Corks and Seals Pty Limited v Premium Cork & Timber Pty Limited

[1999] APO 66

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 685380 in the name of Corks and Seals Pty Limited

Title:          Cork Tile Application

Action:          Application for extension of term under Section 69 and Notice under section 28 by Premium Cork & Timber Pty Limited.

Decision:          Issued.

Abstract

The invention as defined by claim 1 lacked novelty.  Claims 2 and 3 lacked an inventive step.  The features defined by claim 1 were found to be common general knowledge in the art in Australia.

The claims satisfied Section 40 requirements and the invention defined by the claims was directed to a manner of manufacture.

The application for an extension of term was refused, as the specification contained no novelty conferring features.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 685380 by Corks and Seals Pty Limited for an extension of term under section 69 and Notice under section 28 by Premium Cork & Timber Pty Limited.

BACKGROUND

Petty Patent application 30135/97 was filed on 24 July 1997 as a divisional of Standard Patent application 16560/97 that was associated with Provisional Patent application PN 9093 filed 3 March 1996.  The patent request form indicated that the application was to be associated with the same Provisional Patent application.  On the 29 July 1997, the applicant requested publication of the petty patent specification which subsequently became open to public inspection on 23 October 1997.  An examiner’s first report was issued on 1 September 1997.  On 17 September 1997, the applicant filed a request to amend both the specification and the patent request form.  The amendment of the patent request was to remove the association with provisional PN 9093.  The application was accepted on 24 November 1997. 

On 20 October 1998, the patentee sought an extension of the term of the petty patent.  On 15 December 1998, the informant, Premium Cork & Timber Pty Ltd filed a notice under section 28.  The notice was accompanied with three statutory declarations and accompanying exhibits.

On 1 April 1999, the patentee advised that it would not be filing any evidence in response.

The matter was set down for a hearing in Canberra on 19 July 1999.  Mr Tatlock, Patent Attorney from A. Tatlock & Associates, represented the patentee.  Mr Tatlock advised that he would not be attending the hearing but would file written submissions prior to the hearing date.  Mr Tatlock subsequently filed written submissions on 15 and 16 July 1999.  Mr Russell Davies, Patent Attorney from Baldwin Shelston Waters, appeared on behalf of the informant.  Mr Colin MacGraw, Director of Premium Cork & Timber Pty Ltd, also attended.

THE INVENTION

The invention relates to a method of laying down cork tiles.

The method of the admitted prior art involved:

“…laying down an adhesive, placing tiles on the adhesive, waiting for the adhesive to dry, sanding the laid tiles, coating them with an appropriate polymer coating, waiting for the coating to dry and then re-sanding and applying another coating of a polymer coating.”

The process of sanding and coating would be repeated a minimum number of three times.  The process was time consuming and produced a lot of dust.  The solution to these problems was to devise a method whereby cork tiles can be laid and be ready to be walked upon within a day and with there being no need for any sanding of the tiles in situ. 

The method involves laying a pre-prepared cork tile that has been sanded and coated a number of times with the tile edges being bevelled.  The method further involves laying the tile into position on the surface to be tiled and retaining the tile by adhesive.  The tile is then coated singularly or a number of times with a finishing coating.

The specification also indicates that the invention relates to a pre-prepared cork tile; i.e. a tile that has been sanded and coated a number of times.  The specification indicates that contact adhesive may be used which can be placed on the underside of the cork tile while the tile is being pre-prepared.  Alternatively, a latex adhesive may be used.  Polyurethane may be used to coat the tile during its pre-preparation or it may be used as a finishing coating.

The specification further states that:

“The invention essentially consists of a cork tile being prepared for the laying process in which the tile is coated and then sanded a plurality of times, is bevelled, with the tile preferably having a layer of contact adhesive placed on its underside and is finally laid down on a surface covered with an adhesive and thus securing the tile in position, so that once the adhesive dries, the coating is applied and once dry, the tile laying process is essentially complete.”

It is preferred that the bevel be only a few millimetres:

“so that contact with the adjacent tiles results in a upper surface which meets the smoothness requirement of the floor and any small recesses of the adjoining edge of the bevelled tile are completely sealed with the coating.”

The small bevel allows the recesses formed between the adjoining tile edges to be completely filled.

The specification, in a passage added during prosecution, states that the pre-prepared cork tile is bevelled at the edge adjoining the top finished surface, the edge adjoining the under surface of the tile, or may be bevelled on both edges.

Even though the bevelling of the pre-prepared cork tile appears as one of the features of the invention, the specification makes it plain that bevelling of the pre-prepared tile is preferred.  An unbevelled pre-prepared cork tile can still be used but it may not meet the smoothness requirements of the surface upon which it is laid.  The specification states:

“Though it is preferred that the pre-prepared cork tile be bevelled, to better meet the smoothness requirements of the surface upon which it is laid, it is further to be appreciated that an unbevelled pre-prepared cork tile, may be laid upon a surface however, the smoothness requirements may not be totally met by such procedure.”

The presence of the bevel also makes it easier to replace worn or damaged tiles without having to replace the entire cork covered area.

The specification ends with three claims.  These claims are as follows:

“1. A method of laying cork tiles, said cork tiles being pre-prepared in that the cork tile is coated and sanded with said tile edges being bevelled, and the undersurface of said tile having a coating of a contact adhesive; each tile being laid into position on a prepared surface, the said tiles then being coated with a finishing coating.

2. A method of laying cork tiles as claimed in claim 1 wherein the tile is bevelled on the edge adjoining the under surface of said tile, after it has been coated and sanded.

3. A method of laying cork tiles as claimed in claim 2 wherein the surface upon which the cork tile is laid is covered with a contact adhesive and the finishing coating applied after the tile has been positioned is either an acrylic or polyurethane coating.”

Claim 1 is identical to a consistory clause.  No drawings accompanied the specification.

SECTION 40

During the course of my decision it became apparent that the construction of claim 1 presented some difficulties.  From my reading of the claim, it is clear that the claim is not merely directed to a method of laying tiles but is also directed to a pre-prepared tile.  The pre-prepared tile has been coated, sanded, and bevelled and has a coating of contact adhesive on its undersurface.  Thus the method relates to the laying of a specific tile (the pre-prepared tile) and not the laying of any tile.  The claim further defines that the tile is laid into position on the prepared surface.  The tile is then coated with a finishing coating.

There is some difficulty with the characterisation of the pre-prepared tile.  This issue becomes very important when I consider the question of whether the claims are novel.  The claim defines a number of operations that must be carried out on the tile; i.e. coating, sanding, bevelling, and applying a contact adhesive.  It is not readily apparent from the words in the claim whether there is a specific order to these steps.  The major difficulty is whether the tile is bevelled before coating and sanding or after the coating and sanding steps have been carried out.  The claim is non-specific on this point.

The specification in a passage previously quoted refers to the essential nature of the invention.  This states that “the tile is coated and then sanded a plurality of times, is bevelled”.  The consistory statement states that the “cork tile is coated and sanded with said tile edges being bevelled”.  The former statement implies that bevelling occurs after the coating and sanding steps have been completed, whereas the latter statement is ambivalent on when bevelling occurs.  Hence, the description is also non-specific on this point.

However, if reference is made to claim 2, it is obvious that claim 1 encompasses both constructions as claim 2 defines the bevelling as occurring after the coating and sanding process have been completed.

Is the bevel essential?

The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, (1982) RPC 183 at page 228, as follows:

“... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger (1969) RPC 367 all assume that a claim may include an inessential feature.”

Consequently, the presence of a feature in a claim is not conclusive proof that it is essential.  If it is evident from a reading of the specification, either explicitly or by implication, that a particular feature is essential to the way the invention works, then the feature is essential.  Conversely, if it is readily apparent that a feature would not materially affect the way the invention works, then the feature will be considered inessential unless it is clear that from a reading of the claim that the draftsman intended that an inessential feature is to be treated as essential.

Conversely, if on a reading of the specification no intention can be ascertained, then the feature may be inessential.  For example, in the case Ryan v Lum, 14 IPR 513, which concerned a method of cleaning silver involving a sheet of aluminium with a regular pattern of holes, the court observed:

"Neither in the specification nor anywhere else is it claimed that it is the holes themselves which are important in the process. Indeed, the fact that the specification is so general about the number and types of holes that are needed negates to my mind the view that the holes are of great significance to this invention."

If the specification under consideration contains specific statements of prior art and/or the problem to be overcome, these statements may be of assistance when ascertaining the essential features: See for example the case of Sebel Properties v Fagaleo Pty Ltd, 14 IPR 524.

In applying these principles to the case at hand, I note that the bevel is described as preferred in that it promotes the production of a smooth coated surface.  I also note that it is not directly related to overcoming the stated problems of the prior art.  In the claim, the bevel is defined as one of the characterising features of the pre-prepared tile.  Mr Tatlock considered it to be an essential feature.  Does the bevel materially affect the way the claimed invention works?  I think the answer is clearly in the affirmative.  While, the presence or absence of the bevel is not critical to the success of the invention in overcoming the problems of the prior art, it offers the advantage of meeting the smoothness requirements of the surface and assists in replacing worn or damaged tiles.  Hence the bevel is an essential feature of the claimed invention.

Alternatively, even if the feature of the bevel is not considered to be essential to the working of the claimed invention, it can still be an essential feature.  That much is clear from the second generalisation expressed in Catnic Components v Hill and Smith Ltd (supra).  If the patentee intended that the bevel should delimit its monopoly claims, then that feature will be considered an essential feature of the invention.  From my reading of the specification and claims, the feature of the bevel was intended by the patentee to be an essential feature of the invention.  This is a fine point.  I came to this conclusion because of the number of references in the specification that include the feature of the bevel as being one of the features of the invention.  Hence, the bevel is an essential feature of the claimed invention.

Is the contact adhesive essential?

The use of a contact adhesive is described in the specification as being preferred, yet it would appear to be essential to the invention defined by claim 1.  The specification clearly states that a latex adhesive can be used as an alternative to a contact adhesive.  There appears to be no reason why it would be considered essential for the adhesive to be a contact adhesive.  The nature of the adhesive is immaterial.  Therefore the use of a contact adhesive in the pre-prepared tile is not an essential feature of the defined invention.

Any other essential features?

In Mr Tatlock’s first submission, he presented an argument about the need to produce a smooth coated surface.  He stated:

“The invention relates to a tiled floor which presents a smooth coated surface.  This is inherent from the discussion at the top of page 3 of the specification.  The invention is adapted to provide a method of preparing such a surface which can be used in a relatively short time.

If one considers page 6 of the specification, it is clear that there is a very small bevel so that the distortion which occurs when tiles are abutted ‘results in a (sic) upper surface which meets the smoothness requirement of the floor and any small recesses of the adjoining edge of the bevelled tile are completely sealed with the coating.’  Thus, the concept of the invention provides, after the tiles have been laid, a smooth continuous surface rather than one having marked delineations between the tiles as is the case in the demonstrated material lodged on behalf of the Objector under S28.”

There is clearly no mention in the claims of any dimension for the bevel.  There is no characterisation in the claims that define a method of laying tiles without marked delineations.  Although the dimensions of the bevel and/or the production of a smooth continuous tiled surface having an absence of marked delineations could be essential features of the claimed invention, the specification only regards them as preferred features.  There is no implication that these features are implicit in the construction of any one or more of the claims of the defined invention.  Indeed, the absence of delineations could be seen to be more of an object of the invention rather than a feature of the invention.

Referring to Mr Tatlock’s submission, I note that the top of page 3 of the specification relates to the discussion of the prior art and that the relevant part of page 6 relates to a discussion of the dimensions of the bevel.  But, there is no reference in either page 3 or 6 on the issue of marked delineations.  There is no discussion in the specification that inter-relates the issue of marked delineations with the issue of whether the prior art suffers from this defect.

Mr Tatlock withdrew his first submission on the requirement to produce a smooth coated surface.  He stated in his second submission:

“I was of the understanding that the bevel, as used by the applicant, permitted the finished tiles to be a flush surface and I stressed this in the submissions but I am told that it is incorrect.

The basic difference between what is done by the patentee and what is done by the Objector lies in the formation and coating of the bevels.”

In his second written submission, Mr Tatlock clearly intended that the formation of the bevel after the sanding and coating steps have been completed is an essential feature of the invention. Although the bevel is an essential feature, there is no suggestion that bevelling the tile either before coating and sanding or after coating and sanding is essential.  There is simply no indication in the specification of any benefit either way.  No intention can be ascertained.  The only reference to the ordering of the steps appears in claim 2 but this does not assist me in uncovering an intention for the ordering of the steps. 

Mr Tatlock also referred to the need for some of the final coating to be absorbed into the raw edge of the tile.  While this would give some rationale to the step of bevelling the edge of the tile after the steps of sanding and coating have been completed, there is not a hint of this in the specification.  Accordingly, I am of the view that the ordering of these steps is not an essential feature of the invention.

Amended specification

The specification was amended.  The only issue raised by the informant related to the amendment to claim 2.

As a result of an examiner’s objection, the specification was amended with the inclusion of the following paragraph.

“The pre-prepared cork tile is preferably bevelled on the edge adjoining the top finished surface though it may be bevelled on the edge adjoining the under surface of the tile, or it may even be bevelled on both edges.”

Claim 2 was also amended.

“2. A method of laying cork tiles as claimed in claim 1 wherein the tile is bevelled on the edge adjoining the under surface of said tile, after it has been coated and sanded.”

[Amendments are in Italics]

The informant alleged that claim 2 was not fairly based on the matter described in the specification.  The penultimate paragraph to the amendment to the specification reads:

“It is a preferred embodiment of the invention, that the pre-prepared cork tile is bevelled only a few millimetres so that contact with the adjacent tile results in a upper surface which meets the smoothness requirement of the floor and any small recesses of the adjoining edge bevelled tile are completely sealed with the coating.”

From this statement, Mr Davies inferred that the specification disclosed:

“the feature of the pre-prepared cork tile being bevelled on its upper edge, in contrast to the requirement for the tile to be bevelled on the edge adjoining the under surface of the tile as specified in claim 2.”

In its statement of grounds and particulars, the informant alleged that claim 2 was not fairly based on the specification.  The point is not crucial to this opposition.  On the one hand, the specification is silent on why the tile should be bevelled on its under surface.  On the other hand, the specification was amended and claim 2 is consistent with the amended description.  There are no internal inconsistencies arising out of the amendment.  In my view the claim is fairly based.  The real issue behind the opponent’s objection may lie with the allowability of the amendment.  However, as there is no issue regarding priority dates, I do not need to consider the allowability of the amendment to claim 2.

Mr Davies argued that bevelling the tile on its under surface not make any sense.  In fact, he suggested that claim 2 should make reference to the upper surface of the tile instead of making reference to the under surface of the tile.  This was based upon the construction of claim 1 wherein the under surface of the tile is coated with adhesive.  Although I can understand the point being made by Mr Davies, there is no lack of clarity in claim 2.  Furthermore, it seems to me that the issue raised by Mr Davies is more a question of utility rather than a question of fair basis.

The only additional issue raised by claim 2 lies in its reference to the ordering of the steps.  As I have previously stated, there is no specific reference in the description to bevelling occurring after the steps of sanding and coating have been completed.  Prima facie, this suggests that claim 2 lacks fairly based.  However, I am not inclined to take the view that claim 2 is not fairly based because there is at least some support for it in the description.  In particular, the statement that “the tile is coated and then sanded a plurality of times, is bevelled” provides some support for the characterisation in claim 2.  Accordingly, claim 2 is fairly based.

No section 40 issues arise in relation to claim 3.

In conclusion, the claims are clear, fairly based and define the invention described.

NOVELTY  (PRIOR USE)

The informant submitted that the invention as defined in the specification lacked novelty over the information detailed in the various declarations and accompanying exhibits.

The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aiken J stated:

“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: See e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.

There must be clear and unmistakeable directions to do what the patentee has done.  See General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486.

“if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim.”

Thus:

“To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”

It follows that a prior disclosure will only invalidate a claim if, after having read it, the skilled addressee would rather than could have produced all the essential integers of the claim:

“Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent. The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation.  Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the specifications contain clear and unmistakable directions so to use it.  It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own.”

“If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated.”

A disclosure must be “for the purposes of practical utility” (Hill v Evans (1862) 6 LT 90), the same as the later claim. It follows that even if the skilled addressee is “clearly and unmistakably” directed to the invention from the prior art, there has to be sufficient disclosure in the prior art to enable the skilled addressee to put the invention into practice. That is, the disclosure must be an ‘enabling’ disclosure.

In Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 549, it was stated that:

“The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication.”

Similarly, in Acme Bedstead Co Ltd v Newlands Bros Ltd, (1937) 58 CLR 689, Dixon J stated the:

“well-settled rule that a prior publication, giving information that does not become part of the common knowledge, does not invalidate a subsequent patent unless it supplies enough information to enable a person of proper skill in the art to produce the same mechanical device or appliance or carry out the process claimed in the later specification.”

Some of the exhibits to be considered are photographs of a tiled floor.  The issue of a photograph being used as anticipation was considered in Van der Lely NV v Bamfords Ltd, (1963) RPC 61, where it was stated:

“There is no doubt that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language.  It was argued that the same applied to a photograph.  I do not think so... The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence.  Where the evidence is contradictory, the judge must decide.  But the judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance ... if the photograph is to be held to prove anticipation it must be possible for that man to work from the photograph, and, without himself [sic] adding a scintilla of invention ... to produce a workable machine which incorporates all the integers in the appellants' claim 1.”

Mr Davies pointed out that the standard of proof required to establish prior use was on the balance of probabilities: Re Seiller's Application [1970] RPC 103. In this case at page 106, Graham J. stated:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

These comments were approved in ReDunlop Holdings Limited's Application [1979] RPC 523 at 548. Furthermore Waller, L.J. said:

“The opponent's evidence, being unchallenged and uncontroverted, must be accepted at face value.”

With these authorities in mind, I will now consider the evidence.

EVIDENCE

• Statutory declaration filed by Colin MacGraw accompanied with exhibits CM-1 to CM-5.  Exhibit CM1 is a promotional brochure for the “Country Cork tile” range.  Annex CM2 is a trade price list for the informant Company dated 1 April 1985.  Exhibit CM3 contains further trade price lists dated 16 November 1987 and 9 May 1988.  Exhibit CM4 is a copy of the company’s brochure of the “Country Cork” and “Premium” range.  In exhibit CM-5, photographs of “pre-sealed” bevelled cork tiles with adhesive backing that were laid at Mr MacGraw’s house in 1994 are shown.

• Statutory declaration filed by Craig Gold accompanied with exhibit CG-1.  Mr Gold is a self-employed tile layer of 15 years experience.  Exhibit CG-1 is a photograph of tiles laid at Colin MacGraw’s home in 1994.

• Statutory declaration filed by James Stanley Wickenden accompanied with annexes “A” and “B”.  Mr Wickenden was a director of Tayweld Pty Limited trading as “The Cork Stop”.  Annex “A” is a copy of the business extract for the “The Cork Stop” and company name extract for Tayweld Pty Limited.  Annex “B” is a copy of the granted Petty Patent.

Colin MacGraw declaration

Mr MacGraw is a director of the Informant Company, Premium Cork & Timber Pty Ltd.  Mr MacGraw has worked in the tile industry since 1972.  In 1981, Premium Cork manufactured and sold “pre-sealed” cork tiles in Australia.  He attested that these tiles were coated and sanded prior to sale with a finishing coating being applied after they were laid and from 1985, the company marketed “pre-sealed” cork tiles with bevelled edges.  Mr MacGraw stated that:

“The edges of these pre-sealed tiles are bevelled to reduce the lipping once laid and since 1985 the bevelling of the tile edges has been done after each tile has been coated and sanded.”

Mr Davies asserted that the purpose of bevelling the tiles is to provide a smooth junction between adjacent tiles.  Mr Davies stated:

“By having a slight bevelling feature on the upper surface of the tile there is a smooth transition between adjacent tiles”.

The bevelling was done after the process of sanding and coating was completed.  After the tiles were laid, a final coating of polyurethane may be applied.  These tiles also have a pre-applied adhesive backing.

Mr MacGraw stated that adhesive backed tiles were produced in Australia 25 years ago by a company called Grelm Pty Ltd and have been in common use in the industry in NSW.  He further asserted that adhesive backed tiles have been manufactured and sold in NSW by his company and others.

Exhibit “CM1”

Exhibit “CM1” is a brochure of the “Country Cork” range.  Mr MacGraw stated that brochures of this type were distributed throughout Australia during 1987 to 1990 and that the “Country Cork” tile range was sold from at least 1985.  Mr MacGraw described this range as “pre-sealed bevelled tiles with adhesive backing”.  The brochure illustrated plain and chamfered tiles.  The illustrated chamfered tiles showed marked delineations between adjacent tiles.  Mr Davies explained that the bevelling of the tiles gave rise to the delineations between adjacent tiles.  The presence of the bevel eliminates the possibility of kicking the tile if one tile is fractionally higher than the other.   The bevel reduces lipping of the tiles.

Exhibit “CM2”

Exhibit “CM2” is a copy of the trade price list for Premium Cork Imports Pty Ltd dated 1 April 1985.  On page 4 of the price list “Country Cork” chamfered tiles 300mm X 300mm are listed.

Exhibit “CM3”

Exhibit “CM3”are further trade price lists 16 November 1987 and 9 May 1988 for Premium Cork Imports Pty Ltd.  In relation to these lists Mr MacGraw attested that:

“I observe that page 4 of said Trade price lists refer to the Country Cork tile product and in particular, “chamfered 300mm X 300mm natural and primed tiles”.  “Primed” tiles are the same as “pre-sealed” tiles and like “pre-sealed” tiles, they are tiles which have, at all times, been coated with a polyurethane or an acrylic coating and sanded prior to sale.  As with all my company’s pre-sealed bevelled tiles, the edges of the “chamfered 300mm X 300mm natural and primed tiles”, referred to in the said trade price lists, have always been bevelled following the coating and sanding of the tiles.  Like “pre-sealed” tiles, a final polyurethane coating needs to be applied to the “primed” tiles following installation and no further sanding is required.”

Mr MacGraw continued in his declaration and confirmed that:

…“ ‘primed’ Country Cork Tiles of the type referred to in the said trade price lists have always had pre-applied adhesive backing and these tiles have been sold by my company and laid in Australia from at least as early as the dates indicated on the respective trade price lists.”

Exhibit “CM4”

Exhibit “CM4” is another copy of the Company’s brochure that referred to both the “Country Cork” range and the “Premium tile”.  These brochures were distributed throughout Australia from as early as 1992.  These tiles were either a “pre-sealed” or a natural tile.

Exhibit “CM5”

Exhibit “CM5” contains photographs of the tiles laid at Mr MacGraw’s house in 1994.  The declaration stated that these tiles were the company’s “pre-sealed” bevelled cork tiles with adhesive backing.  The photographs disclosed a cork-tiled floor.  The tiling of Mr MacGraw’s house in 1994 is the subject of further evidence served by Craig Gold.  Mr Davies submitted that the evidence of Mr Gold would corroborate the evidence of Mr MacGraw.

Craig Gold Declaration

On the basis of his knowledge and experience, Mr Gold attested that “the pre-prepared cork tiles coated and sanded cork tiles with bevelled edges and contact adhesive on their undersurfaces have been sold and used in Australian for at least 10 years.”  He further attested that the method of laying the pre-prepared tiles was also known in Australia and used for at least 10 years.  In support of his belief, Mr Gold attested to laying tiles at the home of Colin MacGraw during 1994.  A number of photographs were annexed to his declaration.  In Mr Gold’s recollection that the tiles laid at Colin MacGraw’s home in 1994 were the pre-prepared tiles:

“…being cork tiles that had already been coated and sanded.  In addition the tiles had pre-existing contact adhesive applied to their undersurfaces and had bevelled side edges.”

After the tiles were laid a finishing coating of polyurethane was applied.

In my view, Mr Gold is an independent witness who fully corroborates the evidence of Mr MacGraw.

James Stanley Wickenden Declaration

Mr Wickenden stated that he was a director of Tayweld Pty Ltd that traded as “The Cork Stop”.  Mr Wickenden stated he worked in the cork tile industry from 1979 to the present time.  Mr Wickenden attested that Premium Cork & Timber Pty Limited have sold cork tiles with bevelled edges for at least 13 years.  He recalled that some of the tiles were called “Country Cork” and were pre-sanded and pre-coated and that some of these tiles had adhesive backing and were bevelled.

Mr Wickenden is another independent witness who further corroborated the evidence of previous declarants.

On the basis of the declarants’ evidence, Mr Davies submitted that pre-prepared cork tiles with bevelled edges and with contact adhesive on its under surface were well known in Australia before the priority date of the claims.  He also submitted that the defined method of laying cork tiles was also well known and used in Australia.

Submissions by the patentee

In his first written submission, Mr Tatlock conceded that the evidence of the informant showed in general terms “the use of bevelled edge tiles which may have been pre-coated”.  However, Mr Tatlock disagreed that it showed that the method of the invention or the result of the method of the invention. 

Mr Tatlock was also prepared to acknowledge the availability of the tiles produced by the informant.

“At the present time, the patentee does not argue as to the availability of the Country Cork Tile range but states that the Country Cork range does not show the use of the method of the invention of the Petty Patent.”

Mr Tatlock, in his first submission stated that demarcation lines (i.e. marked delineations) are formed between the tiles laid by the patentee and he suggested that this distinguished the informant’s tiles from those of the patentee.  As previously mentioned this aspect was not defined in the claims and is not relevant to the present discussion.

Mr Tatlock in his first submission also invited me to distinguish between the ‘chamfer’ of the “Country Cork” tile range and the ‘bevel’ of the current invention.  Specifically, Mr Tatlock argued that the presence of delineations between the tiles as illustrated in the brochure and in the photographs gave rise to a gap between the tiles, which has a “width and depth which are very obvious to the eye.”  It was further argued that this distinguished the ‘chamfer’ of the prior art from the ‘bevel’ of the present invention.  However, there is nothing in the claims that define this result.  I am unaware of any difference in meaning between a ‘chamfer’ and a ‘bevel’.  I note that the informant in its evidence used these terms interchangeably. 

The essence of Mr Tatlock’s second submission is that the tile is bevelled after the coating and sanding steps have been completed.  Mr Tatlock abandoned his first submission and stated the following:

“I have been instructed that the Objector’s tiles are bevelled before the tile is coated and then the surface of the tile and the bevel are coated.  With the patentee’s tile, the bevelling occurs after the tile has been coated and so this presents a raw edge.”

Mr Tatlock has rejected the argument that the difference between the tiles as defined and the evidence lay with the delineation between tiles.  The difference pointed out by Mr Tatlock in his second submission appears to be directly answered by the informant in Exhibit CM3 to the principle declaration of Mr MacGraw.  This paragraph which has been previously quoted states that the tiles have “always been bevelled following the coating and sanding of the tiles.”

In his second submission, Mr Tatlock stated:

“After the tiles are laid and the final coating is applied this tends to be absorbed into the raw edge of the patentee’s tiles whereas it tends to lie in the channel between adjacent tiles in the Objector’s tiles when the floor is to be again coated at a later date because of wear, this can be readily done with the patentee’s instructions whereas with the Objector’s construction, where there has already been a build up of material this is difficult to do and, in some cases it is necessary to actually excise out the material from the groove before the coating could take place.”

This statement is uncorroborated.  There is no support in the specification.  During the hearing, Mr MacGraw commented that Mr Tatlock was incorrect and that there would be no absorption of the coating into the raw edge.  In the absence of corroboration, I am not inclined to place too much weight on Mr Tatlock’s statement.

In the specification, it was stated that:

“…any small recesses of the adjoining edge bevelled tile are completely sealed with the coating.”

and

“The coating may be applied by means of a roller and the edges gone over with a brush so that once this coating dries, the cork tilling is essentially complete.”

These appear to be the only statements in the specification that could support Mr Tatlock’s submissions on delineations and absorption of the coating.  However, in my view, these references do not give a reasonable basis for Mr Tatlock’s assertions.  The references in the specification, in the absence of evidence, are too vague to provide support for these submissions. 

Conclusion on Novelty

On the basis of the evidence of Mr MacGraw and the corroboration of that evidence received from Mr Gold and Mr Wickenden, I conclude that the method of laying a pre-prepared tile is well known in the art in Australia.  The evidence offered by the informant is credible and probative.  Two independent witnesses have corroborated the evidence of the main declarant.  On the balance of probabilities, the informant has established its case.  Accordingly, I find that the invention as defined by claim 1 is not novel.  Claim 2 is novel as the feature of the tile being bevelled on its under surface is not disclosed in the evidence.

Mr Tatlock initially suggested that the dimensions of the bevel and the production of a continuous smooth coated surface confer novelty.  But, the information presented by the informant in the evidence of Mr MacGraw suggested that reduced lipping would give rise to a smooth surface.  Thus, with the chamfer of the prior art giving rise to the same benefit as the bevel of the current patent, I am unable to locate any novelty conferring feature in the specification.

Inventive step

Mr Davies argued that the evidence demonstrated that the method of laying a pre-prepared tile and a pre-prepared tile itself were common general knowledge in Australia before the priority date.  Specifically, the evidence of Mr MacGraw that was corroborated by independent witnesses established that the invention as defined by claim 1 was common general knowledge in the art in Australia.  Furthermore, Mr Tatlock in his first submission acknowledged the availability of the “Country Cork” range.  The evidence indicates that the “Country Cork” range was marketed from 1985 to at least 1994 when the tiles were laid at Mr MacGraw’s home.  Again the evidence is credible and probative.  Therefore, the invention as defined by claim 1 lacks an inventive step.

In addition, claim 2 lacks an inventive step as the feature of bevelling of the tile on its undersurface can simply be seen as an alternative to bevelling of the tile on its upper surface.  The specification did not suggest that bevelling on the undersurface presented any benefits over that of bevelling on the upper surface of the tile. 

Claim 3, which is appended to claim 2, also lacks an inventive step as the features defined in this claim are disclosed in the evidence of Mr MacGraw.

MANNER OF MANUFACTURE

Mr Davies alleged that the defined invention did not possess the “threshold of newness” as required by the decision of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449.

Mr Davies also suggested that the “threshold test” was not limited to statements made only in the specification and therefore evidence that established lack of novelty or lack of inventive step for any or all of the claims also established that the “threshold test” has not been passed.  These issues were considered in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243 where the majority, when referring to NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (supra) stated:

“ ‘if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the statute of Monopolies is absent, one need go no further’.

It was unnecessary to adduce evidence of the prior art base and to compare the invention claimed with the prior art base for the purposes of s 18(1) (b) if the absence of inventiveness appeared on the face of the specification.  Their Honours also said that:

‘it would border upon the irrational if a process which was in fact but a new use of an old substance could be a ‘patentable invention’ under s 18 if, but only if, that fact were not disclosed by the specification.’ ”

Yet the majority in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (supra) held that:

“The present case is not in that category of cases, considered in Phillips, where the lack of an inventive step appears on the face of the specification.  It concerns the validity of combination claims in the light of prior publications ... In that respect, the Full Court was in error in considering under the ground of revocation in s 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but either did not arise or were put to one side.”

This is a case of a combination patent that does not possess the requisite novelty or inventive step.  This, in itself, is not sufficient to ground an objection of lack of manner of manufacture.   If it were, then any invention that lacked novelty and inventive step would also fail to be a manner of manufacture.  This is the error that Mr Davies made in his submissions and the error that the majority judgement in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (supra) made reference to. 

I find that there is nothing on the face of the specification, which suggests that a method of laying tiles is not a manner of manufacture.  Although the evidence has established lack of novelty and lack of inventive step, I cannot see any reason for concluding that the claimed invention is not directed to a manner of manufacture within the broad meaning of the term.

I find support for my view from the case of Firebelt Pty Ltd v BramblesAustralia Ltd(t/as Cleanway) and another (1988) 43 IPR 83 at pages 98-99. In that case, the claims under consideration were directed to a combination. Dowsett J. found that the claims were novel but lacked an inventive step. I can only echo the words of Dowsett J. in who held that:

“I cannot see any sensible basis for asserting that the claim is not a claim for an invention, nor can I see any basis for inferring that it is not a claim for a manner of manufacture within the broad meaning attributed to that term in this area.”

Therefore, I conclude that the invention as defined by the claims is directed to a manner of manufacture.

DECISION

The objection of want of novelty is fatal.  As there are no novelty conferring features identifiable in the specification, I refuse to grant the extension of term.

COSTS

Costs normally follow the event.  I see no reason to depart from this practice.  Costs are awarded against Cork & Seals Pty Limited.

G.M.Cox
Delegate of the Commissioner of Patents

Patent attorneys for the patentee:   A. Tatlock & Associates, Melbourne

Patent attorneys for the informant: Baldwin Shelston Waters, Sydney