Fieldturf Tarkett Inc. v TigerTurf International Limited

Case •

[2011] APO 2

•

18 January 2011

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Fieldturf Tarkett Inc. v TigerTurf International Limited [2011] APO 02

Patent Applications                  2004201711

Title: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 28 lack novelty in light of the citations raised or alleged prior use – lack of novelty of claims 3, 4 and 5 established - whether claims 1 to 28 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 3, 4 and 5 established - whether claims 1 to 28 comply with Section 18(1) (a) of the Patents Act 1990 – lack of compliance of claims 1 to 28 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 only one basic documents (filed on 9 October 1997) and all parent applications - whether claims 1 to 28 comply with a variety of section 40 matters including, clarity, fair basis, best method of performance, full description of the invention – only claims 11 and 21 were found to be lacking in clarity.

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

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:                   2004201711

Title:Synthetic Surface

Patent Applicant:  Fieldturf Tarkett Inc.

Date of Decision:  18 January 2011

DECISION

1. Claims 3, 4 and 5 lack novelty.

2. Claims 3, 4 and 5 lack an inventive step

3. Claims 11 and 21 lack clarity.

Costs according to Schedule 8 awarded against the applicant Fieldturf Tarkett Inc.

The applicant is granted sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 3, 4, 5, 11 and 21.

REASONS FOR DECISION

BACKGROUND

  1. Fieldturf Inc. (now Fieldturf Tarkett Inc. – henceforth Fieldturf) filed patent application no 2004201711 on 23 April 2004 as a further application (divisional) to patent application no 51966/01 (the parent) under the provisions of section 79B of the Patents Act 1990. The 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 27 April 2006.

  2. TigerTurf International Limited filed a notice of opposition on 27 July 2006.  A statement of grounds and particulars was filed on 27 October 2006.  This was subsequently amended with the amended statement of ground and particulars being allowed on 23 November 2006.  The filing of evidence in support, evidence in answer, evidence in reply and further evidence including the related evidence in response was completed on 6 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.

  1. HG Turf Maintenance Pty Ltd filed a notice of opposition on 24 July 2006. The filing of evidence in support and evidence in answer was completed on 21 July 2008 and they withdrew their opposition on 5 February 2009.

  1. Advanced Polymer Technology Australasia Pty Ltd filed a notice of opposition on 25 July 2006. The filing of evidence in support and evidence in answer was completed on 21 July 2008 and they withdrew their opposition on 15 October 2010.

  1. Sharcave Pty Ltd filed a notice of opposition on 27 July 2006. The filing of evidence in support, evidence in answer and evidence in reply was completed on 16 January 2009 and they withdrew their opposition on 15 October 2010.

  1. 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

  2. I have assessed the evidence of the parties who had withdrawn their oppositions 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 18 April 2007 with exhibits KC-1 to 5. She states that she is currently a patent attorney, solicitor and principal of Chrysiliou Law, Sydney.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-6 which she asserts is a true copy of an affidavit of Rodney Cecil Cross sworn on 13 February 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-7 which she asserts is a true copy of an affidavit of Douglas James Golder sworn on 2 April 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-8 which she asserts is a true copy of an affidavit of Robert Wayne Kirkwood sworn on 13 January 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-9 which she asserts is a true copy of an affidavit of Peter Ronald Luffman sworn on 12 January 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-11 which she asserts is a true copy of an affidavit of Philip Rossi sworn on 12 January 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-12 which she asserts is a true copy of an affidavit of Daryl Rodney Sidman sworn on 8 March 2004 which was served on her firm.

    ·Kerry Chrysiliou, dated 7 August 2007 with exhibit KC-10 which she asserts is a true copy of an affidavit of Jean Prevost sworn on 24 March 2004 which was served on her firm. The affidavit includes exhibits JP-3 to 6. Exhibits JP-1, 2 and 7 which included samples of synthetic turf were not served.

    ·Kerry Chrysiliou, dated 8 August 2007 with exhibit KC-13 which she asserts is a true copy of an affidavit of John Gilman sworn on 5 April 2004 which was served on her firm. The affidavit includes exhibits JG-1 to 4. The declaration also includes exhibits KC-14 to 16.

    ·Kerry Chrysiliou, dated 8 August 2007 with exhibit KC-17 which she asserts is a true copy of an affidavit of Alan John Berry sworn on 2 April 2004 which was served on her firm. The affidavit includes exhibits AJB-1 to 19, 21, 23 and 24. Exhibits AJB-20 which was confidential and AJB-22 which was a sample of synthetic turf were not served.

    ·Kerry Chrysiliou, dated 8 August 2007 with exhibit KC-18 which she asserts is a true copy of an affidavit of John Gordon Curtis sworn on 2 March 2004 which was served on her firm. The affidavit includes exhibits JGC-7 to 18 and 20 to 30. JGC-19 she states was a sample of synthetic turf not returned by the Federal Court.

    ·Kerry Chrysiliou, dated 9 August 2007 with exhibits KC-19 to 23.

    ·Kerry Chrysiliou, dated 13 August 2007 with exhibit KC-24 which she asserts is a true copy of an affidavit of Max William Laybutt sworn on 2 March 2004 which was served on her firm. The affidavit includes true copies of exhibits MWL-1 to 30.

    ·Allen Chan, dated 18 April 2007 with annexures A to Z and AA to AJ. He states that he is currently a patent attorney with Chrysiliou Law, Sydney.

    ·Allen Chan, dated 26 July 2007 with corrected annexures AA and AJ.

    ·Max William Laybutt, dated 21 August 2007 with annexure MWL-A and B.

    ·Kerry Chrysiliou, dated 21 August 2007 with annexures KC-25 to 27, 28A, 29A, 30 to 32, 33A and 33B.

    ·Kerry Chrysiliou, dated 22 August 2007 with annexures KC-34 to 38, 39A and 39B.

    ·Kerry Chrysiliou, dated 20 August 2007 with annexure KC-40. She states that this annexure includes exhibits DJG-1, 2 and 4 to14. Exhibit DJG-3, which included a sample of synthetic grass was not served. These exhibits were meant to accompany her declaration dated 18 April 2007 with exhibit KC-7 which she asserted was a true copy of an affidavit of Douglas James Golder sworn on 2 April 2004.

    ·Kerry Chrysiliou, dated 23 August 2007 with annexures KC-41 and 42.

    ·Kerry Chrysiliou, dated 23 August 2007 with annexure KC-43 which she asserts is a true copy of an affidavit of John Kenneth Rooks sworn on 12 January 2004 which was served on her firm. The affidavit includes exhibits JKR-1 to 3 and 5 to 16. Exhibit JKR-4 which was a sample of synthetic turf was not served.

    ·Allen Chan, dated 22 August 2007 with annexure AK.

    ·Peter van Reijen, dated 24 August 2007 with exhibits PVR-1 to 5.

  3. Evidence in answer consists of declarations by:

    ·Troy Squires, dated 30 June 2008 with exhibits TS-1 to 10

    ·Rebekah Frances Gay, dated 3 July 2008 with annexures RFG-1 and 2. She states that RFG-1 and 2 are true copies of affidavits of Christopher Allan Simpson sworn on 12 March 2004 and 15 April 2004 respectively, which affidavits were filed with the Federal Court of Australia during proceedings between Fieldturf Inc, Balsam Pacific Pty Ltd and a number of other respondents.

    ·Robert James Jones, dated 25 May 2008 with annexures RJJ-1 and 2.

    ·Fred Oudendyk, dated 25 May 2008 with annexures FO-1 and 2 which was re-executed on 1 June 2008 and filed separately.

  4. Evidence in reply consists of declarations by:

    ·Max William Laybutt, dated 16 January 2009

10.  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 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

11.  The specification under opposition was advertised accepted on 27 April 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 a 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:-

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

2.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.

3.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.

4.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.

5.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.

12.  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.” The specification then sets out consistory statements which cover six aspects of the invention of which I shall only outline the first. The rest are covered by the independent claims. The first aspect provides,

“A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.”

13.  Then, further details of various aspects of the invention are provided, followed by a brief description of the drawings, various embodiments, twenty-eight claims and nine drawing figures. There are four independent claims, twenty-two dependent claims and two omnibus claims. The independent claims and omnibus claims read as follows:-

1. A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.

2. A synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is

2A ≤ L

such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.

3. A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, the surface including a layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member.

4. A synthetic surface for a sports playing field wherein the synthetic surface comprises a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member, whereby the relationship of the length of the ribbons and the spacing between the rows is

2A ≤ L

such that the length of the ribbons is at least twice the spacing; and the particulate material having a thickness, T, which is substantially equal to 2/3 the length, L, of the ribbons, where A is the spacing between the rows, L is the length of the ribbon measured from the flexible backing and T is the thickness of the layer of particulate material.

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

28. A synthetic surface for a sports playing field surface substantially as described herein with reference to and as illustrated in the accompanying drawings.

STATEMENT OF GROUNDS AND PARTICULARS

14.  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 2006201560) based on the documents filed at the Patent Office by the opponent to date, including the respective statements of grounds and particulars, and evidence filed.

DECISION

15.  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 made a request to file further evidence on 13 October 2010 which was allowed on 2 November 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

16.  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).

17.  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;

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

(d) The rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2¼ inches (5.715 cm); and

(e) The length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons;

(f) Whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons;

(g) Such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.

I note that claim 2 has similar key features except for feature (d). The relevant feature set out below shows that the spacing is not specified.

(d2) the rows of ribbons spaced apart from each other.

Claim 3 has features (a) to (e) and the feature listed below:-

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

Claim 4 has features (a) to (f) except that for feature (d), like claim 2 it has feature (d2) where the spacing between the rows of ribbons is not specified, and it has the feature (similar to feature (h) of claim 3) listed below

(h4) the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member.

18.  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 9 October 1997. This was the filing date of US patent application 08/947881, one of the basic documents of the first parent application.

Novelty (Prior Publication – Single document)

19.  The opponent provided an extensive list of patent documentation and trade brochures. Having assessed all these I shall discuss novelty of the opposed claims against only the most relevant documentation as set out below.

US 3995079 (Chan 18/4/2007, annexure C)

20.  The citation discloses that the product comprises basically a pile fabric including a relatively flexible backing and normally generally upstanding pile elements which resemble grass and which have free ends spaced from the backing providing an upper game playing surface. It additionally comprises a quantity of non-compacting granular material comprising irregular, angular particles having  a US screen mesh size between 6 and 100, interspersed on the backing and among the elements, said material being present in sufficient quantity to substantially absorb the shock of objects impacting thereon whereby to provide game playing characteristics approaching those of natural turf.

21.  The specification also discloses that for a golf green the length of the pile elements should be within the range of approximately ½ inch to 1½ inches and for a football field from 1½ inches to 2½ inches. Further the depth of the granulated material should be within the range of from about 50% to substantially equal the length of the pile elements depending on the application intended. For the golf green and football field the depth of the granulated material is disclosed as lying in the range of 75% to 95% of the length of the pile elements.

22.  On comparing this with the opposed claims I find that features (a) and (b) have been disclosed. In terms of opposed feature (c) the specification (either through the drawings or the text) does not disclose parallel rows of synthetic ribbons. For feature (d)/(d2) I note that the spacing between rows of ribbons has not been specified and that there is no indication that the ribbons of the citation are placed in rows. Feature (e) is clearly not disclosed as the spacing between the rows of ribbons has not been specified though the length of the ribbons is disclosed. Thus one cannot determine if the spacing is at least twice the length. Features (f) and (g) require the surface to be capable of receiving a certain level of infill (or having an infill) such that, “…a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill”. The citation does not specify such a requirement and as such does not disclose opposed features (f) and (g). Thus the citation does not disclose features (c), (d)/(d2), (e), (f) and (g). Thus claims 1 and 2, and claims appended thereto do not lack novelty in light of US 3995079. For claims 3 and 4, I note that feature (h)/(h4) has clearly been disclosed as is evident from the drawings but features (c), (d)/(d2) and (e) are not disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of US 3995079. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of US 3995079.

US 4044179 (Chan 18/4/2007, annexure E)

23.  This document discloses:-“A playing surface for athletic games comprising a substantially flat, firm subsurface; a pile fabric disposed on said subsurface comprising a relatively flexible, substantially moisture-impermeable backing and normally generally upstanding pile elements resembling grass; the length of said pile elements lying in the range from about ½ to about 1½ inches; a compacted layer of weather resistant, granular, mineral material disposed among the pile elements on the backing; the depth of the mineral material lying in the range from 75% to substantially equal to the length of the pile elements and being substantially uniform over the entire area of the playing surface; said mineral material comprising less than 10% clay and further comprising a moisture retaining material sufficient to maintain the moisture content of the mineral material above about 3% by weight under normal climactic conditions.”

24.  Features (a) and (b) are disclosed in this document. The description then refers to generally upstanding pile elements resembling blades of grass but does not disclose, “Parallel rows of synthetic ribbons”. Thus feature (c) is not disclosed. Features (d)/(d2) and (e) which define the spacing between the rows and the relationship between the ribbon heights and row spacing do not find disclosure in this document. The requirement of the infill height (or capability to receive such an infill) such that tops of ribbons between adjacent rows can overlap (features (f) and (g)) is also not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of US 4044179. For claims 3 and 4, I note that feature (h)/(h4) has clearly been disclosed as is evident from the drawings but features (c), (d)/(d2) and (e) are not disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of US 4044179. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of US 4044179.

US 4337283 (Chan 18/4/2007, annexure G)

25.  This document provides a playing surface for athletic games comprising:- a firm stable subsurface; a pile fabric having a flexible backing and normally upstanding pile elements resembling grass; the length of said pile elements being substantially uniform and lying in the range from about ½ to about 2 inches; and a compacted top dressing layer comprising a mixture of from 25 to 95% resilient particles and from 5 to 75% fine sand interspersed on the backing among the pile elements to a substantially uniform depth. The depth of the top dressing may range between about 50% of the height of the piles and substantially even with the tips of the piles.

26.  One can see that features (a) and (b) of the opposed invention have been disclosed. There is no disclosure of parallel rows of ribbons, spacing between the rows of ribbons and the specified relationship between the ribbon height and the spacing between the rows of ribbons. Further even though the top dressing is specified as being “between about 50% of the height of the piles and substantially even with the tips of the piles” there is no disclosure that the depth of the top dressing should be at about two-thirds the ribbon height such that tops of ribbons between adjacent rows can overlap. Thus features (c) to (g) are not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of US 4337283. For claims 3 and 4 I note that feature (h)/(h4) has clearly been disclosed as is evident from the drawings but features (c), (d)/(d2) and (e) are not disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of US 4337283. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of US 4337283.

JP-A-S58-7005 (Chan 18/4/2007, annexure H)

27.  A copy of the Japanese document is accompanied by an English translation. The applicant has not raised any objections regarding this translation and I shall therefore make my assessment of novelty based on the English translation of the Japanese document and henceforth all references to the citation are references to the English translation. An artificial turf for an athletic field is disclosed made from polyamide/polyethylene terephthalate with grass blades which are made upstanding by the addition of infill (mostly sand/silica particles). The infill could range from 8 to 18 mm from the base of the turf. The length of the grass blades above the infill could vary from 2 to 8 mm. Thus the infill could vary from 50% to 90% of the depth of the turf. An embodiment provides an infill height of 75%.

28.  On comparing with claim 1, I find that features (b) to (e) are not disclosed. In respect of feature (b) a backing member is disclosed but there is no indication that it is flexible. Features (f) and (g) are disclosed as the requirement for two thirds infill is within the range of infill specified and the drawings (Fig 3A) and the description (page 7, third paragraph) show the feature of overlap of ribbons to encapsulate the infill. Thus features (b), (c) and (e) common to independent claims 1 to 4 are not disclosed in the citation. Consequently claims 1 to 4 and claims appended thereto do not lack novelty in light of JP-A-S58-7005. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of JP-A-S58-7005.

US 4389435 (Chan 18/4/2007, annexure I)

29.  A playing surface for athletic games is disclosed comprising a firm, stable subsurface; a resilient compressible underpad from ¼ to 1¼ inches thick; a pile fabric having a flexible backing and normally upstanding pile elements resembling grass; the length of said pile elements being substantially uniform and lying in the range from ½ to 1½ inches; and a compacted top dressing layer of sand having a particle size in the range from 10 to 200 US screen mesh interspersed on the backing among the pile elements to a substantially uniform depth at least ½ the length of the pile elements; the combination of subsurface, underpad, pile fabric and top dressing providing natural footing for players and exerting a damping effect upon objects impacting on the surface. The playing surface is top dressed with a layer of compacted sand which is at least one-half the length of the pile elements and must be substantially uniform over the entire playing surface.

30.  Features (a) and (b) of the opposed application are clearly disclosed. Features (c) to (e) including the parallel rows of ribbons, spacing between the rows of ribbons and the specified relationship between the ribbon height and the spacing between the rows of ribbons are not disclosed. There is no disclosure that the surface be capable of receiving a top dressing such that tops of ribbons between adjacent rows can overlap (features (f) and (g)). Thus features (c) to (g) are not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of US 4389435. For claims 3 and 4, feature (h)/(h4) is clearly disclosed as is evident from the drawings but features (c), (d)/(d2) and (e) are not disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of US 4389435. Omnibus claim 27 is directed to a synthetic surface and would have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of US 4389435.

CA 1182484 (Chan 18/4/2007, annexure M)

31.  A playing surface for athletic games is disclosed comprising a firm, stable subsurface; a pile fabric having a flexible backing and normally upstanding pile elements resembling grass; the length of said pile elements being substantially uniform and lying in the range from about ½ to about 2 inches; and a compacted top-dressing layer comprising a mixture of from 25 to 95% resilient particles and from 5 to 75% fine sand interspersed on the backing among the pile elements to a substantially uniform depth. The depth of the top dressing may range between about 50% of the height of the piles and substantially even with the tips of the piles.

32.  Features (a) and (b) of the opposed application are clearly disclosed. Features (c) to (e) including the parallel rows of ribbons, spacing between the rows of ribbons and the specified relationship between the ribbon height and the spacing between the rows of ribbons are not disclosed. Further there is no disclosure that the depth of the top dressing (or capability of receiving a top dressing) should be such that tops of ribbons between adjacent rows can overlap (features (f) and (g)). Thus features (c) to (g) are not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of CA 1182484. For claims 3 and 4, I note that feature (h)/(h4) has clearly been disclosed as is evident from the drawings but features (c), (d)/(d2) and (e) are not disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of CA 1182484. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of CA 1182484.

US 4637942 (Chan 18/4/2007, annexure N)

33.  The described invention relates to a synthetic grass playing field surface of the type having simulated grass pile carpet laid over a stabilized base support surface, wherein a thick underpad is arranged between the bottom of the carpet and the upper surface of the support base. The underpad is formed of irregularly shaped, relatively small size rubber-like particles which are bonded together to form a resilient, dense mass which is water pervious for drainage. The carpet is preferably formed of fibers which are made of double bent, U-shaped strands which are looped through a fibrous carpet base sheet. The bights of the fibers extend beneath the lower surface of the carpet base sheet to form welts. These welts are aligned in serpentine or sine-like curved rows which are parallel or spaced apart from each other. The welts in each row are parallel to and spaced apart a small distance from their next adjacent welts so that the welts dig into and frictionally interlock with the particles forming the upper surface of the underpad. A sand-like granule filling in-fills the interstices between the fibers for a substantial height of the fibers to near their upper free ends.

34.  Feature (a), the synthetic surface is disclosed but the backing member though disclosed is not specified as being resilient. Thus feature (b) is not disclosed. Parallel rows of synthetic ribbons, that is, feature (c) is disclosed, but the specified spacing between the rows of ribbons and the specified relationship between the ribbon height and the spacing between the rows of ribbons (features (d), (e)) are not disclosed. However feature (d2) is disclosed as figure 3 shows spaced apart rows. Further there is no disclosure that the depth of the top dressing (or capability of receiving a top dressing) should be such that tops of ribbons between adjacent rows can overlap (features (f) and (g)). Thus features (b) and (d) to (g) are not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of US 4637942. I note that for claim 2 feature (d2) has been disclosed as claim 2 requires a spacing between rows of ribbons but no specific spacing is identified. For claims 3 and 4, I note that feature (h)/(h4) has clearly been disclosed as is evident from the drawings but features (b), (d) and (e) are not disclosed. I note that for claim 4 feature (d2) is disclosed. Thus claims 3 and 4 and claims appended thereto do not lack novelty in light of US 4637942. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 do not lack novelty, I find that claims 27 and 28 do not lack novelty in light of US 4637942

CA2095158 (Chan 18/4/2007, annexure Q)

35.  This document discloses a playing surface for field sports games where the players wear cleat-bearing shoes, said playing surface comprising: a firm stable subsurface; a pile fabric, having a flexible backing and normally upstanding grass-like pile elements, the length of said pile elements being substantially uniform and lying in the range from 0.375 to 3 inches; wherein said pile elements further define an interspacing gap between any two successive said pile elements (preferably pile element rows), σ, whereby: 0.75 inch ≤ σ < 1.50 inch (max); and a top-dressing layer, comprising sand (preferably a mixture of from 24 to 95 volume percent resilient particles and from 5 to 75 volume percent fine sand) interspersed among the pile elements and on the backing to a substantially uniform depth at least half the length of said pile elements.

36.  Features (a) and (b) of the opposed application are clearly disclosed. Feature (c) is disclosed at page 7, line 22-23 which states, “preferably, said pile elements are arranged in generally parallel rows.” Feature (d) specifies a range of 5/8 inch (1.588 cm) to 2¼ inches (5.715 cm) for the spacing between the parallel rows of ribbons. The citation discloses a range of ¾ inch (1.905 cm) to 1½ inch (3.81 cm) which falls within the specified range. Thus feature (d)/(d2) is disclosed. Feature (e) requires that the ribbons (pile elements) be at least twice as long as the spacing between the rows of ribbons. The citation does not have this explicit requirement but it does specify pile element heights of 0.375 to 3 inches. Thus heights from 1.5 to 3.0 inches are at least twice the specified spacing of 0.75 to 1.50 inch. Thus feature (e) is disclosed. The citation requires that the depth of the top dressing be at least half the length of the pile elements but there is no specific requirement that the depth of the top dressing (or capability of receiving a top dressing) should be such that tops of ribbons between adjacent rows can overlap (features (f) and (g)). Thus features (f) and (g) are not disclosed in the citation. Thus claims 1 and 2 and claims appended thereto do not lack novelty in light of CA 2095158. For claims 3 and 4, I note that feature (h)/(h4) has clearly been disclosed from the Summary of the Invention which states that, “normally upstanding grass-like pile elements” are present. As features (a) to (e) are also disclosed claim 3 is disclosed in the citation. Thus claim 3 lacks novelty in light of CA2095158. Claim 4 has feature (f) which is not disclosed in the citation, consequently claim 4 and the claims appended thereto do not lack novelty in light of CA20955158. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Thus where omnibus claim 27 encompasses the features of claim 1 it would not lack novelty in light of CA 2095158. I note that when appended to claim 3 omnibus claim 27 encompasses the features of claim 3 as they are described in the specification and illustrated with reference to the drawings. Consequently claim 27 would then include a particulate filling comprising a mixture of silica sand and cryogenically ground rubber particles. This is not disclosed in the citation which refers to a filling comprising mixture of sand and resilient particles such as cork , rubber, etc. Hence claim 27 is not shown as lacking novelty in light of CA2095158. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 2 and 4 do not lack novelty, I find that claim 28 does not lack novelty in light of CA 2095158. I shall now assess the claims appended to claim 3.

37.  Claim 5 defines ribbon lengths between 1.5 inches to 5 inches. The citation discloses lengths of 0.375 to 3 inches, thus claim 5 clearly lacks novelty.

38.  Claim 6 defines a ribbon width of about 0.5 inch. This is not specified in the citation; hence claim 6 does not lack novelty.

39.  Claim 7 defines the backing member as formed of a single layer of permeable fabric. The citation does not disclose this feature, hence claim 7 does not lack novelty in light of the citation.

40.  Claims 8 and 9 define the backing member as formed of a double layer and triple layer respectively of permeable fabric. This is not disclosed in the citation and hence claims 8 and 9 do not lack novelty in light of the citation.

41.  Claim 10 defines that the backing member has one or more layers of fabric, at least one of which is needle punched to produce fuzzy fibres on its surface in order to increase the permeability of the fabric. There is no disclosure of this feature in the citation hence claim 10 is not shown as lacking in novelty. As claim 11 is exclusively appended to claim 10 it also does not lack novelty in light of the citation

42.  Claim 12 defines that the ribbons (or grass elements) are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined field requirement. There is no disclosure of a mixture of stiffer and softer ribbons in the citation. Consequently claim 12 is not shown to be lacking in novelty.

43.  Claims 13 to 17 are appended exclusively to claim 12 either directly or via each other consequently these claims do not lack novelty in light of the citation.

44.  Claim 18 (when appended to Claim 3) defines a synthetic surface including a strip of coating material on the back of the backing member overlying each row of ribbons to fasten the ribbons to the backing member, the backing member being porous and uncovered by coating material between the strips. The citation makes no disclosure of this feature and hence I find that claim 18 does not lack novelty.

45.  Claim 19 is appended to any one of claims 5 to 18 when dependent on claim 2 or 4. As I had determined that claims 2 and 4 do not lack novelty, then as a consequence, I find that claim 19 also does not lack novelty.

46.  Claims 20 to 26 are appended exclusively to claim 19 either directly or via each other consequently these claims do not lack novelty in light of the citation.

Thus I have found that claim 3 and claim 5 lack novelty in light of CA2095158.

Novelty (Prior Publication – two or more related documents)

47. Section 7(1)(b) provides that for novelty (other than for "whole of contents"), prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts can be used - if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.

Some guidance of when two or more documents constitute a single source of information is obtained from Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545 at page 570 where Gummow J stated:

"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case*. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe & Dohme case* indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'."

* (1927) 44 RPC 367, (1928) 45 RPC 153.

48.  The opponent has listed a number of instances where they have challenged the novelty of the opposed claims based on the combined teaching of two or more related patent documents. I have addressed these as set out below.

US 4337283, US 4044179 and US 3995079

49.  US 4337283 does refer to the teaching of US 4044179 and US 3995079 but only as prior art and to identify certain defects thereof. At column 5, lines 36 to 38 it suggests using the teaching of US 4044179, stating, “Optionally, a portion of the resilient particles may be replaced by a moisture modifying material as described in US Pat. No. 4044179.” Thus there is no teaching which discloses all the essential features of independent claims 1 to 4 and omnibus claims 27 and 28. I had considered all these patents individually and none of them rendered the opposed claims as lacking in novelty. The combined teaching of these patents does not disclose all the essential features of the opposed claims. I find that opposed claims 1 to 28 do not lack novelty in light of a combination of US 4337283, US 4044179 and US 3995079.

CA1182484, US 4389435, US 4044179 and US 3995079

50.  CA1182484 does refer to the teaching of US 4389435, US 4044179 and US 3995079 but only as prior art and to identify certain defects thereof. At page 11, lines 30 to 32 it suggests using the teaching of US 4044179, stating, “Optionally, a portion of the resilient particles may be replaced by a moisture modifying material as described in US Pat. No. 4044179.” Thus there is no teaching which discloses all the essential features of independent claims 1 to 4 and omnibus claims 27 and 28. I had considered all these patents individually and none of them rendered the opposed claims as lacking in novelty. The combined teaching of these patents does not disclose all the essential features of the opposed claims. I find that opposed claims 1 to 28 do not lack novelty in light of a combination of CA 1182484, US 4389435, US 4044179 and US 3995079.

CA 2095158 and CA 1182484

51.  CA 2095158 makes several references to CA 1182484 indicating initially that the subject matter of the latter patent is incorporated by reference in to the former. CA 2095158 when providing a summary of the invention it is seeking to protect clearly states, “Detailed description of said sand and of said resilient particles will be found in Canadian patent No 1182484.” Looking at the combined disclosure I do not find anything of extra relevance which is different to the individual disclosure of CA 2095158 when comparing it to the opposed claims. Thus the teaching of the combined disclosure is the same as the teaching of CA 2095158. I had found that claim 3 and claim 5 were shown to be not novel in light of CA2095158.

52.  The opponent has provided a further seven combinations of documents but these include documents that were published after the earliest priority date of the original parent application. Under the heading of “Priority Date” below I established that the opposed application is entitled to the second earliest priority date of the original parent application, 9 October 1997. None of the new documents listed as part of the seven combinations were published prior to 9 October 1997. Hence these combinations may not be considered for lack of novelty. The individual documents of those seven combinations which were published prior to 9 October 1997 have already been considered for novelty purposes.

Brochures/Trade Publications

53.  Several declarants for the opponent provided a large number of brochures and trade publications relating to synthetic surfaces. Having reviewed these I shall make reference to the publications based on the company of origin/tradename (and exhibit number as filed) and the relevance of their disclosures to the opposed claims. The following declarations with accompanying exhibits will not be considered for novelty purposes as they do not include any prior published brochures or have material which relates to installations set up after the earliest established priority date (9 October 1997) of the opposed invention.

1.   Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-6 which holds the declaration of Rodney Cecil Cross and Exhibit RCC-1

2.   Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-8 which holds the declaration of Robert Wayne Kirkwood and Exhibit RWK-1

3.   Philip Rossi (exhibit KC-11) and Exhibits PR-1 to 4 (part of the declaration of Kerry Chrysiliou, dated 18 April 2007)

4.   Daryl Rodney Sidman (exhibit KC-12) (part of the declaration of Kerry Chrysiliou, dated 18 April 2007)

Various brochures from SuperGrasse and Evergreen Action Grass (Kerry Chrysiliou, dated 18 April 2007 with exhibit KC-9 which holds the declaration of Peter Ronald Luffman and Exhibits PRL-1 to 4).

54.  These brochures show synthetic surfaces for a variety of sports and indicate that some of them can be sand-filled. A variety of pile heights are disclosed with the requirement that not more than 1 to 2 mm of the tips of the grass should be exposed when there is sand infill. The spacing between the rows of ribbons, the relationship between the spacing and pile height and the infill to approximately two-thirds of the pile height is not disclosed. Thus features (d), (e) (f) and (g) of the opposed invention are not disclosed. Thus claims 1, 2, 4 and claims appended thereto do not lack novelty in light of these brochures. For claim 3, I note that feature (h) has been disclosed as some of the sheets specify a sand infill but features (d) and (e) are not disclosed. Thus claim 3 and claims appended thereto do not lack novelty in light of these brochures. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 to be novel I find that claims 27 and 28 do not lack novelty in light of these brochures.

A Complete Guide to Sports Facilities – Balsam Pacific (henceforth the Guide) (Kerry Chrysiliou, dated 13 August 2007 with exhibit KC-24 which holds the declaration of Max William Laybutt and Exhibit MWL-20)

55.  The document indicates that it is a reference manual covering the sports and recreational surfaces available from Balsam Pacific and the applications of those surfaces. It includes several specifications of synthetic sports surfaces all of which have a spacing between rows of ribbons below and outside the opposed range of 15.88 to 57.15 mm. The maximum disclosed is 9.52 mm in appendix 9A which covers Equestrian Turf. Further, this section of the Guide discloses sand filled synthetic grass but there is no indication of the level to which sand is filled. Thus features (c), (d), (f) and (g) of claim 1 are not disclosed. Feature (e) is clearly complied with as is evident from the specification sheets of the Guide which show that most pile heights clearly exceed twice the distance between the rows of ribbons. Thus claims 1, 2, 4 and claims appended thereto do not lack novelty in light of the Guide. For claim 3, I note that feature (h) has clearly been disclosed as is evident from the drawings but feature (d) is not disclosed. Thus claim 3 and claims appended thereto do not lack novelty in light of the Guide. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 to be novel I find that claims 27 and 28 do not lack novelty in light of the Guide.

Various brochures from Evergreen, SuperGrasse and Balsam Pacific (Kerry Chrysiliou, dated 13 August 2007 with exhibit KC-24 which holds which holds the declaration of Max William Laybutt and Exhibits MWL-15, 17 to 19)

56.  These brochures have several specification sheets for synthetic grass surfaces all of which have a spacing between rows of ribbons below the opposed range of 15.88 to 57.15 mm (Feature (d)). The maximum disclosed is 9.52 mm and the minimum is 3.97 mm. Most of them disclose sand filled synthetic grass but there is no indication of the level to which sand is filled. Thus features (d), (f) and (g) of claim 1 are not disclosed. Feature (e) is clearly complied with as is evident from the specification sheets which show that most pile heights clearly exceed twice the distance between the rows of ribbons. Thus claims 1, 2, 4 and claims appended thereto do not lack novelty in light of these brochures. For claim 3, I note that feature (h) has been disclosed as most of the sheets specify a sand infill but feature (d) is not disclosed. Thus claim 3 and claims appended thereto do not lack novelty in light of these brochures. Omnibus claim 27 is directed to a synthetic surface and would thus have the essential features of claims 1 or 3 wherein the features are as described and illustrated in the specification and drawings. Omnibus claim 28 is directed to a synthetic surface for a sports playing field and would thus have the essential features of claims 2 or 4 wherein the features are as described and illustrated in the specification and drawings. As I have found claims 1 to 4 to be novel I find that claims 27 and 28 do not lack novelty in light of these brochures.

Various brochures from SuperGrasse and Balsam Pacific and sports publications (Kerry Chrysiliou, dated 8 August 2007 with exhibit KC-18 which holds which holds the declaration of John Gordon Curtis and Exhibits JGC-7 to 30)

  1. Issue 4:- The claims are not fairly based on the matter described in the specification because they omit the following essential features:-

    (A) The ribbons are long compared to the ribbons of the prior art.

    I had addressed this matter under Issue 3(A) and I had determined that the description had not placed any upper limit on the length of the ribbons in terms of the disclosure of the broadest form of the invention.

    (B) The rows of ribbons are widely spaced with no limitation on the spacing.

    I had addressed this matter under Issue 3(B) where I had found that the use of terms such as, wide, wider and widely spaced of themselves do not place any specific limitations on the width of spacing between the rows. Hence I find that the claims do not lack fair basis as a result of using such terms.

    (C) The synthetic surface in claims 1 and 2 omits the infill of particulate material.

    This matter had been addressed under Issue 1(B) where I had found that the claims clearly defined the conditions enabling them to receive a particulate infill. I do not find claims 1 and 2 lack fair basis as a result of not specifically requiring a particulate infill.

    (D) The synthetic surface claimed in claim 3 is unlimited as to the layer of particulate material.

    Claim 3 requires, “…the particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member.” Thus there is no requirement to give the precise height of infill. The declarants did not express any difficulty in understanding the ambit of the claim. I do not find that claim 3 lacks fair basis by failing to define the precise amount of infill.

    (E) The layer of particulate material must be “improved” (refer page 6, line 24).

    I note that this is not referred to at page 6, line 24. At page 8, line 12 the specification states, “The surface may be provided with an improved infill layer of particulate material.” This is quite clearly an option that can be exercised and not a mandatory requirement. The claims do not lack fair basis as a result of not defining this feature.

  2. Issue 5:- The claims are not clear and succinct.

    (A) Claim 11 is redundant since it is already contained within claim 10.

    Claim 10 defines, “A surface as claimed in any one of claims 1 to 6, wherein the backing member comprises one or more layers of fabric, at least one of the layers of fabric being needle punched to produce fuzzy fibres on its surface in order to increase the permeability of the fabric.

    Claim 11 defines, “A surface as claimed in claim 10, wherein at least one of the layers of permeable fabric is needle punched to produce fuzzy fibres on its surfaces.

    Claim 11 defines “…one of the layers of permeable fabric…”. Claim 11 is appended to claim 10 which is appended to claims 1 to 6. None of these claims define a layer of permeable fabric. Thus this feature lacks an antecedent in the claims to which it is appended. Thus claim 11 lacks clarity.

    (B) Claim 13 is redundant since it is already essentially contained within claim 12.

    Claim 12 defines, “A surface as claimed in any one of the preceding claims, wherein the ribbons are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined field requirement.

    Claim 13 defines, “A surface as defined in claim 12, wherein the ribbons are mixed with stiffer ribbons and softer ribbons to provide a specific surface texture for a predetermined sports playing field.

    Claim 12 defines any synthetic field surface whereas claim 13 is restricted to a sports playing field. I do not find claim 13 to be redundant in light of claim 12.

    (C) Claim 21 provides that the ribbons extend between 0.25 inch (0.635 cm) and 1.5 inches (3.81 cm) above the layer of particulate material. This is inconsistent with the requirements arising from the appendancies of claim 20, claim 19, and claims 2 and 4 to which claim 21 is appended.

    Claim 20 indicates that L (ribbon height) is between 3A and 6A, where A is the spacing between the ribbon rows. Claim 19 to which claim 20 is appended defines A as lying between 1.588 cm and 5.715 cm and L as lying between 3.175 cm and 12.7 cm. One third the height of L will give the expected ribbon height above the infill. This works out to 1.058 cm to 4.233 cm. Claim 21 defines a range of 0.635 cm to 3.81 cm. Thus claim 21 lacks clarity when appended (via claims 20 and 19) to claims 2 and 4.

    (D) Claim 24 requires an upper sub-layer of about 15 to 70 mesh particles. This is not supported by the specification.

    The applicant has indicated that at page 14, line 15 the description states, “The particles can range in size between four mesh and seventy mesh”; and at page 14, line 35 onwards, “…the layer of particulate material can be divided into sub-layer…the upper sub-layer 19 would comprise larger particles”. I find that claim 24 does not lack clarity in light of the disclosure made in the specification.

    (E) Claim 25 includes a “used tires” in the group for selection of resilient particulate material but used tires are not disclosed.

    The description at page 14, line 23 states, “The cryogenically ground crumb rubber could be replaced by other resilient materials, such as, cork, styrene, epdm rubber, neoprene, or other similar materials (my emphasis).” The skilled addressee would be fully aware that used tires are used to recover rubber. I do not find claim 25 as lacking in clarity.

    Claim 27 claims a “synthetic surface” described as illustrated in the drawings. The drawings are limited to a synthetic grass surface (page 9, line 22) for a sports field (page 11, lines 8 to 22).

    The description at page 9, lines 6 to 20 does not restrict the drawings to grass surfaces. As such the omnibus claim can include those essential features of the surface that it defines as they are described in the specification and illustrated in the drawings. The specification does not specifically exclude the illustration of the synthetic surface of claim 27 from the drawings. I note that the description at page 15 when referring to figure 3 talks of the “surface 1”. I do not find claim 27 as lacking in clarity.

    CONCLUSION

  3. 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.

  4. I found that:-

    1. Claim 3 and claim 5 lack novelty in light of CA2095158.

    2. Claim 3 and claim 5 lack novelty in light of CA2095158 and CA 1182484 when read as a single source of information.

    3. Claim 4 lacks novelty in light of exhibits PVR-1 to 5 (Desso Specifications).

    4. Claim 3 and claim 5 lack inventiveness in light of CA2095158 when combined with the cgk

    5. Claim 3 and claim 5 lack inventiveness in light of CA2095158 combined with the teachings of CA1182484 and the cgk.

    6. Claim 4 lacks inventiveness in light of exhibits PVR-1 to 5 (Desso Specifications) when combined with the cgk.

    7. Claims 1 to 28 were not entitled to the priority date of 10 March 1997 but were entitled to the priority date of 9 October 1997.

    8. Claim 11 lacks clarity when appended to claim 10 (and claims to which claim 10 is appended) as there is no antecedent for the term “one of the layers of permeable fabric”.

    9. Claim 21 lacks clarity when appended (via claims 20 and 19) to claims 2 and 4.

    The opponent was unsuccessful on the grounds of manner of manufacture, entitlement and fair basis.

  5. I consider that there is sufficient patentable subject matter within the opposed specification to enable the applicant to overcome the defects of claims 3, 4, 5, 11 and 21. The applicant is granted sixty days from the date of issue of this decision to file suitable amendments to overcome the defects identified in claims 3, 4, 5, 11 and 21.

    COSTS

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

  7. 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 successful on some grounds.

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

    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