Bevan James Riekie and Arthur Simpfendorfer v M.J. McGrath Pty Ltd and Calsil Limited

[1985] APO 31

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 527996 for Letters Patent by BEVAN JAMES RIEKIE and ARTHUR SIMPFENDORFER - and - in the Matter of Opposition thereto under Section 59 of the Act by M.J. McGRATH PTY. LTD. and CALSIL LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application No. 527996 originated from two applications accompanied by provisional specifications, Nos. PE6249 and PE7018 lodged on 28 October, 1980 and 19 December, 1980, respectively. Under the provisions of Section 50 of the Act, a single complete specification was lodged on 28 September, 1981. The application was ultimately accepted and accorded the number 527996, acceptance being advertised in the Official Journal of 31 March, 1983.

Notice of opposition was lodged by the opponent M.J. McGrath Pty. Ltd. on 24 June, 1983 and by the opponent Calsil Limited on 29 June, 1983.

The matter was heard in Perth on 16 July, 1985, the applicants being represented by Mr. M.J. Royal, patent attorney of Phillips, Ormonde & Fitzpatrick, M.J. McGrath Pty. Ltd. being represented by Mr. P.R. Taylor, patent attorney of Arthur S. Cave & Co., and Calsil Limited being represented by Mr. R.C. Wray, patent attorney of R.C. Wray & Associates.

The notices of opposition state a number of grounds, of which only four were the subject of submission and argument at the hearing. These were the grounds specified in paragraphs (e), (g), (h) and (i) of sub-section 59(1) of the Act, viz., prior-publication, obviousness, lack of novelty and non- compliance with section 40.

Preliminary Submissions

At the commencement of the hearing Mr. Royal requested a specific ruling as to the admissibility of certain of the opponents' evidence which he alleged to be hearsay. He cited two authorities which, he claimed, supported the proposition that such evidence is not admissible before a tribunal of the present type : Flytox (Australia) Pty. Limited v. Sydney Grocery Proprietary Limited, (1946) AOJP 2665, and Anthony Hordern & Sons Ltd. v. Hotels Arcadia Ltd., (1934) AOJP 767. The first-mentioned of these decisions seems to support Mr. Royal's submission in this matter, but the other refrains from expressing an opinion on the question.

In any event, as I pointed out to Mr. Royal at the hearing, there is ample authority from court decisions to the effect that hearsay evidence is admissible before a Tribunal, and I particularly drew his attention to the decision by the United Kingdom Court of Appeal in the case of T.A. Miller v. Minister of Housing and Local Government, (1969) RPC 91. I explained that the problem of hearsay evidence is not one of admissibility, but rather one of what weight should be placed upon such evidence, this being something to be determined in light of all the relevant circumstances in each case. As a consequence, I admitted all of the opponents' evidence.

The Specification

The complete specification is entitled "Transportable Building or Module Containing a Concrete Floor Slab", and the specification commences by stating:

"The present invention relates to a transportable building or a transportable building module comprising a concrete slab."

While this may be read as saying that the present invention relates to a concrete floor slab per se, when the specification is read in its entirety it is evident that this is not the case, and that the invention in fact resides, as the specification would have it, in the combination of a concrete slab and some other structure or structures such that this combination constitutes something which may be designated as a "building" or a "building module". This is notwithstanding the fact that nowhere in the specification are there details given of any appurtenances to the concrete slab, the disclosure being concerned exclusively with various constructional aspects of the concrete slab. There would appear to be nothing to justify departing from the positive assertion in the specification, for example, in the consistory statement, that the disclosed invention is of a building of which the concrete floor slab is just one element.

In regard to the use of the tern "transportable" to limit or qualify the type of building or building module to which the present invention is directed, since it would seem that the transportability of most things is merely a function of the means applied to achieve that end I do not see the requirement of something to be "transportable" in itself as imposing any substantial limitation upon the scope of the article to which the term is applied, and I see this to be particularly the case so far as a building module is concerned. Therefore, in the context of the specification in suit the requirement of being transportable must be construed as merely indicating a particular working advantage of a building which incorporates a concrete slab having the conformation described and subsequently claimed in the specification.

The specification proceeds to outline problems with prior art steel, aluminium, wood or composite bases - usually with a plywood or particle board floor on bearers - used in transportable buildings. It goes on to say that conventionally constructed slabs are not generally suitable in such applications, since a slab built strongly enough to withstand the forces it will be subjected to during transportation will, as a result, be too heavy for practical purposes.

There follows a consistory statement having coterminity with claim 1, this being the only independent claim other than the usual omnibus claim.

The description of the best method of performing the invention is, as was mentioned previously, confined to a concrete floor slab. It provides, in some detail, suitable dimensions for such a slab, which incorporates longitudinal and lateral edge beams as well as integral lateral stiffeners extending between and at right angles to the longitudinal edge beams.

Extensive detail is also disclosed of suitable reinforcing for the slab.

Claim 1 reads as follows:

1. A transportable building or a transportable building module comprising a building structure mounted on a unitary, structural, prefabricated concrete floor slab, in which the concrete floor slab has a rectangular, reinforced, floor area, the floor area has a relatively large longitudinal dimension and a relatively small lateral dimension, the floor area has a substantially flat upper side and an underside, the floor slab has an area of at least 34m', two integral, concrete beams extend longitudinally of the concrete floor slab adjacent respective longitudinal sides thereof and depend downwardly from the underside of the floor area, two integral, concrete beams extend laterally of the concrete floor slab adjacent respective lateral sides thereof, and depend downwardly from the underside of the floor area, said lateral and said longitudinal beams including tension means extending substantially along the length of the said beams, said lateral beams are joined to the longitudinal beams, and one or more integral, reinforced, concrete stiffening ribs extend across the concrete slab between beams, and are joined to said beams said stiffening ribs depending downwardly from the underside of the floor area and being of less depth than any of the beams, the regions between the beams and stiffening ribs being in the form of open, downwardly facing recesses, the main slab area of the concrete floor slab apart from any reinforcing means or stiffening ribs, having a thickness between 25mm and 75mm, and the arrangement being such that the transportable building or transportable building module can be loaded onto a trailer using Jacks, transported on the trailer, unloaded using jacks and then be free standing on site. .

Anticipation

This ground was argued on two bases : firstly, that the applicants had themselves prior-published the invention, and secondly, that the invention was prior-published by the disclosure in a paper presented at a Symposium on Pretensioned Concrete Buildings held in Sydney 2nd-3rd September, 1976, entitled "Pretensioned Floor and Roof Slabs with High Strength Deformed Bars" (hereinafter referred to as "the Russian Paper").

The prior-publication by the applicants of their own invention is said to have taken place in two ways : by disclosure to an outside party who were to complete the design work and manufacture the slab, without there being a requirement of confidentiality, and by prior user, this having occurred as a result of the applicants having loaded a prototype slab onto a truck and having driven the truck on public roads as a test of the transportability of the slab.

Certain of the facts relating to the confidentiality matter are disputed by the parties to this action. Mr. Matteo Perrella, an employee and shareholder of the opponent Calsil, has testified in his declaration comprising evidence-in-support that:

"Delta Concrete Pty. Ltd. (a division of Calsil), was first approached by the Applicants Messrs. Riekie and Simpfendorfer through an organisation known as Durabuilt Homes in January, 1980 for advice and assistance in the development of a rein- forced concrete slab for transportable houses. We discussed with the Applicants the merits of post tensioning and pre- stressing and advised them that prestressing was to be preferred but that initial capital investment required to produce prestressed slabs was considerably higher than that required to produce post tensioned slabs."

At the hearing Mr. Royal questioned whether the use of the word "we" was sufficient to establish, in the above quote, that Mr. Perrella really had first-hand knowledge of tie facts to which he was attesting. While the point raised by Mr. Royal clearly has some force, the potential difficulty created hy it is obviated in the present instance by the fact that Mr. Simpfendorfer in his evidence-in-answer confirms that discussions with Mr. Perrella of the kind alleged did take place in January 1980 (i.e. before the earliest priority date of the claims in suit), although he does dispute Mr.Riekie's presence at those discussions. The critical area of divergence in the evidence is in the question of whether the information conveyed by the applicants had been conveyed in confidence. On the one hand Mr. Perrella declares:

"To the best of My knowledge and belief Delta Concrete was not asked to keep in (sic) the information contained in the aforesaid drawing confidential."

On the other hand, Mr. Simpfendorfer declares:

"As a result of the advice given to me I was careful to ensure that Mr. Perrella was aware that the material discussed was on a confidential basis."

It is noteworthy that Mr. Simpfendorfer does not provide any details of the manner in which Mr. Perrella was made "aware".

Mr. Royal referred to various of the findings in the case of Coco v. A.N. Clark (Engineers) Ltd. in the United Kingdom High Court of Justice - Chancery Division, (1969) RPC 41, as supporting the applicants' position in relation to confidentiality. Coco v. A.N. Clark was a case on breach of confidence. There is no question in the present situation of there having been a breach of confidence. The question that must be answered is: was the matter disclosed to Mr. Perrella disclosed under an obligation of confidence, or was it disclosed under no such obligation and therefore available to all the world?

In rebuttal of Mr. Royal's plea of confidentiality, Mr. Wray cited the case of Paper Sacks Proprietary Limited v. Cowper in the Privy Council, 53 RPC 31. This case was concerned with section 124 of the Patents Act 1903-1921. While finding that the particular facts of that matter established that the exhibition of the invention that had taken place was not "private exhibition" in the terms of section 124, I note that their Lordships used such language as "hawked about" and "fully disclosed for the purposes of trade and exploitation in the Australian market", language which in my view cannot be applied in the present matter.

The evidence on this point is not of any great assistance, since one contradicts the other. This is notwithstanding the fact that Mr. Simpfendorfer appears somewhat more precise and confident in his recollection of past events.

The practicalities of obtaining a patent for an invention would seem to demand that in many, indeed most, cases the inventor consult with one or more individuals or organisations to the extent of disclosing to them detailed aspects of his invention, 2rior_to applying for a grant of a patent for an invention. Such consultation may, and usually will, take place with a Patent Attorney. It nay also have to take place with a technical expert in the field in order, for instance, that requirements of the Act relating to the best method of performing the invention may be assessed. Or it may simply be that the owner of the invention may wish to acquaint himself with all the economic aspects of patenting his invention (patenting being essentially an economic activity) before deciding to proceed. In other words. In the normal process of patenting something, disclosure in confidence by an inventor may be made to other parties.

In the present instance, even if Messrs. Riekie and Simpfendorfer did not, at the time of disclosing their invention to Mr. Perrella, have in mind the need for confidentiality from the point of view of seeking patent protection, it seems highly likely that they would have done so from the point of view of sound commercial practice. And it would seem that all we are concerned with is the existence of a duty of confidence not the motives that give rise to it in any particular circumstance. Further, it seems reasonable in the circumstances of the present case that the recipients of the information provided by their clients Messrs. Riekie and Simpfendorfer should be conscious of the need and their obligation to preserve confidentiality.

The decision in the case of Coco v. A.N. Clark (supra) referred to, with apparent approval, the decision of an earlier case, Saltman Engineering Coy. Ltd., Ferotec Ltd. and Monarch Engineering Coy (Mitcham), Ltd. v. Campbell Engineering Coy., Ltd., 65 RPC 203. The facts of this case bear some similarity to the case in suit, in that the plaintiffs provided some drawings of tools to another party who was to construct tools from the drawings, the purpose of these tools being to manufacture leather punches. According to Somervell L.J., at page 218:

"The first question in a breach of confidence case is whether the circumstances are such that the defendant owes this duty to the person who is asserting that the information in the hands of the defendant was his confidential information."

Megarry J. in Coco v. Clark chose to apply a "reasonable man" test:

"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."

It seems clear on the authorities that a duty of confidence does not have to be specified in order to be existent. Furthermore, the existence of an implied duty of confidence does not have to be comprehended by the individual who incurs that duty, although if this be the case it may strongly suggest that such a duty did not exist. Having regard to all the facts pertaining to this matter, I have concluded that an obligation of confidence did arise in this instance.

The second manner in which the applicants are said to have prior- published their own invention is by use. Once again, the facts relating to this are in dispute. Mr. Simpfendorfer states in evidence:

"The product was cast at the Durabuilt premises. The testing included loading it onto a truck and driving the slab around the streets adjacent to Durabuilt premises for a period of 10 minutes. At no time was the truck stationary outside of the Durabuilt premises. There was no opportunity for any member of the public to stud the slab, certainly no-one would be able to determine the construction of the slab nor see any of the configuration beneath the upper surface."

Mr. Perrella had this to say:

"I also understand that this second slab was tested by placing it on a motor truck and driving it around the country. I cannot recall the date on which the second slab was completed but I believe it was sometime before March, 1980."

In the circumstances, I feel compelled to accept the specific and apparently first hand version of the facts provided by Mr. Simpfendorfer over Mr. Perrella's vague "understanding", despite sharing the surprise expressed by Mr. Wray at the very limited amount of on-the-road testing to which it would appear that the slab has been subjected, if Mr. Simpfendorfer's account is to be believed. If it is true that, as Mr. Simpfendorfer attests, there was no opportunity for any member of the public to study the slab and determine the construction of the slab or to see any of the configuration of the upper surface, then I must find as valid Mr. Royal's submission that the decision in the case of Boyce v. Morris Motors Ltd., 44 RPC 105, is applicable to the case in suit. I also accept Mr. Royal's submission that the case in suit is one in which the public working of the invention within one year before the priority date of the claims is clearly countenanced by Section 158(l)(h)(i) of the Patents Act. I therefore find that no valid case of prior-publication by prior use has been made out.

I turn now to the second footing upon which the opponents allege anticipation, namely, anticipation by the document I have referred to as "the Russian paper". There is in evidence a statutory declaration by a Mr. Kevin John Cavanagh who is the Secretary of the Concrete Institute of Australia and who declares that the paper in question, which is entitled "Pretensioned Floor and Roof Slabs with High-Strength Deformed Bars", was submitted to a Symposium in Sydney on the 2nd and 3rd September, 1976, convened by the Concrete Institute of Australia and entitled "Symposium on Prestressed Concrete in Building". The paper was submitted by Professors K.V. Mikhailov and G.I. Berchechevsky and published in the Symposium Preprints. Mr. Cavanagh states:

"I attended the Symposium and was present when Professor Mikhailov presented a paper which, to the best of my recollection, was the paper published in the Symposium Pre- prints."

In his judgement on Bristol-Myers Co.'s Application, (1969) RPC 1469 Lord Parker (referring to an earlier decision, Fomento Industrial S.A. v. Mentmore Manufacturing Co. Ltd. 73 RPC 87), stated:

"It seems to us that we are bound by this authority to reject the contention that publication depends either upon anything in the nature of a dedication to the public or upon the degree of dissemination of the information alleged to have been published. On the contrary, if the information, whether in documentary for 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 and we do not think it is open to us to construe the words "made available to the public" in Section 101 (of the UK Patents Act) in a sense which conflicts with this decision."

Consequently, the facts attested to by Mr. Cavanagh would in my view suffice to establish publication in Australia of the Russian paper prior to the earliest priority date of the claims in suit.

The Russian paper is not a particularly easy document to read. It is more in the nature of a brief outline of its subject matter rather than the detailed exposition one would expect of a text book, technical journal or even a patent specification. This problem is compounded by the fact that the English expression employed in the document, while being generally good, nonetheless does have some imperfections. It commences in the following manner:

"Reinforced concrete slabs - flat solid, and hollow-core, ribbed, made of heavy or lightweight concrete - are a most widespread type of precast prestressed elements of mass use in capital construction.

In the Soviet Union such members are yearly produced in millions of square metres for roofs and floor of industrial, residential and civic buildings at specialised factories."

The clear imputation from this is that the disclosure of the Russian paper is, inter alia, concerned with building structures mounted on a transportable, unitary, structural, prefabricated concrete floor slab. While there is no actual description of any building structure associated with the concrete slabs in the Russian paper (in common with the specification in suit), it is clear from the above-quoted passage from the paper that in the slab's ultimate configuration, i.e. when it is put to its ultimate use, it will comprise part of a building.

The paper then states the various lengths of slabs produced - 6, 12, 18 and 24m - and then goes on to list a number of design concepts, stating them to be

"certain concepts which to a great extent made it possible to establish an extensive nomenclature of prestressed slab elements for mass use and to organise their manufacture at factories."

The remainder of the paper consists of a fairly detailed, albeit somewhat unstructured and unsystematic, discussion of specific aspects of these "design concepts". This discussion utilises a number of drawings forming part of the paper and consisting of twenty-two figures in all. Only three of the figures were made the subject of evidence or submission, these being Figures 4, 11 and 12: of these Figures 11 and 12 are the most relevant.

Figure 11 is a representation of a reinforced slab which is rectangular in configuration and which has, in the language of claim 1, two integral concrete beams extending longitudinally of the concrete floor slab adjacent respective longitudinal sides thereof and depending downwardly from the underside of the floor area, two integral, concrete beams extending laterally of the concrete floor slab adjacent respective lateral sides thereof, and depending downwardly from the underside of the floor area, the lateral and the longitudinal beams including tension means extending substantially along the length of the beams, the lateral beams being Joined to the longitudinal beams, and one or more integral, reinforced, concrete stiffening ribs extending across the concrete slab between beams, and Joined to the beams, the stiffening ribs depending downwardly from the underside of the floor area, the regions between the beams and stiffening ribs being in the form of open, downwardly facing recesses.

Claim 1 defines two specific dimensional requirements for the slab that it be at least 34m2 in area and have a thickness of between 25mm and 75mm. In regard to the first of these, the dimensions of the slab shown in Figure 11 are only length 6m and width 1.5m. However, in part of the text of the paper that appears to be in reference to Figure 11, it is stated:

"Prestressed ribbed JI.- slabs of box shape 3 x 12m in size have been developed and now are available for floors in thermal power stations with design loads up to 3500kg/m ."

So far as the thickness of 25mm to 75mm is concerned, the dimension of the slab shown in Figure 11 is 50mm.

The only divergent aspect between claim 1 and Figure 11 would appear to be in the feature defined in claim 1 that the stiffening ribs are "of less depth than any of the beams", i.e. the so-called longitudinal and lateral beams extending adjacent to the longitudinal and lateral sides of the slab. While the longitudinal beams of Figure 11 fit this requirement, the lateral beams are shown as being of less depth than the stiffening ribs, viz. 150mm c.f. 200mm.

Figure 12 would also appear to include most of the features of claim 1 Indeed, it complements the disclosure of Figure 11 in that in the case of Figure 12 the lateral beams are of greater depth than the stiffening ribs. As well, the dimensions of the slab illustrated in Figure 12 are shown as 12m x 3m. Although the text of the paper refers to the slab of Figure 12 as being "of l.Om design width", I accept the dimensions as shown in the figure as being a disclosure of such.

The only aspect of the disclosure of Figure 12 brought into question by the applicants was whether the extent of the reinforcement shown in the drawings (only the longitudinal beams being shown as reinforced) was to be taken as the limit of the tensioned reinforcement of the slab, hence taking it outside the scope of claim 1, or whether, as the opponents would have it, the addressee of the specification would understand from his own common general knowledge and the reading of the specification as a whole that the whole slab was to be reinforced where appropriate, including the beams, the stiffening ribs and the floor area. I am inclined towards the opponents' view in this instance, since it seems to me that the reinforcement shown is meant to illustrate a particular aspect of the overall reinforcement of this slab (just what this particular aspect is not discernible from the document), and is not meant to fully represent the totality of the reinforcement of the slab. Furthermore, on my reading it would be a reasonable approach to use detail of the slab described with reference to Figure 11 to fill in gaps in the detail of the slab of Figure 12, including detail reinforcement of the respective slabs. It follows that I consider Figures 11 and 12 to be a complete disclosure of the concrete slab per se as defined in claim 1.

The question of whether claim 1 is novel therefore reduces to the following : does the Russian paper, which discloses a transportable floor slab, and by implication a building structure incorporating that floor slab (although the whole building structure itself will not necessarily be "transportable", whatever that term may connote), anticipate the present invention which takes the same floor slab as disclosed in the Russian paper but adds to it some wholly unspecified "building structure" such that the resultant building or building module is "transportable" in the sense that it "can be loaded onto a trailer using jacks, transported on the trailer, unloaded using jacks and then be free standing on site" (per claim 1)? In considering this question it must also be borne in mind that transportable buildings on steel, aluminium, wood or composite bases are, it would seem, common general knowledge in the art of building construction. The question of anticipation therefore requires a consideration of whether a competent workman having before him the disclosure of the Russian paper could, without exercise of the inventive faculty, make to the Russian paper the alteration as stated; or expressed in terms of the Judgement by Dixon J. in Griffin v. Isaacs, A1942) AOJP 739, would such an alteration involve no ingenuity or inventive step and would the merit of the two things, considered as inventions, be the same. This is, of course, a question of fact and having weighed up all the evidence before me I have been unable to perceive any element of invention in what is defined by claim 1 over the prior art, and accordingly I conclude that the invention as defined therein lacks novelty.

Of the other claims, claims 2, 9, 14, 15, 17, 18, 23 and 24 define matter which has been specifically disclosed in the Russian paper, and consequently they also lack novelty. Claims 3 to 8 specify certain values for the average area per unit weight of the floor slab and the tension means- exerted compression forces on the slab, which clearly involve no inventive step, and consequently lack novelty. Claims 16 and 19 to 21 define certain aspects of the tensioning of the slab reinforcement which would normally be carried out by the so-called competent workman, i.e. without any exercise of the inventive faculty, as a result of which these claims also lack novelty. Finally, claim 22, which defines that "the concrete floor slab contains a recess extending around its periphery for receiving lower ends of outside walls" does not appear to define anything which could reasonably be said to have inventive merit.

There remains to be considered claims 10 to 13. Each of these claims is appended to the preceding claim, and claims 9 to 13 are as follows:

9. A transportable building or a transportable building module according to any one of the preceding claims, in which there is provided means to take the tension of the tension means in adjoining beams whereby tension in the tension means is transferred into a compression force on the concrete of the beams.

10. A transportable building or a transportable building module according to claim 9, in which the corners of the slab contain insets which are rectangular in plan and each of the reinforcing strands is anchored on a plate located in the inset which transfers the load from the strands into the concrete.

11. A transportable building or a transportable building module according to claim 10, in which the tensioned reinforcing strands are anchored on an angled section plate mounted in the inset and having two faces in contact with the slab.

12. A transportable building or a transportable building module according to claim 11, in which the angled section plate is profiled at the corner between the faces in such a manner as to reduce the tendency of the plate to crack the concrete by a wedging action.

13. A transportable building or a transportable building module according to claim 12, in which the corner of the angled sectioned plate is radiused or chamfered or the like.

The only evidence relating to these claims is in the declaration by Professor Hillary Max Irvine forming part of the opponent M.J. McGrath's evidence-in-support. Professor Irvine states:

"Claims 10, 11, 12 and 13 describe an anchor plate in the form of a standard angle section available commercially throughout Australia pre-1980 and the need for an anchorage plate is standard knowledge throughout the prestressed concrete industry."

This is to be distinguished from a statement which would relate the use of anchor plates in the combination as defined by claim 1 to common knowledge. As this is the only evidence before me on this matter, and given the subject matter of claims 10 to 13, I am satisfied that the circumstances do not warrant a finding that these claims are anticipated by the Russian paper.

Obviousness

The determination of obviousness is a matter dependent upon the common general knowledge in the field of the invention : per Aicken J. in the case of Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd., 144 CLR 253. As to what constitutes common knowledge he stated:

"The notion of common general knowledge of 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 what is established as common general knowledge in the present matter is very limited.

So far as the Russian paper is concerned only one declarant, Kevin John Cavanagh purported to have had any knowledge of it prior to the priority date of the claims in suit. The evidence by other declarants in relation to the Russian paper consists only of vague and desultory comments, such as that by Mr. Peter C. Bruechle, for Calsil:

"The information conveyed in the paper represents the state of art in the USSR at that time in relation to pretensioning concrete floor slabs, and was readily available in Australia. Any person seeking to design a reinforced concrete slab for transportable houses could use the principles enunciated in the paper and in particular would very likely produce a slab having the characteristics of the slab shown in Fig. 4 of the Mikhailov paper. Such a design of a prestressed ribbed slab would not be innovative but an aggregation of well known, well tried principles."

Consequently, there is no basis for a finding that the Russian paper is part of common general knowledge.

Mr. Bruechle also states:

"I believe that any competent structural engineer, could at the priority date of the claims of Australian Patent Application No. 527996 ... design a prestressed or post tensioned reinforced concrete slab as a base for a transportable home. Such a slab could have one or more longitudinal and lateral main beams projecting from the underside of the slab and a series of ribs connecting the main beams. Such a slab would be a suitable substitute for the reinforced concrete slab described in the Homan declaration."

It is not clear from this whether Mr. Bruechle is distinguishing between design with invention and design without invention, and there is nothing in this passage which can be pointed to as being common general knowledge. Indeed in a later declaration Mr. Bruechle expresses his complete agreement with the statement:

"it would not be clear whether a house could be built on a concrete floor and be of sufficiently low weight for the structure to be transported",

and he later says, in reference to a statement by another declarant:

"This appears to state in a fairly complex way that the precast slab would not have been readily recognisable as a suitable base for building construction in isolated areas because it required a number of facets to be brought together to make it so successful. I agree it may not have been plain but it certainly was not obscure to a design engineer."

This last sentence is itself somewhat obscure. Nonetheless, I have inferred from the two above quotes that there is, according to Mr. Bruechle, little in the present invention which can be said to be in the nature of common general knowledge. It would seem that the most Mr. Bruechle would allow as being common general knowledge is reflected by the following:

"In this instance there is certainly a great deal of evidence that precast concrete slabs of the type which Durabuilt are attempting to patent have been used previously."

The only other declarant in evidence for Calsil who requires mentioning is Reginald James Homan, the general manager of a company actively involved in the manufacture of transportable houses for the seventeen years prior to the declaration. He declares that his company in 1979 became interested in and proceeded to built transportable houses having a concrete floor. He describes the floor in the following terms:

"The floor for the houses comprised a pair of longitudinal channels identified as 11 in the drawing attached hereto and identified as Exhibit RJH2 and joined at spaced intervals by angle iron members 12. A permanent formwork 13 formed of material known as "Bondek" was supported in the angle members 12 and reinforcing in the form of rods 14 and mesh 15 positioned in above the formwork was then filled with light- weight concrete."

Notwithstanding the fundamental differences between this concrete floor and that in suit, there is no evidence that the Homan type of concrete floor had become common general knowledge by October 1980. Therefore it can have no bearing upon the question of obviousness.

In evidence for the opponent McGrath are declarations by two expert witnesses, Professor Hillary Max Irvine and Dr. Neil Colin Mickleborough.

Professor Irvine at the time of making his declaration was Professor and Head of the Department of Structural Engineering, University of New South Wales. He commenced this position in February 1982, but it would seem that before this he was located in the United States. In particular, between June 1978 to February 1982 he was the Edgerton Associate Professor of Civil Engineering at Massachusetts Institute of Technology. Mr. Royal called into question Professor Irvine's ability to speak with authority on the state of common general knowledge in Australia at the appropriate time - October 1980 - due to the academic nature of his background and the fact that he was apparently not resident in Australia at the appropriate time. In my opinion Mr. Royal's criticism on this point is well-founded, and I have attached little weight to Professor Irvine's comments upon the state of common general knowledge in Australia, as general as those comments may be.

Dr. Mickleborough at the time of making his declaration was a lecturer at the University of New South Wales in Structural Engineering, and in October 1980 was working with the Department of Main Roads, Tasmania in bridge design engineering. His contribution to the question of obviousness is as follows:

"I have read the Statutory Declaration by Professor Hillary Max Irvine ... and I can confirm from my own first hand knowledge of Australian Civil Engineering practice prior to October 1980 that the facts and opinions set to in such clauses 3 to 27 of the before mentioned Declaration by Professor Irvine are accurate true and correct."

I regard such a non-specific attestation as contributing little to the determination of what is the common general knowledge in the present matter, especially in view of the generalised nature of the comments of Professor Irvine, to which I have averted earlier.

The final evidence before me relating to common general knowledge consists of three books held by the library of the University of New South Wales which were accessioned and shelf-listed at various dates in 1978, 1979 and 1980. Mr. Taylor, patent attorney for McGrath, has declared the following:

"These publications deal with the general state of the art for concrete slabs as of the date of the priority date of Australian Patent Application No. 527996."

This evidence also attracted criticism from Mr. Royal, again justifiably in my opinion. If the phrase "the general state of the art" is intended to be read as meaning the common general knowledge in the art, then the facts in evidence do not support Mr. Taylor's assertion in this regard. The fact that these publications are on a library shelf do not establish that they are common general knowledge, particularly when they have only been there for as short a time as in the present situation. Moreover, Mr. Taylor does not reveal his authority for declaring as to the common general knowledge in this particular art.

The extent of common general knowledge established by the evidence would appear to be this: on the one hand it is well known in the field of concrete structures to use precast reinforced concrete slabs for the floor structures of buildings; on the other hand another art exists in which buildings or building modules are built in one place and transported in a completed form to another place, using as a base or floor a material other than concrete. There must be strong doubt as to whether it has been established that any single person in a particular trade would be repository of both these elements of common general knowledge. However, assuming this to be the case, there is a further requirement for obviousness to exist. In the words of Aickin J.:

"It is rather whether it would have been obvious to a non- inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications."

Here we are not dealing with separate publications, but nonetheless with what are discrete items of common general knowledge. What the inventor has done here is to take a prior art article - a concrete slab - and adapted and applied it to a particular purpose hitherto unknown, at least from the point of view of being common general knowledge. The adaptation is comprised, in the main, of appropriate shaping and dimensioning of the slab, and the opponents made much of the occurrence of these features in the claim, arguing them to be mere "design" features. I think it is true to say, however, that any article or apparatus is the outcome of "design". What is important in determining whether such arrangements are patentable or not is whether in each case the design involves "invention" in the sense that that word is used in the Patents Act. In the present case, while it may be true to say that once a non-inventive skilled worker had embarked upon a course of producing a concrete slab for a transportable house he would arrive at the present structure, at least by a process of mathematical calculation or trial and error, the evidence before me fails to establish that it would be obvious for a so-called non-inventive skilled worker to proceed upon that course, and accordingly I find the invention to be non-obvious with respect to the evidence before me. That an application may be found non-obvious and yet prior published is of course a reflection of the different nature of the evidence available to be considered for these particular grounds of opposition.

Section 40

Mr. Wray raised three points concerning non-compliance with section 40 of the Patents Act.

Firstly, he submitted that the definition in claim 1 that:

"concrete beams extend longitudinally of the concrete floor slab adjacent respective longitudinal sides thereof"

and similarly with the lateral beams, was broader in scope that the terminology used in the description, which referred to longitudinal edge beams and lateral edge beams. I fail to see any merit in this. The word "edge" when used adjectively would, in my opinion, in normal use surely imply a location adjacent an edge. Also, in the present context, I consider the terms "side" and "edge" to be interchangeable. In any event, I note that the phrase "edge beam" only occurs in the description of the best method of performing the invention, and even if "adjacent respective sides" was to be regarded as being of wider scope it would seem to be a case of a permissible broadening of scope supported by the overall disclosure of the specification.

Mr. Wray's second criticism of claim 1 was in relation to the features "the floor area has a relatively large longitudinal dimension and a relatively small lateral dimension". He put forward the view that it was not clear whether the words "relatively" were meant to be read in respect of each other, or whether the words "large" and "small" were meant to be relative to some other criterion. The first of these possibilities accords with the fact that we are dealing with a rectangular slab, and is, I believe, capable of a clear construction. The second possibility is one which I would have some difficulty with so far as clarity is concerned, since there is no indication in the claim of what criterion is to be applied. It is a well established rule of construction that one should try, as far as possible, to give a meaning to a claim which would make it valid, exemplified by this quote from Osram Lamps v. Pope Electrics, 34 RPC 369:

"if the language be ambiguous, a construction which will give effect to the Patent is, upon the authorities, to be preferred to one which would nullify it."

On this basis, I believe that the first of the above alternatives is clearly the one that is to be applied.

The final point raised by Mr. Wray was to the seemingly arbitrary nature of the specific values of parameters defined in the claims, there being no indication from the specification, according to Mr. Wray, as to what determined those particular values. This approach seems to ignore the nature of the present invention, which is concerned with applying a particular article, a concrete slab, to a particular purpose, the article being sized and configured to fulfil that purpose. To my mind it is unremarkable and even to be expected that the particular dimensions of that article will comprise an intrinsic element of that invented article. A question any arise as to whether such an article will be suitable subject matter for Letters Patent, a question I have already addressed, but I do not see an attack under the head of non- compliance with Section 40 as being sustainable on this basis.

Conclusion

I have found that the opposition succeeds on tie ground of lack of novelty. However, I have also concluded that there is patentable subject matter disclosed in the specification; consequently I allow the applicant sixty days in which to propose amendments with a view to claiming that matter. I award costs against the applicant.

(J L Roveta)Supervising Examiner of Patents

5 NOV 1985