Ezzy Fit Pty Ltd v B3 Corp Pty Ltd

[2025] APO 31

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Ezzy Fit Pty Ltd v B3 Corp Pty Ltd [2025] APO 31

Patent Application:             2022279431

Title:A Retaining Wall System

Patent Applicant:                B3 Corp Pty Ltd

Opponent:Ezzy Fit Pty Ltd

Delegate:Xavier Gisz

Decision Date:  30 September 2025

Hearing Date:  23 April 2025; further submissions filed 6 June 2025 and 30 June 2025.

Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – inventive step, clarity, sufficiency, best method – reg 5.23 – support considered pursuant to s 60(3) – some claims do not comply with s 40(3) – opportunity to amend – no award of costs

Representation:                   Counsel for the Applicant: Angus Lang

Patent attorney for the Applicant: Dr. David Tso of MBIP

Patent attorney for the Opponent: Trevor Dredge of Intellepro

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2022279431

Title:A Retaining Wall System

Patent Applicant:                B3 Corp Pty Ltd

Date of Decision:                30 September 2025

DECISION

Claims 9 and 10 lack support.

The Applicant is given 2 months to amend the specification to overcome the lack of support.

No award of costs is made.

REASONS FOR DECISION

Background

1. Patent application 2022279431 (the Application) in the name of B3 Corp Pty Ltd (the Applicant) is a divisional of PCT/AU2021/051196 (publication number WO2022/077061) which claims priority from AU 2020903708 with a priority date of 13 October 2020.

2. The Application was accepted on 31 March 2023. The Applicant proposed amendments on 17 April 2023. The amendments were allowed on 31 July 2023.

3. Acceptance was advertised on 20 April 2023. A Notice of Opposition was filed by Ezzy Fit Pty Ltd (the Opponent) on 19 July 2023. A Statement of Grounds and Particulars (the SGP) was filed on 19 October 2023.

4. The Opponent requested to amend the SGP on 12 August 2024 and the amendments to the SGP were allowed on 28 August 2024.

   Reg 5.23

5. The Applicant’s written submissions before the hearing included a copy of US patent 5,435,669 (Weber).

6. The Applicant noted in their submissions at paragraph 14:

   “That Patent was particularised as novelty-defeating (SGP Section A.1.(a)(i)), though that allegation has not been pressed.”

7. I note that US 5,435,669 (Weber) was acknowledged as prior art in the description of the Application (at page 1 line 17-21).

8. US 5,435,669 (Weber) was not in the evidence from either party nor in the “mentioned documents” of the SGP. The Applicant requested at the hearing that US 5,435,669 (Weber) be considered under regulation 5.23. The Opponent agreed that it should be considered under reg 5.23 and also agreed that they had already had an opportunity to make representations about the document, thus no further submissions and/or evidence would be required for complying with reg 5.23(2)(c).

9. The US 5,435,669 (Weber) discloses hollow plastic sleepers for retaining walls. The Applicant refers to US 5,435,669 (Weber) in their submissions in relation to inventive step. The Opponent also refers to US 5,435,669 (Weber) in relation to inventive step; in particular, to set up the ‘hypothetical task’. This hypothetical task is presented to an expert to determine what obvious steps would be taken by a person skilled in the art in designing a retaining wall.

10. I consider that US 5,435,669 (Weber) is important to the consideration of the inventive step and so I will rely on this document under reg 5.23.

    Subsection 60(3)

11. On 8 May 2025 I exercised the power of s 60(3) in relation to s 40(3) and requested submissions from the parties. I queried whether the features of the claims of “lies against” and “stacked” were supported by the specification. The parties were given the opportunity to make further submissions on this issue. The Applicant provided their further submissions on 6 June 2025. The Opponent provided their responding further submissions on 30 June 2025.

    Evidence

    Evidence in support

12. The Evidence in Support comprises:

    ·a declaration by Trevor Dredge dated 18 January 2024 and accompanying Exhibits TJD1 to TJD10.

    ·a declaration by Heath Braid dated 16 January 2024 and Exhibits HMB-1 to HMB-5.

    Evidence in answer

13. The Evidence in Answer comprises a declaration by Duncan Pratt dated 18 April 2024 with Exhibit DP-1.

    Evidence in reply

14. The Evidence in Reply comprises:

    ·a declaration by Rolf Bytschewsky dated 18 June 2024 and accompanying Exhibits RB1 and RB2.

    ·a declaration by Trevor Dredge dated 21 Jun 2024 and accompanying Exhibits TJD11 to TJD19

    Applicable Law and Onus

15. The Application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as the Application was filed after 15 April 2013.

16. The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to grant exists. Then, if satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per subsections 60(3A) & (3B) of the Act.

    Grounds of Opposition

17. The amended Statement of Grounds and Particulars opposes the grant of the patent on the following grounds: novelty, inventive step, clarity. Although the SGP includes the grounds of s 40(2), s 40(3), s40(3A), the SGP does not provide any particulars for these grounds aside from clarity (s 40(3)).

18. The Opponent’s submissions press the grounds of clarity and inventive step. The Opponent’s submissions also make comments regarding sufficiency [40(2)(a)] and best method [40(2)(aa)].

19. The Opponent notes in their submissions:

    The Opponent acknowledges that some arguments presented in these submissions, particularly in respect of clarity and sufficiency under section 40(2) and (3), extend beyond the detail of the original Statement of Grounds and Particulars. However, these arguments are properly made in response to matters arising from the evidence filed by the Applicant, including explanations of the system’s operation and construction details not apparent on the face of the specification. It is appropriate and permissible for an Opponent to refine and amplify its submissions in light of the Applicant’s evidence, and these points are directly responsive to issues raised in the course of the evidence stages.

20. The purpose of the Statement of Grounds and Particulars is to make the Applicant aware, at the start of the opposition, of the reasons the Opponent believes the patent application is invalid.

21. If the Opponent realises that there are other reasons why they believe the patent application is invalid (for example, as a result of evidence in the opposition), then the Statement of Grounds and Particulars can be amended with additional particulars. Indeed, the Opponent amended the Statement of Grounds and Particulars on 13 August 2024 to include more prior art. Another amendment to the SGP could have been made as soon as the Opponent became aware of additional particulars in relation to clarity and sufficiency.

22. Raising new particulars at the submissions to the hearing, is outside of the correct procedure of an opposition. I have considered these new particulars in this decision for completeness, even though I was under no obligation to do so. I note that none of these new particulars contributed to a ground of opposition being successful and consequently I consider that the Applicant has not been disadvantaged in the approach I have taken.

    The experts

23. Declaratory evidence has been provided by Trevor Dredge, Heath Braid, Duncan Pratt, and Rolf Bytschewsky.

24. Trevor Dredge is an attorney and is not an expert in retaining walls. His declarations were made as a means to introduce evidence into the opposition.

25. Heath Braid is the Managing Director of a building company. Mr Braid is well acquainted with retaining walls generally and concrete sleeper retaining walls.

26. Duncan Pratt has been a structural engineer for 30 years and is well acquainted with retaining walls and retaining wall structures.

27. Rolf Bytschewsky is the director and owner of the Opponent, Ezzy Fit Pty Ltd. Mr Bytschewsky has been a fully licensed landscape professional with over 36 years of expertise in building retaining walls, landscape gardening, and irrigation techniques.

28. Mr Braid, Pratt and Bytschewsky each provide expert evidence regarding the invention and common general knowledge at the priority date. I am satisfied that they have provided relevant evidence. I will assess the evidence according to its relevance to particular aspects of the analysis.

    The Specification

    Field of the invention and background

29. The description provides a good summary of the field of the invention at page 1 lines 9 to 25:

    A sleeper wall is a type of retaining wall that is used to retain the movement of earth. Often retaining walls are erected on a side of a hill or slope to prevent migration of soil down the slope. In general, sleeper walls comprise a plurality of vertical, or angled, posts that retain horizontally stacked horizontal members, generally referred to as “sleepers”, therebetween. The posts are typically of steel and the sleepers typically of concrete or timber.

    A problem that arises in the building of a sleeper wall is that concrete or timber sleepers are heavy and labour intensive to move and to install. Attempts have been made to fabricate sleepers out of lighter materials. For example, in US patent No. 5,435,669 to Weber, there is described a soil retention wall system that includes a plurality of hollow polymeric sleepers, which are referred to as “lagging members”. The members that are described are bulky and take up considerable volume, which is disadvantageous from the point of view of transporting them to site.

    The present invention seeks to provide an improved retaining wall system, which will overcome or substantially ameliorate at least some of the deficiencies of the prior art, or which will at least provide an alternative.

    The invention

30. The invention is sleepers with a trapezoidal cross section. The ends of the sleepers slot into the channels of vertical H-section posts. The sleepers are stacked onto top of each other, edge-on-edge. Because the sleepers have trapezoidal cross section, they will not naturally stack edge-on-edge without some kind of support. The assembled retaining wall system is shown in figure 1:

31. The specification does not explicitly state there are different embodiments of the invention. However, in light of the submissions of both parties to this effect and my own analysis, I consider it necessary to identify two distinct embodiments of the invention.

    First embodiment

32. The first embodiment shown in top plan view in figures 3 and 4 shows that there is very little gap between the front and rear surfaces of the sleeper and the front and rear planar surfaces of the channel formed in the vertical H-section post. This would cause the sleepers to stack edge-on-edge.

    Second embodiment

33. The second embodiment shown in figures 6-9 shows that there is a significant gap between the front and rear surfaces of the sleeper and the front and rear planar surfaces of the channel in the vertical posts as shown in Figures 6 to 9:

34. Because the sleepers are thinner/narrower than the channels, the sleepers would not rest vertically as they are dropped into the channels of the vertical posts, as is shown in figure 7. To align the sleepers vertically, after one sleeper is slotted into the channels of the vertical posts, soil is filled to press the sleeper against the front surface of the channel; this process keeps the planar front of the sleeper in a vertical orientation, allowing the next sleeper to be stacked on top. This is described at page 13 lines 1 to 13:

    To install a retaining wall system 100, holes 80 are dug into the ground 78 to receive lower portions 104 of posts 101 and the lowermost portion 104 is inserted into the hole as shown in Figure 6. Concrete may be applied to the hole around the post to improve fixing of the post 101 as is well known in the field of wall post installation. With reference to Figure 7, a first sleeper 109 is then slid down between two vertical posts 101 so that it rests on ground level as shown in Figure 7. Since the distance between front planar portions 105A and rear planar portions 105B may be greater than the width W of the sleeper, the sleeper may initially be tilted as shown in Figure 7. In Figure 8 it can be seen that by backfilling with earth 78A against the rear of the sleeper 102, front face 109 of the the [sic] sleeper is forced flush against the front planar portion 105A of post 101. Further sleepers are then added, and additional earth backfilled, to make a stack 98 as shown in Figure 9 to thereby complete the retaining wall system 100.

    Claims

35. The independent claims are as follows:

    1. A retaining wall system comprising:

    a plurality of vertical posts,

    wherein the plurality of vertical posts comprise a plurality of vertical H-section posts, each comprising planar parallel portions spaced by an orthogonal central planar web therebetween, the vertical H-section posts located in alignment and orientated to form vertical channels therebetween,

    a plurality of horizontally stacked sleepers stacked between adjacent posts with distal ends thereof received within respective channels thereof;

    wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts, wherein the rear structural formation defines a planar rear,

    wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front.

    28. A retaining wall system comprising:

    a plurality of vertical posts for installation in a vertical orientation,

    wherein the plurality of vertical posts comprise a plurality of vertical H-section posts, each comprising planar parallel portions spaced by an orthogonal central planar web therebetween, the vertical H-section posts locatable in alignment and orientable to form vertical channels therebetween,

    a plurality of horizontally stackable sleepers for stacking between adjacent vertical posts with distal ends thereof received within respective channels thereof;

    wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts in use, wherein the rear structural formation defines a planar rear,

    wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front.

    29. A sleeper adapted to be used as a horizontal member of a retaining wall system, the sleeper defining a planar front and being comprised of fibre reinforced plastic and being elongate wherein an earth retaining side of the sleeper is formed with a rear structural formation including a longitudinal hollow, wherein the rear structural formation defines a planar rear, wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front, and wherein the sleeper includes complementary male and female connections extending vertically upwardly and vertically downwardly in use for vertical stacking of a multiplicity of the sleepers.

36. The entire claim set is in the annex of this decision.

    Construction

    Legal principles

37. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at paragraphs 118-120:

    “... the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

    Clarity

    Legal principles

38. Subsection 40(3) of the Act requires that the claims be clear. In BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117 Beach J explained at [705]:

    A valid claim is required to define with sufficient certainty the scope of the monopoly being claimed. Given that a patent is a public instrument, the claim must be defined in such a way that it is not reasonably capable of being misunderstood so that others know the ‘exact boundaries of the area within which they will be trespassers’: Electric & Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 39 per Lord Russell of Killowen. A claim will lack clarity if a person skilled in the relevant art cannot ascertain whether what he proposes to do falls within the claim’s ambit.

39. Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Martin v Scribal Pty Ltd [1954] HCA 48; (1954) 92 CLR 17 at 12). However, “any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed” (Welch Perrin and Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588).

40. As was cited from Blanco White, Patents for Inventions (5th ed) at 4-701 with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 and Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890:

    Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.

    Consideration

    ‘Lies against’ – front and rear of sleeper or just the rear of sleeper

41. Claims 1 and 28 contain the following feature:

    “wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts”

42. It is notable that this feature was amended in the post-acceptance amendments of 17 April 2023 with the words “a planar front and” added to claim 1 as shown in underline below:

    “wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts”

43. The comments accompanying these amendments stated:

    The Applicant wishes to request leave to file post acceptance amendments, to improve the clarity of the claims.

    Specifically, claim 1 has been amended to clarify that each of the sleepers define “a planar front”, so that there is appropriate antecedence for the term “the planar front” in claim 1.

    Claims 6, 28 and 29 have been amended accordingly.

44. The claims at acceptance (i.e. prior to the post-acceptance amendments) had the feature of:

    a rear structural formation which lies against opposite planar portions of the adjacent posts

45. The “opposite planar portions” in this case would be the rear planar surfaces of the channels of the two adjacent posts that are opposite the rear structural formation of the sleepers.

46. I have added red lines to the plan view of the invention in figure 3 to show the location of “a rear structural formation which lies against opposite planar portions of the adjacent posts”:

47. Thus, prior to the post-acceptance amendments, this aspect of the claims was clear.

1. Following the post-acceptance amendments (which added the words “a planar front and”), this feature of the claims has two possible interpretations.

2. The first interpretation is that it is only the rear structural formation (of the sleeper) which lies against the opposite (i.e. rear) planar portions of the adjacent posts. This interpretation has the advantage that it is grammatically correct because the word lies [with the letter “s”] implies that it is only referring to a singular object (the rear structural formation).

3. The second interpretation is that both a planar front and a rear structural formation lie against opposite planar portions (i.e. front and rear portions) of the adjacent posts. This interpretation has the disadvantage of being grammatically incorrect because of the word lies [with the letter s] implies that it is only referring to a singular object (the rear structural formation) and not two objects (a planar front and a rear structural formation).

4. In light of the comments accompanying the amendments and grammatical analysis, I consider that the first interpretation is correct. That is, I construe the claims such that it is only the rear structural formation (of the sleeper) which lies against the opposite (i.e. rear) planar portions of the vertical posts.

   ‘Lies against’ – during assembly or after assembly of the retaining wall

5. The Opponent states in their submissions at paragraph 20:

   Inconsistency between Claim 1 and Claims 9/10 – if Claim 1 requires the sleeper to "lie against opposite planar portions of the adjacent posts", but 9/10 imply a gap or offset, there’s arguably a contradiction.

6. The Applicant states in their submissions at paragraphs 96 and 97:

   Taking the practical approach required by the authorities, there is no contradiction. Claims 9 and 10 contemplate the possibility that the depth of the sleeper may be less than the distance between the planar portions of the posts, and claim 10 provides for a difference of approximately 10mm. That is not inconsistent with the requirement in claim 1 that the sleeper lies against opposite planar portions of the adjacent posts. This is illustrated for example in Figure 7 as follows:

   That shows an embodiment in which the depth of the sleeper is less than the distance between the adjacent posts, but it nevertheless lies against them, at least prior to filling the small gap with infill. Consistently with that, the specification allows for the presence of some play between the sleeper and the posts which locate it by describing that "the rear structural formation may define a planar rear 11 [sic – 111] which locates adjacent rear planar portions 105B of adjacent posts 101" (page 9 lines 15-16). The disclosure of "locating" and "adjacency" does not require a tight fit entirely devoid of play; and as Figure 7 shows, the requirement of "lying against" does not require that either. Indeed, to take an approach which allows for no play between those elements would be contrary to the claim structure, to the disclosure of the specification and to a practical construction.

7. As already noted, there are two distinct embodiments of the invention. The first embodiment shown in figures 3 and 4 discloses either no gap or a very small gap. The second embodiment shown in figures 7-9 discloses a gap.

8. The Applicant points to figure 7 as an example of the sleeper lying against the rear surface. Thus, the Applicant argues that during assembly, the sleepers are tilted such that they touch the rear planar portions of the vertical channels. I do not accept this argument. The claims define a retaining wall system in its assembled form for two reasons. Firstly, the claims define a plurality of sleepers that are stacked with the rear structural formation of the sleepers lying against the posts. This arrangement is only possible after at least two sleepers have been assembled. Secondly, the language of the claims uses past tense verbs suggesting that the assembly is complete. Furthermore, the claims do not alternatively or additionally define the relative position/orientation of the components of the retaining wall during its assembly.

9. Thus, I construe the term ‘lies against’ to mean that the rear surfaces of the sleeper abuts the rear planar surface portions of the channel of the vertical posts, when the retaining wall is in its assembled form. This is disclosed in the first embodiment, but not in the second embodiment. With this construction I consider this aspect of the claims to be clear.

   Clear enough and complete enough disclosure – s 40(2)(a) - Legal principles

10. Section 40(2)(a) of the Act requires that the complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

11. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 a Deputy Commissioner determined that the steps involved in assessing whether the disclosure requirement is satisfied are:

    (i) Construe the claims to determine the scope of the invention as claimed;
    (ii) Construe the description to determine what it discloses to the person skilled in the art; and
    (iii) Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

12. In Evolva SA [2017] APO 57, another Deputy Commissioner reformulated the third question stated in CSR as a two-step consideration:

    (a) Is it plausible that the invention can be worked across the full scope of the claim?
    (b) Can the invention be performed across the full scope of the claim without undue burden?

13. The approaches taken in CSR and Evolva have found approval with the Federal Court in Cytec Industries Inc. v Nalco Company [2021] FCA 970.

    Best Method s 40(2)(aa) - Legal principles

14. The relevant principles for the best method of performance requirement are set out in in the decision of the Full Federal Court in Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27.

15. The Court in Servier confirmed that the best method of performance requirement is separate and additional to the requirement of paragraph 40(2)(a). The basis of the obligations of disclosure is to provide members of the public with the knowledge on how practically to obtain the benefit of the invention when the patent is expired. The Court in Servier stated:

    “... a patentee was held to be bound to give the best information in his (or her) power as to how to carry out the invention. This was an element of the required good faith on the part of the patentee and the requirement to give to the public the consideration of knowledge of the best method that corresponds with the obtaining of the benefit of monopoly.”

16. In order to appreciate what is required of an inventor by way of disclosure in the specification, it is necessary to understand the invention itself. This understanding requires taking into account the nature of the invention being described and claimed, and involves a question of fact; that fact being knowledge of the patent applicant.

17. The Court in Servier noted the approach of in Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710 where Bennett J stated:

    “... it must be established that there was a better method known to the applicant as at the date of filing of the patent than the one described in the specification. This is clearly a subjective question.”

    And

    “... it is necessary first to understand what the invention is. Indeed, this is perhaps the first question that needs to be answered.”

18. In other words, it is necessary to determine what method is disclosed in the specification, and then to ask whether there is any evidence that the applicant was aware of a better method of performing the invention.

    Consideration

19. The Opponent’s submissions state at paragraph 19:

    The claims and specification fail to provide clear and sufficient guidance in the context of a pultruded FRP sleeper on how to construct the claimed sleeper system, particularly in relation to the following aspects:

    a)Rear structural formation geometry: While Claim 1 and the figures refer to oppositely orientated diagonals spanning from the rear to the front, this is not limited to the trapezoidal form described in terms of the pultruded FRP, the specification does not explain the functional advantage of this configuration, nor how it differs from conventional ribbing (e.g., Braid HMB-5, TJD2, TJD4). The skilled person is left to speculate as to how this might be made using pultrusion.

    b)Tongue-and-groove features: The specification lacks precision in describing the interlocking mechanism in relation to pultrusion. Claim 7 and related claims reference texturised surfaces (how is this made using pultrusion) and interconnections but provide no detail on tolerances or engagement forces necessary for structural integrity. By contrast, standard designs in TJD13, TJD14–15, and TJD6 provide full detail.

    c)Best method: The specification does not disclose any best method of manufacturing the sleepers or posts. No pultrusion parameters, material specifications, or assembly tolerances are provided, notwithstanding the availability of such knowledge in the field (TJD6, TJD7–TJD10). This omission is significant given the reliance on pultruded FRP in the claims.

20. The Applicant’s submissions state at paragraph 98:

    “The unpleaded grounds should not be permitted to be advanced, in particular because the Applicant has not had an opportunity to consider whether to adduce evidence in relation to them. In any event they would fail.”

21. As I have already mentioned, the SGP lists one of the grounds of opposition as s 40(2), however provides no particulars for that ground.

22. For completeness I will consider the viability of these ‘unpleaded grounds’ if they were to be introduced under s 60(3). I note that the Applicant is not at a disadvantage since these grounds of opposition are ultimately without any possibility of being successful.

    Rear structural formation geometry

23. The purpose of the rear structural formation geometry is given in the description at page 10 lines 5 to 15 which is read with reference to Figure 5:

    The oppositely orientated diagonals 112A, 112B may connect the planar front 109A between the interconnections. Preferably the rear structural formation 110 comprises an isosceles trapezoid. Preferably the planar front 109 makes an internal angle θ of about 65 degrees with a first of the diagonals and an internal angle of about 65 degrees with a second of the diagonals. Setting θ to 65 degrees or thereabouts, e.g. in the range of 70 to 60 degrees, has been found to produce a sleeper which has good structural strength whilst minimising the amount of material used. Making the angle θ equal 90 degrees makes the structural formation 110 assume a square or rectangular cross section, which the Inventor has found has a slightly greater strength than for θ equals 65 degrees, but which uses more material than warranted by the strength increase.

24. Figure 5 is reproduced below:

25. I am satisfied that this part of the description explains that the diagonals (112A, 112B) provide a good compromise between strength and minimising material used. I am satisfied that the embodiments disclosed in the specification provide a best method.

    Pultrusion

26. The Applicant’s submissions state at paragraph 99-101:

    In relation to sufficiency, OS 19 states that there is insufficient guidance as to how to construct a "pultruded FRP sleeper". The assertion appears to be that it is necessary to disclose matters such as tolerances and engagement forces in order to manufacture the rear structural formation and the tongue and groove features using pultrusion without invention or undue experimentation. There are a number of difficulties with this. First, as a matter of the claims, contrary to OS 19 there is no requirement in the claims that the technique of pultrusion be used; indeed they do not refer to pultrusion at all. Rather, the claims are pure product claims. They require the use of plastic, and some the use of fibre-reinforced plastic (and some exemplary specifications are disclosed in Table 1), but none require any particular method of manufacture. In those circumstances, based on the authorities set out above, there is no requirement that the specification disclose every way of making the product, and in particular tolerances and parameters to be used if pultrusion is chosen as a method of manufacture.

    Secondly, in any event, there is no evidence from any person skilled in pultrusion fabrication to say that they need to be specifically told such matters in order to manufacture a sleeper within the claims without invention or undue experimentation. To the contrary, OS repeatedly submits in the context of inventive step (see eg 21 (a), 28, 32(e), 33) that that exercise would be straightforward.

    Ultimately it appears that OS’ position on insufficiency is sought to be put on the basis of the evidence of the Applicant's expert, Mr Pratt. OS 16 says "Mr Pratt's declaration has some serious consequences for the Applicant, if the skilled person has no or even limited knowledge of pultrusion then the description is insufficient on a number of key issues set out as follows in 16-20". That is misconceived. Mr Pratt merely says that he has no knowledge of pultrusion: Pratt [12]. But a person instructed to design a sleeper to be manufactured using pultruded plastic may need to engage a pultrusion fabricator to assist her or him. Indeed, that is precisely what Mr Braid said he would do when given his hypothetical task (Braid [16]). No doubt he would do the same thing if, reading the specification of the Opposed Application (eg at page 8 line 23), he wished to make an embodiment using pultruded plastic.

27. Mr Pratt states at paragraph 23 of his declaration:

    As mentioned above, I have not heard of pultrusion prior to this exercise. In addition to this, I do not believe that plastic or fibre reinforced plastic would have been considered as a material to form panels utilised in retaining walls.

28. Mr Braid states at paragraph 16 of his declaration:

    The hypothetical sleepers herein may all be assumed that they are all options for hollow thin-walled sleepers made by protrusion [sic] as fibre reinforced composites although I would have to team up with a pultrusion fabricator. Unless specified internal bracing has been omitted but would be added as advised. This would all have to be experimented on striking a balance between performance and cost.

29. Pultrusion pulls materials through a die, while extrusion pushes them. Pultrusion is used for fiber-reinforced composites, while extrusion can be used for a wider range of materials.

30. Exhibit TJD6 “Bedford reinforced plastics – design guide” describes pultrusion as follows:

    Pultrusion is the continuous processing of raw materials by pulling resin-rich reinforcements through a heated steel die to form profiles of constant cross section of continuous length.

    Pultrusion gets its name from the method by which the profiles are made. Raw materials are literally pulled by what is called the “puller.” The puller is the machine made of pulling pads, which grip the product, and a drive system that keeps the product moving. The puller is located just before the cut-off saw.

31. The description provides details about material, strength, and other properties of the sleepers at Table 1 (on page 12) in the description. The Opponent’s argument appears to be that more details about the process of manufacturing the sleepers should have been provided.

32. I consider that a person skilled in the art would be a team including an engineer knowledgeable of plastic product manufacturing. Such an engineer would have knowledge of pultrusion. I consider that any parameters not explicitly specified would be arrived at by the PSA through routine experimentation.

33. I consider that a clear enough and complete enough disclosure of producing the sleepers has been disclosed. I also consider that a best method of producing the sleepers has been provided.

    Support – s 40(3)

34. As noted above, the ground of support was not raised by the Opponent. However, I consider that there may be support issues and I will consider these support issues under the powers of s 60(3). The parties were given an opportunity to provide submissions on support.

    Legal principles

35. Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:

    In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom:

    ...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.

    That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed.

36. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following process in order to determine whether a claim is supported by matter disclosed in the specification.

    •Construe the claims to determine the scope of the invention as claimed,

    •Construe the description to determine the technical contribution to the art, and

    •Decide whether the claims are supported by the technical contribution to the art.

37. In Calix Limited v Grenof Pty Ltd [2023] FCA 378 at 128 Nicholas J commented on support issues which arise from an inconsistency between the claims and the description rather than the claims being too broad:

    Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] which were characterised by the Full Court of the Federal Court as “fundamentally different” inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be “supported by matter disclosed” in accordance with s 40(3) of the Act.

    Consideration

38. Above in this decision I have construed the claims such that claims 1 and 28 define a retaining wall system that has the rear support structure of the sleepers that lies against the vertical posts when in assembled form. The analysis of support is largely coterminous with the determination of construction.

    Planar rear structural formation which lies against opposite planar portions of the adjacent posts

1. The claims define (with my emphasis in underline):

   1. A retaining wall system comprising:

   a plurality of vertical posts,

   wherein the plurality of vertical posts comprise a plurality of vertical H-section posts, each comprising planar parallel portions spaced by an orthogonal central planar web therebetween, the vertical H-section posts located in alignment and orientated to form vertical channels therebetween,

   a plurality of horizontally stacked sleepers stacked between adjacent posts with distal ends thereof received within respective channels thereof;

   wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts, wherein the rear structural formation defines a planar rear,

   wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front.

2. In my letter of 8 May 2025 I stated:

   Planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts

   The claims 1 and 28 define the feature of:

   each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts

   The description and drawings disclose that during assembly (but before the soil is added) one sleeper tilts (page 9 lines 11-14, page 13 lines 4-8, figure 7) such that lateral movement of the bottom portion of the sleeper is constrained by the inside surface of the front planar portion of the vertical post. Lateral movement of the top portion of the sleeper is constrained by the planar rear as it rests against the inner surface of the back planar portion of the vertical post.

   The drawings show that after the soil is retained to the depth of the top sleeper (figures 8 and 9), the top sleeper is pushed by the soil into a vertical orientation with the planar front surface against the inside surface of the front planar portion of the vertical post.

   I have concerns as to whether the feature of “planar front and a rear structural formation which lies against opposite planar portions” is supported by the specification. More specifically, I have concerns whether the feature of “rear structural formation … lies against [back planar portion]” is supported by the specification.

   In the hearing I questioned the Applicant about [sic – this] issue. The Applicant provided two alternative explanations.

   Firstly, the Applicant argued that during assembly each sleeper starts in a configuration where it is touching the inner surface of the planar front and back positions of the vertical post (as shown in figure 7).

   Secondly (alternatively), the Applicant argued that in the assembled retaining wall (including the retained soil), the rear structural formation of the sleeper is close to the inside surface of the planar back portion of the vertical post. Thus, I understand the Applicant’s argument to be that in the assembled retaining wall system, the rear structural formation of the sleeper is close enough to be considered lying against the inside surface of the planar back portion of the vertical post.

3. In their further submissions the Applicant stated (italics and underlining in original):

   The Hearing Officer raises concerns regarding whether the feature of a ‘planar front and a rear structural formation which lies against opposite planar portion’ is supported by the specification. More specifically, the Hearing Officer raises concerns as to whether the feature of ‘rear structural formation…. lies against [back planar portion] is supported by the specification.

   As an initial point, it is respectfully submitted that there is no basis under Australian law to suggest that the claims must be restricted to only the preferred embodiments exemplified in the specification. Rather, claims should be considered supported when the scope of the claims is commensurate to the contribution of the specification to the art.

   The Applicant respectfully submits that the claims encompass within their scope both situations whereby the distance between a planar front and a rear structural formation is substantially the same as the distance between the opposite planar portions of the post and where this distance is less than the distance between the opposite planar portions and the post such that, in both embodiments, at some point, the planar front and a rear structural formation lies against opposite planar portions of the adjacent posts.

   Particularly, the Applicant submits that the specification shows that the distance between a planar front and a rear structural formation is substantially the same as the distance between the opposite planar portions of the post in Figures 3 and 4. Furthermore, the specification additionally teaches that ‘[s]ince the distance between front planar portions 105A and rear planar portions 105B may be greater than the width W of the sleeper, the sleeper may initially be tilted as shown in Figure 7’ (emphases added, specification, pg. 13, lns 6-8). The Applicant submits that the specification also teaches that the distance between a planar front and a rear structural formation may be substantially the same as, or less than, the distance between the opposite planar portions of the post.

   The Applicant submits that, in the embodiment where the distance between a planar front and a rear structural formation is substantially the same as the distance between the opposite planar portions of the post, the planar front and the rear structural formation will always be in contact with the opposing planar portions of the posts and thus lie against them. The Applicant submits that the person skilled in the art armed with the knowledge of the specification would appreciate this and readily understand that both embodiments are possible and able to achieve the promise of the invention without undue burden. Furthermore, in such a situation, the sleepers will neatly stack on top of one another.

   The Applicant submits that the person skilled in the art armed with the knowledge of the specification would appreciate that in the situation whereby the distance between the planar front and the rear structural formation of each sleeper is less than that between planar portions of the posts (e.g., claims 9 and 10), then this orientation will be utilized as discussed in the specification. In this situation, during the assembly of the retaining wall system, a sleeper may be placed in the tilted orientation which touches both the front and back planar portion of the posts and then backfilled which should push the sleepers forward.

   In relation to the Hearing Officer’s comments:

   In the hearing I questioned the Applicant about issue. The Applicant provided two alternative explanations.

   Firstly, the Applicant argued that during assembly each sleeper starts in a configuration where it is touching the inner surface of the planar front and back positions of the vertical post (as shown in figure 7).

   Secondly (alternatively), the Applicant argued that in the assembled retaining wall (including the retained soil), the rear structural formation of the sleeper is close to the inside surface of the planar back portion of the vertical post. Thus, I understand the Applicant’s argument to be that in the assembled retaining wall system, the rear structural formation of the sleeper is close enough to be considered lying against the inside surface of the planar back portion of the vertical post.

   The Applicant submits that both interpretations are applicable depending on the situation.

4. The Opponent states in their further submissions (italics and underlining in original):

   The attorney for the Applicant asks that claim interpretation rely upon the skilled person interpreting the otherwise plain words of the claim to the effect that:

   The Applicant submits that the specification also teaches that the distance between a planar front and a rear structural formation may be substantially the same as, or less than, the distance between the opposite planar portions of the post.

   The claims do not include these alternatives. Further:

   The Applicant respectfully submits that the claims encompass within their scope both situations whereby the distance between a planar front and a rear structural formation is substantially the same as the distance between the opposite planar portions of the post and where this distance is less than the distance between the opposite planar portions and the post such that, in both embodiments, at some point, the planar front and a rear structural formation lies against opposite planar portions of the adjacent posts.

   Claims 1 and 28 define the final position of the stacked sleepers. This interpretation of the claims creates more problems, as it imports a method step into these claims.

   This is betrayed by the following statement:

   In this situation, during the assembly of the retaining wall system, a sleeper may be placed in the tilted orientation which touches both the front and back planar portion of the posts and then backfilled which should push the sleepers forward.

   A similar argument (but not that there were two versions covered) was also advanced by the Counsel for the Applicant at the hearing albeit “off the cuff”. The problems become even greater for the sleeper to be able to tilt inside the channel during assembly as this method can not apply to claims 1 and 28 in their present form which require a tight fit. What angle of tilting is required during assembly so that in the tongue and groove version the tongue can rotate into the groove.

   It appears that the only embodiment that has the tilting action is the tongue and groove version especially now that the new issue has arisen and further complicated by the quite unexpected submissions that there can be different types of stacking including "less cleanly stacked” (whatever that means in terms of claim certainty).

   Determination on the support for the ‘lies against’ feature

5. As noted by the Applicant there are two embodiments of the invention. The first embodiment shown in figures 3 and 4 where the distance between the front and rear planar portions of the vertical channels of the vertical posts is substantially the same as the width of the sleeper.

6. The second embodiment shown in figures 7-9 where the distance between the front and rear planar portions of the vertical channels of the vertical posts is greater than the width of the sleeper.

   First embodiment

7. Claim 1 is supported by the first embodiment shown in figures 3 and 4. Because the distance between the front and rear planar portions of the vertical channels of the vertical posts is substantially the same as width of the sleeper, the sleeper would slot into the channel causing the front and rear of the sleeper to lie against the planar front and rear (respectively) of the vertical channel.

   Second embodiment

8. As noted in my letter, there are two possible arguments that the second embodiment provides support to claim 1.

   Tilt

9. In their further submissions the Applicant states:

   “…[I]n the situation whereby the distance between the planar front and the rear structural formation of each sleeper is less than that between planar portions of the posts (e.g., claims 9 and 10), then this orientation will be utilized as discussed in the specification. In this situation, during the assembly of the retaining wall system, a sleeper may be placed in the tilted orientation which touches both the front and back planar portion of the posts and then backfilled which should push the sleepers forward.”

10. Thus the applicant argues that during assembly, the sleepers are tilted such that they touch the front and rear planar portions of the vertical channels of the vertical.

11. I do not accept this argument. As set out in the construction of terms I have found that the claims define a retaining wall system in its assembled form. The claims do not alternatively define the relative position/orientation of the components of the retaining wall during its assembly.

    Close enough

12. The Applicant confirmed that what I set out in my letter as my understanding of their alternate argument was correct. That is, that, in the second embodiment, in the assembled form the rear surface of the sleeper could be “close enough” to the rear planar portion of the vertical channel of the vertical post to be considered lying against it. I do not accept this argument.

13. The description provides only a single example of the distance between the planar front and planar rear of each sleeper being less than that between planar portions of the posts at page 4 lines 13 to 14. This distance is given as “approximately 10mm”. Claim 10 defines the distance as 10mm.

14. It might be plausible (though not discussed in the description) that a distance of a few millimetres (1-3 millimetres) between the surface of the sleeper and the surface of the rear planar portion of the channel would be enough to allow for “play” such that the sleeper was close enough to be considered lying against the channel. However, a distance of 10mm is beyond a reasonable distance for the sleeper to be considered lying against the channel.

    Claims 9 and 10

15. Claims 9 and 10 are as follows:

    9. The retaining wall system as claimed in any one of claims 6 to 8, wherein a distance between the planar front and the planar rear of each sleeper is less than that between planar portions of the posts.

    10. The retaining wall system as claimed in any of claims 6 to 9, wherein a distance between the planar front and the planar rear of each sleeper is less than that between planar portions of the posts by approximately 10mm.

16. The invention shown in figures 3 and 4 shows a very small gap between a) the planar front of each sleeper and the planar front portion of the vertical post, and b) the planar rear of each sleeper and the planar rear portion of the vertical post.

17. Thus, a claim specific to a small gap limited to just a few millimetres may fall within the scope of the term “lie against”. However, claim 9 does not specify how small the gap is and could include a gap of any size. Gaps of greater than a few millimetres do not have support from the specification, so claim 9 is not supported.

18. Claim 10 is specific to a gap of 10mm as exemplified in the second embodiment shown in figures 6-9. The description has a consistory clause that states at page 4 lines 13-14 that the gap is 10mm. I have found this embodiment does not fall within the scope of claim 1 (see construction of ‘lies against’), and thus a claim specific to this embodiment is not supported.

    Conclusion support - ‘lies against’

19. Claims 1 and 28 define a retaining wall system in its assembled form wherein the rear structural formations of the sleepers lie against the vertical posts. Claims 1 and 28 are supported by the first embodiment of the invention shown in figure 3 and 4 where the distance between the front and rear planar portions of the post is substantially the same as the width of the sleeper. The same applies to claim 6, which also supported by the first embodiment.

20. Claims 1 and 28 are not supported by the second embodiment of the invention shown in figures 6-9 where the distance between the front and rear planar portions of the post is greater than the width of the sleeper.

21. Claims 9 and 10 are predicated on claim 1 being supported by both the first and second embodiments. However, I have found that claim 1 is only supported by the first embodiment and not the second embodiment. Claims 9 and 10 are specific to (i.e. encompass) only the second embodiment and not the first embodiment, so claims 9 and 10 are not supported by the invention disclosed.

    Stacked

22. In my letter of 8 May 2025 I stated:

    Related to the “lies against” issue discussed above is the issue of how the sleepers are stacked.

    Independent claims 1, 28, and 29 define that the sleepers are stacked. Although not defined in simple terms, a result of the claims is that the trapezoidal sleepers are stacked edge-on-edge. Because the sleepers have trapezoidal cross section, they will not naturally stack edge-on-edge. There are two things that enable the sleepers to be stacked edge-on-edge.

    Firstly, the sleepers have a tongue and groove on their edges. This is shown in the figures (e.g. Figure 5). The tongue is at the bottom edge of the sleeper, while the groove is at the top edge of the sleeper.

    Secondly, after the ends of one sleeper are slotted into the channels of the vertical H-section posts, soil is filled to press the sleeper against the front surface of the channel; this process keeps the planar front of the sleeper in a vertical orientation allowing the next sleeper to be stacked on top. This is shown in figures 6-9 and described at page 13 lines 1 to 13:

    To install a retaining wall system 100, holes 80 are dug into the ground 78 to receive lower portions 104 of posts 101 and the lowermost portion 104 is inserted into the hole as shown in Figure 6. Concrete may be applied to the hole around the post to improve fixing of the post 101 as is well known in the field of wall post installation. With reference to Figure 7, a first sleeper 109 is then slid down between two vertical posts 101 so that it rests on ground level as shown in Figure 7. Since the distance between front planar portions 105A and rear planar portions 105B may be greater than the width W of the sleeper, the sleeper may initially be tilted as shown in Figure 7. In Figure 8 it can be seen that by backfilling with earth 78A against the rear of the sleeper 102, front face 109 of the the [sic] sleeper is forced flush against the front planar portion 105A of post 101. Further sleepers are then added, and additional earth backfilled, to make a stack 98 as shown in Figure 9 to thereby complete the retaining wall system 100.

    From the description it appears that the sleepers must be stacked and soil placed behind the sleeper sequentially to build up the retaining wall. Alternatively, although not stated in description explicitly, it appears plausible that the retaining wall could be assembled by stacking all the sleepers by connecting sleepers with the tongue and groove joints and then filling soil behind the retaining wall.

    For a claim to be supported, features essential to the invention must be defined in the claim.

    It appears that at least one of:

    a) The sequential laying of the sleepers and soil; or
    b) The interconnecting the sleepers as they are stacked

    is essential to the invention.

    The absence of either of these features from claim 1 and 28 appears to lead to a lack of support because these claims extend beyond the technical contribution. Claim 29 includes the feature of complementary male and female connections which may provide sufficient support from the specification of how the sleepers are stacked.

23. The Applicant’s further submissions state:

    The Examiner also comments on the interpretation or how the sleepers are stacked. In this regard, the Examiner notes that claims 1, 28 and 29 recite sleepers that are stacked. The Examiner comments that the claims generally relate to trapezoidal sleepers which are allegedly stacked edge-on-edge and it is alleged that such sleepers will not naturally stack edge-on-edge because they have a trapezoidal cross section.

    The Examiner contends that there are allegedly two things that enable the sleepers to be stacked edge-on-edge:

    1. The sleepers having a tongue and groove on their edges; and
    2. Backfilling with soil after each sleeper is slotted into the channels of the posts.

    The Applicant respectfully disagrees.

    As an initial point, the Applicant submits that the definition of stacked should be considered ‘piled into a stack’ where ‘stack’ should be considered as ‘a pile, heap or group’. The Applicant submits that the person skilled in the art armed with the knowledge of the specification would appreciate that stacked sleepers would refer to sleepers that are received in the channel one after another and that these sleepers being place one on top of the other are stacked.

    The Applicant submits that the present invention relates to a retaining wall system that is utilized to retain earth. Whilst a ‘cleanly’ stacked pile of sleepers (edge-on-edge) would be preferable in a retaining wall, a less cleanly stacked pile of sleepers will still retain dirt. In this regard, even if the sleepers were stacked and slightly offset or angled, the Applicant submits that these sleepers would still be considered ‘stacked’ as each sleeper is placed one on top of the preceding sleeper. Whilst it is preferable that the sleepers are stacked uniformly, there is no requirement that the claims be limited to such an orientation nor should the Applicant be limited to such an interpretation.

    Finally, the Applicant submits that the addition of the tongue and grooves can assist with ‘clean’ stacking of the sleepers. However, the absence of such features will still allow the sleepers to be stacked in the posts by virtue of the combination of the vertical H-section posts.

1. The Opponent’s further submissions state:

   The attorney's submissions create further uncertainty.

   Contrary to the Applicant’s present submission, Counsel for the Applicant at the hearing argued that compared to the acknowledged prior art, US 5,435,669, which has a flat top surface for stacking, the claimed sleepers are inventive, by reason of the rear structural formation not stacking (antistacking).

   The attorney now wants to give the stacking feature a wide ambit, meaning one above the other whether aligned or not, but stacking is only disclosed in the context of the alignment of the front faces and an inability to stack as Counsel for the Applicant described. The Applicant’s submissions:

   As an initial point, the Applicant submits that the definition of stacked should be considered ‘piled into a stack’ where ‘stack’ should be considered as ‘a pile, heap or group’. The Applicant submits that the person skilled in the art armed with the knowledge of the specification would appreciate that stacked sleepers would refer to sleepers that are received in the channel one after another and that these sleepers being place one on top of the other are stacked.

   The Applicant submits that the present invention relates to a retaining wall system that is utilized to retain earth. Whilst a ‘cleanly’ stacked pile of sleepers (edge-on-edge) would be preferable in a retaining wall, a less cleanly stacked pile of sleepers will still retain dirt. In this regard, even if the sleepers were stacked and slightly offset or angled, the Applicant submits that these sleepers would still be considered ‘stacked’ as each sleeper is placed one on top of the preceding sleeper. Whilst it is preferable that the sleepers are stacked uniformly, there is no requirement that the claims be limited to such an orientation nor should the Applicant be limited to such an interpretation.

   This completely recasts the Applicant’s submissions at the hearing that the sleepers do not naturally stack. In the second paragraph the attorney appears to be widening the “edge on edge” at the front face to something else.

   There is no disclosure anywhere of this so-called “less cleanly stacked” version. The only “stacking” described is that where the planar fronts form a substantially planar and continuous surface as is illustrated in Figure 1.

   While this is in the preferred embodiment there is no other option described as far as the front face is concerned that would be a “less cleanly stacked” version. As far as the tilting action is concerned the only version supported is where the “antistacking” feature works in combination to rotate into the tongue and groove. This combination is structurally necessary according to the description in this version since there are now two versions.

2. The questions I asked in the letter were specific to the second embodiment of the invention (where the width of the sleeper is less than the distance between the front and rear planar portions of the channel of the vertical post).

3. I am satisfied that the first embodiment (where the width of the sleeper is the same as the distance between the front and rear planar portions of the channel of the vertical post) would cause the sleepers to be stacked edge-on-edge. Because the sleepers are confined in movement to the vertical direction and no movement in the horizontal, the sleepers would be unable to tilt. Thus, the sleepers would stack edge-on-edge.

4. I have already found that the second embodiment of the invention does not provide support to claim 1, so it is moot as to whether other aspects of the second embodiment provide support to claim 1.

   Conclusion support – stacked

5. The first embodiment provides support for claims 1 and 28 as to how the sleepers are stacked.

   Claim 29

6. Claim 29 defines that the sleepers are “for vertical stacking of a multiplicity of the sleepers”, however claim 29 does not define the vertical posts and thus does not define the positional relationship (e.g. whether the sleeper ‘lies against’ the surfaces of the vertical posts) between the sleepers and the vertical post.

7. Claim 29 defines the sleepers alone (though “adapted to be used as a horizontal member of a retaining wall system”) and not a ‘retaining wall system’. Claim 29 defines the following features of the sleepers which are not defined in claims 1 and 28:

   ·The sleepers have “complementary male and female connections” (which is a broader way of defining tongue and grooves) for vertical stacking of the sleepers

   ·The sleepers are made from fibre reinforced plastic

   ·The sleepers include a longitudinal hollow

8. I consider sleepers with the features defined in claim 29 to be supported by the specification.

   Conclusion support

9. The first embodiment of the invention provides support for the features of ‘lies against’ and ‘stacked’ and all other features of claim 1. Claim 1 is thus supported by the first embodiment of the invention.

10. Claims 9 and 10 are not supported by the invention disclosed.

    Inventive step

    Inventive step legal principles

11. It is a requirement of subsection 18(1) of the Act that an invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:

    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 (whether in or out of 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).
    
    

12. Subsection 7(3) prescribes the information that may be considered as:

    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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
    
    

13. Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 Aickin J 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."

    Consideration

    The problem

14. The description states at page 1 lines 15 to 25:

    “A problem that arises in the building of a sleeper wall is that concrete or timber sleepers are heavy and labour intensive to move and to install. Attempts have been made to fabricate sleepers out of lighter materials. For example, in US patent No. 5,435,669 to Weber, there is described a soil retention wall system that includes a plurality of hollow polymeric sleepers, which are referred to as “lagging members”. The members that are described are bulky and take up considerable volume, which is disadvantageous from the point of view of transporting them to site.

    The present invention seeks to provide an improved retaining wall system, which will overcome or substantially ameliorate at least some of the deficiencies of the prior art, or which will at least provide an alternative.”

15. As the Applicant didn’t make submissions on what they believed to be the problem the present invention sought to solve, I take the above excerpt from the description to be the Applicant’s formulation of the problem.

16. The Opponents submissions state at paragraph 32 the problem addressed by the invention:

    Objective technical problem

    i.The applicant acknowledges that its solution to heavy concrete is not making a hollow lightweight plastic one because that is known from US 5,435,669 (p1 line 19);

    ii.These lagging members are considered to be “bulky and take up considerable volume, which is disadvantageous from the point of view of transporting them to site”.

    iii.So the objective technical problem is the problem of optimising the profile to reduce volume while still being able to swap out (similarly modular) with the concrete or timber sleeper.

17. In view of the description and the Opponent’s submissions I consider the problem the present invention addresses is a lightweight sleeper that occupies a relatively small volume when transported.

    The hypothetical task

18. The evidence adduced by the Opponent in relation to the inventive step of the invention included the question posed to Mr Braid to design a retaining wall using a pultruded imitation concrete sleeper (Braid [8]).

19. Mr Braid first sketched a commonly known concrete sleeper system (Braid [14]-[15], Ex HMB‑1):

20. Mr Braid then sketched in HMB-2 a sleeper which is rectangular in cross-section, but hollow:

21. Mr Braid then observed that, because the pultruded panels are lightweight, they may benefit from interlocking. He drew two structures in HMB-3 and HMB-4 having interlocking elements. HMB-3:

22. HMB-4 is as follows:

23. After being shown the US 3,614,870 (Furlong) patent Mr Braid goes onto to sketch HMB-5:

24. Two of the proposed ideas from Mr Braid have hollow sleepers with planar internal walls (HMB-2 and HMB-4), while the other two do not (HMB-3 and HMB-5). Three of the proposed ideas from Mr Braid have interlocking features on the sleepers (HMB-3, HMB-4, and HMB-5), while one does not (HMB-2).

25. None of the proposed sleepers have a trapezoidal cross-section. The closest Mr Braid comes to suggesting a sleeper with a trapezoidal cross section is in HMB-5 where the sleeper has a recess that resembles a trapezoid.

26. None of the proposed ideas from Mr Braid fall within the scope of the claim.

27. Overall, I am not satisfied that the evidence establishes that a person skilled in the art would, as a matter of routine, envisage an invention that falls within the scope of the claims. I consider the presently defined invention is inventive in light of the common general knowledge.

    US 3,614,870 (Furlong)

28. US 3,614,870 discloses a retaining wall formed from stringer members (20) that are connected to vertical members (14) with bolts.

29. The Opponent states in their submissions at paragraphs 26-28:

    Furlong teaches that a trapezoidal profile gives strength to horizontally stacked wall panels. The same engineering logic, resisting earth pressure using geometric rigidity drives the invention.

    While US3614870 (Furlong) discloses horizontally stacked, interlocking wall panels with diagonal reinforcement, it does not disclose a planar front face typical of concrete sleepers. The panels in Furlong are recognised by Braid as effectively the same as vertical shuttering but running horizontal as would sleepers but unlike sleepers which have a defined front for aesthetic presentation and alignment within H-posts. This reinforces that the objective technical problem was not to replicate the appearance of Furlong but to retain the visual and structural form of a concrete sleeper while reducing weight and minimising the material used in the FRP solution. The only differences between the claimed invention and Furlong as applied to the modular concrete system are:

    a. the substitution of pultruded FRP for metal;
    b. use of vertical H-section posts (although Furlong does have channels);
    c. specific interlocking profiles (tongue and groove);
    d. packaging the structure as a plastic modular sleeper wall.

    Each of these differences is either explicitly within CGK or trivial. Pultruded FRP was a well-established material in civil structures (TJD6–TJD10), and its substitution was a standard engineering response to weight, corrosion and handling concerns. H-section posts and tongue-and-groove joints were also well known (TJD13; Braid ¶19). Modularisation of known structural units is not inventive. The concrete system and the acknowledged prior art was already modular.

30. The Applicant states in their submissions at paragraphs 85:

    First, the list of features not disclosed by the 870 Patent is substantially all of the features of the claimed invention of the Opposed Application. OS 27 concedes that the 870 Patent does not disclose the use of plastic materials, the use of vertical H-section posts, the tongue and groove interlocking profile or indeed sleepers or a sleeper wall at all. Further, though OS does not acknowledge it, the 870 Patent also does not disclose the feature the rear structural formation defines a planar rear, wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely oriented diagonals spanning from opposite edges of the planar rear to the planar front. Those matters are unsurprising, since the 870 Patent relates to a different type of system, being a bin type. Indeed, they beg the question as to why one would be deploying the 870 Patent in a design of a sleeper wall system at all.

31. There are several differences between ‘870 and the present invention:

    ·The sleepers are not slotted into the channels of vertical posts. Instead, the sleepers are bolted onto a planar vertical post.

    ·The sleepers are not stacked on top of each other.

    ·The sleepers are not trapezoid in cross section. Instead, the sleepers are “hat-shaped in cross section”. Although a hat-shaped cross section resembles a trapezoid, it is missing a front face, thus has an open-curve cross section rather than a closed curve (that a trapezoid is).

32. The Opponent’s argument is that all the features missing from ‘870 that are present in the presently claimed invention would be “CGK or trivial”.

33. I consider that the Opponent’s approach is ex post facto analysis. The starting point for inventive step analysis should not be a comparison between the claimed invention and the prior art. Instead, the correct approach is asking, in light of the problem, what obvious modifications a PSA would make to the invention disclosed in the prior art document.

34. The problem the present invention addresses is a lightweight sleeper that occupies a relatively small volume when transported. The evidence does not show that a person skilled in the art when presented with the problem and the ‘870 patent would make modifications such that it fell within the scope of the claimed invention.

35. Overall, I consider the Opponent’s arguments in relation to inventive step unpersuasive. Claim 1 is inventive in light of ‘870.

    Conclusion

36. The claims are clear and are inventive in light of the prior art raised by the Opponent.

37. The specification provides: a) a complete enough and clear enough disclosure, and b) the best method for performing, the claimed invention.

38. Claims 9 and 10 lack support.

    Costs

39. The opposition is successful. Although costs typically follow the event, I have departed from this practice in this case.

40. In this case, the successful ground of opposition was not raised by the Opponent, and instead I had raised it under s 60(3). Although claims have been found invalid, the Opponent has not been successful in their opposition.

41. No award of costs is to be made.

    Xavier Gisz

    Delegate of the Commissioner of Patents

    Annex - claims

    Claims:

    1. A retaining wall system comprising:

    a plurality of vertical posts,

    wherein the plurality of vertical posts comprise a plurality of vertical H-section posts, each comprising planar parallel portions spaced by an orthogonal central planar web therebetween, the vertical H-section posts located in alignment and orientated to form vertical channels therebetween,

    a plurality of horizontally stacked sleepers stacked between adjacent posts with distal ends thereof received within respective channels thereof;

    wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts, wherein the rear structural formation defines a planar rear,

    wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front.

    2. The retaining wall system as claimed in claim 1, wherein the sleepers comprise fibre reinforced plastic.

    3. The retaining wall system as claimed in claims 1 or 2, wherein the vertical H-section posts comprise plastic.

    4. The retaining wall system as claimed in claim 3, wherein said posts comprises fibre reinforced plastic.

    5. The retaining wall system as claimed in any one of claims 1 to 4, wherein each sleeper is longitudinally hollow.

    6. The retaining wall system as claimed in any one of claims 1 to 5, wherein the planar front lies against respective planar portions of the adjacent posts.

    7. The retaining wall system as claimed in claim 6, wherein a surface of the planar front is texturised.

    8. The retaining wall system as claimed in claim 7, wherein each planar front forms male and female interconnections and wherein the diagonals meet between the interconnections.

    9. The retaining wall system as claimed in any one of claims 6 to 8, wherein a distance between the planar front and the planar rear of each sleeper is less than that between planar portions of the posts.

    10. The retaining wall system as claimed in any of claims 6 to 9, wherein a distance between the planar front and the planar rear of each sleeper is less than that between planar portions of the posts by approximately 10mm.

    11. The retaining wall system as claimed in claim 6, wherein each planar front forms interconnections.

    12. The retaining wall system as claimed in claim 11, wherein each the interconnections comprise male and female interconnections.

    13. The retaining wall system as claimed in claims 11 or 12, wherein the interconnections interconnect when the sleepers are brought together within the vertical channels.

    14. The retaining wall system as claimed in claim 12 or claim 13, wherein the male and female interconnections slot together.

    15. The retaining wall system as claimed in claim 14, wherein each interconnection comprises a length along the planar front, wherein the length is 20 mm or more.

    16. The retaining wall system as claimed in any one of claims 11 to 15, wherein the interconnections are spaced approximately 100 mm apart.

    17. The retaining wall system as claimed in any one of claims 1 to 16, wherein the rear structural formation comprises an isosceles trapezoid.

    18. The retaining wall system as claimed in claim 17, wherein the planar front makes an internal angle of about 65 degrees with a first of the diagonals and an internal angle of about 65 degrees with a second of the diagonals.

    19. The retaining wall system as claimed in any one of claims 12 to 17, wherein the male and female interconnections extend vertically upwardly and vertically downwardly or vice versa, in use.

    20. The retaining wall system as claimed in claim 19, wherein the female interconnections comprise a pair of opposed fins defining a groove therebetween.

    21. The retaining wall system as claimed in claim 20, wherein the male connections comprise a single tongue which complements the groove.

    22. The retaining wall system as claimed in claim 21, wherein the tongue is dimensioned to extend fully into the groove.

    23. The retaining wall system as claimed in any one of claims 21 to 22, wherein the tongue is non-hollow and each of the opposed fins are non-hollow.

    24. The retaining wall system as claimed in claim 20, wherein each of the sleepers includes a fin spacing portion which spaces the opposed fins from the rear structural formation.

    25. The retaining wall system as claimed in claim 24 wherein, each of the sleepers includes a tongue spacing portion which spaces the tongue from the rear structural formation.

    26. The retaining wall system as claimed in claim 25, wherein the tongue is horizontally offset from the tongue spacing portion.

    27. The retaining wall system as claimed in claim 26, wherein the tongue is horizontally offset from the tongue spacing portion a distance corresponding to a thickness of a corresponding one of the fins whereby upon interconnecting adjacent ones of the sleepers a front face of said fin is flush with a front face of the groove spacing member.

    28. A retaining wall system comprising:

    a plurality of vertical posts for installation in a vertical orientation,

    wherein the plurality of vertical posts comprise a plurality of vertical H-section posts, each comprising planar parallel portions spaced by an orthogonal central planar web therebetween, the vertical H-section posts locatable in alignment and orientable to form vertical channels therebetween,

    a plurality of horizontally stackable sleepers for stacking between adjacent vertical posts with distal ends thereof received within respective channels thereof;

    wherein the sleepers comprise plastic, wherein each of the sleepers defines a planar front and a rear structural formation which lies against opposite planar portions of the adjacent posts in use, wherein the rear structural formation defines a planar rear,

    wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front.

    29. A sleeper adapted to be used as a horizontal member of a retaining wall system, the sleeper defining a planar front and being comprised of fibre reinforced plastic and being elongate wherein an earth retaining side of the sleeper is formed with a rear structural formation including a longitudinal hollow, wherein the rear structural formation defines a planar rear, wherein the planar rear is narrower than the planar front and wherein the rear structural formation comprises oppositely orientated diagonals spanning from opposite edges of the planar rear to the planar front, and wherein the sleeper includes complementary male and female connections extending vertically upwardly and vertically downwardly in use for vertical stacking of a multiplicity of the sleepers.