Fletcher Industries Limited v Anthony W. Clarke & Associates Pty Ltd

[1983] APO 50

IN THE MATTER of the Patents Act 1952

‑ and ‑

IN THE MATTER of Patent Application No. 513719 in the name of FLETCHER INDUSTRIES LIMITED

‑ and ‑

IN THE MATTER of Opposition thereto by ANTHONY W. CLARKE & ASSOCIATES PTY. LTD.

INTERIM DECISION OF A SUPERVISING EXAMINER OF PATENTS
Background
     Patent Application No. 513719 entitled "BUILDING CONSTRUCTION" was advertised accepted on 18 December 1980.  Notice of Opposition to the grant of a patent was lodged by Fletcher Industries Limited on 16 March 1981.  Evidence‑in‑Answer was not served and a time and date for a hearing was set under the provisions of sub‑regulation 61(4).
     Hearing of the opposition took place in the Melbourne Sub‑Office on 2 August 1983.  Mr C. Sandercock, patent attorney of Sandercock, Smith & Beadle, represented the applicant and Mr D.C. Carter, patent attorney of Cowie, Thompson & Carter, represented the opponent.
     The Notice of Opposition lists a number of grounds, however, at the hearing, the opponent sought only to rely on the grounds of prior publication, obviousness and lack of inventive step, want of novelty and non‑compliance with section 40.  Locus of the opponent was not at issue.
The Specification as Accepted
     The application, accompanied by a complete specification, was lodged on 25 May 1977.  The specification opens with the following description of the invention:

"This invention relates to improvements in or relating to building construction.

The invention has particular application to the connection of the building components one to the other, such as for example the connection of purlins or portal frame members of a portal frame one to the other, in the construction of buildings and the like which require the construction of portal frames.  For example, the invention has particular application to the connection of metal portal frame members of a portal frame one to the other, when constructing such buildings, as glass houses, farm implement sheds, shearing sheds, barns and the like.  This is however by way of example only."

The specification defines "portal frame members" as:

"the various building members which are connected to form the portal frames."

Figure 1 of the drawings shows a construction in which the portal frame members are the roofing span (rafter) members and the uprights of a wall frame.  These various members are connected to form a "portal frame".
             It will be noted that the quoted passage refers to "purlins or portal frame members" however it is my understanding, from a reading of the specification as a whole and submissions made at the hearing, that a purlin would not be regarded as a portal frame member.  As the claims as they now stand refer to portal frames it appears that this reference to the connection of purlins is incorrect.
        The specification then refers to the prior art:

"Up until this time when such buildings have been constructed it has often been necessary to fabricate and construct in metal and welding works, portal frame members for a portal frame of substantial size and length and in some cases difficult shapes (such as for example dog legs) and to then transport these components substantial distances to the site of construction.

In such cases, it has also been necessary to utilise on site welding to connect such building components one to the other in the construction of portal frames.

This has of course, brought about numerous problems and it has also involved much time and expense."

In reference to the objectives of the invention, the specification indicates that the present invention goes some way towards overcoming the problems of the prior art and provides the public with a reasonable choice.  In relation to the various modes of implementing the invention given in the preferred embodiment it states:

"the connectors also serve to transfer bending moment which is applied at the connection or join of the portal frame members.  This then avoids the localisation of stress at joins between the actual portal frame members and the stress is distributed with the assistance of the connectors.  In addition, the attachment of connectors through the webs of portal frame members overcomes problems associated in the past, with attachment by way of flanges."

A consistory clause in the same terms as claim 1 is given at page 3.  The specification then describes the invention "by way of example only" with reference to a number of drawings.  The specification ends with 11 claims; claim 1 reads as follows:

"1.A connection between adjacent portal frame members of a portal frame, including a connector having a base and at least two out‑turned side members; the base and side members engaging two adjacent portal frame members of a portal frame; securing or location means being passed through the base of said connector and webs of said portal frame members."

Section 40
        Various terms used in claim 1 are defined in the body of the specification.  I have already referred to the definition of "portal frame members". 
        The connectors are defined as:

"Those metal sections which act to join and connect portal frame members one to the other."

The "web" of portal frame members is defined as:

"that area of a metal strut or portal frame member, intermediate and between the sides or edges of each metal strut or portal frame member.  Where the strut or portal frame member has upturned sides or edges it is that substantially intermediate, or flat area, between the upturned sides or edges".

Like the specification's reference to "purlins", I find the reference to "metal strut" in the last definition to be confusing.  It is my understanding, from a reading of the specification, that a "strut" would not be regarded as a portal frame member.  No other reference is made to this term throughout the specification.
        A major shortcoming of claim 1 is that it contains wording that is of such an all embracing scope that it defines a monopoly which goes far beyond the invention actually described in the specification and is consequently not fairly based.  One example of this is the use of the adjective "adjacent" in the claim.
        The claim indicates that the connection is "between adjacent portal frame members".  The Shorter Oxford English Dictionary provides the following definition of "adjacent":

"Lying near to;  adjoining;  bordering (Not necessarily touching)."

Mr Carter submitted that the claim appears to include the connection of parallel portal frame members back‑to‑back as well as the connection of portal frame members end‑to‑end in the same plane as shown in figure 1 of the drawings.  There is no definition of the word in the description;  and where the description does use the term it uses it to describe end‑to‑end as well as back‑to‑back configurations.  Indeed the wording is such that the connection is not even limited to one in which the portal frame members are in close proximity to one another.
        Further, the claim fails to adequately define the nature of the engagement between the portal frame members.  The relevant portion of the claims reads:

"the base and side members engaging two adjacent portal frame members".

I understand this wording to include modes of engagement which go far beyond the disclosed invention.  For example, it includes a connection in which the respective webs of the portal frame members are not necessarily in contact with the base of the connector.  It is my understanding, from a reading of the specification, that the connection of the invention is such that the base of the connector is in contact with the web portion of each portal frame member involved in the connection.
        A further point relates to the material of which the connector is  made.  The specification indicates that:  "The portal frame members and the connectors are constructed of a suitable metal material".  I read this as a statement of an essential feature of the invention.  The definition of "web" already quoted does refer to "metal strut or portal frame member", however, it is not clear that this definition requires the portal frame member to be made of metal.  I believe that Mr Sandercock's submission in relation to clarifying amendments confirms my conclusion that the connector and portal frame member must be made of metal.
        It appears to me that the only invention disclosed is that of the examples, and that claim 1, on analysis, claims more than this invention.  Claims 2 to 10, being appended to claim 1, also suffer this defect.
Prior Publication and Want of Novelty
        The evidence in relation to the grounds of opposition under this heading comprise declarations by Messrs L.C. O'Neil, G. McKennie, G.W. Clarke, D. Rath and M. Baran.
        The declarations by Mr Clark, Mr Baran and Mr O'Neil relate to a "work shed" at Newton Street, Auburn N.S.W.  Mr O'Neil declares:

"1.I am Managing Director of Laurex Refuse Collection and Disposal, Newton Street, AUBURN.  N.S.W.

2.I am able to make the following statements from my own personal knowledge and my being able to freely examine the records of my company.

3.My company has a "work shed" at Newton Street, Auburn, which "work shed" is a steel frame building of 40 ft. span and 45 ft. length.  The "work shed" was supplied by Armco (Australia) Pty. Ltd. in December, 1974.

4.The structure of the "work shed" has remained unchanged since the date of its erection in 1974 and, in particular, the portal frames constituting the framework of the "work shed" have remained unaltered since they were first erected."

The priority date of the present claims is 25 May 1977, the date of lodgement of the application and complete specification.
        Mr Baran declares that he is Chief Engineer of the Building Products Division of Armco (Australia) Proprietary Limited.  He indicates that his company contracted with S. & F. Laurex Ltd. of Newton Street, Auburn, to erect a portal frame building structure.  Exhibited to his declaration is a set of drawings (MB 1) which, according to Mr Baran, relate to work carried out for Laurex, the work being executed in accordance with these drawings.  He states, in relation to the drawings:

"As shown in the drawings, each portal frame included a pair of column members of C‑shaped cross‑section supporting a pair of C‑sectioned rafter members.  The connection between each rafter member and respective supporting column comprised a connector plate having a base and oppositely extending flanges along opposed side edges of the base.  The connector plate was attached to the upper end of the respective column and the end of the respective rafter member by bolts passing through the base of the connector and webs of the column and rafter members.  The rafter members were interconnected midspan by a ridge connector which also had a base portion with oppositely extending flanges along opposed edges thereof.  The ridge connector was bolted to the adjacent ends of the rafter members, by bolts passing through the base of the ridge connector and webs of the rafter members, so that the rafter members extended at the desired ridge angle."

The associated drawings of the Laurex shed do illustrate the use of a "Z" shaped connector to which the portal frame members are attached, wherein the web of the portal frame member is in contact with base of the connector with bolts passing through the base and web.  However, I believe that the drawings fail to clearly show that the side members of the connector engage the two portal frame members.
        I consider that the photographs of the actual "Laurex" shed attached to the Clarke declaration confirm this conclusion.  Exhibits 2, 3 and 4 are photographs of the ridge connector of the structure.  Photograph 4, clearly shows that the side members of the connector do not engage the two portal frame members.
        The typical knee connection in the shed is shown in photographs 5 to 7.  Again, a "Z" shaped connector is used where the base of the connector is in contact with the webs of the column and rafter member.  Bolts pass through both the webs of each of the portal frame members and the base of the connector.  I believe that it is clear from photograph 5 that the side members of the connector do not engage each portal frame member.
        Mr Clarke asserts in his declaration that he cannot see any distinction between the connectors he inspected at Laurex and which are the subject of the photographs.  That may be so, however, the present claims relate to a connection and not a connector, thus Mr Clarke's comments on this point are not relevant.
        I cannot say, with the degree of certainty required at this stage of proceeding, that the "Laurex Shed" renders present claim 1 not novel.
        The declaration of Mr McKennie relates to a shed frame incorporating a frame structure designed by his company at its display yard at 1825 Ferntree Gully Road, Ferntree Gully, Victoria.  This shed frame, which according to Mr McKennie was on display for sale from September 1976, no longer exists as it was replaced by another structure in 1979.  Attached to Mr McKennie's declaration is an exhibit comprising three drawings prepared by a firm of Consulting Engineers.  There is no evidence establishing that these drawings were published before the priority date of the present claims.  They appear to be presented in corroboration of the statements made by Mr McKennie about the structure erected in 1976.
        Mr McKennie declares:

"Both the structure built by my company in September 1976, referred to above, and the replacement structure built in 1979 incorporated a plurality of portal frames each having a pair of spaced columns interconnected to and supporting a ridged rafter.  Both columns and rafter comprised lengths of C‑sectioned cold‑formed steel.

The C‑shaped portal frame rafter members were connected together at mid‑span by a ridge connection consisting of two, relatively short, C‑sectioned members one end of each of which was cut at an angle so that the two members were welded together to form a connection sleeve of the correct ridge angle.  The C‑sectioned members were of dimensions so as to telescopically receive end portions of the C‑sectioned rafter members.  Bolts were inserted through holes drilled in the webs of the respective C‑sectioned members to secure the ridge connection to the rafter members.

The outer ends of the rafter members were connected to the respective columns using a similar telescopic‑type knee connection each of which comprised a C‑sectioned sleeve welded to the upper end of the respective column and extending from the column at the desired ridge angle.  The C‑sectioned sleeve as of dimensions to telescopically receive the outer end portion of the respective rafter member and bolts passed through the webs of the respective members were used to secure those members together."

and

"My company's display yard referred to above is open during normal business hours to members of the public, and has been so open at least since September 1976.  Between September 1976 and May 1977 the portal frame building structure we had on display and referred to above was inspected by many potential customers and other members of the public.  The constructional features of the portal frames, and including the telescopic interfit of the rafter members with the connectors, were clearly apparent."

He further deposes that in late 1976 his company commissioned a firm of Consulting Engineers to produce computations and drawings of the structures designed by his company.  He states that an engineer of that firm attended his company's display yard and inspected the shed structure there on public display;  the displayed shed structure was the basis for the computation and drawings subsequently produced.  In relation to these drawings he states:

"Now produced and shown to me marked GMcK 1 are copies of several of the drawings prepared by Donald W.H. Aitken & Associates Pty. Ltd. for my company and which accurately depict several of the shed constructions designed and offered for sale by my company.  The structure on display at my company's display yard from September 1976 to 1979 utilized portal frames having the structural features as shown in drawing No. 1214/1/1 dated 16 February, 1977.  The ridge connection and knee connections were as I have previously described therein."

As previously indicated, no evidence‑in‑answer was lodged by the applicant.  Mr Sandercock attempted to show that there are inconsistencies between Mr McKennie's statements concerning the shed alleged to have been on display before the priority date and what is shown in the drawings exhibited to his declaration.  Mr Sandercock's submissions on this point included material of a technical nature which should have been introduced in the form of evidence if the applicant wished to rely on it.  A further point to note is that although the shed is no longer in existence, Mr McKennie was still available for cross‑examination if the applicant doubted the assertions made in his declaration.  I am therefore faced with uncontested evidence of alleged prior use.

According to Mr McKennie, the shed in question was built in September 1976, that is, before the priority date.  He deposes that the C‑shaped portal frame rafter members were connected together at mid‑span by a ridge connection consisting of two relatively short, C‑sectioned members, one end of each of which was cut at an angle so that the two members were welded together to form a connection sleeve of the correct ridge angle.  He further deposes that the C‑sectioned members were of dimensions so as to "telescopically receive" end portions of the C‑sectioned rafter members.  Mr Sandercock, in his submissions at the hearing, appeared to understand "telescopically receive" as involving a sliding engagement between the rafter members and the connector.  This is also my understanding.
        Mr McKennie also refers to a knee connection in which a C‑sectioned sleeve was welded to the upper end of respective column members and extending from the column at the desired ridge angle.  According to him, the C‑sectioned sleeve was of dimensions to telescopically receive the outer end portion of the respective rafter members.  However, I do not regard this knee connection as falling within the scope of the present claims.  The present claims do not relate to a connection wherein one of the portal frame connectors is fixed to the end of the connector at a mitred joint.  Mr Sandercock submitted that, compared to the applicant's invention, the knee joint of McKennie's declaration is less flexible in that lateral adjustment of the column member in relation to the connector is not available.  I am satisfied that the differences between the claimed invention and the knee connection referred to in the McKennie declaration are sufficient to make it unneccessary to consider it further on the question of alleged prior use and want of novelty.
        Drawing No. 1214/1/1 dated 16 February 1977 is the only drawing referred to by Mr McKennie.  He states in paragraph 6:

".... The structure on display at my company's display yard from September 1976 to 1979 utilised portal frames having the structural features as shown in drawing No. 1214/1/1 dated 16 February, 1977.  The ridge connection and knee connections were as I have previously described herein."

Drawing No. 1214/1/1 therefore appears to be the only drawing of relevance.  Further Mr McKennie does not say that this drawing exactly represents the structure that was on display.  However, I consider that the drawing provides some corroboration of Mr McKennie's allegations ‑ the drawing was made at a time before the priority date by the consulting engineers commissioned in late 1976 and, according to McKennie, based on the displayed structure.
        Mr Sandercock submitted that the drawings contradict the McKennie allegations, however, I do not believe that any small apparent inconsistencies in the drawing No. 1214/1/1 are sufficient to cast doubt on Mr McKennie's recollection of the characteristcs of the shed on display.  Indeed, it appears to me that this drawing does show a telescopic engagement between the ridge connector and the rafter members as asserted by Mr McKennie.  The standard of proof required in these matters is the civil standard (Dunlop Holdings Ltd. 1979 RPC 523).  Based on the uncontested evidence of the opponent, I consider that, on the balance of probabilities, a shed having the telescopic ridge connections referred to in the McKennie declaration was on public display before the priority date of the present claims.  Because of the all embracing nature of present claim 1, I consider that the shed's telescopic ridge connection falls within the scope of the claim and therefore I find that prior use has been established.

        Mr Sandercock submitted that there are features of the present invention which lend novelty to the present invention;  these are:

1.The present invention use connectors wherein the side portion does not have a re‑entrant side flange.  This enables the portal frame members to be dropped into place; and the problems with tolerance differences are diminished.  This contrasts with the telescopic connection of the McKennie shed which uses a C‑shaped connector and thus requires the ridge members to be inserted at the ends of the connector thus introducing less flexibility.

2.The present invention requires substantial engagement of the sides of the connector with the sides of the portal frame members thus imparting strength to the connection.

The claim, as it now stands, does not clearly define these as being features of the invention.  However, I agree with Mr Sandercock that if these features were to be introduced into the claim, the differences between the invention as so claimed and the telescopic ridge connection of Mr McKennie are sufficient to confer novelty.  In particular, the absence of a re‑entrant flange on the side portion of applicant's connector allows construction of the portal frame to be carried out by dropping the portal frame members into the connector as well as making any subsequent re‑alignment easier than would be the case with a telescopic connection. 
        The final declaration of the evidence‑in‑support is that of Mr Rath.  Mr Rath declares that he is secretary of Injectaform Pty. Limited which owns Registered Designs Nos. 67555 and 68055 relating to angle joints for a builidng system.  Mr Sandercock did not contest that the designs were published before the present priority date.  Exhibit DR 2 attached to the Rath declaration comprises samples of the angle joints connecting rectangular timber sections.  The angle joints are made of plastic.  Mr Rath asserts that metal channels or other metal sections may be used instead of timber sections.
        There was some dispute at the hearing as to whether the evidence establishes that there were sales of these angle joints prior to the present priority date.  However, I do not have to resolve this point as I consider that the angle joints referred to in the Rath declaration do not in any case render the present claims not novel.  One connector shown in the exhibits connects timber sections which are angled 90` whilst the other connector connects timber sections angled at 120`.  The respective ends of the connectors are sockets having a rectangular cross‑section.
        Present claim 1 requires the connector of the connection to have "a base ...".  The Rath connector has two faces connected by respective side members and as such would not be described as having a base and upturned side members.  It seems to me that the rectangular cross‑section of the angle joints are a necessity created by the material of which the angle joints are made, that is, plastic.  If one were to remove one of the "faces" of the Rath connectors then one would have a substantially "U" shaped connector.  It is reasonable to suggest that the strength of a joint using such a plastic connector would be relatively weak.  I consider that the Rath connection neither prior publishes nor renders not novel, the claimed invention.
Obviousness and lack of inventive step
        There is no evidence before me relating to common general knowledge before the priority date.  Mr Carter did assert that the prior use established by the applicant also establishes common general knowledge at the priority date, however, I consider that the evidence does not go any way toward establishing obviousness.  Consequently I find that the opponent has been unsuccessful in establishing this ground of opposition.
Decision
        I have found that the opponent has been successful in establishing that the specification does not comply with section 40 and that there has been prior publication by prior user.  As the applicant can overcome my adverse finding, I allow the applicant 60 days from the date of this interim decision within which to lodge a statement of amendments under section 77 to amend the specification to my satisfaction. 
        Finally I turn to the question of costs.  Mr Sandercock submitted that as the opponent had previously not agreed to certain amendments that the applicant had indicated it was willing to make, costs should be awarded in favour of the applicant.  However as I have found that the opponent has established two major grounds of opposition, which grounds would not have been overcome by the floated amendments, I award costs against the applicant.

P.A. KILBORN
Supervising Examiner of Patents