Hiltive Pty Ltd v Rudolf Hartmann

[2002] APO 40

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent:  No. 735352 in the name of Hiltive Pty Ltd

Title:  Building Assembly and Method

Action:  Objection to Extension of Term under S.28.

Decision:  Issued            .

Abstract:One essential feature of claim 1 not disclosed in citation, claims novel, no evidence of common general knowledge, no lack of inventive step.

Term extended.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 735352  in the name of  Hiltive Pty Ltd, application for Extension of Term under S.69 and notice under S.28 filed by Rudolf Hartmann.

BACKGROUND

1. Application No. 33450/01 was filed on 6 April 2001 and sealed as Petty Patent 735352 on 5 July 2001. It claims priority from a provisional application filed on 19 March 2001. The patentee applied for extension of the initial term on 7 July 2001. The informant filed a notice under S.28 on 5 June 2002. The patentee chose not to file any evidence in response.  A hearing was set down for 26 September 2002. Both parties indicated that they would not attend the hearing but they both filed written submissions in the matter.

   THE SPECIFICATION

2. The specification indicates that the invention relates to fastening cladding panels to building frames, by using intermediary fixing/jointing elements. The inventive concept relates to the use of moisture-sealing gaskets between the jointing elements and the frame.

3. There are three claims defining the invention; the one independent claim 1 reads as follows:

   "1.       A building assembly including:
              a plurality of elongate jointing elements adapted to be fastened relative to a building frame and each including an outwardly facing channel portion and at least one flange extending laterally from the channel portion for engaging a cladding panel;
              a plurality of cladding panels having slots formed in their edges for engaging the at least one flange for supporting the cladding panel to form a wall, and
              sealing means positionable between the building frame and an elongate jointing element when fastened thereto for substantially sealing the space between the building frame and the cladding panel against the ingress of moisture."

   THE EVIDENCE

4. The S.28 notice alleges that the invention is not novel and lacks an inventive step in the light of Australian Petty Patent Specification No. 692,134 in the name of Antonio Toscan. This specification was published on 28 May 1998, before the priority date of the present petty patent. This specification discloses a method of fixing cladding panels similar to the present invention, and also uses channel-shaped fixing/jointing elements between the panels and frame.

   DECISION

5. The differences between the disclosure in the cited earlier petty patent and the present invention as claimed relate to the integers between the cladding panels and the frame. In the citation there is reference to the use of an adhesive between the cladding panels and "mounting arms" on the backs of the jointing elements. I note that the adhesive is not used between the jointing elements and the frame, and there is no reference to the adhesive performing a sealing function. In fact, moisture sealing is achieved in a different part of the apparatus, viz. between the flanges on the sides of the channel members and the slots in the edges of the panels.

6. The informant suggests that the arrangement in the citation "may be construed as a sealing means positionable between the building frame and the elongate jointing element", and that "the combination of the mounting portion … and the adhesive serves to substantially seal the space between the building frame and the cladding panel ..".

7. In my view it could be argued that a person skilled in the art (PSA) when shown figure 2 in the citation might conclude that the space between the cladding panels and the frame is somehow sealed by the adhesive and mounting arms of the jointing elements, but I do not think the same PSA would construe the figure as showing any sealing means between the frame and the jointing elements. The figure shows the rear side of the jointing element as being flush with the surface of the frame with nothing therebetween (the adhesive being on the other side of the mounting arms).

8. Another issue is whether the citation discloses that a sealing means is "positionable" between the frame and the jointing elements. It could be argued for example that a PSA would consider applying the adhesive on the frame side of the jointing element instead of on the panel side.

9. In considering this matter I note firstly that there is no evidence before me on how a PSA would interpret "positionable" in present claim 1 in the light of the disclosure in the citation. In my view the citation teaches away from this interpretation. According to the description of the invention, on page 6 thereof, the purpose of the adhesive is to provide further security to the fixing of the panels and mounting arms; the jointing element is attached to the frame by a screw and there is no suggestion that an adhesive could be used for this purpose.

10. The sealing means is clearly an essential feature of claim 1, I have nothing before me to suggest otherwise, and this feature, as claimed in present claim 1, is not disclosed in the citation; so I therefore conclude that the present claims are novel in the light of the citation.

11. Re inventive step, the sealing means in the present invention is a separate element from the jointing elements, and in my view works in a more sophisticated manner than the arrangement in the citation. The patentee refers to a few advantages of the invention, including how the life of the sealing gaskets is extended by removing them from UV light. Also, there is no evidence of the common general knowledge in the art before me, so I am satisfied that there are some advantages over the prior art, and that there is some exercise of inventive ingenuity in the present invention.

    CONCLUSION & COSTS

12. I find that the claims of Petty Patent 735352 are valid, and accordingly I extend the term under S.69(2).

13. Applying the usual practice of costs following the event, I award costs against Rudolf Hartmann. Since this is a S.28 matter and not an opposition these costs do not include costs set out in Schedule 8 which relate to opposition or preparing and perusing evidence.

    John Welsh
    Delegate of the Commissioner of Patents

    Patent attorneys for the patentee:  Pizzeys, ACT

    Patent attorneys for the informant:  Peter Maxwell & Assoc, Sydney.