no more than attempt to strengthen the opponent’s case and in some instances go beyond the material facts set out in the statement of grounds and particulars.

However, although Mr Bate’s evidence is in these respects prima facie not strictly in reply and therefore inadmissible (see Ernest Scragg & Sons Ltd’s Application [1972] FSR 219), as will become apparent that evidence has had no bearing on the outcome of these proceedings.

Novelty

There was agreement between the parties that the basic test for anticipation is the reverse infringement test which is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at 235 where Aiken J stated:

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

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391).

In the present case the alleged anticipation is said to result from prior use and to be contained in a number of documents in evidence.  I will now consider these two lines of attack in turn.

Prior Use

The “Stentex” System

Mr Williams is the Managing Director of FWC Pty Limited (formerly known as Frank Williams Constructions Pty Limited), a position he has held since 1972. 

In 1989 Mr Williams was introduced by Scott Paul to a surface finish material developed by Coloration Systems, Inc (Florida, USA) and known as the STENTEX texture finish.  In May 1991 Mr Williams entered into a licensing agreement relating to the “Stentex Concrete Paving System” which incorporated use of the STENTEX material and the stencils then being produced by Coloration Systems, Inc.  This is corroborated by Mr Paul, the Vice President of Coloration Systems, Inc. 

Mr Williams proceeds as follows:

“7. The first stencil I received from Coloration Systems Inc was 1000 square feet of cobblestone stencil, received by air freight early in June 1991.  At the same time Coloration Systems, Inc. sent to me by sea freight 20,000 square feet of cobblestone stencil.  Late in June I received a further 3,000 square feet of cobblestone stencil by air freight ... All these stencils were made of treated kraft paper, and came in the form of a roll ...

8. Included in those three shipments ... were two rolls of stencil that had an adhesive applied to one side of them, together with a backing sheet to prevent the adhesive from adhering to the surface of the other stencil [sic] in the roll.”

Mr Paul states that by 1991 Coloration Systems, Inc was producing various stencil patterns for use in the Stentex process.  These stencils, it is said, were and still are made of kraft paper with a polyethylene coating on each side.   In 1991 his company commenced the production of adhesive-backed stencils which had a polyethylene coating on one side with the adhesive and a silicone release lining paper on the other.  The stencils were sold in the form of a continuous roll.

Mr Paul confirms the sale of stencils produced by Coloration Systems, Inc to Frank Williams Constructions Pty Limited between June and November of 1991, but states that:

“My records do not indicate which of these shipments may have included adhesive stencil however I do note that the Licence Agreement with Frank Williams Constructions Pty Ltd obligated my company to provide 1000 square feet of each new stencil developed.  It is likely that we would have provided samples of the new adhesive stencils under this agreement.”   

Dr Ernst submitted that the evidence failed to establish that this obligation was ever met or, if it was, that Mr Williams had used the stencils before the relevant date.

Regarding the first point raised by Dr Ernst, the level of proof required to establish prior use was dealt with in Seiller’s Application [1970] RPC 103 at 106 where Graham J stated:

“In my judgement it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proven.”

and I add that in proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see eg Dunlop Holdings Ltd’s Application [1979] RPC 523), and it is incumbent upon the opponent to make its case.

In my opinion, although the evidence of Mr Williams is supported to some extent through statements made by Mr Paul, there is no clear and conclusive proof that any of the shipments of stencils sent by Coloration Systems, Inc to Frank Williams Constructions Pty Limited during 1991 included stencils with an adhesive backing.

Mr Paul exhibits samples of adhesive-backed and non-adhesive-backed cobblestone stencils which he says “are the same in all material respects to the cobblestone stencils being sold by my company in 1991”, and in this connection I again turn to the testimony of Mr Williams that the shipments he received during 1991 were for stencils having a cobblestone pattern.  However, Mr Paul’s statement  that “It is likely that ...” (see paragraph 8) falls well short of establishing that adhesive stencils were actually provided to Frank Williams Constructions Pty Limited.

Furthermore, and on comparing the samples exhibited by Mr Paul’s declaration, the adhesive and non-adhesive stencils are readily distinguishable from one another by virtue of the provision in the former of a white backing sheet which may be peeled from the adhesive layer.  More relevantly, this comparison reveals that exhibit FCW-5, which Mr Williams declares to be a sample of cobblestone stencil “essentially identical in all material respects to the stencil received by me in 1991”, is non-adhesive.  This may be explained by the fact that at the time of making his declaration Mr Williams for various reasons no longer had any samples of the two rolls of adhesive stencils allegedly received by him.  I also note from paragraph 7 of his declaration that Mr Williams did not import any adhesive stencil “after the initial two rolls”.  Whatever the case may be, in the absence of  corroboratory evidence of the type referred to in Seiller’s Application, supra, I am unable to accept Mr Williams’ evidence concerning the receipt of adhesive stencils as fact.

The following peripheral factors are also of some relevance here:

• the invoice comprising exhibit SP-4 for the sale of a roll of adhesive stencil by Coloration Systems, Inc to a company in the United States in September 1991 is explicitly marked “STENCIL ADHESIVE”, but this is not the case with the invoices and shipping documents comprising exhibits SP-7 and FCW-4 which relate to the sale of stencils to Mr Williams;

• the unit price of stencil received by Mr Williams does not match the unit price for adhesive stencil reflected by exhibit SP-4; and

• exhibit FCW-6 which is said to be a copy of the Coloration Systems stencil concrete paving systems brochure currently used by Mr Williams’ company only describes laying a non-adhesive stencil over wet concrete surfaces. 

On the basis of the foregoing, I find that the evidence is insufficient to establish that adhesive stencils were received by Frank Williams Constructions Pty Limited from Coloration Systems, Inc as alleged.  Nevertheless, at the hearing Dr Ernst conceded that Mr Bate had been sent a sample of a stencil of the type referred to by Mr Paul, and thus I am obliged to consider Dr Ernst’s second point above regarding prior use. 

Section 7 of the Act provides that an invention will lack novelty if it can be shown that it was anticipated by prior art information made publicly available through doing a single act in the patent area.

As stated in paragraph 3.4.3.1 of the Australian Patent Office Manual of Practice and Procedure, Vol 2, information that is “publicly available” is information that the public has or can acquire by consulting some source open to it.  The general proposition is that put by Bowen LJ in Humpherson v Syer (1887) 4 RPC 407 where at 413 he stated:

“I put aside questions of public use, and treat this as a question of whether there has been a prior publication; that is, in other words, had this information been communicated to any member of the public who was free in law or equity to use it as he pleased.  Was Widner a person to whom this communication had been made in a manner which left him free both in law and in equity to do what he liked with the information.  If so, the information, of course, had been given to a member of the public, and there was nothing further to serve as consideration for any patent.”

This passage has been quoted with approval in a number of decisions, such as Weir Ltd’s Application (1926) 43 RPC 39, and Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87. In Bristol-Myer’s Co’s Application [1969] RPC 146 Lord Parker said after reviewing these cases:

“... if the information, whether in documentary form or in the form of the invention itself, has been communicated to a single member of the public without inhibiting fetter that is enough to amount to a making available to the public ...”

It is clear from these authorities that in a case of anticipation by prior use it is not necessary for the invention to have been used in public as contended by Dr Ernst; the relevant criterion is whether the person to whom information regarding the invention has been communicated is “free to do what they like with [it]”.  If information has been communicated subject to a fetter, then clearly the person is not free to use it as they please.

In the present case there is nothing in evidence to establish that information concerning the stencils produced by Coloration Systems, Inc for use in its Stentex process was communicated to Mr Bate in circumstances importing an obligation of confidence.  Certainly, there is no suggestion to this effect in exhibit ACB-1.  Furthermore, the fact that the information in question was communicated from abroad is immaterial to the issue at hand (see Bristol-Myers, supra).  Thus, as the information communicated to Mr Bate was not confidential in nature, he was free to make use of it as he wished.
I therefore conclude that stencils as used in the Stentex process were made publicly available in Australia before the priority date.  However, the issue to be ultimately decided in relation to the allegation of prior use is whether the stencil in the possession of Mr Bate provided an enabling disclosure of the claimed invention, that is, disclosed all its essential features (see Stanway Oyster Cylinders Pty Ltd v Marks (1996) AIPC 91-255).

Mr Munday submitted that when considered overall the evidence demonstrated that the stencil sent by Mr Paul to Mr Bate:

• was made of kraft paper;

• had a polyethylene coating on one side and an adhesive coating on the other; and

• included a peelable backing sheet which covered the adhesive coating.

This submission was not challenged by the applicant.  Mr Munday next referred me to the material appearing under the heading “Abherents” on page 1 of the Kirk-Othmer Concise Encyclopedia of Chemical Technology (Wiley-Interscience, 1985) which explains that an abherent is a substance that prevents or reduces the adhesion of a material to itself or to another material.  Also known as release agents, abherents function as the antitheses of adhesives.  Silicone is stated to be the best known and commercially most important abherent, and I note that this material is exemplified by the present specification as the release coating of the claimed invention.  Among the additional abherent materials listed, polyolefin abherents are said to find use in the shipping or storage of food products, uncured elastomers and pressure-sensitive tapes.  According to Mr Munday, this broad reference to polyolefin abherents includes polyethylene.

Mr Munday then submitted that as polyethylene is a recognised abherent or release agent, the stencil exhibited by Mr Bate disclosed, when the backing sheet was removed, all the essential features of the claimed invention.

As pointed out by Dr Ernst, this line of argument was not foreshadowed by the statement of grounds and particulars.  In opposition proceedings the Commissioner has a role to protect the public interest, and thus could take account of the issues raised by Mr Munday in a bar-to-sealing action.  However, to expedite matters, I believe the most appropriate course of action is to consider those issues now pursuant to subsection 60(3).

I cannot agree with Mr Munday that the stencil sent to Mr Bate has made the claimed invention available to the public in a manner which constitutes an enabling disclosure.  Unlike the Stentex product, the stencil defined by claim 13 does not require the adhesive layer to be covered with a peelable release sheet and so can be rolled for storage and applied by simply unrolling the stencil directly onto a surface without the need to firstly remove the release sheet.  Furthermore, even if I were to accept Mr Munday’s unsubstantiated assertion that polyethylene is a known release agent, there is nothing before me to suggest that a polyethylene coating was applied to one side of the Stentex stencil with that purpose in mind.  On the contrary, it is manifestly clear from evidence provided by the opponent’s own declarants that the Stentex stencil was prevented from adhering to itself by the release sheet, and not by the polyethylene coating.  With this in mind I see merit in Dr Ernst’s suggestion that the polyethylene coating could instead simply act to waterproof the paper from which the Stentex stencil is made as is the case with the present invention.  By the same reasoning, the evidence also fails to establish that the stencil made available to Mr Bate was used to simulate paving in the manner prescribed by claim 1 which, contrary to assertions made on behalf of the opponent, is clearly dependent on the type of stencil used. 
Having regard to the considerations discussed above, I find that the evidence is insufficient to support the ground of lack of novelty as a result of prior use of the stencil produced by Coloration Systems, Inc for use in its Stentex process.

The “Faux Brick” System

For the reasons given in my decision on divisional petty patent 650415, I do not consider that the use of the Faux Brick paving system (as described in the evidence of Mr Lowe) during the installation of Mr Cooper’s driveway constituted a prior use of the claimed invention.

The “Texcrete” System

In this system a paper stencil is inlaid into a wet concrete surface by means of a float.  The stencil is removed from the cured concrete after the application of a colour hardener coating to reveal a paving pattern (see exhibit ACB-3).  Apart from the fact that the Texcrete system differs materially from the claimed invention, Mr Bate has failed to conclusively establish that this system was even in use before the priority date of the claims.

The “Sundek” System

In paragraph 12 of his declaration Mr Lowe states:

“... I am ... aware from my own knowledge prior to 1990 that other stencil pattern systems, such as Sundek, had been developed for use on existing, as opposed to fresh, concrete surfaces.  I believe the Sundek stencils generally came in the form of large sheets, with an adhesive backing protected by a peel-off backing sheet.  These sheets were available for example from Sundek in Victoria ...”

which is not substantiated by any physical or documentary evidence (and in stating this I have not overlooked exhibit BMM-3).  Furthermore, Mr Lowe’s reference to an adhesive backing which is protected by a peel-off backing sheet clearly suggests that, similarly to the stencil associated with the Stentex system discussed above, the Sundek stencil does not have a release coating on the side opposite to the adhesive backing.  I also note from the evidence of Mr Bate that the Sundek stencil is made from plastic rather than paper.      

The Section 27 Material

Again as stated in my decision concerning the divisional petty patent, the material accompanying the section 27 notices filed in respect of the present application does not establish prior use of the claimed invention.

Prior Publication

The opponent has relied on a number of patent specifications and trade journals to support its assertion of anticipation by prior documentary publication.  My views on the most relevant of these are as follows.

The Bullock Declaration

Ms Bullock deposes that she is the Manager of the Building Information Resource Centre of the CSIRO Division of Building Construction and Engineering, and has held that or an equivalent position for the last five years.  According to Ms Bullock, the centre receives, displays and circulates a wide selection of technical journals to employees of the Division.

A photocopy of page 87 from the December 1991 issue of the magazine of the American Concrete Institute called Concrete International received by the centre is shown at Annex B (I note for the sake of completeness that a photocopy of the same page appears in exhibits SP-5 and BMM-2).  While it appears that circulation of that issue of the magazine did not commence until 28 January 1992 (viz. the priority date of the claims),  Ms Bullock states:

“4. It is the practice of the Centre to display each issue of journals received for one week before that issue is circulated to staff on the circulation list.  In this case the December 1991 issue of Concrete International would have been on public display in the Centre between Monday 20th and Friday 24th January 1992.  The issue in question would have been received in the library probably in the week ending Friday 17th January 1992; however the stamp indicating the date of receipt would have been on the cover that was discarded when the issue was bound.”

Dr Ernst questioned whether this statement satisfactorily established that standard practice was  followed in this particular instance and, consequently, whether the December 1991 issue of the magazine Concrete International was placed on public display before the priority date as alleged.  I have no reason to doubt the honesty and accuracy of the statement made by Ms Bullock, but in any case I do not see this issue as having any bearing on the outcome of this opposition. 

Page 87 of the document in question includes an article under the heading “Architectural concrete paving” which draws attention to the [new] Stentex concrete paving stencil.  The article refers to the availability of patterns with an adhesive backing but makes no mention of a paper stencil or a release coating on the surface of the stencil opposite to that of the adhesive.

The Bathgate Declaration

The material exhibited with this declaration (see also exhibit RAL-6) describes a surface forming method which is essentially identical to the above-mentioned Faux Brick and Texcrete systems and thus, for the reasons discussed with reference to those systems, does not anticipate the claimed invention.

US 4239820

This specification discloses a paper stencil for application of a settable plastic composition to create a simulated stone-pattern surface.  Mr Cooper argues that the plastic settable compositions contemplated do not include a cementitious composition, however, I note that the claimed invention is not restricted to the use of such material.  In any event, the stencil disclosed is said to be coated on one side with a pressure sensitive adhesive which is backed with a removable backing paper from which the stencil may be peeled.  From this it is evident that the stencil of US 4239820 is not unlike that utilised with the Stentex system and therefore does not display all the essential features of the claimed invention.
My findings with regard to US 4239820 also apply to US 4510729, GB 1366343, DE 3607739, WO 89/09862 and EP 0307624.

Summary

I have found that none of the alleged anticipations led in evidence provide a disclosure of all the essential features of the claimed invention.  Accordingly, and having regard to the reverse infringement test, the opponent has failed to establish that the claimed invention is not novel.

Inventive Step

The primary contention put forward by the opponent under this ground is that it would have been obvious to apply a release coating to known adhesive paper stencils to prevent self-adhesion and thereby arrive at the claimed invention

It is clear from subsection 7(2) of the Act that the question of inventive step has to be considered against the background of the common general knowledge in the field of the invention.  As to what constitutes common general knowledge, in his judgement in Minnesota Mining and ManufacturingCompany v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292, Aickin J stated:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

The extent of the common general knowledge is largely determined by the evidence of experts in the field, and in the present case I am satisfied that the declarants for the opponent (with the exception of Mr Paul who is a resident of the United States) are suitably qualified to comment on the state of the common general knowledge in the art in Australia before the priority date.

It is evident from the material presented by the opponent that stencils having an adhesive backing were publicly known before the priority date of the claims by reason of the following:

• the public display of the December 1991 issue of the magazine Concrete International during the week 20-24 January 1992;

• the receipt of the Stentex stencil by Mr Bate during the latter half of 1991; and

• the disclosure in a number of patent specifications.

None of the evidence before me establishes that any of the documents in question had at any time entered the body of common general knowledge of those working in the field in Australia, and I note here Mr Munday’s agreement with the statement made by Mr Butler for the applicant that persons skilled in the art would not read patent literature.  There is also no hard evidence to establish that details of the Stentex stencil became known to anyone in Australia other than Mr Bate, and in any case I fail to see how information acquired at most seven months before the priority date could possibly become part of the common stock of knowledge of the bulk of those engaged in the art within that limited time.

Nevertheless, it is also clear from section 7 of the Act that publicly available information from a prior document or prior use may be considered together with common general knowledge when assessing whether an invention involves an inventive step, provided that the information could be reasonably expected to have been ascertained, understood and seen as relevant by a person skilled in the art. 

I am satisfied that the information relied on by the opponent would have been ascertained and understood, but I strongly doubt that it would have been regarded as relevant.  The information in question indicates that the only adhesive paper stencils known to exist before the priority date were provided on their adhesively coated surface with an interleaving removable backing sheet and, consequently, teaches away from the claimed invention which provides a release coating on the surface of the stencil opposite to that on which the adhesive coating is applied so as to make an interleaving sheet unnecessary.  Furthermore, there is nothing before me to establish that the incorporation of a release coating, which separates the claimed invention from the prior art, would have naturally suggested itself in the light of common general knowledge. 

The only evidence having any bearing on this issue comes from Mr Bate who asserts that since the present invention does not provide a backing sheet on the adhesive surface of the stencil, “it of course requires a release coating to prevent self-adhesion.  The same applies to any roll of “3M” adhesive tape, “Contact”, and similar materials.”

However, the evidence for the opponent does not address the question of whether the use of release coatings with concrete paving stencils was widely practised or even contemplated by those engaged in the industry in Australia.  Furthermore, and notwithstanding their general availability, the materials to which Mr Bate has referred belong to an area of technology unrelated to that of the claimed invention, and again there is nothing in the opponent’s evidence to establish that a person skilled in the art of paving stencils would as a matter of course have been directed to the use of release coatings in these materials.  Indeed, Mr Bate himself does not actually say that the use of a release coating as opposed to a removable backing sheet would, by analogy with (say) a roll of adhesive tape, and without any knowledge of the claimed invention, at once have occurred to him before the priority date.   Consequently, there is no evidence put forward by the opponent which could serve to justify concluding that the claimed invention does no more than apply well known or well understood principles to an analogous use as Mr Bate seems to be suggesting.

If Mr Bate is instead to be taken as saying that the claimed invention has arisen from the mere substitution of an integer in a known combination with a technical equivalent, it is relevant to note that there is no evidence to the effect that such substitution was obvious or would leave the essential character of the combination unchanged.

With regard to the latter point, there is some suggestion in the evidence that the purpose of the removable backing sheet was primarily to protect the adhesive coating from degradation, rather than preventing the stencil from adhering to itself.  In any case, what is apparent from the evidence is that the substitute integer (ie the release coating) adds a whole new facet to the use of the claimed invention.  As mentioned earlier, the provision of a release coating on the surface of the stencil opposite to that on which the adhesive is coated renders a protective backing sheet unnecessary.  In practical terms this enables the present stencil to be unrolled and adhered directly to a dry concrete surface without having to first remove the backing sheet.  Accordingly, and in the absence of contrary evidence, I find that the release coating adds a new integer to the combination thereby resulting in a new combination (cf Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels Plc 26 IPR 565).

There is one further point worth mentioning here.  Given the apparent preference among those in the industry for non-adhesive stencils, there does not appear to have been any inducement to improve the adhesive stencils in use at the relevant time.  This is illustrated to some extent by the evidence of Mr Williams who it seems experienced some difficulties with an adhesive-backed stencil but rather than attempting to directly solve the problem at hand, he simply turned to the use of stencils held in place by adhesive materials such as “Blu-Tac” applied on site.

As a consequence of the foregoing, I find that the evidence before me is not sufficient to establish that the claimed invention does not involve an inventive step.

Section 40

It is contended on behalf of the opponent that the specification does not comply with section 40 due to the indefinite nature of the wording “adhering the stencil to a substrate” in line 7 of claim 1.  In my view, and applying the principles of purposive construction (as per Catnic Components v Hill & Smith Ltd (1982) RPC 183), claim 1 suffers no lack of clarity in this matter. Thus, in the context of claim 1, there is nothing in the claim or description to suggest anything other than that as the stencil is unrolled it adheres to the substrate by means of the pressure sensitive adhesive. Further to this, it is significant to my mind that no evidence has been produced to show that the opponent’s own declarants have experienced any difficulty in assigning a clear meaning to the wording in question.

conclusion

I have found that the opponent has not succeeded on any of the grounds relied on.  Accordingly, I dismiss the opposition and, subject to any appeal being filed, direct that the present application proceed to sealing.

costs

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Co v W.R. Grace &Co-Conn 29 IPR 292).

In actions before the Commissioner, costs usually follow the event.  In this case I have found for the applicant but I note that a request to amend was filed after the completion of service of the evidence in support.  The specification as proposed to be amended, and on which this decision is based, contains a new set of claims substantially different to the claims of the specification before amendment which is, in my view, a prima facie acknowledgment of the validity of the opposition at that time. 

As mentioned earlier, the amendments had not been allowed when the matter came to hearing and so it is not open for me to follow the general practice of awarding costs against the applicant up to and including the date of advertisement of allowance of the amendments (see paragraph 14.7.6 of the Manual of Practice and Procedure, supra).  Dr Ernst submitted that in these circumstances the applicant should pay the opponent’s costs according to scale up to the date on which the amendments were filed, ie 25 July 1995.  However, in my view this course of action would be prejudicial to the opponent.

As a precursor to allowing an amendment, the Commissioner must grant leave to amend and publish a notice of that fact in the Official Journal.  Allowance of the amendment can be opposed within three months of publication.  Regulation 10.5(1) in effect sets several preconditions before leave can be granted, notably, that a report on the allowability of the amendment cannot be adverse.  Thus it will be seen that in practical terms the date of filing of an amendment precedes by some three months or more the date on which allowance can occur.  In the present case it is more than likely that the date on which service of the evidence in answer was completed (30 October 1995)  falls within this period.

Consequently, it seems to me that if I were to adopt Dr Ernst’s proposal the opponent would have to meet its own costs in relation to receiving and perusing the evidence in answer which, on the face of it, is a cost it would not have incurred if the amendments filed on 25 July 1995 had been processed in the usual way.  However, I do not believe the same reasoning can be applied to costs beyond the evidence in answer stage.  In particular I note that the evidence in reply was not filed until seven months after this date.

On the basis of the foregoing, I believe the opponent is entitled to its costs according to schedule 8 up to and including the date of filing of the amendments, ie 25 July 1995, and also to its costs associated with the item “Receiving and perusing evidence in answer”.  I therefore award costs up to and including this point against the applicant, and against the opponent thereafter.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Shelston Waters, Sydney

Patent attorneys for the opponent :  Spruson & Ferguson, Sydney