John Clement Preston v Natform (Nsw) Pty Limited

[1999] APO 36

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 680683 in the name of John Clement Preston

Title:          Construction Platform

Action: Opposition under s.59 of the Patents Act 1990 by Natform (NSW) Pty Limited

Decision:          Issued            .

Abstract

The ground of lack of novelty was not established because:

• Earlier AU document does not disclose all the essential integers of the claim whether or not the earlier document included a misprint.

• Prior use was not established because the documentary evidence did not satisfactorily support the declaratory evidence in the light of counter-evidence.

• An SU document was not published in a version which could be used to support the ground of lack of novelty.  The publication level of the document was such that the claims only of the document were published before the priority date of the claims under opposition.  The claim of the SU document does not disclose all the essential integers of the claims under opposition.

The ground of lack of inventive step was not made out because the state of the common general knowledge was not satisfactorily established due to the lack of any corroboratory evidence.

Some section 40 defects were found in the specification.

The priority date of the claims was found to be the date of filing of the corresponding international application.

The applicant was given an opportunity to amend the specification to overcome the section 40 defects.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 680683 by John Clement Preston and Opposition under s.59 by Natform (NSW) Pty Limited

BACKGROUND

John Clement Preston filed International Application PCT/AU94/00509 on 30 August 1994, claiming priority from Australian provisional application PM0921 filed on 30 August 1993.  The application entered the national phase in Australia and was advertised accepted on 7 August 1997 as patent application 680683.

On 6 November 1997, Natform (NSW) Pty Limited filed a notice of opposition and the statement of grounds and particulars was served on 6 February 1998.  All the evidentiary stages, including evidence in reply, were completed by 5 November 1998.

The matter was heard in Sydney on 5 March 1999.  The applicant was represented by Mr J M Ireland QC instructed by Mr Robert Shelston and Mr Frank Pappas, patent attorneys of Carter Smith & Beadle, Sydney.  Mr John Preston, the patent applicant also attended.  The opponent was represented by Mr Richard Cobden of counsel, instructed by Mr Andrew Wiseman and Mr Simon Writer of Allen Allen & Hemsley, Sydney.

THE SPECIFICATION

The invention relates to construction platforms or temporary landings which extend away from an exterior face of a multi-storey building under construction.

The general features of certain prior art construction platforms include a pair of generally parallel, co-extensive, transversely spaced apart, horizontal beams which extend outwardly from a floor of the building under construction.  A landing floor extends between the beams and a safety rail extends about the outer free edges of the platform.  The beams are fixedly secured to the floor and have cantilever portions which project out from the building and carry the landing floor.  The beams can be secured to the floor of the building by two adjustable struts which extend between a portion of each beam adjacent one floor and the adjacent floor of the building.

Previously, construction platforms have been used which can be moved from an outboard position to an inboard position and vice versa.  The specification explains that such movable deck construction platforms which have a horizontally movable landing deck on the semi-permanent supporting beams are expensive and difficult to move when heavily laden and, in the outboard position, are obtrusive.

The invention is described as being concerned with construction platforms with retractable decks, in which locking devices are provided for retaining the movable deck in selected positions and wherein the deck is bounded along its outboard edges by safety barriers irrespective of its position.

The specification refers to a second class of the invention in which the entirety of the outboard portion of a retractable deck type construction platform is retractable to an inboard position.

A consistory statement is included which is similar in wording to claim 1, except for two spelling mistakes which appear in the claim.

Two embodiments of the invention are identified followed by a detailed description of the invention with reference to the drawings.

There are 18 claims including an omnibus claim.  Claim 1 reads as follows:

"A construction platform comprising a stationary support structure adapted to be fixedly secured to a floor of a building under construction, a land deck having an outermost edge carried by said support structure and able to move to and fro between at least one inboard and at least one outboard position relative to the building, immobilising means to releasably lock the deck in said at least one outboard position, and safely (sic) barrier means movable with the deck and extending along its said outermost edge."

At the hearing, there was agreement by both parties that "land deck" was clearly intended to be "landing deck" and "safely barrier" was clearly intended to be "safety barrier".

It is worth noting here that Mr Preston has identified two types of construction platforms in his statutory declaration.  They are fixed deck platforms and movable deck platforms.

I understand fixed deck platforms to be arrangements where the landing deck is fixed to supporting beams which may be fixed to the building or, if they are retractable, may be located on rollers to allow the deck and a part of the supporting beams as a whole to be moved from inside the building to outside the building and vice versa.  Retractable fixed deck platforms have stationary support structures secured to the floor of a building.  Such stationary support structures may include rollers over which the deck can be moved.  I believe that the embodiment in relation to Figures 18 to 27 of the present specification is a retractable fixed deck platform.

I understand movable deck platforms to be arrangements where the landing deck moves between the flanges of two stationary parallel beams fixed to the floor of the building.  Such movable deck platforms are disclosed for example in Figures 1 to 17 of the present specification.  I note here that the present claim 1 does not necessarily define a movable deck platform.

STATEMENT OF GROUNDS AND PARTICULARS

The grounds of opposition identified in the statement are that the claimed invention is not novel and lacks an inventive step and that the complete specification does not comply with section 40.

In relation to the ground of lack of novelty, the particulars identify two separate instances of prior use and a number of paper anticipations.  These particulars are also relied on in relation to the ground of lack of inventive step.

The particulars identify only one specific example of alleged non-compliance with section 40.  This is in respect of dependent claim 17.

EVIDENCE

The evidence in support comprises three statutory declarations.  They are:

A declaration by Brett Andrew Lunn who is a registered patent attorney.  This declaration has a number of exhibits.  However, in his declaration, Mr Lunn concentrates on two of the exhibits.  They are a copy of AU patent specification 629397 (63026/90) in the name of the present applicant and a copy of SU patent application 1728127 together with a verified translation.  In relation to patent specification 629397, Mr Lunn submits that all of the features of the claimed invention are disclosed in this specification and, in particular, an immobilising means is disclosed in the form of a nail which restricts the movement of the rollers of the landing deck.  In relation to the SU specification, Mr Lunn argues that all of the essential integers of the claimed invention are disclosed.  With respect to immobilising means, Mr Lunn identifies two pawls which are referred to in the translated description of the SU specification.  He contends that the first pawl locks the platform in its outboard position.

A declaration by Rick Ryerson.  Mr Ryerson indicates that he has been employed as senior project manager at Concrete Constructions Group Limited since 1984.  There is a number of exhibits, the most important of which consists of coloured copies of four photographs.  Mr Ryerson submits that these four pictures depict the types of construction or loading platforms which were used during the construction of what Mr Ryerson calls the Grosvenor Place project.  This project took place between May 1984 and December 1987.  Mr Ryerson explains the features of the loading platforms and identifies a releasable lock or immobilising means.  Mr Ryerson submits that, although not all of the components of the releasable lock can be seen in the pictures, such locking arrangements were part of the construction platforms used in the Grosvenor Place project.

A declaration by Renato Bolzon.  Mr Bolzon indicates that he was a general foreman with Civil & Civic Limited from 1974 to 1989.  Mr Bolzon asserts that he is aware of the use of construction platforms having the features identified in the present claim 1, prior to August 1996.  Mr Bolzon indicates that he has viewed the photographs of the construction platform used in the Grosvenor Place project in 1985.  He states that he has seen this type of platform being used in various construction sites.  Mr Bolzon also asserts that it would have been an obvious alternative to use the particular type of immobilising means using clearance recesses as defined in claim 15.

The evidence in answer consists of two statutory declarations.  They are:

A declaration by Robert Shelston who is a patent attorney with Carter Smith & Beadle, the firm representing the patent applicant.  Mr Shelston challenges the assertions made in the Lunn declaration about the nail being used as an immobilising means in patent specification 629397.  Mr Shelston argues that the term "nail" is not appropriate in relation to metal supports.  He concludes that the term "nail" is a misprint for "rail" which would make more sense in the context of the specification.  In support of this, Mr Shelston has attached to his declaration, an exhibit which appears to be a photocopy of a list of proposed amendment items.  One of these items proposes to change "nail" to "rail".  Mr Shelston explains that he received this copy from the patent applicant and that this list is part of the statement of proposed amendments provided to the US Patent Office during the prosecution of the equivalent US patent application to AU patent application 629397.  Mr Shelston also challenges Mr Lunn's interpretation of the SU document.  Mr Shelston states that a pawl could not be regarded as an immobilising means for preventing movement in both directions.

A declaration by John Clement Preston who is the present applicant and inventor.  Mr Preston indicates that he has over 30 years experience in the building and construction industry in Australia.  Mr Preston states that he visited the Grosvenor Place construction site on at least ten occasions.  Mr Preston declares that during most of these visits he inspected the construction platforms being used.  He states that the platforms were so heavy to move that three or four people were required to move them into the inboard and outboard positions.  He did not see anyone use a releasable immobilising means.  While he did observe chains which are depicted in the photographs included with the Ryerson declaration, Mr Preston states that he noticed that none of the beams had any holes drilled in them to receive a locking pin.  Mr Preston recalls, however, that he did see one person use a chain and locking pin but this was only to secure the wheeled assemblies together when the platform was being moved from one floor to another.  In relation to the Bolzon declaration, Mr Preston argues that Mr Bolzon has provided no evidence for any of his assertions.

The evidence in reply consists of a second declaration by Mr Lunn.  Mr Lunn replies to the points raised in the Shelston declaration.  He refers to the SU document and contends that the pawl is the equivalent of the immobilising means defined in the claims.  In relation to patent specification 629397, Mr Lunn argues that there is no support in the specification that the term "nail" is an obvious mistake or clerical error.  Mr Lunn also challenges the list of amendment item numbers by querying its incompleteness.  Mr Lunn further interprets the 629397 specification to provide reasons for his conclusion that the nail performs the function of a releasable immobilising means.

SUBMISSIONS

Both parties provided me with written summaries of their oral submissions made at the hearing.

In response to concerns I raised at the hearing about the priority date of at least some of the claims, both parties provided me with written submissions on this matter subsequent to the hearing.

I will refer to the submissions where appropriate in my decision.

DECISION

At the hearing, Mr Cobden indicated that the opponent would be focussing on the grounds of lack of novelty and inventive step.  While the statement of grounds and particulars identifies one instance of alleged non-compliance with section 40, I do not believe that this has any substance.

There are some issues, however, that have arisen during the prosecution of this matter which I need to consider in relation to section 40.

Section 40

There appears to be a certain amount of confusion in relation to what the present specification describes as the invention and in relation to what is included within the scope of claim 1.  I think that this is in no small part due to the way the present specification is drafted.

On page 2 of the specification, reference is made to earlier known platforms referred to as movable deck platforms where the landing deck has been carried by semi permanent support beams.  The problem with these platforms, the specification indicates, is that the platforms are expensive and/or difficult to move when the landing deck is heavily loaded.  Another problem with these construction platforms is that the outboard portions of the deck, and to a lesser extent, their support beams, are obtrusive and undesirable.

It is clear to me from this that the specification is stating that prior movable deck platforms have certain deficiencies.

The detailed description of the invention includes three main embodiments viz. as shown in Figures 1 to 17, Figures 18 to 27 and Figures 28 to 31 respectively.

The construction platform of Figures 1 to 17 is a movable deck platform.  The platform shown in Figures 18 to 27 is a retractable fixed deck platform.  The platform shown in Figures 28 to 31 appears to be a combination of a retractable fixed deck and movable deck platform.  I note that this embodiment makes no reference to any immobilising means.

In providing an overview of the invention, Mr Ireland submitted that the present construction platforms were of the type where the landing deck is not moved when fully laden.  In other words, the landing deck is not moved to transport a load from outside the building to inside the building and vice versa.  It is moved inside the building when access to other construction platforms below is required.  At the hearing, I asked Mr Ireland if there was a clear indication in the specification that the construction platforms were of the type which did not allow the landing decks to be moved when fully laden.  Mr Ireland referred me to the consistory statement.  However, I do not believe that this in any way identifies the contention that the landing decks are not allowed to be moved when fully laden.  In this respect, I note that Mr Preston makes no particular mention of this aspect of the present platforms in his declaration.

However, I must say that, without an explanation that the landing decks are not moved when fully laden, the specification is totally unclear as to how the use of an immobilising means overcomes any of the problems identified in the prior art construction platforms.  The use of immobilising means and safety rails does not overcome the problems of expense or difficulty in moving the fully laden platforms nor does it appear to solve the problem of obtrusiveness and undesirability of the outboard portion of the landing deck.

Without the proviso that the landing deck is not moved when fully laden, the first embodiment, which is directed at a movable deck platform, would not seem to overcome any of the deficiencies above (unless the use of a drive motor overcomes the problem of difficulty in movement).

Even if the specification did indicate that the landing decks are not moved when loaded, it would seem to be somewhat trite that the solution to the landing deck being difficult to move when the landing deck is heavily loaded is not to move the landing deck when it is heavily loaded.

The second embodiment appears to overcome the problem of obtrusiveness of the outboard portion because the platform is a retractable fixed deck platform that is capable of being moved to an inboard position so that it is not protruding from the building.

The third embodiment, which does not include an immobilising means, appears to overcome the fact that construction platforms can be obtrusive.  The construction platform of the third embodiment is capable of being moved entirely inside the building so that no part is protruding from the building when it is in its inboard position.

Because claim 1does not specify that the landing deck is not moved when fully laden, it does not define any of the above identified features which achieve the object of the invention to overcome at least one of the deficiencies of the prior art platforms.  The use of immobilising means and safety rails does not overcome the problems of expense or difficulty in moving the fully laden platforms nor does it appear to solve the problem of obtrusiveness and undesirability of the outboard portion of the landing deck.

As Mr Cobden pointed out in relation to the ground of lack of inventive step, there appears to be no problem solved by the inclusion of the immobilising means.  I would add to this that there is no stated problem solved by the inclusion of safety barrier means which move with the deck.

Mr Preston, in paragraphs 13, 16 and 20 of his declaration, refers to the present construction platform of patent application 680683 as being of the movable deck type where the landing deck moves between the flanges of two stationary parallel beams fixed to the floor.  The present claim 1, however, does not define such a landing deck.  It merely requires that the deck is carried by a support structure and that it can be moved between an inboard and an outboard position.  This would seem to encompass the fixed deck type which Mr Preston states was used at the Grosvenor Place site (leaving aside for the moment the question of whether or not the Grosvenor Place construction platforms included immobilising means).

In the light of this, I am of the opinion that the present claim 1 is not fairly based on the matter described because it does not include any of the features which overcome the defects in the prior art referred to on page 2 of the specification.  I am of this view because the specification does not in any way stipulate that the construction platforms are of the type that do not have the landing deck moved when it is loaded.  The requirement in the claim that the landing deck can be releasably locked in an outboard position does not mean that the immobilising means cannot be unlocked to allow the landing deck to be moved when it is loaded.  Also the claim does not specifically define the construction platforms described in the second and third embodiments which appear to overcome at least one of the prior art deficiencies.

Another issue which I raised at the hearing is that claim 14, which refers to the drive motor being rendered inoperable if a barrier gate is open, has no support in the description for such a feature and is therefore not fairly based on the matter described.

In summary I have found that claim 1 and claim 14 are not fairly based on the matter described in the specification.

Novelty

In relation to this ground, Mr Cobden identified three main areas on which the opponent was relying.  They are two instances of paper anticipation and one of prior use.  The two documents relied on are the patent specification AU 629397 (62026/90) in the name of the present applicant and the SU document 1728127.  The prior use relied on is that which Mr Ryerson alleges occurred at the Grosvenor Place project.

In considering the question of novelty, I was referred to the reverse infringement test as set out by Aickin J in Meyers Taylor v Vicarr Industries (1977) CLR 228 as follows:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

In Rodi Wienenberger AG v Henry Showell (1969) RPC 367 at page 391, infringement of a claim is said to occur when "each and every one of the essential integers" of that claim have been taken.

The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, (1982) RPC 183 at page 228, as follows:

"... I think that one can venture upon the following generalisations on the question of essentiality.  (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim.  (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature.  If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim.  But (3), all claims are not perfectly framed.  Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly.  In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it.  (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one.  If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger (supra) all assume that a claim may include an inessential feature."

In relation to the essential integers of claim 1, neither party provided me with submissions on what features of the claim were essential apart from the fact that both Mr Ireland and Mr Cobden suggested that the immobilising means was the crux of the invention.  At the hearing, I indicated that there was at least an issue as to what was essential in relation to the position of the safety barrier means when considering the SU document.

I have mentioned in relation to s.40 that the immobilising means and the safety barrier means do not appear to be essential to the working of the invention insofar as that invention is intended to overcome the deficiencies identified in the prior art.  However, they clearly are important aspects of the claim itself.  I note that claim 1 is an independent claim and indeed the only independent claim apart from the omnibus claim.  This should be given some weight.  I take note of the words in Catnic Components v Hill and Smith Ltd (supra) at page 227 in relation to independent or leading claims:

"An applicant for a patent will want his leading claim to be as wide as is possible consistently with its validity.  He will wish to avoid any unnecessary restriction of it.  So he will want to avoid claiming any feature which would unnecessarily restrict the scope of the claim.  A well drawn leading claim will accordingly specify only those features which are essential to the invention claimed.  It follows, in my opinion, that the applicant probably regards all the features of his leading claim as essential features of the invention."

I think it is clear from the wording of the claim itself that the applicant intended for these features to be essential to the claimed construction platform.  Without them, the claim would have little substance.

However, although I received no submissions from either party in relation to the safety barrier means, I have concerns about how it interacts with the other features of the claim and in particular with the immobilising means.  It seems to me that the immobilising means does not interact with the safety barrier means and vice versa.  Therefore there appears to be no working interrelationship between these two features.

The specification provides little assistance as to how the movable safety barrier means contributes to the working of the invention in relation to the overcoming of the deficiencies of the prior art.  However, it does indicate on page 3 in relation to two classes of embodiments that the movable safety barrier means are part of the construction platforms of these embodiments.  Therefore I will take the view that the safety barrier means is an essential integer of claim 1

Although, as the claim is presently defined, the immobilising means does not appear to assist in overcoming the prior art deficiencies, Mr Ireland argued that the immobilising means represented the crux of the invention.  Mr Cobden also suggested that it is this feature, at best, which distinguishes the claimed construction platform from the prior art. The specification does indicate, at the bottom of page 2, that locking devices for retaining the deck in selected positions is part of one class of embodiments of the invention.  Apart from the consistory statement, this is the only part of the specification which refers specifically to the locking means being essential to the invention.  The other embodiments described on page 3 refer to platforms with movable safety barrier means without any reference to immobilising means.  However, I am prepared to accept that the immobilising means is an essential integer of claim 1.  All other features would also appear to be essential integers.

I now turn to the particular examples of the prior art relied on by the opponent.

AU 629397

At the hearing and in evidence there was much discussion about the term "nail" in relation to whether or not it was a misprint and also whether or not it could perform the function of an immobilising means for releasably locking the deck in an outboard position.  While this is relevant to whether or not all the essential integers of claim 1 are disclosed in AU 629397, I think that I need first to decide if all the other essential integers have been disclosed in AU 629397.

No submissions from either party were provided at the hearing in relation to whether the other claimed integers are disclosed.  It appears that both parties agree that all the other integers are included in AU 629397.

Mr Lunn referred to some passages in this specification that I do not believe disclose the necessary essential integers of claim 1.  However, in relation to the embodiment, in Figure 32, relied on by the opponent in relation to the use of a nail, the landing deck moves between an inboard and an outboard position.  This embodiment does not include a movable safety barrier means.  As to whether or not the nail acts as an immobilising means, the relevant passage occurs on page 9, lines 23 to 30, as follows:

"As an alternative to the embodiments shown in Figures 27 to 31, the floor panel 37 could be mounted on a frame 62, best seen in Figures 32 and 33.  In this particular embodiment, the frame 62 could be mounted on wheels enabling it to move in the direction of the arrow 63.  Accordingly the floor panel 37 will be movable to a retracted position again allowing a crane to move an object therepass (sic).  In this particular embodiment, the side panels 38 and doors 47 could remain attached to the beam 32.  The wheels or rollers would engage a nail fixed to each of the beams 32."

I think it is appropriate, first of all, to assume that the person skilled in the art would read "nail" and assume it is a correct term i.e. I am assuming for the moment that the person skilled in the art would not regard the term "nail" as being incorrect and that "rail" was really intended.  I note here that, although both Mr Lunn and Mr Shelston provide comments in relation to this matter, they cannot be said to be persons skilled in the art.  Those declarants who could be considered to be persons skilled in the art have not commented on this issue.

At the hearing, I asked Mr Cobden whether the sentence in the above passage indicating that the floor panel could be movable to a retracted position had any qualification on what the nail did in relation to the rollers.  Mr Cobden submitted that the fact that the sentence indicated that the floor panel could be movable to a retracted position again meant that the floor panel could be in an outboard position when the nail engaged the rollers.  Mr Ireland made the point that the drawings do not disclose a nail.  Mr Lunn, in his second declaration, provides a dictionary definition of "engage".  From this definition, Mr Lunn concludes that the nail interlocks with the wheels or rollers.

I am not convinced by either Mr Lunn's or Mr Cobden's arguments.  I am of the view that there is no clear disclosure of an immobilising means which releasably locks the deck in at least one outboard position.  I do not believe that a nail could be said to lock let alone releasably lock the floor panel in an outboard position.  There is no indication of where the nail is located or how it engages the wheels or rollers.

Having come to this conclusion, I do not have to decide if the term "nail" is a misprint for "rail" as I have found that AU 629397 does not disclose all of the essential integers of claim 1.  However, it seems to me to be a plausible explanation that the applicant has provided.  In this regard however, I take the point raised by Mr Lunn in his second declaration that the evidence provided by Mr Shelston in relation to the proposed amendments is not completely convincing especially as it is not supported by anything in the Preston declaration.

For the sake of completeness, I will refer to the embodiment shown particularly in Figure 29 of AU 629397.  This was not discussed by either party at the hearing but I note that there is disclosed a landing deck which pivots between a horizontal and a vertical position.  It could be argued that there is therefore a construction platform with a landing deck being movable between an inboard and an outboard position.  The landing deck includes safety barrier means movable with the deck and extending along its outermost edge.  However, I do not think that there is a disclosure of an immobilising means which releasably locks the deck in an outboard position.

AU 629397 does not render the claims not novel.

SU 1728127

With relation to this Russian document, the critical thing I first need to decide is when was it published and what was actually published.  I inquired of Mr Cobden at the hearing if the opponent was relying on the date at the front of the document labelled with INID (Internationally agreed Numbers for the Identification of Data) code 46 to establish the publication date of the document.  Mr Cobden indicated that the opponent was relying on this particular date.  Mr Ireland argued that INID code 46 is a publication category which publishes the claims only of a patent document.  He offered to provide a copy of a list of INID codes but Mr Cobden indicated that it would not be necessary.  There were no submissions provided on behalf of the opponent in relation to the meaning of this INID code.  I have consulted a list of INID codes and am satisfied that INID code 46 is the "date of making available to the public the claim(s) only of a document".  I therefore must conclude that the claim is the only part of SU 1728127 for which there is evidence of publication before the priority date of the present claims.

The translation of the claim refers to Author's Certificate 1348297.  However this document is not in evidence.  The claim does refer to a horizontal rod for locking the frame but this frame is a vertical frame.  The claim of SU 1728127 does not disclose all of the essential integers of the present claim 1.  Therefore the opposed claims are novel with respect to this document.

I would note that, even if the whole of SU 1728127 was published before the priority date of the present claims, there is considerable doubt as to whether the document discloses an immobilising means.  It is not entirely clear that the pawl arrangement referred to by Mr Lunn in his declaration actually does act as an immobilising means to releasably lock the deck in an outboard position. Also the SU document fails to disclose movable safety barrier means extending along the outermost edge of the deck.

Prior use at Grosvenor Place

The evidence in respect of prior use is contradictory; Mr Ryerson arguing that such prior use took place and the present applicant, Mr Preston claiming that there was no evidence of such prior use on his frequent visits to the Grosvenor Place site.

The standard of proof required to establish prior user was considered by Graham J. in Seiller's Application (1970) RPC 103 at 106 as follows:

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which it was stated:

"It is essential that an allegation of prior public use should be strictly proved.  Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care.  The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."

In the present matter, the opponent has attempted to corroborate Mr Ryerson's allegations of prior use by exhibiting a series of coloured photocopies of colour photographs of a construction platform.  Mr Ryerson argues that the photographs are of construction platforms located in the Grosvenor Place construction site.  However, there is no evidence of when or where these photographs were taken except for Mr Ryerson's assertion that he recognises "the familiar buildings on George Street in the background at that time" as seen in one of the photographs.  I am unable to determine much at all about the buildings in the background of the copy of the particular photograph referred to, perhaps because of the loss of resolution which has occurred in the colour photocopying of the photograph or perhaps because the background has been over-exposed.  As a means of corroborating the time and place of the taking of the photographs, I think that reliance on the nature of the background buildings carries little weight.

The Bolzon declaration also refers to these copies of the photographs but there is no suggestion that Mr Bolzon is providing corroboration for the allegation of prior use at the Grosvenor Place site.  He argues, instead, that he has seen this type of construction platform at various sites.  I do not think that this supports the assertion that the photographs depict the construction platforms that were used at the Grosvenor Place construction site from 1984 to 1987.

All in all, I do not think that the opponent has provided "documents contemporary with the fact to be proved".

However, I believe that I should give weight to the fact that Mr Ryerson is an independent witness.  His independence has not been challenged either in the evidence in answer or at the hearing where I raised this issue.  Therefore, I will consider what were the features of the construction platforms that Mr Ryerson argues were used at the Grosvenor Place site between 1984 and 1987.  In paragraph 8 of his declaration, Mr Ryerson provides his interpretation of the features disclosed in the photographs as well as further features he alleges were used in the Grosvenor Place construction platform as follows:

• "A stationary support structure adapted to be fixedly secure (sic) to a floor of a building under construction.  In the case of the Grosvenor Place Project the support structure consisted of two pairs of horizontal beams with bracket and roller endings fixed to the floor of the building parallel to one another and roughly parallel to the external edge of the building.  This can be seen from B-1.

• A land deck having an outermost edge carried by the support structure and able to move to and fro between at least one inboard and one outboard position relative to the building.  This can again be seen from B-1.  In practice, at the Grosvenor Place Project there were two positions used - fully retracted and fully extended.

• Immobilising means to releasably lock the deck in said at least one outboard position.  A close examination of photograph B-3 shows that in a small flange reaching just inside the lower rim of the platform side beam where (sic) a small hole has been drilled and a chain has been attached to the top of the bracket.  At the end of this chain (not visible in (sic) photograph) was a pin or cotter pin being similar to a rigger's podger.  A hole was bored in a suitable position in the bottom flange of the platform side guide beams so that when the platform was in the outward position the hole was located under the earlier mentioned hole so that when the pin was dropped through the two holes, the platform was immobilised in its outward position.

• Safety barrier means movable with the deck and extending along its said outermost edge. This caging is clearly visible in photograph B-1.  The two caging sections on the outer edge of the deck were in practice able to be operated as gates."

Mr Preston indicates in his declaration that he visited the Grosvenor Place site on at least ten occasions.  On some such occasions, he declares that he inspected a number of the construction platforms.  I have no reason to doubt that Mr Preston visited the Grosvenor Place site.  Given the nature of Mr Preston's business and the subject matter of various patent applications in his name, I also think it is fair to assume that Mr Preston would have had an interest in the construction platforms used on the Grosvenor Place site.

In paragraph 13 of his declaration, Mr Preston suggests that the Grosvenor Place construction platforms did not have features such as a moving deck inside the beams or other features which would separate the beams of the support members from the moving deck.  Therefore they were not the same as that which is shown in the present application.  However, I observe that the present claim 1 does not have these features either.

I think the critical point in relation to the alleged prior use at the Grosvenor Place site is whether or not the construction platforms had immobilising means to releasably lock the deck in an outboard position.

As Mr Preston points out and Mr Ryerson also acknowledges, the copies of the photographs do not show immobilising means.  One of the photographs shows a chain in the vicinity of one of the brackets which is fixed to the floor of the building.  There is also a flange on the bracket and, although it is not entirely clear, there appears to be a hole in this flange located above the bottom flange of one of the platform guide beams.  There is no disclosure in the photograph of any corresponding hole in the bottom flange of the guide beam nor is there any disclosure of a pin attached to the end of the chain.

Mr Preston provides a reasonable explanation of why the construction platforms at the Grosvenor Place site did not have immobilising means including, for example, that the platforms were so heavy that immobilisation by any locking means was not required.  Mr Preston also suggests that, because of the weight of the platforms and the difficulty involved in shifting them, the alignment of two holes to allow the positioning of a locking pin would not be feasible.  Mr Preston argues that he saw the chains used to lock the wheeled assemblies together when the platforms were being moved from one floor to another.  This is an entirely different purpose to the immobilising means of the present claimed platform and would thus require different locking arrangements.

Mr Cobden, for the opponent, submitted that, just because Mr Preston did not see the immobilising means alleged by Mr Ryerson to have been used at the Grosvenor Place site, does not mean that they did not exist.  Mr Preston was not at the site all the time.

Mr Ireland submitted that the most telling part of the Ryerson declaration was that the photographs did not show the immobilising means.  Therefore the opponent had not discharged the onus of proof required to establish prior user.

Mr Ireland pointed out that the standard of proof required in proceedings before the Commissioner is the civil standard upon the balance of probabilities.  Dunlop Holding Limited's Application [1979] RPC 523 at 543.

In trying to resolve this conflict, I am mindful of the words of Graham J in Seiller's Application (supra):

"In my judgement it is necessary that proof of prior user in opposition cases should be very clear."

I do not believe that the Ryerson declaration is corroborated in any way by other declarants.  I note that there is a letter annexed to the Ryerson declaration in the name of Graham Stanley who was apparently the project manager at the Grosvenor Place site.  This letter gives a brief description of the type of construction platform used at the Grosvenor Place site but, significantly, does not refer to the use of immobilising means in the construction platforms.  The Bolzon declaration does not corroborate what sort of platforms was used at the Grosvenor Place site.  There is no relevant documentary evidence.  The copies of the photographs are not sufficiently identified to provide such corroboration.  Also the photographs do not disclose the immobilising means.

Given the lack of corroborative evidence provided by the opponent and the plausible explanation provided by Mr Preston in relation to the chains disclosed in the copies of the photographs, I do not think that the opponent has provided clear proof of the alleged prior use.

I find that there is not sufficient evidence for me to find that the claimed invention was prior used at the Grosvenor Place building construction site between 1984 to 1987.

The conclusions I have made in relation to the AU 629397 platforms and the Grosvenor Place platforms with respect to novelty have been based on the assumption that the immobilising means is an essential integer of the claim.  If the immobilising means is not an essential integer of the claim then both these disclosed forms of construction platforms would include all the essential integers of claim 1.  However, I have reached the conclusion that the immobilising means is an essential integer of claim 1 primarily because of the words I have referred to previously in the CatnicComponents case (supra):

"It follows, in my opinion, that the applicant probably regards all the features of his leading claim as essential features of the invention."

Therefore, I find that the ground of lack of novelty has not been made out.

Inventive Step

In relation to the ground of lack of inventive step, Mr Cobden argued that the only possible feature which might be different from the construction platforms which formed part of the common general knowledge in the art was the immobilising means.  Mr Cobden contended that the specification does not describe any problem that needed solving by including immobilising means in the platform.  Therefore, as no problem was overcome, Mr Cobden suggested there is nothing inventive in including such an immobilising means.  At best it is a workshop improvement.

Before deciding the question of inventive step, I need to determine the state of common general knowledge in the industry at the priority date of the present claims.

Common General Knowledge

I think it is fair to say that the construction platforms actually disclosed in the copies of the photographs would have been part of the common general knowledge at the time because Mr Preston, in paragraph 13 of his declaration indicates that these platforms were standard fixed deck platforms.  While Mr Preston contends that these standard fixed deck platforms are not the same as the platforms of the present specification, the present claim 1 is not restricted to a platform which has a landing deck movable between fixed horizontal beams.  Present claim 1 includes the type of platform shown in the photographs (except for immobilising means).  Therefore I agree with Mr Cobden that the difference between the claimed construction platform and the common fixed deck platforms is the use of an immobilising means.

The question I need to decide is whether or not the use of immobilising means to releasably lock the construction platform in an outboard position was part of the common general knowledge or a mere workshop improvement.

The Bolzon declaration includes an assertion by Mr Bolzon in paragraph 20 that various means were used to immobilise the construction platforms of the early to mid 1980s. These included the use of pins or lifting jacks.  In paragraph 14, Mr Bolzon is more specific about how the pins were used to immobilise the movable decks.  It seems to me that the immobilising means referred to in paragraph 14 is such as to releasably lock the landing deck.  I note that the construction platforms referred to by Mr Bolzon are quite different to those disclosed in the Grosvenor Place photographs where the deck is fixed to the beams and the beams and deck both have to be moved i.e. fixed deck platforms.

I need to decide whether these immobilising means were only used in isolated instances or whether they were so extensively used and so well known that they formed part of the common general knowledge.  I note that Mr Bolzon indicates that he used 5 to 7 construction platforms with these features.  Mr Ryerson suggests that immobilising means were used at the Grosvenor Place site although he does not specifically say that the use of immobilising means was so common as to be part of the common general knowledge.  I note that Mr Ryerson is referring to fixed deck platforms whereas Mr Bolzon is referring to movable deck platforms.

Mr Preston provides comments in relation to immobilising means but these comments appear to be based on his assumption that the present claim 1 defines a moving deck inside two beams.  He declares that, prior to August 1993, there were no construction platforms in Australia with immobilising means on a moving deck inside two beams because movable deck platforms were not built by any company other than the present applicant's company.  To my mind this does not contradict an argument that the use of immobilising means was well known in the industry prior to August 1993.

In deciding if immobilising means were part of the common general knowledge, I believe that I should give weight to the evidence of Mr Bolzon because he obviously has extensive experience in the industry and he is an independent witness.  While the Ryerson declaration does not contradict Mr Bolzon's view of the common general knowledge, it provides little support for Mr Bolzon's assertions on the state of the common general knowledge but it does suggest that immobilising means might have been used.  The Stanley letter, annexed to the Ryerson declaration, provides no support at all for Mr Bolzon's evidence.  As Mr Preston is the present applicant and inventor and therefore has a vested interest in the outcome of this opposition, I have given less weight to his account of the state of the common general knowledge although I have not discounted it entirely.  Mr Preston quite clearly has a great deal of experience concerning construction platforms.

There are two issues in relation to the Bolzon declaration that I have some concerns about.  The first is that there is no documentary evidence whatsoever provided.  The second is that Mr Bolzon, in paragraph 11 of his declaration, indicates that he has used "5 to 7 construction platforms" with the features he earlier identifies.  Subsequently, in paragraph 20, he concludes that the majority of construction platforms used in Australia in the early to mid 1980's had these particular features.  I am not sure whether or not Mr Bolzon has reached his conclusion in paragraph 20 based solely on his use of 5 to 7 construction platforms.  I would have assumed that the number of construction sites in Australia in the early 1980's would have been quite large.  I do note that in paragraph 19, Mr Bolzon refers to a considerable body of knowledge that had been built up in Australia prior to the present priority date.  However, as Mr Ireland has submitted, there is no documentary evidence whatsoever provided in relation to that body of knowledge.

On balance, even though Mr Bolzon is an independent witness, I am not prepared to accept that the use of immobilising means in construction platforms was so well known throughout Australia as to be part of the common general knowledge before the priority date of the present claims.

With respect to whether or not movable deck platforms as opposed to fixed deck platforms were part of the common general knowledge in the industry before the present priority date, Mr Bolzon contends that they were and Mr Preston argues that, because his company was the only company who made them, they were not.  However, the mere fact that one company, only, manufactures a particular type of platform does not prevent that particular type of platform from becoming part of the common general knowledge in the industry.

The Grosvenor Place platforms were retractable fixed deck platforms.  However, AU specification 629397 discloses a movable deck platform as does US 4444289 (24 April 1984) annexed to the Bolzon declaration.  These documents show that movable deck type platforms were known before the priority date of the present claims.  However, they do not of themselves provide evidence that such platforms constituted part of the common general knowledge in Australia.  In this respect, I note the words in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 294:

"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .."

However, it was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1980) 144 CLR 253 at page 294:

"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question."

In the present case there is no evidence that people in the industry would consider disclosures in relevant patent documents as being part of the common general knowledge.

On balance, I think that the Bolzon declaration has no support from any of the other material provided by the opponent in relation to the question of whether or not movable deck platforms were part of the common general knowledge in the industry.  Indeed, the construction platforms at the Grosvenor Place site would tend to suggest that only fixed deck platforms were known.  Therefore, I am of the opinion that the opponent has not established that movable deck platforms were part of the common general knowledge.

The problem to be solved

In determining what would have been obvious to a person skilled in the relevant art, I am guided by the question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331:

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

In the present case, as Mr Cobden pointed out, it is somewhat difficult to determine what problem has been overcome by the construction platform defined in claim 1.

On page 2 of the specification, reference is made to earlier known platforms referred to as movable deck platforms where the landing deck has been carried by semi-permanent support beams.  The problem with these platforms, the specification indicates, is that the platforms are expensive and/or difficult to move when the landing deck is heavily loaded.  Another problem with these landing decks is that the outboard portions are obtrusive and undesirable.

An object of the invention is said to be to provide a construction platform which substantially overcomes one or more of the deficiencies in the prior art I have referred to above.

I am not able to determine how the construction platform of the present claim 1 overcomes any of these problems.  While the claim indicates that the deck can be moved to an inboard position, there is no suggestion in the claim that the entire outboard portion of the platform can be retracted to an inboard position.

In this respect, I believe that the difficulty in determining what the immobilising means actually achieves stems from the fact that the specification does not make it clear that the construction platforms are of the type in which the landing deck should not be moved when fully laden.

The specification discusses three main embodiments, the second and third of which are retractable deck type construction platform where the entire outboard portion of the platform can be retracted to an inboard position.  It would seem to me that such a platform would overcome at least some of the deficiencies of the prior art identified above.  However, this type of construction platform is not specifically defined in claim 1.  (It is worth noting that the Grosvenor Place construction platform is a retractable fixed deck platform which appears to overcome at least one of the deficiencies identified above in that the whole outboard portion appears capable of being retracted to an inboard position thus avoiding the obtrusiveness of a fixed outboard portion.)

I am of the opinion that the construction platform of claim 1 does not solve any identified problem.  Therefore I will adopt the course of action indicated in Elconnex Pty Ltd v Gerard Industries Pty Ltd, (1992) AIPC 90-848 at page 38,107, where it was said:

"I think I should adopt the course followed by Cohen J. in Allsop Inc v. Bintang Ltd (supra), which was approved by the Full Court, and decide the question of obviousness upon the evidence before me, rather than upon the basis of an inferred unsolved difficulty of which there is no direct evidence."

Does the claimed invention lack an inventive step?

Given that I have found that fixed deck platforms were known as part of the common general knowledge but immobilising means were not part of the common general knowledge, would a person skilled in the art as a matter of routine include an immobilising means in a fixed deck platform arrangement?  I think the answer has to be that a person skilled in the art would not because the use of immobilising means was not part of the common general knowledge in the industry.

Alternatively, given the movable deck platforms disclosed in the patent literature, would a person skilled in the art as a matter of routine include an immobilising means to lock the platform in an outboard position?

Again I think the answer has to be in the negative.  Immobilising means were not part of the common general knowledge and would not have been used routinely to immobilise decks in their outboard position.

There is no convincing evidence before me to suggest that immobilising means were mere workshop improvements.

Therefore, on the evidence before me, I find that the claimed construction platform does not lack an inventive step.

Priority date

At the hearing, Mr Ireland submitted that Mr Preston considered that the Bolzon declaration was really referring to Preston construction platforms which were in use after the priority date of 30 August 1993.  In the light of this, I asked both parties to provide me with submissions on the priority date of the present claims.  The present application claims priority from provisional application PM0921 which was filed on 30 August 1993.  However, on the face of it, I indicated that the provisional specification appears to disclose only part of one particular embodiment of the present invention.  I allowed both parties to provide me with written submissions subsequent to the hearing.

Having considered the submissions provided by both parties, I agree with the applicant's position that, whether the present claims are entitled to an earlier priority date of 30 August 1993 or a later date of 30 August 1994 (the date of filing of the international application from which the present application derives), there is no convincing evidence before me to establish that the Preston construction platforms were actually used in public between August 1993 and August 1994 such that the claims could be rendered not novel.  Such an occurrence of prior use would be subject to the same stringent evidentiary requirements as I have referred to in relation to the alleged prior use of the Grosvenor Place construction platforms.  There is no such evidence before me.

However, for the sake of completeness, I will consider the issue of the priority date of the present claims.  I disagree with the applicant that claims 5, 6 and 7 correspond to the construction platform disclosed in the provisional specification.  Since claims 5, 6 and 7 are appended to claim 3, they include the use of stationary guide beams.  It seems to me that claims 5, 6 and 7 are defining the embodiment shown in Figures 28 to 32 of the present specification.  I believe that the construction platform disclosed in the provisional specification relates to the arrangement shown in Figures 18 to 27 of the present specification.

The provisional specification makes no specific reference to immobilising means.  However, it does disclose the same detent arrangement as in the present specification to lock the wheels or rollers.  The provisional specification indicates that this is to provide stability when the platform is stationary.  I have no evidence as to what this disclosure would mean to a person skilled in the art and whether or not such a person would conclude that such an arrangement could be considered to be an immobilising means to releasably lock the landing deck in an outboard position.  If such were the case, then claims 1, 2, 12, 13, 16 and 17 would, I believe, be entitled to the earlier priority date.  However, on the face of it, the provisional specification does not disclose that immobilising means are used to releasably lock the landing deck in at least one outboard position.

In submissions provided by Mr Shelston, the applicant contends that the provisional specification discloses immobilising means in the form of telescopic extendible columns to clamp the platform beams between the floors of the building.  The argument is that these provide a basis for the immobilising means feature in the present claims.  However, although the present specification refers to these columns or struts, it does not refer to them as immobilising means.  If such arrangements were meant to be included within the term "immobilising means" then this would have ramifications for the prior use allegations at Grosvenor Place where such columns or props were used to secure the construction platform in its outboard position.  However, I agree with the submissions of Mr Cobden that the columns or struts could not be considered to be immobilising means which releasably lock the landing deck in an outboard position.

On the evidence before me, I am of the opinion that the claims of the present application are only entitled to the date of filing of the international application viz. 30 August 1994.

One other matter which I will deal with in passing is that the applicant suggests that Figures 1 and 2 of the provisional specification disclose prior art construction platforms.  Mr Cobden has argued that as Figures 1 and 2 of the present specification are the same drawings then the present specification is directed at prior art arrangements.  However, I see no problem with this.  Subsequent drawings for the same embodiment disclose features which presumably are part of the present invention.  For example Figure 3 of the present specification discloses a particular type of immobilising means which cannot be said to be part of the prior art even though it may be used in a prior art construction platform.

CONCLUSION

I have found that the opponent has not made out any of the grounds of opposition.  However, I have, independently, found that the specification does not comply with section 40.

I have some concerns about the section 40 deficiencies.  For example, I have indicated that the second embodiment achieves the object of the invention of overcoming at least one of the deficiencies in the prior art.  However, the second embodiment, apart from the immobilising means, is a variation of a known retractable fixed deck construction platform, similar to the Grosvenor Place platform.  Nevertheless, as I think that there is patentable subject matter in the specification, I will allow the applicant 60 days from the date of this decision to propose amendments to my satisfaction to overcome these section 40 deficiencies.

COSTS

As the opponent was not successful in any of its grounds of opposition, I award costs against the opponent, Natform (NSW) Pty Ltd.

R Hallett
Delegate of the Commissioner of Patents

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

Solicitors for the opponent           :  Allen Allen & Hemsley, Sydney