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

In the case of Bevan James Riekie and Arthur Simpfendorfer v M.J. McGrath Pty Ltd and Calsil Limited, the applicants Riekie and Simpfendorfer sought to patent a transportable building or module containing a concrete floor slab. The opposition to the patent application was lodged by M.J. McGrath Pty Ltd and Calsil Limited, who claimed that the invention was anticipated by prior publication, obvious, lacked novelty, and did not comply with Section 40 of the Patents Act. The case was heard by the Supervising Examiner of Patents, who ultimately found that the opposition succeeded on the ground of lack of novelty.

The Supervising Examiner of Patents ruled that the applicants had prior-published the invention themselves by disclosing it to an outside party who was to complete the design work and manufacture the slab without a requirement of confidentiality. The Examiner found that the applicants had not established an obligation of confidence in their disclosure to the outside party, and that the invention was therefore not protected from prior-publication. Additionally, the Examiner found that the invention was anticipated by a paper presented at a Symposium on Pretensioned Concrete Buildings in 1976, which disclosed a transportable floor slab that met the requirements of the applicants' patent claims.

Regarding the other grounds of opposition, the Examiner found that the invention was not obvious, as there was little common general knowledge in the field of concrete structures and transportable buildings. The Examiner also found that the patent application did not comply with Section 40 of the Patents Act, as the definition of concrete beams in claim 1 was broader in scope than the terminology used in the description. However, the Examiner allowed the applicants sixty days to propose amendments to their patent claims in order to claim the patentable subject matter disclosed in the specification.

In conclusion, the Supervising Examiner of Patents found that the opposition to the patent application succeeded on the ground of lack of novelty, and that the applicants were allowed sixty days to propose amendments to their claims. The Examiner awarded costs against the applicants.