Delnorth Pty Ltd
[2011] APO 55
•27 July 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Delnorth Pty Ltd [2011] APO 55
Patent:2004249786
Title:Roadside post
Patentee: Delnorth Pty Ltd
Delegate: Xavier Gisz
Decision Date: 27 July 2011
Catchwords: PATENTS – re-examination after grant of patent – prior art documents would have been ascertained, understood and regarded as relevant by a person skilled in the art – claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 lack an inventive step in light of US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II) – claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 are revoked pursuant to s 101(1)
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004249786
Title:Roadside post
Patent Applicant: Delnorth Pty Ltd
Date of Decision: 27 July 2011
DECISION
The patent in respect of claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 is revoked pursuant to s 101(1).
REASONS FOR DECISION
Background
Patent application 2004249786 was filed on 10 June 2004 by Delnorth Pty Ltd (hereinafter referred to as the Patentee) as application PCT/AU2004/000772 under the Patent Cooperation Treaty. It claims priority from provisional application 2003903188 filed on 23 June 2003. Patent application 2004249786 was advertised as accepted on 5 January 2006. The application relates to a flexible roadside post made of spring steel.
A notice of opposition to the grant of a patent was filed on 30 March 2006 by Dura-Post (Aust) Pty Ltd (hereinafter referred to as the Opponent).
The opposition was heard in Canberra on 21 August 2008 and a decision was issued on 17 April 2009. The decision found that claims 1 to 32 lack an inventive step.
Soon after the decision was issued the Opponent was placed in receivership and withdrew its objections to the application. The Patentee appealed the decision to the Federal Court and requested that the Court order that the application proceed to grant. Because there was no opponent to the appeal the Court made these orders in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465. The orders set aside the Commissioner’s decision and consequently the patent was granted on 27 May 2010.
On 28 May 2010 the Commissioner informed the Patentee that the patent would be re‑examined on the basis of compelling prior art raised in the opposition and a re‑examination report was issued on 29 July 2010. In the re-examination the examiner found that the claims lacked an inventive step. On 21 September 2010 the Patentee responded to the re‑examination report, and on 30 November 2010 a further re-examination report was issued re-iterating the inventive step objection. On 14 December 2010 the Patentee proposed amendments that were deemed allowable, but did not overcome the issues raised in the re-examination report. 8 February 2011 the Patentee was advised that the Commissioner intended to decide the outcome of the re‑examination. The Patentee was given an opportunity to be heard by way of written submissions but provided no submissions.
Related cases
The patent has four ‘divisional’ innovation patents 2005100978, 2006100297, 2006100696 and 2008100279. The claims of each of these divisional patents relate to a flexible roadside post made of spring steel.
Three of these innovation patents (2005100978, 2006100297, 2006100696) were the subject of an infringement and cross-claim of revocation court action in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225. The outcome of this case was that claims 1 and 2 of 2006100297 and 2006100696 were found to lack an innovative step in comparison to the prior art. The decision was upheld by the Full Court of the Federal Court of Australia in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81. These decisions are clearly highly relevant to the present matter however I am not bound by these decisions.
Relevant law of re-examination
Subsection 97(2) of the Patents Act 1990 (the Act) states:
(2) Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re‑examine the complete specification.
Subsection 98(1) of the Act states:
(1) On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a) is not novel; and
(b) does not involve an inventive step.
Subsection 101(1) of the Act states:
(1) Where the Commissioner makes an adverse report on a re-examination under subsection 97(2), the Commissioner may, by notice in writing, revoke the patent, either wholly or so far as it relates to a particular claim, as the case requires.
Relevant law of inventive step
Subsections 7(2) and (3) of the Act state:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Grounds of re-examination
Each of the four prior art documents listed in the paragraph below fails to disclose at least one of the essential features present in the claims, thus the claims do not lack novelty.
In the first re-examination report the examiner found the claims lack an inventive step in light of four documents.
US 6,375,385 (Kennedy)
US 4,486,117 (Blau)
US 3,312,156 (Pellowski I)
US 3,362,305 (Pellowski II)
I will now determine whether the claims lack an inventive step in light of these documents.
Construing the claims
The specification ends with 36 claims. Claim 1 is the only independent claim and is considered to be the claim with the broadest scope. The claims are reproduced below:
1. A roadside post comprising an elongate body formed of sheet spring steel and having a longitudinal axis, a front face and a rear face, wherein:
said body is elastically bendable through 90 degrees from an unbent state about a transverse axis transverse to said longitudinal axis, said front and rear faces transversely extending generally parallel to said transverse axis.2. The roadside post of claim 1, wherein said body is elastically bendable through 90° from said unbent state about said transverse axis to either side of said longitudinal axis.
3. The roadside post of claim 1, wherein said body is formed from sheet spring steel having a Rockwell hardness of C40 to C47.
4. The roadside post of claim 3, wherein said spring steel is high carbon steel C1075.
5. The roadside post of claim 1, wherein said body has a width of 75 mm to 120 mm.
6. The roadside post of claim 1, wherein said sheet spring steel has a thickness of 0.9 mm to 1.5 mm.
7. The roadside post of claim 1, wherein said body has a substantially arcuate transverse cross-section.
8. The roadside post of claim 7, wherein said arcuate transverse cross-section has a radius of 100 mm to 250 mm.
9. The roadside post of claim 1, wherein said body has a channel shaped transverse cross-section comprising a central web and two lateral flanges.
10. The roadside post of claim 9, wherein the angle formed between said web and each said flange is 150° to 175°.
11. The roadside post of claim 1, wherein said post further comprises a rigid base adapted to be driven into the ground, a first end of said body being fixed to said base.
12. The roadside post of claim 11, wherein said base has a tapered end longitudinally distal of the body, said base tapered end being adapted to be driven into the ground.
13. The roadside post of claim 1 wherein a first end of said body is adapted to be driven into the ground.
14. The roadside post of claim 13, wherein said body first end is tapered.
15. The roadside post of claim 1, wherein said body includes a mark indicative of the location of the surface of the ground when said post is driven into the ground to a design depth.
16. The roadside post of claim 15 wherein said mark is a hole.
17. A roadside post installation comprising the roadside post of any one of claims 1 to 16 in which said post is driven into the ground.
18. The roadside post installation of claim 17, wherein a recess is formed in the ground immediately adjacent said body to allow uninhibited bending of said body, said recess extending across either of said front face and said rear face.
19. The roadside post installation of claim 18, wherein said recess extends 50 mm to 150 mm from said transverse axis at the surface of the ground.
20. The roadside post installation of claim 18, wherein said recess has a depth of 50 mm to 150 mm.
21. The roadside post installation of claim 18, wherein two said recesses are formed in the ground, a first said recess extending across said front face and a second said recess extending across said rear face.
22. The roadside post installation of claim 18, and comprising the roadside post of claim 11, wherein the entire said base is located beneath the surface of the ground.
23. The roadside post installation of claim 22, wherein the top of said base is located at a depth of 50 mm to 150 mm beneath the surface of the ground.
24. A method of installing the roadside post of any one of claims 1 to 16, said method comprising driving said post into the ground.
25. The method of claim 24, wherein the method further comprises forming a recess in the ground immediately adjacent said body to allow uninhibited bending of said body, said recess extending across either of said front face and said rear face.
26. The method of claim 25, wherein said recess extends 50 mm to 150 mm from said transverse axis at the surface of the ground.
27. The method of claim 25, wherein said recess has a depth of 50 mm to 150 mm.
28. The method of claim 25, wherein two said recesses are formed in the ground, a first said recess extending across said front face and a second said recess extending across said rear face.
29. A roadside post substantially as hereinbefore described with reference to Figures 1 and 2a or Figures 1 and 2b.
30. A roadside post substantially as hereinbefore described with reference to Figures 5, 6, 7, 9 and 10.
31. A roadside post installation substantially as hereinbefore described with reference to Figure 3.
32. A roadside post installation substantially as hereinbefore described with reference to either of Figure 4 and Figure 7.
33. The roadside post of claim 13 wherein said body is formed with a plurality of longitudinally extending ribs, each said rib having an apex separated from the apex of an adjacent rib by a trough.
34. The roadside post of claim 33, wherein said apexes of each adjacent pair of said ribs are laterally separated by 5 mm to 25 mm.
35. The roadside post of claim 34, wherein each said apex protrudes 0.2 mm to 0.8 mm from an adjacent said trough.
36. The roadside post of claim 13, wherein said body further comprises a barb located towards said first end of said body and projecting towards an opposing second end of said body.
Claim 1 contains five features which are construed as follows:
a) a roadside post;
b) comprising an elongate body;
c) formed of sheet spring steel;
d) having a longitudinal axis, a front face and a rear face; and
e) body is elastically bendable through 90 degrees from an unbent state about a transverse axis transverse to said longitudinal axis, said front and rear faces transversely extending generally parallel to said transverse axis
a) Roadside post
In Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 (hereinafter referred to as Delnorth) Justice Gyles determined the scope of the term “roadside post” at [39]:
“In my opinion, the highway marking device which is disclosed by Pellowski is a device which is attached to, or on, or in the surface of the roadway whereas all claims of the patents in suit relate to a post in the ground adjacent to the roadway.”
Consistent with this I consider the term ‘roadside post’ to mean a post in the ground adjacent to the road.
b) Elongate body
I consider that the term ‘elongate’ should be given its plain meaning of having a significantly greater length than the width.
c) Sheet spring steel
I consider that the term ‘sheet’ should be given its plain meaning of having significantly greater width and length than the thickness. The term ‘spring steel’ is given its plain meaning that the steel resiliently returns to its initial shape after being bent.
d) Longitudinal axis
The post has a longitudinal axis with a front and rear face thus I consider that it defines a post that, when installed, is generally vertical.
e) Body is elastically bendable
The term ‘elastically bendable’ is given its plain meaning that the body will return to the straight configuration after it has been bent.
The claims contain the phrase “…front and rear faces transversely extending generally parallel to said transverse axis” which in Delnorth Justice Gyles construed at [84]:
“This issue relates to the words “faces transversely extending generally parallel to said transverse axis” [integer 7]. All of the transverse (cross) faces are parallel with – ie, they follow the form of – the transverse axis.”
Consistent with this I consider that the phrase “…front and rear faces transversely extending generally parallel to said transverse axis” defines the orientation of the transverse axis (i.e. bending axis) with respect to the front and rear faces. Thus the claim defines a roadside post that bends in the front and rear directions as opposed to bending in the sideward direction.
Inventive step
Before determining whether the invention is obvious in light of the four aforementioned prior art documents, it must be determined whether those prior art documents would have been ascertained, understood and regarded as relevant by the person skilled in the art.
The problem the invention overcomes
The patent specification notes that existing roadside posts are often impacted and damaged by wayward vehicles. I consider that the problem addressed by the claimed invention is that roadside posts, and particularly flexible roadside posts, lack durability and thus a more durable roadside post is needed.
Person skilled in the art
The person skilled in the art is a notional non-inventive person who, at the priority date of the invention, had all the skills and knowledge necessary to understand the technology and the problem the invention attempts to solve.
In their submissions to the opposition the Opponent stated that in this case:
“The person skilled in the art is considered generally to be a mechanical/civil engineer, or someone having equivalent skills, having experience in the design, maintenance and testing of roadside posts.”
In the response to the first re-examination report the Patentee states:
“The person skilled in the art thus may be, for example, a designer or manufacturer of roadside post, or a person involved in the specification, installation or maintenance of such roadside posts.”
I am in substantial agreement with the both the Patentee and the Opponent – with respect to the present invention a person skilled in the art would be an engineer with skills in the design, manufacture, maintenance and testing of roadside posts.
Ascertained, understood, regarded as relevant
I will now consider whether the person skilled in the art could have been reasonably expected to have ascertained, understood and regarded as relevant the four prior art documents.
Ascertained
Several people who could be considered persons skilled in the art provided affidavits and testimony in Delnorth. Because of the highly relevant nature of the Delnorth case the evidence from that case is considered applicable to this re-examination.
The evidence shows that two persons skilled in the art, Mr Willbery (see cross-examination of Mr Willbery pages 293 and 313) and Mr Rootes (see cross-examination of Mr Rootes page 393), did not review the patent literature. However the evidence also shows that some people skilled in the art did review patent literature.
Mr Robinson, another person skilled in the art, stated at paragraph 34 of his Affidavit dated 22 February 2010:
“Once I had concluded development of the Mark IV Post, I recall attending the sub‑office of the Australian Patent Office in Sydney to look at Australian Patent Office records to ensure that the Mark IV Post did not infringe any current Australian patents. I did not during the development of the Mark IV Post, or the development of other products with which I was involved (including the Mark I Post), have reference to patent literature during the development of the products. It was, however, standard procedure for Industrial Galvanizers at the time to attend the Australian Patent Office sub-office in Sydney after having developed any new product to review current Australian patents to ensure that the product proposed to be commercialised did not infringe any third party patent. I understood that this procedure had been adopted in light of an experience which Industrial Galvanizers had had before I joined the company, when some ongoing patent litigation in which it was involved had ultimately settled "on the court room steps" after significant legal costs had been incurred. In other words, I used a review of the patent literature not as an informational or development tool, but only to ensure that I had not infringed upon any other Australian patent.”
Mr Robinson’s statement shows that he was aware of the patent literature but not as a source of relevant information for developing roadside posts.
Michael Turner, managing director of Polymeric Group which sells roadside guide posts, states at in his affidavit at paragraph 11:
“In approximately 1980 a ‘C’ type uPVC roadside post was developed, which was manufactured and supplied within Australia from 1982. I had direct input into the research and development, design and practical testing of the products.”
It is clear that Mr Turner has practical experience in the development of roadside posts. Mr Turner stated in cross-examination during the Delnorth case at page 443:
“Sir, we put about 11 per cent of our turnover into R and D and we employ a company – we’ve employed or worked with a company since the middle 80s to search for products that may be of interest to us or have a bearing on us and therefore I’d already come across Blau and Schmanski and Kennedy prior to this issue.”
It is clear from Mr Turner’s evidence that it was routine for his company to review patent literature as part of developing new products.
A relevant case in considering whether a person skilled in the art could be reasonably expected to search patents is Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26. In this decision the justices stated at [35]:
“Simply stated, we think it self-evident that it could not be reasonably expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States patent office. Such an expectation would be fanciful rather than reasonable.”
In contrast to the Emperor Sports case where there was no evidence that persons skilled in the art reviewed the patent literature, in this case there is evidence that some people skilled in the art reviewed patent literature while others did not.
In the Emperor Sports case the person skilled in the art was considered to be a relatively ‘non-technical’ person such as a referee, coach or umpire whereas in the present case the person skilled in the art has been determined to be an engineer. I consider it reasonable to expect that an engineer would review patent literature in seeking existing solutions to a particular problem since patents are widely known to be a comprehensive source of technical information.
Furthermore, the evidence of Mr Turner and Mr Robinson suggests that roadside posts have a reasonable level of associated patenting ‘activity’ thus these patents should provide a good source of information about the state of the art in this field. Consequently a person skilled in the art would have further impetus to review the patent literature for relevant information.
On balance I find that a person skilled in the art could have been reasonably expected to review patent literature at the priority date of the invention. In this case a person skilled in the art could be reasonably expected to review patents relating to the problem and in particular self‑righting road signs or traffic signals. Thus any patent relating to self‑righting road signs could be reasonably expected to have been ascertained by a person skilled in the art.
US 6,375,385 (Kennedy), US 4,486,117 (Blau), US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II) are all patents clearly directed to self-righting road signs and could therefore be reasonably be expected to have been found by a person skilled in the art looking for solutions to the problem of a more durable roadside post.
Understood
Each of Kennedy, Blau, Pellowski I and Pellowski II are written succinctly in plain English and thus could be understood by the person skilled in the art.
Regarded as relevant
Each of Kennedy (at column 1 line 33), Blau (at column 1 lines 35 to 44), Pellowski I (at column 1 line 40) and Pellowski II (at column 1 lines 60 to 61) refer to durability as one of the advantages of each of these inventions and would thus clearly be regarded as relevant by a person skilled in the art.
In summary, each of Kennedy, Blau and Pellowski I and Pellowski II are considered to be ascertainable, understandable, and relevant for the purposes of s 7(3).
Obviousness
I have determined that Kennedy, Blau, Pellowski I and Pellowski II would have been ascertained, understood and regarded as relevant. I must now determine whether the claimed invention would be considered obvious to a person skilled in the art in light of each of these documents.
Kennedy
Kennedy discloses a flexible post formed of a lamination of several sheets of spring steel.
Mr Turner states at paragraph 101 of his affidavit:
“Although Kennedy is concerned with an invention in the form of a laminated post, it would be evident to a skilled person reading Kennedy, such as a designer of posts, that a decision could be taken to use only one sheet of lamination of suitable thickness to give a post of desired rigidity. The laminations in Kennedy are intended to give adjustability to the rigidity of the post. Lamination is necessary to give the adjustability desired for the invention of Kennedy but it is clearly not necessary to provide a functional flexible post of a fixed flexibility or rigidity.”
Mr Dowling states at paragraphs 94 of his affidavit of 21 May 2007:
“The posts described in the Kennedy Patent are not formed of a single sheet of spring steel. In my view, the fact that each of the roadside posts described in each of claims 1 to 5 of [innovation patent 2006100696] are made of a single sheet of spring steel makes a substantial contribution to the working of each of the roadside posts …”
During cross-examination in Delnorth, Mr Burley asked Mr Dowling about the following excerpt from Kennedy (see pages 208, 209 of exhibit AAL-7 of the evidence in reply):
“The preferred spring steel material provides the desired resiliency and return after being deformed, while the multiple plies provide the desired stiffness to support a sign or other object when no other undue loads are imposed. The number of laminations may be adjusted as desired, with fewer elements being used for such purposes as traffic delineators where greater flexibility and no support of another object are required, with a larger number of elements being used where a stiffer support is required for supporting one or more larger traffic signs or the like, or other objects.”
Mr Burley: Now, that’s an invitation of a description of the roadside post here being reduced from multiple laminations to include a single lamination, is it not?
Mr Dowling: It appears that way. However, I found numerous places where it didn’t seem to allow that but certainly in that sentence.”
In Mr Turner’s opinion, “a decision could be taken to use only one sheet” by a person skilled in the art when considering the Kennedy disclosure. In Mr Dowling’s opinion the use of a single sheet to form a post has benefits compared with using multiple laminates to form a post, however in his opinion the Kennedy disclosure also appears to provide an ‘invitation’ to do so.
55. The evidence indicates that a person skilled in the art could have modified Kennedy to use a single sheet of spring steel, but it is not established nor am I satisfied that it would have been a matter of routine. Consequently the claimed invention does not lack an inventive step in light of Kennedy.
Blau
Blau discloses a flexible traffic ‘standard’ which includes a spring steel strap (13) folded to form two resilient arms (20) and (21).
It was found in Delnorth that the claims of the three innovation patents were not anticipated by Blau. Justice Gyles stated at [79]:
“The structure of the post, the shape of the tempered spring steel [strap], the way it is attached and enclosed bears no relationship with the structure of any of the posts claimed in the patents in suit. The geometry is quite different.”
Blau does not anticipate the present claims because the folded strap of spring steel in Blau is not considered a ‘sheet’ of spring steel. It is not obvious what steps would need to be taken to modify Blau to arrive at the claimed invention. For example, simply substituting a sheet of spring steel for the strap of spring steel would still result in a folded sheet of spring steel which is not considered a “an elongate body formed of sheet spring steel” as required by the claims. Because the steps needed to modify Blau to arrive at the claimed invention are not known, it certainly cannot be considered a matter of routine. Consequently the invention does not lack an inventive step in light of Blau.
Pellowski I and II
US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II) disclose essentially the same information, and will therefore be considered and referred to collectively as Pellowski, while all page and line references in this decision relate to US 3,312,156 (Pellowski I).
Pellowski discloses a highway marking device comprising an elongate body (2) formed of sheet spring steel (column 2, line 19) wherein: said body is elastically bendable through 90° from an unbent state in a forward and backward direction (see figure 3).
The difference between Pellowski and the claimed invention was considered in Delnorth where Justice Gyles stated at [39]:
“In my opinion, the highway marking device which is disclosed by Pellowski is a device which is attached to, or on, or in the surface of the roadway whereas all claims of the patents in suit relate to a post in the ground adjacent to the roadway.”
Mr Dowling states at paragraph 13 of his affidavit of 24 June 2008:
“In my opinion, this difference between a “roadside post” and the “highway marking device” described in the Pellowski Patent makes a substantial contribution to the working of the roadside posts defined in the claims of [the three innovation patents], because it is fundamental to the different functions of the two devices.”
Mr Robinson states at paragraph 69 of his affidavit of 22 February 2010:
“The marking device of Pellowski I thus differs from the roadside post defined in claim 1 of the Delnorth Patent in that the markings device is not a roadside post. The marking device of Pellowski I has a completely different application to a roadside post such as a sign post or guide post, being more in the form of a rumble strip which is intended to be impacted regularly on the roadway surface, as opposed to a roadside post which is intended to be located on the roadside and only occasionally impacted by wayward vehicles.”
Mr Rootes states at paragraph 33 of his affidavit of 12 March 2010:
“Having regard to the issues relating to the size, positioning and installation of the device described in the Pellowski I Patent as outlined above, I would not consider that device described if I were looking for a roadside post for use in Australia.”
The statements of Mr Dowling, Mr Robinson and Mr Rootes provide evidence that three people skilled in the art believed Pellowski substantially differed from the presently considered invention for two reasons. Firstly, the Pellowski device is located on the road whereas the present invention is located beside the road. Secondly, the Pellowski device is smaller than a typical roadside post.
The second of these reasons is not a persuasive reason that the claims provide an inventive step since the broadest claim of the patent does not define its dimensions. Although the Pellowski device appears to be smaller than a typical roadside post, it is still considered tall enough that it would function as a roadside post. This is consistent with the Delnorth decision where Justice Gyles stated at [87]:
“I do not accept that Pellowski was limited in its dimensions, particularly its height, in the way submitted for Delnorth.”
Thus the question of whether the claimed invention provides an inventive step rests solely on the consideration of whether a person skilled in the art would consider it a matter of routine to locate the Pellowski post beside, rather than on, a road.
In the Delnorth decision, Justice Gyles found that claim 1 of innovation patent 2006100297 lacked an innovative step in light of Pellowski. Claim 1 of 2006100297 has very similar scope, if not the same scope, to that of claim 1 of the patent, with the difference merely being a re-ordering of the features of the claim. Therefore the analysis of the evidence in the Delnorth decision is highly relevant to the consideration of the claims of the Patent.
Claim 1 of 2006100297 was found to lack an innovative step in the light of Pellowski, in spite of Mr Dowling’s contention to the contrary. It follows the Justice Gyles placed little weight on Mr Dowlings’s evidence, and I will do the same. The same weight should be applied to the similar evidence of Mr Robinson and Mr Rootes.
The present patent involves the use of the Pellowski patent in a directly analogous manner, i.e. adjacent to the roadway, rather than on the roadway. No modification of the post is necessary in order to use the post in this way. In the absence of credible evidence to the contrary, this seems self-evidently a matter of routine. Consequently claim 1 lacks inventive step in light of Pellowski.
Appended claims
In response to the first re-examination report the patentee stated:
“…[T]he Examiner has also failed to apply the statutory provisions of subsection 7(2). The mere (alleged) fact that the additional feature of a particular dependent claim is either disclosed in a prior art document or forms part of the common general knowledge does not establish that the invention defined in that claim lacks an inventive step. An assessment must be made, claim by claim, of whether the invention defined in that claim would have been obvious to a person skilled in the art in light of such common general knowledge considered alone or together with a relevant piece of prior art information satisfying the requirements of sub-section 7(3).”
I consider this an implicit contention that at least some of the appended claims provide an inventive step over the prior art. I will now consider whether the appended claims provide an inventive step in light of Pellowski.
Claim 2: Pellowski discloses that the device can bend in a frontwards or backwards direction as is evident from the arcuate surface (6) in figure 3 that allows for the bending of the device in both directions. Consequently claim 2 lacks an inventive step in light of Pellowski.
Claims 3 and 4: The hardness and type of the spring steel is not disclosed in Pellowski. There is no evidence to help determine whether the values claimed would be inherent in the disclosure of Pellowski. There is also no evidence to help determine whether a person skilled in the art would consider such values to be a matter of routine in light of Pellowski. The hardness and type of steel claimed appear to be chosen merely because they are suitable and not because they provide surprising or unexpected advantage. In the absence of a reason to think otherwise, I consider it would be a matter of routine experimentation for a person skilled in the art to make the Pellowski post with a hardness in this range and of steel of this type. Consequently claims 3 and 4 lacks an inventive step in light of Pellowski.
Claim 5: The width of the Pellowski device is not given. Mr Willbery states at paragraph 61 of his affidavit:
“Generally speaking, most roadside posts have dimensions above the ground of approximately 1 metre in height and 75 – 100 mm in width. These dimensions result from a number of factors including design criteria in the context of function, safety considerations and purchaser specifications based on such considerations.”
Thus the range of values claimed falls within the typical dimensions of roadside post widths and I think it would be a matter of routine for a person skilled in the art to modify the post of Pellowski such that it had had dimensions in this range. Consequently claim 5 lacks an inventive step over Pellowski.
Claim 6: The thickness of the Pellowski device is not given. The thickness appears to be chosen merely because it is suitable and not because it provides a surprising or unexpected advantage. In the absence of a reason to think otherwise, I consider it would be a matter of routine experimentation for a person skilled in the art to make the Pellowski post with a thickness in the claimed range. Consequently claim 6 lacks inventiveness in light of Pellowski.
Claim 7: Pellowski discloses the device to have arcuate transverse cross section in figure 2 and at column 2 line 20. Consequently claim 7 lacks an inventive step in light of Pellowski.
Claim 8: Pellowski does not disclose the radius of curvature of the post. The claimed radius of curvature appears to be chosen merely because it is suitable and not because it provides a surprising or unexpected advantage. In the absence of a reason to think otherwise, I consider it would be a matter of routine experimentation for a person skilled in the art to make the Pellowski post with a radius of curvature in the claimed range. Consequently claim 8 lacks an inventive step in light of Pellowski.
Claim 9: Pellowski does not disclose a post with a channel shaped cross-section. However, the SupaFlex road edge guide post which formed part of the evidence (designated JHW10) shows a post with a channel shape cross section. Mr Dowling states in his Affidavit at paragraph 55:
“…I am aware of PVC posts such as that referred to in the documentation marked “JHW10”, being a PVC roadside guide post commonly used within Australia. I have seen examples of this post in use on roads and highways in various states throughout Australia and I was well aware of the existence of this type of post prior to 23 June 2003.”
In light of Mr Dowling’s statement I consider channel shaped roadside posts to be common general knowledge. I consider that a person skilled in the art would, as a matter of routine, modify the post in Pellowski such that it had a channel rather than arcuate cross section since this would require only a minor variation to the shape. Consequently claim 9 lacks an inventive step in light of Pellowski.
Claim 10: In the absence of a reason to think otherwise, I consider it would be a matter of routine experimentation for a person skilled in the art to make the Pellowski post with flanges at an angle from the central web in the claimed range. The range of angles claimed appears to be chosen merely because it is suitable and not because it provides a surprising or unexpected advantage. Consequently claim 10 lacks an inventive step in light of Pellowski.
Claims 11, 12, 22 and 23: These claims relate to a post with a rigid base adapted to be driven into the ground. I am not satisfied that a flexible post with a rigid base adapted to be driven into the ground was common general knowledge nor am I satisfied that a person skilled in the art would consider it a matter of routine to modify Pellowski to include this feature. Consequently claims 11, 12, 22 and 23 do not lack an inventive step in light of Pellowski.
Claims 13, 14, 17, and 24: Pellowski does not disclose a post with a tapered end nor an installation method of being driven into the ground. Pellowski discloses digging a hole, placing the post in the hole and then filling the hole with a settable material.
Mr Turner states in his affidavit at paragraph 50:
“SVP manufactures both “drivable” and “non-drivable” PVC posts. Drivable posts are ones which are designed to be inserted into the ground by percussive force applied to the top of the post by a “driving” implement. “Non-drivable” posts are designed to be inserted into the ground by means other than percussive force, such as placement in a manually created hole.
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The bottom end of the SupaFlex post may be square cut, or tapered to a point to assist the driving of the post into the ground via a downward or percussive force applied to the top of the post.”
From Mr Turner’s statement I conclude that flexible posts with tapered ends and driving flexible posts into the ground was considered common general knowledge. I consider it would be a matter of routine for a person skilled in the art to modify Pellowski in light of the common general knowledge such that it had a tapered end. Consequently claims 13, 14, 17 and 24 lack an inventive step in light of Pellowski.
Claims 15 and 16: Mr Willbery states it was common general knowledge for marker holes or lines on roadside posts to indicate the depth the post should be installed at paragraph 60 of his affidavit:
“The use of marker holes or lines on a roadside guide post to indicate the depth to which driveable posts are to be inserted into the ground is commonly known. Manufacturers of guide posts, or regulatory authorities, commonly specify a design depth to which a post is to be inserted into the ground and it is common for this to be indicated by a marking on the post such as a line or hole. Examples of this can be seen in the documents marked “JHW10” and JHW11”.”
In the light of this evidence I consider it would be a matter of routine for a person skilled in the art to combine the teaching of Pellowski with the common general knowledge of marking lines or holes on a device. Consequently claims 15 and 16 lack an inventive step in light of Pellowski.
Claims 18, 21, 25 and 28: The feature of recesses formed in the area immediately adjacent the post body to allow uninhibited bending is disclosed in Pellowski at column 2 lines 42 to 50:
“Prior to curing or hardening of the material 5, the strip element 2 is flexed or bent over in opposite directions to a generally horizontal condition whereby to form arcuate surfaces 6 which extend outwardly from the opposite sides of the strip element 2, as shown particularly in FIGS. 2 and 3. These arcuate surfaces 6 are provided for the purpose of eliminating a sharp edge adjacent to the strip element 2 which would otherwise form.”
The arcuate surfaces (6) in figure 3 define the surface of two recesses. Since I have already found that driving the post into the ground would be considered a matter of routine to a person skilled in the art, it reasonably follows that making the recesses in the ground instead of in the hardenable material would also be considered a matter of routine. Consequently claims 18, 21, 25 and 28 lack an inventive step in light of Pellowski.
Claims 19, 20, 26 and 27: Although the dimensions of the recesses are not given, there does not appear to be any surprising or unexpected result arising from the range claimed. In the absence of a reason to think otherwise it would be considered a matter of routine for a person skilled in the art to use these values. Consequently claims 19, 20, 26 and 27 lack an inventive step in light of Pellowski.
Claims 29, 31: These are omnibus claims limited to posts with a base that is affixed to one side of the post. Pellowski does not disclose a base that is affixed to one side of the post. I am not satisfied that affixing a base to the side of a post is common general knowledge and I can see no reason why the person skilled in the art would consider it a matter of routine to modify Pellowski to include this feature. Consequently claims 29 and 31 do not lack an inventive step.
Claim 30: This is an omnibus claim which defines a post including longitudinal ribs, a barb, a removal slot and a depth marker hole. The longitudinal ribs of this omnibus claim are specifically of a ‘concertina type’ which are pressed into the post. Mr Turner states at paragraph 51 of his affidavit that in some instances longitudinal ribbing has been used on plastic posts to provide rigidity. Mr Willbery states at paragraph 99 of his affidavit that the use of ribs is a commonly known and used method within the roadside guide post industry. However, I am not satisfied from these statements that ‘concertina type’ longitudinal ribbing was considered common general knowledge, nor that it would be a matter of routine for a person skilled in the art to modify the prior art to include ribbing. Consequently claim 30 does not lack an inventive step in light of Pellowski.
Claim 32: Claim 32 is an omnibus claim that refers to either of figure 4 and figure 7. Figure 4 discloses a base affixed to one side of the post, whereas figure 7 discloses a barb near the base of the post. As discussed with reference to claim 36 below, a post with a barb is not considered to provide an inventive step over Pellowski. Consequently claim 32 lacks an inventive step over Pellowski.
Claims 33, 34 and 35: Claims 33, 34 and 35 define a post with longitudinal ribbing, wherein each rib has an apex and adjacent ribs separated by a trough. The term ‘apex’ limits the scope of the claim to a rib which has a distinct or sharp top as opposed to a rib with a rounded cross section. Although evidence has been provided that shows that longitudinal ribs on posts is generally known in the art, I am not satisfied that ribbing with apexes would be common general knowledge nor that it would be a matter of routine to for a person skilled in the art to modify Pellowski to include such ribbing. Consequently claims 33, 34 and 35 do not lack an inventive step in light of Pellowski.
Claim 36: Pellowski does not disclose an upwardly facing barb at the buried end of the post. However, barbs are considered common general knowledge in flexible posts. Mr Turner states at paragraph 34 of his declaration:
“Depending upon the method of installation intended for a type of post, features have been commonly used in the design of roadside guideposts to assist the installation and retention of roadside guide posts in the ground. Pointed or tapered ends are currently used by SVP and were first used by Supavinyl in approximately 1986 to assist where a post was designed to be driven into the ground. Upwardly pointing barbs or tongues, and in other instances anchor rods, are used to assist the retention of the post in the ground. Supavinyl first used anchor rods to assist ground retention in July 1982, and upwardly pointing tongues in 1984.”
In light of the evidence I consider it would be a matter of routine for a person skilled in the art to combine the teaching of Pellowski with the common general knowledge of barbs at the end of the post. Consequently claim 36 lacks an inventive step in light of Pellowski.
In summary, claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 are considered to lack an inventive step in light of both US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II) while claims 11, 12, 22, 23, 29 to 31 and 33 to 35 do not lack an inventive step.
Conclusion
The Patentee has been given an opportunity to be heard and to amend the specification for the purposes of removing any lawful ground of objection thus satisfying s 101(2). There are no relevant proceedings in relation to the patent thus satisfying the requirements of s 101(3).
I have found that claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 lack an inventive step in light of both US 3,312,156 (Pellowski I) and US 3,362,305 (Pellowski II). Where an adverse finding is made in a re‑examination Section 101 of the Act allows for the patent to be revoked either wholly or so far as it relates to a particular claim. It is appropriate that all claims that have been found to be invalid due to lack of an inventive step are revoked. Claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 are revoked pursuant to s 101(1).
Xavier Gisz
Delegate of the Commissioner of Patents
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