Boral Resources (NSW) Pty Limited v BST Holdings Pty Limited - [2005] APO 48

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 747361 in the name of Boral Resources (NSW) Pty Limited.

Title: Building Panel and Method and Apparatus of Forming Same.

Action: Opposition under s.59 by BST Holdings Pty Limited and an objection to an application by BST Holdings Pty Limited to serve further evidence.

Decision: Issued 1 November 2005 .

Abstract

The invention in question revolved around a method claim to vertically forming building panels including the simultaneous setting of a coating material and core material within upright baffles.

The serving of further evidence was not considered appropriate in all of the circumstances, and therefore not allowed. Prima facie, it appeared that the nature and significance of the further evidence sought to be adduced would not lead to a more correct, just, or expeditious finding. There was no strong public interest in allowing this application, nor did the interest of the applicant lie in having a further delay, or in incurring costs to address evidence which appeared of little significance.
In determining entitlement to the invention, the principles of Iluka Midwest Limited v Wimmera Industrial Mineral Pty Ltd [2001] APO 58 were applied. The opponent was unable to clearly establish the contribution to the invention made by a third party under its employ. Hence the opponent was unable to establish that party as an inventor, and therefore itself as entitled to the invention.
The invention as claimed was considered novel over the prior art document considered most relevant by the opponent.
In terms of inventive step, the opponent had not discharged its onus in clearly establishing that the invention as claimed was merely an obvious combination of well known process steps used in the industry, or, that the claims were a known combination of steps including a mere workshop improvement which was obvious.
The claims were found to be fairly based and sufficient on the matter described.
Costs followed the event and were awarded against the opponent, BST Holdings Pty Limited.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 747361 by Boral Resources (NSW) Pty Limited and opposition thereto under s.59 by BST Holdings Pty Limited and an objection to an application by BST Holdings Pty Limited to serve further evidence.

BACKGROUND

Boral Resources (NSW) Pty Limited (“Boral”) filed patent application 747361 on 28 August 1998 under the provisions of the Patent Co-operation Treaty (PCT) as application PCT/AU98/00706. The application claims priority from Australian provisional applications PO 8864 and PP 3181 filed on 29 August 1997 and 24 April 1998 respectively. The application, after examination by the Commissioner was advertised accepted on 16 May 2002.
A notice of opposition under s.59 was filed by BST Holdings Pty Limited (“BST”) on 16 August 2002. After various extensions of time to both parties, evidence was completed by 13 December 2004. It is also worth noting that part of the delay in serving evidence was due to ongoing negotiations between the parties as a result of a Notice to Produce, which was served on the patent applicant, and a subsequent hearing on an application for extension of time sought by BST to serve its evidence in support.
An application to file further evidence was filed by BST on 18 March 2005. This was subsequently opposed by Boral, and both parties were advised this matter would be heard in conjunction with the substantive opposition.
The matter was heard in Canberra on 28 July 2005. Dr Charles Tansey, patent attorney, of Shelston IP Lawyers, Sydney represented the opponent, whilst Mr Greg Turner, patent attorney of Spruson & Ferguson, Sydney represented the applicant.
GROUNDS OF OPPOSITION
The opponent alleges that the invention as claimed is not a patentable invention in terms of the grounds specified in s.59 of the Patents Act 1990, specifically:
(a)the Nominated Person is not entitled to the grant of a patent for the invention,
(b)the invention as defined in claims 1 to 20 does not comply with Section 18(1)(a) or (b) of the Patents Act 1990,
(c)the specification filed in respect of the complete application does not comply with subsection 40(2) or (3).
At the hearing, the primary focus of the opponent’s submissions was in relation to Section 59(a).
EVIDENCE
Evidence in support provided by BST consists of declarations by:
·Mr Chris EDWARDS, a civil engineer, who states he was a Director of the firm CTI Consultants Pty, Limited, based in Sydney, from 1989 to 1997. Mr Edwards also states he was retained by Thomas Wright of BST to develop and test mix designs using BST aggregate from about 1991. Also included are exhibits CE1 to CE5.

·Mr Thomas E WRIGHT, the Managing Director of BST Holdings Pty Limited. Also provided are exhibits TEW1 to TEW7.
Evidence in answer provided by Boral consists of declarations by:
·Mr Paul Russell MOSES, Manager of the Concrete Customer Centre with Boral in Sydney. Mr Moses declares he is a co-inventor of the present application 747361, and has provided exhibits PRM-1 to PRM-9.
·Mr Robert Lawrence MUNN, a retired Chief Engineer of Boral Construction Materials who provided advice to Boral operating companies worldwide. Mr Munn also declares himself to be a co-inventor of the present application.
Evidence in reply by BST consists of a further declaration by Mr Chris EDWARDS, referring to his earlier declaration and those of Mr Munn and Mr Moses.
I will refer to the relevant parts of the evidence in more detail where appropriate to my decision.
THE SPECIFICATION
The specification states the invention relates to a method and apparatus for forming a building panel.
It further states that lightweight concrete building panels are known. Such panels are produced in a raw, unfinished condition for installation. After being installed into a building under construction, the panels are rendered or otherwise coated to provide an acceptable surface finished with a trowel. Furthermore the strength of such known lightweight concrete panels is not high.
The specification continues by stating it is an object of the invention to overcome or substantially ameliorate at least one of the disadvantages and/or more generally provide an improved building panel and a method and apparatus for forming a building panel.
The specification follows with a consistory statement which mimics the claims before describing the drawings in detail.
The Claims
The specification ends in 20 claims (including 2 independent claims) listed below:
“1. A method of vertically forming a building panel or panels, the method including:
applying a flowable, settable coating material to respective surfaces of at least two baffles,
placing the baffles in a substantially parallel, generally upright spaced interrelationship within a mould box or supporting flame,
at least substantially filling the space between the at least two baffles with a settable core material prior to setting of the coating material, and
allowing the core material and coating material to set simultaneously.
2. The method of claim 1, wherein the baffles are located with respect to one another prior to filling the space with core material.
3. The method of claim 1, wherein the baffles are moved together after filling the space with core material but prior to setting of the core material and coating material.
4. The method of claim 1, wherein the baffles are moved apart and/or separately removed after setting of the core material and coating material so as to release the formed panel(s).
5. The method of claim 1, providing n+1 baffles in a parallel spaced interrelationship, between which n panels are formed where n equals any integer greater than or equal to 1.
6. The method of claim 4, wherein after the baffles are moved apart, the panels are removed in a direction substantially parallel to the plane of the baffles by application of force thereto.
7. The method of claim 1, wherein the baffles are moved toward one another by means of hydraulic clamping cylinders.
8. An apparatus for use in forming a building panel or panels by the method of claim 1, the apparatus including:
a mould box or supporting frame into which said coated baffles are receivable,
means to locate said coated baffles in association with one another so as to define a minimum space therebetween, and
means to apply a settable core material between each of said baffles.
9. The apparatus of claim 8, further including a means to apply a coating material to both sides of at least some of said baffles prior to applying said settable core material between each of said baffles.
10. The apparatus of claim 8, wherein each baffle is substantially hollow, having a pair of spaced apart side sheets.
11. The apparatus of claim 10, wherein each baffle has air inlet means by which air can be injected into the space between the sheets so as to outwardly expand the same under pressure to assist in releasing the set panels from the baffles.
12. The apparatus of claim 8, wherein each baffle is solid.
13. The apparatus of claim 8, wherein the baffles have extraction engagement holes to which an extraction device can be anchored for the purpose of applying force to the set panels for removal.
14. The apparatus of claim 8, wherein the mould box or supporting frame is
formed upon a mobile structure.
15. The apparatus of claim 14, wherein the mobile structure has one or more posts to which clamping cylinders are affixed, said clamping cylinders being associated with said walls of the mould box or supporting frame.
16. The apparatus of claim 15, wherein the side walls of the mould box or supporting frame acts as end baffles.
17. A plant for forming building panels, the plant including:
means for applying a flowable, settable coating material to respective surfaces of at least two baffles,
means for placing the baffles in a substantially parallel, generally upright spaced interrelationship within a mould box or supporting frame,
means for substantially filling the space between the at least two baffles with a settable core material prior to setting of the coating material, and
means for conveying the individual panel throughout the plant for the purposes of cleaning and coating the same with said settable coating material and for arranging the coated baffles in said substantially parallel, generally upright spaced interrelationship.
18. The plant of claim 17, including means for conveying a mould box or supporting frame into which and from which the baffles are inserted and removed and means for transferring the mould box or supporting frame from a first, baffle removal position to a second, baffle insertion position, between which positions the mould box or supporting frame is rotated.
19. The plant of claim 17, wherein the means for substantially filling the space between the two baffles with a settable core material includes a hopper from which there extends one or more filling tubes, the hopper being mounted upon a frame and being pivotable about a horizontal axis, the hopper being adapted to be raised and lowered such that the filling tubes enter and are withdrawn from a space between adjacent baffles while core material is being delivered thereto by said filling tubes.
20. The plant of claim 17 wherein means are provided to oscillate the hopper horizontally, during vertical withdrawal of the tubes and delivery of the core material.”
DECISION
Onus of proof
I note that it is well established in proceedings such as these that the onus of proof lies with the opponent(s) who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG v New England Biolabs Inc 50 IPR 305 at [67].
Further Evidence
Before addressing the substantive matters raised, I need to determine what evidence is available before me to help reach a decision. In particular, I will first address the issue of the application to serve further evidence. On 18 March 2005 BST applied to serve further evidence. Boral, on 4 April 2005 indicated it wished to be heard on this matter separately notwithstanding at that point the Commissioner had not yet decided to allow the further evidence. Both parties also provided written comment as to the relevance of the evidence. Both parties were advised by the Commissioner’s delegate on 6 May 2005 that this matter would be heard at the same time as the hearing on the substantive opposition. The parties were also informed by the delegate that he was not prima facie satisfied that the service of evidence was appropriate in all the circumstances.
Further evidence is governed by regulation 5.10. The relevant sub-regulations state:
“(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(5) The Commissioner must not give a direction under sub-regulation (1) or grant an application under sub-regulation (2) or (4) unless the Commissioner:
(a) if he or she proposes to grant an application by a party- is reasonably satisfied that the other party has been notified of the application; and
(b) if he or she proposes to act on his or her own motion — ensures that the parties are notified of the proposed action; and
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances”.
Before granting a request to serve further evidence, the Commissioner must be reasonably satisfied that the serving of further evidence is appropriate in all the circumstances. In EmoryUniversity v Biochem Pharma Inc. [1999] APO 50 (5 August 1999), the delegate, in exercising his discretion was guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner ofPatents (1994) AIPC 91-057; 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 on the operation of regulation 5.10(5) in relation to extensions of time. The general principles that flowed from these decisions were:
a) The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b) Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c) The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222) (In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6).
(The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d) The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247).
e) The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
That is, the criteria to be considered arise from the need to balance a serious opposition being
determined on its merits and determining an opposition as expeditiously as possible.
In Transgene SA v Virax Holdings Ltd [2002] APO 14 (17 April 2002), the delegate considered that the relevance of evidence was a key factor that Sackville J in Goninan (supra) considered relevant in deciding whether evidence should be allowed:
“In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings.”
However, as Sackville J went on to explain, this does not mean that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. Rather, it is necessary to form a prima facie view of whether that evidence is likely to be important in the opposition proceeding given the nature of the issues addressed by the proposed evidence.
That is, is the evidence which it is proposed to be served, based on the nature thereof and information supplied in the request, relevant to the action - in the sense that it would contribute to a more correct, just, or expeditious result?
The further evidence the opponent seeks to adduce is a statutory declaration by Kenneth George MILNE, an employee of EPM Concrete Pty Ltd of Blacktown, NSW (a former wholly owned subsidiary of Boral). In essence it attests to Mr Milne witnessing the manufacture of concrete wall panels using a “battery” mould system.
1. Explanation of the delay: no explanation of the delay was provided by the opponent. However, this on its own is not detrimental to the opponent’s application.
2. Public interest: in determining the public interest, the nature and significance of the evidence is relevant. A prima facie view of the declaration leads me to believe the declaration by Milne is of little significance in determining the primary ground of the opposition, namely entitlement. Nor does this declaration appear to add anything to the arguments pertaining to novelty or section 40 issues. The declaration gives a brief outline of the manufacture of panels using a battery mould system undertaken by a subsidiary company of Boral. Without detailed scrutiny, I do not believe this provides any definitive evidence of what is common general knowledge or how this relates to the present invention, which appears to be a different process. As such my prima facie view is that this further evidence is unlikely to be important in the opposition.
  
  Determining the matter expeditiously is also in the public interest. However any delay caused by allowing this evidence, along with any delay caused by affording the applicant an opportunity to respond would, I believe, have minimal negative effect on the public interest.
3. The interests of the party seeking the exercise of discretion: the interests of BST lie in favour of having available evidence to support their case. However, given that the particular evidence appears of low significance, BST’s interest is similarly low. Nor will the party be shut out if this application is refused, given significant evidence has already been filed by BST.
4. The interests of other party: it is clearly in the interests of the applicant to have the validity of its application determined as quickly as possible. It is not in their interests to incur a further delay or to spend time and resources attending to evidence which on the face of it, carries little weight and is of little significance in establishing the validity of the application. This is balanced somewhat by the applicant’s interest in having a greater presumption of validity in their patent. However, in my opinion the applicant’s interest is a determinant when assessing the allowability of the further evidence.
In balancing all these factors I do not believe the nature and significance of the further evidence sought to be adduced by the opponent will lead to a more correct, just, or expeditious finding. Therefore there is no strong public interest in allowing this application for further evidence. Additionally, the interest of the applicant does not lie in having a further delay, nor is it to incur costs, to address evidence which appears of little significance. Consequently I believe it is these two factors which outweigh the interest of BST in seeking the exercise of discretion.

Therefore I refuse the opponent’s application to file further evidence.
ENTITLEMENT
The opponent, BST, submitted that the evidence clearly demonstrates that the persons named as inventors, Paul Russell Moses, Robert Lawrence Munn and Robert Story were not the real inventors of the alleged invention set out in the present application, in accordance with Section 15(1)(a) of the Act. Hence they asserted that Boral were not the rightful owners. BST submitted that Chris Edwards was the actual inventor, and, by virtue of his assignments, rightful ownership of the present application lay with BST.
Relevant Law
Section 15(1)(a) states:
“1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor;”
In reviewing the relevant law I am drawn to Iluka Midwest Limited v Wimmera Industrial Mineral Pty Ltd [2001] APO 58 where the delegate reviewed numerous decisions of the Commissioner in relation to inventorship and entitlement.(see e.g Encoret Limited vDexterity, Inc [2001] APO 12, Charles Genn v Ross William Bain [2000] APO 39, Robert HicksPty Ltd v Robert William Millar 43 IPR 161, Gainsborough Hardware Industries Limited v WalterJoseph Nugent [1998] APO 7 and Infra Red Technologies Pty Ltd v Dirk Domenico Cortesi [1997] APO 6). Notwithstanding the distinction between the concepts of inventorship and entitlement (as per section 15(1)(b) of the Act), in the cases reviewed, the delegate identified a consistent approach to the inventorship issue, that being one:
“…which has involved an assessment of the contribution made by the alleged inventor(s) to the invention as broadly described and claimed.”
This approach, subsequently applied by the delegate, was also previously approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another [1998] AATA 853. In approving this approach the Tribunal stated:
“The decisions of the delegates, however, are fully reasoned and are often arrived at as a result of the benefit of adversarial argument from counsel on both sides. The tests which the [Commissioner] has adopted and followed consistently appear to me to be appropriate, not only because they reflect the results of reasoned arguments by experts in the field, but also because they represent tests that appear to have been universally applied among those concerned.”
Consequently I see no reason to deviate from this practice, and shall endeavour to first identify the invention broadly described and claimed.
The present invention
In establishing what is the present invention, arguments from both parties focussed primarily on the invention as claimed in claim 1, which reads:
“A method of vertically forming a building panel or panels, the method including:
applying a flowable, settable coating material to respective surfaces of at least two baffles,
placing the baffles in a substantially parallel, generally upright spaced interrelationship within a mould box or supporting flame,
at least substantially filling the space between the at least two baffles with a settable core material prior to setting of the coating material, and
allowing the core material and coating material to set simultaneously.
Following the approach applied in Iluka (supra) I have also reviewed the description to glean an insight into the invention. From the claims, and description, I believe the invention to be a method of vertically forming a building panel, and associated apparatus, as well as a “plant” (or manufacturing system) to mass produce a panel according to the method. Specifically, I find the invention resides in the combination of all of the process steps in their entirety (as set out in claim 1) required to form the panel, rather than any single step of the method in isolation.
I would also add that the all of the drawings and associated description of the drawings, for the manufacture of the building panel show baffles (into which the panel is cast) arranged vertically in a mould box, or being sprayed vertically or being conveyed around the plant in a vertical manner. Consequently from the description, on balance I do not believe the invention of forming the building panel, associated apparatus, or plant, would be contemplated in a manner other than vertically oriented.
The opponent’s fundamental submission was that Boral simply took the Edwards method of preparing a skinned panel, exemplified in horizontal apparatus, and carried it out in an alternative but equally conventional method of casting, using a vertical rather than horizontal mould. In particular whilst BST concede that Mr Moses contributed the idea of vertical casting, it was Edwards that provided the concept of applying coating material to the inside of at least two baffles. Moreover BST submit that as at 12 January 1997, Edwards had given Boral a document (exhibit CE5) which contained all of the features of the claimed invention.
This submission leads to the question, what knowledge did Mr Edwards actually have in his possession to contribute to the invention if he were a true inventor at the appropriate time?
Mr Edward’s work in the field
It is appropriate that I set out some of Mr Edwards’ work history. Along with this, I will also set out a timeline surrounding Mr Edwards’ employment and any relevant actions undertaken by both BST and Boral up to the priority date of 29 August 1997. The timeline of events which follow are taken from Mr Edwards’ declaration. They were not contested by the applicant and I see no reason to doubt Mr Edwards’ statement in the first instance.
Ø1991    Mr Edwards is engaged by BST to develop BST aggregate for the construction industry. (BST aggregate is expanded polystyrene balls (“EPS”) coated with a specially formulated chemical, used to make BST lightweight concrete.)

ØPrior to 1993 several companies in Australia were producing concrete building panels, for example James Hardie Industries produced a panel comprising a lightweight concrete core sandwiched between two sheets of cement fibreboard.

Mr Edwards claims he was aware that one disadvantage of the Hardie panel was the variance in shrinkage rates between the concrete and fibre cement sheets. Such shrinkage caused stressing and splitting of materials.

Ø1992    Mr Edwards states he began experimenting with designing a panel made with BST aggregate. He states his objective was to make a core of lightweight BST concrete with a wet cement skin so that the skin and core would set concurrently. He believed this would address the shrinkage/splitting issues associated with the Hardie panel.

His sample panels were made by following the steps of:
a)Pouring a layer of skin mortar into the bottom of the mould and spreading it to an even thickness of about 5 mm;
b)Placing the BST concrete into the mould to form a thick layer on top of the skin mortar and smoothing this on top;
c)Leaving the materials until the concrete has gelled;
d)Applying a layer of skin mortar on top of the concrete and finishing it by hand to be smooth and flat;
e)Removing the panel sample from the mould on the following day.
Ø1994    Mr Edwards continued development work on the panel on behalf of BST. A progress report, dated 8 August 1994, exhibit CE2 was sent to Mr Wright.

Ø1996    On 2 October 1996 Mr Edwards sent Mr Wright a facsimile of a conceptual plan (exhibit CE3) for the casting of BST concrete wall panels. Mr Edwards claimed copyright and granted limited permission to BST to send the plans to Boral Asia and General Engineering Public Company Limited. (I will refer to exhibit CE3 in more detail later in my decision).

Ø1996    Mr Edwards was engaged by BST to assist General Engineering in Bangkok, Thailand to develop BST lightweight concrete panels. Mr Edwards produced a report “Report No CC15” (exhibit CE4) dated 8 January 1997 on the basis of his work at General Engineering. This report was sent to Mr Mhan Sriuenthong, of General Engineering, Bangkok, Thailand. (I will also refer to this exhibit in more detail later).

Mr Edwards states he supervised a large number of trials in the manufacture of panels made in vertical, horizontal, or battery moulds with or without mortar skins. The panels being for wall construction or highway noise barriers. (I note Mr Edwards does not actually state which combinations of these features were undertaken).

Ø1996    In late 1996, Mr Edwards was asked by BST to assist Boral to adapt the lightweight panels he had developed to the specific requirements of Boral, and assist in the casting of those panels.

Ø1997    As part of the Boral project, Mr Edwards produced a report “Report No. CC16” dated 12 January 1997 (exhibit CE5) on the basis of trials conducted in December 1996 in Singapore. This report was forwarded on to Ms Karen Thompson of Boral Concrete (Malaysia) Sdn Bhd, Selangor, Malaysia.

Ø1997    In August 1997 Mr Edwards states he was advised by Mr Wright that BST was about to grant 2 licences to 2 Boral subsidiaries to manufacture and sell BST aggregate and that one of the applications that Boral was interested in was manufacturing BST wall panels in Malaysia.

Mr Edwards states he was further advised that pursuant to the above contracts, his services were to be provided to assist with the adaptation of the panels and the design of a factory to build said panels. The project team from Boral included Mr Robert Munn and Mr Paul Moses (presently named as co-inventors) as technical assistants.

Ø1997    In the week following the execution of the licence agreement (22 August 1997) Mr Edwards states he attended a technical meeting at Boral’s premises with, amongst others, Mr Munn and Mr Moses. Mr Edwards claims Boral would already have copies of his earlier reports – exhibits CE3, CE4 and CE5.

Mr Edwards goes on to state he discussed the type of moulds necessary and that he advised Mr Moses that he had experimented with pouring mortar on to the surface of moulds, but believed it was preferable to spray. He also states he advised that he had experimented with vertical moulds.
Both parties in their submissions directed me to the disclosures made by Mr Edwards in exhibits CE3, CE4 and CE 5 respectively. I will set out the relevant portions of each of these documents in turn.
Exhibit CE3: Conceptual Plan for casting of BST lightweight Concrete Wall Panels, dated October 1996. This document states that panels made from lightweight BST concrete are made with an integral skin of polymer modified mortar on each face. The panels are said to be cast on flat bed moulds using a process including the steps of:
1. spraying a first layer of polymer skin to the base of a mould,
2. placing the mixed BST concrete in the mould on top of the first skin,
3. screeding off concrete,
4. waiting until concrete has stiffened,
5. spraying on top layer of polymer concrete, screeding again,
6. allowing to set, take off the side of the mould and lifting out the panel.
The applicant correctly points out that this process requires the casting to occur in flat bed (ie horizontal) moulds with the steps of screeding the concrete, and that there is no mention of vertical moulds.
Exhibit CE4: Report No. CC15 – Trials for development of BST Lightweight Concrete Panels, date of issue 8 January 1997. The document sets out the results from a number of trials undertaken on 15-17 December 1996.
The opponent drew my attention to a Table labelled “Trial Summary”, and in particular items 12-4, 13-5 and 14-5. The Table describes these items as Panel Types “Vertical”, and indicates “No” for a polymer skin. When the absence of a polymer skin was pointed out, the opponent directed me to a chapter headed “Trial Details” which gives a more detailed description of each panel item trialled. Under item 12-4, the panel is described as being made by a vertical mould having steel reinforcements, “…and polymer concrete skin on both sides” thereby conflicting with the Table. I also note for every horizontal panel described under “Trial Details”, a specific comment is made about the performance of the polymer skin, whilst such a comment is absent for item 12-4. In addition, neither of the descriptions for the panels labelled items 13-5 and 14-5 in this chapter (or elsewhere) make any mention of the presence of polymer skins on these panels, (consistent with the Table).
Given this apparent conflict within the report, I cannot conclude with any certainty that this report discloses the manufacture of panels including a polymer skin, made by a vertical mould. Accordingly I can only place little weight on this evidence.
The report sets out the casting process used for horizontal moulds. This process is very similar to that of CE3 above, with the main exception of hand trowelling, the polymer mortar onto the mould and concrete rather than spraying.
Also of significance is that Mr Edwards noted that the polymer mortar skin dried out quickly and that the casting of horizontal panels was unsuccessful because of the poor performance of the mortar skin. He also noted that a better surface finish was achieved on noise barrier panels than on vertical panels, as air bubbles escaped easier from between the fibreglass mould of the noise barrier panel types. Mr Edwards also concluded that the surface condition of the panels could be improved by pumping the concrete into a mould and vibrating whilst filling.
This paper also indicates that battery moulds were trialled, but again having no polymer skin applied. The applicant also contended (and I agree) that there is no clear disclosure in this report of panels being manufactured in vertical baffles which have had a flowable settable coating applied.
Exhibit CE5: Report No. CC16 - Trials for development of BST Lightweight Concrete Panels, date of issue 12 January 1997.
This report by Mr Edwards, in its conclusions, states that horizontal casting is not recommended because of the problems with the performance of the polymer mortar skin. It notes that surface condition can be improved by vibrating the concrete whilst it is being pumped into the moulds to reduce the amount of entrapped air, and by the use of a superior mould release agent.
The report goes on in its recommendations to set out a method to manufacture wall panels based on casting in vertical moulds adopting the use of a superior mould release agent. However it does not suggest the application of a flowable settable coating material to the interior of the moulds prior to filling the moulds with concrete.
Consequently, I do not believe that Exhibit CE5 contains all of the features of the claimed invention as suggested by BST.
Contributions to the invention
In terms of contribution to the invention, to my mind a particularly persuasive piece of evidence is in fact part of Mr Edwards’ evidence in reply, where he states at [19] and [20] that:
“19. I refer to paragraph 17 of the Moses statement and agree that “I did not consider applying a flowable settable coating material to the inside surface of the baffles of a vertical panel casting apparatus prior to casting a lightweight panel until it was suggested” by Paul Moses. This refinement could contribute an improvement to the surface finish to the specific standard required by Boral.
20. I as had (sic) employed an alternate method of making a skinned panel and had disclosed this to both Robert Munn and Paul Moses”.
I believe through this statement Mr Edwards has essentially admitted that he had not considered the combination of features in their entirety, contemplated by the invention. This is also evident when reviewing exhibits CE2 to CE5. Nowhere in these documents does Mr Edwards specifically state he trialled an arrangement in which vertical (or upright) baffles were coated with a flowable settable material and then the baffles subsequently filled with settable core material, with the materials setting simultaneously.
BST’s fundamental argument that the present inventors merely did no more than put Mr Edwards’ horizontal method of preparing a skinned panel into place in a vertical mould is clearly incongruent with Mr Edward’s admission to using an alternative method to that of the invention.
In my opinion, the only clear evidence provided by the opponent of applying a skin (or flowable settable material), is in relation to horizontal moulds using a two stage screeding process which is not required in the present invention (exhibits CE3, CE4). Alternatively, whilst Mr Edwards may well have trialled some casting methods using vertical moulds, (as per CE4), again there is no clear evidence that the moulds had a flowable settable material applied to at least two baffles prior to filling with a flowable settable material and holding substantially upright whilst allowing the core material and coating material to set simultaneously. The only coating on these baffles appears to be a releasing agent to allow for the baffles to be separated easily rather than a flowable settable material.
I note there is nothing definitive in the Edwards declaration where he states that he informed the other parties that panels were to be made following the method of the invention (vertical mould notwithstanding) prior to the earliest priority date.
In contrast, Exhibit PRM-9, a facsimile by Mr Moses, dated 18 Aug 1997, includes a letter to Mr Tony Wright, (cc to Mr Munn) which outlines many of the basics of invention. In particular the letter identifies the desire to patent a system where the mould surfaces of baffles (or “shutters”) are sprayed with a 2mm thick polymer modified sand and cement coating , dropped back into a mould frame comprising a steel chassis in which the baffles are hung in their slots in the mould frame, the cavities of the baffles filled with core material, set and stripped 24 hours latter, with the panels remaining standing (as opposed to lying) on their side right through from casting to delivery on site.
BST then submitted that if a vertical mould were essential and inventive, then Boral’s case must fail because the feature of verticality was only added to the claims without the support of the description, prior to acceptance. Therefore the application must proceed with Edwards as the inventor as he provided “the pith and marrow” of the invention to the others.
I do not agree with this submission. Whilst I agree that the verticality of the baffles is an essential feature as it clearly materially affects the working of the invention, (I will address this issue more closely when dealing with novelty) I do not agree that support is lacking in the description. I note that both provisional applications have drawings of the preferred method of the invention only showing baffles in a vertical arrangement, be it in the mould box, or lifted for spraying. Whilst the accompanying description of the present application does not explicitly use the words vertical or upright (or flat or horizontal for that matter), it is clear from the language of the specification as a whole that invention is to be executed in a vertical orientation. I have addressed this specific issue in more detail in my discussion of Section 40 matters below.
I also do not believe that Edwards provided the “pith and marrow” of the invention. BST submit this to be the inventive concept of applying a coating material to the inside of at least two baffles of a mould prior to casting and allowing the core material and coating material to set simultaneously. In reviewing the Edwards exhibits, it is clear that if one excludes the verticality (which is conceded as a contribution by Moses) there is no evidence of a method of forming a panel where the flowable settable coating and the core material set simultaneously. In the horizontal environment, the only clear disclosure of Edward’s work relates to the screeding and stiffening of concrete prior to applying the second coating identified earlier in exhibits CE-3, CE-4.

Consequently, in weighing up the evidence at hand, I am not convinced that the invention was obtained from Mr Edwards as I am not persuaded that he was in possession of the knowledge required to perform the invention, as was effectively admitted in his declaration.
As a result I do not believe that Mr Edwards can be considered to be an inventor under sub-section 15(1)(a). In my opinion, Paul Russell Moses, Robert Lawrence Munn and Robert Story were the actual inventors. Therefore BST has not established that it is the nominated person entitled to the grant of a patent in this instance. Boral remains the nominated person entitled to the grant of a patent for the present invention.
NOVELTY
It is well established that the basic test for novelty is the " reverse infringement test" as stated by Aikin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It is equally well established that infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
Essential Features
In construing the independent claims, starting with claim 1, BST contend that the feature of “verticality” (I am assuming this is referring to the term “generally upright” used in the claims) is an inessential feature of the invention which does not materially affect the invention as there is an absence in the specification of any discussion on the problems associated with horizontal casting, and a similar absence of any use of the word vertical in the specification.
BST also submitted that it is well established that not every feature in a claim needs to be essential (see Catnic Components v Hill and Smith Ltd, (1982) RPC 183). BST added that this idea was reaffirmed in Gamma-Metrics and Mineral Control Instrumentation Pty Ltd, 48 IPR 21 December 1999:
“…the presence of a feature in a claim is not conclusive proof that it is essential. If it is evident from a reading of the specification, either explicitly or by implication, that a particular feature is essential to the way the invention works, then the feature is essential. Conversely if it is readily apparent that a feature would not materially affect the way the invention works, then the feature will be considered unless it is clear that from a reading of the claim that the draftsman intended that an inessential feature is to be treated as essential”.
I note that whilst the specification appears silent as to the use of the word vertical (as it does horizontal), if one were to read the claim and be unsure of the appropriate construction, and subsequently referred to the description for guidance, the only embodiments shown in the Figures with an accompanying description relate to baffles arranged in a vertical manner. It is evident from reading the drawings and description, that the vertical feature is essential to the way the invention works, admittedly by implication (as per Gamma-Metrics).
Specifically, the invention requires that at least two baffles (after being coated) are to be placed in the mould box (having four walls), after which the spaces between the successive baffles are filled with core material and both materials allowed to set simultaneously thereafter. I cannot see how one can place several horizontal baffles (eg more than 2) in a box (with walls) and subsequently fill the spaces between successive baffles. Either spacers would need to be inserted between the horizontal baffles and the mould box walls removed to allow filling with core material, or the baffles would need to be placed in the mould box one at a time with the core material directly applied to the baffles as they are successively placed in the box. Neither such arrangement is claimed or described in the present specification, nor any variation thereof. Therefore it is clear to me that the vertical aspect of the invention is essential as it does materially affect the working of the invention. Again this is evident when one reads the claim as a whole rather than focussing on a specific feature of the claim.
No specific submissions were made in respect of the other independent claim, claim 17, by either party. However for reasons similar to those above I believe all of the features of this claim to also be essential.
AU Patent application 78203/75
At the hearing BST identified Australian Patent application 78203/75 as the most relevant art without providing any further submissions regarding its, or any other document’s relevance.
This document is recorded as being published on 19 August 1976, which is before the priority date of the present application. This fact was not disputed.
In general terms, the citation, in its summary of the invention (at page 1 line 11 to page 3 line 8 thereof), describes a method and apparatus for forming a composite sheet or board. The surfaces of two mould sections are first horizontally disposed and coated with a layer of flowable settable material. When the material has partially set, the surfaces are then vertically disposed to form a mould cavity. The space between the vertically disposed surfaces is filled with further flowable settable material. The composite sheet or board is formed when all the flowable settable material has set. The board may be a reinforced gypsum panel which are routinely used in the building industry.
However, reading the document further reveals that there is no mould box per se into which the baffles are placed. In the further embodiments, the citation discloses 3 spaced apart parallel supports provided on the rear face of each planar base, (the base has a surface which receives the flowable settable coating material and as such is considered the equivalent of a baffle). Given that the supports form part of each base (baffle), there is no teaching of “placing the baffles in a substantially parallel, generally upright spaced interrelationship within a mould box or supporting flame” (my emphasis) as required by claim 1. Consequently I do not believe that all of the essential features are present in the cited document.
Therefore I can only conclude that claim 1 is novel over Australian Patent application 78203/75. Clearly therefore claims 2-16, being dependent on claim 1 are also novel.
I further believe that claims 17-20 are novel when compared to the citation. Claim 17 is an independent claim to a plant for forming building panels. The citation does not describe any plant means (as opposed to, for example, human means) for applying coating material, placing baffles, filling the space between baffles, and conveying baffles for cleaning, coating and arranging the baffles, as per claim 17. Further, claims 18-20 are dependent on claim 17 . Hence the citation does not teach all essential features of any of claims 17-20.
INVENTIVE STEP
BST allege the claimed invention in its entirety lacks an inventive step and in particular submitted that:
“…Boral have outlined a standard production process…The precast concrete industry as a matter of course uses loose baffles to assemble boxes, into which concrete is poured to make panels. This is very widely used. Boral simply took this known practice and added a step which was to spray the polymer concrete to the surface of the loose baffles then assemble the box and fill with concrete. This is simply a combination of known process steps.”
I note that the invention of claim 1 is of a lot narrower scope than the generalisation made above; I also note that the claim makes no mention of spraying a polymer onto the baffles.
Be that as it may, in determining a lack of inventive step for a combination of process steps the combination claimed must be considered as a whole. It is insufficient to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge. One must also establish that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem:
“…In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at page 293.
I do not believe BST has presented any evidence of substance to suggest that the combination as claimed, out of all the possibilities, was an obvious one. As mentioned earlier, the exhibits provided by Edwards do not clearly establish that all of the individual features themselves are well known (e.g applying settable coating material such as polymer concrete to respective surfaces of multiple baffles, allowing core material and a coating material to set simultaneously), let alone the entire combination as set out in the claim being an obvious one. Nor did it appear an obvious combination to Mr Edwards himself (whom I consider to be a person skilled in the art) as he admitted in his declaration at [19] and [20] of his evidence in reply set out earlier.
BST also submitted that the claims lack an inventive step as Edwards contributed all of the features of the claimed invention with the exception of using a vertical mould, which is deemed inessential and considered to constitute no more than a mere workshop improvement (as per Werner RD & Co v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679).
Again, I do not believe there is clear and unequivocal indication that Edwards contributed all of the features of the claim, barring the vertical mould. The exhibits provided show that Edwards was working in a horizontal environment where screeding of a coating material and subsequent screeding of a core material was required before applying a second coating layer for a second baffle, or they teach Edwards working in a vertical environment where the only material applied to a baffle was a mould release agent, not a polymer type coating. Even if these features of the claims were established as well known features (and contributed by Edwards), in my opinion the use of a vertical mould is more than a mere workshop improvement and is in fact essential (as indicated earlier). If this feature were inessential, to my mind moving from a horizontal environment to a vertical one is more than a workshop improvement involving no inventive quality, as suddenly there is the effect of gravity on the coating and core materials to consider, which has its own problems.
Therefore in relation to this ground, I do not believe the opponent has established its case for either of the arguments it submitted and I find the invention as presently claimed to contain an inventive step.
SECTION 40
BST submitted that the present specification does not comply with section 40 by arguing that:
“… it fails to describe the alleged invention fully, and include details of the best method of performing the invention; the feature of vertically is said in the Boral declarations to be critical, it was never mentioned prior to amendment, it was only introduced to the statement of invention when amending the claims,...it cannot be said to be fairly based on the specification.
Further there is not a single example in the opposed application of a vertical panel. As can be seen in the Edwards reports, product formulation and process conditions are critical in order to achieve success. We submit a person skilled in the art would not on the basis of the Boral specification itself, be able to determine the appropriate conditions for casting, as the opposed specification only gives generic formulation details, and is wholly silent in relation to process conditions.”
In respect of the feature of verticality, I do not agree with BST’s submission. Whilst the words “vertical” or “upright” may not appear in the specification as originally filed, it is very clear from the specification as a whole that the invention is to include baffles held in a mould box in an upright orientation. By way of example, Figure 4, Figures 5, 5A, and Figure 6 show a plurality of baffles in generally upright spaced inter-relationships, and are described accordingly as depicting a schematic plan, elevation, or exploded view of a mould box with said baffles in place. Given that there is a clear disclosure of upright baffles throughout the description and no disclosure whatsoever, of baffles being oriented in a way other than vertical when forming a panel, I believe the claims are fairly based, satisfying sub-section 40(3).
Similarly in terms of best method of performance, the only methods described and illustrated show baffles vertically forming panels with no other alternative. Hence I believe the requirements of sub-section 40(2) have also been met.
In relation to BST’s sufficiency argument, there is simply no evidence to support the assertion that, based on the Boral specification, a person skilled in the art would not be able to perform the invention described successfully. BST did not offer any specific area in which they felt the specification was insufficient, and neither of BST’s declarants identified any shortfall in the specification, nor stated they had any problem understanding the matter described. I do not believe BST has discharged its onus of proof, and therefore I believe the opposed specification to comply with the sufficiency requirements of section 40.
CONCLUSION
In relation to the filing of further evidence I am not reasonably satisfied that the serving of further evidence is appropriate in all the circumstances. In particular, prima facie, I do not believe the nature and significance of the further evidence sought to be adduced by the opponent will lead to a more correct, just, or expeditious finding. Hence there is no strong public interest in allowing this application for further evidence. Nor do the interests of the applicant lie in having a further delay, or in incurring costs to address evidence which appears to be of little significance. Consequently, it is these two factors which, on balance, lead me to conclude the serving of further evidence is not appropriate in all of the circumstances.
The opponent has not clearly established that Edwards was the inventor of the present invention. In particular, given that Mr Edwards admitted that he had not thought of applying a flowable settable coating material to the inside surface of the baffles of a vertical panel casting apparatus prior to casting a lightweight panel, and that there is no evidence of Mr Edwards’ work involving the simultaneous setting of coating and core materials in vertically oriented baffles in a mould box, I cannot clearly identify what contribution Mr Edwards actually made to the invention to be considered an inventor.
The present claims are considered novel over the document identified by BST as the most relevant prior art. The essential step of placing the baffles in a substantially parallel, generally upright position is not considered to be disclosed in this document.
In terms of inventive step, the opponent has not discharged its onus in clearly establishing that the invention as claimed is merely an obvious combination of well known process steps used in the industry, or that the claim was a known combination of steps including a mere workshop improvement which was obvious, thereby rendering the defined claims as clearly invalid. As such I find the present claims to have an inventive step over the prior art.
I consider the claims to satisfy the requirements of section 40. In particular I believe the claims to be fairly based on the matter described in relation to the issue of a vertical or upright orientation for the baffles. Despite not specifically using the words “vertical” or “upright” in the original specification as filed there is ample disclosure in the figures when read in conjunction with the description that the process is directed to a vertical orientation of baffles in mould boxes. As this is the only orientation exemplified with no alternative arrangements being depicted or described at all, it would be clear to a person skilled in the art that baffles are to be placed in an upright orientation in a mould box. In relation to the remaining section 40 issues, I do not believe BST has established its case.
COSTS
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. It is customary for costs to follow the event unless there are any relevant considerations to be made in exercising the discretion of awarding such costs.
Neither party made any specific submission for relevant considerations in respect of costs.
As BST Holdings Pty Limited was not successful in its opposition to patent application 747361, I award cost against them in accordance with customary practice.
Lars Koch
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney.
Patent attorneys for the opponent : Shelston IP Lawyers, Sydney.