Gerber Scientific Products Inc. v North Broken Hill Limited and Discount Signwriting Supplies Pty Limited

[1989] APO 37

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Petty Patent No. 570183 in the Name of GERBER SCIENTIFIC PRODUCTS INC.

‑ and ‑

In the Matter of Action under Section 68B(3) brought by NORTH BROKEN HILL LIMITED and DISCOUNT SIGNWRITING SUPPLIES PTY. LIMITED.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
         Petty Patent 570183 was sealed on 28 April 1988.  It derives from an application made pursuant to sub‑section 51(1) in respect of an invention disclosed in patent application 551075.  Consequently, it has a priority date of 5 August 1983.  In accordance with sub‑section 68B(3), North Broken Hill Limited and Discount Signwriting Supplies Pty Limited (separately) informed the Commissioner of facts which they asserted established grounds of invalidity relating to novelty, obviousness, and section 40.
         The matter was heard in Sydney on 11 October 1989.  Mr G.M. Turner, patent attorney of Spruson & Ferguson, appeared for the patentee, and Mr A.J.L. Bannon of Counsel appeared for both informants, advised by Mr D. Kennedy, solicitor, and Mr G. Munt, patent attorney of Griffith Hack & Co.
         I note that patent application 551075 is presently the subject of opposition under section 59, and petty patent 570183 is

presently the subject of an infringement action before the Federal Court, between the patentee, its exclusive licensee, Letraset Australia Pty Limited, and Discount Signwriting Supplies Pty Limited.
The Petty Patent Specification
         The specification is entitled "A Sign Making Web".  The introduction states that the invention relates to a web for web handling machines for sign makers, wherein the web is fed longitudinally of itself by a pair of sprockets cooperating with holes in the two longitudinal side edge portions of the web.  The description characterises the machines and sets out the nature of a feed alignment problem in the following way:

"In such machines it is usually essential to error free operation that the web be properly loaded in the machine so that the sprocket pins engage the correct web holes.  This means that two corresponding pins of the two sprockets located in a common plane passing through the sprocket drive axis should engage two corresponding holes of the web located on a common line extending perpendicular to the edges of the web.  Often, particularly when the web is very wide, it is difficult to determine by eye which sprocket pins correspond with one another and which holes on the opposite sides of the web correspond with one another, and as a result web loading errors can easily occur.  Moreover, sometimes when a web loading error is made the web thereafter nevertheless appears to feed in an apparently normal manner so that errors introduced by the web loading may be ascribed to other causes and not quickly traced back to the faulty loading."

There is a statement of the invention in terms corresponding to the claim.  The latter reads:

"A sign making web for use with a machine wherein the web is fed longitudinally of itself by a pair of feed sprockets co‑operating with holes in the two longitudinal side edge portions of the web, said web comprising an elongated sheet‑like member having parallel side edges and being of a laminated structure consisting of an adhesive‑backed plastic sheet and a sheet of release material covering the adhesive, said web having a first row of uniformly spaced first holes located on a first line spaced laterally inwardly from and extending parallel to one side edge of the web, a second row of uniformly spaced second holes located on a second line spaced laterally inwardly from and extending parallel to the other side edge of the web, said first holes and said second holes being uniformly spaced from one another with the spacing of said first holes being the same as the spacing of said second holes and with each of said first holes having a corresponding one of said second holes located generally on a common line extending perpendicular to said first and second lines, a third row of third holes on said first line and a fourth row of fourth holes on said second line, which third holes are spaced from one another along the length of the web, and which fourth holes are also spaced from one another along the length of the web, by a distance

S = Nd where S is the spacing between said fourth holes, d is the spacing between said first holes and is also the spacing between said second holes, and N is an integer other than one, each of said third holes having a corresponding one of said fourth holes located generally on a common line perpendicular to said first and second lines so that each third hole and its corresponding fourth hole visually distinguish an associated pair of first and second holes located generally on a common line perpendicular to said first and second lines."

The description of the preferred embodiment is made with respect to 10 Figures of drawings, which illustrate ‑ in addition to the web ‑ the sign making machinery including the web feed mechanism.  The essence of the invention is to provide a web which, in use, is such that alignment problems in feeding to the signmaking machine can be avoided.  This is achieved by having extra holes intermediate the standard sprocket feed holes in the web, located in such a way to act as visual markers, as defined in the claim.  Additionally, the description points out that the web could be used with a machine having extra pins on the feed sprockets located to engage the extra holes in the web.  With this latter arrangement, it would be physically impossible to feed the web to the machine in misalignment, and this is confirmed in the evidence of Michael John Hall, for the patentee.
         There is one other matter of interest brought out in the description which is worth mentioning.  This concerns the material of which the web is made:

"In a normal sign making mode of operation, the tool head 24 is equipped with a knife‑type cutter 26 and the web 12 is an elongated piece of sign making stock consisting of an upper layer of adhesive‑backed plastic material, such as vinyl, supported by a bottom layer of release material on which the upper plastic layer is supported with its adhesive‑backed face in engagement with the release material.  For example, in this case the basic material from which the web 12 is made may be a laminated sheet material made and sold under the name "SCOTCHCAL" by 3M Corporation.  This "SCOTCHCAL" has an upper vinyl layer, usually three to five mils thick, made in various different colors, with a pressure‑  sensitive adhesive on its lower surface, such vinyl upper layer being in turn carried by a lower release layer in the form of a ninety‑pound paper coated with silicone.  With the web 12 made of such sign making stock and with the tool head 24 equipped with a knife‑type cutting tool 26 the web 12 and the tool 26 may be moved relative to one another simultaneously in the X‑ and Y‑coordinate directions, through the operation of the machine 10, to cut alphanumeric characters or other indicia from the upper vinyl layer of the stock which characters or indicia can subsequently be transferred, ..... to another carrier to form a finished sign."

I have referred further to the above matter elsewhere in this decision.
The Evidence of the Informants
         There are 26 patent specifications in evidence.  These are variously concerned with arrangements for feeding continuous form material into machinery such as printers.  Most of the material disclosed is not laminated.  Feeding arrangements disclosed include rows of punched sprocket holes along one or both edges of the material.  There are disclosures in some documents characterized by having repeating holes of different sizes or shapes which could, or might, act as visual markers for alignment purposes.  None of these documents has been shown to form part of the common general knowledge in the relevant art, and in my view, none can match for relevance the disclosures constituted by the exhibits to the affidavits of several of the witnesses.  Consequently, I do not find it necessary to present an analysis of these patent specifications.
         Below, I have summarised the material from the most relevant of the affidavits on file:
James Miller
         Mr Miller declares that he is the General Manager of Graphic Controls Corporation Pty Ltd, a subsidiary of Graphic Controls Corporation of Buffalo, NY, USA; his company supplies a vast range of continuous printed form products to customers in Australia for use on plotters and recorders, some of which are sprocket driven.  He has been closely involved in the production and sale of computer related graphic plotting and recorder suppliers for 28 years.  Mr Miller annexes to his declaration a copy of a length of bond paper having regularly spaced sprocket feed holes along each border.  Every tenth hole in each row is elongated, transversely of the length of paper, compared to the remaining holes, which are circular.  Additionally, a marking in the form of a star appears beside each of the elongated holes.  Mr Miller declares that this paper has been sold in Australia since 1980, but in "relatively limited" amounts.  Finally, he states that in his experience,

"the use of additional holes, or holes of different shapes in a margin for the purposes of visually aligning paper to be fed into a machine, has been common in the printing industry in Australia and has been so since a date well prior to 5 August 1983."

Gerald James O'Brien
         Mr O'Brien states that he is the Electronic Data Processing manager for Costain Australia Limited and the Costain Group of Companies in Australia.  His responsibilities include the use and operation of computer operated drafting equipment.  The materials used on the equipment comprised continuous form bond paper, translucent paper and velum, mylar film, and various types of "poly film" commonly used in graphic printing and drafting specifically for multiple copy reproduction purposes.  Annexed to his declaration are two exhibits of copies of sheet material having a row of equally spaced, equal sized holes along each border, and with additional holes outside the border appearing at every tenth hole in the border rows.  Mr O'Brien declares that the use of the additional holes punched in the plotting media act as a visual aid for alignment of the continuous form sheet material.
Keith Charles Bell
         Mr Bell deposes that he is the General Manager of Miller Business Forms Pty Ltd, and that his company has produced and sold in Australia tickets, exemplified by exhibit KCB‑A to his declaration, since 1980, in quantities of 5,000,000 per year.  Exhibit KCB‑A shows a fanfold continuous form feedstock punched along one border at regularly spaced intervals with sprocket holes which engage the pin drive mechanism of the ticket issuing machine.  Perforations run across the full face of the feedstock at longitudinally spaced regular intervals to allow each of the printed tickets in the feedstock to be separated when issued, and also allows the continuous form feedstock to be fan folded for storage purposes.  There is an additional hole punched along the line of the feedstock sprocket drive holes on each ticket.  Mr Bell declares that this additional hole is used for alignment purposes and engages a special sensing and printing mechanism in the ticket issuing machine.  Mr Bell's final statement is that, in his experience,

"... the use of an additional hole or holes and other variations of the use of additional or different sized or shaped holes along the margin of printing material for registration or alignment purposes has been a common method of use in the printing industry in Australia for many years, certainly well prior to 5 August, 1983."

David Ross McMurray
         Mr McMurray deposes that he is the Managing Director of Unistat Pty Limited, and that for a period of 40 years his Company has produced a wide variety of continuous form printed stationery for customer use within Australia with various printing equipment and systems.  Mr McMurray exhibits a copy of ticket feedstock material with similar construction to that exhibited by Mr Bell.  His declaration also ends with a statement similar to that made by Mr Bell at the end of his declaration (see above).
Stephen John Rumble
         Mr Rumble declares that he is the General Manager of Rediform Business Products (a division of Moore Business Systems Australia Limited), and that prior to January 1988 he was employed in Product Development : he has 23 years experience in the business of computer stationery printing and production.  He goes on to state:

"Over the years I have observed numerous configurations of hole arrangements varying from standard sized uniformly spaced marginal hole punching or registration, to the use of larger holes, elongated holes, additional holes of various shapes, sizes and placement which have been used for the purposes of identifying proper alignment of the material and tolerance in feeding onto the printing or cutting equipment."

Mr Rumble exhibits copies of two continuous form fanfold stationery material to his declaration.  Each has a row of regularly spaced holes adjacent its longitudinal edges.  Exhibit A is characterised by having the hole to either side of each transverse perforation line (which lines mark lines of folding) enlarged, compared to the remaining holes in a row.  Both rows are the same in this respect.  Consequently, they are able to be used for visual alignment of the continuous form material.  Mr Rumble notes that the material of this exhibit was produced by the Company in Australia about 15 years ago, but its use was discontinued in about 1980.
         Exhibit B is a copy of another form of fanfold (transversely perforated), continuous form stationery, for use on computer related sprocket feed printing equipment.  It has a uniform row of regularly spaced and sized holes along each longitudinal border.  This exhibit displays a number of marks about which Mr Rumble declares that:

"The Methods referred to above, and other variations of the use of additional or different sized or shaped holes along the margin of printing material for alignment purposes have been a common method of use in the computer related printing industry in Australia for many years, certainly well before 5 August, 1983."

The two most relevant markings on this exhibit comprise a corresponding sequence of natural numbers from 1 to 60 regularly printed and spaced on the right and left hand margins of the material adjacent to but just inwards of the sprocket drive holes, and extending along the length of each sheet (i.e. between a pair of adjacent perforated lines) of the continuous form material.
John Kenneth Scheller
         This declaration discloses information similar to that appearing in the declaration of Gerald James O'Brien, which is dealt with above.
The Evidence of the Patentee
         This evidence comprises two main declarations, as follows.
Michael John Hall
         Mr Hall declares himself to be a quality maintenance engineer, employed by Quality Maintenance Management Pty Ltd.  His current responsibilities include the servicing and maintenance of automated sign cutting equipment, including equipment which uses the web the subject of the petty patent in suit.  His experience before the priority date of the petty patent includes about 2 years as a field service engineer working with computerised garment cutting and design equipment, graphic plotting systems and computer aided design and manufacturing systems; in addition, he has had 8 years experience as a maintenance engineer servicing garment cutting machines and pattern design equipment.  Mr Hall makes extensive reference to the patent specifications and documentary exhibits put forward by the informants.  In general, I agree with his factual analysis of that evidence; however I disagree with his comments that the web of the invention, because of the "additional holes" which it carries, is physically incapable of being loaded improperly into a sign cutting machine.  Mr Hall repeatedly makes this assertion as a means of distinguishing the present web from various of the materials cited as anticipations.  In fact this assertion would be relevant only where the web is used with a sign making machine constructed according to the particular embodiment (described in the petty patent specification) having sprocket wheels with "extra" teeth which can register with the additional holes.  Mr Hall also makes quite extensive comments about the unsuitability of the cited materials for use as sign making webs.
Keith Scott
         Mr Scott deposes that his initial training was as a project and plant engineer, but about the middle of 1984 he established the company Quality Maintenance Management Pty Limited ‑ the company which presently employs the previous declarant, Michael John Hall.  Accordingly, Mr Scott has current experience of sign writing machines and webs but none before the priority date of the Gerber petty patent.  Mr Scott makes similar comments to those made by Mr Hall in his declaration about the nature of the various materials cited, and their unsuitability for use as a sign making web.
Novelty
         One of the features of the web as claimed in the petty patent is that of being a sheet‑like member

"of a laminated structure consisting of an adhesive‑

backed plastic sheet and a sheet of release material covering the adhesive."

From a reading of the specification as a whole it is clear that the above feature is essential in order that the web can be used for the production of signs in a sign making machine.  Mr Turner stated that neither the web nor the sign making machine were brought into Australia before the priority date of the petty patent, and no evidence to the contrary has been presented to me: nor is there any evidence before me that the knowledge of the web or the machine was in the hands of the public before the priority date.  Further, none of the exhibits in evidence, including the patent documents, disclose a material remotely like that of the web claimed ‑ most disclose only single thickness webs; a few do disclose a laminated web material, but that material bears little resemblance in structure or composition to the web of the invention, as claimed.
Consequently, apart from any other differences, as no earlier document or use discloses a web having the essential feature to which I have referred above, there can be no anticipation, and I reject the allegation of want of novelty. See, for example, the judgement of Aickin J. in Meyers Taylor v. Vicarr Industries 13 ALR 605 at page 611.
Obviousness
         Paragraph 1(e) of section 100 of the Act sets out this ground in the following terms ‑

"(e)that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;".

As to what is meant by "known or used in Australia", the High Court has pronounced on this most recently in Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited 144 CLR 253. I shall now consider what is common knowledge in the relevant art. By "relevant art", I refer to the general field in which the evidence lies ‑ that is, the art concerned with feeding webs by sprocket drive in printing, drafting and plotting and computing systems and the like. On the evidence there was no "sign making art" in Australia of the technological character of the present invention before that invention was brought into the country.
         The claim of the petty patent specifies a laminated structure consisting of an adhesive backed plastic sheet and a sheet of release material covering the adhesive.  Although no evidence was put before me on this matter, such a material has been well known in Australia to home decorators for at least 15 years : it is used as wall covering material (known colloquially as "vinyl" wall covering) or for covering shelving, bench tops and cupboard doors.  I must confess that although I am personally familiar with such material through use, it never did occur to me to punch rows of holes along the edges whereby to construct a web that could be sprocket driven in machinery of the character to which I have referred above.  In fact, it seems that on the evidence before me, no one other than Gerber has made such a proposal in Australia.  Therefore, within the relevant art, the material of which the web is made could not be said to have been "known or used in Australia on or before the priority date".

         It seems to me that the concept of the invention relates to the idea of sign making in which a machine driven blade slices through the plastics sheet (but not the backing sheet) of the web being fed through the machine.  Gerber has developed a web suitable for such use by, in effect, taking a material that was available, and modifying it by the use of standard sprocket holes and additional alignment holes, to turn it into a web, suitable for machine feeding in the type of machinery that exists in the relevant art.  There is no evidence whatever before me that it would have been obvious to a person skilled in the relevant art to take that material, and modify it as stated (and as claimed).  In fact, as I have commented above, that material has existed in Australia for many years and no one has apparently made any such proposals for its use.
         Consequently, I find the allegation of obviousness unfounded, on the basis of the evidence before me.
Section 40
         I have considered the submission made by Mr Bannon under this heading, but I cannot agree with the matters he has raised.  It is true that the specification is not a model of clarity.  However, this appears to have resulted by reason of the drafstman using the complete specification of the application from which the petty patent was divided (i.e. 551075) as a basis for his work, rather than starting afresh.  It is true also, that this has resulted in the use of the formula S = Nd in two different senses in the specification ‑ although in my view a simple reading of the description does not present any difficulties as a result.  I might also comment on the fact that the claim refers to "a fourth row of fourth holes", whereas there are in fact, only two rows in all.  Again, this presents no difficulty as the claim also makes it clear that the third and fourth rows are in the same lines respectively as the first and second rows.  Overall, it is my view that a person skilled in the art would have little difficulty in understanding this specification; accordingly, I find no problem with the specification under this heading.
Conclusion
         I have found no substance in the objections raised by the informants : in my view, they have not discharged the onus of the burden of proof which falls to them in this action.  Consequently, I extend the term of the petty patent.
         I award costs against the informants.

(J.L. ROVETA)

Attorneys for the Patentee: Spruson & Ferguson
Attorneys for Informant 1 : Griffith Hack & Co.