Cherie Leanne Tindale and John Francis Tindale v Kerry Marcelline Scherini
[2001] APO 54
•9 October 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 716169 in the name of Cherie Leanne Tindale and John Francis Tindale
Title: Paving System
Action: Application for extension of term under section 69; Notice by Kerry Marcelline Scherini under section 28; hearing.
Decision: Issued .
Abstract
The informant, Scherini, was able to establish that Petty Patent 716169 was invalid on
the grounds raised in the Section 28 notice. In particular the ground of invalidity on the basis of Novelty was established.
The grounds that the claimed invention did not involve an Inventive Step, was not a Manner of Manufacture, and did not comply with Section 40 were not established.
Claim 1 encompasses two alternate configurations brought about by the use of the word "or" in defining the features of the claim. In reviewing these alternate constructions against the cited art, it is apparent that the claim includes an essential feature that may be deemed to be novel. However, as the claim clearly allows for a construction which excludes that feature, the claim is not considered to satisfy the reverse infringement test when compared with US Patent 5651971. As a result the claim is deemed to fail the reverse infringement test and is not considered to be novel.
Hence the informant, Scherini has been successful in her objections to the validity of the petty patent on this ground.
On the grounds of obviousness, in light of a lack of evidence as to what constitutes common general knowledge in the field and subsequently what the skilled addressee may contemplate as an obvious variation to the known, the informant fails in its objection on this ground.
There is deemed to be patentable subject matter, consequently the patentee is given sixty days to file amendments.
As the informant is successful, costs are awarded against the patentee.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 716169 by CHERIE LEANNE TINDALE and JOHN FRANCIS TINDALE
BACKGROUND
Petty Patent application 56030/99 was filed by Cherie Leanne Tindale and John Francis Tindale (Tindale) on 22 October 1999. Subsequently, the application was sealed on 17 February 2000 as Petty Patent No. 716169.
On 16 January 2001 Tindale filed an application under section 69 for an extension of term of the patent, and on the same day Kerry Marcelline Scherini (Scherini) filed a notice under section 28 of the Patents Act 1990 ("matters affecting validity of petty patents"), with declarations and exhibits in support.
The Patentee chose not to file evidence in response.
The matter was heard in Canberra on 17 July 2001. The patentees chose not to appear in person or by phone, however, written submissions were lodged on their behalf by Mr Robert Wulff, patent attorney of Griffith Hack. Scherini was represented by Dr Mary Turonek, an associate of Lord & Company by telephone.
THE SPECIFICATION
The present invention relates to a paving system, in particular to a mould for forming a paving system. The terminology "paving system" and "paving element(s)" used throughout refers to any ground covering element that can be moulded and then laid over ground. This includes pavers, cobble stones, elongate elements etc.
Prior art paving systems that comprise integrated units, having a plurality of paving elements attached together are known. These are known to come in two types. The first, a system having an "inflexible link" between adjacent paving elements. These are said to suffer from a limited versatility due to the rigid link between the pavers. Secondly, it is known for paving systems to have a flexible link between adjacent paving elements. These are said however to involve complex manufacturing methods, including the need for press plates or push rods to hold the connecting flexible link in place during moulding of the paving elements. Accordingly a complex moulding apparatus is required, contributing to the economic expense.
The specification further states:
"The present invention in a first aspect provides a mould for forming a paving system having two or more paving elements, each connected to an adjacent element by a connector, the mould including two or more respective cavities, each for forming a paving element therein, with a given cavity being separated from an adjacent cavity by a wall, and with the wall having a recess therein that connects the cavity on one wall side to an adjacent cavity on the other wall side, and that extends into the wall from a free end of the wall;
wherein the recess includes a passage extending in from the free end to an enlarged region at a base thereof and into which region the connector is received during moulding.
In a second aspect the present invention provides a mould for forming a paving system having two or more paving elements, each connected to an adjacent element by a connector, the mould including two or more respective cavities, each for forming a paving element therein, with a given cavity being separated from an adjacent cavity be a wall, and with the wall having a recess therein that connects the cavity on one wall side to an adjacent cavity on the other wall side;
wherein the recess includes a region into which the connector is interferingly received for fastening against movement during moulding.
By providing a recess arrangement for holding the connector in the mould in this way, separate push rods or protrusions formed on a mould plate are not required, and thus the moulding operation can be substantially simplified.
The specification ends with three claims which read as follows:
1. A mould for forming a paving system having two or more paving elements, each connected to an adjacent element by a connector, each forming a paving element therein, with given cavity being separated from an adjacent cavity by a wall, and with the wall having a recess therein that connects the cavity on one wall side to an adjacent cavity on the other wall side;
wherein the recess includes a region into which the connector is interferingly received for fastening against movement during moulding; or
wherein the recess extends into the wall from a free end of the wall and includes a passage extending in from the free end to an enlarged region at a base thereof and into which region the connector is received during moulding.2. A mould as claimed in claim 1 wherein one or both sides of the wall adjacent to the recess deform as the connector is passed therebetween.
3. A mould as claimed in claim 1 or claim 2 wherein the wall sides of the recess are sufficiently close such that in use, with a connector positioned in the recess, a moulding material introduced into a given cavity to form a paving element is prevented from flowing to an adjacent cavity via the recess.
NOTICE UNDER S.28
Scherini in her notice asserts that :
"…Petty Patent 716169 in the name of and John Francis Tindale and Cherie Leanne Tindale is invalid.
The grounds for this assertion are as follows:
1 The claimed invention is not an invention as required by S18(1). The invention as claimed does not represent a manner of new manufacture.
2. The claimed invention is not novel. The invention as claimed has been prior published by US Patent 5615971.
3. The claimed invention does not involve an inventive step. The invention as claimed was obvious to one skilled in the art as of the priority date of the application, in light of the common general knowledge in the field.
4. The complete specification does not end with a single independent claim and not more than 2 dependent claims. The use of the work 'or' makes the scope of the main claim has the effect of creating two independent claims.
5. The claims are not clear and succinct. The use of the word 'or' makes the scope of the main claim unclear. Further the term 'interferingly received' is unclear."
EVIDENCE
The initial evidence filed in support of the section 28 notice consists of statutory declarations by:
Kerry Marcelline SCHERINI (with exhibits KMS-1 to KMS-3), and;
Chad Koji IKEDA (with exhibit CKI-1), salesman for Daisho (AUST) Pty Ltd, distributors of a product marketed as Carpet Stoneâ;
Barry Stephen NEWMAN (with exhibits BSN-1 and BSN-2), technical assistant at Lord & Company, patent attorneys.
Also lodged on the 4 July 2001 was a Statutory Declaration by Barry Stephen NEWMAN (including exhibit BSN-3) in order to correct a clerical error contained in the earlier Statutory Declaration lodged by Mr Newman.
Submissions
I shall refer to the submissions made by either party wherever necessary in my decision.
DECISION
The grounds persued at the hearing were novelty, inventive step, section 40/clarity. I note that the ground of the invention not being for a manner of new manufacture, S18(1), was not persued at the hearing. As a result, I shall not consider this issue in my decision.
Essential Features
Before considering the issues relating to those grounds, I shall first determine which features of the claimed invention that I consider to be essential.
Claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential (Catnic Components v Hill & Smith, [1982] RPC 183). A feature can be regarded as not essential however, if it does not materially effect the working of the invention.
Concentrating on claim 1, in my opinion the claim may be broken down into the following features, considered to be essential:
A mould for forming a paving system having two or more paving elements each connected to an adjacent element by a connector;
The mould includes two or more respective cavities, each forming a paving element therein, with given cavity being separated from an adjacent cavity be a wall;
The wall has a recess therein that connects the cavity on one wall side to an adjacent cavity on the other wall side;
(4)(a) The recess includes a region into which the connector is interferingly received for fastening against movement during moulding;
OR
(4)(b) The recess extends into the wall from a free end of the wall and includes a passage extending in from the free end to an enlarged region at a base thereof and into which region the connector is received during moulding.
Following the rules of construction and more specifically that words are to be given their plain meaning, (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478) it is clear to me the claim may be written to include two alternate constructions, that is one including feature (4)(a) to the exclusion of feature (4)(b), and visa versa for a second construction. I note also, that both of these essential features relate to the definition of the recess, one allowing a broad interpretation of what shape is meant by a recess, and the second appears a stricter interpretation of the shape implied by the recess.
Novelty
The basic test for anticipation is the " reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. What ever is essential to the invention must be read out of or gleaned from the prior publications."
US 5 615 971 - (KMS-3)
The present Petty Patent specification in the paragraph headed "Background Art" referred to US Patent 5 615 971 as disclosing a paving system having flexible links between adjacent paving elements. The informant contends the present invention is not novel in the light of this prior art document.
In considering whether or not the claimed invention is novel over US 5 615 971, I will first consider whether essential features (1) - (3) are disclosed, before considering in turn, the two alternate constructions of the claim afforded by the word "or" by incorporating feature (4)(a) or (4)(b) individually into the claim.
Disclosure of Essential Features (1) - (3)
The US specification at column three describes the manufacture of the paving elements being carried out thus:
"…in such a manner that a curable material is poured into a mould with cavities that correspond with the desired components in mutual arrangement, and between the cavities walls, while at desired heights deformable elongated linking elements passing the walls, are led through the cavities, that the curable material is at least partially cured and that subsequently the entirety is disengaged from the mould. Here it is preferably provided that in these walls slits have been made into which the linking elements are placed. It is now surprising that it is generally not difficult to cover the slits with loose small caps, but in particular that when using the elastic moulding material it is possible to press the cords into the slits and that, with the removal of the moulded ground covering element, it is easy to withdraw it from the mould in the direction of the slits."
In addition, figure 11d clearly shows a mould including three cavities for forming a paving element in each, each adjacent cavity being separated by a wall, the wall having a slit therein.
Consequently I believe essential features (1) - (3) listed above are disclosed in clear and unmistakable terms in this document.
Now, turning to essential feature (4)(a), which reads:
"the recess includes a region into which the connector is interferingly received for fastening against movement during moulding…"
Both parties made submissions with respect to the term "interferingly received" defined in the feature and subsequent disclosure in the cited document.
I believe the most pertinent of the Tindale submissions to be:
"This term means what it says, namely, the connector is received in the recess in an interfering manner. A skilled person in the art would understand the what is meant by "interferingly received", the term "interferingly" signifying interference, or an interference fit. We submit that the term does not require further clarification and would be well understood by such a skilled person".
In referring to the relevant passage of the US Patent listed above, Tindale then noted:
"It is noted that the passage goes onto say that "but in particular that when using elastic moulding material it is possible to press the cords into the slits". Whilst the use of the word "press" might imply some hindrance in terms of the placing of the cords in the slits, the word "press" only applies to the movement of the cords into the slits and not to their position during moulding. In the present invention, "the recess includes a region into which the connector is interferingly received for fastening against movement during moulding". There is simply no disclosure of this feature in US 5615971. The fact that the linking elements or cords of US 5657971 are not interferingly received is further supported by the passage…"with the removal of the moulded ground covering element, it is easy to with draw it from the mould in the direction of the slits" this easy of removal...implies that the cords or linking elements sit loosely in the mould at desired heights…".
In contrast, Scherini forwarded the view that:
"The construction of this term is not entirely straight forward because in this Art the term "interferingly received" is not well known. However,…it appears to refer to the requirement that the adjacent wall preferably deforms as the connector is passed there between and typically both sides deform. Thus, the connector is closely engaged by the deformed sides of the recess.
The term "interferingly received" appears to indicate that there is a degree of grip on the connector when it is received in the recess such as by deformation of the sides of the recess as discussed above.
Thus, in our submission, all of the features of claim 1 are clearly disclosed in the US Patent. The pressing of the connectors into the slits would correspond with the interpretation of "interferingly received" discussed above".
I will deal with the two issues at hand here in turn. That is, firstly determining what is meant by the term "interferingly received", and secondly determine if the term is subsequently disclosed in the cited document.
It is a well established principle that if an expression in a claim is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479).
In resorting to the specification for some clarification, one may find the following references at pages eight and nine:
"Typically the link recess is a hole 35 (or the like)…The link recess…can also include a formed passageway 36 extending downwardly from the end of the wall 37 and opening onto hole 35…typically the passageway is formed sufficiently narrowly such that, during subsequent moulding formation of a paving element, liquid paving material poured into the cavity does not flow through the passage…Most preferably the passageway is a narrow slit cut into the wall 30 and extending down to a previously formed hole 35. The hole 35 or bulb region 38 are both typically sized to receive a link or connector therethrough, preferably in a friction or interference fit to stop the link from sliding therewithin (eg. in the moulding operation).
Thus, the cord can either be press fitted down through each passage 36…or can be threaded through each hole 35, typically by hand…When push fitting the cord into the link recess, typically the passageway deforms at its side walls"
In the light of no evidence to the contrary, and no evidence to suggest what a skilled person would, or would not understand by the term, I am comfortable with the view provided by the specification. In particular, "interferingly received" appears to mean there exists a friction fit or interference fit to stop a link from sliding within a recess. Furthermore, from the specification it appears such an interference fit may be satisfied by pressing or push fitting cord (or other suitable link) into the recess of a deformable wall as described.
Turning back to the US patent document which as previously mentioned discloses "…it is preferably provided that in these walls slits have been made into which the linking elements are placed…in particular when using elastic moulding material it is possible to press the cords into the slits..". Clearly, in the light of the description given in the present petty patent, each slit maybe a recess, and the pressing of the cords into the slits provides for the connector to be interferingly received for fastening against movement during moulding.
I do not agree with the Tindale argument that the word "press" only applies to the movement of the cords into the slits and not to their position during moulding. As the informant was quick to point out, the Tindale specification uses the same language such as having "the cord press fitted down through each passage" and passageways as being "slits" and the like, to describe how a connector is interferingly received and fastened to avoid movement during moulding. The applicant then cannot expect to place a different interpretation on the same words to somehow imply that pressing the cord through a recess (slit) as per the US patent, now does not constitute an analogous fastening arrangement.
The applicant further argues that as US '971 lists the passage: "…with the removal of the moulded ground covering element, it is easy to withdraw it from the mould in the direction of the slits, this ease of removal...implies that the cords or linking elements sit loosely in the mould at desired heights…". I cannot agree with the view that ease of removal equates to the elements sitting loosely i.e. are not interferingly fitted. By way of example a biro lid may be considered to be "interferingly received" by the biro hull (due to the tapered fit), yet, although the lid may readily be removed, this does not imply the lid sits "loosely". Furthermore, I cannot see how having a cord through a slit in one deformable wall (as per US'971) is less "interferingly received" than having the same cord fastened to a like deformable wall using the same language to describe the fastening functionality.
As a result I find the essential feature (4)(a) clearly described in the US Patent, and consequently find that this document discloses all of the features (1) - (4)(a) of claim 1. Hence in my opinion, this construction of the claim fails the reverse infringement test and as such, is not novel.
The second construction of claim 1 is considered to include essential features (1)-(3), and feature (4)(b) which reads:
"the recess extends into the wall from a free end of the wall and includes a passage extending in from the free end to an enlarged region at a base thereof and into which region the connector is received during moulding."
In reviewing the relevant passages (highlighted previously) of the US Patent, the only disclosure of the construction of the recess in the walls, is one whereby the recess is described as a slit. There is no inference, yet alone "a clear and unmistakable direction" as per General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 that the wall recesses of US '971 are anything other than slits, and as a result I do not believe the feature (4)(b) to be present in the cited document. Consequently, I find this construction of the claim to be novel when applying the reverse infringement test.
In summary then, I find that although there appears to be some novel subject matter in a possible construction of the claim, there is a clear construction of the claim which fails the reverse infringement test, consequently rendering the entire claim not novel.
Claims 2 and 3:
Dealing with each of these claims in turn. Claim 2 defines:
"A mould as claimed in claim 1 wherein one or both sides of the wall adjacent to the recess deform as the connector is passed therebetween."
I believe the most relevant passage of US'971 reads "in particular when using elastic moulding material it is possible to press the cords into the slits." from column three.
In my opinion the use of an elastic material inherently ensures there is an element of "deformability" to the walls of the mould. Hence due to this deformability afforded by the elastic material, I believe one may pass (or press) a connector into the recesses provided. Consequently I consider the feature of claim two to be disclosed in the cited document rendering the claim not novel.
Claim 3 defines:
"A mould as claimed in claim 1 or claim 2 wherein the wall sides of the recess are sufficiently close such that in use, with a connector positioned in the recess, a moulding material introduced into a given cavity to form a paving element is prevented from flowing to an adjacent cavity via the recess."
Scherini in her submissions direct me to the following reference in the US Patent: "…when the elastic material is well chosen, hardly any irregularities at the cut occur."
I do not believe this statement provides a "clear and unmistakable direction" (General Tire & Rubber Co (supra)) that the wall sides of the recess are sufficiently close to prevent the egress of a moulding material as claimed. Furthermore, I am inclined to side with the Tindale submissions, that the US Patent teaches away from such a construction. This is highlighted by the disclosure "it is generally not difficult to cover the slits with loose small caps" made in the patent, suggesting these caps maybe there to prevent the spill of material (I note there is no reference to the caps in the remainder of the specification). In any case there is no clear and unmistakable disclosure that the cut slit is sufficiently close to prevent the outflow of paving material. Thus, I believe claim 3 to be novel when applying the reverse infringement test.
Inventive Step
The assertion of invalidity states that the invention claimed was obvious to one skilled in the art as of the priority date of the application, in the light of the common general knowledge in the field.
Section 7(2) provides a definition of inventive step for the purposes of the Patents Act.
"(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
[The prior art base is defined in Schedule 1 of the Act.]
It is clear that inventive step is a matter that is presumed, unless it is demonstrated that the invention is obvious. The assessment of obviousness can be made against the common general knowledge alone, or the common general knowledge together with a document (or act) of the type covered by section 7(3). Section 7(3) documents must satisfy several requirements: the document must be publicly available inside or outside Australia (see the definition of "prior art base"); and the document would have reasonably been expected to have been ascertained, understood and regarded as relevant.
With regard to inventive step, the informant directed me to Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316,which has set out the threshold requirement for inventiveness.
I consider the following quote from para 30 of the Bristol-Myers (supra) judgement is most relevant in this case:
"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described, is in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms maybe taken as an admission to that effect."
Scherini then submitted that as US Patent 5 615 971 forms part of the admitted prior art of the specification, it is clearly relevant when considering the inventiveness of claim 1 at least. I am in agreement with this submission.
Scherini continued by stating that any slight variation in the construction of the mould of Petty Patent 716169 from the Prior Art could easily be ascertained by a skilled addressee in Australia. They submitted the recitation of feature (4)(b), where the passage has an enlarged region at the base thereof, would readily be ascertained by the skilled addressee and as such not be inventive over the common general knowledge because to provide an enlarged lower end for receipt of a linking element is a feature which would occur to anyone of reasonable skill. No evidence was provided by Scherini to support this assertion.
In the light of a lack of any evidence provided in the submission as to what the state of the common general knowledge in the art is, or more particularly, as to what may be contemplated by the skilled person, I am not persuaded by this argument. In fact, whilst not denying or agreeing that Kerry Marcelline Scherini is a skilled addressee or otherwise, I note that in paragraph six of her declaration she states "It appeared to me that the most straight forward measure to create these cavities was to use scissors to form slits in the wall.". There is nothing further in the declaration to indicate she envisages a possibility that the recesses may be anything other than slits. Furthermore I am in some doubt that to provide an enlarged region at the end of a passage would be immediately obvious to a skilled addressee, as the enlarging of the base region would in the first instance appear to result in the possibility of more moulding material escaping into an adjacent cavity.
Consequently I believe the claim to involve an inventive step according to the definition set out in section 7(2) of the Act.
Section 40
At the hearing, the informant asserted that the main claim through the use of the word "or" covered two inventions and as such was unclear. I have given my views on this matter earlier in my decision when construing the claims to determine which features are essential. I see no reason to elaborate on that earlier explanation, other than to conclude be saying I do not believe the use of the word "or" makes the scope of the claim unclear, it merely allows two alternate but related constructions.
Similarly I have expressed my views in regard to the term "interferingly received" when construing the claims earlier. This phrase was also alleged to lack clarity by the informant. In short, I do not believe the phrase to have any extraordinary meaning, that would lack clarity to the skilled person addressing the specification as a whole.
CONCLUSION
At present, claim 1 encompasses two alternate configurations of the recess brought about by the use of the word "or" in defining the features of the claim. In reviewing these alternate constructions against the cited art, it is apparent that the claim includes an essential feature (relating to a specific shape of the recess) that may be deemed to be novel. However, as the claim clearly allows for a construction which excludes that feature, but which explicitly includes a broader generic interpretation of the word "recess" the claim is not considered to satisfy the reverse infringement test when compared with US Patent 5651971. As a result the claim is deemed to fail the reverse infringement test and is not considered to be novel.
Hence the informant, Scherini has been successful in her objections to the validity of the petty patent on this ground.
On the grounds of obviousness, in light of a lack of evidence as to what constitutes common general knowledge in the field and subsequently what the skilled addressee may contemplate as an obvious variation to known slit type recesses, the informant fails in her objection on this ground.
The use of the words "or" and "inteferingly engaged" were not considered to render the claims unclear.
Whilst the informant has been successful in her objection, I believe there remains patentable subject matter, and consequently I give the applicant sixty days to file amendments in order to overcome the issues raised at this hearing.
COSTS
Section 210 and regulation 22.8 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.
It is a well established principle that costs follow the event. I see no reason before me to vary this practice and as the informant, Scherini, was successful in her objection under section 28, I award costs against the patentee, Tindale.
Lars Koch
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack, Sydney.
Patent attorneys for the informant : Lord & Company, Perth.
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