CALSIL LIMITED

[1986] APO 46

In the Matter of the Patents Act 1952

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In the Matter of Application No. 14153/83 for Letters Patent by CALSIL LIMITED

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In the Matter of Examiner's Objection thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        Patent application 14153/83 by CALSIL LIMITED was lodged on 2 May, 1983 accompanied by a complete specification and is for an intention entitled "Pre‑Cast Pre‑Tensioned Concrete Slab and Method of Manufacturing Same".
        Examination has been in accordance with Section 48 and to date three adverse reports have issued with the Examiner  in the most recent report maintaining objections on novelty grounds.  In response to the last adverse report, the applicant requested a decision by the Commissioner on the written record.
The Specification
        The application relates to a pre‑cast pre‑tensioned concrete slab and to a method of its manufacture.  The specification states that the concrete slab is particularly suitable for use as a floor slab.  The object of the invention is stated to be the provision of a "pre‑cast pre‑tensioned concrete slab which can be readily transported to a construction site either with or without a structure erected thereon".  A further object is to provide "a

pre‑cast pre‑tensioned concrete slab which is relatively light and has a minimum of reinforcement".
        The specification contains a description of one specific embodiment of a concrete slab in accordance with the invention and a method to form same.  The slab described exhibits a planar deck portion having integral therewith and depending from one side thereof, inter alia, (a) a series of intersecting longitudinal and transverse ribs and (b) a plurality of beams linked to each other and the ribs and forming peripheral beams spaced inwardly somewhat from the periphery of the deck, both the ribs and the beams being reinforced with tensioning cables.  The peripheral portion of the deck outwardly of the peripheral beams is of greater thickness than the main body of the slab and is referred to as a cantilever portion, since in effect it is a cantilever when the slab is in the operative position.  Areas of the cantilever portion are reinforced to provide jacking points.
The Claims
        Claims 1 to 3 under consideration in this action are as follows:

"1.A pre‑cast pre‑tensioned concrete slab characterised in that its underside is provided with a series of longitudinal and transverse ribs with the pre‑tensioning wires being located within the ribs, the outermost ribs forming a peripheral beam projecting downwardly from the underside and of greater depth than the ribs, said beam being located inwardly of the periphery of the slab.

2.A pre‑cast pre‑tensioned concrete slab as claimed in claim 1 wherein additional reinforcing is incorporated in the slab at pre‑selected points to provide jacking points.

3.A pre‑cast pre‑tensioned concrete slab substantially as herein described and shown in Figs. 1 to 4 of the accompanying drawings."

Before turning to the Examiner's objections at dispute, several observations concerning these claims are needed.  Firstly, the definition in claim 1 does not limit the slab to possessing intersecting longitudinal or transverse ribs, nor limit the outer‑
most ribs to forming a continuous peripheral beam on the slab, although the preferred embodiment is so limited in both respects. Secondly, from claim 1, the location of the peripheral beam "inwardly of the periphery of the slab" is arbitary, i.e. it could be close to the periphery or considerably spaced therefrom.  Thirdly, with respect to claim 2, the definition places no limitation on the location of the "pre‑selected points".
Examiner's Objections
        In the first two official reports, the Examiner took objection to the complete specification on the grounds that claims 1‑3 were prior published, although at the third report stage and following submissions on behalf of the applicant, the Examiner has expressed objection to these claims in terms of lack of novelty based on Australian Patent specification 527996 (75727/81).
        Specification 527996 discloses a pre‑cast pre‑tensioned concrete slab of rectangular shape having on its underside integrally formed pre‑tensioned longitudinal and lateral beams adjacent sides of the slab and which together form a pre‑tensioned continuous peripheral beam depending from the underside of the concrete slab.  The slab also has integrally formed on its underside a plurality of pre‑tensioned lateral stiffeners extending between and parallel to the longitudinal edge beams.  I note that the edge beams depend from the underside of the slab to a greater extent than the stiffener ribs.  This specification was laid open to public inspection on 7 January, 1982.
        From the Examiner's reports and the Attorney's responses thereto, a major point of dispute concerns the definition in claim 1 that "said beam being located inwardly of the periphery of the slab" and whether a concrete slab with such feature is disclosed in the prior art.  For instance, in response to the Examiner's first report and objection of prior publication, the applicant's Attorney submitted:

"It is agreed that pre‑cast pre‑tensioned concrete slabs are known and that such slabs have been provided on the underside of the slab with longitudinal and transverse ribs.  To the best of the Applicant's knowledge such a beam with the outermost ribs forming a peripheral beam located inwardly of the periphery of the slab and of greater depth than the other ribs is not disclosed in any of the references cited by the Examiner."

Cited specification 527996 discloses in its claim 1 the following features:

"two integral, concrete beams extend longitudinally of the concrete floor slab adjacent respective longitudinal sides thereof and depend downwardly from the underside of the floor area, two integral, concrete beams extend laterally of the concrete floor slab adjacent respective lateral sides thereof, and depend downwardly from the underside of the floor area" (underlining added).

This citation therefore refers to the location of the peripheral beam as being "adjacent" respective sides of the slab, whereas the present claims define this location as being "inwardly" of the slab periphery.  Applicant's Attorney has commented on the citation's disclosure submitting that:

"the term "adjacent" used in relation to the longitudinal beams cannot be applied to the Applicant's construction.  The term adjacent when viewed in the light of the remainder of the specification means that the beam coincides with the periphery of the slab or is very close thereto.  There is no suggestion of a cantilever type construction ..."

According to Websters Third International Dictionary, "adjacent" has the meaning of "near" or "close to", "not distant or far off".  It is true that the preferred embodiments described and shown in specification 527996 all have the peripheral beam coincident with the slab edge but this does not mean that one should restrict the meaning of "adjacent" to be "coincident with".  I consider that it is fair and reasonable in interpreting the cited specification that it discloses that the peripheral beam is either at, or near to (i.e. spaced somewhat from), the edge of the slab; in fact this interpretation equates with that expressed by the Attorney, disregarding the "cantilever" construction which I will mention later, but which does not characterize the claim in any case.
        Claim 1 under consideration merely requires the peripheral beam to be located "inwardly" of the slab periphery, i.e. spaced somewhat from the periphery towards the centre area of the slab.  The present definition of claim 1 provides no further characterization of the slab periphery or of the location of the peripheral beam.  On my interpretation, as the cited document discloses the location of the peripheral beam as being inward  of the slab periphery and discloses the other features claimed, I consider present claim 1 to be prior published by specification 527996.  With regard to claim 2, I note that the citation discloses reinforcement in the corners of the concrete slab.  As these areas could equally be utilized to provide jacking points for the slab, claim 2 is in my view likewise prior published.
        Claim 3 is an omnibus claim which refers to "Figs. 1 to 4 of the accompanying drawings".  These figures illustrate plan and sectional views of a concrete slab of the invention.  (In passing I note that the sectional view of the slab depicted in Fig. 4 does not completely accord with the section line 4‑4 on Fig. 1; the left side of Fig. 4 seems to be a section in the vicinity of the corner of the beams B1 and B4).  I interpret claim 3 to be directed to a concrete slab consisting of the essential features of the invention, which in this case equate with those defined in claim 1, in the form as described with respect to figures 1 to 4.  I therefore take claim 3 to include an array of longitudinal and transverse ribs and to possess a continuous peripheral beam, with the peripheral beam being positioned at a distance from the slab periphery thus creating outwardly thereof a so‑called "cantilever portion".  Furthermore in my interpretation, neither the reinforced jacking points on the cantilever portion nor its thickness are characteristics of the slab of claim 3, as these features do not characterize claim 1.  Accordingly, in line with the earlier discussion concerning prior specification 527996, I do not consider that claim 3 defines a concrete slab which exhibits novelty over the cited art.
        The Applicant's Attorney in submissions in response to the Examiner's objections has referred to the so‑called "cantilever" portion and has submitted its existence to be:

"necessary as explained in the specification to enable picking up of the slab to move it into position and to facilitate removal of the jacks when the positioning operation has been completed."

It should be noted however that the claims possess no constructional or functional limitation concerning the cantilever or peripheral portion of the slab which would characterize the functional aspect as described in the specification and referred to by the Attorney.  If, as the Attorney's submissions imply, the slab of the invention exhibits novelty over prior devices due to particular functional capabilities thereof, then the claims require amendment to define a slab construction which is distinguishable from the prior art and which can achieve those capabilities.  Given the prior art material before me as raised by the Examiner to this stage of examination, it seems to me that the claims could be appropriately amended to define novel subject matter.
Conclusion
        I have found that claims 1 and 2 are prior published and that claim 3 lacks novelty.  Accordingly I am satisfied that lawful grounds of objection exist to the application and complete specification which prevent its acceptance in its present form.  Rather than exercise my discretionary power adversely to the applicant by refusing to accept the application outright at this stage, I afford the applicant an opportunity to propose further amendments in the time remaining for acceptance with a view to overcoming the lawful grounds of objection and gaining acceptance.

(T.R. BRUHN)