CSR Building Products Limited v Boral Montoro Pty Ltd
[2005] APO 29
•10 June 2005
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 770335 in the name of Boral Montoro Pty Ltd.
Title : Roof Capping
Action : Opposition under Section 59 by CSR Building Products Limited.
Decision : Issued 10 June 2005
Abstract
None of the grounds – novelty, inventive step, manner of manufacture and clarity has been established.
The accepted claims were found not to lack novelty because none of the documents filed in evidence in support discloses the claimed invention and evidence has also failed to establish that the documents were publicly available prior to the priority date of the application.
The opponent failed to establish any prior art information or common general knowledge in light of which inventive step may be assessed.
The opposition is dismissed with costs against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 770335 by Boral Montoro Pty Ltd., and Opposition under Section 59 of the Patents Act 1990 by CSR Building Products Limited.
BACKGROUND
Patent application No. 770335 by Boral Montoro Pty Ltd. (hereafter Boral) was filed on 28 March 2002 and advertised as accepted on 19 February 2004. The application claims an earlier priority date of 10 October 2001 based on Australian provisional application PR8190.
CSR Building Products Limited (hereafter CSR) filed a Notice of Opposition on 19 May 2004. The Statement of Grounds and Particulars was filed on 18 August 2004. Evidence in Support was completed on 18 November 2004. Boral did not serve any Evidence in Answer and the matter was set for a hearing in Sydney on 13 April 2005.
At the hearing, Mr. Greg Gurr, Patent Attorney of Spruson & Ferguson, Sydney represented Boral and Mr Frank Pappas, Patent Attorney of Hodgkinson McInnes Pappas, Sydney, represented CSR. Both parties provided helpful written submissions at the hearing.
GROUNDS OF OPPOSITION
CSR have raised the grounds of novelty, inventive step, manner of manufacture and clarity and have identified material facts relating to those grounds in the Statement of Grounds and Particulars.
At the hearing, the opponent additionally raised the issue of non-compliance with Section 40 (4) [claims must define one invention]. As this is not a permissible ground of opposition under Section 59, I will not consider this issue.
SPECIFICATION
The invention is titled "Roof Capping". The accepted claims relate in particular to “hip capping elements” and “barge capping elements”. The following introductory paragraphs from the specification explain the invention and its background:
“Field of the Invention
The present invention relates to roofing materials, and in particular relates to roof capping elements.
Background of the Invention
A popular form of roof is a hip-type roof where successive courses of tiles are laid from the gutter at each peripheral edge of the roof up to a ridge at the top of the roof where opposing faces of the roof meet. In the hip style of roof, tiles are laid on front, rear and side faces of the roof, such that adjacent front and side (or rear and side) faces of the roof meet along an angled line, known as a hip, extending from the corner of the gutter to the ridge.
Tiles are typically formed with a circular recess in the centre which is punched through with a nail, providing an aperture for securing the tile to an underlying batten in the roof frame using the nail. Alternatively, a lug is formed on the under face of the tile, which lug is used to wire each tile to the underlying batten. At the hip juncture between adjacent faces of the roof, however, it is necessary to cut the side of the end tile on each face to allow for the angle of the juncture. Accordingly, the circular recess or securing lug is often removed from such cut tiles, depending upon the amount of tile that needs to be cut to allow for the juncture. These cut tiles accordingly can not be secured to the roof frame in the usual manner.
Cutting of the tiles is not typically a precise exercise, and the rough joint formed between adjacent faces at the hip is typically covered by some form of hip capping. The most common form of hip capping is the use of individual hip capping tiles which are either overlapped in a similar manner to which adjacent courses of roofing tile are overlapped so as to form a stepped hip, or abutted end-to-end so as to form a straight line hip. The hip capping tiles are secured to the cut tiles at the edge of the adjacent roofing faces utilising mortar, which is intended to hold the cut end tiles in place. Over time, however, the mortar eventually deteriorates, a consequence of which is loosening of the cut tiles which often slip down out of place.
Similar capping tiles are utilised to cover the ridge juncture formed along the top of the roof, presenting a consistent finish to the tiled roof.
An alternative method of finishing hip and ridge junctures is to dispense with the capping tiles and cut the edge tiles precisely so as not to leave any appreciable gap between the tiles of adjacent faces. This requires mitre cutting of the edges of the roof tiles to cater for the angle between the adjacent faces, allowing for the neat finish. This process of precisely cutting all of the tiles is, however, very labour intensive and is often not feasible if roofs are not manufactured precisely square, as is often the case.
A further alternative method of finishing hips and ridges that has been proposed involves the use of an elongate metallic extrusion bent to form two elongate faces generally lying in the plane of the adjacent roof face. For each hip, a single extrusion extends from the gutter at the base of the roof to the apex of the roof where the hip meets the ridge. The straight line provided by the continuous extrusion, however, conflicts with the stepped appearance of the remainder of the roof, and can look particularly un-attractive on complex roofs. This continuous capping does not secure the cut tiles at the edge of the roof face.
On gable-type roofs, where only two opposing faces of the roof are tiled with the end faces being defined by a vertical gable wall, present tiling methods also result in the possibility of loose tiles at the edge, or barge, of the roof face. The roof face is not always capped at the barge, and the end tiles cannot be secured to the underlying bargeboard or battens when a dry gable system is being utilised as a tray is placed under the edge tiles acting as a form of gutter. To prevent the end tiles slipping, it is currently usual to provide a clip for each tile to separately clip each tile to the underlying barge board.”
The specification then summarises the invention in terms that closely correspond to the wording of the claims.
Embodiments of the invention are disclosed that include a hip capping element and a barge capping element each including the feature of the channel portion that is shown as receiving the lower end edge of an adjacent tile.
Claims
The claims of the accepted patent application are:
“1. A roof hip capping element formed of an elongate sheet material and having a longitudinal axis and first and second ends, said capping element being bent about said longitudinal axis to provide opposing mutually inclined portions adapted to at least partially cover tiles in use lying adjacent to, and on opposing sides of, a roof hip, wherein said hip capping element is provided with a channel portion depending from each of said inclined portions at said capping element second end for receiving a lower end edge of a respective said adjacent tile, said channel portions each extending at an acute angle to said longitudinal axis selected so as to generally align with the respective said tile lower end edge.
2. The roof hip capping element of claim 1, wherein said hip capping element has a length selected such that, in use, said first end extends beneath the next lowermost course to that of said adjacent tiles.
3. The roof hip capping element of either one of claims 1 and 2, wherein said channel portions are formed by bending said sheet material through two successive approximate right angles.
4. The roof hip capping element of anyone of claims 1 to 3, wherein each of said mutually inclined portions is 'provided with a longitudinally extending crease adjacent the free edge thereof, thereby inclining an edge region of said inclined portion downwardly with respect to the remainder of said inclined portion.
5. A method of finishing a hip in a roof structure comprising the steps of:
a) laying a first course of roofing tiles on first and second adjacent roof faces meeting at a hip, cutting tiles at the edge of each said face adjacent said hip so as not to extend beyond the respective said face,
b) locating a hip capping element as defined above on said first course and spanning said hip with said mutually inclined portions at least partially covering said cut tiles of said first and second roof faces,
c) receiving the lower end edge of cut tiles at the end of said course adjacent said hip in the respective said channel portion of said hip capping element,
d) laying a second course of roofing tiles according to step (a) with said hip capping element first end extending beneath said second course,
e) securing said hip capping element to a substructure of said roof,
f) repeating steps b) through e) for successive courses.
6. The method of claim 5, wherein said hip capping element is secured in step e) by a fastener extending through an aperture provided in said hip capping element toward said first end thereof.
7. The method of either one of claims 5 and 6, wherein a hip plate is located on top of cut tiles of said second course and spanning said hip, said fastener extending through an aperture in said hip plate, between said cut edge tiles of said second course, through said hip capping element and into said roof substructure.
8. The method of either one of claims 5 and 6, wherein a support element, comprising a base portion and a flange portion upstanding from said plate portion, is located with said plate portion beneath cut tiles at said end of said second course adjacent said hip and with said flange portion abutting said lower end edge of said cut tiles, said fastener extending through an aperture in said plate portion, through said hip capping element and into said roof substructure, wherein the channel portion of the said hip capping element subsequently located on said second course extends over said flange portion of said support element and is wedged between said plate portion of said support element and the underlying hip capping element located on said first course.
9. A roof barge capping element formed of an elongate sheet material and having a longitudinal axis and first and second ends, said capping element being bent about said longitudinal axis to provide a top portion adapted to at least partially cover the upper surface of an end tile in use lying adjacent a barge edge of a gable roof and a side portion adapted to cover the free side edge surface of said tile, wherein said barge capping element is provided with a channel portion depending from said top portion at said capping element second end for receiving a lower end edge of said tile, said channel portion each extending substantially perpendicularly to said longitudinal axis so as to generally align with said tile lower end edge.
10. The roof barge capping element of claim 9, wherein said barge capping element has a length selected such that, in use, said first end extends beneath the next lowermost course to that of said end tile.
11. The roof barge capping element of either one of claims 9 and 10, wherein said channel portion is formed by bending said sheet material through two successive approximate right angles.
12. The roof barge capping element of any one of claims 9 to 11, wherein said top portion is provided with a longitudinally extending crease adjacent the free edge thereof, thereby inclining an edge region of said top portion downwardly with respect to the remainder of said top portion.
13. A method of finishing a barge edge in a gable roof structure comprising the steps of:
a) laying a first course of roofing tiles on a roof face ending at a gable with a barge edge,
b) locating a barge capping element as defined above on said first course at said barge edge, said top portion of said barge capping element at least partially covering the upper surface of a tile at the barge edge of said first course and said side portion covering the free side edge of said tile,
c) receiving the lower end edge of said tile in said channel portion of said barge capping element,
d) securing said barge capping element to a substructure of said roof,
e) laying a second course of roofing tiles according to step (a) with said barge capping element first end extending beneath said second course,
f) repeating steps b) through e) for successive courses.
14. The method of claim 13, wherein said barge capping element is secured in step d) by a fastener extending through an aperture provided in said barge capping element toward said first end thereof.
15. The method of either one of claims 13 and 14, wherein step e) proceeds step d).
16. The method of any one of claims 13 to 15, wherein said aperture is provided in said side portion of said barge capping element.
17. A roof hip capping element substantially as hereinbefore described with reference to Figures 1 to 5 of the accompanying drawings.
18. A roof barge capping element substantially as hereinbefore described with reference to Figures 12 to 16 of the accompanying drawings.”
The specification identifies an advantage of the invention at page 8 lines 23-25 in the following terms: “cut tiles are restricted from slipping down the roof face by way of the channel portion”. I note that the feature of the channel portion is defined in each of the independent claims and is acknowledged by both parties as a difference between the claimed invention and prior art raised in evidence in support.
EVIDENCE IN SUPPORT
Evidence in support consists of two declarations, one by Graham Alan Priest dated 8 November 2004 and another by Stephen John Powell dated 18 November 2004.
The Priest declaration is accompanied by two exhibits - GAP1 and GAP2.
GAP1 is a Monier specification drawing sheet which depicts a butyl rubber coated sheet metal ridge and a “hip soaker”. GAP2 is a Monier specification drawing sheet which depicts a “metal ridge”.
Priest states that he is the proprietor of a 20 year old roofing company G.A. Priest Roofing of Christchurch, New Zealand (NZ) and has 23 years experience in the NZ roofing industry.
Priest states that he used the ridges shown in GAP1 and GAP2 some 16-17 years ago on a roof supplied by Monier and has also manufactured and supplied them to O’Donnell Brick & Tile, a Monier (NZ) agent for the last 12 years.
The Powell declaration is accompanied by two exhibits – SJP1 and SJP2.
SJP1 is a cover sheet for the Monier Concrete Roof Tiles – Product and Fixing Specifications allegedly a pre 1995 New Zealand publication that includes the GAP1 and GAP2 drawing sheets.
SJP2 is a Monier marketing sheet which shows a photograph of the ridges depicted in GAP1 and GAP2.
Powell states that he has 37 years of roof tile industry experience - 22 years as a self employed sub contract roof tiler initially and 15 years subsequently in various roles with Monier / CSR roofing. Powell is presently employed by CSR Roofing as the National Architectural Segment Manager and has also held the appointment of Justice of the Peace since 1998.
The Powell declaration may be summarised as follows:
since the GAP1, GAP2 and SJP1 exhibits do not have the CSR name that was added to the Monier name in 1995, these documents must predate 1995;
the exhibits might possibly predate 1989 when the company changed its name to Monier PGH;
he is aware that Monier had made attempts to market the ridges according to GAP1 and GAP2 in Australia prior to early 1990s;
the claims of 770335 lack novelty, inventive step and clarity; the only difference between the claimed invention and the prior art GAP ridges is the feature of the channel portion and this feature cannot be considered novel or inventive as the end wall of the GAP ridges also serves the same purpose i.e. to restrict tiles from slipping down the roof face;
claims 5, 13 and the dependent claims lack clarity because they are not clearly appended to any previous claim. e.g. Claim 5 defines “hip capping element as defined above”; and
he is aware that barge capping elements as claimed in claims 9-12 are not novel because about 20 elements having those features were shown to him during construction of the Sydney Olympic Village adjacent to the Homebush site, at the time of construction of the Olympic Village before commencement of the Sydney Olympic games and that it is his understanding that those barge capping elements were installed by the company installing the solar power panels disposed on the roof of Olympic Village dwellings.
HEARING SUBMISSIONS
Opponent’s submissions
Other than raising the lack of unity assertions at the hearing, Mr Pappas attacked the applicant’s claims on the grounds of novelty, inventive step and lack of clarity, as summarised below:
claims 5-8, 13-16 lack clarity because of appendencies not being clear;
claims 1-8, 17 lack novelty and inventive step in the light of the prior art ridges referred to in the Powell Declaration and the Priest declaration;
in particular, claims 1-3 to a hip capping element are not novel because they differ from the disclosure of the exhibits GAP1, GAP2, SJP1 and SJP2 only by the feature of the channel portion. This feature is not essential to the working of the invention given that the prior art feature of only an end wall without the channel portion is sufficient to receive the lower end of a roof tile and prevent it from slipping down the roof face;
claims 9-16 and 18 lack novelty and inventive step in light of the prior art ridges referred to in the Powell and Priest declarations;
in particular, claims 9-12 are not novel given the statement in the Powell declaration that establishes that barge capping elements according to claims 9-12 were used at the Sydney Olympics site before the priority date of the claims.
A text book reference “ Materials and Processes in Manufacturing”, 5th Edition 1979 by E Paul De Garmo, Macmillan Publishing Co., Inc. ISBN 0-02-978760-2, p404-407.” relating to the manner of manufacture ground, previously identified in the Statement of Grounds and Particulars was filed by the opponent at the hearing but no submissions were made relating to manner of manufacture and this ground was effectively abandoned.
Applicant’s submissions
Mr Gurr made the following submissions at the hearing in relation to the grounds raised by the opponent:
use of the ridges depicted in GAP1 and GAP2 by Priest in New Zealand does not constitute prior art;
there is no clear evidence that any of the exhibits were published, in New Zealand or elsewhere, prior to 10 October 2001;
there is no clear evidence that early attempts by Monier to market ridges of the type shown in GAP1 and GAP2 in Australia included public disclosure of the ridges in Australia;
the ridge capping elements shown in GAP1 and GAP2 are not hip or barge capping elements as claimed;
the hip soaker depicted in GAP1 does not define a channel portion able to receive a lower edge of an adjacent tile as required by claims 1 and 6;
there is no evidence that the barge capping elements that Powell claims were shown to him were in fact installed on the roof of the Olympic Village dwellings and no evidence as to the specific features of the barge capping elements;
the opponent has failed to establish any common general knowledge against which an assessment of inventive step of the present invention can be made; the opponent has also failed to establish any prior art information that a person skilled in the art could have reasonably expected to have ascertained;
there is no evidence that Priest’s knowledge in New Zealand has any correlation with the state of the common general knowledge in the art in Australia and there is no evidence that Monier’s attempts to market ridges of the type shown in exhibits were sufficient for them to become part of the common general knowledge;
there is no evidence that the hip soakers shown in GAP1 have ever been publicly available in Australia. Accordingly, there is no evidence of sufficient prior use in Australia to establish that the hip soakers had formed part of the common general knowledge or that they could have been reasonably expected to have been ascertained by a person skilled in the art;
even if both the ridges and hip soakers of the exhibits did form part of the common general knowledge, the hip and barge capping elements and methods of the invention would still be clearly inventive as the channel of the hip capping element of the invention receives a cut tile with the flange of the channel located below the tiles, such that the tiles are captively received within the channel. The channel also secures the hip capping element itself;
the ground relating to manner of manufacture raised in the opponent’s Statement of Grounds and Particulars should be considered under the ground of lack of inventive step only; and
in relation to clarity, Mr Gurr conceded that the manner of appending claims 5-8 and 13-16 was not the best, but whilst the claims 5 and 13 have not been explicitly appended, the references “as defined above” are still clear.
DECISION
The opponent has attacked the claims on the grounds that the claims lack clarity [section 40 (3)] and the patent application is not for a patentable invention because the invention as claimed does not satisfy the patentability requirements of being novel and involving an inventive step [section 18. (1) (b)].
In determining this matter, the standard of proof required in proceedings before the Commissioner is the civil standard, i.e. the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523). The Commissioner, while functioning as a Tribunal, is not bound by the rules of evidence but nevertheless must reach a decision on rationally probative material, i.e. material which tends rationally to show the existence or non-existence of facts relevant to the decision. It is for the Commissioner to determine the weight to be given to material of probative value. A party alleging invalidity of a patent bears the onus of proof and any doubt on the validity of a patent should be accorded to the patentee. As a tribunal, I am entitled to act on any material that is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593). Where a ground of invalidity is based on assertions of prior use, it is clear from decided cases that the proof of prior use must be very clear. Thus this will normally require, in the absence of cross-examination, corroboration of statements by way of evidence of others or documents contemporary with the fact to be proved. (See e.g. Seiller's Application [1970] RPC 103.)
I will now consider each ground raised by the opponent in turn.
Clarity
The opponent has argued that the claims lack clarity because it is difficult to ascertain what is meant by “hip capping element as defined above” in claim 5 and “barge capping element as defined above” in claim 13. Mr Gurr conceded that this manner of appending the claims was not the best but submitted that the claims were still clear. I agree with Mr. Gurr. In claim 5 for instance, it is not difficult to comprehend that the “hip capping element as defined above” could only be referring to the hip capping elements defined in claims 1-4, given that hip capping elements have been previously defined only in claims 1-4. Notionally, claim 5 may then be split into 8 distinct claims with the following “multiple appendencies”: 5-1, 5-2-1, 5-3-1, 5-3-2-1, 5-4-1, 5-4-2-1, 5-4-3-1, 5-4-3-2-1, each of which has a perfectly clear meaning.
I have therefore come to the conclusion that claim 5 and its dependent claims are clear. Similarly, claim 13 and its dependent claims are also clear.
Novelty
The relevant law
The effect of subsection 7(1) of the Patents Act, in the case of applications filed before 1 April 2002, is that a claimed invention must be taken to be novel when compared with the prior art base unless it is not novel in the light of:
(a) prior art information made publicly available in a single document or through doing a single act or
(b) prior art information made publicly available in two or more documents or through doing two or more acts, if such could be regarded as a single source of information or
(c ) information contained in an Australian patent specification that was not prior art as in (a) but which has an earlier priority date.
Subsection 7(1) (a) is to be read in the context of the definitions of prior art information and prior art base that appear in Schedule 1 of the Act (The Dictionary):
"prior art information" means:
(a) for the purposes of subsection 7 (1) - information that is part of the prior art base in relation to deciding whether an invention is or is not novel;
"prior art base" means:
(a)in relation to deciding whether an invention does or does not involve an inventive step: (i) information in a document, being a document publicly available anywhere in the patent area; and (ii) information made publicly available through doing an act anywhere in the patent area; and (iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and
(b)in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and …
In summary, to deprive a claim of novelty, a document must disclose the claimed invention and have been “publicly available” before the priority date of the claim anywhere in the world. For an act to deprive a claim of novelty, the act must have disclosed the invention and have occurred before the priority date of the claim. For the purposes of this application, only acts in Australia may be taken into consideration for novelty as the present application was filed before 1 April 2002. Also, each of the documents or acts must be assessed separately for any novelty depriving disclosures as none of the documents or acts fall in the categories of information mentioned in section 7 (1) (b) or (c).
The opponent has alluded to two acts of prior use as per the Priest and Powell declarations and 4 documents – GAP1, GAP2, SJP 1 and SJP2 that allegedly deprive the claims of novelty.
Novelty - Prior use
Priest has alleged prior use based on acts in New Zealand. As already indicated, for the purposes of this application, information made publicly available through the doing of an act may only deprive the claims of novelty if the act occurred in Australia. Thus, the prior use alleged by Priest in New Zealand is not a relevant consideration.
The Powell declaration alleges that prior to the Sydney Olympics i.e. well before the priority date of the present application, Powell was shown elements according to claims 9-12. I note that the opponent has not filed any further evidence e.g. photographs of any capping elements installed at the Olympic village site or independent statements by the company that installed the elements, in corroboration of the Powell statement. Thus, there is no corroborative evidence filed in respect of what features were seen by Powell.
The Powell declaration is also silent on whether there was any fetter, implied or otherwise, placed on the alleged disclosure. I am therefore unable to determine that the disclosure of the invention as alleged amounts to a public disclosure of the invention.
Furthermore, I note that Powell has stated that “it is his understanding that those barge capping elements were installed by the company installing the solar power panels disposed on the roof of Olympic Village dwellings” but has not stated how he came to that understanding or provided any corroborative evidence in support of this statement.
At the hearing, Mr. Gurr submitted that that the onus rests with the opponent to make out their case and if the statement was true the opponent should have produced corroborative evidence to prove that the barge capping elements according to the claims were in fact installed at the Sydney Olympic site. I have no reason to believe that the Powell declaration has not been made in good faith and I note that the applicant has not argued otherwise. In this regard, Powell’s industry standing and as a Justice of the Peace has been noted. However, as indicated in paragraph 25, the proof of prior use needs to be very clear and the onus of proof lies with the opponent.
Thus, in the absence of any corroborating evidence in support of the Powell allegation of prior disclosure or use, I find that the prior use allegations are not made out.
Novelty – GAP1, GAP2, SJP1 & SJP2
Publicly available
For a document to deprive a patent claim of novelty, that document must have been publicly available before the priority date of the claim.
None of the evidence before me indicates that the GAP and SJP exhibits were in fact available to the public before the priority date of the claims. GAP1, GAP2 , SJP 1 are said to be part of one “publication” titled “Monier Concrete Roof Tiles – Product and Fixing Specifications”. SJP2 is a marketing sheet. None of the exhibits has a publication date or other publication details marked on it. None of the declarants has said that the exhibits were ever made available to the public.
Priest states that he has manufactured and supplied ridges according to the exhibits in New Zealand for several years to a New Zealand agent but falls short of actually suggesting that the exhibits were in fact available for inspection by any member of the public or that copies of the drawings were in fact distributed, made available with the product or available on demand.
The Powell declaration predates the exhibits to pre-1995 or to possibly even pre-1989 given the name “Monier” appearing on the sheets and the history of company name changes. In light of this, it seems likely that the exhibits were in existence before the priority date. However, the evidence does not indicate that the exhibits were made available to the public before the priority date of the claims.
The Powell declaration also refers to an “attempt” by Monier to market the ridges in Australia but stops short of stating that the product or any of the exhibits were in fact made available or distributed or the ridge itself exhibited to the public.
Mr. Pappas argued at the hearing that it was not necessary to prove that the Monier specifications were in the hands of the tiler. In this regard, I note that the mere existence of fixing specifications e.g. within the company premises does not prove that those documents were ever distributed or made “publicly available”.
It has not been established that the documents filed in evidence were in the public domain before the priority date.
Disclosures of the exhibits
As I have found that the evidence does not establish that the exhibited documents were publicly available before the priority date of the claims, prima facie it would appear that it is not necessary for me to consider the disclosures of the documents in order to decide on novelty. However, given the fact that the opponent has made submissions relating to the exhibit disclosures in some detail and for completeness, I will deal with this issue.
A test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228 at page 235 where Aickin 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 invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).The issue of determining essential features was discussed in Catnic Components v Hill & Smith [1982] RPC 183. The judges in that case concluded inter alia that a feature is essential to a claim if:
a) it was essential to the working of the invention or if it materially affected the way in which the invention worked; or
b) the applicant or patentee regarded the feature as essential.
Both parties agreed that the feature of the channel portion that is defined in each of the independent claims is not disclosed anywhere in the prior art. An assessment of novelty of the claims thus rests primarily on a determination of whether this feature is essential or inessential. If the feature is essential, then clearly all the claims are novel.
Mr Pappas argued that the channel portion is not a novelty conferring feature because the prior art capping elements having only an end wall and no channel portion work equally well in preventing cut tiles from slipping down the roof face as the present invention.
Mr Gurr submitted that the channel portion served to captively receive the tiles within the channel and secure the capping element itself with the flange of the channel being held beneath the tile received within the channel thus preventing the tiles from slipping under the capping elements.
It is clear to me that the feature of the channel portion materially affects the working of the invention in that it secures the capping element and prevents slippage of adjacent tiles from under the elements. This feature is therefore an essential feature of the invention.
I note that Mr Gurr pointed out one more difference between the claimed invention and the documents in evidence in that the prior art ridges are ridge capping elements as distinct from the barge capping elements and hip capping elements that are the subject of the claims. The closest disclosure of the invention is contained in the GAP2 exhibit which shows a hip soaker element that is similar to the claimed hip capping element, but the GAP2 drawing fails to disclose the feature of the channel portion which I have found to be a novelty conferring feature of the invention.
I have found that the documents in evidence fail to disclose all the essential features of the claimed invention nor is there any evidence to show that the prior art documents raised by the applicant were ever made publicly available. Furthermore, I have found that there is insufficient evidence to support a finding of lack of novelty in light of the allegations of prior use referred to in the Priest and Powell declarations.
Inventive Step
The effect of subsections 7(2) and 7(3) of the Patents Act, in the case of applications filed before 1 April 2002, is that a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Thus, inventive step may be assessed in the light of common general knowledge alone or in the light of common general knowledge combined with prior art information made publicly available in a single document or through doing a single act.
From the material before me there is no clear basis put forward by the opponent to support their allegation that the invention claimed in the main claims does not involve an inventive step. The Priest declaration does not comment on the inventive step of the main claims while the Powell declaration merely asserts that the invention lacks an inventive step.
As the documents filed in evidence were not publicly available, they could not have been reasonably expected to have been ascertained with a view to combine with common general knowledge to support an allegation of lack of inventive step.
Furthermore, the opponent has not made any submissions nor filed any evidence regarding the common general knowledge in the art before the priority date of the claims. The Priest declaration relates to knowledge in New Zealand. Thus, it fails to establish any common general knowledge in Australia.
The Powell declaration refers to “attempts” by the company to market elements according to the exhibits in Australia. As argued by the applicant, there is no information in the Powell declaration that establishes any common general knowledge as a result of any such marketing efforts.
The Powell declaration also refers to the prior use of the claimed barge capping elements. As I have already found, the evidence is not sufficient to establish beyond doubt that any public exhibition or prior use has actually occurred.
Thus, there is insufficient evidence for me to find that the claimed invention lacks an inventive step.
Manner of Manufacture
I am unable to ascertain the basis for this ground given the scant evidence available. The only material facts identified by the opponent are the exhibits and the text book reference that was filed only at the hearing. The text book reference merely shows the bending of sheet metal. There were no submissions in relation to this ground at the hearing.
It is likely that the opponent intended to argue that this was a situation where the specification failed the so called threshold of inventiveness test under section 18 (1) of the Patents Act 1990 as established in Phillips v Mirabella 132 ALR 117; 32 IPR 449. However, given the decision in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243, this is really an inventive step issue and I have already dealt with this.
Conclusion
I have found that there is insufficient evidence before me to support a finding that the claims of the accepted specification are not novel, lack inventive step, lack clarity or are not for a manner of manufacture.
In particular, I have found that the documents filed by the opponent in evidence do not disclose the claimed invention and the evidence does not establish that the documents were “publicly available” before the priority date as required by Section 7(1) to support the ground of novelty.
As the documents filed in evidence were not publicly available, they could not have been reasonably expected to have been ascertained with a view to combine with common general knowledge to support an allegation of lack of inventive step.
Furthermore, given neither public disclosure nor prior use of the capping elements shown in the exhibits has been sufficiently established to establish any common general knowledge in the art in Australia at the priority date of the claim, I have found that the opponent’s evidence does not establish any common general knowledge in the art in Australia for the purposes of assessing inventive step.
I have also found that there is no basis for the assertion that the claimed invention is not for a manner of manufacture and that the claims are sufficiently clear to meet the requirements of Section 40 (3).
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
Costs
The general principle in matters such as these is that costs should follow the event and I see no reason to depart from this practice. I have found that CSR has been unsuccessful on all the grounds. I therefore award costs against CSR in favour of Boral.
Jagdish Bokil
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Spruson & Ferguson, Sydney
Patent attorneys for the opponent: Hodgkinson McInnes Pappas, Sydney
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