GH PTM Pty Ltd v Illinois Tool Works Inc - [2023] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
GH PTM Pty Ltd v Illinois Tool Works Inc. [2023] APO 47
Patent Application: 2016268249

Title:Connection of structural components in a building structure

Patent Applicant: Illinois Tool Works Inc.

Opponent:GH PTM Pty Ltd

Delegate:Greg Powell

Decision Date: 15 September 2023

Hearing Date: 26 July 2023, by Video Conference

Catchwords: PATENTS – section 59 – opposition to the grant of a patent – construction of “positioning” – support – claims are supported – utility – claims have utility – inventive step – claims are inventive – opposition unsuccessful on all grounds

Representation: Counsel for the applicant: Clare Cunliffe
Solicitors for the applicant: Aaron Yates and Emily Maartensz of Davies Collison Cave Law Pty Ltd
Patent attorney for the applicant: Scott Sonneman of Davies Collison Cave Pty Ltd
Counsel for the opponent: Marcus Fleming
Patent attorneys for the opponent: Dr Jing Fung Tan and Edith Hamilton of Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016268249

Title:Connection of structural components in a building structure

Patent Applicant: Illinois Tool Works Inc.
Date of Decision: 15 September 2023
DECISION

The opposition is unsuccessful. Subject to appeal, I direct that the application proceed to grant.
I award costs according to Schedule 8 against GH PTM Pty Ltd.
REASONS FOR DECISION

Background

Australian patent application 2016268249 (the application) in the name of Illinois Tool Works Inc. (the applicant) was filed on 24 May 2016 as PCT application PCT/US2016/033931. The application claims priority from Australian provisional application 2015901960 with a priority date of 27 May 2015.
A request for examination was made on 2 June 2020. The application was accepted on 28 July 2021 and advertised on 12 August 2021.
A Notice of Opposition was filed on 12 November 2021 by GH PTM Pty Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 11 February 2022. Evidence in Support (EIS) was completed on 7 June 2022 following an extension. Evidence in Answer (EIA) was filed on 8 September 2022. No Evidence in Reply was filed. An amended SGP was filed on 27 July 2022 (prior to EIA being filed), seeking to particularise further prior art references, common general knowledge and issues around a lack of support. The amendment to the SGP was allowed on 11 August 2022. The opponent filed their written summary of submissions (the opponent’s written submissions) on 12 July 2023. The applicant filed their summary of submissions (the applicant’s written submissions) on 19 July 2023.
Applicable Law
The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, the standard of proof that applies in the present case is the balance of probabilities.
The opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists. If I am satisfied, I may refuse the application[1] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[2].
[1] The Act, subsection 60(3A)
[2] Ibid, subsection 60(3B)
Evidence
EIS consists of:
·A declaration of Bruce Robert Wallace (Wallace) dated 11 May 2022, accompanied by exhibits BW–1 to BW–12
·A declaration of Ross O’Neill (O’Neill) dated 30 May 2022, accompanied by exhibits RO–1 to RO–6
·A declaration of Edith Francis Hamilton (Hamilton) dated 6 June 2022, accompanied by exhibit EFH–1
EIA consists of:
·A declaration of Mark Anthony Hull (Hull) dated 8 September 2022, accompanied by exhibits MAH–1 to MAH–8
·A declaration of Emily Elizabeth Maartensz (Maartensz) dated 8 September 2022, accompanied by exhibits EEM–1 to EEM–5
Bruce Wallace states that he is the owner and manager of The Truss Joint, “a fabricator of prefabricated and architectural roof trusses”[3]. He states that he commenced his career in the roof truss industry in 1988 when he began employment with a local truss manufacturer. After a stint with a local builder, he returned to the local truss manufacturer as Operations Manager, having responsibilities which included oversight of occupational health and safety, human resources and sales. He established The Truss Joint in 2008 and states that he has “been involved in every aspect of the fabrication and supply of roof trusses, including interacting with builders and dealing with construction”[4].
[3] Wallace at [5]
[4] Ibid at [8]
Ross O’Neill states that he is the owner and director of VR Builders, “a building company with experience building domestic residential homes and commercial buildings”[5] which he established in 2005 under the name Vic Restorations Building Services. He states that he has extensive knowledge in the construction of domestic buildings in general, including the installation of roof trusses, having begun his career as an apprentice in 1995-1996, becoming a licenced builder in 2005 and obtaining a commercial builder’s licence, and a demolition licence, soon after. While noting that the projects he has been involved in with VR Builders were predominantly domestic in nature, he states that his company occasionally does commercial projects.
[5] O’Neill at [5]
Edith Hamilton is a patent attorney and Special Counsel employed by the opponent. Her declaration had the purpose of placing into evidence a video titled “FastenMaster TimberLOK – Rafter/Truss to Top Plate Fastener” available since 20 May 2011 on the YouTube channel “FastenMaster”.
Mark Hull states that he is the owner and Managing Director of MCM Frame & Truss Pty Ltd, “one of the leading timber frame and truss manufacturers in Sydney”[6]. He states that has been involved in the building and construction industry “for over 40 years”[7], working in the residential building industry, installing, and overseeing the installation of, timber frame trusses. Having begun as an apprentice in 1977, and up until 1980, he states that he “installed timber frame trusses for new residential homes at least once a week in [his] first year, and then about once a fortnight for the subsequent years”[8]. There followed roles as a contract carpenter installing timber frame trusses for new residential homes “on about a fortnightly basis”[9], employment as the office manager at Michael Hull Designer Homes overseeing the construction department, a return to an on-site role of concrete slab supervisor, then a role as construction supervisor. Mr Hull was then appointed Construction Manager/Director at Michael Hull Designer Homes and was responsible for overseeing the entire construction process from start to finish. Since 2001 Mr Hull has been in his current position at MCM Frame & Truss Pty Ltd. The role of the company is “to take a set of architectural plans and design a layout showing each individual frame and truss component required … fabricate those components in [their] factory to be delivered to site along with an associated installation plan”[10].
[6] Hull at [1]
[7] Ibid at [7]
[8] Ibid at [8]
[9] Ibid at [9]
[10] Ibid at [15]
Emily Maartensz is a lawyer employed by Davies Collison Cave Law Pty Ltd. Her declaration had the purpose of gathering, from The Internet Archive (the Wayback Machine), and placing into evidence, webpages of a website for a company (MiTek) referred to by Mr Wallace in his declaration.
Grounds of Opposition
The SGP sets out the application is opposed on the basis of:
a)Lack of novelty;
b)Lack of an inventive step;
c)Lack of utility;
d)Lack of manner of manufacture; and
e)Non-compliance with the requirements for support for the claims (S 40(3)).
At the hearing, the opponent narrowed its case to:
a)Lack of an inventive step;
b)Lack of utility; and
c)Non-compliance with the requirements for support for the claims (S 40(3)).
The specification
The specification notes that, when assembling the structural framework of a building (a timber framework is discussed), some frame elements (roof trusses are the example) are typically craned into place on top of other frame elements (such as wall frames). If the roof truss was to then be permanently fixed to the wall frame at that point in time, the crane would have to remain in place holding the truss until it was permanently connected via a bracket, which may require fasteners such as nails or screws, or may have integral teeth to be driven into members, before being moved to collect the next truss. This process can be slow and increases crane time, which is expensive. To try and avoid this, the usual practice is to temporarily fix a roof truss to a wall frame before their permanent interconnection. This reduces crane time. However, this process means that each connection point needs to be visited twice – first to establish the temporary fixing and a second time to establish the permanent fixing. It is also possible that permanent fixing may not be carried out due to oversight, as there may not be an obvious way to see which trusses have not been permanently connected. The specification also notes that installer skill was critical to correctly position and fix the bracket.
The application solves this problem by pre-applying to one of the elements prior to installation at least one fastener that will be used to permanently fix the elements together. When the two elements are brought together, an exposed tip of the fastener penetrates a surface of the other element so that a temporary fix is created, and the first element cannot be moved in a direction that is parallel to the surface. The fastener is then driven into the other element to permanently fix the elements together without the need to have the crane hold the truss in place while it is permanently fixed.
Figure 2A shows one embodiment:
In this embodiment, the truss 10 has had fastener 30 pre-applied so that the tip protrudes out from the bottom cord 12 of the truss 10. The truss 10 is placed against the top plate 21 of a wall frame 20 and, either under the weight of the truss 10, or by knocking the head of the fastener 30 with a hammer, the tip is embedded in the top plate 21, thereby temporarily fixing the truss 10 and wall frame 20 together. As the tip is embedded, the truss 10 cannot be moved in a direction parallel to the surface of the top plate 21, and the position of each end of the truss 10, with respect to the top plate 21 of the wall frame 20, is maintained without any permanent fixing having been established between the truss 10 and each wall frame 20. If the truss 10 needs to be repositioned, the installer can lift the truss end and move the truss to locate (and embed) the exposed tip in the correct location. The fastener 30 (which is a screw in this embodiment) is then screwed into the top plate 21 thereby forming a permanent connection between the truss 10 and wall frame 20.
Other embodiments show more than one fastener at each site, the fastener extending vertically (due to a slightly different shape of roof truss), different fastener locations (e.g. in the middle of the bottom chord of the truss), or the fastening occurring between the truss and another roof truss.
One form of the fastener is shown in Figure 8:
The fastener 30 includes a threaded shaft 31 and has a tip 33 at the end of a narrow leading end portion (which is not numbered in the figure). The narrow leading end portion has a cylindrical surface 34 having an axis coinciding with the longitudinal axis of the fastener 30. The side face 34 can be smooth or have a thread provided. The fastener 30 has a tapered transition portion 35 between the shaft 31 and narrow leading end portion. The specification states that the narrowness of the leading end portion facilitates penetration of the member surface by the tip 33 to preclude movement of the truss in a plane parallel to the surface.
Claims
The specification ends with 23 claims. Claims 1–22 are method claims, with claim 1 being the only independent method claim, and claim 23 is directed to a truss, or component, for use in the method. Claims 1 and 23 are as follows:
1. A method of assembling, in the construction of a timber frame building, a building structure in which a first structural component, in the form of a truss, is connected to a second structural component such that the first structural component is supported by the second structural component in the building structure, the method comprising:
when the second structural component is in situ, positioning the first component relative to the second component whereby an exposed tip of at least one fastener which has been pre-applied to one of the components before installation penetrates a timber member which the other component comprises, so as to be received into a surface of the other component, the surface being defined by said member, to preclude translational displacement of the first component in a plane parallel to the surface; and
thereafter driving the or each fastener into the said other component to fix the components together.
23. A truss or component, for use as that in a method according to any one of the preceding claims, to which truss or component said at least one fastener is pre-applied.
The full claim set is in the Annex to this decision.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the person skilled in the art (PSA) as:

“… a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time … They are likely to have a practical interest in the subject matter of the invention … and may often work in the art with which the invention is connected.” [11]

[11] [2007] FCA 481 at [16]

In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:

“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.” [12]

[12] [2000] FCA 980 at [70]

In AstraZeneca AB v Apotex Pty Ltd, the High Court additionally noted that:

“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.” [13]
[13] [2015] HCA 30 at [23]

Opponent’s submissions

The opponent submitted that the PSA was a builder, including those with experience in relation to the manufacture and installation of trusses. They noted Mr Wallace’s experience in relation to the design, fabrication and installation of roof trusses, both in a domestic and commercial context. They also noted Mr O’Neill’s knowledge in the construction of domestic buildings, including in relation to the installation of roof trusses. The opponent also accepted that Mr Hull had considerable experience in the building industry.
Applicant’s submissions
The applicant noted that, while Mr Wallace had experience in installing trusses, his evidence on the construction of the claims did not have regard to the language of the specification. They also submitted that Mr Wallace’s analysis of the prior art was of little value from the point of view of inventive step because he did not engage with the alleged problem solved by the application. The applicant did not discuss Mr O’Neill in detail. The applicant submitted that the PSA was not as broad as that proposed by the opponent. In the applicant’s opinion, the PSA was a “narrower class of builders with expertise in installing trusses in timber frame buildings”[14]. While accepting that Messrs Wallace and O’Neill had some characteristics of their PSA, the applicant believed that Mr Hull was a person who more closely met their conception of the PSA. The applicant urged caution when approaching the evidence of the opponent.
[14] Applicant’s written submissions at [14]
Consideration
It seems clear to me that the person skilled in the art would be a person with experience in the process of joining together a truss and other frame elements of a building. In this regard, as I have not included a requirement for the PSA to have knowledge of the manufacture of trusses, it might be said that my view is more in line with the applicant’s opinion. That said, Bruce Wallace, Ross O’Neill and Mark Hull are qualified to put forward opinions on what may happen in a truss installation process since all have some experience in that area. To the extent that there may be contradictions, I will have regard to available corroborating evidence.
Claim construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[15], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“… the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”[16]
[15] [1988] FCA 399; 13 IPR 385
[16] [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”[17]
[17] [2013] FCA 214 at [139]
In the present matter the opponent stated that there were two key issues of construction with respect to the terms “positioning” and “fastener” in the claims.
However, during the course of the hearing it seemed to be the case that both the opponent and applicant were in agreement that “fastener” covered any suitable device that performed the act that was required by the claim (i.e. penetration such that translational displacement was precluded), regardless of its characteristics. A fastener which did not penetrate was a fastener that was not within the meaning of the claim. This is a construction that I agree with. Consequently, I will focus on “positioning” as it is, in my opinion, determinative of this opposition.
Opponent’s submissions
The opponent submitted that “positioning” had its ordinary English meaning. They referred to the Macquarie Dictionary definition of the verb “position” which is:
to put in a particular or appropriate position; place.
The opponent submitted that, when claim 1 required the “positioning” of the first component relative to the second component, it should be interpreted to mean that it was the mere “positioning” of the first component relative to the second component which caused the exposed tip of the fastener to penetrate the second component to prevent translational displacement. In the opponent’s mind, no application of force other than what occurred during the movement of components was permitted to achieve penetration. It was the single act of positioning that achieved this result. While there may have been steps anterior to this (e.g. picking the truss up and placing it flat on top of the wall frame, or manoeuvring into a close location with a crane), they were not part of the “positioning” of the truss to achieve the required result. It was the mere placement of the first component against the second component which was what the claim defined. Consequently, any “knocking in” (as shown by the presence of the hammer in Figure 2A above) could not be part of the positioning step. In the opponent’s submissions, that act was applying force to the fastener, and was nothing to do with the positioning of the truss. The opponent submitted that this was consistent with the description at page 8, lines 6-15 and with Hull at [44] and [46]. They also submitted that any force applied by a “knocking in” step was part of the driving step, and pointed to page 8, lines 18–31 of the description, and called attention to the fact that claim 11 defined that the driving of the fastener required, as an initial step “knocking or hammering it such that the tip thereof is at least partially embedded in said other component.”
Applicant’s submissions

The applicant agreed that “positioning” should take its ordinary meaning and agreed that the definition advanced by the opponent was appropriate. However, the applicant submitted that the opponent’s position ignored the language of the claim when read in light of the specification as a whole. The applicant submitted that what was required was a positioning of the first component so that the exposed tip of the pre-applied fastener was “received into a surface of the other component”[18]. In the applicant’s opinion, the positioning of the truss was not complete until the exposed tip had penetrated the second component so that the truss was temporarily fixed. At that point the “positioning” could be said to be complete. The applicant noted that the application described that the exposed tip could be received into the surface of the other component due to the weight of the truss, or by an installer “knocking in” the head of the respective fastener, and referred to page 8, lines 18–28 of the description. The applicant also referred to Figures 2A, 2B and 2C which they noted were described by the specification as:
“… successive stages of formation of a connection between a first building component, in the form of a roof truss 10, and a second component, in the form of a wall frame 20, in accordance with a first preferred embodiment of the invention.”[19]
In the applicant’s opinion, a truss was positioned when there was no gap between the truss and the wall frame.
[18] Specification at claim 1
[19] Specification at page 7 lines 14–16
Consideration
I do not agree with the opponent (and do not totally agree with the applicant). To my mind, the interpretation the opponent has placed upon “positioning” is too constrained. I cannot see how it could be said that, in this application, “positioning” is always just a single, indivisible step.
I recognise that page 8, lines 6-15 of the description states:
“Referring to Figure 2A, assembly of the building structure comprises lifting of the truss 10 over the wall frame 20 and lowering it such that the tip of the fastener 30 is received against the upper face of the top plate 21 and thus, under the weight of the truss 10, partially embeds in the top plate 21 in proximity to the location at which the fastener 30 is to be driven into the top plate 21. The tip of the aforementioned fastener 30 at the opposite end of the bottom chord 12 is likewise received against an upper face of the top plate 21 of a wall frame 20 which underlies the heel at the opposite end of the bottom chord 12, in proximity to the location at which it is to be driven into that top plate. Owing to the partial embedment of the fastener tips in the top plates 21, the fasteners 30 preclude translational displacement of the truss 10 in a plane parallel to the upper faces of those top plates”,
and that this passage only mentions penetration under the weight of the truss.
However, as highlighted by the applicant, I note that at page 8, lines 18-28 the description states:
“An installer at each end of the truss then ensures that the fastener tip at that end is located precisely at the point on the respective top plate at which it is to be driven into that top plate (if necessary, lifting the truss end and moving it to land the fastener tip at that location), then causes the fastener 30 to be forced downwardly either by allowing the respective truss end to drop, under the weight of the truss 10 or knocking the head of the respective fastener, e.g. with a hammer, such that the tip is driven into the top plate 21 at that location, whereby a temporary fixing between the respective truss end and the top plate on which it is supported is established with one truss end being correctly positioned on the top plate 21 supporting it, as shown in Figure 2B, and the opposite end likewise being correctly positioned on the top plate supporting it as would be shown by a mirror image of Figure 2B.” (my emphasis)
I do not agree with the opponent’s submission that this passage relates to the driving step of the claims. It is quite clearly stated in the above passage that the described actions are taken to establish “a temporary fixing” and is not driving anything to fix the components.
Moreover, the plain meaning as set out in the Macquarie Dictionary, does not mandate a singular step. The words “put in” do not require that only one step is allowed to achieve a goal.
Also of importance is the fact that, from the dictionary definition, the goal of “positioning” is for an element to achieve its “appropriate place”. When answering the question of what the appropriate place for the truss is, regard must be had to the words of the claim. Those words make it clear that the appropriate place is the one which will “preclude translational displacement”. That is, the positioning step is finished when, once positioned, there can be no further translational displacement of the truss. It is clear from the specification that where this “appropriate” place is depends on a variety of factors.
I refer to Figures 2A, 2B and 2C. Figure 2A is above, Figures 2B and 2C are:
While Figure 2A above shows the starting point, Figures 2B and 2C show, respectively, the position of the truss 10 relative to the wall frame 20 after a knocking in step and after the driving step. It is clear to me that the truss 10 does not move while the fastener is driven in from its position in Figure 2B to its position in Figure 2C. However, the opponent made it clear in their submissions on utility that, with an angled fastener, if a gap existed between the truss 10 and the wall frame 20, then there would be translational displacement as the fastener was advanced from its position shown in Figure 2A to the position shown in Figure 2B. They referred to the evidence of Mr Wallace for support[20]. To my mind this is correct for an angled fastener. As explained by the opponent at the hearing, at the position of the fastener shown in Figure 2A, there would clearly be a horizontal offset (small though it may be) between the spot where the fastener touches (and initially penetrates) the wall frame 20 and the spot at which the fastener tip exits the truss 10. Those spots must meet at some point in time during assembly. Assuming the wall frame to be fixed in place, the only way for that meeting to occur would be for the truss to move in a direction towards the left side of Figures 2A–2C; that is, in a direction parallel to the top surface of the wall frame. It follows that, when considering the meaning of “positioning” in the claims, the appropriate place with respect to Figures 2A–2C, and, therefore, the point at which the truss has been positioned, is that shown in Figure 2B. That is to say, when there is no gap between the truss 10 and wall frame 20, the “positioning … so as to preclude translational displacement” has occurred.
[20] Wallace at [103]–[104]
However, contrary to the applicant’s submission, this is not to say that the only time positioning has occurred is when there is no gap between the components. I think, for the present application, “positioning” is not as limited as the applicant submitted. In this regard, I note, for example, Figure 5C:
In this configuration, the spot where the fastener 30 touches (and initially penetrates) the wall frame’s top plate 21 and the spot at which the fastener tip exits the truss 10C are not horizontally offset; they are vertically aligned. As such, the appropriate place in this arrangement is the one where the fastener has penetrated far enough into the top plate 21 such that the truss 10C cannot move parallel to the upper wall frame surface. It seems reasonable to assume that such a position will not necessarily be when the facing surfaces of the truss and the wall frame contact each other. That is, there may well be a gap. Ultimately, the presence or absence of a gap is not important for this decision.
Therefore, in the present application, “positioning” has occurred when the truss has reached a place where no translational displacement is possible regardless of any other subsequent action that is carried out. It follows that knocking in could be part of the “positioning” step.
Inventive step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection (3) prescribes the information that may be considered as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available, and information made publicly available through doing an act.
Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question.
In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd a problem-solution process was set out when Aickin J stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”[21]
[21] (1981) 148 CLR 262 at 286
Nevertheless, the use of the problem-solution approach is not universal. When an invention does not solve or address a particular problem, the use of the problem solution approach would not be appropriate. Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd[22] effectively stated that, when formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under subsection 7(3).
[22] [2014] FCAFC 99 at [202]-[203]
In Aktiebolaget Hassle v Alphapharm Pty Ltd[23], the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, … directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?” [24]
[23] [2002] HCA 59 (“Alphapharm”)
[24] [1970] RPC 157 at [187]
Problem to be addressed
As noted above, the posited process for attaching trusses to other structural elements of a building frame meant that each connection point needed to be visited twice – first to establish the temporary fixing and a second time to establish the permanent fixing. It was stated that this could lead to the permanent fixing of any truss not being carried due to oversight, since it was not necessarily easy to differentiate between trusses which were only temporarily fixed and those which were permanently fixed. Mr Wallace was supplied with that part of the specification that set out the problem described here. However, he did not state in his evidence whether he thought this problem was known in the art. He noted[25] that whether a connection point needed to be visited twice depended on a number of factors, such as whether there was a crane on site or whether trusses were being installed by hand. He observed that one– or two–stage fixing depended on the installation process. Mr O’Neill, having also been given that part of the specification that set out the problem described here, stated[26] that he did not see the need to visit each connection point twice to be a problem since double-checking of connection points was important to ensure correct assembly of the structure. In his opinion, this minimised problems due to incorrect supply or misinterpretation of measurements.
[25] Wallace at [62]
[26] O’Neill at [44]
The opponent noted that the application set out a problem as I have noted above. They did not make any submissions as to whether this was the “correct” problem for any inventive step analysis.
The applicant submitted that it was a mischaracterisation to state that the problem solved by the invention was one of each connection point needing to be visited twice. They noted that the specification also mentioned permanent fixing of any truss not being carried due to oversight and the observation that installer skill was critical to correctly position and fix the bracket used in permanently fixing the components together.
Whether the claimed invention solves the problem set out in the specification or another problem is a somewhat academic consideration. In my opinion, given the case presented by the opponent, it is unnecessary to undertake an in-depth analysis of this point.
Common general knowledge
In Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd Aickin J stated:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.” [27]
In Alphapharm, it was indicated that information should not be treated as part of the common general knowledge (CGK) “in the absence of evidence of its general acceptance and assimilation”[28].
[27] [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292
[28] Alphapharm at [31]
From the evidence, there seemed to be agreement between the experts as to:
(a)methods of fabricating trusses, such as roof trusses;
(b)the use of temporary and permanent fixings during assembling a building structure such as roof trusses to a wall frame, to ensure that the roof truss is correctly assembled and positioned on the wall frame; and
(c)the use of truss spacers and braces for assembling a building structure such as roof trusses to a wall frame,
being CGK. I am prepared to accept this as being the case.
The opponent also put forward that:
(d)a product known as TrussSpacer (see discussion below);
(e)the use of batten screws for temporarily fixing trusses during installation; and
(f)the pre-application of fasteners before installation, including so that the fastener penetrates a timber member such that the exposed tip of the fastener protrudes from the timber member,
were also CGK.
The applicant disputed that it was CGK to use batten screws as an alternative to nails to temporarily fix trusses. They referred to the evidence of Mr Hull[29] in this regard, and noted that the evidence from the opponent’s experts was not consistent on this point. In addition, the applicant also submitted that, while accepting that the PSA may have known of the TrussSpacer product, from the evidence on file the only CGK that had been established was the use of the TrussSpacer where it was applied to a truss, the truss was moved into position, and then the TrussSpacer was swung out and fixed. The applicant submitted that there was no evidence to suggest that any other uses of the TrussSpacer were CGK.
[29] Hull at [132]
Accepting the applicant’s admission that the TrussSpacer product per se was CGK, in my opinion the evidence does not establish that the use of the TrussSpacer product as a fastener in the sense of the present application is CGK. It is true that all experts recognise that it is used as a spacer, but this is not enough to establish other uses. To be CGK, evidence must establish that it has been generally accepted and assimilated. From the evidence it would appear that the TrussSpacer product is to be used as an alternative to the, I would posit, more generally known and accepted use of wooden blocks. However, there is no evidence that the TrussSpacer product was used as a fastener which is used to “fix” the truss and the other structural component together.
With respect to the use of batten screws for temporarily fixing trusses during installation, taking the fact that (i) Mr O’Neill states that this is done, (ii) Mr Wallace does not say anything about this practice at all, and (iii) Mr Hull actively disputes it, I conclude that, on the balance of probabilities, the use of batten screws as an alternative to nails to achieve a temporary fixing was not CGK.
As to point (f), I questioned at the hearing whether the applicant agreed with the opponent that this was CGK. The applicant submitted that this reference by the opponent was to the TrussSpacer product. The opponent submitted that this was supported by their evidence relating to the TrussSpacer product and by their evidence that established that the use of bump stops was known. In this regard they referred to the evidence of Mr O’Neill:
“The second method is to use e.g. a 75 mm nails as a bump stop. The nail is partially driven into the top plate, at the location of the line against which the truss is to be positioned, so that it protrudes about 50 mm from its top surface. The truss is then moved along the top plate to contact the exposed head before it is fixed in place using a screw or a pair of angled nails as previously described. This allows the truss to be accurately positioned on the top plate. The nail acts as a stop that the truss can be pushed up against during temporary fixing.
These sorts of positioning stops might also be used when the truss has an eave. It was known to calculate the position of the eave and to use a pair of nails to act as stops at each end of the truss so that it can be centred over the wall plate. The nails would be hammered into the truss when it was still on the ground so that they could be used to locate the truss in the correct position when it was being placed on the top plate.”[30]
[30] O’Neill at [35]–[36]
The evidence of Mr O’Neill referred to by the opponent does not establish that the tip of the fastener is exposed. Apart from the fact that Mr Hull disputes[31] that this practice of creating bump stops with nails was CGK, the evidence of Mr O’Neill establishes, at best, that part of a pre‑applied fastener may be exposed. It does not establish that the tip of the fastener is exposed. Indeed, given that the nail has been driven into a component, and it would seem well understood that a nail is driven in tip-first, it would seem to establish that the tip is hidden. As such, the evidence does not establish that pre-application of fasteners before installation such that the exposed tip of the fastener protrudes from the timber member is CGK.
[31] Hull at [135]
In the present case, the opponent contended that the claims lacked inventive step in light of:
(i)US 5561949 (D2) when combined with CGK;
(ii)the TrussSpacer product, which the opponent contended formed part of the CGK; and
(iii)AU 628834 (D1) when combined with CGK.
The opponent only addressed D2 during the hearing, preferring to rely upon their written submissions for the TrussSpacer product and D1.
US 5561949 (D2)

D2 discloses the use of what is labelled as a “tie-down strap” in attaching roof trusses to wall frames. Figures 2 and 11 of D2 show one version of the strap and its use:
During its manufacture, the truss has, in this embodiment, the strap 60 attached to the top surface 42 of the bottom chord 38 via the upper leg 62 of the strap. With respect to the strap, D2 states:
“strap 60 is preferably formed from flexible, easily deformable galvanized steel, preferably 22 gauge steel. Steel of this thickness can be easily deformed by hand by virtually any worker to match the contours of the particular truss and wall stud assembly”[32],
and that the lower leg 64:
“can be easily manipulated, without requiring special tools or a large amount of force, to the desired position for mounting to the top plate 16 or stud 18.”[33]
[32] D2 at column 3 lines 63–67
[33] Ibid at column 4, lines 21–24
D2 also states:
“While the preferred embodiment of the strap is formed from 22 gauge galvanized steel, the strap can be formed from metal in the range of 14 to 26 gauge. With this particular structure, the fasteners 66 used to mount the strap 60 can be any conventional fastener including, but not limited to, nails, screws or staples. Alternatively, the strap can have a plurality of preformed teeth stamped therein for mounting the strap to the wood products. An example of a strap 60 having such preformed teeth is seen in FIG. 11. The preformed teeth 70 can be formed in both the upper 62 and lower legs 64, or only one of the two legs with other fasteners being used for mounting the remaining leg. Any combination of fasteners can be used depending upon the particular application.”[34]
[34] Ibid at column 4, lines 25–38
With teeth pre-formed in both legs 62, 64 of the strap 60, D2 notes:
“If the teeth 70 are also formed in the second portion of the strap, the strap can be mounted to the wall stud by a hammer.”[35]
[35] Ibid at column 6, lines 40–42
Opponent’s submissions
The opponent submitted that the claimed invention lacked an inventive step in light of D2. The opponent’s written submissions stated that it was:
“… inherent that, as the truss (14) is position (sic) on top of the stud (18), the teeth (70) on the lower part of the tie down strap (60) are likely to at least partially penetrate the stud (18) in the manner of the claimed invention.”[36]
[36] Opponent’s written submissions at [100]
The opponent also noted Figure 10 of D2:
They noted that the second-last step of the method stated that the “second portion” (i.e. the lower leg) of the strap was manipulated in such a way that it overlay at least a portion of the top plate 16 and the wall stud 18. In the opponent’s submission, in the course of practising the method in D2, positioning of the truss could cause the teeth on the lower leg of the strap to penetrate the top plate. The opponent’s written submissions stated that:
“… if positioning of the truss did not cause the teeth on the lower part of the tie down strap to penetrate the top plate, it would be obvious to the skilled addressee that this could be achieved by ‘knocking in’ the teeth (or another suitable fastener) to preclude translational displacement.”[37]
[37] Ibid at [103]
At the hearing the opponent stated that it was their contention that, in the course of fitting the lower leg of the strap, as the teeth in the lower leg were being knocked into (i.e. hammered into) the wall stud, an amount of penetration would be reached at which point the truss would be prevented from being translationally displaced. Further hammering could then be considered to be equivalent to the driving step of the claim.
Applicant’s submissions
In their written submissions the applicant stated that, assuming any teeth present on the lower leg of the strap could be considered to be an “exposed tip”, the evidence of Mr Hull did not establish that they penetrated the wall stud when the truss was positioned on the wall frame. The applicant noted [63] of Hull where it was stated that the installer would deliberately ensure that the lower leg of the strap would not contact the wall frame at the time of positioning the truss to avoid damaging the teeth of the strap, or causing the strap to deform and/or causing damage to the wall frame. The applicant also referred to Figure 10 and noted that the step of mounting the truss to the wall frame was separate to the step of mounting the lower leg of the strap to the wall stud. As such, penetration by the teeth on the lower leg occurred as a result of mounting the lower leg to the wall frame by a hammer, not as a result of positioning the truss on the wall frame.
At the hearing, the applicant submitted that D2 did not teach the two-step process of the claims. They submitted that D2 taught[38] that the tie-down strap disclosed was to be used as an alternative to brackets that are used in the permanent fixing step, and not the temporary fixing step. The applicant further submitted that the presence of teeth in the lower leg of the tie-down strap was not desirable and would not be considered by the PSA. They noted that D2 stated:
“Finally, the second portion of the tie-down strap is mounted to the wall stud by conventional fasteners. Preferably, an air-operated staple gun is used to mount the first and second portions of the tie-down strap to the truss and wall stud framework. However, when the tie-down strap has preformed teeth 70 (FIG. 21) stamped therein, the upper leg of the strap can be mounted to the truss assembly by a conventional press machine to force the teeth into the truss framework and the lower leg can be mounted to the wall stud by other fasteners such as staples or nails. If the teeth 70 are also formed in the second portion of the strap, the strap can be mounted to the wall stud by a hammer. The strap can be fastened to the truss assembly and wall stud by any combination of preformed teeth, nails, screws, staples, adhesive and the like.”[39]
[38] D2 at column 1, lines 44–63
[39] Ibid at column 6 lines 31–44
The applicant submitted that teeth were but one fastening option to choose from, and this option of teeth was, in their opinion, not an option that would be chosen by the PSA. They submitted that the PSA would not choose to have teeth present in the lower leg because (i) the evidence of Mr Wallace and Mr O’Neill was that such exposed tips were unsafe[40] and (ii) the presence of exposed tips would make positioning of the truss more difficult[41]. They also note that D2 taught the preferable method was to use an air-operated staple gun rather than a hammer.
[40] Wallace at [65] and O’Neill at [46]
[41] Wallace at [71] and O’Neill at [47]
Consideration
While I do not necessarily agree with the applicant’s submission vis á vis the presence of teeth in the lower leg of the tie-down strap, the point is moot because the opponent has not made out its case. In particular, D2 teaches away from a preliminary positioning step where the fasteners (whatever they may be) penetrate a surface so as to preclude translational displacement, followed by a step of driving the fastener(s) into the other component to fix the components together. The positioning step of D2 is the simple placing of the truss on the wall frame. There is no disclosure of any penetration of fasteners at this point. As such, there is no preclusion of translation movement. Following that positioning step, the strap is “mounted” (i.e. permanently fastened) to the wall stud by fasteners such as nails, screws or staples, or by hammering in the preformed teeth.
While the opponent submitted that, assuming the mere placement of the truss on the wall frame was not a positioning step, there would, nevertheless, be a point during the process of hammering in the teeth where translational displacement would be precluded, thereby affecting the positioning step, followed immediately thereafter by the driving step, there is no evidence to support this. Of significance, as I have noted above, is the fact that the strap is described in D2 as being formed of “flexible, easily deformable galvanized steel”. In that context, I cannot see how all translational displacement would be precluded at some intermediate point in the hammering of the teeth. I note Mr Wallace states with respect to D2:
“The lower leg of the tie down strap may resist side-to-side movement of the truss. However, the teeth would have to be knocked into the surface of the wall stud to fix the truss into position.”[42]
[42] Wallace at [169]
This statement does not establish whether the truss can move or not. Saying “may resist” is not a definite position. Moreover, an “easily deformable” strap would seem to teach away from the necessary rigidity needed to preclude translational displacement at some intermediate hammering point. This is supported by the second sentence from Mr Wallace’s evidence quoted above where he indicates that the teeth would have to be knocked into the surface to fix the truss into position. There is nothing here that establishes the penetration of the teeth prior to being “knocked into the surface of the wall stud to fix the truss into position”. Indeed, the words suggest no mounting that precludes translational displacement prior to a permanent fixing step.
Furthermore, given the deformable nature of the strap, I find it difficult to see how any preformed teeth that may be present will penetrate the wood of the wall stud during any preceding step. It would seem more likely that, as the tips of the teeth contacted the wall stud, the strap would be forced away from the wall stud. In addition, D2 states that the lower leg of the strap is put into the desired position for mounting, with no disclosure of a preliminary step.
TrussSpacer
The TrussSpacer product is shown in exhibits BW-4 and BW-5 to Wallace. These exhibits are guides produced by the company MiTek. These documents state that the product can be used in lieu of a gauging rod or timber ties that are used in the art to space trusses apart and hold them in place prior to permanent fixing. The product itself is composed of a metal strip having an aperture at one end for receiving a fastener (such as a nail) and a hook arranged at another end having inwardly facing teeth. The form of the product can be ascertained from figures in BW-4 and BW-5:
The exhibits state that the aperture is placed on a chord of a first truss and a nail is driven through the aperture to attach the TrussSpacer to the chord (noting that the left-hand figure above has 5 TrussSpacers attached). This can be done prior to the first truss being lifted into position. Once this truss is installed in its correct position and the second truss (which may or may not have its own TrussSpacer already installed) is lifted into position, the unattached end of the TrussSpacer could be swung into position to fit around the corresponding chord of the second truss. The inwardly facing teeth can be driven into the second truss. As can be seen from the diagrams, there can be more than one TrussSpacer installed on each truss, and, contrary to the description set out in the exhibits, the TrussSpacer being swung into position could be on the truss currently being installed rather than the truss that was previously installed.
Opponent’s submissions
The opponent submitted that the evidence established that the use of the TrussSpacer is analogous to the invention described in the application. They submitted that, when the hooked end was located over the first component (i.e. the truss), the teeth may be partially embedded into (or “grab”) the surface of the first component. When considering a TrussSpacer applied to the top surface of a bottom chord, the opponent submitted that the hooked end “grabs” the surface of the timber of the truss being positioned, and this would preclude translational displacement of the first truss relative to the second truss in a plane parallel to the surface. In the opponent’s opinion:
“… the invention as claimed in at least claim 1 of the Application is obvious when considered in light of the common general knowledge (which included knowledge of the TrussSpacer product, as reflected in the MiTek Guide).”[43]
[43] Opponent’s written submissions at [113]
Applicant’s submissions
The applicant submitted that the many differences between the TrussSpacer and the claimed invention meant that the invention was not obvious in light of the TrussSpacer. Given my conclusion below, I will only set out what I consider to be the applicant’s main points, as it is not necessary that I set out all of the differences submitted by the applicant.
The applicant submitted that the previously installed truss could not be considered to be the second structural component of the claims. While accepting it was a structural component, the applicant submitted that it was not a component that supported the truss being installed. In the applicant’s submission, the previously installed truss did not bear the weight of the truss being installed.
The applicant submitted that the TrussSpacer was not a fastener. They noted that the guides of BW-4 and BW-5 indicated that the nail received in the aperture at one end of the TrussSpacer was the fastener. The applicant also submitted that the guides described the TrussSpacer as being a replacement for timber ties or chord ties and not a fastener.
The applicant also submitted that, assuming the TrussSpacer to be a fastener, any teeth would not penetrate any surface while the truss was being positioned. This was due to the fact that only once the truss was in place was the TrussSpacer swung into position and applied to the other truss. The applicant noted that the installation instructions for the TrussSpacer product on the MiTek website (an archived copy of which was exhibit EEM-4 of Maartensz), stated (my comments in italics):
“1.Fix TrussSpacer to truss at one side of apex and at maximum spacing of 3000mm along top chords prior to lifting trusses. This should be done with the TrussSpacer located firmly along the chord edge parallel to the truss as shown in Figure 1 (figure 1 showing orientations of the TrussSpacer with respect to the top chord of a roof truss essentially the same as that shown in the left hand figure of [80] above). Make sure the vertical leg of the TrussSpacer (i.e. the “hook”) is on the face of the truss which will face the installer when on the roof.
2.When lifting the truss into position on the roof the vertical leg of the TrussSpacer should be facing the previously installed truss. The TrussSpacer can now be rotated 90° and temporarily hooked onto the previously installed truss.
3.Complete the fixing of TrussSpacer by hammering preformed teeth into the chord of adjacent previously braced truss (figure 2).” (figure 2 being essentially the same as the right hand figure in [80] above)
The applicant also highlighted that, as a side of the TrussSpacer rested on the chord, the angle prevented the teeth of the TrussSpacer grabbing the surface of that top chord during installation (as seen in the left-hand figure of [80] above).
Consideration
Regardless of whether the TrussSpacer product is CGK or not, I do not believe that the opponent has established their case.
In my opinion, even assuming that the previously installed truss could be said to “support” the subsequently installed truss, the evidence does not establish, at the very least, that the “exposed tip” of any individual tooth is received into a surface of the other truss so as to preclude translational displacement of the just-placed truss in a plane parallel to the surface that received the exposed tip.
The opponent noted the evidence of Mr Wallace which states:
“… the gang nails are quite sharp and they may grab the surface of the timber. Trusses are commonly made from a soft wood, so the sharp end of the TrussSpacer can go into the wood surface a little bit.”[44]
I note the use of “may” in this passage. I also note that elsewhere, when describing the use of the TrussSpacer, Mr Wallace states:
“In use:
a.      the plate is positioned over a timber member (e.g. top of a top chord, or top of a bottom chord) of a first truss;
b.     a fastener, i.e. a nail, is received within the aperture and driven into the member to secure an end of the strip to the first truss;
c.      once attached to the first truss, the entire strip can be swung relative to the nail so that the hook is arranged around a member (top of a top chord, or top of a bottom chord) of the second truss; and
d.     the inwardly facing gang nails of the second hooked end can then, optionally, be driven into the member of the second truss using a hammer.”[45] (my emphasis)
[44] Wallace at [39]
[45] Ibid at [37]
To my mind, given the fact that step “d” requires the nails being driven in, this evidence does not establish that it was a given that the exposed tips of the gang nails would be received into, and “grab” a surface. There are also the applicant’s points that (i) the angle of the TrussSpacer makes it unlikely for there to be any contact between the teeth of the spacer and the truss that the TrussSpacer is rotated towards and (ii) if penetration happens, it happens after the truss has been positioned, not during.
Moreover, even if it was accepted that “grabbing” occurred, the evidence does not establish that translational displacement would be precluded. In this regard, the opponent referred to the evidence of Mr Wallace, where he stated:
“I believe the TrussSpacer can also preclude translational displacement. The hooked end can preclude translational displacement.”[46]
[46] Ibid at [134]
This point about preventing translational displacement is not expanded upon. To my mind, it is not clear how the arrangement of elements prior to driving the gang nails fully into the relevant surface (i.e. prior to step “d” above), would preclude all displacement parallel to a particular surface. Assuming the plane in question is parallel to the top surface of the bottom chord of a truss, it could be said that a spacer would prevent the movement of one truss directly towards another. However, given the fact that the TrussSpacer is rotatable about the nail attaching it to a truss, I cannot see how movement of a truss parallel to another truss (which is a movement which would also be parallel to the surface of a bottom chord) is prevented with the TrussSpacer. As the truss is moved, the TrussSpacer would rotate. The movement may well be modest, but, in my opinion, it would be “translational displacement”. The diagrams in BW-4 and BW-5 do not assist in establishing anything to the contrary.
AU 628834 (D1)
D1 discloses the use of a specifically shaped fastener in a nailed joint. One embodiment of the fastener and its use with respect to trusses is shown in Figures 1, 3 and 5:
The fastener 10 (50 in Figure 5) has two spikes 17, 18 (51 in Figure 5) with a connecting stem 11, 12, 13 (52 in Figure 5) between them. The angles between the various parts of the fastener that are shown “can be varied to suit the particular application”.[47] Figure 5 of D1 shows the fastener 50 (with a slightly different set of angles) in a position connecting an element 55 of a truss with another member 54 of the building frame.
[47] D1 at page 5, line 25
Opponent’s submissions
The opponent submitted that the connection between truss element 55 and the other member 54 occurred when the “primary or lower spike (51) which is hammered into the truss (55) and a secondary or upper spike (51) which is hammered into the roof support (54) after the truss (55) has been raised and located in abutment therewith”[48] (noting that what the opponent refers to in this passage of their submissions as the “lower spike” is shown above the “upper spike” in Figure 5).
[48] Opponent’s written submissions at [114]
The opponent submitted that it was inherent that, as the truss was positioned on top of the other member 54, “the upper spike (51) would at least partially penetrate into the roof support (54) in the manner of the claimed invention.”[49] The opponent noted that Mr Hull did not consider D1 disclosed the connection of a truss to a “second structural component” as it was not clear whether items 53 and 55 in Figure 5 formed part of a truss. The opponent also noted that Mr Hull was of the opinion that the fasteners of D1 were not “pre-applied”. Nevertheless, the opponent submitted that, even accepting Mr Hull’s observations to be the case, it would have been obvious to the PSA that the fastener 50 would be suitable for use in the installation of trusses to other structural components, and that the fasteners could be pre-applied prior to installation.
[49] Ibid at [115]
Applicant’s submissions

The applicant submitted that there were multiple differences between the claimed invention and D1. As with my discussion of the TrussSpacer product, given my conclusion below, I will only set out what I consider to be the applicant’s main points, as it is not necessary that I set out all of the differences submitted by the applicant.
The applicant made a number of points relying upon Hall at [55]. This paragraph states:
“D1 discloses a particular type of fastener used to form a connection between two components. D1 does not, however, disclose the use of this fastener in the context of connecting a truss to a second structural component. DCC specifically asked me to consider whether Figure 5 of D1 discloses the connection of a ‘truss’ to a ‘second structural component’ within the meaning of claim 1. I do not consider that it does. The description of Figure 5 describes a version of the disclosed fastener which is longer, enabling it to span an ‘intermediate member’ (item 53) and connect together two ‘members’ (items 54 and 55). It is not clear to me that the intermediate member and the member identified as item 55 have been connected together to form a truss, and it has not been described anywhere in D1 as being a truss. Instead, item 55 could be a rafter and the intermediate member could be a beam. Further, even if items 53 and 55 did form a truss, these components appear to be connected to a ceiling batten (item 54) and not a relevant structural component within the meaning of claim 1. A ceiling batten is used to form a point from which, for example, a gyprock ceiling can be hung. It does not, however, contribute to the overall structural integrity of the timber frame and it does not support the ‘truss’ (if any). In fact, the truss (if any) would support the weight of the ceiling batten. Further, the ceiling batten is not ‘in situ’ at the time of positioning the ‘truss’ (if any) which would need to have been permanently fixed by the time the ceiling batten is installed. Finally, the ‘truss’ (if any) would not be positioned ‘relative’ to the ceiling batten – all being requirements of the second component as set out in claim 1.”
As such, the applicant’s points were that:
(i)it was not clear if item 55 was a truss, or if the members of Figure 5 were in the same plane;
(ii)item 54 appeared to be a ceiling batten, which is not a structural frame member;
(iii)a ceiling batten, by its nature, would not be in situ at the time of positioning the truss, so the truss could not be positioned relative to it.
The applicant also submitted that there was nothing in D1 to suggest that the fastener was pre-applied. The applicant referred to the discussion of Figure 1 in D1 which stated (inter alia):
“… connectors 10 of the present invention may be used to secure together timber members 8 and 9 butted together at right angles to one another”[50],
which, in the applicant’s opinion, established that the elements were in position before the fasteners were applied and driven into the elements.
[50] D1 at page 5 lines 15–17
The applicant further submitted that, if the truss were attached to a ceiling batten, the batten would move with the truss and, therefore, there would be no opportunity for the truss to move relative to the batten and, therefore, there would be no translational displacement to preclude. Finally, the applicant submitted that, assuming that there was penetration and it precluded translational displacement, D1 did not disclose an equivalent to the claimed subsequent “driving” step. In the applicant’s submission, as D1 taught driving the fasteners in, there was no need for a further driving step.
Consideration
The opponent has not made out its case.
When discussing the installation of the fastener, D1 states (inter alia):
“… the acute angle formed between the primary spike 17 and the end part 12 provides a knuckle 23 which may be easily struck by a hammer as indicated at 24 to drive the spike 17 into the lower timber member…
… when the spike 17 enters the timber member 9 substantially at right angles to the side face 15, the knee portion 25 of the stem will contact the upper corner of the timber member prior to the spike 17 being driven to the fully home position. After contact between the knee portion 25 and the corner 26 occurs, further hammering of the spike 17 will cause the lower end part 12 of the stem 11 to deflect resiliently to enable the lower end part 12 to move inwardly and lie flush against the side face 15. This resilient deflection will maintain a clamp-like grip about the timber member 9 between the knee portion 25 and the spike 17 which will maintain the connection 10 in an operative engaged attitude about the corner of the member 9.
After the primary spike 17 has been hammered into the member 9 the hammer blows may be directed to the knuckle 29 at the upper end of the stem to spike junction to drive the secondary spike 18 into the timber member 8.
… the action of hammering the secondary spike 18 into the side face 16 will draw the timber member 8 downwardly into firm engagement with the timber member 9 as the knuckle 29 is drawn to the initial point of penetration.”[51]
[51] Ibid at page 6 line 19 to page 8 line 7
There is no discussion of pre-application of the fasteners, or partial penetration prior to hammering the fastener into the timber members.
Furthermore, I cannot see anything that establishes that it would be inherent that any spike of the fastener 50 shown in Figure 5 of D1 would penetrate either member 54, 55 during the positioning. The total discussion of Figure 5 in D1 is as follows:
“Fig 5 illustrates the use of a connector 50 which is similar to the connector 10 in configuration in relation to the relationship between the spikes 51 and the stem 52, however the stem 52 is longer to enable it to span an intermediate member 53 and connect together the members 54 and 55.”[52]
[52] Ibid at page 9 lines 4–9
The opponent referred to [155] and [156] of Wallace. However, like my discussion with respect to D2, I cannot find any support for the opponent’s position there. Those paragraphs state:
“I was asked whether the fasteners are constructed in a way that would preclude translational displacement when the exposed tip end of the D1 fastener drops onto the surface of the second structural component. It would be possible depending on the force the second end of the D1 fastener strikes the second structural component.
Positioning the second end of the D1 fastener onto the second structural component could result in the exposed tip slightly penetrating the surface of the second structural component. When pairs of connectors 10 are used as shown in Figures 1 and 2, this can create an arrangement before one end of each connector is tapped into the second structural component that would provide some resistance to movement as a spike from a connector is on either side of the second structural component. However, the degree to which the connector 10 precludes translational displacement is largely dependent on skill of the installer.”
With respect to the first paragraph, and assuming that:
(i) item 55 of D1 is a truss; and
(ii) the fastener 50 is pre-applied to this truss,
I do not see any disclosure in D1 of the installation process of dropping this truss onto the second component 54. There is no discussion of the exposed tips of the fastener 50 dropping onto the second component 54. In addition, based on the question posed to Mr. Wallace in [155] and assuming there is vertical dropping, as is clear from Figure 5 the spikes 51 of the fastener 50 extend horizontally. They cannot “strike” the second component unless the fastener pivots under its weight when the truss is lowered onto second component 54 from an “open” position, where the fastener is biased to the right of Figure 5 above, to a “closed” position, when the spike penetrates item 54 with sufficient force. However, this is all speculation on my part and such detail is not disclosed in D1. Instead, at best, tip of the fastener might “scrape” along a surface, but this action does not establish that translational displacement would be precluded.
With respect to the second paragraph, a similar observation applies. The generally horizontal orientation of the spikes 17, 18 of the fastener 10 does not establish that penetration would occur. Moreover, it is not clear whether “provide some resistance to movement” as stated by Mr Wallace is the same as “preclude translational displacement” of the claim.
Conclusion – inventive step
The opponent has not established its case. On the evidence before me, I cannot find that the claims lack an inventive step.
Utility
Section 18(1)(c) of the Act requires that the invention (so far as claimed) is useful. Section 7A provides the definition for “useful”. The principles of utility have been summarised by the Full Court of the Federal Court in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd:
“The ‘basic principle’ of inutility is that if an invention ‘does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention’. What the invention is ‘intended’ to do is a matter to be gathered from ‘title and the whole of the specification’.
Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee? Further, ‘everything’ that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee.”[53]
[53] [2016] FCAFC 29 at [120]-[121] (with references omitted)
I also note Apotex Pty Ltd v AstraZeneca AB (No 4) where Jagot J pointed out that lack of utility requires evidence, not just speculation:
“Ultimately, an asserted lack of utility must be established by appropriate evidence, not be mere speculation that the invention will not work or meet the promise set out in the specification.”[54]
[54] [2013] FCA 162 at [352]
Opponent’s submissions
The opponent proposed two approaches for utility.
Firstly, the opponent submitted that, based upon their stance that the positioning step could only use the weight of the truss to achieve the required result, the evidence established that merely positioning the truss relative to the second component would not necessarily cause the exposed tip of the fastener(s) carried by one member to penetrate the surface of the other member enough to prevent translational displacement. The opponent noted that, if translational displacement was not precluded, the invention would not work. The opponent submitted that the claims did not (i) limit the truss to any particular size or weight, (ii) limit the fastener(s) to any particular type or (iii) limit the orientation or number of fasteners. The opponent also noted that Mr Wallace and Mr O’Neill believed the act of positioning the truss onto the top plate would not cause the exposed tip to go in far enough by weight alone to preclude translational displacement. Both believed a knocking in step was required to embed the fastener enough to prevent displacement. The opponent submitted that Mr Hull also accepted that weight alone would not always be enough. As such, since, in the opponent’s opinion, the claims included within their scope methods in which simply “positioning” the truss would be insufficient to cause the exposed tip of the fastener(s) to penetrate the surface of the other member, translational displacement was not precluded and, therefore, the invention would not work and lacked utility.
The second approach taken by the opponent was to submit that, because the claims included within their scope fasteners which were pre-applied to the structural component at angles which are not perpendicular to the surface of the other component to be penetrated (see, for example, Figure 2A above), then, “if a gap remains between the two components after the positioning and the fastener is inserted at an angle, then the first component will be displaced horizontally relative to the second component during the driving.”[55] As clarified at the hearing, with an angled fastener there would clearly be a horizontal offset between the spot where the fastener touches (and initially penetrates) the wall frame 20 and the spot at which the fastener tip exits the truss 10. Those spots must meet at some point in time during assembly. Therefore, there would be translational displacement parallel to the surface.
[55] Opponent’s written submissions at [62]
Applicant’s submissions
The applicant submitted the basis for the opponent’s first argument – that the positioning step could only use the weight of the truss – ignored the description and, consequently, the opponent’s criticism that the claims did not limit the truss to any particular size or weight, or the fastener(s) to any particular orientation, or number, was incorrect. In any event, the applicant submitted that the opponent’s contention that penetration would not occur under the weight of the truss was speculation.
The applicant submitted that the opponent’s second argument was not sustainable. They submitted that it was agreed that the task of installing temporary fixings was generally given to experienced installers. In the applicant’s submissions, an experienced installer would not leave a gap.
Consideration
Ultimately, this ground is settled by my construction of the term “positioning” above. As I have said, the truss is “positioned” when it has reached a location whereby no translational displacement can occur, regardless of any other action carried out. Whether this position leaves a gap between the two components is irrelevant. As translational displacement has been precluded, then the opponent’s second approach is not sustainable. The claims can never include within their scope an instance where this displacement occurs after “positioning”.
I also mention as an aside that the claims require the positioning step to result in the requisite penetration of a component by the exposed tip. As such, even if “positioning” meant only using the weight of the truss to achieve penetration, if that positioning (using weight) did not result in penetration, then the claim would not have been performed. In that case, the question of whether the claim has utility is moot.
Conclusion – utility
The opponent has not established its case. I cannot find that the claims lack utility.
Subsection 40(3) – support
Subsection 40(3) of the Act requires that the claim must be supported by matter disclosed in the specification. At the heart of this consideration is the principle that the “extent of the patent monopoly, as defined by the claim, should correspond to the technical contribution to the art in order for it to be supported, or justified.”[56]
[56] EXXON/Fuel Oils (T409/91) [1994] OJ EPO 653.
In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3), Burley J explored the requirement of support:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed.”[57]
[57] [2020] FCA 1477 (Merck) at [546]-[547]
In CSR Building Products Limited v United States Gypsum Company[58] that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description:
·Construe the claims to determine the scope of the invention as claimed,
·Construe the description to determine the technical contribution to the art, and
·Decide whether the claims are supported by the technical contribution to the art.
[58] [2015] APO 72 (CSR)
Opponent’s submissions
The opponent submitted that the technical contribution of the application could be characterised as:
“… providing a method (and a component suitable for performing the method) in which positioning the first component achieves a temporary fixing using the exposed tip of one or more pre-applied fasteners, and where permanent fixing can be achieved by driving in such fasteners.”[59]
[59] Opponent’s written submissions at [74]
In the opponent’s submission, claim 1 required the exposed tip of the fastener to penetrate the relevant surface only by “positioning”. The opponent submitted that the evidence showed that the weight of the truss would, in some situations, not cause this penetration to occur to sufficient depth. In the opponent’s view, it was clear that knocking in may be required after positioning to ensure adequate penetration. As such, as the claims did not have the necessary technical features to ensure knocking in was not required, the claims lacked support.
The opponent noted that variables such as the size and weight of the truss, the angle of the fastener(s), the number of fasteners, and the particular characteristics of the fastener(s) (including, for example, whether the fasteners had pointy tips or blunt tips) were all factors that determined whether penetration occurred at positioning. The opponent submitted that the specification did not teach anything about the features of the components selected for use in the method, and did not provide any guidance on how to perform the method. The opponent noted that, for example, there was no teaching of the height from which the truss needed to be dropped to ensure penetration where the positioning is affected vertically, or no teaching of how to avoid translational displacement during the driving step when the fastener was at an angle to the surface it was being driven into.
In the opponent’s opinion, the claims were not limited to configurations in which the “positioning” step would always result in sufficient penetration of the fastener to preclude translational displacement. Instead, the opponent submitted that the application disclosed merely a concept, instead of a principle of general application which would allow the PSA to work the invention over the scope of the claims using any type of truss, any type of fastener, or a truss with a fastener pre-applied at any angle without a process of prolonged research, enquiry and experiment.
The opponent further submitted that the only guidance on fasteners was the very specific fastener disclosed by Figure 8 (above). In the opponent’s opinion, assuming this was the fastener that achieved the required results, then the claims, by not being limited to any particular fastener, went well beyond the disclosure.
The opponent also submitted that, assuming a knocking in step was part of the “positioning” required by the claims, because the fastener did not sufficiently penetrate the second component when the first component was dropped down, then the invention as claimed was materially different to the invention disclosed.
Applicant’s submissions

The applicant submitted that there was no expert evidence supporting the opponent’s statement of the technical contribution to the art. The applicant also submitted that, moreover, the experts did not suggest that the claims exceeded the scope of the disclosure. Contrary to the opponent’s position, the applicant submitted that the claim did not require merely positioning of the truss (using the interpretation of “positioning” used by the opponent) to cause the exposed tip of the fastener to penetrate the other component. Rather, the claim required that the truss be positioned so that the exposed tip of the fastener penetrated the second component, and this positioning could include knocking in.
Consideration
As with the ground of utility, this ground is settled by my construction of the term “positioning” above. On my construction, the positioning step results in the exposed tip of the fastener penetrating the other component to enough of an extent to preclude translational displacement, regardless of what other actions may be performed subsequent to this step. The positioning (as I have construed that term) of the truss achieves a temporary fixing due to adequate penetration of the exposed tip of the pre-applied fastener(s), and, hence, driving in the fastener(s) achieves permanent fixing. It follows that the claimed invention is commensurate with the technical contribution identified by the opponent at [124] above (whether supported by evidence or not).
Consequently, the technical problems identified by the opponent during the hearing of:
(i) inadequate penetration of the fastener during positioning;
(ii)lateral displacement during the driving step when using an angled fastener;
(iii)a possible “jacking effect” if the fastener has a screw thread and the fastener is not embedded far enough into the second component so that its threads can “bite in”; and
(iv)the types of fasteners to be used,
do not arise. If translational displacement is permitted to occur after the positioning step, then that “invention” (whomever is practising it), which is materially different to the invention disclosed, is not captured by the claim.
Conclusion – support
It follows that this ground has not been made out. I do not find that the claims are unsupported.
Conclusion
The opponent has not discharged their onus. The opposition is unsuccessful. Subject to appeal, I will direct that the application proceed to grant.
Costs
It is usual in matters before the Commissioner that costs should follow the event and I see no reason to depart from this approach. The opponent has been unsuccessful in this matter, and therefore I will award costs according to Schedule 8 against the opponent.
Greg Powell
Delegate of the Commissioner of Patents
Annex
1.        A method of assembling, in the construction of a timber frame building, a building structure in which a first structural component, in the form of a truss, is connected to a second structural component such that the first structural component is supported by the second structural component in the building structure, the method comprising:
when the second structural component is in situ, positioning the first component relative to the second component whereby an exposed tip of at least one fastener which has been pre-applied to one of the components before installation penetrates a timber member which the other component comprises, so as to be received into a surface of the other component, the surface being defined by said member, to preclude translational displacement of the first component in a plane parallel to the surface; and
thereafter driving the or each fastener into the said other component to fix the components together.
2.        A method according to claim 1, wherein the or each fastener is pre-applied to the first component whereby said surface is a surface of the second component.
3.        A method according to claim 1 or claim 2, wherein the positioning of the first component comprises lowering the first component and the or each tip is arranged so as to project from the first component in a direction having a downward component or to project from the second component in a direction having an upward component, so as to be received into the surface as a result of the lowering.
4.        A method according to any one of the preceding claims, wherein the positioning of the first component comprises moving it sideways and the or each tip is arranged so as to project in a direction having a sideways component, so as to be received into said surface as a result of the sideways movement of the first component.
5.        A method according to any one of the preceding claims, wherein the positioning of the first component comprises tilting or rotation of the first component whereby the receipt of the or each tip into said surface is effected.
6.        A method according to claim 5, wherein the tilting or rotation of the first component is about a generally horizontal axis.
7.        A method according to claim 5 or claim 6, wherein the first component rests against the second component during the tilting or rotation thereof.
8.        A method according to any one of the preceding claims, wherein the or each fastener is applied to said one of the components in a manner such that it passes through said one of the components.
9.        A method according to any one of the preceding claims, wherein the or each fastener is threaded and the driving thereof into said other component comprises screwing it into said other component.
10.      A method according to claim 9, wherein the or each fastener taps the other component during screwing thereof into said other component.
11.      A method according to claim 9 or claim 10, wherein the driving of the or each fastener comprises, before the screwing thereof, knocking or hammering it such that the tip thereof is at least partially embedded in said other component.
12.      A method according to any one of the preceding claims, wherein the or each fastener comprises a nail and the driving thereof into said other component comprises knocking it into said other component.
13.      A method according to any one of the preceding claims, wherein the or each fastener is applied to said one of the components such that the tip thereof protrudes from a surface of said one of the components which is to abut said surface of said other component in the building structure.
14.      A method according to any one of the preceding claims, wherein the truss is a roof truss.
15.      A method according to claim 14, wherein said member of the truss is a bottom chord or a top chord of the truss.
16.      A method according to any one of the preceding claims, wherein the second component comprises a wall structure.
17.      A method according to claim 16, wherein the wall structure comprises a frame having a top plate defining said surface.
18.      A method according to any one of claims 1 to 15, wherein the second component comprises a truss.
19.      A method according to any one of the preceding claims, wherein the or each fastener comprises a shaft, which is driven into said other component when the components are fixed together, and a narrow leading end portion, on which said tip is defined, which is narrower than said shaft and which is received into the surface when said tip is received into the surface, the narrow leading end portion having an exterior face extending around it which is generally parallel to a longitudinal axis of the fastener, whereby, when said portion has been received into the surface, loading on the fastener which is perpendicular to said axis forces said exterior face against material in said other component such that there is little or no force component parallel to the axis exerted on the fastener or other component resulting from the loading.
20.      A method according to any one of the preceding claims, wherein said tip is pointy, or convergent in a direction from a trailing end of the fastener to a leading end of the fastener, whereby receipt thereof into the surface is facilitated.
21.      A method according to any one of the preceding claims, including positioning the first component whereby, at a location remote from said fastener(s), an exposed tip of at least one further fastener applied to one of the first component and another structural component which is to form part of the building structure is received into a surface of the other of those two components or into a recess in that surface, such that it precludes translational displacement of the first component in a plane parallel to that surface, and thereafter driving the or each fastener into said other of said two components to fix said two components together.
22.      A method according to claim 21, wherein said other structural component is said second component.
23.      A truss or component, for use as that in a method according to any one of the preceding claims, to which truss or component said at least one fastener is pre-applied.