ERIC LESLIE MAYES

[1983] APO 9

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 49288/79 for Letters Patent in the Name of ERIC LESLIE MAYES

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         This matter concerns an application for a patent entitled "IMPROVEMENTS IN AND RELATING TO BUILDING COMPONENTS" lodged on 26 July, 1979.  Examination of the application and complete specification has been in accord‑
ance with section 48.
         In his most recent report dated 23 April, 1982, the Examiner has reported that one of the proposed amendments lodged on 14 April, 1982 is not allowable under the provisions of sub‑section 49(4), and that proposed amended claim 1 does not comply with section 40.   The applicant requested a hearing which took place in Canberra on 3 February, 1983 with Mr. P.F. Maxwell, patent attorney, of Halford & Maxwell appearing on behalf of the applicant.
         As proposed to be amended, the specification commences on page 2 by stating that "This invention relates to building components and column structures constructed from such components".   Then follows a consistory statement in terms identical to claim 1 directed to one aspect of this invention, particularly a flat sheet material component.

Then, following a brief reference to other aspects of the invention relating to the formation of column structures using the building component as described, the specification continues on pages 3 and 4 with description of certain embodiments of the invention with reference to accompanying drawings.   In particular Figure 1 shows "a plan view of the building component", the component being described as follows:

"The component is I‑shaped in plan with a stem portion 2 and two rectangular end portions 4, 6 of equal size.   The stem portion 2 has two parallel sides 8 and 10 whose length just exceeds the length of the parallel sides 12, 14 of the end portions.   Each end portion has a pair of blind slots 16, 18, 20, 22 which lie along the axes partly defined by the sides 8, 10.   In the lower end portion the slots 16, 18 open from the end most edge 26 thereof and extend halfway across the end portion 6.   In the upper end portion the slots 20, 22 open at the internal corners between the longer sides 8, 10 and the edges 28, 30.   These slots also extend halfway across the end portion 4."

The parallel sides 12, 14 of the end portions referred to are those sides parallel to sides 8 and 10 of the stem portion.
         Following the above description of Figure 1 reference is made on page 4 to Figures 2 and 3 which illustrate column structures formed from using, respectively, two and four components as shown in Figure 1.
         The description then concludes with the following paragraph:

"In other versions the component has knock‑out windows, punched tabs to be folded out for the support of cross‑

members or to act as stops for inserted coaxially over‑ lapping extendors whereby a column of appropriate length may be built up from standard components."

As I understand the expression, a "knock‑out window" is a frangible portion of an element marked off by slots or lines of weakness which can be removed (knocked out) by applying force to that portion.   According to Webster's Third New International Dictionary a "knockout" means:

"4b(1): a partially punched‑out or cut out piece esp. in metal or plastic designed to be forced out when an opening is required".  

Similarly it is reasonable to conclude that by the expression "punched [tab] to be folded out" is meant a portion of an element or surface marked off by slots or lines of weakness which can be folded or forced out of the plane of the element, but not completely removed, by applying force to that portion.   In view of these meanings, I therefore interpret the concluding paragraph of the description as disclosing that the I‑shaped building component as previously described can include either "knock‑out windows" or "punched tabs to be folded out" within that basic I‑shaped structure.
         Claim 1 as proposed on 14 April, 1982 reads as follows:

"1.A flat sheet material building component having:

(i)first and second end portions separated by and integral with a stem portion,

(ii)a pair of spaced apart slots in the first end portion extending from the edge thereof remote from the second end portion to half way across the first end portion; the slots being parallel to each other so that they and their projections define a pair of parallel axes extending across the first end portion, the stem and the second end portion to define, in plan, an I‑shape comprised of the two end portions and the part of the stem portion within the parallel axes,

(iii)a pair of spaced apart slots in the second end portion extending along the respective axes from the intersection of the stem portion and the second end portion to half way across said second end portion, and wherein

(iv)the stem portion is sufficiently cut away outside of the respective axes so that two components as herein defined are mutually connectable by inter‑

engagement of the first and second end portions of one component with the second and first end portions of the other component by means of their respective slots."

The remaining claims further characterise the building component or are directed to column structures constructed using more than one such building component as defined.   I need only refer to claim 1 in detail.
         Before construing claim 1, I consider it appropriate to first consider the meaning of "I‑shape".   By "I‑shape" I conceive in mind a shape having an elongated central stem part which is surmounted at each end by end parts generally transverse to the central part; that is a shape which is perceived by a viewer as representing substantially the form of a capital letter "I".  Consequently encompassed within shapes of that kind are those wherein the central part need not have sides which are themselves parallel, and end parts which need not be of identical shape nor of any particular shape.   Hence within this meaning of "I‑shape" are shapes having end parts which may be triangular or segmental in shape, or of any other shape, as long as the overall appearance is generally perceived as like the capital letter "I".   Apart from showing in Figure 1 a component which is considered to be "I‑shaped in plan", the specification otherwise provides no definition of "I‑shape".
          According to paragraph (i) of claim 1, the building component has three portions namely first and second end portions separated by and integral with a stem portion.   From paragraph (ii), a pair of spaced apart slots are provided in a certain manner in the first end portion.   Paragraph (ii) also includes the following definition in relation to the slots in the first end portion:

"the slots being parallel to each other so that they and their projections define a pair of parallel axes extending across the first end portion, the stem and the second end portion to define, in plan, an I‑shape comprised of the two end portions and the part of the stem portion within the parallel axes."

In my view that definition is somewhat ambiguous.   The expression "their projections", referring to projections of the slots, strictly has no clear meaning considering the normal meaning of the term "projection".   However in view of the general wording of paragraph (ii), I consider that the intent of the definition is such that the slots are parallel to each other, the slots are aligned along a pair of parallel axes, which axes if projected beyond the slots extend across the various portions of the component.   This meaning would accord with the description of the embodiment where axes are partly defined by the parallel sides of the stem portion, and the slots in the two end portions lie along parts of those axes where they traverse the end portions.   Additional ambiguity arises due to the wording "... to define, in ..." since the I‑shape identified arises from the shape of the two end portions, plus that part of the stem portion between the parallel axes and does not involve the "slots" as the wording suggests.   The definition in paragraph (ii) requires clarifying amendment.
          I note that as defined in paragraph (ii) the I‑shape is not necessarily the overall plan shape of the building component unless the component has no part of the stem portion outside the parallel axes.  Further‑
more, in view of the definitions in paragraphs (ii) and (iv), the claim clearly includes within its scope building components having some part or parts of the stem portion lying outside of the area bounded by the "parallel axes"; paragraph (iv) specifically refers to the stem portion "outside of the respective axes" needing to be "sufficiently cut away".
         Paragraph (iii) defines slots in the "second end portion".   I interpret "the intersection of the stem portion and the second end portion" to mean the nominal boundary or join‑line between the stem and second end portions of the component.   Since, as discussed earlier, the stem portion could have parts lying outside the parallel axes, from paragraph (iii) it is therefore possible that the slots in the second end portion may or may not open to an edge of the component depending, respectively, on whether the stem portion is so dimensioned as to lie within or outside the parallel axes at its intersection with the second end portion.   Unless paragraph (iv) provides some limitation, the slots could be of either form.
         Turning to paragraph (iv), it reads as follows:

"(iv)the stem portion is sufficiently cut away outside of the respective axes so that two components as herein defined are mutually connectable by inter‑

engagement of the first and second end portions of one component with the second and first end portions of the other component by means of their respective slots."

This paragraph further characterizes the building component particularly the stem portion, and does so with reference to the mutual connectability of "two components as herein defined".   From that wording I interpret the stem portion of the component to be restricted in its configuration and proportional dimensions by the resulting manner in which the component and a second component of the invention are to be mutually interconnected.   Consequently, an interpretation of the "stem portion is sufficiently cut away outside of the respective axes" depends on the precise manner by which two building components of the invention are to be interconnected and depends also on whether identical such components are interconnected.
         The claim in paragraph (iv) refers to interengagement of the end portions of two components "by means of their respective slots" (I note that there is no requirement that the components need be identical).   This definition provides no clear indication of the manner of interconnection by using the slots of the end portions; various interconnection constructions are clearly within the scope of the present claim.
         However it is clear from the description of the column structures as shown in Figures 2 and 3 that the manner of interconnection of components is, according to the present invention, limited to a particular method.  That is, in order to effect interengagement, identical components are positioned so that one of the axes of one component is arranged to be coincident with one of the axes of the other component and that upon relative movement of the components while maintaining that axial alignment, each slot on that common axis intermeshes or interengages with an unslotted portion of the adjacent end portion.   With this manner of interengagement it is apparent that the stem portion of each component over a region of its length adjacent its intersection with the second end portion must not extend outside of the area bounded by the parallel axes (i.e. it must be "cut away" using the words of the claim); this ensures that the slots can be axially aligned and that the slots in the second end portions be open to the edge of the component so that the relative movement can be accommodated to effect intermeshing.
         Insofar as the building component of claim 1 is not limited to being of a construction so as to effect the manner of interengagement of components as described in the preceding paragraph, a manner which in my view embodies the inventive concept, I find that claim 1 is not fairly based.
         In view of the above considerations in relation to the various paragraphs of claim 1, I find that the claim offends against section 40 being ambiguous and unclear and additionally not fairly based.   Claims 4 and 5, insofar as they fail to clearly specify the particular interengagement of the invention, like claim 1 in this regard, are not fairly based.
         I will now consider the allowability of amendments which have been proposed. 
          Section 49 of the Patents Act provides for the prosecution of a patent application following an Examiner's adverse report; particularly, the applicant may lodge a statement of proposed amendments of the application and complete specification (sub‑section (1)), and an Examiner "shall report on the application and complete specification as proposed to be amended as if it were an original application or specification and shall also report whether the proposed amendments are allowable" (sub‑section (2)).   Sub‑section 49(4) specifies the circumstances in which an amendment of a specification is not allowable.  Sub‑section 49(4) reads as follows:

"(4)An amendment of the specification (not being an amendment for the purpose of correcting a clerical error or an obvious mistake) is not allowable if the specific‑

action would, as a result of the amendment, claim matter not in substance disclosed in the specification as lodged."

The applicant lodged statements of proposed amendments on 22 March and 14 April, 1982, which have the main effect of (a) replacing page 2 with an amended page 2 incorporating a revised consistory statement in similar terms to proposed amended claim 1, and (b) replacing pages 5 and 6 with amended pages incorporating amended claims.   Page 2 of the specification as lodged contained a consistory statement in terms identical to claim 1 as lodged.   It read as follows:

"According to one aspect of this invention there is provided a flat sheet material building component which is I‑shaped in plan, having a stem portion with 2 parallel sides and 2 integral end portions both of greater width than the stem portion, each of said parallel sides when produced defining 2 parallel axes across both end portions, a pair of slots in each end portion each lying along one of said axes, the slots in one end portion extending from the end most edge to half way across said end portion, each slot in the opposite end portion extending from the internal corner of that end portion formed by the intersection of the parallel side of the stem portion and the adjacent edge of the end portion, to half way across said end portion such that 2 components as herein defined are mutually connectable by halving joints between respective end portions of the 2 components."

I note that this statement of the invention exhibits some significant differences to that in the specification as proposed to be amended.   Those differences are particularly in relation to the overall shape of the component, the axes and the location of the slots.
          There is no indication that the amendments in this case are for the purposes of correcting a clerical error or an obvious mistake and accordingly the question to consider regarding the allowability of the amendments under sub‑section 49(4) is: Does the specification as a result of the amendment(s) claim matter not in substance disclosed in the specification as lodged?   I am of the opinion that a detailed consideration of that question is inappropriate at this stage in view of my earlier finding regarding the non‑compliance with section 40 of proposed claim 1, since considerable revision of that claim is clearly necessary.   Nevertheless, I consider the Examiner's objection regarding non‑allowability of certain proposed amendments under sub‑section 49(4) to have merit since in view of the defects of the present definition recited by claim 1 that definition can not be clearly interpreted as including the particular embodiment of the building component described.
         Since the application cannot proceed to acceptance in its present form, I afford the applicant an opportunity to lodge further amendments to remove all lawful grounds of objection within the time remaining for acceptance as determined by section 54.

(T.R. BRUHN)