Brunswick Sales Pty Ltd v the Titan Manufacturing Co. Pty Ltd

[1984] APO 22

In the Matter of the Patents Act 1952

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In the Matter of Application No. 518132 for a Patent by BRUNSWICK SALES PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by THE TITAN MANUFACTURING CO. PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         On 26 July, 1977 and 14 October, 1977, the applicant filed applic‑
ations for a patent both accompanied by a provisional specification and both for an invention entitled "MASONRY WALL TIE".  On 24 July, 1978 the applicant filed a single complete specification in respect of those applications invoking the provisions of section 50 of the Act.
         Acceptance of application 518132 was advertised on 17 September, 1981 and notice of opposition under s.59 was lodged on 17 December, 1981 by The Titan Manufacturing Co. Pty. Ltd.  The opponent served its evidence in support on 2 July, 1982.  On 2 March, 1983 the applicant served evidence in answer to the opposition.  On the same day, the applicant filed with the Patent Office a request to amend its complete specification under s.77.  By letter dated 17 June, 1983 attorneys for the opponent advised that no evidence in reply was to be lodged in the opposition.
         With regard to the s.77 request, on 14 November, 1983 the Examiner issued an adverse report under s.79.  There was no further communication from the attorneys for the applicant until 12 December, 1983 when by letter they

requested that the s.59 opposition be set down for hearing, which was arranged for 16 February, 1984 in Melbourne.  At the hearing, Mr. J.A. Ryder, patent attorney of James M. Lawrie & Co., Melbourne appeared for the applicant and Mr. A.J.F. Ward, patent attorney of Clement Hack & Co., Melbourne appeared for the opponent together with a representative for the opponent.
         At the commencement of the hearing, Mr. Ryder referred to the fact that the s.77 action had been overlooked.  He indicated that it had not been his client's intention not to proceed with the s.77 request and in fact he had prepared and despatched a response to the Examiner's report on 14 February and he provided copies of same at the hearing.  The usual procedure followed where a s.77 action is commenced during the evidence stages of an opposition is that the s.77 action is finalized before the s.59 opposition is brought on for hearing.  In this case neither party apparently realized any problem with the hearing date set until a few days before the hearing.
         In the circumstances, I indicated that if at all possible it was desirable that the s.59 opposition hearing proceed and both parties favoured that approach.  A perusal of a copy of the further s.77 amendments lodged by the applicant suggested to me that such amendments would overcome the Examiner's previous objections to the s.77 request, and consequently would result in acceptance and advertisement.  Further it seemed to me that the opponent's case in the opposition would not be materially affected if the s.77 request were to be subsequently allowed, and that any submission against the specification as accepted would most likely also be relevant to the specific‑
ation as proposed to be amended under s.77.  Mr. Ward indicated that his client would still pursue its opposition to the application even if the s.77 request were allowed and he indicated that he was prepared to make submissions on the proposed amended claims if the hearing were to continue.  I therefore decided that the hearing should proceed with both parties putting submissions relevant to the specification as accepted and alternatively to the specification and claims as proposed to be amended under s.77 as had been indicated by the applicant's attorney.  I also indicated that I would withhold my decision until the s.77 action was finalised.  (The allowance of the s.77 request was advertised on 9 August, 1984).
The Specification
         The invention relates to masonry ties, in particular to ties for holding a masonry wall in fixed relationship with columns.  The specification explains that in the construction of buildings it is usual to first assemble a sub‑structure using steel or concrete girders and columns and then to use masonry bricks or blocks to provide a cladding material for the outside of the building.  Continuing, the specification states:

"One of the principal requirements associated with this method of construction is that the masonry wall must be firmly secured to, and held in spaced relationship with, the steel and/or concrete sub‑structure.

One problem which arises is concerned with movement of such brick or block walls due to ageing.  It is necessary to provide means for securing brick and block walls to the vertical and/or horizontal members which make up the substructure of the building, hereinafter referred to in the specification as columns, and such means should be capable of accommodating the movement of the wall caused by ageing.  If the movement is not provided for then considerable damage and distortion can result.

A number of methods are presently used for this purpose but all of them have disadvantages.

It is an object of this invention to provide a relatively simple tie for tying a masonry wall to a column, which allows the masonry wall to expand or contract in the plane of a wall while retaining the wall and the column in a fixed spaced relationship."

Then follows in the description a consistory statement in similar terms to claim 1 and discussion of a number of preferred embodiments of masonry ties in accordance with the invention.  The drawings illustrate two forms of tie, used respectively in association with I‑shaped and box section type steel columns.  As shown the masonry ties are made from a single length of bar or rod section material and shaped to have two arms arranged to form a U‑shape, one arm being longer than the other, with a third arm extending at right angles from the end of the longer arm and being of a length to at least overlie the free end of the other arm.  The shaping of the tie is such as to allow a space between the free end of the other arm and the third arm so that in use at least a part of a column can be accommodated within this space.  The description indicates that for any tie, limited adjustment can be made to the spacing to ideally suit particular use requirements.  In use, the U‑shaped end of the tie is set into the mortar course of a masonry wall and so retains the wall and column in a fixed spaced relationship; however if any natural shrinkage or expansion of the masonry wall occurs the tying arrangement permits the wall to move in its own plane.  The description implies that the ties can be made from material of varying cross section but indicates that a tie made from a solid metal rod of circular cross section has an advantage in minimizing problems associated with water or condensation contacting the arms of the tie when in use.
         As accepted claim 1 read as follows:

"1.A masonry tie comprising a first arm and a second arm, said arms being joined together at one end of the tie, said one end being adapted to be positioned in a mortar course of a masonry wall, the free end of the first arm being adapted to abut a face of a column; and a third arm connected to said second arm and being adapted to engage another face of said column."

As amended following the s.77 request, the claims read as follows:

"1.A masonry tie formed of rod or wire and comprising a first arm one end of which is integral with one end of a second arm, the integral ends being adapted to be positioned in a mortar course of a masonry wall, the free end of the first arm being adapted to abut a face of a horizontal or vertical structural member; and a third arm, one end of which is integral with the free end of the second arm, and being adapted to engage another face of said structural member.

2.A masonry tie as claimed in claim 1 wherein said first and second arms are generally parallel.

3.A masonry tie as claimed in any one of the preceding claims wherein the two arms lie substantially in the same plane.

4.A masonry tie as claimed in any one of the preceding claims wherein the third arm is at right angles to the second arm.

5.A masonry tie as claimed in any one of the preceding claims wherein the third arm extends past the line of the first arm.

6.A masonry tie substantially as herein described with reference to the drawings."

A comparison between accepted claim 1 and amended claim 1 reveals only one significant change.  That is, in amended claim 1 the tie is qualified as being "formed of rod or wire" as distinct from being formed or made from unspecified material including, for example, plate or strip material.  For subsequent considerations in this decision, I will concentrate on the amended claims and only refer to the accepted claims as necessary.
         The tie as defined in amended claim 1 has a rather simple general construction, namely it is formed of rod or wire and comprises three arms which arms are integrally connected in a certain manner.  Furthermore the tie is characterized in its construction by reference in the claim to its intended in‑use application wherein it is to provide a tie between a masonry wall and a structural member located proximate to the wall.  The claim requires that "the free end of the first arm" be adapted to abut a face of the structural member and that the third arm be adapted "to engage another face" of that member.  The latter requirement I interpret to mean that either the free end, a portion of the length, or a considerable length, of the third arm be arranged and be adapted to engage or contact (including abut) the other face.  While the characterization is made with reference to a structural member of unspecified type, I interpret the construction of the tie to be such that given a selected structural member with faces, the first and third arms are arranged so as to cooperate with respective faces of that structural member to enable an effective tying function to be obtained.
         The definition of claim 1 clearly includes many other configurations of tie other than those that have been shown in the drawings, and in this regard it is noted that the claim provides no limitation as to the shape of the respective arms in particular near their ends, nor any limitation other than the functional requirement stated in the previous paragraph as to the spatial arrangement of the arms particularly between the first and third arms and with regard to whether the third arm is arranged to overlie the free end of the first arm.  Included within the scope of claim 1 are constructions of ties having the three arms arranged so as to form:

(a)an elongated C‑shape, each arm in this construction not being straight over its entire extent, or

(b)an open triangular shape, having in this construction the arms essentially straight but not joined at one corner.

Both these constructions provide a spacing between a first and third arm, and with appropriate overall dimensions these constructions would satisfy the in‑use characterization of the claim.
         There is a further aspect of claim 1 that requires comment and that concerns the qualification that the tie is "formed of rod or wire".  In my view, a number of possible types of tie are encompassed by this definition, two of which I will now mention.  TYPE 1, and the most apparent, is that the tie may be formed from a single length of rod or wire shaped to provide the three identifiable arms; in this construction, the cross section of the tie at any point would be that of the rod or wire used.  As an alternative, TYPE 2, the tie may be formed of a plurality of rods or wires joined together in a side‑by‑
side manner so as to form a strip‑like element which is shaped to provide a planar structure having the three identifiable arms; in this case the cross‑
section of the tie at any point would approximate a rectangular shape.  Ties having the construction of TYPE 1 are represented by those described in the specification with reference to the drawings.
Grounds of Opposition
         The opponent, in its notice of opposition, specified most grounds of opposition available under s.59, but in its evidence and from its submissions at the hearing the grounds being pursued embraced those of prior publication, lack of novelty and obviousness.
The Evidence
         The evidence in support comprises three declarations which I will briefly discuss. 
.  Mr. Bence has been the Division Manager for the opponent for some 5 years and has been employed by the opponent for 25 years.  The opponent company is a manufacturer of masonry ties and Mr. Bence's duties include managing its plant in South Melbourne.  Exhibit 1 of Mr. Bence's declaration is a drawing illustrating a brick tie made from wire used to inter‑connect two courses of brickwork.  The illustrated tie is made from a single length of wire bent to a substantially elongated rectangular shape but having one end semicircular.  The ends of the length of wire abut at the midpoint of the other end, and the long sides of the tie are each formed with "dips" at approximately their midpoints.  Mr. Bence deposes that the opponent has manufactured substantially similar ties from galvanised wire at its South Melbourne plant since about 1927 and sold considerable quantities to the building trade for many years.  At paragraph 7 of his declaration Mr. Bence states:

"It is my understanding that it is common practice for builders to bend and distort the shape of the brick ties to suit the particular geometry and dimensional configuration of the application to which the ties are to be used."

At the hearing Mr. Ward submitted that wire ties of the type referred to in the Bence declaration constituted matters of common knowledge in the art. I am in no doubt that ties of this nature have been used for forty or so years and are still widely used today, and can be properly considered as a part of the common general knowledge in the building trade.
.  Mr. Ward is a registered Patent Attorney acting for the opponent.  In his declaration Mr. Ward analyses the opposed specification (as accepted) and then discusses the novelty of the claimed tie in the light of a building tie, commonly referred to as the "A.B. COLTIE" or simply "COLTIE".  Exhibit 1 of Mr. Ward's declaration is a copy of a brochure about the COLTIE.  The COLTIE is an adjustable Column to Brick Tie, apparently made by being pressed from plate material.  It is a one piece article and has three identifiable arms or portions, and the brochure illustrates how the device can be adjusted and positioned to enable a brick wall to be tied to either a vertical or horizontal steel I‑beam column.  The brochure refers to "PAT APP PC.9644/77" and "Manufactured by A & B Tool & Die Manufacturers P/L".  No publication date for the brochure has been established. Exhibit 2 of Mr. Ward's declaration is a copy of Australian Patent Specification 502212 which resulted from provisional specification PC.9644/77 filed 1 April, 1977.  Specification 502212 was laid open to public inspection on 11 January, 1979, a date after the earliest priority date of the opposed application.
         After comparing the features of the illustrated COLTIE in the brochure with the accepted claims of 518132 Mr. Ward states in paragraph 16:

"I conclude from the Newman declaration that the COLTIE was sold in Australia before the priority date of the opposed application.  It is my opinion that the invention so far as claimed in Claims 1 to 3 of the opposed application was published in Australia before the priority date of those claims."

Reference to the Newman declaration follows.
.  Ms. Newman is the office manager of Abey Hardware Pty. Ltd. of Victoria.  She deposes:

"2.In 1977, I was employed as an accounts clerk by my company.  Annexed hereto as Exhibit JN1 is an invoice of my company numbered 4932 dated 16 May 1977.  The invoice concerns Order No. 2333 and delivery to Dindas Lew Pty. Ltd., 1667 Centre Road, Springvale, Victoria, 3168.  The invoice refers to 25 Joist straps and 500 column‑brick ties.  The invoice indicates that the straps and brick ties were delivered on the 17th May, 1977.

3.I recognise the writing on the invoice as my writing.

4.Annexed hereto as Exhibit JN2 is a copy of a brochure produced by my company illustrating a brick tie called the "COLTIE".  The COLTIE is known to me and I confirm that the COLTIE illustrated in the brochure is the same tie referred to as a column‑brick tie in Invoice No. 4932.

5.I believe that five hundred COLTIES were delivered to Dindas Lew Pty. Ltd. on 17th May 1977."

The brochure of Exhibit JN2 is the same as that shown as Exhibit 1 of Mr. Ward's declaration.
Prior publication, novelty and obviousness
         I am satisfied that the Newman declaration establishes that COLTIE building ties were available to, and in the possession of members of, the public before the priority date of application 518132.  Furthermore I am satisfied that the COLTIE device discloses all the features of the masonry tie of accepted claim 1 of 518132 and hence I find accepted claim 1 prior published by the COLTIE device.
         At the hearing it was submitted on behalf of the opponent that the amended claims did not define a patentable invention, lacked novelty and were obvious.  The argument in support of this contention centred on the COLTIE device and the knowledge of the well known wire ties used for solid brick tying (as referred to in the Bence declaration).
         It was put to me at the hearing by way of a demonstration using these known wire ties, that it was common practice by builders to bend and distort these into different shapes so enabling them to be utilized as a tie between a brick wall and a column support.  Mr. Bence in his declaration had referred to distorting such ties without providing details.  While such uses for these known ties when reshaped appear feasible, I have no evidence before me from appropriate persons in the trade, e.g. bricklayers, to establish what was commonly done with these wire ties before 1977.  There is certainly no evidence to suggest that it represented common general knowledge in the building trade to reshape the known wire ties used for double brick tying and use them for brick to column tying akin to the method involving the ties of the present invention.  Consequently I am of the view that lack of novelty in the claimed tie based on alleged common reshaping of the solid brick type wire ties has not been established.
         Mr. Ward for the opponent submitted that the tie as defined by amended claim 1 lacked novelty over the COLTIE and lacked invention or was obvious in the light of the COLTIE when considered with the common general knowledge of the wire ties at the time.  In view of my earlier interpretation of amended claim 1 with respect to the types of tie that are encompassed within the definition being "formed of rod or wire", I will consider the question of novelty over the COLTIE separately for each type previously identified.
         Firstly, in the case of TYPE 1 where the tie is formed from a single length of rod or wire, when compared to the COLTIE, it differs in that it has a shaped form made from rod or wire instead of being of plate‑like form as in the case of the COLTIE.  In my view, this would not seem to be an insignificant variation devoid of novelty.  Bearing in mind the rather rigid, plate‑like construction and manner of operation of the COLTIE, I am unable to conclude that there isno novelty and  no invention involved in producing out of a single length of wire or rod a tie having similar characteristics and effectiveness.  While the specification itself is only of limited assistance in considering this point, I do note that an object of the invention was to provide "a relatively simple tie", and also that the specification states that when ties are made from "solid metal rod of circular cross section" problems with water or condensation affecting the ties are alleviated.  In both these aspects the tie as claimed, being formed from a single length of wire or rod, would seem to exhibit advantages over the COLTIE device.  Consequently I do not consider that this type of tie encompassed within the definition of the present claims lacks novelty over the COLTIE device.  The fact that wire masonry ties of certain shapes were well known in the trade prior to 1977 is not in my view a relevant factor to take into consideration in this case when determining novelty based on the COLTIE device.

         Secondly I refer to the case of TYPE 2 ties, where the tie is formed of a plurality of rods or wires joined together in a side‑by‑side manner and appropriately shaped.  In this case, the resulting ties would not be unlike the COLTIE device in configuration and form, having strip‑like arms and an overal planar structure.  I am unable to see that such a tie exhibits any variation over the published COLTIE device so as to make a substantial contribution to the invention.  Accordingly I consider that this type of tie encompassed within the definition of amended claim 1 lacks novelty over the COLTIE device, and hence I find amended claim 1 as well as dependent claims 2‑5 not novel in view of the COLTIE device.
         Turning to the question of obviousness, I am unable to find that the claimed tie is obvious.  When considering obviousness viewed in the light of the COLTIE the evidence indicates that 500 COLTIES were delivered to an address in Springvale, Victoria, some 2 months before the priority date of the present specification.  There is no evidence to indicate that the COLTIE was a part of the common general knowledge in the trade at such priority date.  As obviousness has to be considered against the proven common general knowledge at the relevant time, and as the COLTIE has not been proven to be within that knowledge, an obviousness attack on the tie of the present invention based on the COLTIE lacks merit and necessarily fails.
         The only other material before me to consider in relation to obviousness concerns the known wire ties which I have considered form part of the common general knowledge in the art.  To consider the question of obvious‑
ness in this situation, one has to consider the matter from the point of view of how a person skilled in the art would consider the tie of the present invention in the light of these known ties.  However I do not have the benefit of any expert evidence in this regard, and in the absence of such evidence I am not prepared to find against the present invention on the opposition ground of obviousness.
         While I have concluded that, based on the evidence provided by the opponent, anticipation of the aforementioned TYPE 1 tie of the invention claimed has not been established, nevertheless I consider that such ties and hence amended claim 1 lacks novelty on other grounds.  I indicated earlier in this decision two constructions of ties within the scope of claim 1 namely (a) of C‑shape and (b) of triangular shape.  With regard to construction (a), C‑shaped elements made from a single length of wire or rod have been in existence for many years prior to 1977, existing as hooks or links in various overall sizes and cross‑section dimensions.  Appropriately sized, such hooks or links could clearly be adapted to be used as a masonry tie between a brick course and column as required by the claim.  Elements having a triangular shape, open at one corner as per construction (b) are represented by musical triangles which are formed from a single length of bar or rod material and are available in various sizes and cross‑sectional dimensions.  Such devices have also been available for many years prior to 1977.  While certainly not intended for such use, such musical triangles of appropriate dimensions would be adaptable for use as a masonry tie as claimed.
         Consequently, in view of the matters discussed in the previous paragraph, I consider amended claim 1 as well as dependent claims 2‑5 lack novelty in the light of the well known elements mentioned.  Claim 6 is the usual form of omnibus claim in the form "a masonry tie substantially as hereindescribed with reference to the drawings".  Accordingly claim 6 is directed to a masonry tie having its essential features limited with reference to the specific configurations as shown in the drawings; in essence ties of the 2 types as shown in Figures 1 and 2.  On the evidence available to me I am not convinced that claim 6 is devoid of novelty.
Conclusion
         In summary I find that the opposition succeeds on the ground that the invention as claimed lacks novelty.  As I consider the specification contains novel subject matter, I afford the applicant an opportunity to seek leave to amend the specification within 60 days of this decision.
         On the question of costs, I need to take into account the circumstances of the hearing and the amendment of the specification after acceptance as indicated earlier in this decision.  The applicant requested the s.59 opposition to be set down for hearing after an adverse report on its s.77 request had issued, and only took action to proceed with the s.77 request shortly before the hearing date.  Any question of postponing the hearing only arose at the hearing itself.  As the official form of the specification existing at the hearing date was that of its accepted form, the opponent was entitled to attend and put submissions on the basis of that document.  I have found that the opponent by its evidence established opposition to the accepted specification and is therefore entitled to its costs including those incurred by attendance at the hearing.  Accordingly I award costs against the applicant.

(T.R. BRUHN)