Glenwood Systems Pty. Ltd v Andrew Laurence Gooden

[1993] APO 23

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 571435 in the name of GLENWOOD SYSTEMS PTY. LTD.

Title:    PLAY STRUCTURE

Action:    S.59 opposition by ANDREW LAURENCE GOODEN; hearings.

Decision:    Issued            .  Grounds of opposition established; standard of proof; 6 claims not novel; opportunity given for applicant to propose amendments.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 571435 by GLENWOOD SYSTEMS PTY. LTD. and opposition under S.59 of the Patents Act 1952 by ANDREW LAURENCE GOODEN.

background

Application No. 571435, for a patent for an invention relating to a children's play structure, comprises a complete specification lodged on 3 March 1983 with priority claimed from a provisional specification lodged on 4 March 1982.  The application was advertised accepted on 21 April 1988 and opposed on 10 May 1988, and the matter was first heard in Canberra on 26 June 1992; the applicant was represented by Mr G. Noonan and Ms Karen Yeilds, patent attorneys, and the opponent, who attended the hearing, was represented by Mr H. Schulze, patent attorney.

On 10 July 1992 the opponent applied for special leave to adduce further evidence, on 19 October 1992 I indicated in letters to both parties that I granted the special leave and on 24 November 1992 I issued a written decision relating thereto. The patent applicant then indicated that it wished to be further heard on the opposition (relating to the further evidence), so a second hearing was held in Canberra on 17 March 1993; the applicant was represented by Mr Noonan, and Mr Schulze filed written submissions.

THE SPECIFICATION

The specification indicates that the invention relates to an outdoor play structure typically erected in public parks, school playgrounds and the like.  The specification indicates that the prior art is unsatisfactory because horizontal rail components are mounted in holes in vertical post components thus requiring drilling of the posts and resulting in a lack of versatility in the height of horizontal components.  The invention thus provides versatility by using a clamping arrangement instead of holes in the posts.  There are 12 claims defining the invention; some are as follows;

1. A play structure comprising multiple, spaced, generally tubular elongate uprights secured to the ground, and plural horizontally extending elongate members, and provided with plural play accessories selected from the group comprising slides, swings, rollerslides, tunnels, upright panels and climbing chains, which horizontally extending members are of substantially smaller diameter than the uprights and are each connected to at least two of said uprights by respective mounting means which each include a clamping ring extending about the upright, each said clamping ring comprising an assembled pair of semi-annular portions arranged to be clamped to the respective upright at a fixed location but being slideable along the respective upright for mounting the horizontally extending members at different selectable heights.

1. A play structure according to claim 1 wherein said horizontally extending members are rods.

1. A play structure according to claim 1 or 2 further including platforms supported by said horizontally extending members.

1. A play structure according to any preceding claim wherein said clamping rings are discrete units secured to the horizontally extending members by way of respective male-female couplings therebetween.

1. A play structure according to claim 4 wherein said clamping rings are two-part clamping rings and the female part of each male-female coupling comprises a collar formed integrally in the body of one of said parts of a respective said clamping ring to receive the respective horizontally extending member so that it extends in a direction past the upright, each clamping ring further including means to disengagably retain said collar and retaining means are such as to allow adjustment of the axial position of the member in the collar.

1. A play structure according to any one of claims 1 to 4 wherein the clamping ring comprises a pair of semi-annular portions with abutting flanges having registering apertures for bolting the flanges together to assemble the ring.

1. A play structure according to claims 2 and 4 wherein said platforms each include a plurality of wooden planks assembled on a pair of said rods, which pass through the planks in turn and project from the first and last planks.

1. A play structure according to any preceding claim wherein said uprights are metal tubes of uniform height and of external circular cross-section.

1. A play structure according to any preceding claim wherein said clamping ring for at least one of said horizontal extending members comprises a concave formation on each end of the member and respective semi-annular flanged members secured to the concave formations.

GROUNDS OF OPPOSITION;  THE EVIDENCE

The opponent's notice of opposition referred to paragraphs (e) and (g) to (i) of sub-section 59(1) of the 1952 Act, and all these grounds were pursued at the hearing.

The evidence-in-support is summarized as follows:

.A first declaration by Pamela Jane Young (undated) and exhibit PJY1.  The exhibit comprises two copies of photographs of a piece of playground equipment.  The declarant states that she is the principal of Renmark Junior Primary School and inter alia that the equipment has been installed in the grounds at her school for at least fifteen years.

.Two declarations by Mr Schulze, dated 20 October 1988 and 24 October 1988.  The latter, with colour photograph exhibits HKS1 to HKS 13, discusses and shows the Renmark Primary School equipment in some detail.  Mr Schulze declares that he is a professional engineer and is thus qualified to comment on the structural details of the equipment.  The equipment has the following features:

.A generally orthogonal open framework of galvanized metal pipes.

.4 vertical "posts" in the corners of the framework.

.Horizontal "bars" connecting the posts, the bars being of smaller diameter than the posts and being of 2 types:

(i)relatively larger diameter bars held to the posts by clamping devices, and

(ii)relatively smaller diameter bars welded to the posts.

.A set of used car tyres attached to one bar and extending to the ground.

.Other evidence shows that the abovesaid clamping devices are known as DOWN-EE clamps; commonly used in wire fencing and scaffolding.  (DOWN-EE is a Registered Trade Mark).  The two-part clamps are shown clamped to the posts and bolted to the relatively larger type horizontal bars.

.A declaration by Edward Grantley Telfer, dated 30 March 1989.  Mr Telfer, an engineer, has experience building playground equipment in South Australia and Victoria.  He declares that most of the playground equipment he constructed "involved welding tubes together", however, he had sometimes used clamps of the two-part DOWN-EE type.  He suggests that clamps were not used more often because of their cost, but nevertheless, he states that he was well aware that such clamps were being used in playground equipment in March 1982 and that such use was "an ordinary readily available engineering technique that persons such as myself would normally expect to be able to use in the construction of equipment of this type".

The evidence-in-answer is summarized as follows.

.A declaration by Lindsay Neil Simmons, dated 21 May 1990.  Mr Simmons, a retired engineer experienced in the installation of outdoor council playgrounds, declares that after many problems had been discovered with wooden playground structures, he "was aware of a perceived need to return to metal pipes as the building material...and of conventional wisdom in this field being firmly wedded to bolting, riveting and welding...".  Thus he was impressed when Glenwood's equipment became available, in paragraph 8 of his declaration he states:

"However, from an engineering standpoint, it was also a revolutionary playground in two other important respects.  Firstly, (a) the playground frame used as its upright supports metal tubes of a diameter which was substantially larger than (i) the horizontal components of the frame, and (ii) the usual pipe widely employed during the earlier "metal era".  Secondly, (b) the playground frame components - the large diameter uprights and the small diameter horizontals - were coupled by simple clamp units which did not need fastener holes in the uprights and could therefore be set at any selected height, and adjusted subsequently".

He suggests that the invention was effective "because the relatively larger circumference of the uprights optimised the interface/grip area at the clamps", thus eliminating the need for diagonal struts, welding or predrilled holes.  He also suggests that the applicant's clamps are "big enough" to allow the smaller diameter horizontals to be secured in integral collars on the clamp halves, whereas arrangements using DOWN-EE clamps "require double clamps, i.e. interlocked separate clamp units for the uprights and horizontals".  Mr Simmons declares that the invention was not obvious, eg in paragraph 17 of his declaration he states:

"The older style of metal tube playground was somewhat like scaffolding in its visual impact and it may be that one aspect of [the applicant's] innovative thinking was to break the thinking in metal playgrounds away from the scaffolding influence".

.Mr Simmons' comments were generally supported in declarations from:

.David Field Showers, managing director of Glenwood,

.Kenneth Bryan Trafford, a retired parks and gardens superintendent, and

.Peter Desmond Jones, a retired parks and recreation director.

Mr Jones declares that he had "considered that DOWN-EE clamps were not entirely suitable for playground equipment as they had protruding bolts and were generally coarse and ragged, thus presenting a safety hazard, especially to lightly clad children in beach resort areas".

.The Simmons and Showers declarations contain references to sales of the applicant's equipment after March 1982, so it is important to establish the correct priority date for the applicant's invention.

The evidence-in-reply can be summarized as follows.

.Another declaration from Mr Schulze, dated 5 April 1991, in which he disputes the applicant's entitlement to its claimed priority date.

.Declarations from Carolyn Jane Spooner and Tony Miers.  Accompanying exhibits are copies of book articles on older style tubular playground equipment.

.A declaration from John Russell Grealy, dated 17 December 1991.  Mr Grealy, managing director of a firm of playground equipment consultants, with some experience in engineering, declares that:

1. It is common engineering practice to use a clamp arrangement to allow for adjustment of position of the clamped members.

1. The combination of claim 1 of the applicant's specification would have been obvious to him on 5 March 1982.

1. There is no significance in having the horizontal members substantially smaller than the uprights since each would be chosen to achieve a particular result; paragraphs 17 and 18 of his declaration read as follows:

"17.THAT the diameter of any upright pipes were selected to my certain knowledge before the 5th March 1982 so that they would be sufficiently rigid to limit bending in the event of substantial sideways rocking being caused by children playing on the equipment.  At the same time, horizontal members would be selected to provide a support for any of the equipment or a platform, but at the same time connect between two of the uprights and to achieve this without being easily fractured or in the case of children jumping on platforms or other equipment, being unrealistically distorted.

18.THAT there would appear to be no necessary nexus between the selection of diameters of the upright as compared to the horizontal".

The further evidence filed on 10 July 1992 comprises a second declaration by Pamela Jane Young, dated 2 July 1992, accompanied by a copy of her first (undated) declaration, marked PJY1. In paragraph 3 of the second declaration she declares:

"That the piece of playground equipment referred to in my Statutory Declaration PJY1 as attached hereto and identified by the two photographs in the declaration Exhibit PJY1 is the actual piece of playground equipment that was installed in my school, Renmark Junior Primary School, before 1980 and this equipment was in this form which is to say, the equipment as shown included two horizontally extending pipes which are joined by a clamp at each end to uprights secured in the ground and one of which has car tyres hanging from it, before 1980 and has not been changed since that time so the photographs accurately represent that which existed since before 1980."

The patent applicant did not file any evidence-in-reply to the opponent's further evidence.

STANDARD OF PROOF

The main issue of the second hearing was the probative value of
the second Young declaration. Mr Schulze's submissions on this issue can be summarized as follows:

.The applicant was "aware of the evidence the subject of the Young declaration" prior to the first hearing and "was able on its own behalf to investigate all of the circumstances surrounding that evidence including, if they wished, to interview the person making that declaration...They did not do so and we submit that this was simply because the evidence was clearly substantive..."

Mr Noonan's submissions on the issue can be summarized as follows:

.Specifically, the issue is whether the playground equipment existed in its present form at the priority date of the applicant's claims; the existence of the playground equipment is not disputed.

.The evidence is not corroborated; for example by school records or by another person such as a member of the school council or somebody involved in the erection of the playground. He referred me to two Patent Office decisions:

Graf & Ors. v Millward-Bason  18 IPR 566,

A & K Aluminium v Lidco  18 IPR 597

.Since the onus is on the opponent to prove his case, it is not encumbent on the applicant to check this evidence; also, it was difficult to prove the contrary. Mr Noonan stated:

"If a person states erroneously or untruthfully that `X' happened before a given date ten years ago, then no amount of investigation may need necessarily be able to prove that that is not so..."

"In this case to investigate whether or not the events took place before the priority date would have involved extensive interviewing and research, in the town concerned in South Australia, to try and find someone else who might actually be able to say that what was said in the declaration didn't take place."

Patent law relating to standard of proof is usually derived from British cases Seiller's Application [1970] RPC 103, Laguerre's Patent [1970] RPC 587 and Dunlop Holdings Ltd's Application [1979] RPC 523, and from the Patent Office decision Jarvis v Doman (1984) 3 IPR 300. In these cases it was found that evidence from one witness was corroborated by another witness or by documentary evidence. However, it is also significant that in these cases the witness or witnesses generally had some association with the opponent. The matter of probative value of evidence of one independent witness was not fully dealt with.

In the circumstances before me, I have Ms Young's declaration indicating that the Renmark Primary School playground equipment was erected sometime before the priority date of the applicant's claims, and I do not have any contradictory evidence from the applicant. The applicant's submissions, relating to it not being practicable to obtain contradictory evidence, I find rather unconvincing; an investigation of some kind into the date of erection and modification of the playground equipment may have produced some pertinent information for the applicant. It seems that the applicant considered Ms Young's first declaration to be of low value and not worth putting resources into contradicting it. However, Mr Noonan submitted at the second hearing that Ms Young's second declaration did not suffer the alleged ambiguity problems of the first declaration. Also, I indicated in my earlier decision on the application for special leave that the evidence sought to be adduced was prima facie credible. Furthermore, I think there is some value in the fact that Ms Young's position as principal of the school is one of some responsibility and respect; and that she has properly made her declaration before a Justice of the Peace. All these facts suggest that it might have been appropriate for the applicant to give the second Young declaration its due weight.

The applicant had an opportunity at the further evidence-in-reply stage to reconsider the value of the second Young declaration, but chose again not to contradict that evidence. This apparent lack of will on the applicant's part suggests to me that the applicant may also consider the facts in the Young declaration to be prima facie credible.

Since the second Young declaration seems to be prima facie credible, I think the onus was on the applicant to contradict that evidence. If some contradiction had been provided, then the onus would have shifted back to the opponent to provide corroboration.   One matter that the applicant could have addressed is the status of the declarant; I have nothing before me for example to indicate whether or not Mr Gooden and Ms Young have some common interest. I note that the opponent's address is in Adelaide, a considerable distance from Renmark; this is of low value, but may suggest some independence of the declarant. Generally though, I have nothing before me to suggest that she is not an independent witness in the opposition.

I thus return to the case law referred to above and note again that none of the cases fully deal with the matter of the degree of corroboration of an independent witness or declarant. Some guidance is provided by the UK Court of Appeal in the Dunlop Holdings case, supra, where Waller, L.J. said: "The opponent's evidence, being unchallenged and uncontroverted, must be accepted at face value." This seems to be a reiteration of a more general rule of evidence as expounded for example in Cross on Evidence, 1970 Australian edition at 202:

"The general rule of the law of evidence is that the court may act upon the uncorroborated testimony of one witness, and such requirements as there are concerning a plurality of witnesses, or some other confirmation of individual testimony are exceptional."

The above mentioned cases also refer to the civil standard of proof and the balance of probabilities. In the present case I think the balance is in the opponent's favour: he has adduced an item of evidence which is prima facie credible and the applicant has not adduced any contradictory evidence. Thus I am of the view that the second Young declaration is of sufficient value to prove  that the photographs of the equipment in the Renmark Primary School, included in the exhibits accompanying the first Young declaration and the Schulze declaration of 24 October 1988, show the equipment as it existed since before 1980.

FAIR BASIS

At the first hearing Mr Schulze submitted that the claims of the complete specification are not fairly based on either the provisional specification or the complete specification as lodged because:

.There is no disclosure in the provisional of the relative sizes of the uprights and horizontal members.

.The said specifications suggest that the inventive concept is in the clamping arrangement.

.The significant feature of the claims is the horizontal members being substantially smaller than the uprights, and this was given no emphasis in the said specifications; thus the invention has "changed tack".  He referred me to the judgements in Mond Nickel Co. Ltd's Application [1956] RPC 189 and Coopers Animal Health Australia Ltd. v Western Stock Distributors Pty. Ltd. (1988) AIPC 90-491.

Mr Noonan submitted, inter alia, that the original specifications do disclose the relative difference in diameters of the horizontal and upright members, and that it is difficult to apply the Coopers v Western judgement in the present circumstances because that case related to a petty patent, to patentable "selection" considerations and to chemical technology, and none of these criteria are relevant to the present case.

On these matters, firstly I note that the original specifications (provisional and complete as lodged) refer to the horizontal members as "rods" and the vertical members as "posts":  with this terminology and with the original drawings and photographs clearly showing the relative sizes of the rods and posts, I am in no doubt that an addressee would construe the original specifications as disclosing a feature of the horizontal members being substantially smaller than the upright members.  Secondly, I think that in the light of the opponent's related prior art it could be argued that there is some change of emphasis in what might be the essential concept of the present invention, but there has been no real change of tack of the Coopers v Western ilk.  For example, the provisional specification suggests that it is the coupling unit which overcomes the problems of the prior art, but the coupling unit shown, in figure 3 for example, clearly allows for a much larger diameter for the post, in the split ring 22, than the diameter for the rod, in the width of the collar 24. Therefore I think the inventive concept relating to the relative diameters of the horizontal members and the uprights is disclosed in the original specifications.  Also in applying the criteria from the Coopers v Western case, there is no evidence of any "further experimentation" on the invention disclosed in the provisional to arrive at the invention claimed in the complete specification as accepted.  Taking all the above matters into account, I conclude that the accepted claims are fairly based on the provisional specification and the complete application as lodged, and that the applicant is entitled to a priority date of 4 March 1982.

OBVIOUSNESS

Mr Schulze submitted that the evidence shows that the use of DOWN-EE clamps in playground equipment was a matter of common general knowledge before the priority date, and that it would be obvious to select horizontal members of substantially smaller diameter than the uprights.  On the other hand, Mr Noonan submitted that even though DOWN-EE clamps were commonly used for other purposes, the evidence did not establish that it was common general knowledge that they were used in playground equipment.  He also emphasised the evidence which discussed the advantages of the applicant's invention, that it was a "breaking away from the scaffolding type of thinking", and that none of the evidence shows that the combination of features of the invention is obvious.

If the invention is to be considered as a non-obvious combination, the elements of the combination should be so placed together that by their working inter-relation they produce a new or improved result, and the inventor should have demonstrated a substantial exercise of inventive faculty by overcoming some difficulty in combining the elements of the invention. See for example: Williams v Nye (1887) 7 RPC 62 and Willman v Peterson (1904) 2 CLR 1.
Considering the present invention as a combination, I think the evidence of Messrs Telfer and Grealy does not carry sufficient more weight than that of Mr Simmons et al for me to conclude that no difficulties have been overcome in combining the features of the invention; and the invention does appear to have an improved result.

The alternative to considering the invention as a combination is to consider whether it is an improvement of the prior art. Upon such analysis the invention is obvious if the variation or "improvement" involves the mere application of common general knowledge by a person skilled in the art without exercise of inventive faculty or without any practical difficulties being overcome. See for example: Acme Bedsteads v Newlands Bros. (1929) 58 CLR 689 and Schwer v Fulham & Robinson (1910) 11 CLR 249.

It is convenient of course for applicants to argue that their invention is a true combination of known integers, because then their claims cannot be found invalid on the ground of a significant feature being a mere application of common general knowledge. It is fact however that many or even most inventions are an improvement of some kind over a similar prior art apparatus or method, and an invention where there is equal emphasis on all claimed features I would imagine is a rare animal in today's proliferation of technology. In this light I think it is important where possible that patent specifications describe the relevant prior art; see  Nelson V Hillmark [1991] AIPC 90-768, Sami Svendsen v Independent Products (1969) AOJP 647 and May v Higgins (1915) 21 CLR 119.

Generally though I think it is difficult to classify any invention the subject of a patent application as a combination or an improvement per se, since:

.most patent claims, at least in Australian applications, are worded as prima facie combinations, ie. the features of the claims seem to have equal weight, but

.most patent specifications describe the prior art and the relevant advantages of the invention, thus usually implying that the invention is in some way an improvement of the prior art.

Insofar as these classifications can apply to the present case, I think there is some doubt as to whether Glenwood's invention can be considered purely as a combination, as suggested by Mr Noonan. The specification recognizes the prior art use of wooden posts with pre-drilled holes for metal horizontal rails, and the addressee is given the impression that the essence of the invention lies in the adjustable clamping arrangement.  In my view, the specification as a whole suggests that the invention is an improvement of the prior art, more so than a combination per se.

I think the evidence is sufficient to show that it was common general knowledge that DOWN-EE clamps could be used on metal playground equipment; but there is insufficient evidence to show that it was common general knowledge that tubular metal playground equipment could be made in arrangements where the horizontal bars were substantially smaller than the vertical posts. Thus it could be argued that, in the light of the common general knowledge, the essence of the invention lies in having a relatively large diameter upright to provide an effective clamping surface.  In this sense too, I think the invention is an improvement over the prior art, rather than a true combination of known integers.

So, considering the invention as an improvement, and whether claim 1 is obvious in the light of the common general knowledge, I cannot say that the claim is directed to an obvious variation of the known metal equipment since there is insufficient incontrovertible evidence to prove that it was common general knowledge to use arrangements where the horizontal bars were substantially smaller than the vertical posts.  Also, since this  type of equipment was not discussed as prior art in the specification, there is some doubt as to whether it was within the inventor's consideration. 

Alternatively, I cannot say that the claim is directed to an obvious variation of the known wooden equipment, since there is no evidence to suggest that it was obvious to try to use adjustable clamps with such equipment, and the invention does seem to have some advantages over this admitted prior art.

PRIOR USE, NOVELTY

Mr Schulze submitted that claim 1 was anticipated by or not novel in the light of the equipment used in the Renmark Primary School.  He suggested that the "clamping ring" claimed could be construed to include the DOWN-EE clamps used in the prior art structure.  He argued that the feature that the "horizontal extending members are of substantially smaller diameter than uprights" does not confer novelty on the claim because:

.it is indefinite, one would need to test the invention to determine the extent of "substantially smaller",and

.the evidence suggests that the advantages are visual, there is no functional advantage in this feature, therefore it is a "mere workshop improvement".

Mr Noonan submitted that the evidence relating to the Renmark Primary School equipment was insufficient because:

.the relatively larger diameter horizontal bars are not substantially smaller than the posts, and

.it is not clear whether the height can be adjusted.

He also submitted that "workshop variation" is not an issue because the invention is a combination of features.

In this matter I think the differences between claim 1 and the Renmark Primary School equipment are less than the differences between the claim and the common general knowledge which I have considered under obviousness.  Significantly, the School equipment has both the features of a clamping arrangement and relatively smaller horizontal members.  I consider claim 1 not to be anticipated by the School equipment since the  latter does not have horizontal bars which are substantially smaller in diameter than the vertical posts, however I do think that the evidence shows the horizontal bars to be somewhat smaller. Thus I now have to decide whether this variation confers novelty on the claim.

In deciding the matter I shall apply the High Court's tests in Griffin v Isaacs (1942) 12 AOJP 739 and in Hume Pipe v Monier (1943) AOJP 575.  I do not agree that "workshop variation" is not an issue to be considered, because as discussed previously, the invention can be considered as an improvement just as easily as it can be considered as a combination.

On the matter of whether the height of the horizontal bars on the School equipment can be adjusted,  I note that the evidence does not show any holes in or bolts through the vertical posts, and in the light of the common general knowledge of the use of DOWN-EE clamps, I think it can be assumed that the positions of the larger horizontal bars could be adjusted by loosening and re-tightening the DOWN-EE clamps.

With regard to whether the variation between claim 1 and the Renmark Primary School equipment makes "no substantial contribution to the working of the thing or involve[s] no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same", I consider the following matters to be relevant.

Firstly, I am cognizant of the advantages of the invention expounded by Mr Simmons and the applicant's other declarants, but I think it is significant that many of these advantages relate to the embodiment of the invention observed in use by those declarants.  For example the "visual impact", the reliance solely on clamps and the arrangements of the platform planks and horizontal rods are advantages related to the actual sizes of the horizontal rods and vertical posts and the specific clamping ring used by the applicant.  However, in determining novelty I must consider the invention as claimed, which in claim 1 at least, has no restriction on the sizes of the horizontal members and uprights or on the specific form of the clamping ring.  Thus the claim may include structures which have no visual impact, which do not allow the horizontal members to be easily adapted to support a platform and which may use bolts to assist the clamping rings.  Thus I think many of the advantages of the invention expounded by the applicant's declarants may not be inherent in the structure defined by claim 1.

The important advantage of the invention which is inherent in claim 1, namely the ability to mount the horizontal members at different suitable heights, is an advantage which is also inherent in the Renmark Primary School structure, as discussed previously.  Also it is significant that, according to the specification, this is the problem of the prior art which is supposedly overcome by the invention.

Returning specifically to the "variation" between the claim and the school structure, I am inclined to the view that it makes no substantial contribution to the working of the thing because it contributes nothing to the overall result and because the principles of the two things are the same.  In particular, in both the invention defined by the claim and in the school equipment the larger posts are for stability and the smaller horizontal bars are to provide suitable handgrips for users, and the clamps can be adjusted to vary the position of the horizontal members.  Also, I have difficulty in concluding that the subtle variation between "somewhat smaller" diameter horizontal members and "substantially smaller" diameter horizontal members, can make a "substantial contribution to the working of the thing".

Another relevant consideration is that the applicant has produced no evidence to show that the prior art metal structures using DOWN-EE clamps had problems with slippage of the horizontal bars.  Since no such evidence has been produced, I can assume that DOWN-EE clamps can effectively grip the vertical posts.  It was submitted that one of the advantages of the invention was that the clamping ring was particularly effective because of the relatively large gripping surface on the post for the clamping ring, but this supposed advantage cannot be considered as an improvement over the prior art if the prior art arrangements also had effective gripping means.  The evidence also referred to the invention being particularly stable because of the large diameter of the uprights.  However I do not see this feature as particularly significant since claim 1 does not limit the size of the diameter of the uprights, the scope of the claim is broad enough to include a structure which may not be stable.  Also, the Renmark Primary School equipment looks relatively stable; it is shown in the photographs in use by a group of children, it was constructed before 1980 and was still in existence when inspected by Mr Schulze in 1988.

Taking all these matters into account, I am drawn to the conclusion that the variation between the Renmark Primary School structure and claim 1 does not make a substantial contribution to the working of the thing, the merit to the two things is the same, the principles of operation of the two things are the same and the variation contributes nothing to the result or to the means of producing it.  Thus claim 1 is not novel in the light of the use of the structure in the Renmark Primary School.

I turn now to the appended claims.  "Rods" in claim 2 I think is slightly narrower in scope than "horizontally extending members", but I do not think the claim is sufficiently different to claim 1 to include any further advantage over the prior art. Re claim 3: the specification on page 1a indicates that platforms are well-known and it is clear from the specification in general that platforms are not involved in the inventive concept of the invention; I thus conclude that platforms are an inessential feature of the invention.  Claim 4 I think is disclosed in the prior art: the connection between the horizontal bars and the DOWN-EE clamps could be construed as a male-female coupling.   Claims 2-4 are therefore not novel in the light of the Renmark Primary School equipment.

Claim 5 includes features relating to the inventive concept and which have some merit in the light of the prior art, so I consider this claim to be novel.

Mr Schulze submitted briefly that the feature of claim 8 is shown in the prior art; however I note that at least it is not shown in the evidence relating to the School equipment.  The feature of abutting flanges on a clamping ring arrangement I suspect may generally be a well-known mechanical contrivance.  However its use in this invention is not trivial: the abutting flanges can be placed in a position where the joining bolts are out of the way; this is described on page 6 of the specification and shown in figure 3.  Such an arrangement I think would have an advantage over the prior art where the joining bolts protrude through the centres of each of the halves of the DOWN-EE clamp and thus pose a safety hazard. I have some prima facie doubt on the inventiveness associated with the use of this feature, but I do not have sufficient evidence before me to show that its use may be lacking inventive ingenuity, so I am prepared to resolve this doubt in favour of the applicant and conclude that claim 8 is novel.

Claim 9 I think follows claim 3, ie. platforms are not an essential feature of the invention, thus the claim is not novel.  The feature of claim 10 is disclosed in the evidence so it too is not novel in the light of the School equipment.  The opponent had no objection to claim 11 so I am prepared to accept that it may be novel.  Claim 12 is an omnibus claim with reference to the drawings; I think this claim is novel because it includes several specific features which the evidence suggests have advantages over the prior art.

CONCLUSION

I find that the opposition succeeds because claims 1,2,3,4,9 and 10 are not novel.  However there is patentable subject matter disclosed in the specification and it should not be difficult to draft a set of claims to exclude the prior use cited.  Consequently, I allow Glenwood 60 days from the date of this decision to propose amendments to overcome the deficiencies in the claims.

COSTS

At the first hearing, Mr Noonan submitted that if "I arrived at an intermediate position" in my decision then I should reserve judgement on costs until a final decision on the opposition.  Having given this matter some consideration, I think that it is not appropriate for me to comply with the applicant's request since all decisions issued by the Commissioner should be treated as "final" decisions not "interim" decisions, see Ex parte Mole Engineering Pty Ltd. (1981) 35 ALR 119, and I have no reason to believe that this doctrine should not apply to the award of costs.

Thus I follow the usual practice in oppositions where the award of costs follows the event, and I award costs relating to the first hearing against Glenwood.

In my earlier decision on the further evidence I stated:

"However in the present circumstances I thought that no unnecessary protraction would occur since a fresh hearing on the opposition should not be necessary: firstly because the patent applicant had already had an opportunity to comment on the original Young declaration and secondly because it seemed unlikely that the patent applicant would adduce evidence-in-reply which would need to be heard, since that party did not adduce any evidence-in-answer to the original Young declaration. I did not agree with Mr Noonan's distinguishing of the present circumstances from those in the CIL v APML case, because in both cases the evidence is not new evidence as such but a corrected form of evidence already lodged. In the CIL v APML case the hearing officer explicitly stated that `there ought to be no consequential hearing'"

However, the patent applicant did request and was represented at a second hearing (the opponent made written submissions). Mr Noonan submitted that costs related to that hearing should go to the applicant because the hearing was due to the opponent's faulty evidence. However, Mr Noonan's submissions were mainly directed to corroboration of the Young declaration, and I think that these submissions could have been made at the first hearing along with the submissions on ambiguity of the declaration. Upon reflection, nothing occured at the second hearing which suggests that my earlier opinion, relating to the lack of necessity of a second hearing, was wrong. So I think it is appropriate not to award costs relating the second hearing.

J.I.WELSH

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies & Collison, Melbourne

Patent attorneys for the opponent   :  Collison & Co, Adelaide