John Charles Pepperell and Norman Cecil Waterman v Aluminium Specialties Pty Limited

[1997] APO 37

official notice

decision of a delegate of the commissioner of patents

Petty Patents :  No.s 667181 and 667182 in the name of John Charles Pepperell and Norman Cecil Waterman

Title:  An Intruder Resistant Screen

Action:  Applications under Section 69 for extensions of term of the petty patents; notices by Aluminium Specialties Pty Limited under Section 28.

Decision:  Issued            .

Abstract:

The section 28 notices relying for their substance on the informant’s evidence were nevertheless considered adequate for their purpose. Invalidity on the grounds specified in section 28(1) was not demonstrated and consequently extensions to the terms of the petty patents were granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No.s 667181 and 667182 in the name of John Charles Pepperell and Norman Cecil Waterman, applications under Section 69 for extensions of term of the petty patents and notices by Aluminium Specialties Pty Limited under Section 28.

background

Petty patent applications 25039/95 (667181) and 25040/95 (667182) were both filed on 18 July 1995 as divisionals of patent application 24001/95. 24001/95 was filed on 8 June 1995 as PCT/AU95/00337 and claims priority from petty patent application 71528/94 filed on 30 August 1994. This application was sealed on 1 December 1994 as petty patent 655152 which is in force until 30 August 2000.

Petty patents 667181 and 667182 were sealed on 7 March 1996 and the patentees applied for extensions of term on 17 January 1997. The informant notified the Commissioner of matters pursuant to section 28 of the Patents Act 1990 on 22 January 1997.

The evidentiary stages were completed on 30 April 1997 and the matter came to hearing in Canberra on 18 July 1997. Dr M Horsburgh, patent attorney of Fisher Adams Kelly, Brisbane represented the patentees. Mr R Halliday, patent attorney of Carter Smith & Beadle, Sydney represented the informant.

I allowed a further seven days from the date of the hearing for the parties to file written submissions on costs.

SPECIFICATIONs

Apart from the consistory statements and claims the patent specifications are substantially identical. They begin by stating that the inventions relate to an intruder resistant screen particularly useful for both security and insect screening of windows. As background the specifications refer to steel bar grills and screens with wide grade mesh which are said to be susceptible to cutting by an intruder and, in the case of the mesh, being removed from its frame. They also require additional fine mesh insect screening which itself is not intruder resistant and can be easily removed and broken. Furthermore it is said that to provide limited security and insect screening both fine mesh screens and security screens or grills are often used which has the disadvantage of increased manufacturing or installation costs.

Following the consistory statements the description refers to a number of embodiments which disclose a number of different ways of securing a stainless steel mesh to an extruded or rolled aluminium frame. Table 1 specifies a number of suitable meshes with various wire diameters between 0.8 and 1.2mm and weft/warp spacings between 0.1 and 2.2mm. The mesh is said to “provide difficulties for intruders as a sufficiently large hole to gain entry cannot be easily sawn or cut by bolt cutters due to the mesh grade which also provides insect screening.” And that these difficulties are compounded “due to the properties of stainless steel which can blunt cutting tools”.

The claims of 667181 are as follows:

“1.      An intruder resistant screen including:
           a frame comprising elongate frame members each having a channel section engaging a respective corner stake in each end thereof;
           a woven stainless steel wire intruder resistant mesh covering an opening enclosed by said frame said mesh having spacings between adjacent wefts or warps of no greater than 2.2 mm; and
           a plurality of clamping members co-acting with respective fastening means to thereby clamp said mesh to said frame,
           wherein, each edge of said mesh has an adjacent area with no more than one offset edge strip, said strip being offset relative to a plane of said mesh enclosed by said frame.

2.        An intruder resistant screen as claimed in claim 1, wherein said adjacent each respective edge of said mesh is clamped to said frame such that each clamped area is in the same plane as said mesh enclosed by said frame.

3.        An intruder resistant screen as claimed in claim 1 or claim 2, wherein said adjacent area is in close proximity to no more than two surfaces of each clamping member.”

The claims of 667182 are:

“1.      An intruder resistant screen including:
           a frame comprising elongate frame members each having a channel section engaging a respective corner stake in each end thereof;
           a woven stainless steel wire intruder resistant mesh covering an opening enclosed by said frame said mesh having spacings between adjacent wefts or warps of no greater than 2.2 mm, and said wire having a diameter between 0.8mm to 1.2mm; and
           a plurality of clamping members co-acting with respective fastening means to thereby clamp said mesh to said frame.

2.        An intruder resistant screen as claimed in claim 1, wherein said clamping members extend along the length of a respective frame member.

3.        An intruder resistant screen as claimed in claim 1 or claim 2, wherein said spacings are in the range between 1mm to 2.1mm.”

Evidence

The informant filed a declaration by Peter Stephenson, a Director of Aluminium Specialties Pty Limited, in relation to each patent. Mr Stephenson makes statements concerning novelty, inventive step and clarity in relation to the inventions claimed and refers to the following exhibits:

In relation to 667181:

• PS1 - A copy of 667181 and copies of patent specifications US 2,989,788, US 1,350,027, US 1,987,860 and Australian Patent 201471 together with evidence relating to the date they became available to the public in Australia.

• PS2 - Tender and contract documents in relation to the supply and installation of window screens at 332 Park Street, South Melbourne for the Victorian Ministry of Housing.

• PS3 - Tender and contract documents in relation to the supply and installation of window screens at 12 Sutton St. and 76 Canning St., North Melbourne for the Victorian Ministry of Housing.

• PS4 - A declaration by Sam Dermody, General Manager of Wire Mesh Industries Pty. Limited, in relation to wire products supplied by his company and including exhibit SD1 which is a product brochure produced for that company.

In relation to 667182:

• PS1 - A copy of 667182 and copies of the patent specifications listed in PS1 above.

• PS2, PS3 and PS4 as above.

The patentees filed the following evidence in response:

1. Declaration by John Charles Pepperell, co-inventor and patentee with Mr Waterman, who provides background to the inventions and comments on aspects of Mr Stephenson’s declaration. He refers to:

• JCP1 - copy a facsimile from Mr Steve Brabeck, then Queensland sales manager of McKechnie Metals expressing interest in supplying and distributing “Crim-safe” security products.

• JCP2 - a photograph of the building at 12 Sutton St.

• JPC3 - a photograph of the building at 76 Canning St.

1. Declaration by Norman Cecil Waterman, co-inventor and patentee, providing background to the inventions and commenting on the commercial success of the security screen.

2. Declaration by James Mark Reid, Marketing Manager of Ideas Management Pty Ltd, in relation to his involvement in the development of the security screens and their commercial success, referring to:

• JMR1 - A list of sales outlets.

• JMR2a-h - Correspondence from sales outlets attesting to the “inventiveness of the product”.

• JMR3 - A letter from the Managing Director Bumi Trading expressing interest in marketing the “ ‘Crimsafe’ products for the ASEAN market”.

1. Declaration by Steven John Brabeck, founder of Ideas Management Pty Ltd, relating to the commercialisation of the patentees’ security screens, including negotiations with the informant Aluminium Specialties Pty Ltd, and observations on the buildings referred to in Mr Stephenson’s declaration. He refers to:

• SJB1 - Copy of JCP1 referred to previously.

• SJB2 - Copy of a letter from Mr Brabeck to Mr Stephenson in relation to their negotiations over the security screens

• SJB3 - Copy of a facsimile from Mr Stephenson to Mr Brabeck apparently in relation to marketing and licensing security screens in Western Australia.

• SJB4 - Copy of a facsimile from Mr Stephenson to Mr Brabeck in relation to marketing and licensing security screens in South Australia.

• SJB5 - Photographs of the building at 12 Sutton St.

I will refer to this evidence and to the submissions made by Dr Horsburgh and Mr R Halliday as is appropriate in my decision.

decision

Section 28 allows a person (the informant) to assert that a petty patent is invalid on various grounds and if the Commissioner is satisfied that a ground mentioned in subsection 28(1) is made out, the extension of the term of the petty patent may be refused. If not satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).

The grounds specified in subsection 28(1) are:

(a)that the patentee was not entitled to be granted the petty patent;

(b)that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);

(c)that the specification does not comply with subsection 40 (2) or (3).

As a preliminary matter Dr Horsburgh objected that the informant’s notice did not set out the reasons why the petty patents were invalid. I note that the notices identify the two statutory declarations filed as evidence and then state:

“We enclose the above Statutory Declarations as notification by Aluminium Specialties Pty Limited under Section 28 of the Act in relation to any extension of term which may be sought by the Patentee”.

I find that this statement together with the declarations referred to is adequate for the purpose set out in section 28. The “reasons” asserted by the informant, while not conveniently summarised, are nevertheless readily apparent from the declarations and the patentees have had fair notice of the case made against them.

Meaning of “intruder resistant”

An important issue in considering the two patents is the meaning in the claims of the term “intruder resistant”. Mr Halliday submitted that the term was indefinite and placed no real limitation on what was claimed. He said that from the dictionary “intruder resistant” meant “oppose or meet with force, the force applied by one who attempts to enter without invitation or being wanted” and is totally dependant on the amount of force that an intruder is prepared to exert.

I do not think that applying such an indefinite meaning in the claims leads to a sensible result. The term is clearly intended to limit the type of mesh used in the claimed inventions and in the circumstances I believe it is reasonable to look to the body of the specification for assistance (Decor Corp. V Dart Industries 13 IPR 385, Marconi v Mullard (1923) 40 RPC 159). What is apparent from the specifications is that fine mesh screens commonly used in the art for insect screening are not to be considered “intruder resistant”. This is supported by the Pepperell and Waterman declarations which indicate that the screens were intended as an alternative to existing security screens. That is, offering security but having the appearance of an insect screen. While further expert evidence on this point may have clarified the distinction between a security or “intruder resistant” screen and an insect resistant screen I believe this general interpretation is sufficient for the purpose of this decision.

Section 40

While Mr Halliday did not directly raise any issues under section 40 Mr Stephenson does so at paragraph 15 of his declaration in relation to 677181. He states that the words “said adjacent each respective edge of said mesh is clamped” in claim 2 of that patent are not clear. Dr Horsburgh acknowledged that words were missing between “said” and “adjacent each” and I agree that the missing reference is clearly to the “area with no more than one offset edge strip” adjacent each edge of the mesh as defined in claim 1. This error would be easily resolved by a skilled addressee and hence I do not believe the claims offend section 40. Similarly I believe that the meaning of claim 3 of this patent could be resolved by a skilled addressee following the normal rules of construction.

Consequently the 677181 patent has not been shown to be invalid on the basis of this ground.

Inventive Step

Mr Halliday indicated that the informant was not arguing lack of novelty but rather a lack of inventive step or obviousness. The general test to be applied in determining obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date (The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd ( 1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

As to what constitutes common general knowledge, in his judgement in Minnesota Mining and ManufacturingCompany v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292, Aickin J stated:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

Mr Halliday, as I understood his submission, was arguing that US 1,350,027 was prior art information that could be relied on under section 7(3). However this specification appears to relate more to the general field of insect screening rather than security screening and consequently I have some doubt as to whether the skilled person could be reasonably expected to have ascertained, understood and regarded this document as relevant. As there is nothing in the evidence to assist me on this point, or anything to suggest that this or any of the other patent documents were part of the common general knowledge in the art, I do not think I can give them any weight as far as the issue of obviousness is concerned.

Mr Stephenson’s declaration apart from the references to published patent specifications offers little in the way of identifying the common general knowledge in the art. In relation to “a woven stainless steel wire intruder resistant mesh” Mr Stephenson states at paragraph 8 that “stainless steel mesh has been used extensively for security purposes”. There is however little to back up this assertion. The patentees evidence (eg Pepperell para’s 12 and 13) gives me sufficient cause to doubt that the screens referred to in the tender documents PS2 and PS3 are “intruder resistant” and the mere existence of various grades of stainless steel mesh as established by Dermody in PS4 does not demonstrate that it has ever been used for security purposes, let alone to have been common general knowledge in the art.

The informant’s case is in any event flawed in that it attacks individual integers without appreciating that the claims are for a combination of features. This approach was clearly rejected in the 3M decision mentioned previously. Consequently I am not satisfied that the patents are invalid on this ground.

Manner of Manufacture

Mr Halliday referred to the decision in TheCommissioner of Patents v Microcell 102 CLR 232 and submitted that 667181 claims no more than a known article (referring to US 1350027) where the mesh is made of a particular type to take advantage of its known properties.

I do not think this argument is well founded because the informant has not shown that the combinations claimed are old. In Ramset Fasteners (Aust ) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256 the court stated that a combination patent may be valid even if each integer, when considered separately, is well known; but in that case the combination itself must be new, and referred to the following passage from Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc 26 IPR 565 at 570:

" There can be no subject matter ... in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers.  Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination."

667181 claims, inter alia, a screen with “intruder resistant” stainless steel mesh, the mesh having weft or warp spacings no greater than 2.2mm and with no more than one offset edge strip adjacent each edge. There is nothing in evidence to show this is not a “new mutual relation in the operation of the integers” and consequently the informant has failed to show invalidity on this ground.

Conclusion

I am not satisfied that either petty patent is invalid on any ground mentioned in subsection 28(1) and consequently I grant extensions of term for petty patents 667181 and 667182.

costs

I award costs against the informant, Aluminium Specialties Pty Limited.

Delegate of the Commissioner of Patents
Philip M Spann

Patent attorneys for the patentees:  Fisher Adams Kelly, Brisbane

Patent attorneys for the informant:  Carter Smith & Beadle, Sydney