BORAL BRICKS (NSW) PTY LTD
[2000] APO 19
•7 March 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 50387/98 in the name of BORAL BRICKS (NSW) PTY LTD.
Title: A method and components for the manufacture of a surface finish for brickwork.
Action: Hearing in respect to objections maintained during examination of the application.
Decision: Issued .
Abstract:The specification asserts the invention resides in matching the colours of a mortar mixture and bricks. In this case it was found there is no invention in matching the colours of mortar and bricks. Consequently there is no necessary quality of inventiveness apparent on the face of the specification.
Accordingly the alleged invention is not a patentable invention.
The patent application and specification were refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 50387/98 by BORAL BRICKS (NSW) PTY LTD, and objections maintained during examination of the application.
BACKGROUND
Boral Bricks (NSW) Pty Ltd ("Boral") filed patent application 50387/98 on 5 January 1998. The application claims priority from an Australian provisional application filed on 6 January 1997.
The Patent Office has issued six adverse reports during examination of the application. In the sixth report the examiner maintains the claims of the application fail to define the invention and the claimed invention does not involve a manner of manufacture. On 11 January 2000 Boral requested a hearing in respect to the maintaining of these objections.
The hearing took place in Canberra on 15 February 2000. Mr Greg Turner, patent attorney of Spruson & Ferguson, represented Boral at the hearing.
SPECIFICATION
The specification describes the invention as relating to the manufacture of surface finishes for brickwork. The specification states it is common practice to bag and paint the outer walls of a house during domestic house construction. Once the brickwork is completed, a coating of mortar is conventionally applied to the entire outer surface of the brickwork using either hessian bag or a sponge to spread the mortar over the bricks to provide a textured surface finish. It is also known to apply an oxide to the mortar when mixing the mortar which, when applied to the brickwork, forms a base colour which does not have to be painted.
The problem the alleged invention seeks to address is the maintenance of a uniformly coloured surface finish for the brickwork.
Claim 1 of the specification reads as follows:-
A method of forming a surface finish for brickwork, said method including the steps of:
providing a plurality of bricks having a colour;
laying said bricks using a first mortar mixture to secure adjacent bricks to one another;
applying a second mortar mixture to an outer surface of said bricks once laid to provide a surface finish, said second mortar mixture being of a colour substantially matching said colour of said bricks.
The other main claim is claim 5. This claim defines a brick structure essentially having the features outlined by the steps of claim 1.
The specification does not describe any process for making the second mortar mixture or the bricks of any certain colours. In any case such processes were well known in the industry before the priority date of the application.
The advance made by the alleged invention is in the last phrase of claim 1. That is, the second mortar mixture is of a colour substantially matching the colour of the bricks.
THE ISSUES AT HAND
The examiner's sixth report highlights two problems with the application. The first is the claims fail to define the invention because they do not define the contribution that both the brick and mortar colour make to produce a uniformly coloured surface finish. The second is that the claimed invention does not involve a manner of manufacture because merely altering the colour of a thing does not amount to a patentable invention.
In my assessment of the alleged invention the second issue is far more crucial. If the alleged invention is not a manner of manufacture then there is no invention at all. In such circumstances the first issue would then be irrelevant.
APPLICABLE LAW
In the High Court decision, NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, (1995) 32 IPR 449, the majority of the court concluded the words, "a patentable invention", in section 18(1) of the Patents Act, retain a threshold requirement that the alleged invention be a manner of new manufacture. The requirement of a manner of new manufacture applies irrespective of the omission of the aspect of newness in section 18(1)(a). The court also said the threshold requirement of an alleged invention will, not withstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claim is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture.
The above approach was confirmed by the High Court in Advanced Building Systems Pty Limited v Ramset Fasteners (Aust.) Pty Limited, (1998) AIPC 91-401. In this decision the court also referred to Welch Perrin & Co Pty Ltd v Worrel, (1961) 106 CLR 588, to discuss claims to a combination. The court said the interaction of well known integers, so that they are not a mere collocation of separate parts but interact to make up a new thing, makes a valid combination patent. Furthermore the court said this notion of a new thing includes a new result, that is, a new way of achieving an old purpose or the fulfilment of a new purpose, and a new combination of features to obtain an improved result.
The UK Patents Court case, I.T.S. Rubber Limited's Application, (1979) RPC 318, is also pertinent. This case involved a claim to a squash ball characterised by its colour. The applicants maintained the blue squash ball gave surprisingly enhanced visual impact during play to the consequential advantage of the players. The Patents Court accepted the application as a manner of new manufacture on the basis that the colouring may add a desirable characteristic to the article in question. That is the ball gave surprising visual enhancement and it did not mark the walls of squash courts.
DECISION
Mr Turner submitted the examiner's objection to the application on the basis of the invention not being a manner of new manufacture is unsustainable as there is an inventive step. He noted the alleged invention satisfies a long felt need of reducing the patchy coloured appearance of surface finishes and obviates the need for previous remedies such as painting. Mr Turner also said the alleged invention has met with considerable commercial success.
I appreciate colour-matched mortar and bricks may satisfy long felt needs and be commercially successful in the marketplace. The courts have said such outcomes may be some indication of inventive step (Joseph Lucas (Batteries) Limited v Gaedor Ltd (1978) RPC 297 at page 358, and Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 239). However the latter decision also states that commercial success can never of itself be decisive of inventiveness. In any case the Philips (supra) decision states that, despite any newness or inventive step, a threshold requirement of inventiveness must be apparent on the face of the specification for the alleged invention to be a manner of new manufacture. In line with the Philips (supra) decision I need to determine whether the necessary quality of inventiveness is apparent on the face of the specification in the present case.
The alleged invention is the matching of the colours of the second mortar mixture with that of the bricks. The specification does not describe how the colours of either the mortar or the bricks are matched. In any case, processes for producing various colours of mortar and bricks were well known in the industry before the priority date of the application. The specification admits the oxide treatment of mortar was known. It was also well known that bricks are ordinarily red in colour due to the presence of iron compounds in the clay that are converted by heat into red oxide. Various colours of bricks can be obtained by the addition of compounds such as lime or magnesia to the clay. This knowledge in turn may be a valid reason for the specification's silence on processes for matching the colours. The specification merely states "the mortar mix is preferably formulated to match the colour of the bricks themselves" (page 2 lines 27-28). On the other hand the absence of any description of how to match the colours may suggest there is no invention apparent on the face of the specification.
Mr Turner submitted that by having mortar of substantially the same colour as the bricks, slight variations in mortar colour are less obvious when the mortar is applied to the bricks. He said if the mortar is of a different colour to the bricks, then this highlights slight variations in mortar colour.
The specification does not discuss anything along these lines. The closest discussion is to say "lock (sic) of uniformity (in mortar colour) leads to the problem of variations being very evident" (page 1 lines 24-25). In any case the solution presented by the specification relies totally on well known techniques for producing various colours of mortar and bricks, and suggests there is an invention in matching the colour of the mortar and bricks.
It is well established that a new combination of known integers may be patentable where the known integers when placed together have some working inter-relation producing a new or improved result (British Celanese Ltd v Courtaulds Ltd, (1935) 52 RPC 171 at 193, Advanced Building (supra) and Welch Perrin (supra)). Generally this requires disclosure in the specification of a specific combination of known integers of an apparatus or a specific combination of known steps to carry out a method or process.
In the present case Mr Turner said the invention resides in deciding the colour of the bricks and then matching the mortar colour to the bricks. Consequently the alleged invention simply involves mental decision making on colour choice and colour match. A person skilled in the art then chooses the appropriate known treatment conditions for the mortar and the bricks to ensure the colours match. The treatments are performed entirely separately on the mortar and the bricks. Consequently there is no working or functional inter-relationship between the treatments.
It may be argued there is a working or functional inter-relationship since the product is a tangible brick structure having mortar and bricks of matching colour to present a uniformly coloured surface finish. While the mortar and bricks may perform their normal functional role in maintaining the surface finish and the brick structure, the mortar and brick colour itself does not perform any inter-related working or functional role. In particular the colour matching has no effect in causing the mortar and bricks to perform anything above their normal functional role of maintenance of the surface finish and brick structure. There is also no practical difficulty to overcome in an association of mortar and bricks by colour. An inter-relationship based on colour of mortar and bricks is an inter-relationship of pure aesthetics only. Consequently the matching of the colours of mortar and bricks is not a valid combination for a patent.
The alleged invention also differs in some respects from the I.T.S (supra) case. Firstly that case involved recognition of the visual enhancement and non-marking characteristics of a squash ball of specifically a blue colour. In the present case there is no specific colour envisaged as a prominent feature. The requirement is simply to match the colour of the mortar and the bricks.
Secondly the blue squash ball gave surprising results. The visual enhancement and non-marking characteristics were an unexpected result of the development of the blue ball.
Mr Turner submitted the alleged invention in the present case results in a better than expected smooth uniform surface finish. He particularly mentioned the matching overcomes slight variations in mortar colour to produce the appearance of a uniformly coloured surface finish.
Firstly the specification is silent on these points. Secondly the main claims of the specification do not place any limitation in colour on the first mortar mixture compared to the bricks and the second mortar mixture. In this light it appears that strict uniformity or even substantial uniformity in colour are not essential. In any case a uniformly coloured surface finish is an entirely expected result when one matches the colour of the second mortar mixture and the bricks. In fact, if the colour of the mortar and the bricks match then it is undeniable that the surface finish will be of a uniform colour. There is nothing to suggest there is any surprising result either visually or functionally in matching the colour of the second mortar mixture and the bricks.
The result envisaged by the matching of mortar and brick colours is entirely expected and unsurprising. Furthermore an entirely expected and unsurprising result cannot be a new or improved result in the sense outlined in the Advanced Building (supra) decision.
I conclude there is no quality of inventiveness apparent on the face of the specification.
The issue of manner of manufacture could also be looked at from a view that the alleged invention may be of "general inconvenience to the public" (Hiller's Application, (1969) 86 RPC 267 at page 270).
Mr Turner admitted the alleged invention does not involve any special technique in producing coloured mortar and bricks. However he submitted it is very unlikely that a user could accidentally infringe the present claims of the application. Mr Turner suggested someone would consciously have to mix the appropriate mortar colour to arrive at the same colour as the bricks. He said such an act would have to be a deliberate act.
I am not persuaded by this argument. A user would not infringe the claims if they used together mortar and bricks of different colour. It would be mischievous for the same user using mortar and bricks produced by the same well known methods to find they would infringe the claims, if allowed, only on account of the mortar and bricks being of substantially the same colour. The public should not be inhibited, by the presently proposed patent monopoly, from making choices related to colour matching of a product.
I regard the alleged invention described and claimed in the specification as generally inconvenient to the public.
CONCLUSION
The specification asserts the invention resides in matching the colours of the second mortar mixture and the bricks. In the present case I have found there is no invention in matching the colours of mortar and bricks. Consequently there is no necessary quality of inventiveness apparent on the face of the specification. I conclude the alleged invention is not a patentable invention.
Accordingly I refuse to accept the patent application and specification.
M.G. Kraefft
Delegate of the Commissioner of Patents
Attorneys for the applicant : Spruson & Ferguson, Sydney
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