Instant Foundations (Aust) Pty Ltd v Steel Foundations Limited
[1999] APO 12
•24 February 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 658252 in the name of INSTANT FOUNDATIONS (AUST) PTY LTD
Title: Ground Anchors
Action: Opposition under section 59 of the Patents Act 1990 by STEEL FOUNDATIONS LIMITED
Decision: Issued .
Abstract
The opposition was upheld on the ground that the invention is not novel in light of a particular trade brochure. Central to the matter was whether certain features of the claimed invention were inessential, whether the brochure had been published in Australia and how the person skilled in the art would interpret various photographs and drawings in the brochure.
The opponent was held to have standing in this matter notwithstanding the fact that its largest shareholder and a current director was the inventor of the invention and had assigned the invention to the applicant.
The applicant was allowed 60 days from the date of this decision to propose relevant amendments to overcome the deficiencies in the application.
Costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 658252 by INSTANT FOUNDATIONS (AUST) PTY LTD, and an opposition under section 59 thereto by STEEL FOUNDATIONS LIMITED
BACKGROUND
Instant Foundations (Aust) Pty Ltd ("the applicant") filed International Application PCT/AU92/00662 on 14 December 1992, claiming priority from Australian provisional application PK 9970 filed on 12 December 1991. The applicant is the assignee of the inventor, Paul Anthony Camilleri. PCT/AU92/00662 designates, inter alia, Australia, and it entered the national phase in Australia on 18 May 1994. The application was advertised accepted on 6 April 1995 and given the six-figure number 658252.
An opposition to application 658252 was filed on 4 July 1995 by Steel Foundations Limited ("SFL"). All evidentiary stages were completed, after a number of extension of time, by 14 August 1998.
The statement of grounds and particulars (as amended) lists two grounds of opposition: non-compliance with section 18(1)(b) of the Patents Act (that is, lack of novelty and an inventive step) and non-compliance with section 40 of the Patents Act. The statement of grounds and particulars was amended as a consequence of the outcome of an action under regulation 5.5 instituted by the applicant for dismissal of the opposition.
The matter was heard on 25 November 1998 in Canberra. The applicant was represented by Mr David Logan of counsel, assisted by Mr Ron Halliday, patent attorney of the firm Cullen & Co., Brisbane. SFL was represented by Mr Grant Adams, patent attorney of the firm Fisher Adams Kelly, Brisbane.
Petty patent application 74225/96 was filed as a divisional of application 658252 on 9 December 1996. Petty Patent 678131 was sealed on application 74225/96 on 18 April 1997. That patent was the subject of subsection 28(1) notices by the present opponent and by Turson Products and Construction Pty Ltd. The section 28(1) matter was heard on the previous day to the present matter. A separate decision on the extension of term of the petty patent is being issued concurrently with this decision.
THE SPECIFICATION
The field of the invention is stated by the specification to be as follows:
"…….ground anchors having particular but not exclusive application for supporting upstanding members such as posts for permanent or temporary fencing, sign and delineator posts, columns such as for street lighting, for providing a building foundations (sic) or for other applications where ground anchorage and support is required."
The specification then gives a brief outline of the prior art, constituted by such well-known techniques as setting the post or suchlike in concrete, or using spigots set permanently in the ground upon which a temporary above ground structure can be mounted.
The device of this invention is, in actuality, a very large helically-threaded screw (length of up to several metres and diameter of up to several decimetres). The thread is constituted by a strip of material helically wound about the screw such that it extends outwardly from (that is, perpendicularly to) the axis of the screw. The screw has a shank, and the head of the screw is either a planar disc or helical shape which is co-axial with, and has a larger diameter than, the shank of the screw. In preferred form the thread is very short (about one revolution) and the shank makes up, by far, the preponderance of the length of the screw.
There are ten claims, as follows:
"1.A ground anchor comprising a load bearing tube of uniform diameter having a helical flat adjacent its open ground penetrating end and, spaced along the tube from said helical flat, an integral ground engaging flange having either a planar disc shape or a helical shape.
2.A ground anchor as claimed in claim 1, wherein said ground engaging flange is a helical flat having substantially the same radial dimension as the helical flat adjacent the ground penetrating end of the anchor.
3.A ground anchor as claimed in claim 2, wherein the helical flats extend approximately 360 degrees about the tube.
4. A ground anchor as claimed in claim 1, wherein said tube has a bracket on the end opposite its ground penetrating end for supporting a building member.
5.A ground anchor as claimed in claim 1, wherein said tube has a male spigot on the end opposite its ground penetrating end to locate within, and support, a post connecting element, or further tube.
6.A ground anchor as claimed in claim 1, wherein said tube has a female socket on the end opposite its ground penetrating end to receive and support a post, a connecting element or further tube.
7.A ground anchor as claimed in claim 1, wherein said integral ground engaging flange is located at the opposite end of the tube to the helical flat, and wherein said flange is adapted to be mated with a further flange of a further tube and to be connected thereto.
8.A ground anchor as claimed in claim 1, wherein said integral ground engaging flange is located at the opposite end of the tube to the helical flat, and wherein a second integral ground engaging flange is located at an intermediary position of the tube between the ends of the tube.
9.A ground anchor as claimed in claim 1 or claim 2, wherein said load bearing tube includes clamping means to enable a building element to be securely fitted thereto.
10.A ground anchor, substantially as herein described with reference to the accompanying drawings."
The expression "helical flat" in claim 1 was the focus of considerable attention in the evidence and at the hearing, and I will be returning to it later. For the meantime I note the following statement in the specification that
"[t]he helical flat or flats may be in the form of a strip of material fixed to the load bearing tube to extend outwardly therefrom and follow a helical path about the tube"
as being material to this context.
As I understand the invention, the helical flat operates as a screw thread facilitating the entry of the anchor into the ground upon rotation of the load bearing tube. The ground engaging flange is apparently intended to contribute to the operation of the device as an anchor both directly, by physically contributing to the anchoring effect, and also indirectly, by regulating the distance the anchor penetrates into the ground.
The specification describes a number of preferred embodiments of the invention: in fact the drawings consist of thirty-four figures, detailing a considerable number of embodiments. In the main these embodiments are simply embellishments of the basic form of the invention tailored to specific applications. It is not necessary for the purposes of this decision to go into the fine details of those embodiments.
THE EVIDENCE
The evidence in support consists of:
· a statutory declaration by Graeme Bagley, who is a principal of a company which does not appear to have any connection to SFL, but which is clearly not a disinterested party; the principal item of evidence is an exhibit of a catalogue ("the Chance 1988 catalogue") of a United States company - A. B. Chance Co. - with which Mr Bagley's company has a manufacturing agreement; most of the remainder of the evidence goes to establishing prior use of items illustrated in the catalogue.
· a statutory declaration by Grant Adams which is mainly of significance for its exhibits which comprise a number of patent specifications and bulletins, brochures and the like, including the Chance 1988 catalogue.
· a statutory declaration by Dale John Anderson, who is a principal of Turson Products and Construction Pty Ltd, affirming that the Chance 1988 catalogue was available to the public in Australia prior to the priority date of the claims in suit.
· a statutory declaration by Keith Talbot Smith, who is an employee of a company which apparently operates in the area of the invention but does not have a direct interest in this matter; Mr Smith affirms that "screw anchors" which are disclosed in another A. B. Chance Co. catalogue ("the Chance 1983 catalogue") were well known and extensively used in Australia prior to the priority date of the present claims.
· a statutory declaration by Kevin Skinner, who is a principal of a company which apparently operates in the area of the invention but which has no apparent direct interest in this matter; Mr Skinner affirms that "screw anchors" which are shown in the Chance 1988 catalogue were imported into and sold in Australia prior to the priority date of the present claims; as well, he supports assertions made by Graeme Bagley regarding the Chance 1988 catalogue anticipating the present claims.
The evidence in answer is:
· a statutory declaration by Terry O'Haire, a director of the applicant company; the only substantive evidence provided by Mr O'Haire is in relation to whether SFL is estopped from challenging the extension of term of the patent because one of its principals (Paul Anthony Camilleri) was the inventor of the invention, having assigned his rights in the invention to the applicant; the remainder of Mr O'Haire's declaration concerns shortcomings which he considers to exist in the evidence of SFL.
· a statutory declaration by John Darling, managing director of the applicant company; Mr Darling simply declares that he is in full and total agreement with the statements made by Terry O'Haire and endorses them in full.
The evidence in reply is:
· a second statutory declaration by Graeme Bagley, in which he reinforces some aspects of his evidence challenged by Mr O'Haire; in particular he re-affirms that the Chance 1988 catalogue was provided to him without inhibiting fetter and that from his own knowledge the HS type foundations shown in the catalogue were of hollow tube construction.
· a second statutory declaration by Grant Adams, in which he notes that Mr Darling and Mr O'Haire are not independent declarants, nor is Mr Darling a person skilled in the art.
· a second statutory declaration by Dale John Anderson, in which he rebuts the assertion by Mr O'Haire that he did not have knowledge of ground anchors before the priority date of the present claims and reaffirms that the Chance 1988 catalogue was provided to his company without inhibiting fetter.
· a second statutory declaration by Keith Talbot Smith, in which he re-affirms that the Chance 1983 catalogue was provided to him without inhibiting fetter before the priority date of the claims.
· a second statutory declaration by Kevin Skinner, in which he reinforces some aspects of his evidence challenged by Mr O'Haire; in particular Mr Skinner declares that more than 100 copies of the Chance 1988 catalogue were provided to him and then distributed by him to the public and that from his own knowledge the HS type foundation shown in the catalogue was of hollow tube construction; he also provides evidence of three instances of prior use not mentioned in the evidence in support.
I will set out the evidence in more detail, as required, later in my decision.
SUBMISSIONS
At the hearing Mr Adams submitted on behalf of SFL that:
· the opponent company, which is a commercial competitor of the applicant, is entitled to oppose the granting of a patent, despite the fact that the inventor is a director and largest shareholder of the opponent company, as was determined in the earlier dismissal proceedings in respect of the opposition.
· for SFL to be estopped from opposing the granting of a patent under section 59 would be an injustice to the other shareholders who own 77.2% of the company.
· there is a public interest involved in having the opposition proceed.
· Bagley, Skinner and Smith are skilled addressees and expert witnesses in the field of the invention.
· in several embodiments the flange as described is annular rather than planar disc shaped, causing uncertainty as to the scope of the words "planar disc shaped" as used in the claim, and generally there is doubt as to what shaped flanges are included within the scope of the claim when a purposive construction is applied.
· the terms "helical flat" and "ground penetrating" are not clear.
· the claims are not novel in light of the prior art anchors identified by Bagley, Skinner and Smith, and in particular, the anchors of A. B. Chance Co.
· Bagley, Skinner and Smith all held copies of the Chance 1983 and 1988 catalogues and were under no obligation of confidentiality in relation to them; they declare their first hand knowledge of these things and of the fact that in excess of 100 or so copies of them were distributed.
· the invention is lacking in an inventive step since it was common general knowledge at the priority date of the claims to provide two or more helical screws on ground anchors.
Mr Logan submitted that:
· at the opposition stage, the Commissioner "ought not to refuse acceptance of an application unless it appears practically certain that letters patent granted on the specification would be held invalid" (Commissioner of Patents v Microcell Ltd (1959) CLR 232 at 245).
· certain of the section 40 matters raised in the opponent's evidence and submissions have not been particularized.
· in the statement of grounds and particulars it is stated that "the skilled addressee is a civil engineer and, more particularly, such an engineer with knowledge and expertise in the area of building foundations;" accordingly, Mr Bagley, who is a managing director, is not qualified to be the skilled addressee as he does not have any "hands-on" experience.
· SFL is estopped from participating in these proceedings as Mr Camilleri is, and was at all material times, the guiding mind of SFL, having been a director as of 20 April 1995 and managing director as of December 1995.
· each of the combination of eight features defined in claim 1 is essential, and in none of the cited prior art is an anchor disclosed having the combination of all the essential integers of the claimed invention.
· none of the alleged prior publications contain clear, unequivocal and unmistakeable directions to use the apparatus in the manner described in the specification.
· the evidence does not clearly establish that each of the Chance and other prior art documents relied upon was publicly available in Australia prior to the priority date.
· in relation to inventive step, there is no evidence as to the common general knowledge in the art at the priority date, nor is there evidence of whether the Chance documents or information obtained from use of the Chance anchors would have been ascertained, understood and regarded as relevant to work in the relevant art at the relevant time by the person skilled in the art.
· the feature of the open ground-penetrating end of the applicant's anchor, in combination with its load-bearing foundation capacity in universal applications and the other integers, constitutes an inventive step, and it is the inter-relationship of all the integers (some of which may be old) which produces the combination of integers providing the new advantages.
· apropos section 40, the authorities warn against adopting a purely literal approach and prefer construction of the specification in a purposive manner in the light of the common general knowledge of a person skilled in the art, and warn against invalidating a patent for lack of clarity or ambiguity in relation to mere technicalities.
· the expression "helical flat" is used in the art to mean a unitary flat surfaced element which wraps around the tube to form a single helix, and is clear.
· the invention is an inventive combination meeting the threshold requirement for patentability under paragraph 18(1)(a) of the Patents Act.
I will give a more detailed account of the submissions the parties made at the hearing, where pertinent, later in my decision.
DECISION
Procedural issues
The first procedural issue raised by the applicant concerns the standing of SFL as an opponent under section 59 of the Patents Act. This is done on the basis that Mr Camilleri, the inventor of the invention in suit, is a substantial shareholder, director and the "guiding mind" of SFL and therefore SFL is estopped from opposing the grant of a patent on the present application. The legal basis for this is Gonville v Hay, 21 RPC 49.
The applicant has raised this issue before, in an action under regulation 5.5 for dismissal of this opposition. The decision on that matter was issued on 20 March 1996. As it is a decision of a tribunal it is not binding, but in any case it is contended by the applicant that it did not give any guidance in the present matter since it was decided by applying the stringent criteria relevant to summary dismissal of being "so obviously untenable that it cannot possibly succeed," "manifestly groundless," "so manifestly faulty that it does not admit of argument," and so forth. However, there is no indication in the reasoning contained in the decision that these criteria were a factor in the findings made. I note that, in deciding that Mr Camilleri was not a director at the time the opposition was filed, the hearing officer reached that conclusion on the basis of the balance of probabilities. Also, the principles of law that were relied upon would seem to me to be insensitive to those criteria.
Regardless, the reasoning and the conclusions reached in the dismissal action would also seem apposite here. In his decision on the dismissal, the hearing officer found that, notwithstanding the existence of two applications for registered designs dated 20 April 1995 and 1 June 1995 in which Mr Camilleri represented himself as being a director of SFL, on the balance of probabilities Mr Camilleri was not a director of SFL at the time the notice of opposition was filed on 4 July 1995. I think the evidence here for that conclusion is even more compelling than appears was before the hearing officer on that occasion. In particular, in Mr O'Haire's evidence in the opposition action there is the Director's Report which is part of the SFL's Annual Return for the financial year ended 30 June 1996 filed with the Australian Securities Commission. It shows Mr Camilleri as having been appointed an executive director on 5 December 1995.
I also note that the report for the previous financial year (in which Mr Camilleri does not figure) shows cessations. I therefore further conclude that Mr Camilleri was first appointed as director of SFL on 5 December 1995.
Regarding Mr Camilleri's role as a consultant with the opponent company prior to the filing of the opposition, the hearing officer in the dismissal matter stated, correctly in my view:
"I find it difficult to accept that a company is estopped from questioning an application on the grounds that the inventor of the invention the subject of the application may have been associated with the company through employment, consultancy work or otherwise. In business, employees, consultants and other officers frequently transfer their services amongst many companies in the course of their lifetimes. This is particularly likely between companies manufacturing similar products and competing in the same market. To preclude companies from contesting applications on the basis of prior associations of their employees or other officers with other companies would lock out many companies from instigating opposition proceedings."
I can well understand the disquiet of the applicant over the situation in relation to Mr Camilleri. However, as I have already stated, the evidence points towards Mr Camilleri not having been a director of the company at the time of filing the opposition. There is no evidence to substantiate the contention of Mr Logan that Mr Camilleri "was, at all material times, the guiding mind of Steel" and that the company is "a mere cloak or sham." All that exists in the way of evidence is a mere unsubstantiated assertion by Mr O'Haire that he "understands" this to be the case.
Having found that Mr Camilleri was not a director at the relevant time, the hearing officer in the dismissal action went on to conclude that, on that basis, SFL was entitled to proceed with the opposition. I consider an analogous finding to be still justified.
I find that Steel Foundations Limited is not estopped, because of its relationship with Mr Camilleri, from opposing the grant of a patent on application 658252.
The second procedural issue concerns the admissibility of some of the evidence in reply. Most of the applicant's objections in this regard were without foundation, and those that did have some substance are inconsequential to the outcome of the opposition.
In Mr Skinner's second statutory declaration, three instances of prior use are referred to for the first time, these being at the Tomago Swamp, Newcastle, at Kurnell, Sydney, in Prospect and in Wollongong, all in New South Wales. None of this evidence appears to be evidence in reply. However, the opponent has not relied on prior use to sustain its ground of lack of novelty, so these instances of prior use have no direct relevance to this matter.
Mr Skinner also refers to an A. B. Chance catalogue "4B (identified as G-10M 9-81)" which is not in the evidence in support and which does not appear to constitute evidence in reply. However, the document itself is not in the evidence so it is of no practical significance.
Section 40
The opponent has raised a number of section 40 issues. I consider that only two of these are deserving of mention in regard to compliance with section 40. However, several of the other concerns raised by the opponent go to the construction of the specification, and I will deal with them in that context.
Mr Logan objected to some of the clarity issues broached by Mr Adams, on the basis they had not been particularized. I consider that none of these is sufficiently serious to warrant an adverse finding utilizing section 60(3).
The first section 40 issue I need to address is the question of whether the expression "helical flat" is clear. Mr Adams stated in his statutory declaration that
"[t]he word 'helical' means that the feature has three-dimensional characteristics, while the definition for 'flat' defines that such an article has features in two dimensions only, ie, is 'planar'. The terminology 'helical flat' is clearly an oxymoron and can be given no clear definition when construing the claim,"
and he submitted that "reference to the body of the specification does not assist."
Mr Logan, on the other hand, contended that there is nothing unclear in the phrase, and in any case if any difficulty was had with the expression by the skilled addressee, then recourse would be made to the description of the invention in the specification to see what was intended. Mr Logan stated that the expression is used in the art to mean a unitary flat surfaced element which wraps around the tube to form a single helix.
I agree with Mr Adams that it is impossible to attach a definite meaning to the expression "helical flat" in isolation or in the context of the claim. Nowhere in the evidence is there any indication of it being a term of art, and at the hearing no one was aware of any use of the expression outside the present specification. Mr Logan attempted to place a meaning on it, but the meaning he came up with seems to me to be just one of a number that could be postulated. Indeed, as will become apparent, it was one with which, upon applying the full force of the rules of construction, I do not agree.
The law concerning the rules of construction is long settled. Those rules were drawn together by Sheppard J in Décor Corp Pty Ltd v Dart Industries, (1988) 13 IPR 385 at 400. Sheppard J identified 10 rules of construction, of which rules 1, 2 and 4 have application to the present situation:
1.The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2.It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
4.In some cases the meaning of words used in the claims may be qualified or defined by what is said in the body of the specification.
In my view because the term "helical flat" defies a definite meaning in the context of the claim, the rules of construction require one to go to the specification as a whole to determine if a definite meaning is attributable to it. If one does this, then I think there is no doubt that the expression "helical flat" is to be construed as being a strip of material following a helical path and extending outwardly from the axis of the helical path. This definition is derived from the statement in the body of the specification that I have noted above as being material to this context. This is notwithstanding the presence in that statement of the word "may", which would normally suggest that that to which it relates is just one of a number of possibilities. Nowhere in the specification is there any indication that some other form of "helical flat" is contemplated. Once the specification is used as a dictionary in this way, then I believe the expression "helical flat" is clear.
The second section 40 issue concerns the clarity of the omnibus claim, claim 10. Mr Adams noted that the omnibus claim was of the type that does not refer back to any claim for its broad features, but rather to the description of the invention in the body of the specification. He contended that as the description of the invention in the body of the specification is internally contradictory as to essential features of the invention, that rendered the scope of the omnibus claim unclear.
While I agree that the specification is contradictory in a number of aspects, it will be apparent from what immediately follows that I also consider that it is possible to resolve those contradictions and to extract with reasonable certainty a particular set of essential features from the specification. I therefore do not perceive any lack of clarity in claim 10.
I find that that application 658252 complies with section 40 of the Patents Act.
Construction of the specification
Before proceeding to determine whether the invention defined by the claims is novel and involves an inventive step, it is necessary to ascertain the scope of the claims, including which features are essential.
Mr Logan, if I understand him correctly, sought to infer from the existence of the words "load bearing" in the claim that this placed the claimed invention in the realms of a certain category of ground anchor, namely, those which can be used for foundation applications. In support of this, he relied upon certain passages in the specification. It is true that the present invention is described in the specification as being suitable for such applications. However this does not permit a gloss to be given to the words of the claim so as to remove from their scope such applications as fencing, sign and delineator posts and columns for street lighting. This would be contrary to the plain meaning of "load bearing" and would be at odds with what the specification itself says. I therefore construe "load bearing" in the context of the present claim as meaning that, when in situ, the tube is capable of supporting a downward force, with no limitation upon the size of that force.
Regarding the term "tube," I accept the contention of the applicant that by definition a tube must have a hollow extending its full length. But I consider that in order for the tube to have a "uniform diameter" (which I take to refer to the overall, or outside, diameter) only requires that it have a substantially uniform diameter. It could, for example, have apertures in its wall or flanges located on the external surface of the tube, as with the present arrangement. I am also prepared to accept, although not without some hesitation, the applicant's contention that by attaching a pilot point to the end of a tube of uniform diameter means that the tube can no longer be said to have a uniform diameter.
I take the term "integral" in relation to "ground engaging flange" as meaning that the flange is permanently located on the load bearing tube, while I construe "ground engaging" as signifying that, when in normal use, the flange can be in contact with the ground, whether it be at the surface of the ground or within the ground.
I have already set out my understanding of the scope of the expression "helical flat" in the course of considering its clarity.
The parties held differing views as to the essential features of the invention. Mr Logan submitted that all the features of claim 1 are essential. Mr Logan stated:
"the purpose of the specification is to give practical instruction on how to perform the invention; but the purpose of the claims is to define the scope of the monopoly. Accordingly, if the claim is limited (as claim 1 is) to a ground engaging flange having a planar disc or helical shape, no claim is made in respect of a planar square, rectangular or other shape. What is not claimed is disclaimed: Terrell on the Law of Patents, 13th edition, paras 4.31 & 4.32."
In this and other comments Mr Logan seems to be denying the possibility that any claim could have inessential features. However this flies in the face of the authorities. The case commonly cited in regard to this is Catnic Components v Hill and Smith Ltd, [1982] RPC 183, in which Buckley LJ stated that if a feature is essential to the working of the invention, then it has to be an essential feature of the invention. If however a feature is not essential to the working of the invention, one must construe the claim to see if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed.
Mr Adams considered that the feature of the tube being open-ended was inessential, due to certain of the preferred embodiments disclosing anchors which do not appear to have open ends. Even if Mr Adams is right about the certain embodied anchors not having open ends (and some doubt accompanies that) the inconsistency in the specification is readily resolved in favour of the open end being an essential feature. Both the claims and the description of the invention support that interpretation, and it is clear that for the ground anchor to have an open end will materially affect the working of the invention in respect of its ground penetrating capabilities.
In the body of the specification, it is stated:
"The ground engaging flange may be defined by a planar member of sufficient size to define a radial abutment surface for location at ground level so that soil may be compressed thereagainst. The planar member may be of disc-like form, square, rectangular or of any other form."
In deciding whether the planar disc shape is an essential feature or not, I firstly have to decide whether it has any material effect upon the way the invention works. Nowhere in the specification or its evidence and submissions does the applicant point to there being any such material effect. Instead there is the contrary statement in the specification which I have quoted above. Moreover, on my own analysis of the invention I can see nothing in the way of a material effect arising from the particular choice of a disc shaped flange, as distinct from any other shaped flange such as square or rectangular. The choice of any particular shape would appear to me to be primarily influenced by the purpose to which the ground anchor is to be put. Indeed, the fact that flanges having other shapes are marketed and are put to practical use would suggest that if there is a material effect it is not a particularly beneficial one. I am led to conclude that the planar disc shape does not materially affect the way the invention works.
That being the case, the question I then have to decide is whether the applicant has made it an essential feature by the terms of the claim, properly construed. In relation to that question, Lord Diplock stated in Catnic:
"It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way the invention worked."
As to what would have been understood by the skilled addressee of the present specification to have been intended by the applicant by its use of the words in the claim, I believe that a similar conclusion to that reached by Sheppard, Beaumont and Sackville JJ of the Federal Court in E Street Enterprises Inc v CPS Housewares Pty Ltd, 36 IPR 431 is also applicable in the present matter. The court stated:
"In our view, the draftsman of the claim chose his words carefully. A 'vent groove formed on' the piston is particular language. There is no warrant apparent on the face of the draftsman's language for widening it so as to embrace another form of aperture such as a hole."
The draftsman of the present claims has stipulated a particular geometric shape, namely a planar disc shape. I can see no justification for departing from the specific meaning of those words in order to construe them as embracing other geometrical shapes such as planar square or rectangular ones. I am inclined therefore to think that so far as the present matter goes the answer to the Catnic question is not in the negative.
Accordingly I consider the planar disc shape to be an essential feature of the invention.
Novelty
The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd., (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428). The opponent in the present matter alleges prior disclosure to have occurred in several documents published before the priority date of the present claims.
These documents consist of both patent and non-patent literature. The applicant contends that a satisfactory level of proof as to whether the non-patent literature documents were publicly available before the priority date of the claims has not been provided. As a precursor to proceeding to determine whether these documents in particular disclose the claimed invention and thereby render the claims not novel, I must decide whether there is sufficient evidence that publication of these documents has taken place before the priority date of the claims.
Turning firstly to the evidence of Mr Adams, his first declaration comprises a number of brochures and the like by A. B. Chance Co. and Dixie Electrical Manufacturing Co. Evidence in relation to the publication of some of them is provided in the form of letters from each of A. B. Chance Co. and Dixie Electrical Manufacturing Co. confirming publication before the priority date. Other evidence of publication exists in the form of identifying numbers present on most of the documents. The only other evidence as to publication is the statement in relation to Exhibits JGA-23, JGA-24 and JGA-25 by Mr Adams in his declaration that:
"In a telephone conversation with Mr Skinner of Bardiworth Pty Ltd. he advised me that these brochures were distributed in Australia by his company prior to [the priority date]."
I should observe at this point that JGA-21 is the Chance 1988 catalogue.
The Chance 1988 catalogue also appears in the first Bagley declaration. He states no more than that it was distributed by Hayman Industries in Australia prior to 12 December 1991 (the priority date). Also in Mr Bagley's evidence is a photocopy of an article from a newspaper called "The Summit Sun" which apparently circulates in the Monaro region of New South Wales. The copy is marked "Wed 19th June 1991."
Mr Smith's first declaration includes the Chance 1983 catalogue. He states that the brochure was supplied by Evans Deakin Industries, South Brisbane, on a non-confidential basis in 1985. However, this document is not particularized in the statement of grounds and particulars, and on that basis is inadmissible as evidence. Nevertheless, for the sake of completeness I will state my view that, had it been available for this opposition, it would have added nothing to the disclosure of the Chance 1988 catalogue insofar as establishing lack of novelty of the present claims is concerned.
Mr Skinner states that the Chance 1988 catalogue was widely distributed in Australia, while Mr Anderson states that his enquiries have established that the brochure was available in Australia prior to December 1991.
A document is made available to the public if it is communicated to a single member of the public without inhibiting fetter (Bristol-Meyers Co.'s Application, [1969] RPC 146 at 155). On the other hand, in opposition matters the opponent bears a heavy onus to establish that the alleged relevant disclosures occurred before the relevant priority date. In proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523).
I am prepared to accept all the non-patent documents in Mr Adams' declaration are satisfactorily proven to have been published on the basis of Mr Adams' evidence, except Exhibits JGA-20, JGA-21, JGA-23, JGA-24 and JGA-25. The only evidence of the date of publication of JGA-20, JGA-23, JGA-24 and JGA-25 is the words "Copyright 1990" on them and the statement in relation to the last three documents by Mr Adams in his declaration that I have previously quoted. In my view, a copyright indication, particularly one so close to the relevant date, plus hearsay evidence of the nature of that quoted, does not amount to satisfactory proof of publication.
JGA-21 - the Chance 1988 catalogue - is in a separate category, as there exists evidence from other declarants as to publication.
I am satisfied that based on the evidence of Mr Bagley the Summit Sun article constitutes a document which was publicly available before the priority date. Indeed, the applicant seemed prepared to concede this.
Of the other documents in evidence, I think that only the Chance 1988 catalogue approaches having a satisfactory level of proof of publication. I do not agree with Mr O'Haire that it may be some form of internal document: it is clearly intended as a marketing device, and therefore is intended to be disseminated widely to potential customers. Also, I am not particularly concerned that the declarants for SFL cannot be more specific as to when the catalogue came into their hands, as a considerable period of time has elapsed since the events in question took place. But, on the other hand, I do have misgivings about the dearth of evidence about from where these documents (assuming there is more than one: in all the evidence only one original is provided) have materialized. They bear no indication of their date of receipt, or of having been, for example, placed in a file, and there is nothing in the declaratory evidence casting any light on this.
However, I believe it is clear on the evidence that A. B. Chance Co. had a presence in Australia in the 1980's, and it would be surprising if the sort of catalogues we are concerned with here were not at least given some distribution. I believe there is enough confirmatory evidence in relation to that to conclude on the balance of probabilities that at least the minimal requirements for establishing publication to have occurred have been met. I therefore find that the Chance 1988 catalogue was published in Australia before the priority date of the claims in suit.
At the hearing Mr Adams indicated that it was the Chance 1988 catalogue which the opponent was mainly relying upon to succeed in its ground of lack of novelty. Of crucial significance to that issue is whether a certain category of ground anchor illustrated in the catalogue comprises a tube with an open, ground penetrating end. It is contended by SFL that this version of the ground anchor is, apart from appurtenances, simply a tube with one end - the ground penetrating end - having the plane of its opening at 45 o to the axis of the tube, thus creating a point at that end of the tube. That is, if one were to take a normal tube and cut through it at an angle of 45 o to the axis of the tube, one would end up with two such pointed tubes. The applicant, on the other hand, contends that there is insufficient evidence to say conclusively that that is in fact what is illustrated in the citation.
The construction of documents is always ultimately the responsibility of the hearing officer. To quote from Blanco White, Fifth Edition, 4-105:
"The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of construction of the two documents, once the court has been put by evidence of the state of the art into the position of a skilled reader of them. For this purpose the earlier document must be construed in the usual manner, but as of its own date; that is to say, its meaning must be the meaning it bore at the date when it was written. Just as in the case of infringement, however, the further question, whether or not what the prior document ought to be regarded as disclosing is or is not substantially within the claim, is a question of fact."
The difficulty in the case of the citation presently under consideration is that the disclosure, at least insofar as hollowness is concerned, relies mainly on depictions such as photographs and non-diagrammatic drawings of the prior art arrangements. C Van Der Lely N.V. v Bamfords [1963] RPC 61 is the main authority on the interpretation of photographs. What C Van Der Lely N.V. v Bamfords says, I think, is that in the case of photographs a court or tribunal may need to lean more heavily on the evidence of experts in arriving at a conclusion as to what is disclosed. That is, it is a matter of degree. In this case the issue is quite a straightforward one, but still remains a question of what the eye of the person with appropriate engineering skill and experience would see in the photograph or drawing of the prior art arrangements.
In the citation the appearance, especially the shading, of the ground anchors concerned is very much suggestive of the cylinders of the category of ground anchors in question being hollow at each end at least. Mr O'Haire has expressed the view that what is shown of the ground penetrating end could, in fact, be a closed end, that is, the depictions are not conclusive. While the depictions could be of a closed ground penetrating end, that is not how they appear to me, even taking Mr O'Haire's contrary view into account. Also, while the interior of the middle-section of the cylinders is not shown in the depictions, it seems a reasonable assumption that, to the person with appropriate skill and engineering experience, the impression gained would be that the hollow interior of the cylinder extends for its full length; that is, the cylinder is a tube as contended by SFL.
There is evidence apart from the drawings alone to support this conclusion. As Mr Adams observed, the reference to one form of these ground anchors - the "HS Foundation" - in the Chance 1988 Catalogue as being a section of 3'' pipe is indicative that what is disclosed here is a hollow cylinder rather than a solid or partly hollow one. A like reference occurs in relation to the "T/C Foundation."
In consequence of the constructions I have placed upon claim 1 and the Chance 1988 catalogue I conclude that claim 1 is not novel in light of:
· the HS and T/C Foundations, which are tubular and have several helical shapes located above a helical "flat" and therefore anticipate the second aspect of claim 1 in which the integral ground engaging flange is a helical shape.
· the Flange Drive Foundation, which is tubular and has a planar disc base plate which can engage the ground and therefore anticipates the first aspect of claim 1 in which the integral ground engaging flange is a planar disc shape.
The Summit Sun article provides insufficient detail to constitute an anticipation. Also, every one of the documents cited in the first Adams declaration published before the priority date of the present claims, except for the Chance 1988 catalogue, only discloses ground anchors not having one or other or both an open ground penetrating end and a planar disc shaped flange.
Regarding claim 2, in both the HS and T/C Foundations at least one helical shape above the helical "flat" is substantially the same radial dimension as the helical "flat", and therefore claim 2 is anticipated.
Regarding claim 3, this feature is common to the cited arrangements, and therefore this claim is not novel.
Regarding claims 4, 5, 6 and 9, the integers defined in these claims are simply means for joining two elements together which are common general knowledge across most engineering disciplines. Their utilization in a ground anchor would simply depend on the purpose to which the anchor was to be put, and appears unrelated to the inventive concept as disclosed. I consider that the integers of claims 4, 5, 6 and 9 are, insofar as the present invention is concerned, incapable of possessing the status of being essential features of the invention. Expressed differently, they are mere "workshop variations" which do not confer novelty (per, for example, R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd, 13 IPR 513). These claims therefore lack novelty in light of the cited arrangements.
Regarding claims 7 and 8, the HS and T/C Foundations are disclosed as having these features, and render claims 7 and 8 not novel.
Regarding claim 10, the prior art anchors so closely resemble those substantially as described in the present specification that I am unable to discern any novelty conferring feature in what is described in relation to the integers of claim 10 over what is disclosed in the prior art.
Accordingly I find that claims 1 to 10 are not novel in light of the Chance 1988 catalogue.
Inventive Step
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Considering the latter of these criteria first, I do not think there is any doubt that the various documents which SFL have established as being in the public domain before the priority date of the claims would be "understood" and "regarded as relevant" by the person skilled in the art. I also accept that the various patent documents would have been "ascertained." However I think considerable uncertainty surrounds whether those non-patent literature documents upon which an allegation of lack of inventive step might be sustained would also have been ascertained.
In Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited (an unpublished Patent Office decision on application 646918 dated 4 September 1997), the hearing officer took the approach that a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. That approach seems to me to be sound. Applying it to the situation at hand, the relevant publicly available documentary information is in the form of brochures, and the evidence is that about 100 copies of these brochures had been distributed to persons having an interest in them. Nothing, however, is known of the subsequent fate of those documents. Given the unsubstantial extent of, and the uncertainties surrounding, the distribution of the brochures, it is not possible, in my view, to conclude that the person skilled in the art could reasonably be expected to have found any of them.
Therefore, in my view, the evidence does not satisfactorily establish that the relevant publication of those brochures which the evidence has established to have occurred could reasonably be expected to have enabled those documents to have been ascertained by a person skilled in the art. If the allegation of inventive step is to be sustained, it therefore must be sustained on the basis of the patent documents in the first Adams declaration, considered together with the common general knowledge, or on the basis of the common general knowledge alone. The prior art arrangements disclosed by the patent documents, it will be recalled, lack one or other or both of an open ground penetrating end and a planar disc shaped flange.
A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited, 144 CLR 253 at 292:
"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."
The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Only two declarants for the parties challenging the validity of the patent gave evidence on common general knowledge. Mr Skinner states:
"At [the priority] date, anchors claimed in the patent application were common general knowledge in the ground anchor industry in Australia."
Mr Smith states:
"In my opinion, a screw anchor having a first helical flight at or adjacent the ground engaging end of the tube or shaft, and a second flight (or multiple flights) on the tube or shaft, spaced from the first flight, for ground engagement, was common general knowledge in the field of screw anchors as at [the priority date]."
A general statement such as that Mr Skinner has made does not, I believe, carry a great deal of weight, and is not particularly useful to the case his evidence is supposed to be supporting. Mr Smith's recitation of the common general knowledge only addresses a subset of the integers making up the claims, and falls well short of providing a basis for finding that the claims lack an inventive step on the basis of common general knowledge alone. Moreover, the particular common general knowledge he recites does not relate to the integers of claim 1 which are not disclosed in the patent documents in the first Adams declaration, and therefore does not assist the case for there being no inventive step in the invention defined by claim 1 in light of the disclosures in those documents.
Some confirmation of the meagre state of the common general knowledge in the art can be obtained indirectly from the evidence. Mr Bagley has provided evidence of his company's sales of the Chase ground anchors. They appear to number little more than 100 over about the four years before the priority date, which I assume to be only a minuscule portion of the potential market. A. B. Chase Co. seems to have had the market in this type of ground anchor to themselves at the time, and Mr Bagley's company Hayman Industries, Mr Skinner's company Bardiworth Pty Ltd and Evans Deakin Industries Ltd appear to have been the only companies dealing in the Chase anchors in Australia. Presumably the sales of the last two mirror those of the first. Furthermore, the category of anchor of interest here, namely that comprising a tube with an open ground penetrating end, does not appear to be prominent among the Chase products. There is also evidence that in the years before the priority date Chase had made some attempt to get its products known to potential customers, such as by holding field days. While this only suggests that Chase products were not well known at that time (which substantially pre-dates the priority date of the present claims), it is not evident that this situation has changed. This lends support to the conclusion that the category of ground anchor to which this invention relates was most probably relatively unknown at the priority date of the claims, and that there was very little in the way of common general knowledge in the art.
Given the apparent state of the common general knowledge, I consider there is no basis for concluding that the claimed invention is lacking an inventive step in accordance with sub-paragraph 18(1)(b)(ii) of the Patents Act.
Therefore I find that the claimed invention involves an inventive step.
Conclusion
I have found that the opposition succeeds on the ground of lack of novelty, but is unsuccessful on the other grounds of non-compliance with section 40 and of not involving an inventive step. However, I believe that there might be patentable matter disclosed in the specification, and that the specification may be amenable to being amended to overcome the shortcomings I have found to exist. Consequently I allow Instant Foundations (Aust) Pty Ltd 60 days from the date of this decision to propose amendments to that effect.
Costs
In accordance with the general principle that costs follow the event, I award costs against Instant Foundations (Aust) Pty Ltd.
E. J. Knock
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Cullen & Co., Brisbane
Patent attorneys for the opponent: Fisher Adams Kelly,Brisbane
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