George Wills & Co. Limited v Metsaliiton Teollisuus Oy

[1986] APO 42

In the Matter of the Patents Act 1952

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In the Matter of Application No. 545561 for Letters Patent by GEORGE WILLS & CO. LIMITED

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In the Matter of Opposition thereto under Section 59 by METSALIITON TEOLLISUUS OY.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         This matter concerns patent application 545561 which was lodged by WILLS HARTMAN PTY. LIMITED and which is now pursuant to the provisions of sub‑section 34(4), proceeding in the name of GEORGE WILLS & CO. LIMITED.  The application is entitled "Timber Building Tile or Panel" and was lodged on 1 April, 1981 accompanied by a provisional specification.  The complete specification was lodged on 24 February, 1982, and in due course, following examination, acceptance was advertised in the Official Journal of 18 July, 1985.  Notice of opposition was lodged on 17 October, 1985.
         Subsequently, the applicant made a request under Section 77, and allowance thereof was advertised on 25 September, 1986.
         The section 59 matter was set down for hearing in the October Sydney Sessions of 1986.  Mr. Peter Heathcote, Patent Attorney of Shelston Waters appeared on behalf of the applicant.  The opponent indicated through its Attorneys, F.B. Rice & Co. of Sydney that it did not wish to be heard.

Grounds of Opposition
         The Notice of Opposition included most of the available grounds, but the only evidence on the file concerns prior publication by use.
The Specification
         The invention relates to timber flooring tiles.  The specification states that conventional tiles comprise square or rectangular pieces of timber which are machined flat on their top and bottom surfaces and are provided with tongues and grooves on their edge faces so that in use the edge faces permit interlocking with adjacent tiles to form a floor: the tongues are provided on two opposite edges of the tile and grooves in the remaining two opposite edges.  For aesthetic reasons, the tile is constructed so that the timber grain extends parallel to one edge, so that either the tongues or the projecting ribs defining the grooves have the grain of their timber running lengthwise thereof.  Although the specification does not say so, it would appear that such tiles are not made of a unitary construction but rather made of multi‑layered or laminate construction.
         The specification then states that prior art tiles suffer from the disadvantage that the tongues and ribs are susceptible to splitting off from the main body of the tile.
         The solution provided by the present invention consists in specifying the direction of the grain in each timber lamina of the tile such that no tongue or projecting rib has the grain extending lengthwise thereof.  In this way splitting off of the tongues or ribs defining the grooves is avoided.  A preferred embodiment is described and the specification ends with three claims.  These read as follows:

"1.A rectangular timber flooring tile of laminate construction comprising a pair of outer timber laminae disposed one with respect to the other with their grain parallel, and an inner timber lamina bonded therebetween, said inner lamina being disposed with its grain normal to the grain of each of the outer laminae, said tile having a first tongue extending along a first edge, a second tongue extending along a second edge opposite to said first edge, a first groove extending along a third edge and a second groove extending along a fourth edge opposite to said third edge, each of said grooves being dimensioned to accept a tongue of an identical tile; said tongues projecting in the direction of the grain of said inner lamina.

2.A laminated timber floor tile as defined in claim 1 wherein a plurality of timber strips of the same thickness are used to form at least one of said laminae.

3.A laminated timber block substantially as described herein with reference to the accompanying drawings."

Section 40
         No evidence was put before me on this ground but it seems to me that the claims fail to properly define the invention that is described.
         Thus claim 1 does not specify from which one (or ones) of the three laminae recited the tongues and grooves are formed.  Consequently, the claim includes constructions in which the tongues are formed from the whole of the thickness of the inner lamina and portion of the thickness of one or both of the outer laminae, or alternatively, the tongues are formed from part of the thickness of one of the outer laminae.  As a result, portion (at least) of each tongue would have its grain running in a direction parallel to the tile edge instead of being at right angles to the edge of the tile from which it projects in order to avoid splitting (see, e.g. the description bridging pages 3 and 4 of the specification); consequently, the claim is not fairly based.  Similarly, the claims include constructions wherein the ribs forming the grooves would be such as not to avoid the prior art problems of splitting off.
Evidence
         The evidence in support comprises two declarations with accompanying exhibits of timber tiles.  Exhibit PK1 to the declaration by Pentti Konsti is "a sample portion of a parquetry tile substantially of the form of Kotka brand parquetry tiles which were installed in the Boulevard Hotel in 1973 in Sydney".  Exhibit CJB1 to the declaration of Clarence J. Barnes is "a sample tile from the remnants of those used in connection with the laying of a parquet tile dance floor at the Newcastle Workers Club in 1972.  Both tiles were manufactured by Enso Gutzeitin Laatikkotehdas Oy of Kotka, Finland.
         Exhibit PK1 is a rectangular section of a tile having tongues on two of its adjacent edge faces and a groove along the third edge face of the tile.  The remaining edge of the tile displays a cross‑section of the tile.  Exhibit CJB1 is a square tile having tongues on opposed edge faces and grooves on opposed edge faces.  Both tiles are of the same structure; an outer laminate layer consisting entirely of a plurality of timber strips and an underlying layer of plywood bonded thereto.  The plywood is of a 7 ply structure with the grains of adjacent layers arranged at right angles.  The ribs and grooves of both tiles would appear to have been formed by appropriate machining of the plywood layers.
         The structure of the exhibit PK1 is thus; a tile section comprising an outer laminae of thin timber strips with an underlying laminae of plywood construction directly bonded thereto.  The tile after the forming of the tongues and grooves comprises an outer laminae consisting of a plurality of thin timber strips with a plywood layer directly bonded thereto, another outer laminae formed of 2 ply structure, and an inner laminae structure of 4 ply structure directly bonded therebetween.  The inner laminae forms tongues along two of the adjacent edge faces of the tile while a groove is formed by ribs extending along edge faces of the respective outer laminae, the groove being formed on the shorter side of the rectangular tile section.  The grain directions of each layer are transverse to adjacent layers excepting in the inner laminae in which two adjacent layers have their grain directions parallel.  The remaining edge face of the tile section is truncated displaying a cross‑section of the tile.
         The structure of exhibit CJB1 is of somewhat similar construction excepting that it comprises two tongues and grooves on opposite sides of the tile with the outermost layers of the inner lamina forming part of the ribs extending along the edge faces of the tile.  Adjacent laminae in the tile have their grain directions transverse to each other.
Prior Publication
         Mr. Heathcote conceded that the tiles of the exhibits were published by use before the priority date of the claims, but he submitted that they do not disclose the features of the claimed invention.  In support of this, he referred to the applicant's evidence in answer as provided by the declaration of David Robin Hoggs, a technical assistant with the applicant's attorneys.  Mr. Hogg, who holds a degree of Bachelor of Engineering in Mechanical Engineering with Honours, referred to the differences between the claimed invention and the exhibits in the following terms:

"5.The exhibit marked CJB1 does not constitute a prior disclosure of the claimed invention of this application because the claims define a floor tile having an inner lamina with tongues which project in the direction that lamina's grain, and a pair of outer laminae, the grain of which extends in a direction normal to the grain direction of the inner lamina.  The exhibit marked CJB1 however is a tile which has tongues which project in the direction of the grain of an inner lamina but which includes outer laminae, the grain of which extends parallel to, and not normal to, the direction of grain of the inner lamina.

7.Exhibit labelled PK1 appears to be only a portion of a tile and, absent the rest of it (sic), cannot anticipate a tile as claimed in this application.

8.The Exhibit marked PK1 also does not constitute a prior disclosure of the claimed invention because the claims define "a tile having a first tongue extending along a first edge, a second tongue extending along a second edge opposite to the first edge, a first groove extending along a third edge and a second groove extending along a fourth edge opposite to said third edge", whereas the exhibit PK1 shows portions only of one pair of opposed edges, one of which portions has a groove formed in it and the other a tongue projecting from it."

On a close examination of both exhibits, it is very clear that they fail to disclose the particular combination of features that defines the claimed invention.  In particular the arrangement of the laminae such that each layer has a grain direction at right angles to an adjacent layer combined with the specified grain direction of the tongues and ribs defining the grooves is not disclosed.  And as aptly pointed out in Mr. Hogg's declaration, exhibit CJB1 sould suffer from the same defect as the prior art.  This is reproduced as follows:

"6.It is noted that the exhibit marked CJB1 which was served on the applicant suffers from failure by splitting of one of its outer laminae adjacent a groove, which represents one of the very shortcomings of the prior art referred to in the specification, the over‑

coming of which is an object of the invention disclosed in the specification."

I note that exhibit PK1 would also suffer from a similar defect.  In addition exhibit PK1 is not a publication as it does not disclose the particular arrangement of grooves and tongues.
         Mr. Heathcote also submitted that the construction of the exhibits was different to the construction of the tile of the claimed invention as the exhibits were constructed of layers of plywood laminae and the tiles of the present invention were constructed of layers of timber laminae.  To my understanding, a plywood construction consists of sheets of wood bonded together with the grains of adjacent layers arranged at right angles or at least at a wide angle and being made up wholly of uniformly thin veneer sheets or equal numbers of veneer sheets on either side of a thicker central core (as defined in Webster's Third International Dictionary).  The construction of the exhibits is such that a number of ply or thin veneer layers comprise both the tongues and one of the ribs, the other rib being formed of a layer of ply and a layer of thin timber strips.  Mr. Heathcote submitted that as plywood exhibits different layers having grains extending in different directions then there is no disclosure of a single layer or lamina having a single grain direction.  Although I agree in general with Mr. Heathcote's observations I note that in the claimed invention the inner lamina is not necessarily directly bonded to the outer laminae.  As a result there would not be precluded from the tile as claimed additional layers, for example laminae constructed of plywood, from being bonded between the inner lamina and the outer laminae.  However, as noted before, neither exhibit discloses the appropriate grain directions and hence cannot anticipate the claimed invention.
Summary
         To summarize, I have found that the ground of prior publication fails.  However I have found that the specification does not comply with the requirements of Section 40 for reasons not raised by the opponent; and although the opponent had specified this ground in the notice of opposition there was nothing in evidence in support thereof.  Further, the opponent was not represented at the hearing, consequently I make no award of costs.
         Clearly there is patentable subject matter disclosed in the application and I allow the applicant sixty days from the date of this decision in which to propose amendments with a view to claiming that matter.

(J.L. ROVETA)