Cenefill Pty Ltd v Ground Support Company Pte Ltd

[1994] APO 59

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 631365 by CENEFILL PTY. LTD.

Title:    Methods of construction and implements therefore.

Action: Opposition under Section 59 of the Patents Act 1952 by GROUND SUPPORT COMPANY PTE. LTD.

Decision:    Issued            .

Abstract:    Opponent found not to have established locus standi.  Opposition continued as a bar-to-sealing action in which section 40 defects were identified. Applicant given the opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 631365 by CENEFILL PTY. LTD. and opposition thereto under Section 59 of the Patents Act 1952 by GROUND SUPPORT COMPANY PTE. LTD.

background

Patent application No. 631365 was advertised as accepted on 26 November 1992.  A notice of opposition by Ground Support Company Pte. Ltd. was served on the applicant, Cenefill Pty. Ltd., on 24 February 1993 and filed in the Patent Office on 26 February 1993.  On 26 March 1993 the opponent, in accordance with regulation 5.4 served on the applicant a statement purporting to set out the grounds of opposition and the particulars relating to each ground.  The applicant on 21 April 1993, under the provisions of regulation 5.5 (1)(a) made application for the dismissal of the opposition, however this was refused in a decision dated 2 July 1993. On 1 October 1993 an amended statement of grounds and particulars was filed and the amendment subsequently allowed.

Evidence-in-support was completed on 2 December 1993, evidence -in-answer on 18 May 1994 and evidence-in-reply on 18 August 1994.  The matter was set down for hearing in Canberra on 14 September 1994 but in the event the opponent indicated that they would rely on written submissions and the applicant appeared by telephone.  The applicant was represented by Dr K Pullen, patent attorney of Grant Adams & Company, Brisbane.  The opponent filed its own written submissions.

As the application was filed before, but accepted after, the commencement of the Patents Act 1990, section 59 of the Patents Act 1952 applies to the opposition but Chapter 5 of the Patent Regulations 1991 applies in relation to the opposition proceedings.

THE STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars as amended specifies two grounds of opposition; that the claimed invention does not comply with "paragraph 18(1)(b) of the Act" and that various claims do not comply with the requirements of "subsection 40(3) of the Act".  Notably the particulars that follow refer only to issues of inventive step or obviousness and fair basis.  While the grounds are not specified in terms of section 59(1) of the Patent Act 1952, I am prepared to apply a purposive construction to the statement and interpret it to rely on the grounds specified in section 59(1) paragraphs g and i, ie obviousness and non-compliance with section 40.  This approach conforms with that followed in a number of previous decisions, eg Norwood Industries v Macbird Floraprint 24 IPR 368.

SPECIFICATION

The specification begins by stating that the invention relates to the construction of walls, revetments, roads, suspended floor spans and the like.  In particular it is said to relate to a set of construction implements and their use in a general method of construction.  I note however that the claims as accepted are restricted to the method and structures constructed by that   method rather than the implements.

Prior art sheet piling and other support structures are then discussed followed by a series of consistory statements of which only some a relevant to the invention as claimed.  The aspect central to the claims is that when constructing a load bearing surface of corrugated sheeting a complementary corrugated adaptor is used to assist placing of the sheeting into its required position.  What is meant by "to place" in the context of the claims will be discussed later in my decision, but the purpose of the adaptor apparent from the description is to provide additional rigidity to the top of the sheet piling as it is driven into the ground.

There are 21 claims of which claim 1 which reads as follows:

"1.A method of constructing a load bearing surface such as a retaining wall, floor span, roadway or the like of the type having one or more inter-connectable corrugated sheets, each inter-connectable sheet of the type having one or more alternating radiused ridges and radiused troughs connected by linear webs, characterised in that said method comprises:

(a)providing an adaptor also comprising a corrugated sheet having corrugations complementary to those of said inter-connectable sheet, said adaptor having means for temporary attachment to said inter- connectable sheet;

(b)using said adaptor to place said inter-connectable sheet into its required position; and

(c)removing said adaptor."

EVIDENCE

Evidence-in-support consists of a large collection of prior art documents including patent specifications and extracts from text books and brochures together with a lengthy comparison of the features of the claims with the prior act as well as comments on the fair basis of certain claims.  This material is however deficient in not being in the form of a statutory declaration nor is it apparent who is its author, although one could speculate that it was in fact a director of the opponent company, Mr Yeates, who has signed the evidence-in-reply.  There is also nothing in this evidence indicating the date at which the documents became available to the public in Australia, if at all, nor clear evidence that any of the information referred to had become part of the common knowledge in the art at the priority date.

The evidence-in-answer comprises statutory declarations made by the following:

• Ian Robert MacDonald, a co-inventor

• Ian Grant MacDonald, a co-inventor

• Kevin Michael Pullen, patent attorney for the applicant

• Alistair John Dunn, Manager, Contract Services, Gold Coast City Council

• Ian David Miller, consulting engineer

As indicated above, the evidence-in-reply is signed by Mr Yeates on behalf of the opponent but again the evidence is not in the form of a statutory declaration and it is not clear to what extent the opinions expressed therein are his.

I will discuss the relevant parts of this evidence where appropriate in my decision.

Locus standi

As a preliminary issue Dr Pullen challenged the locus standi of the opponent. He submitted that:

• the opponent was in the business of consulting as geotechnical engineers and lacks any manufacturing, trading or financial interest.

• The opponent is based and operates in Singapore and while it had been notified about matters pertaining to registration of the corresponding European Patent in Singapore, the patent applicant's patent attorneys had not placed any party on notice with respect to the grant of an Australian patent.

• The opposition is vexatious and blackmailing given that a director of the opponent had alleged that the opposition would be withdrawn on certain conditions.

The opponent on the other hand indicates in the statement of grounds and particulars that its interest in this matter is that:

"Our Company's business will unfairly (sic) restricted by the above application being grant (sic) as it is more the current practice and prior art in the field of geotechnical and civil engineering.  Our personnel have already been warned that the applicant intends to restrict current construction practices in this field by infringement actions by the applicant based on the above application."

In Mediline A.G.'s Patent [1973] RPC 91. Graham, J. sets out four principles in relation to the question of locus. They are:

"(1)The circumstances of each case must be considered and it is wrong to lay down any hard and fast rule as to the precise nature or extent of the "interest" which justifies locus.

(2)The onus of establishing locus lies on the opponent or applicant for revocation.

(3)If the opponent or applicant for revocation can show he has some genuine interest which will be prejudiced and if the opposition or application to revoke is not frivolous, vexatious or blackmailing, then locus should be granted even if the patentee can throw some doubt on the exact extent of the opponent's interest.

(4)It is in the public interest that genuine opposition to a revocation proceeding should be permitted, as normally an opponent or applicant for revocation assists the court or the Comptroller in ensuring that the scope of the patent attacked is properly examined and limited during the application and early stages of its life."

The evidence on file indicates that the parties to this opposition or persons associated with them are involved in a commercial dispute which arose from their joint involvement in the development or commercialisation of the technology associated with the present application.  While the reasons for this dispute are of no interest here, the applicant has presented evidence in an attempt to suggest that the opposition was "vexatious or blackmailing" referring to exhibits IRCM(1)-1 and KMP (1)-2.  I do not however believe that there is sufficient evidence before me to make such a finding and I note that while the opposition has not been prepared professionally it has substance and could not prima facie be said to be frivolous.  This was also the conclusion of the Delegate in relation to the dismissal of opposition.

Nevertheless the onus is on the opponent to show a genuine interest which will be prejudiced by the grant of a patent.  Indicators of such an interest are:

a)Possession of patents (or a claim of obtaining).

b)Manufacturing interest.

c)Trading interest.

d)Financial interest.

See e.g.New Things Ltd.'s Application (1914) 31 RPC 45

Merron's Application (1944) 61 RPC 91

B.A.S.F.'s Application (1963) 80 RPC 19

Kessler's Application (1971) 88 RPC 360.

I do not believe that the opponent has demonstrated any of these.  IRCM(1)-1 is a copy of an extract from the Singapore Registry of Companies and Businesses and this indicates that the principle activity of the opponent is "GENERAL CONTRACTORS (BUILDING CONSTRUCTION)" for which apparently it has been warned in relation to the registration of an equivalent European patent in Singapore. Indeed the only basis given for the opponent's interest appears to relate to threatened legal proceedings in that country and in this regard I note the opponent's remarks in both the statement of particulars and in the evidence-in-reply at paragraph 3.7 (2).  There is also nothing otherwise to suggest that the opponent has any interests in Australia, either manufacturing, trading or financial, that could be prejudiced by the grant of a patent here.

I believe that the opponent has had sufficient opportunity to demonstrate its interest and having failed to do so I find that it does not have locus standi.  While this finding ends the opposition, I am still obligated to consider the issues raised as a bar-to-sealing action - as in Indoor Cricket Arenas (Australia) Pty Ltd v Australian Indoor Cricket Federation (1987) AIPC 90-395 and Dricon Airconditioning v Waztech (1992) AIPC 90-894. The considerations in a bar-to-sealing action [which has its origin in Tate v Haskins (1935) 53 CLR 594], are explained in some detail in re Gould Inc (1989) AIPC 90-560.

BAR-TO-SEALING

Obviousness

Obviousness was the main ground raised by the opponent. The test for obviousness under the 1952 Act is whether the invention claimed would have been obvious to a non-inventive worker in the art who is equipped with the common general knowledge in the art in Australia at the relevant date. As to what constitutes common general knowledge, the following definition was provided by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1979-80) 144 CLR 253 at page 293:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It 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 it must be treated as being used by an individual as a general body of knowledge."

The evidence presented by the opponent, if it can be called that, does not establish that any of the information referred to was common general knowledge in the art at the priority date.  There is also no indication that the person commenting on the prior art is reflecting the view of a non-inventive worker in the art.  Even if I conclude that Mr Yeates prepared the evidence I could not accept that this was the case without further evidence, particularly as the available information suggests his knowledge goes beyond that of a non-inventive worker.  On this basis it is impossible to reach a conclusion that the invention as claimed is obvious.

In any event when considering obviousness the combination claimed must be considered as a whole.  It is insufficient, as the opponent has attempted to do, to dissect a claimed invention into component integers, and establish that these integers are each pieces of common general knowledge.  What must also be established is that the selection of those integers is obvious to the person skilled in the art in the context of solving the problem.  As was also stated in Minnesota Mining & Manufacturing Co v Beiersdorf, supra:

"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process.  It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.  In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers.  The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious. ... The opening of a safe is easy when the combination has been already provided."

Novelty

While the opponent did not raise the issue of prior publication and novelty I have nevertheless perused the published documents on file and can find none which disclose all the essential features of the invention as claimed.  In this regard I have resolved any doubt that I have in favour of the applicant as required by Microcell Ltd's Application 102 CLR 232 and in particular have taken the corrugated profile of the sheets and adaptor to be an essential feature of the claimed method.

Section 40

The opponent raised the issue of fair basis in relation to a number of claims and the main points can be summarised as follows:

1.The specification as lodged does not disclose an incorporated means or inherent characteristics which enable interconnection so the reference to "inter-connectable" sheet lacks fair basis.

2.There is no disclosure of using the profiled sheet as a floor span or roadway together with the use and removal of the adaptor.

3.Means for adding extensions and applying the vibrating source, using the profiled sheet as a revetment, creating a channel, providing another sheet, providing infill material, providing a retaining wall, etc apparent or implied in various claims are not disclosed.

In considering the question of fair basis, I am guided by the well known principles enunciated in Mond Nickel Co. Ltd.'s Application (1956) RPC 189. In relation to the first point I have identified above, I find that the specification originally filed clearly comprehends inter-connectable sheets as is for example illustrated in figures 6,8 and 14b and therefore the Mond Nickel test is satisfied for this feature.

The second point arises I believe because originally a number of inventive concepts were described and claimed, for example the support sheet, anchoring means and a method of constructing a roadway using the support sheet.  The present claims have however been restricted to a construction method using an adaptor plate to assist in the positioning of the support sheeting with claims 1 and 2 for example including the preamble "A method of constructing a load bearing surface such as a retaining wall, floor span, roadway or the like".  The difficulty that arises is that the description discloses methods for the construction of a floor span or roadway but these do not include the use of the adaptor as claimed.  Indeed, the purpose of the adaptor is only said to be (eg page 8) to prevent buckling of the support sheet as it is driven into the ground and this is not a concern when the support sheeting is laid horizontally for a floor span or roadway.  I note at this point that the evidence-in-answer asserts other advantages for the adaptor but these are simply not apparent from the description.

The situation is I believe exacerbated by the use of the ambiguous terms "to place" and "positioning" in the claims which include much more than forcing of sheets into the ground to a desired position.  The use of an adaptor to assist in general lifting, manhandling or positioning of sheet, say for a roadway, is not comprehended by the specification read as a whole and there is no advantage described for using the adaptor in those circumstances.  Therefore I find that the claims are not clear and lack fair basis.  In this regard while a claim may be couched in broader terms than the description, it has also been established that it is not permissible for a claim to cover things that are unrelated to the inventive idea and which do not embody it at all - See Mond Nickel Co. Ltd.'s Application (1948) 65 RPC 123, The Mullard Radio Valve Co. Ltd. v. Philco Radio and Television Corp. (1936) 53 RPC 323 and AMP v. Utilux (1971) 45 ALJR 123. The present claims do not "embody the inventive idea" because the inventive idea apparent from the description, at least as it concerns the adaptor, is the use an adaptor of a particular profile to facilitate the driving of support sheets into the ground.

In relation to the third point referred to above I believe that there is no requirement for the claims to define or further define the "means" referred to by the opponent.  A claim does not have to define all the features that are required to make an apparatus or process work but rather must define the features that embody the inventive idea (See again Mullard v Philco, supra).

conclusion

I have found that the opponent has not established locus standi and that the opposition should continue as a bar-to-sealing action.  Having considered the accepted specification and the material presented by the opponent I have consequently found that a bar-to-sealing exists in that the claims offend against section 40(2) of the 1952 Act.

I however consider that these section 40 defects can be overcome and I hereby allow the applicant 60 days from the date of this decision to propose relevant amendments.

costs

In the present case I have found that the opponent does not have locus standi and also that the evidence filed was defective and insufficient to establish obviousness or lack of novelty.  On the other hand I have had the opportunity to review the claims and have discovered defects under section 40.

Considering all the circumstances I do not believe an award of costs is appropriate and therefore the parties should bear their own costs.

P M Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant :  Grant Adams & Company, Brisbane.

Patent attorneys for the opponent  :  The opponent has provided notices and  submissions both direct and through John R.G. Gardner, Mudgeeraba.