Dura-Post (AUST.) Pty Ltd v Rondo Building Services Pty Ltd

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 717385 in the name of Dura-Post (AUST.) Pty Ltd

Title: Guide Post

Action: Opposition under section 59 of the Patents Act 1990 by Rondo Building Services Pty Ltd

Decision: Issued
Abstract

The opposition was successful. Certain claims were found to lack novelty and an inventive step. The opposition grounds that the invention was not in respect of a manner of manufacture and that the nominated person was not entitled to any patent granted on the application were not established. Costs were awarded against the patent applicant.
All features of claim 1 were considered to be essential features of the claim.
Patentable subject matter was believed to be present. The applicant was allowed 60 days to propose suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 717385 by Dura-Post (AUST.) Pty Ltd, and opposition under section 59 of the Patents Act 1990 by Rondo Building Services Pty Ltd.

BACKGROUND

Patent application 717385 arose as application 53004/98 filed in the names of Dennis Wynwood and Peter Geoffrey Turner on 6 February 1998. The application claims priority from two provisional applications, namely PO4993 filed on 6 February 1997 and PO6998 filed on 26 May 1997. Thus the earliest priority date of the claims of the application is 6 February 1997. Application 53004/98 was advertised accepted on 23 March 2000 and assigned number 717385.
A notice of opposition to the application was filed on 22 June 2000 by Delnorth Pty Ltd., and a statement of grounds and particulars followed on 22 September 2000. The evidence stages of support, answer and reply were duly completed.
Since the completion of the evidence stages, the opponent's interest has been vested in another person and the Commissioner has recorded the opponent as Rondo Building Services Pty Ltd (hereinafter "Rondo"). Furthermore interest in the application has also been transferred and Dura-Post (AUST.) Pty Ltd (hereinafter "Dura-Post") is now recorded as the applicant.
On 23 January 2002, that is after the filing of evidence in support, the applicant requested amendment of the specification. This request was allowed on 13 August 2002. The main effect of the amendments was to combine accepted claims 1 and 2 thus creating a new claim 1.
The statement of grounds and particulars ("the Statement") lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990 ("the Act"): paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b) (novelty and inventive step) and the nominated person is not entitled to the grant of a patent.
This matter was set for a hearing in Canberra on 29 November 2002. Prior to the hearing the patent attorneys for Dura-Post advised that the applicant would not be represented at the hearing and would not be making written submissions. Patent attorneys for Rondo also indicated that the opponent also would not be represented but would rely on written submissions.
THE SPECIFICATION
The invention is entitled "Guide Post". The following introductory portion from the specification explains the invention and its background.

"Field of the Invention
The present invention relates to guide posts, which term is used in this specification to include posts used in roadside locations to guide automotives, as well as similar posts used as indicators, barriers and supports for warning signs and materials at building sites, sporting events, in agricultural environments and the like.
Background Art
It is well known to provide roadside guide posts to assist motorists to delineate the road in the dark or during other periods of impaired visibility. There are many different types of such guide posts and the present invention is designed to provide an alternative to such known types of guide posts. Such posts may also be used as indicators, barriers and supports for warning signs and materials at building sites, sporting events, in agricultural environments and the like."

The specification goes on to describe as the invention a particular form of guide post. A particular feature is an aperture at a lower region of the post which, when the post is positioned in the ground, is intended to be at around ground level. This feature of the post is included in claim 1 together with further definition of its intended use and function.
The claims of the application, as recently amended, are as follows:

"1.       A guide post (a) formed of a thin sheet of a metal material and (b) having a channel shaped cross section, (c) the post having an elongate aperture formed therein a distance from a lower end of the post which is indicative of the distance the post should be driven into the ground in use, (d) the aperture being elongated in a direction substantially in alignment with a longitudinal axis of the guide post so sized and configured that if the post is struck by a car or like object above ground level the post will bend at the level of the aperture.
2.        A guide post as claimed in claim 1 in which engagement means are formed in the guide post, which engagement means are adapted to engage with apertures in another post of similar cross section such that the two posts are held in face to face juxtaposition.
3.        A guide post as claimed in claim 1 or 2 in which adjacent an upper end of the post there being provided a light reflecting member an at least one side of the post.
4.        A guide post as claimed in claim 3 in which the light reflective member is a disc-like reflector secured to the post by a rod extending through the thickness of the post and having an abutment an one side of the post, on the other side of the post the rod extends through an aperture in the reflector and carries on its free end an axle nut.
5.        A guide post substantially as hereinbefore described with reference to the accompanying drawings."

In claim 1, I have included the identifiers (a) to (d) to aid subsequent reference to features of the guide post as claimed.
THE EVIDENCE FILED
Evidence in support
The evidence filed in support of the opposition comprises statutory declarations by the following persons:
Gregory Gurr, patent attorney of Spruson & Ferguson
Boydan Mudryk, a product and development manager for Delnorth
John Robinson, a development manager for Industrial Galvanizers Corporation Pty Ltd
Lindsay Harding, a sales manager for INGAL Civl Products.
Evidence in answer
This comprises a statutory declaration by Peter Turner, a director of Dura-Post, and one of the joint inventors of the invention. This declaration comprises only two paragraphs and leaves the bulk of the evidence in support unchallenged.
Evidence in reply
This comprises a second statutory declaration by Gregory Gurr.
DECISION
Essential features of claim 1
The submissions for Rondo raise the issue of the essential features of claim 1. This is of relevance to the opposition ground of lack of novelty since, when applying the well known reverse infringement test for novelty as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 235, it is necessary to assess the disclosure of an alleged anticipation to see whether or not it discloses all the essential features of the relevant claim (see Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391).
The submission contends that the feature (d), namely,

"the aperture being elongated in a direction substantially in alignment with a longitudinal axis of the guide post so sized and configured that if the post is struck by a car or like object above ground level the post will bend at the level of the aperture",

is inessential to the invention "as the configuration of the aperture does not materially effect the way the invention works". It adds that from the specification the feature is "described as merely being a preferred feature and only being related to drivability of the post, not bending of the post". Further, the submission refers to evidence in support which, it is contended, makes it clear that the elongation of the ground level aperture does not affect the manner in which the post, when installed in the ground, will bend on impact.

Before discussing the issue of essentiality, I make the following observation about claim 1 and feature (d). The portion of text of claim 1 which I have referenced as feature (d) is quoted above as it appears in the claim and notably does not include any punctuation. The normal interpretation of the claim means that the definition "so sized and configured …" must relate to the aperture, not to other features of the post. Thus feature (d) provides a definition by way of the result to be achieved due to the nature of the aperture formed in the guide post.

The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd [1982] RPC 183 at page 228, where Buckley LJ said:
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger all assume that a claim may include an inessential feature."
The specification in this case provides scant attention to the aperture in question and its elongation as claimed. There are four references to it in the description. The first is on page 2 in the second of three statements alluding to aspects of "the present invention" or "the invention", the wording corresponding to the terms of claim 1. The second is on page 5 where, in describing a preferred embodiment of the invention with reference to Figure 1 it states:

"The hole 15 is preferably so dimensioned that the drivability of the post 10 is not reduced unduly. For this reason it is preferable that the hole is elongated in a vertical direction rather than horizontally".

Then on page 6 the description states that the hole 15 "forms a zone of weakness in the post such that when struck transversely it will fold in a controlled manner rather than have a tendency to be ripped from the ground." Finally, on page 8 reference is made to the guide post shown in Figure 6 and "guide hole 115", the guide hole being described in similar manner to "hole 15" previously. The figures show holes 15 and 115 elongated and with a width small compared to the overall width of the posts depicted. The specification also indicates that the hole provides an indicator of the depth to which the post can be driven into the ground and that it can serve as a connection point by a tool to aid removal of the post from the ground.

The specification provides no other information about the nature of the hole and its effect on the drivability of the post into the ground or the bending characteristics of the post when struck by an object above ground level. At best the description indicates that the elongation of the hole ensures adequate "drivability of the post" into the ground.
The opponent's evidence contends that for a post of channel shaped cross section, the nature of a hole in the post at ground level has little significance in the way the post would bend when struck by an object. An analysis by Gurr in his second declaration indicates that only the width of an aperture in such a post has an affect on the bending stiffness of the post and that the shape of the aperture has absolutely no affect. In contrast, in his brief declaration Turner states that "… I unexpectedly determined that a sufficiently elongate hole also contributed to post bending when struck by a car" and that compared to then existing posts "the new post did have superior bending characteristics due to the sizing and configuration of the lower holes". Turner provides no data or further information in support of his statements.
The evidence before me is weighted towards the conclusion that the elongation of the hole in the longitudinal direction of the post is not essential to the working of the claimed invention in respect of the bending characteristics of the post when struck. On the basis of the first generalisation given in the Catnic case (supra), this suggests feature (d) of the claim is not an essential feature. But against that, given the second generalisation in the above case, the specific terms of feature (d), where the size and configuration of the hole is linked to the bending of the post when struck, leads to the view that the applicant has clearly limited his claim to a subject matter having that particular feature and thus has made it an essential feature of the claim. The conclusion which I have reached is that the applicant has made it an essential feature of the claim. The applicant has by the terms of the claim sought a monopoly limited by a feature having certain characteristics for a particular object or purpose and consequently the feature constitutes an essential feature of the claim. (See also MJA Scientifics v SC Johnson 43 IPR 287 at 303, proposition (8).)
Person skilled in the art
It is appropriate at this point to consider the person skilled in the art applicable to the present invention since considerations for the novelty and inventive step grounds arise from the perspective of how such persons understand the prior art and the step to the present invention.

I agree with Rondo's submission that the person skilled in the art relevant to the present application is a person skilled in the design and construction of guide posts. Both Robinson and Mudryk have developed guide posts and seen them into production and into the market place in Australia. It seems to me that they both qualify as a person skilled in the art and would, I believe, possess the common knowledge in the art. Harding has been involved with guide post production and marketing for some years. Although his level of involvement in the design of guide posts is not evident from his evidence, he clearly has knowledge of at least his company's products in this field from both the production and marketing perspectives. Given his limited evidence in this matter, I am not able to conclude that Harding qualifies as a person skilled in the art as that expression is understood in patent law.
Common general knowledge
The common general knowledge in the art is relevant to both novelty and inventive step considerations.

In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 common general knowledge was referred to in these terms (per Aickin J. at page 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 it must be treated as being used by an individual as a general body of knowledge."

In ICI Chemicals & Polymers Ltd v Lubrizol Corp, 45 IPR 577 Emmett J stated at 599:
"112 The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
·    standard texts and handbooks;
·    standard English dictionaries;
·    technical dictionaries relevant to the field;
·    magazines and other publications specific to the field."

Rondo submits that the following matters formed form part of the common general knowledge of the person skilled in the art before the earliest claimed priority date of 6 February 1997:

"(a)      the Ezy-Drive Post and the features thereof, including the ground level aperture;
(b)       the Mark I Post and the Mark IV Post and the features thereof, including the ground level apertures;
(c)       the use of disk-like light reflecting members on guide posts;
(d)       various forms of fasteners and the ability to use the same for securing a disk-like reflector to a guide post;
(e)       the practice of holding two posts together by engaging apertures into two posts or engagement means in the form of fasteners; and
(f)        the fact that a guide post formed of a thin sheet of metal material having a channel shaped cross section will bend at ground level when struck by a car or like object, irrespective of the existence or size and shape of an aperture positioned at ground level."

The evidence of Robinson and Mudryk is that the roadside products industry is quite competitive, that those in the industry keep abreast of new developments through trade journals and other literature including patent records, and that new products become known within a short period. This evidence has not been contested by the applicant.
Regarding the Ezy-Drive Post, this was a post developed by Delnorth from about mid 1994 and promoted to the public from during 1995. Rondo points to the evidence about the manner of disclosure of information about this product in Australia particularly to local councils, and to sales of the product prior to the priority date. Robinson also declares that the product was well known to him, and he believes most others in the industry, well before the priority date. The applicant has not contested any evidence about this post. I believe this product was part of the common general knowledge.
The Mark I and the Mark IV [Ingal] posts, which I will discuss in more detail under the novelty heading, were guide posts developed by Industrial Galvanizers and introduced to the Australian marketplace at different times, 1984 and late 1992 respectively, and well before the priority date in each case. The applicant does not contest evidence about these posts and I believe they too were part of the common general knowledge.
The use of reflective devices on guide posts for tens of years is well known to the motoring public. Various forms of reflectors and the options available to attach same to guide posts would have been well known to skilled persons in the industry at the priority date. Thus I consider that matters (c) and (d) mentioned by Rondo were also part of the common general knowledge.
Regarding matter (e), Mudryk states that he "was aware of the practice of holding two posts together [by] engaging apertures via engagement means in the form of fasteners before 1997". He refers to the disclosures in two US patents as an example. I note that the examples show two elements held together via bolt fasteners passing through apertures in the posts, an arrangement which is clearly a well known method of joining items together. Robinson says nothing about common general knowledge in regard to fixing posts together. I am only prepared to accept that joining posts or objects together via bolt fasteners through apertures in the posts was part of the common general knowledge.

Robinson and Mudryk both provide evidence which tends to indicate that matter (f) mentioned would have formed part of the common general knowledge at the priority date. Robinson states in paragraph 14 that during testing of a Mark IV Ingal guide post (a post similar to a Mark I but made of lighter steel) he found that:

"apertures in the web of the post had little or no effect on the impact performance, and that the bending strength of the post was almost entirely a function of the folded flanges. This was also the case identified during development of the Mark I Post. … The guide posts always bend at ground level, irrespective of the specific section configuration and the height of the impact. This fact, and the fact that the bending performance is dictated by the configuration of the flanges as opposed to that of the web, would be appreciated by any one with a basic understanding of structural engineering."
Declarant Mudryk, who has been involved in the design and manufacture of highway guide posts since 1992, discusses the bending characteristics of certain guide posts. He says that development tests on an Ezy-Drive guide post produced by Delnorth found that the "guide posts bend at ground level, where the bending moment is greatest, irrespective of where the guide post is struck and irrespective of whether an aperture is provided at ground level, and the size of such an aperture". Later, referring to the ground level aperture of the present invention he concludes that the "length of the aperture, whether it be round or elongated, will have little or no effect on the strength of the post". I note also that Declarant Gurr in his second declaration, after analysing the flexural rigidity of post designs, concludes that an aperture and the shape of an aperture in the web of a thin metal sheet guide post at the base of the post will have negligible or no effect on the bending performance of the post when struck.
Turner provides some evidence regarding post bending which contrasts with statements by Rondo's declarants. However what he says concerns the development of his invention. I note however that Turner's experience with regard to guide posts and thus their characteristics and properties appears to span only about 2 months prior to the priority date. I am thus extremely doubtful whether Turner can be regarded as one possessed of the common general knowledge in the art at the priority date.

Robinson and Mudryk do not explicitly state that matter (f) formed part of the common general knowledge. However I consider that the comments by Robinson and Mudryk represent an understanding of the bending dynamics of guide posts known to skilled persons in the art before the priority date and I accept that matter (f) formed part of the common general knowledge.
Novelty
It follows from my conclusion about feature (d) being essential to the claim that in order to deprive the claim of novelty a prior disclosure will need to disclose a guide post with each of features (a) to (d). Furthermore, a piece of prior art will not disclose feature (c) and feature (d) if it does not possess an elongated aperture positioned as defined. In addition, the invention is defined by way of the result to be achieved in that feature (d) requires the aperture be "so sized and configured that if the post is struck by a car or like object above ground level the post will bend at the level of the aperture". Thus any items of prior art must also satisfy this requirement in order to render not novel the invention.
Given the prior art information relied upon by Rondo in this case, the Act requires that the novelty of the invention be assessed against prior art information publicly available in a single document or through doing a single act (see paragraph 7(1)(a)). Any prior art information must have been publicly available before the priority date of the claims, namely 6 February 1997. Rondo relies on various documents and on alleged instances of prior use of certain articles for its novelty attack.
In determining this matter, the standard of proof required in proceedings before the Commissioner is the civil standard, ie. the balance of probabilities (see eg. 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, ie. material which tends rationally to show the existence or non-existence of facts relevant to 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 (or as here grounds of opposition to grant) bears the onus of proof and any doubt should be accorded to the patentee (applicant).
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 eg. Seiller's Application [1970] RPC 103.)
I will now discuss the various documents and instances of prior use articles raised in evidence regarding lack of novelty.
(a) Mark I Ingal guide post
Declarant Robinson provides evidence about this item. He states that he was responsible for the development of a steel guide post for his company in 1983 and which was introduced to the Australian market in 1984. He says that Australian Petty Patent 536400 relates to this guide post. Robinson describes the post as being formed from a "top hat" shaped steel section "with apertures toward the top for affixing the reflector and backing plate, and a further aperture toward the bottom of the post, located at a distance from the bottom of the post corresponding to the depth that the post should be driven into the ground". He also states that the "initial ground level apertures were elongated in the direction of the longitudinal axis of the post to enable receipt of the hook portion of a jacking tool" for extracting an installed post, but in 1987 when an alternative clamping tool was developed to extract posts the "aperture was changed to a round aperture as per the remaining apertures toward the top of the post".
The specification of Petty Patent 536400 makes no mention of a ground level aperture nor do the drawings illustrate any such feature. Thus the petty patent specification document does not disclose the invention of claim 1. Exhibit JR-2 is an "Ingal" colour brochure depicting a guide post with similarities to the post shown in the drawings of the petty patent and said to be of the Mark I post. Robinson says the brochure was "publicly distributed from 1985". The posts in the picture on the cover of the brochure do not display evidence of a ground level aperture, and despite Robinson saying that the ground level aperture can be "faintly made out in the photograph depicting the post being driven into the ground" on the second page, the presence of such an aperture in the photograph is not apparent to me.
Exhibit JR-5 is a photograph of items located in the yard of Industrial Galvanizers facility at Hexham including what Robinson says is "a sign post section" which dates back to the early 1980s. Several holes which appear to be elongated are evident and Robinson says these holes are "identical to those that were found on the original Mark I guide post". He says the same hole punch was utilised to form the elongated apertures in the sign post and the ground level aperture in the early Mark I guide posts. No original guide posts were located in the yard. There is no other material exhibited which otherwise confirms the existence or nature of the ground level aperture on the Mark I post.
Declarant Harding says that as Production Manager with Industrial Galvanizers in 1983 he was well aware of the development of the Mark I guide post by Robinson. He confirms that it was marketed in Australia from 1984, that the post had an aperture as a marker indicator for the depth the post should be driven into the ground, and that the ground level aperture in the early versions of the post was elongated "as discussed by Mr Robinson" in his declaration.
The evidence of Harding corroborates that of Robinson regarding the availability of the Ingal Mark I guide posts in 1984 and that the initial version had an elongated aperture positioned to indicate the level to which the post should be driven into the ground. I accept that such guide posts were available to the public before the priority date and thus they can be considered for novelty purposes.
As described by Robinson the Ingal Mark I guide post discloses features (a) to (c) of claim 1. As to feature (d), I have accepted as common general knowledge the fact that a guide post formed of a thin sheet of metal material having a channel shaped cross section will bend at ground level when struck by a car or like object, irrespective of the existence or size and shape of an aperture positioned at ground level. Thus the Mark I post would have disclosed to a skilled person a post having the functional result of bending at ground level, being the level of the elongated aperture, when struck by a car. Thus to a skilled person the Mark I post would have disclosed feature (d).
Turner states that he "unexpectedly determined that a sufficiently elongate hole also contributed to post bending when struck by a car". However, he provides no elaboration of the processes or tests he may have done to reach that conclusion, nothing specific about the "other posts having holes at this point" to which he makes comparison, and no guide as to what may constitute a "sufficiently elongated hole" for any specific profile of post. His evidence contrasts with what I have accepted as being common general knowledge regarding the bending of guide posts.

From the evidence before me I am satisfied that the Mark I Ingal guide post with elongated ground level aperture also disclosed feature (d) of claim 1. Since the Mark I Ingal guide post would constitute an infringement of claim 1 if that claim were in a patent, on the basis of the reverse infringement test for novelty, claim 1 lacks novelty.

As the Mark I Ingal guide posts were also provided with a reflector uppermost on the post, claim 3 also lacks novelty.
There is no evidence to establish that the Mark I Ingal guide posts available to the public incorporated the features defined in claims 2 and 4. As to claim 5, there is no evidence which shows that the Mark I Ingal guide posts presented a channel shaped cross section as shown in the drawings of the specification and to which the invention of claim 5 is limited. Claim 5 is thus novel.
(b) Mark IV Ingal guide post
Robinson says that he was responsible for the development of this lighter steel guide post in 1992. He says it was of channel cross section and "included a ground level aperture similar to that on the Mark I guide post". Robinson does not indicate that the ground level aperture was elongated and a photograph of a "current Mark IV guide post" at exhibit JR-7 does not show an elongated aperture. Thus the Mark IV Ingal guide post can not deprive claim 1 of novelty.
(c) Delnorth Ezy-Drive guide post
This was a guide post similar to the Mark IV Ingal guide post developed from about mid 1994 and promoted to the public from during 1995. It is referred to by Robinson and Mudryk. There is no indication that this post had a ground level aperture which was elongated. Thus it does not deprive claim 1 of novelty.
(d) US patents 4126403 and 5125194
Both these patent specifications are advanced in submissions as disclosures rendering claim 1 not novel. However neither disclose an elongate aperture as required by feature (c) of the claim. They do not deprive claim 1 of novelty.
In summary, claims 1 and 3 lack novelty.
Inventive step
Sections 7(2) and (3) of the Act relate to the requirement for assessing the existence of an inventive step. Those provisions, as applicable to the present application and insofar as they apply to the present circumstances advanced under this opposition ground, indicate 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 as relevant to work in the relevant art in the patent area.

(The provisions of s 7 applicable to the present application are those applying immediately prior to the amending act which came into effect in 2001.)
Information reasonably expected to have been ascertained

In order to use prior art information in considering whether an invention lacks an inventive step the Act requires that the skilled person 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.
Rondo submits that the prior art documents and prior uses put in evidence meet this requirement, given the competitiveness of the roadside products industry, and the manner in which persons skilled in the art consult the available literature and products of competitors. I do not doubt that the guide post products publicly available in Australia would meet this requirement so that the Mark I and Mark IV Ingal posts and the Delnorth Ezy-Drive post discussed under novelty fall into this class. Brochures available in Australia about such products would I believe also qualify. I also believe it is reasonable to conclude that information for roadside products such as guide posts in patent and design documents also qualify.
Considerations
It is from the position of a non-inventive worker in the field equipped with the common general knowledge and together with any qualifying prior art information that the invention must be considered to assess the presence of an inventive step.
As the Mark I Ingal guide post was common general knowledge before the priority date and given that I have found that it disclosed the features of claims 1 and 3, it is clear that these claims also lack an inventive step having regard to this common general knowledge.
As indicated under the novelty heading, the Mark IV Ingal post and the Delnorth Ezy-Drive post included a ground level aperture but not one which was elongated. Rondo's submission is that the evidence establishes that an elongated hole at ground level in channel shaped guide posts, and even the existence of an aperture, has no or negligible effect on the ability of the guide post to bend at ground level when struck by a car. Thus it is submitted that this feature is "no more than a technical equivalent of the common general knowledge guide posts and could not not be considered to involve an inventive step in light of the common general knowledge." The submission adds that the "elongation of the aperture merely provides a modification of a known integer which provides no improvement in the ability of the guide post to bend, let alone any surprising unexpected improvement."
It seems to me that a person skilled in the art with the prior art information of either the Mark IV Ingal or the Delnorth Ezy-Drive post and with the common general knowledge of matter (f) mentioned above would see the ground level aperture as essentially providing an indicator for the depth to drive the guide post into the ground and of little import to the bending characteristics of the post when struck. As such the precise size or shape of the aperture would not be seen as significant and thus any variations to the aperture would be a mere design or workshop variation not leading to any improvement in the bending of the post when struck. The applicant has not advanced any evidence to establish that an elongated aperture provides an unexpected bending benefit over the prior art posts with round apertures. There is no indication of some difficulty overcome, or some barrier crossed which might suggest some quantum of inventiveness needed to arrive at the present invention: see R D Werner & Co v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; nothing "beyond the skill of the calling": see Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701. Consequently I consider that the claimed invention cannot be considered as having the required exercise of invention over these known guide posts. Claim 1 thus lacks an inventive step based on the prior art information of either the Mark IV Ingal or the Delnorth Ezy-Drive posts. Furthermore as these prior art posts included a light reflecting member at their upper end, the invention of claim 3 when appended directly to claim 1 also lacks an inventive step.
Claim 4 further defines the arrangement of claim 3 wherein the light reflecting member is secured to the post by way of a rod and an "axle nut", the term axle nut being understood to mean as indicated on page 7 line 31 of the description. Rondo submits that this "type of fastener had been known of by Mr Mudryk and Mr Robinson when developing their respective products but dispensed with as not being suitable due to their lack of security as discussed at paragraph 24 of the Mudryk Declaration and paragraph 17 of the Robinson Declaration. The type of fastener is merely a technical equivalent of those used on the well known Ezy-Guide Drive, Mark 1 Post and Mark IV Post."
It seems to me that the particular fastening method claimed is merely one of various alternative forms of fastening for a reflecting member and available to a skilled person in the art to select to meet particular requirements. There is nothing to suggest any invention lies in choosing the particular fastener method as claimed. Claim 4 thus lacks an inventive step.
I turn now to claim 2. This claim defines that engagement means are formed in the guide post and are adapted to engage with apertures in a second post of similar cross section such that the two posts can be held in face to face juxtaposition. To me the definition does not suggest "engagement means" being bolts, but some element(s) "formed in" the post which can engage with respective apertures, like the tabs 16 punched out of the post shown in figure 1 of the present specification.
Rondo relies on US patents 4126403 and 5125194, which disclose joined post elements, in submitting claim 2 lacks an inventive step. However the fastening arrangements in either US patent do not have an engagement means "formed in the guide post … adapted to engage with apertures …". Even if the person skilled in the art could have been reasonably expected to have regarded these two US patents as being relevant in the context of joining two posts, I do not believe that the person with the common general knowledge would have arrived at the invention of claim 2. The common general knowledge I accepted was that of joining posts or objects together via bolt fasteners through apertures in the posts, and even with that common general knowledge the skilled person would fall short of the claimed arrangement. Thus I conclude claim 2 involves an inventive step.
I construe omnibus claim 5 as being directed to the essential features of the guide post of the invention as described and in the form as depicted in the drawings. In particular it thus seeks a monopoly for a guide post having among other features "a channel shaped cross section" as represented in figure 3. The Mark IV Ingal and Delnorth Ezy-Guide Drive posts have distinctly different cross sections to that shown in figure 3. The Mark I Ingal guide post has a cross section which is somewhat similar but noticably with the angled intermediate flanges more highly angled to the central web. Rondo submit that the "general cross section of the post and aperture formed in the post are clearly established as being well known from the Evidence-in-Support and cannot be considered to constitute an inventive step". However there is no evidence before me to indicate that the figure 3 cross section was well known for guide posts or otherwise amounted to an alternative design configuration well within the knowledge of a skilled person in the art and requiring no inventive faculty. Thus contrary to Rondo's submission, I am not satisfied the invention of claim 5 clearly lacks an inventive step.

In summary, claims 1, 3 and 4 lack an inventive step.
Manner of manufacture
Rondo submits that the claimed invention:

"… is not a manner of manufacture in that the invention of each claim does not exhibit sufficient inventive merit to be considered an invention.

Further, the various claims define no more than a collocation of known integers that display no working inter-relationship (see British Celanese Ltd v Courtaulds Ltd. 52 RPC 171 at 193-194)."

The submission then includes comments about the claims directed to the "collocation" issue. However the quoted portion suggests an attack also on the basis of lacking "inventive merit".

The law regarding the patentability ground "manner of manufacture" has been considered in recent years by the High Court in N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655; 32 IPR 449 and in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171; 40 IPR 243, and by the Full Court of the Federal Court in Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553. A number of points arise from those cases, namely:

1.The "phrase 'manner of manufacture within the meaning of section 6 of the Statute of Monopolies' in s 18(1)(a) should be understood as referring to a process which is a proper subject matter of letters patent according to traditional principle" (per Philips, IPR at 456).

2.If it is apparent "on the face of a specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent", then the "threshold requirement" to qualify as an invention will not be satisfied (per Philips, IPR at 454).

3.The expression 'inventive merit' "invites error through imprecision of legal analysis" (per Ramset, IPR at 251). It does not seem to be an appropriate expression to use in understanding the requirements of section 18(1)(a).

4.So-called "mere collocations of known integers" fall into that category of inventions which traditionally have been regarded as non-patentable (see British Celanese (supra)), and so would appear to be precluded from patentability by section 18(1)(a).

In the present case there is no basis to conclude that on the face of the specification a lack of inventiveness arises to thus render the invention unpatentable for not being for a manner of manufacture. What the specification on page 2 indicates as being known falls well short of the present invention, and does not suggest that the guide post claimed is not new.
As to the issue of the claims defining a "mere collocation of known integers", Rondo submits that "the elongation of the aperture, has no working inter-relationship with the remaining features of claim 1 so as to effect the ability of the guide post to bend at ground level". I do not agree that the claim is such a mere collocation. The subject of the claim is a guide post having features (a) to (c) with feature (c) further limited as in feature (d). The features defined inter-relate in defining a device for the purpose intended, that is to act as a guide post, with features (a) and (b) defining specific fundamental elements of the post. They interact to make a "new" thing, but whether it is in fact new is an issue for consideration under section 18(1)(b) of the Act. I do not see that a collocation arises simply because one feature of a claimed device results in the overall device having several stated functional qualities, as in the present situation with the aperture feature formed in the post. The qualities in this case are qualities in relation to the subject of the claim, the guide post, either in erecting it or in the way it acts as a guide post. This is not a situation where from the features claimed there results something like a "mere placing side by side of old integers so that each performs its own proper function independently of any of the others" (per British Celanese, at 193), like the situation in British Celanese or in Williams v Nye 7 RPC 62 (the sausage machine case). The claim relates to a manner of manufacture.
Given my conclusion regarding the invention of claim 1, the same conclusion applies to the other claims. It is true that claim 2, for example, introduces a further feature "formed in the guide post", namely the "engagement means". This feature necessarily limits the guide post of claim 1 in the manner claimed whereby another quality of the post arises. But I do not see this feature as creating a mere collocation where there was none before.
In summary the invention as claimed is directed to a manner of manufacture.

Nominated person not entitled

No evidence has been advanced to support the claim that the nominated person is not entitled to any patent granted on the application. Furthermore the submissions on behalf of Rondo did not address this ground. As I have no basis to conclude otherwise than that the nominated person is entitled, I dismiss this ground of opposition.
Costs
The usual practice is that costs should follow the event. There is no reason to depart from that practice in this case. Accordingly I award costs in this matter against the patent applicant Dura-Post and in favour of the opponent Rondo. The relevant costs awarded are in accordance with Schedule 8 of the Patents Regulations 1991.
CONCLUSION
I have found the invention claimed in claims 1 and 3 to lack novelty. I have also found that the invention claimed in claims 1, 3 and 4 to lack an inventive step. I have determined that the invention as claimed is directed to a manner of manufacture. I have also concluded that the nominated person is entitled to any patent granted on the application. Costs have been awarded against the patent applicant Dura-Post.
Given my findings, as the specification includes patentable subject matter 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.
Trevor Bruhn
Delegate of the Commissioner
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Spruson & Ferguson, Sydney

[2003] APO 12

21 March 2003