Calsil Limited v Bevan James Riekie and Arthur Simpfendorfer

[1989] APO 23

In the Matter of the Patents Act 1952

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In the Matter of Application No. 561901 for a Patent by CALSIL LIMITED

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In the Matter of Opposition thereto by BEVAN JAMES RIEKIE and ARTHUR SIMPFENDORFER.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         Patent Application No. 561901 is entitled "Pre‑Cast Pre‑
Tensioned Slab and Method for Manufacturing Same" and was lodged on 2 May 1983.  Advertisement of acceptance appeared in the Official Journal on 21 May 1987.
         After an extension of time was granted a notice of opposition under sub‑section 59(1) was lodged on 20 November 1987 and service of evidence‑in‑support was completed on 16 December 1988.  Calsil Limited, by letter dated 25 May 1989, informed the opponents that it did not intend to serve evidence‑in‑answer.
         The matter was heard in Perth on 14 July 1989; the applicant was represented by Mr R.C. Wray, patent attorney for Wray & Associates, assisted by Mr R.J. McCormack, solicitor and the opponents were represented by Mr M.J. Royal, patent attorney of Phillips, Ormonde & Fitzpatrick.  Also present, inter alia, were Mr K. Webster, on behalf of the applicant, and Mr Riekie, one of the opponents.

The notice of opposition stated all possible grounds under sub‑section 59(1), of which only four were the subject of submissions and argument at the hearing.  These were the grounds specified in paragraphs (a), (g), (h) and (i) of sub‑section 59(1), viz. obtaining, obviousness, lack of novelty and non‑compliance with section 40.
The Specification
         The specification as accepted commences by stating:

THIS INVENTION relates to pre‑cast pre‑tensioned concrete slabs which are particularly suitable for use as floor slabs and to a method of manufacturing same.

The objects are then stated as follows:

The object of the invention is to provide a pre‑cast pre‑tensioned concrete slab which can be readily transported to a construction site either with or without a structure erected thereon.  It is also an object of the invention to provide a pre‑cast pre‑tensioned concrete slab which is relatively light and has a minimum of reinforcement.

The preferred embodiment is described with reference to eleven accompanying figures which show different views of a concrete slab according to the invention, a mould for casting the slab, a lifting means for turning the slab after it has been removed from the mould and a diagrammatic representation of the turning operation.
         The invention is defined by way of five claims, of which only the first two were the subject of attack by Mr Royal, these claims read as follows:

1.A pre‑cast pre‑tensioned concrete slab having a planar upper surface and provided on its underside with a series of integral intersecting downwardly projecting longitudinal and transverse ribs and a plurality of downwardly projecting beams linked to each other and to the ribs, said beams being located inwardly of the periphery of the slab to define a cantilever portion which has a greater thickness than the main body of the slab, the depth of the beams being greater than that of the ribs, areas of the cantilever portion being provided with jacking points and the ribs and beams being reinforced with tensioning cables which are tensioned prior to the pouring of the slab.

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

The Evidence
         The evidence‑in‑support comprises two main declarations one by Bevan James Riekie and the other by Malcolm John Royal. Annexed to Mr Royal's declaration is exhibit MJR1 which comprises 17 declarations made out by eleven people, these declarations formed evidence in earlier opposition proceedings to application No. 527996, the applicants in that case were the present opponents and one of the opponents in that case is the present applicant.
Section 40
         Mr Royal raised six points concerning non‑compliance with section 40.
         Firstly he submitted that claim 1 is not clear and that the words 'longitudinal and transverse ribs' have no meaning unless the shape of the slab is defined.  In response to this Mr Wray argued that the description, the term slab itself and the words longitudinal and transverse imply that the slab is rectangular.  I fail to see why the claim should have to define the shape of the slab, in my view a man skilled in the art would readily see the meaning of longitudinal and transverse ribs and there is no reason why the claim should be limited to any particular shape.
         Secondly Mr Royal submitted that in claim 1 the term "a plurality of downwardly projecting beams" is not clear in that it is not clear how many beams there are nor how they are linked together and to the ribs.  Mr Royal also referred to the specification as lodged where in original claim 1 the beams are defined as the outermost ribs and in this circumstance implying that the beams are continuous perimeter beams, whereas in claim 1 as accepted the beams are not so restricted.  However I do not think that the claim is not clear with regard to this feature; the beams may not be defined as being the "outermost" ribs but their position and function is defined in the part of the claim from "said beams ...", line 5 to "... the ribs", line 9.  This part adequately and clearly defines a structure which contributes to achieving the object of the invention and therefore complies with section 40.
          Thirdly Mr Royal submitted that in claim 1 no meaning can be given to the term "jacking points" and that they are merely a location on the slab and are not defined as anything else.  I notice that the only significant description of what a jacking point is appears in the preferred embodiment at page 3 line 33 to page 4 line 2: jacking points are described as being areas provided with additional reinforcing.  This is not defined in present claim 1, however I note that in original claim 2 (now deleted) this feature did appear.  In this matter I think that the claim is somewhat awkward in its construction, due to the words "provided with" preceding "jacking points" in line 10 of claim 1, but I do not think that this clause is sufficiently unclear to warrant an objection.  The term "jacking points" means no more than what is suggested by the words themselves, viz. points on the cantilever portion where jacks are located to move the slab.  Also I see no need to restrict the jacking points to areas with additional reinforcing, it would be within the broad consideration of the inventor to envisage other means of providing jacking points without departing from the inventive concept.
Fourthly Mr Royal criticised claim 1 by submitting that it is not clear whether the reinforcing and tensioning cables referred to in line 11 of claim 1 are what provides the pre‑tensioning as defined in line 1 of the claim or if some other meaning is intended. It is a well established rule of construction that one should try, as far as possible, to give a meaning to a claim which would make it valid (Osram Lamps v. Pope Electrics, 34 RPC 369). The last two lines of the claim in their entirety read as follows:

"ribs and beams being reinforced with tensioning cables which are tensioned prior to the pouring of the slab."

I think that it would be clear to a person skilled in the art that the tensioning cables are what provides the pre‑tensioning prior to the pouring of the slab.
         Fifthly Mr Royal remarked that claim 1 as accepted refers to tensioning cables whereas original claim 1 refers to pre‑tensioning wires, and in his view it is not clear if there is some distinction between these two terms or if they are being used interchangeably.  I cannot see any difficulty with the claim defining 'cables' as opposed to 'wires', it would appear that for all intents and purposes with regard to the present claim that there is no material difference between the terms cables and wires and the applicant in my view is entitled to use them interchangeably.
         The sixth and last point regarding the non‑compliance with section 40 that Mr Royal brought up in his submission was that claim 2 is not clear in that it relates to "A pre‑cast pre‑tensioned concrete slab substantially as herein described and shown in Figs 1 to 4 of the accompanying drawings", and, when one refers to the drawings, it is clear that Fig 4 is in error.  The figure purports to be a sectional view on line 4‑4 of Fig 1; however this is not the case and it was brought up at the hearing that Fig 4 is in fact a sectional view along beam B1 of Fig 1 with incorrect cross‑hatching.  I do not think that claim 2 is not clear; the fact that Fig 4 may not be exactly what it purports to be is not particularly relevant, it still shows a slab according to the invention and a person skilled in the art would be readily able to interpret what Fig 4 is trying to represent.
Common General Knowledge
         As the determination of obviousness, novelty and obtaining in the present case hinges greatly on what has and what has not been shown to be common general knowledge, I will now deal with this matter.
Much of the evidence, indeed all of the evidence‑in‑support except for the declaration by Bevan James Riekie was considered under this heading by the hearing officer in Riekie v. McGrath 7 IPR 120 in the matter of application No. 527996. In that decision the hearing officer found that very little of the evidence constituted common general knowledge. Mr Wray submitted that I am bound to follow the finding in the earlier decision, Mr Royal on the other hand contended that as the facts in the present case were materially different, findings on common general knowledge should be decided independently of the earlier decision. Generally there is some merit in both these points of view.
         The extent of common general knowledge established by the evidence would appear to be this : pre‑tensioned reinforced concrete slabs are known, as is their use as floors for transportable buildings, longitudinal and transverse ribs are known as are downwardly projecting beams, the depth of the beams being greater than the ribs is also known.  However the only disclosures that Mr Royal could direct my attention to of a "cantilever" portion at the periphery of the slab are the "double T" and "single T" slabs disclosed in the text book "Modern Prestressed Concrete ‑ Design Principles and Construction Methods" Second Edition by James R Libby; a section of this book was annexed to the declaration by Paul Robert Taylor which in turn was annexed to the declaration by Mr Royal that forms a part of the evidence‑in‑support.  In his decision in the earlier case Supervising Examiner Roveta found that this text book did not form a part of the common general knowledge, viz:

"The final evidence before me relating to common general knowledge consists of three books held by the library of the University of New South Wales which were accessioned and shelf‑listed at various dates in 1978, 1979 and 1980.  Mr Taylor, patent attorney for McGrath, has declared the following:

"These publications deal with the general state of the art for concrete slabs as of the date of the priority date of Australian Patent Application No. 527996."

This evidence also attracted criticism from Mr Royal, again justifiably in my opinion.  If the phrase "the general state of the art" is intended to be read as meaning the common general knowledge in the art, then the facts in evidence do not support Mr Taylor's assertion in this regard.  The fact that these publications are on a library shelf do not establish that they are common general knowledge, particularly when they have only been there for as short a time as in the present situation.  Moreover, Mr Taylor does not reveal his authority for declaring as to the common general knowledge in this particular art."

Concerning this text book I am bound to follow the earlier decision.  The opponents have put in no further evidence that indicates the book does form part of the commmon general knowledge and as nothing has been done to reveal Mr Taylor's authority for declaring as to the common general knowledge I can only assume that he has no such authority.  Consequently there is insufficient evidence before me to conclude that the text book is part of the common general knowledge.
         There is one final point I would like to consider under this heading.  Mr Riekie in his declaration states that he believes that because in excess of 100 slabs designed by Mr Simpfendorfer and himself had been sold and used before May 1983, this indicates that the features of these slabs were common general knowledge.  The opponents' slabs did not have a thickened cantilever portion, but in his declaration Mr Riekie deposes:

"It was also clear to me then as it is now that if the cantilever portion was to be used as a jacking point it would be necessary for this to be thicker than the thickness of the slab itself.  The purpose was to keep the slab as thin as possible to reduce weight." .....

"The provisions of a cantilever portion of increased thickness is common place in the manufacture of concrete slabs.  The use of pre‑tensioning is also commonplace in the manufacture of concrete slabs.  The provision of longitudinal as well as lateral ribs is also common place.  These matters are not only common place now but they were common place in May 1983."

Mr Royal submitted that, because there was no evidence to the contrary, Mr Riekie's statements on this matter should be given significant weight. On the other hand Mr Wray suggested that Mr Riekie was not an unbiassed witness and that his statements should be treated with some caution. I am inclined to resolve any doubt in this matter in favour of the patent applicant since it is likely that Mr Riekie is over‑qualified for the role of expert witness. In British Celanese Ltd. v. Courtaulds Ltd. (1933) 50 RPC 63 at 90, Clauson J. stated:

"I have a man properly informed in the art who knows so and so.  I can infer that everybody properly informed in the art will have some knowledge, because they have exactly the same opportunity as he has. ... I must be satisfied that he has not an excess of any peculiar or special sort of knowledge, but that what he is telling me is what he has acquired in his ordinary practice as a man engaged in the art."

Mr Royal referred me to the judgement of the Supreme Court of Victoria in L.J. Fisher & Co. Ltd. v. Fabtile Industries Pty. Ltd. (1979) 49 AOJP 3611.  In this case the defendant called no witnesses at the trial and the Court generally accepted the evidence of the plaintiff's witness, Mr Lohning.  I note though that Mr Lohning was a consulting engineer and an independent witness in that case.  In the present case Mr Riekie is one of the opponents.  Also, the opponents have no other evidence corroborating Mr Riekie's statements as to the nature of common general knowledge.  Thus I conclude that Mr Riekie's sole evidence in this matter is of low probative value.  In particular, I conclude that the evidence is insufficient to prove that slabs with thickened cantilever portions were well known before the priority date.
Obviousness
Obviousness is a matter dependent upon the common general knowledge in the field of the invention (Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd., 144 CLR 253). The purported advance of the slabs defined in claims 1 and 2 of application No. 561901 over the slabs of the prior art is the provision of a cantilever portion on the periphery of the slab that has a greater thickness than the main body of the slab. I indicated earlier in this decision that there is no evidence to indicate that such a feature is a part of the common general knowledge and consequently it cannot be considered to be obvious.
Novelty
         Mr Royal argued that the invention defined in claims 1 and 2 of the present application is not novel in the light of two documents, one being patent No. 527996 to Riekie and Simpfendorfer the other being a paper presented at a Symposium on Pretensioned Concrete Buildings held in Sydney 2‑3 September 1976, entitled "Pretensioned Floor and Roof Slabs with High strength Deformed Bars" ("the Russian Paper" included in exhibit MRJ 1), it has been shown previously that both of these documents were published prior to the present priority date.  It was Mr Royal's submission that in the light of the common general knowledge and these documents the invention defined in claims 1 and 2 of application No. 561901 is not novel in that the improvements or alterations in the slabs defined in the present application are mere workshop improvements or are non‑inventive matters of design.
         It was noted previously in this decision that the improvement in the slabs of the present application over the prior art is the provision of a cantilever portion at the periphery of the slab that has a greater thickness than the main body of the slab, it was also noted that this has not been proved to be common general knowledge.  On perusal of the two citations referred to by Mr Royal I note that neither discloses a thickened cantilever portion as defined in the present application, the question of lack of novelty therefore requires a consideration of whether a competent workman having before him the disclosure of either of the two citations, without the exercise of inventive faculty, would add to the known slabs the alterations as stated; or expressed in terms of the judgement by Dixon J. in Griffin v. Isaacs, (1942) 12 AOJP 739, would such an alteration involve no ingenuity or inventive step and would the merit of the two things, considered as inventions, be the same.
         Concerning the improvement of the present slabs the specification of application 561901 reads as follows:

"The design of the slab is such that handling thereof after initially curing of the concrete can be accomplished without damage to the slab.  Slabs produced in accordance with the present invention are particularly suitable for use as floors of transportable buildings.  The buildings can be transported to the site and lowered into position using jacks located at the appropriate jacking points on the cantilever portion and the jacks are readily removable after the slab has been lowered."

The opponents' evidence does not criticise or bring into doubt the advantages of the present slabs and consequently after weighing up all of the evidence before me I am of the opinion that the improvements of the present slabs are more than mere workshop improvements or matters of design and that the slabs do involve ingenuity and an inventive step and that the merit of the two things is not the same.  Consequently I find that claims 1 and 2 are novel over the cited prior art.
Obtaining
         Mr Royal submitted that the invention defined in application No. 561901 has been obtained from the opponents, it was his contention that the declaration of Matteo Perella dated 22 December 1983 (included in exhibit MRJ 1) clearly shows this.  However, it is not clear from Mr Perella's declaration what information passed between the opponents and Delta Concrete, a division of Calsil, and there is clearly no suggestion that the idea of using a thickened cantilever portion was obtained from the opponents.  Mr Wray referred me to the decision in Space‑Cell Systems (Aust) Pty. Ltd. v. E.P.M. Concrete Pty. Ltd. (1979) 49 AOJP 2018.  In this case, which also related to a concrete building panel, the hearing officer referred to a set of four criteria which must be established for obtaining to be proved.  In the present case the matter of these criteria has not been addressed in the evidence and thus I conclude that the invention has not been shown to have been obtained from the opponents.
Conclusion
         I have found that the invention defined in the claims of patent application 561901 is novel, not obvious and has not been shown to have been obtained.  The specification also complies with section 40 of the Patents Act.  Thus I find for the applicant that the opposition has failed on all grounds and I direct that the application and complete specification proceed to sealing subject to any appeal.  I award costs against the opponent.

(J.I. WELSH)

Patent attorneys for the applicant: Wray & Associates, Perth
Patent attorneys for the opponent : Phillips, Ormonde & Fitzpatrick,