Braas & Co GmbH v Humes Ltd

[1993] APO 10

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 563861 in the name of BRAAS & CO GMBH

Title:   Process and Apparatus for Producing Concrete Roof Tiles

Action: Section 59 opposition by HUMES LIMITED

Decision:   Issued            .  Claims do not comply with section 40.  Claims novel and non-obvious.  Applicant given opportunity to amend.

Whether certain evidence in reply to further evidence admissible; consequences of accidental prior use; effect of admitted inaccuracies upon the remainder of the evidence; weight to be given to the evidence on obviousness of "over qualified" experts.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 563861 by BRAAS & CO GMBH and opposition thereto by HUMES LIMITED under Section 59 of the Patents Act 1952

BACKGROUND

Patent application 563861 by Braas & Co GmbH (Braas) was advertised accepted on 23 July 1987. On 16 October 1987 Humes Limited (Humes) lodged a notice of opposition to the application under section 59(1) of the Patents Act 1952. Evidence in support was served on 13 December 1988, followed by evidence in answer on 12 January 1990 and evidence in reply on 15 August 1990. In each instance several extensions of time were required.

A considerable period of time then elapsed without the matter being heard, whereupon on 27 November 1991 Humes lodged an application under regulation 59 for special leave to adduce further evidence.  Braas objected, and the matter was heard on 11 February 1992 and was decided in favour of Humes.  The extra evidence consists of two statutory declarations which were presented at the hearing and two others which were served on 19 June 1992.  Braas served its evidence in reply to that evidence on 17 July 1992.

A hearing to determine the substantive opposition was held in Canberra on 23 September 1992.  Braas was represented by Mr Greg Turner, patent attorney of the firm of Spruson & Ferguson, while Humes was represented by Mr Geoff Pryor, patent attorney of the firm of Davies Collison Cave.

As the application was both filed and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable.

THE SPECIFICATION

The specification states that the invention relates to a process for producing concrete roof tiles in an extrusion process, an apparatus for carrying out this process and concrete roof tiles obtained by the process.  A process and apparatus is described whereby by various cutting, shaping and compacting operations a continuous layer of fresh concrete extrudate is converted into so-called "roof-tile mouldings" which may then be dried and cured to form finished tiles.

According to the specification the invention is a development of a process and apparatus known from German Patent specification 2,252,047.  It will be convenient to refer to this process and apparatus by its inventor's name - Matthews - since it eventuates that this German Patent has equivalents in the United Kingdom (the originating application), the United States and Australia, all of which are referred to in the evidence on this matter.  The German Patent specification was published in Australia on 24 August 1973, and this was the earliest publication date in Australia of the subject matter of that specification.

The Matthews apparatus firstly by means of shaping rollers shapes the transverse cross-section of the extrudate to the desired profile for the resultant tile.  The shaped ribbon of concrete is then cut into individual tile forming lengths by a cutting knife.  Finally, another knife trims each tile length by severing and removing unwanted material from its leading edge.  The knives are moved in unison with the extrudate by means of a reciprocating mechanism in order to cut the concrete as cleanly as possible.  This much was the prior art to the Matthews specification.  The Matthews invention addresses the problem of more closely matching the sinusoidally varying velocity in the direction of movement of the extrudate of the knives with the constant velocity of the extrudate.

The Matthews specification makes no reference to there being any compacting of the concrete as a result of the process.  Indeed, so far as the cutting of the concrete is concerned the inventive concept has the purpose of avoiding compaction as far as possible.  However, there does not seem any doubt that one of the effects of the shaping rollers of the Matthews apparatus is to compact the material upon which they operate.  Although the present apparatus differs slightly from the Matthews apparatus in this respect insofar as it employs a following slipper in conjunction with the shaping roller so as to profile and compact the fresh concrete extrudate, this difference has no significance in this matter since the evidence indicates that such roller and slipper mechanisms are well known, and neither party sought to make an issue of it.

According to the present specification, certain benefits result from compaction in concrete tiles.  Apart from the obvious aesthetic considerations, an uncompacted surface of a tile will have greater roughness and porosity than it would have if it were compacted, and this allows leaching of salts and promotes efflorescence.  Compaction also gives greater resistance to weathering and higher strength.  In view of this, a shortcoming of the Matthews apparatus is that the cutting action of the knives gives rise to a porous surface at the front edge of the finished tile.  (Of course, it also creates a porous surface at the rear edge, but this is of no consequence since when the tile is in use this edge is not exposed to the weather.)

The solution proposed by the present invention is that instead of the trimming step being accomplished by a cut-and-remove operation (as per Matthews), it is carried out by another compaction step performed on the front (i.e., leading) edge of each tile forming length.

The specification concludes with twenty-five claims, as follows:

"1. Process for producing concrete roof tiles in an extrusion process in which a continuous layer of fresh concrete is deposited on pallets supplied in a continuous row to a depositing apparatus and is subsequently compacted by means of a shaping roller and slipper and, if appropriate, profiled, and then the compacted layer of fresh concrete is cut at a cutting station into roof-tile mouldings of equal length with a front edge and a rear edge, and the front edge is trimmed, characterised in that a rounding or bevel starting from the lower cut edge adjacent to the pallet and extending up to the top side of the roof-tile mouldings is produced on the front edge as result of a compacting of material.

2.  Process according to Claim 1, characterised in that the compacting of material is carried out over the entire front end face of the roof-tile mouldings and closes or smooths pores and/or irregularities formed during cutting.

3.  Process according to Claim 1 or 2, characterised in that the compacting of material is carried out over an edge zone at least 2 to 8 mm wide adjoining the end face on the front edge of the roof-tile mouldings.

4.Process according to one of Claims 1 to 3, characterised in that the compacting of material takes place in steps.

5.  Process according to Claim 4, characterised in that, during the cutting of the compacted layer of fresh concrete, a front edge portion is further precompacted, and the rounding or bevel is produced on the front edge, during trimming, as result of a further compacting of material.

6.  Process according to Claim 5, characterised in that, for precompacting, fresh concrete is pressed downwards onto the pallet from the top side of the layer of fresh concrete.

7.  Process according to Claim 6, characterised in that precompacting is carried out together with the cutting of the layer of fresh concrete.

8.  Process according to Claim 7, characterised in that, during the cutting of the layer of fresh concrete, a step-shaped indentation is made in the edge portion adjacent to the cut edge.

9.  Process according to one of Claims 1 to 8, characterised in that a rounding having a continuously changing radius of curvature is produced on the front edge of the roof-tile mouldings as result of a compacting of material.

10. Process according to Claim 9, characterised in that a rounding, the curvature of which corresponds to a segment of a parabola, is produced.

11. Apparatus for producing concrete roof tiles by the process according to one of Claims 1 to 10, with a depositing apparatus which can be supplied with fresh concrete, to form a continuous layer of fresh concrete on a continuous row of displaceable pallets driven by a conveyor, also with a shaping roller and a slipper for compacting and, if appropriate, profiling the layer of fresh concrete running through under them on the pallets and furthermore with a cutting station, in which a carriage is attached so as to be moveable to and fro in the direction of the path of movement of the layer of fresh concrete adapted to the advance of the pallets there being attached to the carriage a cutting knife aligned transversely relative to the path of movement of the layer of fresh concrete and a trimming tool which can be moved periodically into and out of the layer of fresh concrete, in order to form from the continuous compacted layer of fresh concrete individual roof-tile mouldings of equal length with a rear edge and a trimmed front edge portion, characterised in that the trimming tool is an indentation tool which matches the profile of the layer of fresh concrete and which, during its movement penetrating into the layer of fresh concrete, compacts the front edge portion produced in the preceding work cycle over the entire cross-section of the latter.

12. Apparatus according to Claim 11, characterised in that the indentation tool has a lower edge directed onto the layer of fresh concrete and, adjacent to the front edge portion, a generated surface curved or inclined in such a way that the vertical distance between this generated surface and a plane aligned perpendicularly relative to the path of movement of the layer of fresh concrete and intersecting this lower edge increases continuously with an increasing distance from the lower edge.

13.Apparatus according to Claim 12, characterised in that the generated surface of the indentation tool is plane.

14.Apparatus according to Claim 12, characterised in that the generated surface of the indentation tool is curved.

15. Apparatus according to Claim 14, characterised in that the curvature of the generated surface of the indentation tool corresponds to a segment of a parabola.

16. Apparatus according to one of Claims 11 to 15, characterised in that a precompacting tool is attached to the side of the cutting knife facing away from the indentation tool.

17. Apparatus according to Claim 16, characterised in that the precompacting tool is a strip which matches the profile of the compacted layer of fresh concrete and is arranged set back from the cutting edge of the cutting knife and which, during the cutting of the layer of fresh concrete, compresses in the form of a step the adjacent front edge portion.

18. Apparatus according to Claim 17, characterised in that, during the cutting of the layer of fresh concrete, the precompacting tool compresses the adjacent front edge portion to approximately half its cross-sectional height.

19. Apparatus according to one of Claims 16 to 18, characterised in that the precompacting tool has a width b of approximately 2 to 8 mm, especially a width of approximately 5 mm.

20. Apparatus according to one of Claims 16 to 19, characterised in that the precompacting tool is made in one piece with the cutting knife.

21. Apparatus according to one of Claims 11 to 20, characterised in that the indentation tool and/or the precompacting tool consist of a material not adhering to the layer of fresh concrete.

22. Apparatus according to one of Claims 11 to 21, characterised in that the indentation tool consists of wear-resistant plastic.

23. Apparatus according to one of Claims 11 to 22, characterised in that the indentation tool and/or the precompacting tool are each attached, so as to be vertically displaceable towards the layer of fresh concrete in the direction of movement, to a tool-holder which itself is fastened to the carriage via a piston/cylinder arrangement.

24. Roof-tile moulding produced by the process according to one of Claims 1 to 10.

25. Concrete roof tile produced from a roof-tile moulding according to Claim 24 by means of a conventional drying and curing operation."

The claims are all entitled to a priority date of 26 June 1985.

GROUNDS OF OPPOSITION

While the opponent's notice of opposition lists seven grounds corresponding to paragraphs (c) to (i) of sub-section 59(1) of the 1952 Act, only the grounds of prior publication, lack of novelty, obviousness and non-compliance with section 40 were the subject of evidence and submissions at the hearing.

EVIDENCE

The substantive evidence in support is a single statutory declaration.  The declarant, Thomas William Whitelaw has had extensive experience in Australia in the field of manufacturing concrete roofing tiles, and machinery therefor.  Mr Whitelaw's evidence is essentially as follows:

.an allegation of prior use which took place in Ballarat, Victoria, in the period 1965-67.  This evidence has been emasculated by later evidence from his own side.

.exhibit TWW-2, which is a tile arising out of the alleged prior use.  It has a bevelled front edge, but this does not appear to exhibit the compaction it is purported to by Mr Whitelaw.

.exhibit TWW-4, a tile with a rounded nose similar to the corresponding tile in the Braas specification.  Rather than being produced by the extrusion process of the present invention, this tile was made in a mould by pressing, this being a so-called "batch process".

.International Application for a patent WO 86/03448, Mr Whitelaw being the inventor.  Since this document was published after the priority date of the present claims it is, for all practical purposes, irrelevant.

.the Australian version of the Matthews patent specification, No 462,479.

.Australian patent application specification No 19969/76, published 1 June 1978.  This discloses a reciprocating mechanism which is comparable with that of the Matthews apparatus and the present apparatus and which is described as having utility in the same field as the Matthews apparatus and the present apparatus.  Since the present invention does not derive its subject matter from its reciprocating

mechanism, application 19969/76 is of no substantial relevance to the matter at hand.

.comments by Mr Whitelaw on the validity of various claims against the grounds of opposition upon which the opponent is relying.

The evidence in answer comprises a single statutory declaration by Daniel O'Donnell.  Mr O'Donnell is a qualified engineer and worked in the concrete roof tile business from 1967 to 1989.  He apparently has first hand knowledge of the Ballarat plant, and disputes key aspects of Mr Whitelaw's evidence in relation to that.  The remainder of Mr O'Donnell's evidence is a rebuttal of the comments made by Mr Whitelaw on the validity of the claims.

The evidence in reply is another declaration by Mr Whitelaw.  It does not add anything significantly new in the way of evidence.

Subsequently, the opponent adduced further evidence consisting of the following:

.a statutory declaration by Mr Pryor made on 7 February 1992 and served at the hearing on the special leave

.a statutory declaration by Bruce Robert Crichton made on 7 February 1992 and served at the hearing

.another declaration by Mr Pryor served on 19 June 1992

.a statutory declaration by Godfrey Michael Buswell served on 19 June 1992.

Mr Pryor's first declaration has two objectives:  supporting the granting of the special leave to adduce further evidence and constituting a part of that substantive evidence.  It is noteworthy in three aspects:

.it contains the suggestion in the form of hearsay evidence that Mr Whitelaw's evidence on prior use is inaccurate

.exhibit GCP-2 consisting of copies of the documents cited during prosecution of the corresponding United States application

.an exhibit consisting of the file history of the corresponding United States application.

The second of Mr Pryor's declarations establishes the publication dates in Australia of certain of the documents contained in exhibit GCP-2.

According to Mr Crichton's declaration, he has had extensive experience in the design and construction of continuous tile making machinery.  His declaration exhibits a number of microphotographs of a concrete tile manufactured in the 1950's at a tile manufacturing plant in Newcastle NSW.  According to Mr Crichton, these tiles are "handmade", a process which is significantly different to the continuous process of the present invention.  Nevertheless, these tiles do have a compacted rounded nose, and in Mr Crichton's view it would be obvious to use a shaping tool which has previously been used in a manual process in a continuous process of the type involved in the present invention.

Mr Buswell's declaration establishes that he has been involved in the concrete roof tile industry since 1979 and is an expert in relation to the type of machine in issue.  It contains the following elements:

.comments backing up the assertions of Mr Crichton made in his declaration.

.an allegation of prior use at a tile making plant in Dandenong, Victoria.  This plant used a Matthews apparatus.  Mr Buswell declares that when this machinery got out of adjustment from time to time, it produced compaction at the front edge of tiles that it produced.

.an analysis of some of the prior art from Mr Pryor's exhibit GCP-2.  Although these are from outside the concrete roof-tile manufacturing field, Mr Buswell attempts to show obviousness by seeking to draw an analogy with other instances where technology from other fields have been utilized in the concrete tile making area.

.videotaped evidence of cement tiles made by a pressed moulding process and having rounding at their nose.

The evidence in reply to the further evidence consists of statutory declarations by Mr Turner, Mr O'Donnell and Leslie Paul Spurrier.  Mr Turner's declaration is a listing of patent applications in which Mr Whitelaw was named as inventor.

The declarations by Mr Spurrier, who has extensive experience dating back to 1955 in the design of tiles and machines for the manufacture of tiles, and Mr O'Donnell are only of mentionable significance in that they provide countervailing evidence on obviousness to that of Messrs Whitelaw, Buswell and Crichton.

SUBMISSIONS

The submissions which were made at the hearing and which bear directly on the grounds of opposition will be addressed, where appropriate, in the decision to follow.  However, there are several preliminary matters warranting separate treatment.

Mr Pryor drew my attention to the fact that the statutory declaration by him in support of the application for special leave to adduce further evidence is to comprise some of that evidence.  That is supported by the documentation on file and has the agreement of the applicant and so needs no further consideration.

Mr Pryor questioned the admissibility of certain aspects of the applicant's evidence in reply.  This was said to not be in reply to the opponent's further evidence.  The evidence objected to is:

.evidence that asserts in general terms the novelty and non-obviousness of the present invention and which re-presents the applicant's case

.evidence which questions aspects of Mr Whitelaw's evidence

.Mr Turner's evidence of Mr Whitelaw's inventive activity.

In response, Mr Turner quoted from Mr Pryor's declaration of 7 February 1992:

"Whilst Mr Crichton was in general agreement with substantially the whole of Mr Whitelaw's evidence ...... ."

In Mr Turner's view, this amounted to the opponent putting forward as further evidence expert evidence corroborating the evidence of Mr Whitelaw and in relation to which the applicant had a right to respond.  As Mr Whitelaw's evidence had been the only substantive evidence the opponent had brought forward until it had produced its further evidence, this, according to Mr Turner, allowed the applicant in its evidence in reply to respond to the whole case against it.

I think that, strictly speaking, Mr Turner is correct in this.  While the opponent may not have wished to expose Mr Whitelaw's evidence to any more scrutiny than had already been the case (including that by the opponent), that evidence has clearly been made an issue of by the further evidence.  In my view, that is sufficient justification to admit the evidence objected to by the opponent.  Moreover there are a number of other considerations which have been rendered peripheral by the approach I have taken in deciding this issue but which nevertheless support that approach.  They are

.the evidence in question does not involve any new direction, which is consistent with the fact that the evidence comes from the applicant who is generally constrained by having to retaliate to attacks by the opponent.  This does not mean that the evidence is not potentially persuasive, but rather, in Messrs O'Donnell's and Buswell's case, takes a line which the applicant was bound to take if it were available and which it has already done so in its evidence in answer.  As for Mr Turner's evidence, clause 13 of Mr Whitelaw's declaration states:

"I am the inventor in respect of developments for which patent protection has been sought.  In addition I am the author of many registered designs in relation to tile clips."

In light of this Mr Turner's evidence can hardly be seen as a surprising revelation.

.there does not appear to be any significant basis for the opponent's complaints that it had had no opportunity to reply to the evidence to which it objects.  The factual content of that evidence seems negligible.  As regards any evidence involving opinion on questions of fact or law, one or other party must have the final say, and in this case the opponent has forfeited its final say to the applicant by having served further evidence.

.in adducing its further evidence the opponent seems to have been given considerable latitude in two aspects:

.in allowing the further evidence to be adduced the hearing officer placed considerable emphasis on "the public interest" aspect of the matter.  Public interest considerations are also relevant to evidence produced by the applicant.

.a substantial portion of the further evidence concerned the allegation of prior use at the Dandenong plant.  No reference was made to this in the application for special leave.  The use of the pretext that the Matthews patent was one of the "References Cited" of the corresponding United States Patent application to revisit the Matthews specification seems dubious in view of the fact that the existence of the Matthew's specification and of the actual device in operation has been known from the outset.

It follows, then, that in deciding this matter I have determined that I should have regard to the applicant's evidence in its entirety.

The final preliminary matter concerned what effect apparent inaccuracies in Mr Whitelaw's evidence should have upon the remainder of his evidence.  Mr Turner submitted that a shadow has been cast over the whole of Mr Whitelaw's evidence, while Mr Pryor argued that this should not be so, as the opponent had only acted "out of an excess of caution and prudence".

The basic point made by Mr Turner is clearly a valid one.  If doubt is cast over the accuracy of certain aspects of evidence from a particular source, this reflects on that evidence as a whole.  However, if the doubt is of a low level, then its impact upon the evidence as a whole will be limited.  This seems to be the case here.  The evidence appears to indicate that none of the applicant's declarants were at the right place at the right time to be able to give a first-hand account of the prior use alleged by Mr Whitelaw.  And although some of the opponent's evidence itself indicates that there are inaccuracies in Mr Whitelaw's evidence, this is in the form of hearsay.  At the hearing of the present matter Mr Pryor sought to distance himself from any imputation that Mr Whitelaw's evidence of prior use is inaccurate.  Rather, he suggested that the problem with Mr Whitelaw's evidence is that it is uncorroborated.  This would seem a more plausible explanation as to why Mr Whitelaw's evidence of prior use was discarded in the course of seeking leave to adduce further evidence, rather than it being out of any concern over the actual accuracy of Mr Whitelaw's evidence.

Mr Turner did not indicate any specific aspect of Mr Whitelaw's evidence which "has a shadow cast over it", so I accept his point in the generality in which it was made.  The extent to which I allow for it will be given effect to in any finding I make where Mr Whitelaw's evidence is a factor.

DECISION

Section 40
At the hearing Mr Pryor addressed a number of deficiencies he saw in the specification and claims.  In relation to claim 1 he submitted that

.it is too broad because it seems to include within its scope the situation where the "compacting of material" referred to at the end of the claim takes place simultaneously with the cutting.

.it is too broad because while the specification describes a three-stage compaction process claim 1 is not limited in the same way.

.the applicant in its evidence has sought to distinguish its claimed invention from the prior art by reference to expressions like "a greater degree of compaction at the nose than in the main body of the tile", but this characterization is not present in the claims and in fact is nowhere described in the specification as a whole.

Mr Turner's response to the first point was that it is irrelevant whether the bevelled or rounding is formed simultaneously with or subsequently to the cutting - the essential feature is that it be formed by compaction.  Of the second point, Mr Turner said it is not necessary to limit the claims to the preferred embodiment and it is only necessary that the claims be fairly based on the described matter.  Claim 1 defined a two-compaction process which accorded with the described invention.  In relation to Mr Pryor's third point Mr Turner submitted that references in the description to the "quality" of the tiles which were produced did not equate to their degree of compaction.

As regards the first point, the specification to some extent supports both Mr Pryor's and Mr Turner's interpretation of the invention as described.  It would seem that the compacting of the front edge must always trail the cutting that is producing that front edge.  It would seem a nonsense to suggest that an operation can be performed on something which does not yet exist.  Even if it were practical for the cutting and compacting to proceed on a common front, the specification provides no support for this.  On the other hand, the cutting and compacting processes do not occur instantaneously, but rather over a period of time, and hence if there is an overlap between these periods there will in a sense be simultaneity between the cutting and compacting operations.

It is somewhat difficult from the wording of claim 1 to determine if it conforms to the invention as described.  The relevant portion of claim 1 reads:

"a rounding or bevel starting from the lower cut edge adjacent to the pallet and extending up to the top side of the roof tile mouldings is produced on the front edge as a result of a compacting of material."

[It may be of interest to mention in passing that if the syntax or phraseology employed in the claims seems slightly awkward, it may be due to their being unaltered from the claims of the translation of the basic German specification.]

The difficulty with this passage is that it is susceptible to an interpretation that it does not place in time when the compaction takes place.  Indeed, as the opponent has at one stage pointed out, it is conceivable that the "compaction of material" could be taken to refer to the compaction produced by the roller and slipper mechanism.

Nevertheless, I have concluded that on a proper construction claim 1 does define a second compaction stage which is effected on the front edge of the roof tile moulding and that the claim is fairly based in this aspect.  In my view this construction is the one which would have been arrived at by an addressee of the specification who was "willing and wishing" to understand it (Philpot v Hanbury 2 RPC 33).

Turning now to Mr Pryor's second point, there does not seem to be anything in this.  There is no suggestion in the specification that the third compacting step - the "precompacting" interposed between the compacting by the roller and slipper mechanism and the final compacting - is anything other than a preferred feature of the invention.  For example, the first reference to this is as "an advantageous embodiment", and the remainder of the specification is in the same vein.  Mr Pryor inferred from the inclusion of this feature in the United States version of the claims that this indicated it should be in the Australian claims.  Although it is a well established principle that what takes place in other jurisdictions can have some weight in Australia, nevertheless I am required to make my own determination of any issue (N.V. Philips' Gloeilampenfabrieken's application (1966) AOJP 2342 at 2395).  Moreover, it appears from the file history of the United States Patent that the examiner had never had to consider a claim even resembling claim 1 in suit.  Even when it was open to the examiner to take the line that the pre-compaction was, to use Australian jargon, an essential feature, this was not done.  Therefore I see no compelling reason arising out of the United States situation to hold that the precompaction stage is an essential feature of the invention.

Mr Pryor also drew the inference that precompaction was an essential feature from the statement by one of the applicant's declarants that one of the opponent's citations did not disclose precompaction.  If the declarant really was implying that, he was running against the tide of all the other evidence.  But it seems that the reference to "precompaction" was actually a careless reference to the compaction produced by the roller and slipper mechanism.  Hence I conclude that claim 1 is fairly based in this aspect.

Mr Pryor's third and final point of submission concerning claim 1 and Section 40 is a little elusive.  If an analysis of the specification by a declarant is not borne out by the specification, then clearly that analysis must be wrong.  Mr Pryor seems to concede that, in respect of the relative degree of compaction of various regions of the tile moulding, there is no disconformity between what is described by the specification and what is claimed.  The claims are silent as to the degree of compaction which results, and the degree of compaction does not figure in the inventive concept as described by the specification.  The inventive concept resides in the number of compacting steps to which the tile moulding is subjected, not the degree of compaction which ensues.  To attempt to describe and define the invention from the latter perspective would seem impractical.  The compaction by the roller and slipper mechanism is performed upon a relatively large surface area compared with the thickness of the material being compacted.  The converse applies at the front edge.  It is very likely that quantitatively distinct compaction will result from each procedure, including the likelihood that the front edge compaction will only be a limited distance into the tile moulding.  Another factor in the degree of compaction at the front edge is that, according to the specification, the cutting operation producing the front edge creates a rough and porous front edge surface.  Hence it would seem that the compacting of the front consists, at least in part, of a form of "re-compacting" of that region of the tile moulding.  Therefore it is conceivable that the final degree of compaction at the front edge of the tile could be less than, equal to or greater than the compaction of the remainder of the tile, depending on the operating parameters employed.  In other words, as a means of delimiting the scope of the invention the degree of compaction would seem next to useless.  The specification conforms to this view in that all it will allow in respect of the relative compaction between the front edge and the remainder of the tile is that they are of "practically the same quality".  I disagree with Mr Pryor's contention that this implicitly means that the specification is describing the degree of compaction at the front edge as less.  I believe it merely reflects the generality the circumstances demand.  In any event, the fact remains that as described by the specification the extent of the resultant compaction is merely incidental to the inventive concept.  Therefore it need not be defined in a claim in order that that claim be fairly based.

I have found that claim 1 does not lack fair basis in the aspects alleged by the opponent.  However there is yet another fair basis issue in relation to claim 1 which was not directly raised by the opponent and in respect of which I consider claim 1 is deficient.  That issue concerns the failure of claim 1 to define the nexus between the step of trimming the front edge and the second compacting step.  This is clearly central to the invention which is described in the specification, in justification of which a single quote from the specification suffices:

"In this respect, starting from an apparatus having the features mentioned above, the manner according to the invention of achieving the object is characterised in that the trimming tool is an indentation tool which matches the profile of the layer of fresh concrete and which, during its movement penetrating into the layer of fresh concrete, compacts the front edge portion produced in the preceding work cycle over the entire cross-section of the latter."

This is the gist of the specification as a whole.

It is of interest to note that my finding in this seems to be consistent with the approach taken in the examination of the corresponding United States application.

It is also of interest to note that an appropriate amendment to overcome this deficiency will probably remove from contention the first of the fair basis issues raised by Mr Pryor at the hearing.

The final matter concerning the compliance of claim 1 with Section 40 is the clarity of the expression "the lower cut edge" in that claim.  Although this expression is not the subject of any evidence and did not attract any submissions at the hearing I am not satisfied that it is sufficiently unambiguous that there is no uncertainty as to what competitors may or may not do.  The difficulty I have with this phrase is that it does not make clear whether the rounding or bevel is defined as extending from the bottom extremity of the front edge, or merely from somewhere at the lower part of the front edge.  The law in this regard is that it is not legitimate to narrow or expand the scope of words in the claim by adding glosses from other parts of the specification (Decor Corp v Dart Industries 13 IPR 358). Even so, I believe that the words in question are still unclear even after reference is had to the description.

Mr Pryor submitted in respect of claim 2 that it is not readily apparent to which of the two compacting stages in claim 1 the compacting defined in claim 2 refers.  With some hesitation I have concluded that claim 2 and subsequent claims do not lack clarity in this regard, as the actual phrase used in these claims is "the compacting of material", which may be identified with the corresponding phrase in claim 1.

Claim 2 is, however, unclear due to no antecedent being provided for the reference to "... front end face".  A similar expression is in claim 3.

Mr Pryor submitted that the term "edge zone" in claim 3 is unclear.  This is undoubtedly so, but I consider that once the antecedent problem with "front end face" is remedied the problem with "edge zone" should be resolved.

Both Mr Whitelaw and Mr Pryor considered claim 7 to be indefinite as to whether its steps were carried out simultaneously or sequentially.  Of the two, I think only the former could apply.  However this feature already appears in claim 5, to which claim 7 is appended.  Therefore I construe the words "together with" in claim 7 to be used in a physical sense rather than a temporal one, and to be clear.

Mr Whitelaw queried the expression "roof tile moulding" in claim 24.  The meaning of this is clear when claim 25 is read.  A roof tile moulding is, it would seem, the shaped concrete prior to drying and curing.  Mr Pryor drew my attention to the "appendancy" of claim 24, which is a claim to a roof tile moulding produced by the process of claims 1 to 10, to those claims, since they are claims to a process for producing a roof tile.  As I have said, it is apparent from the specification that a roof tile moulding is an intermediate stage in the manufacture of a roof tile and therefore there is no inconsistency between what is defined by claim 24 and what is defined by claims 1 to 10.

In summary, I have concluded that claim 1 is not fairly based since it omits to associate the second compacting step with the trimming step and it is not clear in its use of the phrase "the lower cut edge".  I have also concluded that claim 2 is not clear by its reference to "the......front end face".

Accordingly, it is my finding that the ground of opposition of non-compliance with Section 40 of the Act is established.

Prior publication and Novelty

Prior use
In his declaration of 7 February 1992 and at the hearing Mr Pryor stated that the opponent no longer wished to rely on Mr Whitelaw's evidence of prior use.  That removes that evidence from consideration.  Nonetheless, the observation should be made that, even ignoring the other evidence in this matter casting doubt on Mr Whitelaw's evidence, Mr Whitelaw's evidence of prior use would not be enough to justify a finding of prior use, since:

.as Mr Pryor pointed out, Mr Whitelaw's evidence is uncorroborated.  It was stated in Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135

"It is essential that an allegation of prior public use should be strictly proved.  Evidence which is uncorroborated is undoubtedly suspect and should be scrutinized with particular care.  The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."

.in the tile which Mr Whitelaw exhibits as an example of one produced by the alleged prior use (exhibit TWW-2) there does not appear to be any compaction of the front edge, as the front edge surface is rough compared to the remainder of the tile.  (The front edge surface would appear to provide a better indication of whether compaction has taken place at the front edge, rather than the "underside of the nose" test applied by Mr Whitelaw.)

.Mr Whitelaw's evidence of prior use is not particularly detailed.  Such detail as there is in this regard in Mr Whitelaw's first declaration (in the evidence in support) is contradicted in part by his declaration constituting the evidence in reply, thereby creating doubt as to  the reliability of that part of the evidence.

A further allegation of prior use arises from the evidence of Mr Buswell.  This prior use is said to have taken place at a tile making plant in Dandenong, Victoria.  The tile making machinery is stated to be similar in all relevant respects to the Matthews apparatus.  According to Mr Buswell, the machinery could, and did, get out of adjustment and produce compaction at the front edge of the tiles it manufactured.  The applicant did not question the factual basis of this evidence.

I do not consider this to be prior use of the present invention in the patent law sense.  Not only was that use inadvertent, but also the evidence indicates that an effort was made to prevent it occurring.  In contrast, the invention in suit has a feature dedicated to the achievement of what in the prior art was sought to be avoided.

The law on accidental prior use does not appear to be settled.  This applies in particular to the consequences for validity if accidental prior use is proved.  (See Bristol-Myers Co (Johnson's) Application (1975) RPC 127.) In the present case I am not even satisfied that the opponent has actually established a case of accidental prior use. The comments by Lord Hanworth MR in Boyce v Morris Motors Ld 44 RPC 105 seem apposite to the present case:

"But if I understand the facts aright here, it was not merely that this was an accidental or incidental discovery.  It appears to have been a product from an incident treated as of no value, and leading nowhere.  It was apparently not made use of.  It was, so far as the evidence goes, not published in the sense it was communicated to anyone as containing a useful addition to knowledge.  It was a by-product, lost sight of, and made no use of.  If that be so, it appears to me that it is impossible to treat this prior use and so-called publication as of such a nature as to defeat the Plaintiff's Patent."

At the hearing Mr Pryor submitted that this allegation of prior use should be upheld, since to not do so would mean that every time (even retrospectively i.e. before the priority date of the claims) that anyone unintentionally operated the Matthews apparatus in a way which caused compaction at the front edge of a tile, they would be guilty of infringement.  While it is not really within the province of these proceedings to speculate about what might occur infringement-wise, it would seem to be far from certain that the scenario suggested by Mr Pryor could take place.  "Patents for Inventions" (fifth edition) by T A Blanco White states

"3-007   Accidental infringement.  Since the defendant's intentions are not an ingredient in the test for infringement, it is no defence that infringement was accidental.  It has however been said that where a claim calls for a particular result which the defendant's machine only sometimes gives, and it is not clear that the machine was intended to give it, there is no infringement."

AMP v Hellerman (1966) RPC 159 is cited as the authority for this. So far as retrospective "infringement" is concerned it would appear to be manifestly absurd that a patentee would wish to pursue this, in light of the so-called "reverse infringement test" for novelty (Meyers Taylor Pty Ltd v Vicarr Industries Limited (1977) 137 CLR 228. This would also apply where the "infringement" took place after the publication date of the claims but was a continuation of practice that took place before the priority date of the claims.

Paper anticipation
There are a substantial number of prior art documents (Australian and foreign patent specifications) in evidence, but the opponent does not appear to contend that any of these anticipated the present claimed invention.  The closest appears to be the Matthews specification, but this does not disclose the feature of the compaction at the front edge of the tile, and indeed seems to lead away from this, as is illustrated by this quote from that specification:

"At this speed, it has been found that it is possible, in the manner now to be described, to maintain the forward linear speed of the knives substantially constant and equal to the linear speed of the conveyor for a distance of up to two inches of travel of the conveyor.  During this period of time the knives perform their respective cutting and trimming operations and, because of the substantially equal linear speeds of the conveyor and the knives, the knives do not destroy the shape of the tiles."

Mr Buswell in his declaration makes reference to three published documents cited in relation to the corresponding United States patent.  These are

.United States Patent specification No. 3,183,287, a machine for continuous production of particle boards

.United States Patent specification No. 4,351,788, an apparatus for continuously producing extruded ceramic tiles

.Australian Patent specification 565,333, an apparatus for continuously shaping extruded dough products.

His comment in relation to each of these documents was of the form "there is no reason why the teachings of this document could not have been employed in equipment of the Matthews type".  At the hearing Mr Pryor limited his submissions on these documents to the context of obviousness.  I deduce from this that there is no intention on the part of the opponent to allege that any of these three documents anticipates the present claimed invention.  This is understandable, given the remoteness of their subject matter from that of the present invention and their failure to disclose various essential features of the present invention.  It is noteworthy that during the prosecution of the corresponding United States application these prior art disclosures were only ever cited by being "mosaiced" with the Matthews specification.  This approach is, of course, not available under Australian law.

At the hearing Mr Turner outlined the state of the law, as he saw it, on prior publication and novelty (Patents Act 1952) and how it should be applied in the case at hand.  It is not necessary for me to go into what Mr Turner had to say.  In my view, as I have already stated, the closest prior published documentary disclosure to the present invention is the Matthews specification.  The present claimed invention is clearly novel in the light of that disclosure whether one applies the "clear and unmistakeable directions" criterion laid down in Flour Oxidising Co Ltd v Carr & Co Ltd 25 RPC 428, the "reverse infringement" test of Meyers Taylor v Vicarr Industries (supra), the "workshop variations" criterion of the more recent decisions of Nicaro Holdings Pty Ltd v Martin Engineering 91 ALR 513 and R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd 85 ALR 679, or the full force of the test for novelty laid down in Griffin v Isaacs (1942) AOJP 739.

Obviousness

The law on obviousness is laid down in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd 144 CLR 253. To establish obviousness where a combination invention is involved it must be shown that each of the integers that makes up that combination is common general knowledge in the field in question, and that it would have been obvious to a non-inventive skilled worker in the field to not only select the separate integers which make up that combination, but also to select the particular combination of those integers in question. The notion of common general knowledge is said to involve that which is known or used by those in the relevant trade, and 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 must be treated as being used by an individual as a general knowledge.

Here the opponent contends that there are two elements of common general knowledge whose combination involves no inventive step and gives the present claimed invention.  They are:

.the Matthews process and apparatus

.tiles manufactured in a "batch" process and having a rounded or bevelled front edge as a result of a two-stage compaction of the tile.

Mr Pryor submitted that this is a "classic sausage-machine case", by which he was referring to Williams v Nye 7 RPC 62. As evidence that no inventive step was involved, Mr Pryor pointed to the evidence of the opponent's three declarants, a statement made by one of the applicant's declarants and statements in the specification itself that the invention was "simple".

Mr Turner countered that the opponent's evidence on obviousness is worthless because its declarants are over-qualified.  He also drew my attention to the fact that, as I have discussed above, there is a shadow over the accuracy of Mr Whitelaw's evidence.  Lastly, he submitted that evidence gleaned from the specification that the invention is simple is irrelevant and does not detract from the inventive merit.

In support of his contention that the opponent's declarants were disqualified from giving meaningful evidence because they were overqualified, Mr Turner cited several authorities: Valensi v British Radio Corp (1973) RPC 337; Plimpton v Malcomson 3 CLD 531; and Catnic Components v Hill and Smith Ltd (1982) RPC 183. Since these cases concerned interpretation of the specification by the skilled addressee of the specification, they may not be completely relevant to obviousness where the hypothetical person involved in that consideration is the non-inventive skilled worker in the field. Nonetheless, I think that Mr Turner is absolutely correct in his point that the hypothetical skilled worker in the field should be no more than that: this is apparent from Minnesota Mining and Manufacturing v Beiersdorf (supra).  However, I disagree with Mr Turner's view that in the present case this consideration renders the evidence of the opponent's declarants worthless.

Firstly, I do not see Messrs Whitelaw, Crichton and Buswell as being very far removed from the non-inventive skilled worker in the field, if at all.  It seems to me that that worker could not be taken to be, for example, the operator of the equipment in question.  He or she is more likely to be involved in the construction of that equipment, or even its design.  If one looks at the backgrounds of Whitelaw, Crichton and Buswell at the priority date of the claims, they would all seem to fall within the appropriate category of "skilled worker".

Secondly, even if they are removed to some degree from the hypothetical person by virtue of their managerial positions, it would not seem to be to such an extent that would prevent them giving worthwhile evidence as to the background knowledge and ability of that person.  It does not seem to be essential that a declarant be identified exactly with the hypothetical person in order to give evidence of a high probative value about that person.  It is not as if Whitelaw, Crichton and Buswell are, for example, academics who are remote from the coal-face.  In fact, the experience they have gained in attaining their present level of responsibility and their overseeing roles may work to their advantage, although this is not to say that a person who compares more closely with the hypothetical one may not be more persuasive by virtue of that.  These observations apply particularly to common general knowledge, but are also relevant to inventive step.  Obviousness is a question of fact which in proceedings of the present type it is the responsibility of the hearing officer alone to decide.  However, the hearing officer is heavily dependent on expert evidence.  It does not seem inappropriate that the evidence on questions of fact by experts who are "overqualified" to be the skilled workman in the field but who are familiar both with that type of person and the considerations involved in obviousness should be of significant weight in these matters.

Mr Turner referred me to the decision by a delegate of the Commissioner of Patents in Clafton Pty Ltd v Forbes Engineering Holdings Pty Ltd 19 IPR 40, in which the hearing officer appears to have discounted expert evidence on obviousness because he considered the declarants were overqualified. The headnote of that case expresses the law correctly, in my view:

"The evidence of experts on obviousness or inventiveness may be of little weight if they are overqualified and shown to possess inventiveness themselves."

It is the weight to be given to such evidence of "overqualified" persons which is the issue, and this will depend on the facts of the matter.  It is not the case that such evidence is automatically shut out of contention.

Turning now to the details of the allegation of obviousness levelled against the present claims, I am satisfied that the Matthews apparatus and process was common general knowledge at the priority date of the claims.  This is established by the evidence and seems to be conceded by the applicant.  It also seems to be common ground that it is common general knowledge to produce tiles with a compacted rounded or bevelled front edge.  However, the parties differ over whether it was common general knowledge for that compaction to be preceded by a previous compacting of the tile moulding.  The opponent asserted that it was, and to support this provided evidence consisting of several tiles and photographs of tiles.  I am inclined to agree with Mr Turner that this evidence appears to be inconclusive.  The varying degrees of compaction in these tiles could just as easily be attributed to the geometries and dynamics of a single-step compaction process rather than being caused by a two-stage compaction process.  Nonetheless I am prepared to accept the two-stage process as being common general knowledge for the fundamental reason that any skilled worker would know to sub-divide a process where it was expedient to do so, or would know to repeat an action to increase its effect.  Accordingly I accept that the common general knowledge at the priority date of the claims is as the opponent has submitted.

Determination of the ground of obviousness in this matter will therefore require a determination of whether an inventive step was involved in combining the two relevant items of common general knowledge.

Firstly, I agree with Mr Turner that the simplicity of an invention does not normally reflect adversely on it as an invention, and this is the case here.  Furthermore, I do not detect any equivocation by the applicant's declarants as to the non-obviousness of the invention.

It should be apparent from what I have said earlier that I regard the opponent's declarants as being of a background and having experience that entitles their evidence to carry considerable weight.  In the case of Mr Whitelaw, however, there are two other factors which detract significantly from his evidence.  They are:

.doubts over the accuracy of his evidence

.clear evidence of his own inventiveness, combined with his use of the first person in his evidence.  The authorities all agree that the hypothetical skilled workman must not be inventive.

The evidence of Mr Spurrier and Mr O'Donnell seems to be of more or less equal weight to that of Mr Crichton and Mr Buswell, and as regards inventive step is directly contradictory.  Moreover, there are overshadowing the opponent's case the considerations of ex post facto analysis and long felt want.  Aickin J. in Minnesota Mining and Manufacturing v Beiersdorf said of ex post facto analysis that it:

"has been vigorously criticized in many courts".

In my view it is more than a little likely that ex post facto analysis played an influential role in Mr Crichton's and Mr Buswell's evidence on obviousness.  This likelihood increases when account is taken of an apparent long felt want applying to the present invention (see, for example, General Tire and Rubber Co Limited v Firestone Tyre and Rubber Co (1972) RPC 457). Some indication has been given that the present invention is a commercial success. More importantly, the problems created by the failure to compact the front edge of tiles produced by Matthews process seem to have been well recognized.

In light of the foregoing I have concluded that the claimed invention is not obvious.  There is simply insufficient evidence to establish that a non-inventive skilled workman in the field or an "unimaginative man with no inventive capacity" (Technograph Printed Circuits v Mills and Rockley (Electronics) (1972) RPC 346 presumed to be in possession of the common general knowledge in question would have been led to the present invention. The so-called "batch" processes from which compaction-caused rounding or bevelling of the front edge of tiles is known are so distinctly different from the extrusion process and apparatus of the present invention that the bridging of one to the other would seem to require some exercise of the inventive faculty to achieve.

The analogy Mr Pryor drew between the circumstances of the present case and those of Williams v Nye (supra) does not seem to be a valid one.  For the present situation to be properly analogous would require that it at least have been known to intentionally  compact the front edges of tile mouldings subsequent to them being produced by the Matthews process and apparatus.  No such evidence exists.

It is also contended by the opponent that the claimed invention is rendered obvious when the teachings of United States Patent specifications 3183287 and 4351788 and Australian Patent specification 565333 are combined with the Matthews apparatus to arrive at the present invention.  ( I have already touched on this under the heading of "paper anticipation".)  In support of this, Mr Buswell's declaration contained an extensive list of examples where technology from fields other than making concrete tiles have been adapted for the concrete tile making field.

At least three criticisms can be levelled at this reasoning:

.since it has not been established that the patent specifications are common general knowledge, there is no basis in law for combining the respective items of information

.it could be that the previous examples involved invention

.there is insufficient evidence that the present invention would necessarily ensue from the procedure anyway.

Accordingly, I find that there is no basis in this reasoning for a conclusion that the invention is obvious.

CONCLUSION

I have found that the opposition succeeds on the ground of non-compliance with Section 40.  However, I believe that the deficiencies in the complete specification may be readily overcome by amendment.  Consequently I allow Braas & Co GmbH sixty days from the date of this decision to propose amendments to that effect.

COSTS

In accordance with the general principle that costs follow the event, I award costs against Braas & Co GmbH.

E.J. KNOCK
Delegate of the Commissioner of Patents

Patent Attorneys for the Applicant : Spruson & Ferguson   Sydney

Patent Attorneys for the Opponent :  Davies Collison Cave
  Melbourne