Fieldturf Tarkett Inc. v TigerTurf International Limited

Case •

[2011] APO 3

•

18 January 2011

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Fieldturf Tarkett Inc. v TigerTurf International Limited [2011] APO 03

Patent Applications                  2006201560

Title:A Synthetic Surface

Patent Applicant:  Fieldturf Tarkett Inc.

Opponent:  TigerTurf International Limited

Delegate:  Jacob Elijah

Decision Date:  18 January 2011

Hearing Date:  18 October 2010, in Canberra

Catchwords:  PATENTS – opposition to grant – whether claims 1 to 7 lack novelty in light of the citations raised or alleged prior use – lack of novelty of claims 1 to 7 not established – whether claims 1 to 7 are obvious in light of the common general knowledge at the relevant priority date, either considered separately or taken with the relevant available prior art information - lack of inventiveness of claims 1 to 7 not established – whether claims 1 to 7 comply with Section 18(1) (a) of the Patents Act 1990 – lack of compliance of claims 1 to 7 with Section 18(1) (a) of the Patents Act 1990 not established – whether the nominated person is not entitled to the grant of a patent for the invention or is entitled to a grant of a patent only in conjunction with some other person (Sec 59 (a)) – nominated person found to have entitlement to grant of patent – whether applicant entitled to priority arising from (a) two basic documents filed with the original parent application and (b) a series of successive parent applications – priority claim established for basic documents and all parent applications – whether claims 1 to 7 comply with a variety of section 40 matters including, clarity, fair basis, best method of performance, full description of the invention – none of the claims were found to be deficient against the grounds of section 40 raised by the opponent.

Representation:  Patent applicant:  Angus Lang, counsel, instructed by Rebekah Gay, solicitor of Shelston IP, Sydney represented the applicant.

Opponent:TigerTurf International Limited – did not attend the hearing, relying on the evidence submitted via their attorney AJ Park, Auckland, NZ.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2006201560

Title:A Synthetic Surface

Patent Applicant:  Fieldturf Tarkett Inc.

Date of Decision:  18 January 2011

DECISION

I have found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined with the citations raised by the opponent against inventive step. The issues raised by the opponent regarding section 40/fair basis/ lack of clarity were not supported, as the claims and specification did not present any construction issues, which could not be resolved by the skilled addressee. The opponent was unable to establish that the current applicant was not entitled to a grant of the patent. Further the opponent did not establish that the applicant was not entitled to the earliest priority dates deriving from two basic documents and various related parent applications.

Costs according to Schedule 8 awarded against the opponent TigerTurf International Limited.

I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

REASONS FOR DECISION

BACKGROUND

  1. Fieldturf Inc. (now Fieldturf Tarkett Inc. – henceforth Fieldturf) filed patent application no 2006201560 on 12 April 2006 as a further application (divisional) to patent application no 2004201711 (the parent) under the provisions of section 79B of the Patents Act 1990. The parent application claims priority from AU 51966/01 filed on 15 June 2001, which claims priority from AU 58266/99 (AU 730904) filed 4 November 1999, which claims priority from AU 66060/98 (AU 708378) filed under the provisions of the PCT with an international filing date of 10 March 1998. The PCT application claims priority from a Canadian patent application 2199595 filed on 10 March 1997 and a US patent application 08/947881 filed on 9 October 1997. The application under opposition was examined and advertised accepted on 2 November 2006.

  2. TigerTurf International Limited filed a notice of opposition on 2 February 2007.  A statement of grounds and particulars was filed on 2 May 2007.  The filing of evidence in support, evidence in answer and evidence in reply was completed on 2 February 2009. A request to file further evidence was filed by the applicant on 13 October 2010 and granted on 2 November 2010. The opponent was granted one month from that date to file evidence in response but chose not to file a response.

  3. Sharcave Pty Ltd filed a notice of opposition on 2 February 2007. The filing of evidence in support, evidence in answer and evidence in reply was completed on 30 January 2009 and they and withdrew their opposition on 15 October 2010.

  4. Patent applications AU708378 and AU730904 were revoked by actions in the Federal Court of Australia. The opponent considered that the evidence filed therein was relevant to the current opposition.  Consequently most of the evidence of declarants for the opponent has been filed under declarations of Kerry Chrysiliou, patent attorney, solicitor and principal of Chrysiliou Law, Sydney.

    EVIDENCE

  5. I have assessed the evidence of the party who had withdrawn their opposition and found it to be largely similar to the material filed by the current opponent which I shall be assessing for the current opposition. I shall now list the evidence filed by the party in the current opposition. Evidence in support consists of declarations by:

    ·Kerry Chrysiliou, dated 24 October 2007 with annexures KC-1 to 9. She states that she is currently a patent attorney, solicitor and principal of Chrysiliou Law, Sydney.

    ·Kerry Chrysiliou, dated 24 October 2007 with annexures KC-10 to 18, 19A, 19B and 19C.

    ·Kerry Chrysiliou, dated 25 October 2007 with annexures KC-20 to 25.

    ·Kerry Chrysiliou, dated 25 October 2007 with annexures KC-26 to 29.

    ·Larry Lai, dated 18 October 2007 with Annexures A to E. He states that he is a patent attorney employed by Chrysiliou Law, Sydney.

    ·Kerry Chrysiliou, dated 28 November 2007 with annexures KC- 30 to 61.

    ·Max William Laybutt, dated 2 November 2007 with annexure MWL-A. He states that he has extensive experience in Australia in relation to the manufacture, sale, installation and use of synthetic turf surfaces.

    ·Graham Ellery Vivian, dated 6 December 2007 with exhibits GEV-1 to 12. He states that he is currently the Managing Director of TigerTurf International Limited, a New Zealand company.

    ·Max William Laybutt, dated 1 December 2007 with annexures MWL-B to E.

    ·Christopher Allan Simpson, dated 19 December 2007 with exhibit CAS-1. He states that he is currently the Managing Director of TigerTurf Australia Pty Ltd.

    ·Harry John Salomons, dated 20 December 2007 with exhibits HJS-1 to 3. He states that he is currently the Director of TigerTurf Americas, USA.

    ·Max William Laybutt, dated 31 December 2007 with annexures MWL-F and G.

    ·John Gordon Curtis, dated 2 January 2008 with annexures JGC-A and B. He states that he is currently the Managing Director of Sharcave Pty Limited.

    ·Philip Rossi, dated 29 January 2008. He states that he is currently the Managing Director of Tapex Pty Limited.

  6. Evidence in answer consists of declarations by:

    ·Robert James Jones, dated 24 October 2008 with annexures RJJ-1 and 2. He states that he is currently an Associate of the New Zealand Sports Turf Institute and a private consultant in synthetic turf.

    ·Fred Oudendyk, dated 28 October 2008 with annexures FO-1 and 2. He states that he is currently a director of Evergreen Synthetic Turf Pty Limited which is the Australian distributor of the products of Fieldturf Tarkett Inc.

  7. Evidence in reply consists of declarations by:

    ·Christopher Allan Simpson, dated 11 March 2009

  8. Further evidence from the applicant consists of declarations by:

    ·Rebekah Frances Gay, dated 21 October 2008 with annexure RFG-3. She states that RFG-3 is a true copy of an affidavit of Christopher Allan Simpson sworn 8 April 2004, together with annexures A and B to that affidavit. She further states that this affidavit was filed with the Federal Court of Australia during proceedings between Fieldturf Inc, Balsam Pacific Pty Ltd and a number of other respondents.

    ·Rebekah Frances Gay, dated 13 October 2010.

    ·Rebekah Frances Gay, dated 13 October 2010 with annexures RFG-4 and 5.

    THE SPECIFICATION

  9. The specification under opposition was advertised accepted on 2 November 2006. The specification is directed towards improved synthetic grass surfaces including grass sports surfaces. After identifying the technical field as above, the specification provides details of the background art (some prior patents have been listed) including some of the defects/disadvantages. The prior art surfaces generally comprise rows of strips or ribbons (also referred to as pile) of synthetic material, extending vertically from a backing mat with particulate material infilled in between the ribbons on the mat. The ribbons of synthetic material usually extend a short distance above the layer of particulate material and represent blades of grass. The particulate material usually comprises sand but can comprise other materials or a mixture of sand and other materials. The particulate material provides resiliency to the synthetic grass surfaces and the surfaces are often laid on a resilient pad to provide further resiliency to the surfaces. The specification then identifies some problems of the prior art, such as:-

    ·    Surface becomes hard after extended use because the sand between the rows of ribbons becomes compacted. Compacting occurs, in part, because the rows of ribbons are quite close together, and the sand cannot spread a great deal laterally during use. Compacting also occurs, in part, because the close spacing of the ribbon rows traps debris, worn and torn off the ribbons, in the sand, even when the particulate material comprises rounded sand particles;

    ·    With an increase in compaction, the surface becomes progressively harder and less resilient; consequently the performance of the surface is shortened, and it has lessened playing qualities.

    ·    The surface also becomes harder after use because the resilient pads, if used, slowly collapse under use, becoming denser;

    ·    Removal and replacement of the compacted particulate material, or even loosening of it, is difficult because of the close spacing of the rows of ribbons;

    ·    Problem of drainage, water flow through the surfaces has generally been slow. If the coated mat through which the ribbons are tufted is punctured to provide holes the particulate material often flows into these holes plugging them up;

    ·    Known playing surfaces have relatively poor playing qualities:-

    a.When infilled with rounded sand particles, the surface can become too slippery;

    b.The closely spaced fine ribbons, if penetrated, can tightly grip the cleats (or spikes of sports footwear) and do not tear as easily as grass, thus making release of the cleats more difficult and making playing on the surface more difficult and dangerous than when playing on grass.

    c.The closely spaced rows of ribbons also increase the speed of a rolling ball from the speed with which it rolls on natural grass, thus adversely affecting the playing qualities of the surface.

    d.If the surfaces are employed with a resilient base pad, balls bounce more on the surfaces than on the grass, subtly changing the nature of the game.

    e.The low resistance surface also makes it more slippery for tennis players

    ·    The known surfaces employ ribbons which are quite narrow, and they can curl creating an appearance unlike grass;

    ·    The narrow ribbons also abrade easier, creating debris that can increase compaction of the surface;

    ·    The close spacing of the ribbon rows also causes skin abrasion on players falling or sliding on the surfaces.

10.  The object of the invention is stated as, “…to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative”, and further that “…in at least one preferred form to provide a synthetic surface that can be tailored to meet a required surface texture or playing quality of the surface”. The specification then sets out a consistory statement which covers the main aspect of the invention which is outlined below:-

“…a synthetic surface comprising a flexible backing member and rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.”

11.  Then, a short description of various embodiments of the invention is provided, followed by a brief description of the drawings, detailed description of the various embodiments, seven claims and nine drawing figures. There are, one independent claim, five dependent claims and one omnibus claim. The independent claim and omnibus claim read as follows:-

1. A synthetic surface comprising a flexible backing member and rows of synthetic ribbons representing blades of grass, projecting upwardly from the backing member, the surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, all of the synthetic ribbons extending above the particulate material a predetermined distance and the synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.

7. A synthetic surface substantially as described herein with reference to and as illustrated in the accompanying drawings.

STATEMENT OF GROUNDS AND PARTICULARS

12.  The opponent raised grounds of novelty, inventive step, manner of manufacture, entitlement and section 40/fair basis/lack of clarity.  The opponent also contested the right of the opposed application to claim priority from the very first parent application and succeeding divisional applications from which it is derived. The opponent also contested the right of the current application to claim priority from the priority documents of the very first parent application. The opponent did not appear at the hearing indicating that it was not withdrawing its opposition. The opponent (by communication dated 15 October 2010) requested the Hearing Officer to fully consider the opponent’s case on both oppositions (including the substantive opposition against 2004201711) based on the documents filed at the Patents Office by the opponent to date, including the respective statements of grounds and particulars, and evidence filed.

DECISION

13.  The applicant made oral submissions at the hearing as well as filing written submissions. The opponent did not appear at the hearing but had filed evidence and submissions prior to the hearing. I shall refer to these as well as any earlier filed evidence wherever relevant in my decision.  The applicant had filed further evidence on 13 October 2010. The opponent was given a month from 2 November 2010 to respond to the same. The opponent did not provide any response to the same within the allocated deadline. I shall commence with consideration of the novelty matters (including prior use) followed by, inventive step, manner of manufacture, entitlement, section 40/clarity matters and divisional status/priority claim of the application.

Novelty

14.  The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235 states:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

The reverse infringement test teaches that if a citation discloses all the features of the claim, the claim will lack novelty.  If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).

15.  Before considering the documents raised by the opponent against novelty, I shall proceed to list the features of the invention as set out in claim 1 of the specification, which are:-

(a) A synthetic surface comprising;

(b) A flexible backing member; and

(c) Rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member;

(d) The surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member;

(e) All of the synthetic ribbons extending above the particulate material a predetermined distance; and

(f) The synthetic ribbons comprising a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.

16.  The opponent had submitted that some of these features formed part of the common general knowledge in Australia at the relevant date. I shall consider these submissions when assessing the disclosure of each feature. The opponent has provided a list of relevant citations as well as instances of prior use. I shall assess the novelty of the opposed claims against citations raised – Novelty (Prior Publication) followed by novelty of the claims against instances of prior use - Novelty (Prior Use). Before I proceed to a detailed consideration of novelty I note that the opponent had challenged the earliest priority dates of the opposed application. I have made a detailed consideration of this issue under the heading of “Priority Date”. The earliest priority date the application was entitled to, was established as 10 March 1997. This was the filing date of CA patent application 2199595, the first filed basic document of the first parent application.

Novelty (Prior Publication)

US 3940522 (Lai 18/10/2007, annexure A)

17.  The key features of the invention of the citation are stated as, “A cut pile fabric having a unique pile layer is provided wherein the pile layer comprises a multiplicity of fibers extending from a backing and secured thereto by adhesive in a conventional manner. The multiplicity of fibers is unique in comprising grass-like fibers having two webs joined together and a rib to form a V-cross-section and having a denier per fiber of between about 200 and 1500 and a major dimension of cross-section of at least 0.02 inch and, optionally crimped fibers having a denier per fiber of between about 6 and about 150. The grass-like fibers and the crimped fibers each comprise at least about 10 weight per cent of the multiplicity of fibers. The denier-per-fiber ratio of the grass-like fibers to that of the crimped fibers is usually greater than about 3:1”.

18.  On comparing with the opposed claims I find that features (a) and (c) are clearly disclosed. Feature (b) is a flexible backing member and the citation discloses a backing member but does not specify that it is flexible. Thus feature (b) is not disclosed. Features (d), (e) and (f) which refer to the infill of particulate material, the exposed ribbon height above the particulate material and the mixture of stiffer and softer ribbons are not disclosed. The citation’s key feature is a ribbon made of grass-like fibers having two webs joined together and a rib to form a V-cross-section and having a denier per fiber of between about 200 and 1500 and a major dimension of cross-section of at least 0.02 inch and, optionally crimped fibers having a denier per fiber of between about 6 and about 150. This is not part of the opposed invention. Hence opposed claim 1 is not disclosed in the citation and is not shown to lack novelty. Consequently, appended claims 2 to 6, and omnibus claim 7 (which has essential features substantially similar to those of claim 1 wherein the features are as described and illustrated in the specification and drawings), also do not lack novelty in light of US 3940522.

US 4820566 (Lai 18/10/2007, annexure B)

19.  The key features of the invention of the citation are stated as, “The tufted carpet mat of the invention is comprised of a backing having thereon a plurality of tufts of fine denier fibers and a plurality of tufts of stiff, textured or crimped, coarse denier fibers. The tufts of coarse denier fibers may be mixed, either randomly or in an ordered pattern within tufts of fine denier fibers. The relative proportion of tufts of crimped, coarse denier fibers to tufts of fine denier fibers should be adjusted to provide sufficient wiping action and water absorbency, thought to be a function mainly of the tufts of fine denier fibers, and sufficient openness to collect and obscure collected dirt, the latter being a function mainly of the tufts of crimped, coarse denier fibers”.

20.  In comparison to the opposed claims the citation clearly does not disclose features (d) and (e) which require an infill of particulate matter and an amount of exposed ribbon height above the particulate material. In terms of feature (f) though the citation talks of stiffer and finer ribbons it does not disclose the need to provide a surface texture for a predetermined field requirement. I consider that opposed claim 1 does not lack novelty in light of the citation. Consequently, appended claims 2 to 6, and omnibus claim 7 (which has the essential features substantially similar to those of claim 1 wherein the features are as described and illustrated in the specification and drawings), also do not lack novelty in light of US 4820566.

EP 0678622 (Lai 18/10/2007, annexure C)

21.  The citation discloses its invention as, “The artificial turf of the citation is constructed such that tufts of turf-shaped filaments are planted in a ground structure in a manner to form piles and tufts of subsidiary filaments which are shorter than the turf-shaped filaments are planted between the tufts of turf-shaped filaments. In such an arrangement, the turf-shaped filaments are supported by the subsidiary filaments thus being prevented from being laid flat over a long period of time. In addition when long turf-shaped filaments are used, the artificial turf provides an appearance close to that of natural turf and a sliding performance is improved in games such as soccer and the like where the play involves sliding actions. In addition, where a sand layer is provided on a base cloth with tip ends of the turf-shaped piles projecting above the surface of the sand layer, the elasticity of the subsidiary piles prevents the sand layer from being packed when trod, so that the artificial turf can preserve softness which is desired for a court or playground in a long-time use”.

22.  The citation discloses features (a), (c) and (d) of the opposed invention. However for feature (b) a cloth backing member is disclosed but there is no indication if it is flexible. Opposed feature (e) requires all ribbons to extend above the particulate material but this is not the case in the citation which has some ribbons above and some below the particulate material. Opposed feature (f) requires a mixture of stiffer and softer ribbons but this is not clear from the disclosure which discloses the tufts as having a denier of 300 to 1,500 and the subsidiary filaments having a denier of 30 to 300. Another embodiment shows denier range of 3,000 to 12,000 for the tufts and 1,500 to 12,000 for the assist filaments. Thus I consider that feature (f) is not disclosed. I consider that opposed claim 1 does not lack novelty in light of the citation. Consequently, the appended claims 2 to 6, and the omnibus claim 7 which has the essential features substantially similar to those of claim 1 wherein the features are as described and illustrated in the specification and drawings, also do not lack novelty in light of EP 0678622.

US 5601886 (Lai 18/10/2007, annexure D)

23.  This document is the family member of EP0678622 possessing the same basic document and disclosing the same invention. Accordingly I find that opposed claim 1 does not lack novelty in light of the citation. Consequently, the appended claims 2 to 6, and the omnibus claim 7 which has the essential features substantially similar to those of claim 1 wherein the features are as described and illustrated in the specification and drawings, also do not lack novelty in light of US 5601886.

Novelty (Prior Use)

24.  The opponent alleged that the opposed invention lacked novelty in light of the installation of sports fields in Europe in the early 1990’s, having a combination of knit de knit (curly) yarn and straight yarn.

25.  The applicant responded that the only declarant dealing with this matter was Mr Simpson, who described such fields in brief and general terms and did not describe them as having a mixture of stiffer and softer ribbons. I shall now assess the disclosure of the various declarants who have raised matters regarding prior use.

Graham Ellery Vivian (6 December 2007, exhibits GEV-1 to 12)

26.  Mr Vivian makes statements regarding a synthetic yarn that was manufactured, marketed, sold and distributed by Desso Synthigrass International (Desso) of Netherlands under the product name “Dynamix” at least as early as October or November 1997. There is no supporting evidence to show the date at which this material was made available to the public. Further the yarn in question is described as a two-dimensional yarn comprising two different types of synthetic fibres twisted together to form the yarn. One of the fibres was polypropylene and the other fibre was nylon. The nylon fibre was stiffer than the polypropylene fibre. This yarn was then tufted in to a flexible backing in parallel rows to form grass-like tufts of synthetic ribbons. Thus each individual ribbon had a stiff component and a soft component. Quite clearly this is different from a mixture of stiffer and softer ribbons of the opposed invention. The alleged prior use is of a two dimensional yarn which has the stiffer and softer material twisted together in a single yarn. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application.

Max William Laybutt (1 December 2007, annexures MWL-B to E)

27.  Mr Laybutt recalls attending a trade show in Cologne, Germany in October or November 1997 where he saw a synthetic turf surface called “Astroplay”. The surface had a flexible backing member and rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member. The surface included a layer of particulate material which was rubber. The stiffer ribbons projected above the layer of rubber and the softer ribbons remained under the layer of particulate material. There is no supporting evidence to show the date at which this material was made available to the public. Further there is no disclosure of both the stiffer and softer ribbons extending for a predetermined distance above the particulate material. I do not find that the opposed invention lacks novelty by virtue of the alleged prior use of the turf surface called “Astroplay”. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application.

Christopher Allan Simpson (19 December 2007, exhibit CAS-1)

28.  Mr Simpson refers to a “Supergrasse CLASSIC XT product which he claims was developed in the late 1980s. He claims that the brochures relating to this product were distributed to customers in Australia and overseas in the late 1980s. The synthetic yarn used in this product was twisted prior to tufting. The direction of twist, either clockwise or anti-clockwise, alternated for every two rows of tufts of synthetic ribbons along the width (perpendicular to the rows of tufts) of the synthetic turf. The alternate direction of the twisting of the tufts of the synthetic ribbons over the width of the synthetic turf provided a varying surface texture. The alternating twists of the tufts caused a varying stiff and soft feel as a hand was run over the surface in contact with the tufts.

29.  The brochure exhibited as evidence does not disclose the feature of the alternate direction of the twisting of the tufts. Further the opposed invention requires that there be a mixture of stiffer and softer ribbons as opposed to a ‘feeling of stiffness and softness’ as stated by the declarant. The publication date of the brochure is not stated/shown on the exhibit. In light of the above I do not find that a lack of novelty by prior use of the invention as claimed in opposed claims 1 to 7 has been established.

Harry John Salomons (20 December 2007, exhibits HJS-1 to 3)

30.  Mr Salomons talks about a synthetic turf product called “AstroPlay” that was manufactured, marketed, sold and distributed globally by companies trading under the name Astroturf since at least early 1999. This is clearly after the two earliest possible priority dates of 10 March 1997 and 9 October 1997. There is disclosure of a synthetic grass surface with alternating rows of stiffer ribbons (made of nylon) and softer ribbons (made of polyethylene) wherein the stiffer ribbons are of a shorter height and buried beneath the particulate infill used to stabilise the synthetic turf after it had been laid. There is no supporting evidence to show the date at which this material was made available to the public. Further there is no disclosure of both the stiffer and softer ribbons extending for a predetermined distance above the particulate material. I do not find that the opposed invention lacks novelty by virtue of the alleged prior use of the turf surface called “AstroPlay”. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application.

John Gordon Curtis (2 January 2008, annexures JGC-A and B)

31.  Mr Curtis recalls attending a trade show in Cologne, Germany in October or November 1999, where he inspected a display of artificial turf called “AstroPlay”. There is disclosure of a synthetic grass surface with alternating rows of stiffer ribbons (made of nylon) and softer ribbons (made of polyethylene) wherein the stiffer ribbons are of a shorter height and buried beneath the particulate infill used to stabilise the synthetic turf after it had been laid. There is no supporting evidence to show the date at which this material was made available to the public. Also, the alleged date of disclosure is clearly after the two earliest possible priority dates of 10 March 1997 and 9 October 1997. Further there is no disclosure of both the stiffer and softer ribbons extending for a predetermined distance above the particulate material. I do not find that the opposed invention lacks novelty by virtue of the alleged prior use of the turf surface called “AstroPlay”. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application.

Philip Rossi (29 January 2008)

32.  Mr Rossi states that in the mid 1990s he manufactured a synthetic turf surface which had what he called a “variable surface”. It had a flexible backing with tufted ribbons in parallel rows projecting upwardly from the backing and an infill of particulate material. The yarns used were polypropylene and polyethylene, mixed together in the same tufts. A sample of this surface was exhibited at a trade show in Cologne, Germany in 1996 or 1997. Mr Rossi does not explicitly state that he had a surface with a mixture of stiffer and softer ribbons. There is no supporting evidence of this prior use such that it could be considered to have been published in such a manner that the essential aspects of the invention were freely available to the public. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application. Mr Rossi states also that he was aware around 1996 or 1997 that AstroTurf, a US synthetic turf manufacturer, was exhibiting its AstroPlay synthetic turf surface, which had a mixture of yarns, one being stiffer (nylon) and the other being softer (polyethylene). Once again there is no firm evidence of a date of publication or prior use. Also I had found that the AstroPlay product did not disclose that both the stiffer and softer ribbons extended above the particulate infill. I do not find that this establishes the alleged prior use of the invention of claims 1 to 7 of the opposed application.

Inventive Step

33. The opponent stated, “The alleged invention claimed in the Application was not and is not a patentable invention within the meaning of Section 18(1)(b)(ii) of the Patents Act 1990, in that, in so far as claimed in any claim, it did not involve an inventive step when compared with the prior art base as it existed before the priority date of that claim.” The opponent then provided details of what they considered to constitute common general knowledge in the art as well as the features that they considered were known in the art. The opponent and applicant have made detailed submissions with regard to inventive step and I shall refer to them where relevant in my assessment of inventive step.

34. I note that the filing date of the opposed application (the Divisional) is 2 April 2006. Current Subsections 7(2) and 7(3) of the Patents Act 1990 (effective for applications filed on or after 1 April 2002) indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:

(a) common general knowledge in the art; or

(b) common general knowledge considered together with information publicly available in a single document or a combination of any 2 or more documents, provided that the document or documents could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at page 286:

"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."

Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:

• a determination of the problem sought to be solved by the opposed patent specification 
• a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
• a determination of the common general knowledge (henceforth cgk) in Australia at the relevant priority date

35.  In order to determine the problem that the invention sought to solve I shall have regard to the opposed specification. Though there is no single statement outlining the defects of the prior art, the introductory part of the specification at pages 2 to 4 identifies the following matters:

  1. The surfaces (of the known sand-filled synthetic grass sports surfaces) usually become hard after extended use because the sand, between the rows of ribbons, becomes compacted. A variety of reasons are discussed as to how this happens.
  2. Another problem with the known synthetic grass sport surfaces is the problem of drainage. A discussion of the drainage problems is provided.
  3. The known synthetic surfaces also have relatively poor playing qualities. Issues such as (a) the surface becoming slippery, (b) Tight grip by the grass ribbons on cleats of sports shoes if they penetrate the surface, (c) Consequently there is difficulty in release of the shoe and also in allowing it to pivot, (d) Synthetic surfaces, with closely spaced rows of ribbons, increase the speed of a rolling ball from the speed with which it rolls on natural grass, (e) For surfaces employed with a resilient base pad, balls bounce more on the surfaces than on grass, subtly changing the nature of the game, have been identified.
  4. Other disadvantages are: - (a) The ribbons employed are quite narrow, and they can curl creating an appearance unlike grass, (b) Narrow ribbons also abrade easier, creating debris that can increase the compaction of the surface, (c) The close spacing of the ribbon rows also causes skin abrasion on players falling or sliding on the surfaces.

36.  The applicant has not only identified the problems of the prior art but also discussed possible reasons for those problems occurring. For inventive step purposes I shall identify only the problems as they would be experienced by the skilled addressee. These are:-

  1. Surfaces becoming hard after extended use.
  2. Drainage problems
  3. Relatively poor playing qualities, e.g. slipperiness, cleats of sports shoes sticking in the surface, increased speed of ball rolling, abnormal bounce.
  4. Unnatural appearance
  5. Easier abrasion of ribbons
  6. Player injuries such as skin abrasions.

The opposed specification clearly states, “It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative.”

37.  The non-inventive worker in the field would include a synthetic grass surface manufacturer and installer.  The opponent had submitted that they would rely on the cgk and prior art base at or before the priority date of each claim either taken alone or in combination with one or more of the publications or use as referred to or evidenced by persons in the industry. They did not specifically identify the relevant persons and I shall assess all the declarants to determine the extent to which their submissions may be relied upon to establish cgk.

Based on the declarations made and the accompanying material, I note that the declarants for the opponent and applicant have provided detailed submissions. I shall now assess, for inventive step purposes, these submissions, commencing with the opponent’s declarants.

38.  Mr Laybutt states that he was a licensed builder for 20 to 25 years prior to the mid-1980s and thereafter entered the synthetic grass surface industry initially as a salesperson. He indicates that he was involved in sales and thereafter in the installation and close observation of the manufacture of synthetic grass surfaces for a variety of companies till 1997. He states that, “By 1 March 1997, in my experience in Australia it was commonly known to Australian manufacturers, importers in to Australia, sales personnel and installers to sell, install and use synthetic grass surfaces suitable for sports playing fields which had the following features in combination:-

1.a flexible backing member;

2.parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member;

3.the rows of ribbons being spaced apart from each other by any of the gauges identified in the following table (the table identifies gauges (in mm) of 3.97, 4.76, 7.94 and 9.52);

4.the length of the ribbons covered a wide range from 9 mm to 75 mm, the wider gauges (as above) being generally (but not always) used with the longer ribbons; and

5.an infill of particulate material, generally sand, on the flexible backing, the level of the infill ranging from 66% of the height of the ribbons to about 90% of the height of the ribbons, with a level of infill of 75% to 80% of the height of the ribbons being most common, and a level of infill of about 66% the height of the ribbons being used for some products or for particular effects.

Mr Laybutt did not provide any statement which clearly indicated that the use of stiffer and softer ribbons in synthetic turf surfaces was part of the cgk in the art prior to the relevant priority date.

39.  Mr Vivian states that he has worked in the synthetic turf industry in New Zealand and overseas since 1982 and is currently the Managing Director of TigerTurf International Limited, a New Zealand company. Mr Vivian makes no statement regarding what he considered to be the common general knowledge in the art prior to 10 March 1997 and 9 October 1997.

40.  Mr Simpson states that he has worked in the synthetic turf industry in Australia and overseas for about 27 years and is currently the Managing Director of TigerTurf Australia Pty Ltd, a New Zealand company. Mr Simpson makes no statement regarding what he considered to be the common general knowledge in the art prior to 10 March 1997 and 9 October 1997.

41.  Mr Salomons states that he has worked in the synthetic turf industry since 1981 and is currently the Director of TigerTurf Americas, Austin, Texas, USA. Mr Salomons makes no statement regarding what he considered to be the common general knowledge in the art prior to 10 March 1997 and 9 October 1997 but does make a statement on the synthetic turf product called “AstroPlay” that was manufactured, marketed, sold and distributed globally since at least as early as 1999.

42.  Mr Curtis states since about 1980 he has been in the business of installing tennis courts in Australia. He states that he is currently the Managing Director of Sharcave Pty Limited. Mr Curtis makes no statement regarding what he considered to be the common general knowledge in the art prior to 10 March 1997 and 9 October 1997.

43.  Mr Rossi indicates that he worked for Tapex, a family owned business involved in the manufacture of plastics products and that in 1984/85 Tapex manufactured polyolefin yarn for use in the manufacture of synthetic turf surfaces. He states, “Since Tapex commenced developing and manufacturing synthetic yarn for synthetic grass surfaces, I have worked closely with the manufacturers and installers of synthetic grass surfaces in Australia…”  He then lists the relevant companies and further states, “As a result of this experience, I am aware of the characteristics of, and developments in, synthetic grass surfaces in Australia since about 1985”. Mr Rossi then provides a list of cgk which I have summarised (in terms of relevance to the opposed claims) as set out below:-

a)the tufting process involves the extruded synthetic fibre (made of polypropylene or polyethylene) being punched through a primary flexible backing, looped and cut to provide ribbons similar to strands of natural grass;

b)the primary backing material or backing member is typically made of polypropylene fibrous material;

c)the secondary backing process involves locking the tufts of ribbon formed during the tufting process into the primary backing. Latex, polyurethane and fibrous material can be and are commonly applied to the underside of the tufted product as part of the secondary backing process.

d)the gauge (spacing between rows of ribbons), yarn type, yarn thickness, pile height and stitch rate are variables in the manufacture of synthetic turf which are the subject of routine workshop variations and adjustments made to take account of the conditions and circumstances of the intended use;

e)many synthetic turf surfaces have rows or strips of ribbons of synthetic material, extending vertically from the backing material, with particulate material inserted between the ribbons of the backing material;

f)the length of synthetic ribbon often extends a short distance above the layer of particulate material. The length of this distance varies depending upon the intended use, actual use, weather conditions and maintenance program. In some applications, the exposure will be up to about one third of the ribbon height;

g)the particulate material usually consists of sand, rubber or other materials or combinations of these;

In terms of his knowledge regarding the use of a combination of stiffer and softer ribbons, Mr Rossi indicates that be became aware of them by at a least 1996 or 1997. He does not provide any published material to support this statement. At no stage does Mr Rossi indicate that the use of a mixture of stiffer and softer ribbons in synthetic turf surfaces formed part of the cgk in Australia before 10 March 1997 or 9 October 1997.

I shall now consider the statements of declarants for the applicant with regard to the common general knowledge at the relevant priority date.

44.  Mr Oudendyk indicates that he has been engaged in the business of installing synthetic grass surfaces since 1990 and that he began installing the applicant’s synthetic grass surfaces since 1998. Mr Oudendyk states that he has installed synthetic grass surface both in Australia and overseas. Though Mr Oudendyk does not make any explicit statement regarding the state of the cgk in Australia prior to 1997 he gives an indication of what he knew of synthetic grass surfaces prior to March 1997:-

a) constructed from a flexible backing, usually made from a woven polypropylene, into which were stitched fibres, also usually made from polypropylene, that replicated blades of grass;
b) these fibres were stitched into the flexible backing in a series of parallel rows, and then a layer of latex was applied to the backing to fix the stitching in place;
c) a particulate material such as sand was often used to fill in the spaces between the fibres of “grass”;
d) depending on the particular application for which a synthetic grass surface was to be used, characteristics such as the length of the woven fibre, referred to as the “pile”, and the distance between the parallel rows of fibres, referred to as the “gauge”, varied according to widely accepted industry standards.

Mr Oudendyk then indicates that as at March 1997 he was aware of:-

·the use of gauges of 3/16 inch (4.76 mm) and 3/8 inch (9.52 mm).

·pile heights varying from 9 mm to 25 mm

·sand infill varying from 1 to 2 mm (pile heights of 9, 19, 25 mm) below the top of the pile to 3 to 4 mm (pile height of 25 mm) below the top of the pile

·child care centres where he used a 19 mm pile with 3/8 inch gauge and a sand infill estimated at about half the height of the pile.

Mr Oudendyk then describes denier rate as a measure of the thickness of the fibre used to create the tufts of synthetic grass. He states, “…denier strength is a reference to the breaking strain, with a higher rating meaning that the fibre is stronger. In general, a lower denier fibre is flexible and softer, while a higher denier fibre is stiffer”. In terms of the use of a mixture of stiffer and softer ribbons for synthetic turf surfaces he indicates that he became aware of this approximately four or five years ago. As his declaration is dated 28 October 2008, he would have acquired this knowledge, between around 28 October 2003 to 28 October 2004.

45.  Mr Jones states that he is from New Zealand being an Associate of the New Zealand Sports Turf Institute (NZSTI) and a private consultant in the synthetic turf industry having worked in the industry for over thirty years. Mr Jones states that he has installed synthetic grass surfaces in Australia, New Zealand and South East Asia. Though Mr Jones does not make any explicit statement regarding the state of the cgk in Australia prior to 1997 he gives an indication of what he knew of synthetic grass surfaces in the mid 1990s. These are fairly similar to features (a) to (d) as set out for Mr Oudendyk above. Mr Jones then states that there was a significant development in the late 1990s when a third generation of synthetic surfaces reached the market. He describes the same as:-

“The third generation surfaces were constructed from polypropylene or polyethylene fibres woven into a flexible polypropylene primary backing with a latex secondary backing. However unlikely (sic) the earlier surfaces the fibre was much longer, being 50 to 65 mm in length, and the weave was more open. The surface was then filled with a combination of rubber and sand, up to approximately two thirds of the height of the pile, leaving a much greater length of the pile exposed above the top of the infill. This allows the pile to bend over and lock down, which holds the surface together and holds the sand/rubber infill in place.”

There is no indication or assertion by Mr Jones if the knowledge relating to the third generation synthetic surfaces formed part of the cgk prior to March 1997. No supporting material such as trade brochures/journals/publications have been provided in support of this assertion. I cannot therefore consider Mr Jones’ disclosure on third generation synthetic surfaces to be part of the cgk in Australia prior to March 1997. Mr Jones also states that as at 1997 he was not aware of any surfaces that were made from a mixture of ribbons or composite ribbons.

46.  I have considered the declarations of the persons skilled in the art in Australia to determine if they had acquired knowledge of the features constituting the alleged common general knowledge through various means including study/knowledge of the patents and other technical/scientific texts/papers. I shall now assess the various items of alleged cgk while considering the applicant’s submissions against each item. My determination is based on the teaching from British Acoustic Films Ld v Nettlefold Productions, (1936) 53 RPC 221 at page 250,

"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."

and

"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."

This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482 with the qualification that "without question" should read "generally regarded as a good basis for further action".

In terms of textbooks cited by the applicant and opponent I note that in ICI Chemicals & Polymers Ltd v Lubrizol Corp 45 IPR 577, Emmett J stated:

"The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled workers mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:

·    standard texts and handbooks;

·    standard English dictionaries;

·    technical dictionaries relevant to the field;

·    magazines and other publications specific to the field"

47.  While assessing the cgk asserted by the declarants for the opponent and the applicant I have considered the submissions of both parties. There appear to be a number of features identified as cgk by both sides. Some of these are common to both parties and not in dispute and some are disputed between the parties. The features of synthetic grass surfaces considered to be part of the cgk prior to March 1997 and not in dispute (I have selected Mr Rossi’s version) are:-

a)the tufting process involves the extruded synthetic fibre (made of polypropylene or polyethylene) being punched through a primary flexible backing, looped and cut to provide ribbons similar to strands of natural grass;

b)the primary backing material or backing member is typically made of polypropylene fibrous material;

c)the secondary backing process involves locking the tufts of ribbon formed during the tufting process into the primary backing. Latex, polyurethane and fibrous material can be and are commonly applied to the underside of the tufted product as part of the secondary backing process;

d)the gauge, yarn type, yarn thickness, pile height and stitch rate are variables in the manufacture of synthetic turf which are the subject of routine workshop variations and adjustments made to take account of the conditions and circumstances of the intended use;

e)many synthetic turf surfaces have rows or strips of ribbons of synthetic material, extending vertically from the backing material, with particulate material inserted between the ribbons of the backing material;

f)the length of synthetic ribbon often extends a short distance above the layer of particulate material. The length of this distance varies depending upon the intended use, actual use, weather conditions and maintenance program. In some applications, the exposure will be up to about one third of the ribbon height;

g)the particulate material usually consists of sand, rubber or other materials or combinations of these.

Mr. Oudendyk has referred to cgk where some measurements/spacing is specified but these are not relevant to the opposed claims.

Most of the applicant’s declarants have said that they had seen or were aware of the disclosure of the use of stiffer and softer ribbons in synthetic turf surfaces (at or around 1997) but in no case have they clearly stated that this formed part of the cgk at the relevant priority date. None of the applicant’s declarants explicitly indicated that they were aware of the use of a mixture of stiffer and softer ribbons in synthetic turf surfaces prior to 10 March 1997 and 9 October 1997.

48.  I shall now assess the cgk and documents raised by the opponent for inventive step when the cgk is considered singly or in combination with the published documents and established prior use. I note that for the patent documents cited they offer solutions to some of the problems of the prior art. As such I consider they would have been ascertained, understood and regarded as relevant by the skilled addressee when seeking a solution to the problems of the prior art (one prior art document is a tufted carpet pile not related to sports surfaces).

US 3940522 (Lai 18/10/2007, annexure A)

49.  The key features of the cited invention which I have noted are as follows: - A cut pile fabric having a unique pile layer is provided wherein the pile layer comprises a multiplicity of fibers extending from a backing and secured thereto by adhesive in a conventional manner. The multiplicity of fibers is unique in comprising grass-like fibers having two webs joined together and a rib to form a V-cross-section and having a denier per fiber of between about 200 and 1500 and a major dimension of cross-section of at least 0.02 inch and, optionally crimped fibers having a denier per fiber of between about 6 and about 150. The grass-like fibers and the crimped fibers each comprise at least about 10 weight per cent of the multiplicity of fibers. The denier-per-fiber ratio of the grass-like fibers to that of the crimped fibers is usually greater than about 3:1.

50.  The problems of the prior art were identified as (i) Surfaces becoming hard after extended use; (ii) Drainage problems; (iii) Relatively poor playing qualities, e.g. slipperiness, cleats of sports shoes sticking in the surface, increased speed of ball rolling, abnormal bounce; (iv) Unnatural appearance; (v) Easier abrasion of ribbons; (vi) Player injuries such as skin abrasions.

The citation appears to deal with problems identified in (iii), (iv), (v) and (vi). The issues noted in (i) and (ii) appear not to have been addressed.

51.  Claim 1 is directed to a synthetic surface with features (a) to (f) as set out under Novelty above. The citation does not disclose features (b), (d), (e) and (f) of the opposed claims. I have discussed the lack of disclosure of these features in detail under the heading of Novelty. I consider that this document would have been regarded as relevant by the skilled addressee as it did provide some solutions to the problems of the prior art. In terms of looking for a synthetic surface to address the problems of the prior art there is no indication of what would motivate the skilled addressee to seek out features (b), (d) to (f) above when provided with the cgk combined with the teaching of the citation. The citation indicates that it is directed to a synthetic turf fibers and pile fabrics made therewith, wherein the pile fabric has improved aesthetics (e.g., appearance) and mechanical (e.g., frictional) properties and closely simulates natural turf. The citation also indicates that such a surface is suitable for football and baseball playing surfaces, golf greens, tennis courts, and high wear areas of lawns. If this is the case I do not see what would persuade the skilled addressee to:- (i) provide a flexible backing member, (ii) provide a surface including a layer of particulate material on the backing member supporting the synthetic ribbons in a relatively upright position relative to the backing member, (iii) ensure that all of the synthetic ribbons extend above the particulate material a predetermined distance and (iv) ensure that the synthetic ribbons comprise a mixture of stiffer ribbons and softer ribbons to provide a surface texture for a predetermined field requirement.

52.  The cgk suggests that in some instances a particulate material may be provided to support the individual ribbons of the pile in a relatively upright position. However the citation shows upstanding ribbons and there seems to be no motivating factor to suggest the need for an infill of particulate material. Thus neither the cgk in isolation nor when combined with the citation, suggests such features. I do not find claim 1 as lacking an inventive step. Consequently, appended claims 2 to 6, and omnibus claim 7 which has essential features substantially similar to those of claim 1 wherein the features are as described and illustrated in the specification and drawings, also do not lack inventiveness in light of US 3940522.

US 4820566 (Lai 18/10/2007, annexure B)

53.  I have noted the key features of the cited invention as follows: - The tufted carpet mat of the invention is comprised of a backing having thereon a plurality of tufts of fine denier fibers and a plurality of tufts of stiff, textured or crimped, coarse denier fibers. The tufts of coarse denier fibers may be mixed, either randomly or in an ordered pattern within tufts of fine denier fibers. The relative proportion of tufts of crimped, coarse denier fibers to tufts of fine denier fibers should be adjusted to provide sufficient wiping action and water absorbency, thought to be a function mainly of the tufts of fine denier fibers, and sufficient openness to collect and obscure collected dirt, the latter being a function mainly of the tufts of crimped, coarse denier fibers.

54.  The problems of the prior art were identified as (i) Surfaces becoming hard after extended use; (ii) Drainage problems; (iii) Relatively poor playing qualities, e.g. slipperiness, cleats of sports shoes sticking in the surface, increased speed of ball rolling, abnormal bounce; (iv) Unnatural appearance; (v) Easier abrasion of ribbons; (vi) Player injuries such as skin abrasions.

55.  The citation provides a tufted carpet mat which is particularly suited for pedestrian traffic with a view to receiving shoe soles for collecting and obscuring dirt and collecting and facilitating evaporation of water. I consider that this document would have been ascertained and understood by the skilled addressee but would not have been regarded as relevant in view of the problems of the prior art. Consequently this citation will not be used to assess the inventiveness of the opposed claims.

EP 0678622 (Lai 18/10/2007, annexure C)

56.  The features of the invention disclosed by the citation are: -“The artificial turf of the citation is constructed such that tufts of turf-shaped filaments are planted in a ground structure in a manner to form piles and tufts of subsidiary filaments which are shorter than the turf-shaped filaments are planted between the tufts of turf-shaped filaments. In such an arrangement, the turf-shaped filaments are supported by the subsidiary filaments thus being prevented from being laid flat over a long period of time. In addition when long turf-shaped filaments are used, the artificial turf provides an appearance close to that of natural turf and a sliding performance is improved in games such as soccer and the like where the play involves sliding actions. In addition, where a sand layer is provided on a base cloth with tip ends of the turf-shaped piles projecting above the surface of the sand layer, the elasticity of the subsidiary piles prevents the sand layer from being packed when trod, so that the artificial turf can preserve softness which is desired for a court or playground in a long-time use”.

(C) The disclosure in the specification requires that the synthetic ribbons have a length L that is in a particular ratio with regard to spacing between the rows, A. None of the claims include this feature.

This disclosure at page 10, line 15 to page 11, line 22 clearly indicates that it is a specific embodiment. It does not state that these requirements must be satisfied for the invention to work. Other embodiments are also disclosed which do not include this requirement. The applicant has chosen the embodiments he wishes to claim for his monopoly. There is no requirement that he has to claim all embodiments that he has described in his specification.

(D) The disclosure in the specification requires that the particulate material is at least 2/3 the length of the ribbons. None of the claims includes this feature.

This disclosure is a specific embodiment and does not indicate that it is essential to the working of the invention. Other embodiments are also disclosed which do not include this requirement (see for instance page 14, lines 14 to 16 which indicate that the particulate layer could be as thick as the ribbons are long). The applicant has chosen the embodiments he wishes to claim for his monopoly. There is no requirement that he has to claim all embodiments that he has described in his specification.

(E) Claim 2 refers to ribbons being mixed with stiffer and softer ribbons – i.e., there are three types of ribbon. There is no disclosure of this in the specification.

At page 5, line 14 onwards it discloses, “Preferably, the ribbons are mixed with the stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field”. This clearly indicates that the applicant is referring to a mixture of ribbons wherein the mixture is made up of stiffer and softer ribbons suitable for a predetermined sports playing field.

The opponent has not shown that claims 1 to 7 of the opposed application lack fair basis.

84.  Issue 4:- The claims are not clear and succinct.

(A) Claim 2 is dependent on claim 1 and refers to “the ribbons” being mixed with stiffer and softer ribbons. The ribbons referred to are already a mixture of stiffer and softer ribbons. Claim 2 either contemplates a second type of stiffer and softer ribbon or a third type of ribbon. Either way, there is no precedent for this in claim 1.

Claim 2 reads “A surface as defined in claim 1, wherein the ribbons are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field”.

Claim 1 clearly indicates that the synthetic ribbons comprise a mixture of stiffer and softer ribbons. Claim 1 is restricted to this mixture to provide a surface texture for a predetermined field requirement. Claim 2 is referring to ribbons comprising a mixture of stiffer and softer ribbons but in this instance it is for a predetermined sports playing field and this is how it would be construed by the skilled addressee (see the Rules of Construction Décor Corp v Dart Industries 13 IPR 385 at 400- A patent specification should be given a purposive construction rather than a purely literal one). There is no support in the description for the opponent’s interpretation of a third kind of ribbon mixed with the stiffer and softer ribbons. Most of the declarants (who are the relevant persons skilled in the art) did not express any difficulty in construing claim 2. I do not find claim 2 as lacking in clarity.

(B) Claim 3, dependent on claim 1 or 2, provides that “the proportion” of the ribbons equals the number of the softer ribbons. There is no precedent for “proportion” in claim 1 or 2.

Claim 3 reads “A surface as defined in either claim 1 or 2, wherein the proportion of stiffer ribbons and softer ribbons is 1:1”.

Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries (supra). This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224. The relevant rules applicable for this circumstance are as follows:

·If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

·A patent specification should be given a purposive construction rather than a purely literal one.

Having regard to the specification I found that the Summary of the Invention at page 5, lines 15 and 16 repeated the pertinent matter of claim 3 verbatim. However when looking at the embodiments, page 9 lines 2 and 3 of the description disclosed, “the ratio of stiff to soft ribbons may be 1:1”. Thus the skilled addressee would have no difficulty in resolving the apparent lack of clarity of claim 3. I do not find claim 3 as lacking in clarity.

(C) Claim 4, dependent on any of claims 1 to 3, provides that “the alternate ribbons” are stiff and soft. There is no precedent for “the alternate ribbons” in any of claims 1 to 3.

Claim 4 reads, “A surface as defined in any one of claims 1 to 3, wherein the alternate ribbons are stiff and soft”.

It is clear from the plain meaning of the claim that this refers to ribbons that are adjacent to each other. I do not think that the skilled addressee would face great difficulties in construing this claim. I do not find claim 4 as lacking in clarity

(D) Claim 5, dependent on any of claims 1 to 4, provides that “the tufts of ribbons” have stiff and soft ribbon portions. There is no precedent for “the tufts of ribbons” in any of claims 1 to 4.

Claim 5 reads “A surface as defined in any one of claims 1 to 4, wherein the tufts of ribbons have soft and stiff ribbon portions.”

The description at page 12, line 17 states, “The surface 1 is manufactured by attaching the ribbons 7 by tufting them through the backing member 3 in rows 5…” The plain meaning of the claim would indicate that it is referring to a single tuft (see for instances figures 1 and 2) comprising both a soft ribbon and a stiff ribbon. I do not find claim 5 as lacking in clarity.

CONCLUSION

85.  The opponent raised grounds of novelty, inventive step, manner of manufacture, entitlement and section 40/fair basis/lack of clarity. The opponent also contested the right of the opposed application to claim priority from the very first parent application and succeeding divisional applications from which it is derived. The opponent also contested the right of the current application to claim priority from the priority documents of the very first parent application.

86.  I had found that none of the claims were shown to be not novel. Further none of the claims lacked an inventive step in light of the common general knowledge alone and also when combined with the citations raised by the opponent against inventive step. The issues raised by the opponent regarding section 40/fair basis/ lack of clarity were not supported, as the claims and specification did not present any construction issues, which could not be resolved by the skilled addressee. The opponent was unable to establish that the current applicant was not entitled to a grant of the patent. Further the opponent did not establish that the applicant was not entitled to the earliest priority dates deriving from two basic documents and various related parent applications.

87.  I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

88.  The applicant submitted that costs should follow the event. The opponent did not provide any submissions in this regard.

89.  The power of the Commissioner to award costs is based on section 210 and regulation 22.8. In terms of the substantive opposition, the opponent has been unsuccessful on all grounds.

90. Accordingly I award costs in accordance with Schedule 8, of the Patents Regulations 1991, against the opponent TigerTurf International Limited and in favour of the applicant Fieldturf Tarkett Inc.

Jacob Elijah
Delegate of the Commissioner of Patents

Actions
Download as PDF Download as Word Document
Cases Citing This Decision

1

Fieldturf Tarkett Inc v Tigerturf International Ltd [2014] FCA 647
Cases Cited

0

Statutory Material Cited

0