Daniel Charles Underwood v Connolly Key Joint Pty Ltd

[2000] APO 56

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 681984 by Daniel Charles Underwood

Title:          Concrete Structures and Related Accessories

Action:          Opposition under Section 59 by Connolly Key Joint Pty Ltd;  hearing.

Decision:          Issued            

Abstract

The application was opposed on grounds of non-compliance with s.40, lack of novelty, lack of inventive step and not a manner of manufacture.

Certain information relied on for the assertion that the claimed invention lacked an inventive step was found not to meet the requirements of s.7(3).

The claimed invention was found to comply with s.40, to be novel, and to be a manner of manufacture within the terms of s.18(1)(a).

The invention claimed by claims 1, 4 to 8, 10, 11 13 and 14 was found to lack an inventive step.

The applicant was allowed 60 days to propose amendments directed to patentable material in the specification.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 681984 by Daniel Charles Underwood and opposition thereto under section 59 by Connolly Key Joint Pty Ltd.

BACKGROUND

Patent application 681984 (48188/96) was filed on 21 March 1996 by Daniel Charles Underwood (hereafter referred to as “the applicant”).  The application was filed as a divisional application of application 28152/92 filed on 4 November 1992.  Application 48188/96 was advertised accepted on 11 September 1997 and given the serial number 681984.  The earliest priority date for the application is 4 November 1991.

On 11 December 1997 Connolly Key Joint Pty Ltd (hereafter referred to as “the opponent”) filed an opposition to the grant of a patent on the application. The Statement of Grounds and Particulars was filed on 11 March 1998. The grounds of opposition relied on are those indicated in paragraphs 59(b) and (c) of the Patents Act 1990 ("the Act").

Following the completion of the evidence stages, the matter was set for a hearing.  The hearing took place in Brisbane on 6 March 2000.  The applicant was represented by Mr T Dredge patent attorney of Intellpro.  The opponent was represented by Mr J G Adams patent attorney of Fisher Adams Kelly.  The applicant also attended the hearing as did Mr Spinaze a declarant for the opponent.

THE SPECIFICATION

The specification states that the invention "relates to concrete structures and related accessories for laying down concrete slabs and in particular to improvements in relation to key joints."  In a section entitled BACKGROUND ART, the specification states:

"At present, large floor areas of concrete are laid as slabs separated by key joints which allow relative movement between adjacent slabs while maintaining the slabs in alignment.  Present key joints and the associated slabs employing the key joints have a number of undesirable features.  For example, present key joints require skill to align and adjust their position and it would be desirable to provide a key joint which can be positioned using simplified procedures.  Another problem arises due to stresses formed in adjacent slabs resulting in cracking or fractures forming adjacent the key joint.  It would be desirable to reduce the likelihood of cracking or fracturing by improving the key joint and thereby improve the structure of the slab."

The specification then outlines the invention in terms consistent with the terms of independent claims 1 and 8.  Those claims are as follows:

"1.  A partially completed concrete structure comprising a generally horizontal slab of concrete having a key joint comprising a deformed sheet of metal defining on one side an elongate channel and on its opposite side an elongate projection extending generally parallel to and intermediate upper and lower horizontal edges of the slab, a plurality of spaced generally horizontal dowels protruding from the slab and passing transversely through the key joint, each dowel having a flat generally horizontal surface extending into the slab and the key joint having apertures through which the dowels pass, each aperture having a horizontal surface resting against the horizontal surface of the dowel.

8.  A key joint suitable for use in, or when used in, a partially completed concrete structure, the key joint comprising a deformed sheet of metal defining on one side a channel and on its opposite side an elongate projection, a plurality of open or openable apertures at spaced locations along the key joint linking the channel with the projection at each location so a dowel having a generally flat surface can pass through the key joint, each of the apertures when open having an edge with a generally flat surface which in use can be arranged generally horizontally in a slab of concrete and resting against the flat surface of a corresponding dowel."

At page 3 the specification mentions that the "dowel can have any shape in section that employs a generally horizontal surface.  The horizontal surface need not be completely flat and can include projections or recesses."

The specification also states that "Advantageously, the slab includes a gap void of concrete adjacent each dowel to allow limited movement of the dowel to reduce the likelihood of the slab cracking adjacent a dowel."

The description concludes by describing a key joint of the invention with reference to a number of figures of drawings.  In figures 1 and 2, an elongated strip of metal is shown as the key joint, the essentially planar strip being deformed longitudinally to exhibit on one side an elongated channel and on the other an elongated projection.  The strip shown is of a height to match the intended thickness of concrete slab.  Square apertures are shown in the strip in the channel region to accommodate square dowels to extend either side of the strip in use of the key joint.

The specification also includes description and other drawings which relate to other matters concerning key joints which are not the subject of the presently claimed invention.

EVIDENCE AND SUBMISSIONS

The evidence filed in this matter consists of the following:

Evidence in support

• A statutory declaration by J G Adams dated 13 July 1998 with Exhibits JGA1 to 14

• A statutory declaration by J G Adams dated 24 July 1998 with Exhibits JGA15 & 16.

Evidence in answer

• A statutory declaration by J F Tutticci dated 20/5/99

• A statutory declaration by D C Underwood dated 21/5/99 with Exhibit DU1

• A statutory declaration by P Erdmanis dated 26/5/99.

Evidence in reply

• A statutory declaration by J G Adams dated 21/9/99 Exhibit JGA(11)1

• A statutory declaration by F J Spinaze dated 24/9/99 Exhibit FJS1.

I will refer to submissions put to me at the hearing when necessary in discussing the opposition issues.

DECISION

The invention

Before discussing the specific opposition grounds relied on by the opponent, it is appropriate that I refer to the invention as claimed.  The independent claims have already been quoted.  The invention in its broadest form is that defined by claim 8.  Claim 8 is directed to a "key joint" and features which comprise the key joint are identified thus:

a)a deformed sheet of metal defining on one side a channel and on its opposite side an elongate projection,

b)a plurality of open or openable apertures at spaced locations along the key joint linking the channel with the projection at each location, and

c)each of the apertures when open having an edge with a generally flat surface.

The claim indicates that the key joint is to be suitable for use in a concrete structure and that features b) and c), in use, interact with elements of the concrete structure in certain ways.  I interpret these "in use" references as requiring the key joint to be capable of use in the way specified to provide the interactions stated.  Thus any element having the features a) to c) with such "in use" capabilities falls within the definition.

Claim 1 is directed to a partially completed concrete structure.  It comprises a combination of elements including a key joint, a slab of concrete, and a plurality of dowels protruding from the concrete slab and interacting with apertures in the key joint.  Given that the dowels protrude (project or stick out) from the slab, it is clear that the partially completed concrete structure has at least one boundary being the key joint through which the dowels pass and expose a portion thereof protruding external to the concrete slab.

Claims 1 and 8 are not limited to the apertures in the key joint being square or rectangular in shape nor that dowels used with the key joint be of such cross-sections.  There is only a requirement for each aperture to present a horizontal surface which in use is "resting against" a (horizontal) surface of a dowel passing through the aperture.  There is no restriction on whether this "resting against" occurs at the upper or lower part of the dowel.  In this regard I note that there is nothing in the description to indicate either way, nor for that matter is there any discussion of the purpose or advantage derived from a key joint having an aperture which in use presents a horizontal surface to a dowel passing through the aperture.  Although the Background Art portion of the description refers to some "undesirable features" or problems with "present" key joints, there are no subsequent indications whether, if at all, the key joint of claim 8 relates to or addresses those problems.  In my view this does not give rise to any s.40 problems for the specification in describing the invention.  I note that during submissions Mr Dredge indicated that the invention was not addressing any problem known at the priority date but was developed by the inventor taking a holistic approach to develop a new product.

The opponent referred to certain wording in dependent claims 12 and 13 as presenting a lack of clarity in the definition.  I do not believe the matters raised cause any difficulty in interpreting these claims and I will not discuss them further.

Novelty

The test for novelty is the reverse infringement test as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; 1A IPR 181. For this test one asks 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 features of that claim has been taken (see eg Rodi & Wienenberger Ag v Henry Showell Ltd (1969) RPC 367 at 391.

The opponent submitted that the claimed invention lacked novelty.  In support of this allegation the opponent relied on the disclosure of US Patent 2976781 (Heltzel).  It was submitted that the drawing figures of Heltzel disclosed an element 11 which was a metal plate with a channel on one side and an elongate projection on the other and thus was equivalent to the key joint claimed.  In my view Heltzel fails to disclose the claimed key joint.  Item 11 is described as a "shear plate" and a plurality of pairs of such plates are associated with a joint strip 10 which provides an expansion joint for a concrete slab.  The plates of each pair of shear plates are disposed on opposite sides of the joint strip.  Each shear plate has a rectangular aperture through which passes a rectangular dowel bar 15 and a bar is secured to the shear plate via a metal piece 19.  Although the shear plate of Heltzel exhibits the features b) and c) of claim 8 as identified earlier, in my view the plate is not a key joint having feature a).  The shear plate, which is of U channel shape, could not be said to define a channel on one side and an elongate projection on the other side.  Furthermore, even if the joint strip 10 with the pairs of shear plates is considered, in my view this does not disclose a key joint as claimed.  In my view neither the shear plates nor the joint strip of Heltzel would constitute an infringement of the key joint of claim 8.  Claim 8 is therefore novel given the disclosure of Heltzel. 

The opponent relied on no other basis to allege lack of novelty.

Inventive step

It follows from subsections 7(2) and 7(3) of the Act that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:

(a)the common general knowledge existing in the art before the priority date considered alone; or

(b)the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information from the document or act as relevant to work in the relevant art in the patent area.

Schedule 1 to the Act provides a definition of "prior art base".
The opponent alleged that the claimed invention lacked an inventive step.  In support of its allegation the opponent firstly relied on disclosures in:

1. US patent 2976781 (Heltzel); or

2. an article in the July 1991 edition "Concrete International" (Exhibit JGA-2 and JGA-15);

when considered with the common general knowledge.  Secondly the opponent simply relied on the common general knowledge to submit that the invention lacked an inventive step.

The opponent's allegation, and a determination of whether or not the claimed invention possesses an inventive step, requires an understanding of the common general knowledge in the relevant art at the priority date.  In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253, Aickin J remarked about common general knowledge in these terms (at 292):

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge."

In one respect the opponent submitted that the common general knowledge known to the non-inventive skilled addressee at the priority date "includes the material constituting Exhibits JGA-3 and JGA-4 of the Opponent's Evidence-in-Support".  Given this material it was submitted that (a) "a deformed sheet of metal defining on one side a channel and on its opposite side an elongate projection", and (b) "a plurality of open apertures spaced along the key joint linking the channel with the projection" were common general knowledge.  The opponent also submitted that these features are also disclosed in other exhibits in evidence.  In a second respect the opponent submitted "that 'square dowels' ie. dowels having at least one horizontal face, were known and common general knowledge".

Exhibits JGA-3 and JGA-4 are photocopies of two brochures entitled "Connolly Key Joint".  Their disclosure is essentially identical save for references to "Aquila Steel" on JGA-3.  They disclose an elongated metal key joint which exhibits an elongate channel on one side and an elongate projection on its opposite side.  It also has round "knock-outs" indicated in dotted form in the channel in order to create round holes to accommodate dowels.  Mr Adams in evidence in support declares that the brochures were received by him "no later than June 1990" and "13 September 1990" respectively (paragraphs 8 and 9).  Mr Adams also declares that he was advised by Mr Flint of Connolly Key Joint Pty Ltd that the brochures were, respectively, "widely distributed in Australia" and represented "current advertising".  Mr Adams also declares that key joints in accordance with the brochures and AU patent 604612 were made and sold prior to 4 November 1991 "and, in my opinion, fall within the common general knowledge within the concrete industry in Australia at the earliest priority date" (paragraph 10).  The earliest priority date for the application is 4 November 1991, which date is not disputed.

There is no evidence from relevant persons in the trade filed on behalf of the opponent to support either the "opinion" expressed by Mr Adams in his declaration about common general knowledge derived from Connolly key joints, or the submissions put forward on behalf of the opponent about the material of the brochures being common general knowledge.  There is nothing to suggest that Mr Adams qualifies as a relevant addressee.  To support submissions at the hearing about the material in Exhibits JGA-3 and JGA-4, it was submitted that the patent applicant and the opponent are the only two significant manufacturers of key joints in Australia, and that their competing products are sold and/or distributed and promoted by several major steel manufacturers.

Submissions for the applicant at the hearing argued that the existence of advertising brochures does not prove common general knowledge.  I agree with that submission.  In the absence of specific evidence from relevant persons in the art, and in the absence of any other basis for considering otherwise, I have difficulty agreeing that the Connolly key joints of the brochures or the brochures themselves were common general knowledge at the priority date.  However I note that Mr Underwood in his declaration filed as evidence in answer states in paragraph 7:

"I agree with Mr Adams as to paragraphs 8 to 10 but note that the key joint he refers to possesses round holes for accommodating round dowels."

The import of this statement, by including reference to paragraph 10 of Mr Adams' declaration, is that Mr Underwood agrees that the key joints identified by Mr Adams in his paragraph 10 were common general knowledge at the priority date.  I take it that Mr Underwood's statement also means he agrees with comments about the brochures mentioned by Mr Adams, although Mr Adams does not state that these were common general knowledge.  I note that it was conceded in submissions for the applicant at the hearing that the brochures were published before the priority date.  I have no reason to disregard Mr Underwood's agreement with the statements of Mr Adams.  Consequently I conclude, given Mr Underwood's statement, that the Connolly key joints in accordance with the brochures and patent 604612 made and sold prior to 4 November 1991 were common general knowledge at the priority date.

Regarding whether square dowels were common general knowledge, the opponent points to the publication of the article in Exhibit JGA-2 and comments by Tutticci and Erdmanis about square dowels.  Exhibit JGA-2 refers to using square dowels between concrete slabs.  However the publication date of Exhibit JGA-2 in Australia has not been established as being before the earliest priority date - from the evidence the best that can be said is that it was available "from December 1991" (per Exhibit JGA-16).  Thus the evidence falls short of establishing that the information in Exhibit JGA-2 was common general knowledge at the priority date.  However the evidence of Tutticci, Erdmanis and Underwood is such that square dowels were known to them and in use before the present invention.  Underwood for example states: "Square dowels were in use before my invention yet not in the combination claimed."  Tutticci is an engineer who has been involved in the building industry since 1980, and Erdmanis is a structural engineer.  It seems to me that knowledge of the existence of square dowels by Tutticci, Erdmanis and Underwood, all of whom were involved in the relevant trade, is sufficient basis for me to conclude that square dowels were common general knowledge in the art at the priority date.

I turn now to the question of whether the invention lacked an inventive step.  Firstly the opponent relied on the disclosure of Heltzel with common general knowledge to allege lack of an inventive step for the claimed invention.  To qualify for use in a consideration of lack of inventive step, information in Heltzel must be such that a skilled person in the art could, before the priority date, have been reasonably expected to have ascertained, understood and regarded the information as relevant to work in the relevant art in the patent area.  The opponent has provided no evidence from which to conclude what information, if any, from Heltzel meets this requirement and which is to be considered with common general knowledge.  In fact there is no evidence to even confirm that patent documents, such as Heltzel, were normally considered by skilled persons working in this art.  Thus, unlike the situation regarding patent documents as considered in Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (2000) 47 IPR 257 at 307, I have no basis on which to conclude that Heltzel is a document which provides the kind of information as specified by s.7(3) of the Act. I am therefore unable to consider lack of inventive step based on Heltzel.

Secondly the opponent relied on an article entitled "A Solution to Cracking and Stresses Caused by Dowels and Tie Bars" in the July 1991 edition "Concrete International". Earlier in this decision I concluded that the publication date of Exhibit JGA-2 in Australia had not been established as being before the earliest priority date of the application. For that reason alone the article does not qualify as possible information available to the skilled person meeting the requirements of s.7(3). Alternatively there is no evidence to establish that this article was a matter of common general knowledge in the art at the priority date. I am therefore unable to consider lack of inventive step based on that article.

The opponent also submitted that there was a lack of invention given the common general knowledge.  Mr Adams' verbal submission was to the effect that with the common general knowledge of square dowels and that of the Connolly key joints with round dowel holes, there was no invention involved in going from a key joint with a round dowel hole to one with a hole with at least a horizontal surface.  It seems to me that before the priority date, the skilled person in the art possessed of the knowledge of a Connolly key joint with round holes to accommodate the use of round dowels, would have required no exercise of inventive ingenuity to provide an equivalent key joint but with a dowel hole to accommodate square dowels.  In my view the provision of a square or rectangular hole in place of a round hole would have been a simple practical arrangement involving no more than a workshop improvement to allow the use of square dowels.  Square dowels were, as I have found, common general knowledge at the priority date, and a skilled person desirous of using the known square dowels with a key joint would have readily arrived at the key joint as claimed.  Furthermore to provide the hole with a flat surface which could be aligned in the key joint so as to be horizontally aligned in use would have been one of several logical orientations, and in my view to involve no inventiveness.  There is nothing in the specification describing the significance of arranging the hole as indicated.  At best the claim indicates that it permits the corresponding dowel having a flat surface to rest against it, thus suggesting perhaps an aid to positioning or aligning the dowel in use, but that appears of little difference compared to the round hole and round dowel arrangement.  I therefore find that the invention defined by claim 8 lacks an inventive step.  The same conclusion applies to the concrete structure defined by claim 1 given that it relates to a structure using a key joint of the form defined in claim 8.

In coming to these conclusions on the claimed invention, I have taken account of submissions put to me on behalf of the applicant.  One line of submission was, quoting from written submissions provided at the hearing, that:

"There is no evidence that there was any particular problem 'extant' at the priority date Re Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261, a requirement for there to be a lack of invention. The specification suggests the inventor looked at the whole key joint situation with a view to devising what was from his point of view most desirable in a key joint. The evidence seems to show that for many years key joints had not changed much so in this sense the inventor seems to be carrying out a complete renovation of the whole concept, challenging the status quo and doing this of his own volition as an inventor on his own 'voyage of discovery' [Re Beecham].  Consequently the inventive step is of the type set out [in] Benton & Stone Ld v Thomas Denston & Son Vol XLII (1925) RPC 284 at 297 as can reasonably be inferred from the description."

As I understand it, the Beecham case points to some different inventive step considerations being necessary if there is no problem extant in the first place, rather than that lack of invention can not be further considered or established.  The applicant's reliance on Benton seemed to be that the applicant, in arriving at the claimed invention, had appreciated the arrangement as presenting desirable features of a key joint and that this represented the necessary exercise in inventive ingenuity.  In the Benton case the court found that an assemblage of known elements to form a new grease gun involved invention from two positions: (1) the conception of a grease gun with desirable features, and (2) the solution of the problem by the actual combination of features.  In the present case, the specification itself is unhelpful in providing assistance in identifying the inventive advance associated with the claimed invention, although it could perhaps be inferred that the claimed invention was seen by the applicant as displaying desirable features for a key joint.  The present invention, as is evident from my inventive step discussions above, provides a different arrangement of key joint to the key joints known to skilled persons at the priority date, but of no radical departure therefrom.  As such I fail to see that the conception or idea of the present invention of itself establishes the necessary inventiveness to support the grant of a patent for the invention.  I have otherwise found that the claimed invention would have been obvious to a person skilled in the art at the priority date given the common general knowledge.

Turning to the dependent claims, claims 10 and 11, and 4 to 7 specify either the aperture shape or the shape or nature of the dowel to use with the key joint. I see no inventive step arising from such specified form of aperture or dowel. Claims 9 and 12 characterise the aperture as an "openable aperture" including a closure member which when opened provides a site for tying a dowel. I have no information as to whether the Connolly key joint of the common general knowledge included openable apertures of this nature. From the evidence before me I am not satisfied that the invention of claims 9 and 12 lacks an inventive step. Claims 2 and 3 include an additional feature for the concrete structure otherwise defined in claim 1, namely a gap void adjacent each dowel. As claim 3 (appended to claim 2) specifies, the void can be filled by a compressible spacer located over a dowel prior to pouring the slab. Some material filed as evidence in this matter refers to dowel covers, namely Tutticci at paragraph 5 and Exhibit JGA-2 at page 44. However I cannot treat Tutticci's comments as an indication that dowel covers were common general knowledge at the priority date and Exhibit JGA-2 cannot be used because it does not satisfy the requirements of s.7(3). Thus, given the evidence before me I am not satisfied that the invention of claims 2 and 3 lacks an inventive step.

Claims 13 and 14 are typical omnibus claims.  Those claims lack an inventive step insofar as they are directed to embodiments covered by those claims which I have found to lack an inventive step.

Manner of manufacture

The opponent also submitted that the invention did not meet the "threshold test" to constitute an invention within s.18(1)(a) of the Act. The judgements in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655; (1995) 32 IPR 449 and Bristol-Myers Squibb Company v FH Faulding & Co Ltd (2000) 46 IPR 553 discuss s.18(1)(a) in some detail. The threshold test requires a consideration as to whether "it is apparent on the face of the patent specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent" (per Philips 32 IPR at 454) - if it is absent then the basis for a patentable invention under s.18(1)(a) has not been met.

There is nothing contained in the specification to suggest that the invention lacks the quality of inventiveness necessary to be proper subject matter for letters patent. It thus passes the "threshold test" for being a patentable invention and accordingly the invention claimed is a manner of manufacture within the terms of s.18(1)(a).

CONCLUSION

I have found that the claimed invention is novel. I have also found that the invention claimed is a manner of manufacture within the terms of s.18(1)(a). However I have found that the invention as defined by claims 1, 4 to 8, 10, 11, 13 and 14 lacks an inventive step. The opposition has thus been successful.

Given my findings, as the specification includes patentable material I allow the applicant 60 days from the date of this decision in which to propose amendments directed to that material, else I will refuse the application.

COSTS

In proceedings before the Commissioner costs normally follow the event.  As the opposition has been successful on the ground of obviousness, the opponent is entitled to its costs.  Accordingly I award costs against the applicant, Daniel Charles Underwood.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:     Intellpro, Brisbane
Patent attorneys for the opponent:     Fisher Adams Kelly, Brisbane