Kingsford Ross Heylen v Balsam Pacific Pty Limited

[2000] APO 10

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 664427 in the name of KINGSFORD ROSS HEYLEN

Title:          Synthetic Bowling Green

Action:          Opposition by BALSAM PACIFIC PTY LIMITED under Section 59 of the Patents Act 1990

Decision:          Issued            .

Abstract

The invention relates to a synthetic turf playing surface particularly for use as a bowling green in which part of the turf fibres are buried by particulate matter (such as sand) and the portions of the fibres protruding from the particulate matter are crimped to lie in different compass directions so as to avoid the problem of leading bias resistance due, in part, to the directional pile of the turf fibres.

Opposition only successful on a relatively minor section 40 deficiency.  The evidence is insufficient to show prior use as alleged to the necessary degree of certainty; nor did it establish that the skilled worker when faced with the problem of leading bias resistance would have been lead as a matter of routine from the common general knowledge to the invention.

No award of costs was made in the circumstances.  

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.664427 in the name of KINGSFORD ROSS HEYLEN and opposition by BALSAM PACIFIC PTY LIMITED under Section 59 of the Patents Act 1990

BACKGROUND

Patent application 664427 was filed on 31 March 1993 by Kingsford Ross Heylen as a further application of application 54901/90 (now lapsed) which has an earliest priority date of 10 May 1989.  The present application was advertised accepted on 16 November 1995.

Balsam Pacific Pty Limited (Balsam) filed a notice of opposition to the grant of a patent on 16 February 1996 followed by a statement of grounds and particulars on 15 May 1996.

On 15 July 1996 the delegate of the Commissioner advised the parties that as the application was in a "state of lapse" due to the non-payment of a continuation fee, he proposed to direct that the period for serving evidence in support would commence from the date on which the fee was paid.  Balsam objected to this proposal which proved unnecessary since it was subsequently discovered that although timely paid, the fee had been wrongly recorded against other fees on the Patent Office administrative database.  In the event, the delegate directed that the period for serving evidence in support would expire on 25 October 1996.

Evidence in support was served in part on 10 February 1997 and completed on 26 February 1997 after two requests by the opponent for further time were allowed.  The time in which to serve evidence in answer was in turn extended to 25 November 1997.  Mr Heylen sought a further extension of three months but this was opposed and the matter was set for hearing on 19 November 1997.  The delegate issued a decision on 17 December 1997 which allowed the extension.  Service of the evidence in answer was completed on 25 February 1998.

On 24 March 1998 Balsam filed a notice of intention to serve evidence in reply, and duly served that evidence after the grant of an extension of time to 25 August 1998.

The matter came to hearing in Canberra on 7 December 1998.  Mr Heylen was represented by Ms Doreen Perrin, patent attorney of Collison & Co, who appeared by telephone, while the opponent was represented by Mr Graham Halford, patent attorney of Halford & Co, assisted by Mr Darren Gardner.  Mr Heylen was also in attendance.

THE SPECIFICATION

The specification commences by indicating that the invention relates to a synthetic playing surface for use in fields on which lawn bowls, croquet, and the like are played, and to the preparation thereof.  Synthetic playing surfaces of this kind comprise what is known as "artificial turf".

The specification explains that artificial turf typically has a carpet-like construction in which fibres of for example polypropylene are tufted or woven to a backing which is coated with a rubber polymer latex.  Hitherto, it has been recommended to lay the turf on a road base, or a bituminous or concrete base, and to then apply a sand infill over the turf backing.  These synthetic playing surfaces provide high performance with reduced maintenance requirements in comparison with traditional natural surfaces.

However, current synthetic playing surfaces suffer from a number of inherent problems.  In particular, they have been found to exhibit leading bias resistance (termed "noticeable bias" in the claims) due, in part, to the directional pile of the turf fibres and have therefore proven unsatisfactory.

The specification ends with twenty-five claims in all of which the independent claims read as follows:

"1. A playing surface comprising an artificial turf having a plurality of fibres extending generally upwardly from a backing material, said turf having particulate matter between the fibres such that each of the fibres has a buried stem and a free end protruding from the particulate matter and wherein 10% of the free ends are crimped at an angle to the stem so that they lie in different compass directions such that noticeable bias in any one direction is avoided.

11. A method of preparing a playing surface comprising the steps of:

a) laying an artificial turf over a site, said turf comprising a plurality of fibres extending generally upwardly from a backing material;
     b) spreading particulate matter as a layer between the fibres such that each of the fibres has a buried stem and free end protruding from the particulate layer; and
     c) pressing the turf until at least 10% of the protruding free ends are crimped at an angle to the stem so that they lie in different compass directions such that noticeable bias in any one direction is avoided."

The specification indicates that it is preferable to press the turf by rolling at elevated temperatures, and to continue rolling until more than 90% of the protruding free ends of the fibres have been crimped at an angle to the stem.  More preferably, the free ends of the fibres are crimped so as to lie in a substantially horizontal plane adjacent the surface of the particulate matter which desirably comprises washed sand.  It is also desirable to brush the particulate-filled turf prior to pressing so that the orientation of the protruding free ends is substantially vertical to the plane of the turf.  The finished level of the particulate matter is preferably between about 2 mm to about 7 mm below the free ends of the fibres.

According to the specification, synthetic turfs prepared according to the invention have been found to exhibit negligible leading bias resistance.
STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars lists three grounds of opposition: non-compliance with paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40 of the Act, and provides a number of particulars in support of each ground.  In essence, the statement sets out Balsam's case in the following terms:

1) The claimed invention is not novel in light of the supply, installation and subsequent use of 
    bowling greens at:

- Lightning Ridge Bowling Club, NSW;
    - Landsdowne Bowling Club, NSW;
    - Meadowvale Retirement Village, Packenham, Vic;
    - Highvale Retirement Village, Glen Waverley, Vic;
    - Tennant Creek Bowling Club, NT;
    - Sydney City Bowling Club, NSW;
    - Port Germein Bowling Club, SA;
    - Broken Hill Bowling Club, NSW; and
    - Reynella Bowling Club, SA.

2) The claimed invention does not involve an inventive step having regard to common general
    knowledge in the art which includes the following:

- that the use of multi-directional crimped fibre in artificial turf would reduce bias;
    - that the application of heat to thermoplastics including polypropylene softens and makes the
     material more readily bent;
    - that multidirectional crimping of polypropylene yarn in artificial turf was achieved in
     manufacture by heating and crimping;
    - the practice of rolling turf in multiple directions inter alia to reduce bias; and
    - the practice of brushing the sand-filled turf prior to rolling in the installation of artificial
     turf surfaces.

3) The specification does not fully describe the invention, nor are the claims fairly based, for
    reasons I will discuss later in my decision.

THE EVIDENCE

At the hearing Mr Halford advised that the opposition would be pursued only on the basis of the  artificial turf playing surfaces installed at the Meadowvale Village and the Sydney City and Port Germein bowling clubs.  For convenience, the summary which follows is confined to the evidence so far as it relates to those installations.

Evidence in Support

The evidence filed in support of the opposition consists of statutory declarations by:

• Robert John Cole with Annexures A to D

• Max William Laybutt with Annexures A to D

• Colin Charles Groch with Annexure A

• Noel Henry Isaacs with Annexures A and B

• Paul William Wright with Annexures A to D

• Graham William Halford (the attorney for Balsam) with Annexures A to I, and Exhibits A to C

Mr Cole is presently the Special Projects Manager of Balsam's Sports Surfacing and Technical Developments Group, and from 1980 was employed by Omnisport Australia International Pty Ltd (Omnisport) for approximately ten years as managing director.

Annexure A is a copy of Australian patent no 539014 to Seymour Aaron Tomarin (the Tomarin patent) which Mr Cole says established Omnisport as one of the leaders in the Australian synthetic turf industry in its time.  The Tomarin patent relevantly concerns a synthetic tennis court surface having polypropylene fibres extending generally upwardly from a backing material, and a sand infill (the Tomarin turf).

The Tomarin turf was according to Mr Cole widely adopted in Australia and overseas in the 1980's, and during that time some of the tennis courts using Tomarin type turfs exhibited folding over or crimping of the polypropylene tips in areas of high traffic.  This led to the realisation that a polypropylene turf could be adopted for use in bowls applications and, in turn, to the development of a bowls specific synthetic product known as OMNIBOWLS.

The yarn used in this product was made using what was known in the carpet manufacturing industry as the Knit De Knit process which involved the yarn being knitted, autoclaved and unravelled after cooling to produce a crimped characteristic.  The yarn was then tufted and woven into a cut pile carpet having fibres generally extending upwardly from the backing material, with each fibre exhibiting the crimped characteristic created during the autoclave process.  The tips of the fibres collectively exhibited a multi-directional or random orientation in different compass directions so that the turf would not produce any noticeable bias.  Exhibit C to Mr Halford's declaration is said to be a sample of the OMNIBOWLS product.

The OMNIBOWLS product was initially installed in Australia without a sand infill as a result of concerns expressed by bowlers during preliminary trials regarding scratching of the bowls.  An order for one of these playing surfaces was received from Recreational Turf Surfaces (RTS) during 1986 for installation at the Meadowvale Village in Victoria.  This is corroborated by Mr Isaacs, a Managing Director for RTS for over 15 years, who goes on to say that a graded sand infill was added within a few months of completion to change the speed of the green.  According to Mr Isaacs, this infill provided a satisfactory turf speed while minimising bowl scratching.  

Mr Laybutt has been employed by Balsam since 1992 and is presently the manager of its Recreation Division.

Between 1986 and 1988 he was the National Sales Manager of Supergrasse Pty Ltd (Supergrasse) which manufactured a product known as the Masters City System Bowling Green (the Masters City turf).  In February 1987 Supergrasse completed a Masters City turf installation at the Sydney City Bowling Club (see Annexure A).

Mr Laybutt says that he undertook several site inspections during that installation to familiarise himself with the procedure used by Supergrasse, and observed that the turf was laid on a pre-prepared base and a silica sand infill was spread and brushed evenly into the turf to a level so a portion of the fibres remained free of sand and the portion of the fibres buried by the sand were oriented towards the vertical.  He also observed that the turf was rolled in multiple directions so the sand infill would be compacted and the free ends of the fibres folded over or flattened towards the horizontal in random directions.

After leaving Supergrasse, Mr Laybutt was between October 1988 and 1992 the National Sales Manager and a founding Director of Evergreen Action Grass Pty Limited which manufactured an artificial bowling turf (the Evergreen turf).

The first order for an Evergreen bowling green turf was placed by A.E. Williams and Sons (A.E. Williams) for installation at the Port Germein Bowling Club in South Australia.  Mr Laybutt in effect states that the turf was installed using a procedure similar to that adopted for the Supergrasse Masters City turf.  On this he further states that at the time it was first developed A.E. Williams formulated with his assistance written care and maintenance instructions (the care instructions) for the Evergreen turf.  A copy of the care instructions is marked as Annexure B.

The evidence of Mr Laybutt concerning the installation procedure used for the Evergreen turf is confirmed by Mr Wright who, as the construction manager of the sporting surfaces group of A.E. Williams, personally supervised the Port Germein installation.

Mr Groch is presently employed by the Merimbula-Imlay Bowling Club as a greenkeeper and has held that position since mid 1989.  Before that he was the proprietor of a green keeping business in Sydney operated by his company Turftech Pty Ltd which provided services to various bowling clubs, including the Sydney City Bowling Club.  Mr Groch was as a result familiar with the turf produced by Supergrasse, and in fact completed the installation of this turf at the Sydney City Bowling Club under the instruction and supervision of Supergrasse.  Although he does not mention Mr Groch by name, Mr Laybutt confirms that the installation was completed by the club's greenkeeper.  Mr Groch for his part substantiates the evidence of Mr Laybutt as it relates to the installation procedure, although noting that intensive and repetitive rolling was required to crimp the fibre tips.

Mr Halford states that he conducted a joint inspection of the OMNIBOWLS installation at the Meadowvale Village with Mr Isaacs in April 1996.  This is confirmed by Mr Isaacs as follows:

"11. During that inspection I was shown a sample of an OMNIBOWLS turf by Graham Halford which I compared with the OMNIBOWLS turf installed at Meadowvale and I am of the view that other than differences attributable to age, weathering and wear and tear the OMNIBOWLS turf installed at Meadowvale is of the same type and has the same characteristics as the OMNIBOWLS sample."

Mr Isaacs goes on to say that the crimped characteristic of the fibres, which eliminates noticeable bias, is still evident in the Meadowvale installation.  Mr Halford explains that the sample of the OMNIBOWLS turf shown by him to Mr Isaacs is the same turf sample identified in Mr Cole's declaration, viz. Exhibit C.

Evidence in Answer

The material filed by Mr Heylen in response to the evidence in support is presented in a manner which at times is quite difficult to follow.  However, on my understanding of the situation, the evidence in answer consists of the following:

• A first declaration by Mr Heylen marked "D" with exhibits A/1 to A/8, A/11 to A/15, A17,

A/19 to A/23, and B/3 - this declaration places reliance on some non-existant

photographs allegedly included as exhibits A and B

• A second declaration by Mr Heylen marked "D1"

• A third declaration by Mr Heylen marked "D2"

• An amended declaration marked "D" with exhibit A/25 - the amended declaration differs

from the original by the inclusion of additional material ("part E")

• A further amended declaration marked "D" with exhibits A, B, andA/26 to A/32 - this declaration essentially repeats the contents of Mr Heylen's declaration as amended in the first instance

Exhibit A is said to be a sample of turf made in accordance with the claimed invention, and Exhibit B a sample of turf developed by Supergrasse for bowls.  Exhibits A/2 to A/5, A/7, A/15, A/25 to A/31, and B/3 consist of declarations respectively made by:

• Trevor Lyle Johnston

• Paul Scott MacLeod

• Allan Vincent Hannaford

• Bruce Douglas Frith

• Grant Crowe

• Allan Vincent Hannaford

• John Phillip Dean

• Ross Horton

• Barbara Dawn Cush

• John Thomas Davies

• Frederick Douglas Crisp

• Arthur John Rixon Lehmann

• Brian Kenneth White

• Gordon Albert Leue

• Allan Vincent Hannaford

By way of initial background, Mr Heylen indicates that he has gained considerable experience in the construction of tennis courts having conventional and synthetic playing surfaces, and during the 1980's installed approximately five hundred courts throughout Australia first using Omnisport then Superior Grasse synthetic tennis turf and, after 1990, Balsam synthetic turf.

Mr Heylen states that during this time it was commonplace for manufacturers to create a very sandy surface when installing a synthetic turf and this practice was followed when synthetic turf was introduced as a bowling green surface.  However, the bowls used on these surfaces quickly showed signs of wear due to the abrasive nature of the sand which also produced unacceptable bowl performance.  In seeking to address these emerging problems, Mr Heylen enlisted the assistance of a Mr Des Moran, a noted State bowler, and from 1987 till 1990 conducted experiments using his private single rink green.  As confirmed by Mr MacLeod, an employee of Mr Heylen during the period in question, this investigation resulted in the invention the subject of the present application.

The evidence for Mr Heylen is primarily devoted to refuting claims made on behalf of Balsam that the various playing surfaces listed by the statement of grounds and particulars and referred to in evidence were made from synthetic fibre having multidirectionally orientated free ends and, consequently, avoided noticeable bias in any one direction.

Mr Heylen states that during the course of his investigations he inspected the Sydney City green in June and October 1987 where he noted the following problems with the Masters City turf:

"The green was very sandy, so much so that the green colour of the turf was the colour of the silicon sand in places.  I recall noticing the grey mark on the bowls that forms through the abrasion with the sand.

……

The bowl was exhibiting a wide draw on one hand  … and a narrow draw on the other side.  A "rooster-tail" of sand was trailing the bowl on its journey down the green."

Mr Davies states that he visited the Sydney City Bowling Club in June 1987 in the company of Mr Heylen but apart from recalling that "the sand was very obvious on the surface", he says nothing of the uneven draw (noticeable bias) problem referred to by Mr Heylen which is perhaps not surprising given that his (Mr Davies') experience is evidently limited to synthetic tennis courts.

Mr Leue states that he became president of the Port Germein Bowling Club in 1981, and has been Secretary-Treasurer since 1986.  An Evergreen synthetic playing surface was installed by A.E. Williams in 1988 and again the problems of bowl damage and performance are said to have arisen.  Mr Heylen claims to have inspected the Port Germein green on two occasions, late in 1988 and early in 1989, and on the basis of those inspections attests to the sandy condition of the green.

The OMNIBOWLS green brought to notice is said by Mr Cole to have been installed at the Meadowvale Retirement Village in Victoria. 

Mr Hannaford states that he inspected the Meadowvale Village green on 12 July 1997 with Mr Heylen and on playing several ends of bowls noted that the draw was both uneven and inconsistent.  He visited the green again with Mr Heylen the following day and closely inspected the surface of the green to find that the tips of the synthetic fibres were standing almost vertical but with a slight lean in one direction (similar to the inherent lean that exists with conventional synthetic turf).  Mr Hannaford states that in each section inspected there were odd tufts leaning in the opposite direction to the inherent lean, but these were "absolutely in the minority".  On this basis he says that the fibre tips showed no sign of random orientation.  This is corroborated by Mr Heylen.

Mr Hannaford further states that he again inspected the Meadowvale green with Mr Heylen in August 1997 and, with the assistance of a magnifying glass, found that the position of the surface tips had not altered since their last visit.
Evidence in Reply

The evidence in reply consists of statutory declarations by:

• Gordon Albert Leue

• Darren Michael Gardner with Annexure A

Mr Leue seeks to clarify some of the points he made in his evidence in answer.  He states that complaints about the performance of the green at the Port Germein Bowling Club were mainly received from people who "had an anti-synthetic mentality towards the green".  He also asserts that his personal satisfaction with the performance of the green, and the satisfaction of other members of the club, formed the basis of his letter as club secretary dated 31 March 1989 to A.E. Williams (see Annexure A to Mr Wright's declaration).  That letter reads in part:

"The decision to be the first bowling club in South Australia to convert a natural green to a synthetic one is a decision that we will not regret and this is confirmed every time the green is used.  Club members, visitors from other clubs in the state and from interstate speak very highly of its performance and appearance."

According to Mr Leue, the green has in his experience performed without any noticeable bias. 

Mr Gardner states that on 18 August 1998 he spoke with the Laboratory Manger for Pioneer Concrete (NSW) Pty Ltd who supply the opponent with sand for use in sporting surfaces.  Mr Gardner then makes some comments regarding the correspondence between the US mesh sizes and sieve sizes shown in the copy of the American Society for Testing and Materials standard which is annexed to his declaration. The relevance of this evidence was explained by Mr Halford at the hearing.

Evidence Filed Subsequent to the Hearing

During the hearing Mr Heylen submitted that neither he nor Ms Perrin had been provided with an opportunity to view the OMNIBOWLS turf sample exhibited with Mr Halford's evidence in support (Exhibit C) and, given the reliance placed by Balsam on this sample, requested that it be subsequently made available for inspection.

In the absence of any objections from Mr Halford I acceded to this request and allowed Mr Heylen 21 days from the date of the hearing to respond to the evidence for Balsam concerning Exhibit C.  However, as a result, firstly, of the Christmas holiday period and, secondly, of having to gather evidence largely without the assistance of Ms Perrin, Mr Heylen experienced a number of delays in completing this task which ultimately led to a direction being issued under regulation 5.10(1) regarding the time in which Mr Heylen's evidence in response to Exhibit C was to be served.  This evidence was finalised on 1 June 1999 and consists of:

• A first declaration by Mr Heylen dated 16 April 1999 with exhibits #17 and #19

• A second declaration by Mr Heylen dated 4 May 1999 with exhibits A/26 and A/27

• A third declaration by Mr Heylen dated 19 May 1999 with exhibit A/29

• A fourth declaration by Mr Heylen dated 1 June 1999 (marked "A/40") with exhibit A/36

Exhibits A/26, A/27, A/29 and A/36 consist of declarations respectively made by:

• Paul Scott McLeod (who I believe is the same person identified in Exhibit A/3 of the evidence in answer despite the slight difference in spelling of his surname [MacLeod as against McLeod] given in each instance)

• Max William Laybutt (who also provided evidence in support)

• Maxwell Thomas Webberley

• Jim Huntingdon

Mr Heylen states that the lean in one direction or inherent lean as portrayed by Exhibit C results from the manufacturing process used to produce the turf and is well known in the industry as directional turf.  This is corroborated by Mr Laybutt.  Mr Heylen further states that the presence of inherent lean is evident from Exhibit #19 which is said to be a photograph taken at the Adelaide State Office showing the profile of the stems of Exhibit C.  Mr McLeod agrees with Mr Heylen's evidence regarding the inherent lean shown by Exhibit #19 but does not himself attest to the origin of this exhibit.

On 18 June and again on 12 August 1999 Balsam confirmed its intention to respond to the material submitted by Mr Heylen in relation to Exhibit C but after several months further delay advised that it no longer wished to pursue this course of action.

I will return to the evidence as a whole where appropriate in my decision.

DECISION

Novelty

The basic test for anticipation is the reverse infringement test which is set out in Meyers Taylor PtyLtd v Vicarr Industries Ltd (1977) CLR 228 at 235 where Aiken J stated:

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

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391). In the present case the alleged anticipation is said to result from prior use of the claimed invention. Thus the question to be ultimately decided is whether the synthetic bowling green installations identified by the opponent disclosed all its essential features (per Stanway Oyster Cylinders Pty Ltd v Marks (1996) AIPC 91-255).

In broad terms the present invention resides in the provision of a synthetic playing surface comprised of a plurality of fibres each of which has a buried stem and a free end protruding from particulate material such as sand, and wherein at least some of the free ends of the fibres are crimped at an angle to the stem so as to lie in different compass directions. 

Ms Perrin submitted that the level of particulate material employed (or, put another way, the length of the free end of the fibres which protrude from the particulate material) was also an essential feature of the invention in its broadest aspect, however, I find no support in the specification or claims for this contention.  Furthermore, the evidence filed by Mr Heylen makes repeated reference to the importance of crimping the fibre tips so as to lie in a substantially horizontal plane.  Again there is nothing in the specification or claims to suggest that this feature is anything more than a preferred feature of the invention.  Relevantly, as neither of the above features appear in the independent claims, they cannot be relied on (as Mr Heylen has frequently attempted to do) to distinguish the invention defined by these claims from the instances of prior use alleged by Balsam.  

It is common ground that the greens installed at the Sydney City and Port Germein Bowling Clubs included a sand infill.  Ms Perrin pointed out that this was not the case initially with the Meadowvale Retirement Village green but I am satisfied from the uncontested evidence of Mr Isaacs that a sand infill was added within a few months of installation which is still far in advance of  the priority date of 10 May 1989.  There is also no dispute that the greens in question were accessible to the public in Australia before the relevant date.  Where the parties differ, however, is whether the free ends of the turf fibres comprising these greens were orientated in multiple directions.  I will now consider this issue with reference to each of the greens in turn.

Sydney City Bowling Club

According to Mr Laybutt, the installation of this green was commenced by Supergrasse employees using the Masters City turf product and completed by the bowling club's greenkeeper under the instruction and supervision of Supergrasse.

Mr Laybutt states that he inspected the site on a number of occasions during installation and observed:

"… that the turf was laid on a pre prepared base and a silica sand infill was spread and brushed evenly into the turf to a level so a portion of the fibres remained free of sand (the 'free ends') and the portion of the fibres buried by the sand (the 'stems') were orientated towards the vertical.

I also observed the turf was rolled in multiple directions including the length, width and diagonals of the green so the sand infill would be compacted and the free ends folded over or were flattened towards the horizontal in random directions."

Although Mr Laybutt makes no express reference to "crimping" the free ends of the turf fibres, there is nothing before me to indicate that this term has a special meaning in the context of the present specification or in the field of the invention which excludes the folding or flattening action mentioned by him. 

Mr Groch, the bowling club's greenkeeper at the time, repeats Mr Laybutt's account of the Supergrasse installation procedure including the step of rolling the turf in multiple directions which he says was aimed at crimping the free ends in a random horizontal pattern so that the playing characteristics of the turf were independent of the direction of play.  This is explained more fully as follows:

"The object of folding over or crimping of the free ends over towards the horizontal was to overcome the influence that vertical or near vertical resilient polypropylene free ends have on the inherent bias of the bowls causing undesirable playing characteristics in the green.

The playing characteristics were effected by the free ends in the following manner.  If a bowl was rolled over the free ends which were vertical or near vertical then, as the bowl rolled over the free ends it would momentarily flatten the free ends because of the weight of the bowl.  The polypropylene free ends having a resilient nature would return back to the pre-flattened orientation as the effect from the weight of the bowl is reduced.  In returning to the pre-flattened orientation the momentarily flattened free ends collectively exerted a force on the bowl.  In some circumstances the force would be sufficient to upset the inherent bias of the bowl particularly when the bowl slowed down sufficiently causing the bowl to play irregularly or unexpectedly, for example by flipping over to a side contrary to the side you would expect it to fall onto in accordance with its previous direction of travel.  By crimping the free ends towards the horizontal the influence from the resilient nature of the polypropylene fibre tips or free ends is removed or at least minimised."

I note from the evidence of Mr Heylen and Mr Crowe that the problem as described by Mr Groch is known to bowlers as "fighting the bias" or leading bias resistance (see also exhibits A/22 and A/23).  As previously indicated, this is the same problem which the present invention seeks to address.

Mr Groch continues by explaining that:

"The rolling process was not very satisfactory as it was difficult to the [sic] crimp the resilient propylene fibres.  I was advised at the time of the installation by Gary Waterford that intensive and repetitive rolling would be required to crimp the free ends and that ultimately they will crimp with sufficient rolling."

No corroborating evidence has been provided by Mr Waterford and nor in my opinion is the evidence of Mr Groch clearly substantiated by Mr Laybutt.               

Mr Laybutt says that he made a number of on-site inspections to familiarise himself with the installation procedure used by Supergrasse which suggests that these inspections were the only source of his technical expertise.  Furthermore, although the frequency or timing of these inspections has not been established, Mr Laybutt says that he visited the site during installation of the Sydney City green which from the evidence commenced during 1986 and was not completed until February 1987.  However, according to Mr Groch, it was necessary to continue the rolling process well beyond that period "until at least late in 1987" before the turf had been sufficiently crimped to provide predictable playing characteristics.  Given the prolonged rolling required after installation - referred to in evidence as the "running in" period - to (it is said) effect crimping, the possibility arises that when inspected by Mr Laybutt the green had yet to exhibit any signs of crimping which, coupled with Mr Laybutt's apparently limited expertise, casts doubt on the extent of his alleged personal knowledge of the reason for rolling the turf in multiple directions and its effect on the playing characteristics of the turf.  Even if Mr Laybutt had somehow acquired this knowledge there is no evidence from him to the effect that crimping actually occurred as a result of the rolling process implemented by Mr Groch. 

The same can I think be said of Mr Cole who was also present during the installation of the Sydney City green.  He states that the turf was rolled in multiple directions "so the sand infill would be compacted", but says nothing of crimping the free ends of the turf fibres.  However, this is not conclusive of whether the turf was rolled to simply compact the sand infill as stated since Mr Cole was not at the time associated with Supergrasse (to the contrary, he was the managing director of a competitor), and in light of the evidence of Mr Groch it seems inconceivable that he became fully conversant with the installation and running in procedure adopted at Sydney City during the "several days" he observed the green being installed.
.
Annexure A to Mr Laybutt's declaration is a copy of a letter dated 3 August 1987 from the Honorary Secretary of the Sydney City Bowling Club which reads in part:

"In our view it [the bowling green] has not yet reached the level of a championship green due to certain minor irregularities in the "run" of the bowl in some areas.  However, we are confident that this will be overcome over time … with the folding over of the tips of the synthetic grass blades."               

Even if the above reference to "folding over of the tips of the synthetic grass blades" can be taken to mean crimping the free ends of the turf fibres so as to lie in different compass directions, there is nothing aside from the essentially uncorroborated evidence of Mr Groch to indicate that such crimping did actually occur.  I also note Mr Groch does not go so far as saying that the free ends were crimped to the extent necessary to avoid noticeable bias in any one direction.

Mr Heylen claims to have inspected the Sydney City green in June and October 1987 and says that the problem of noticeable bias was evident on each occasion.  However, this is not corroborated by Mr Moran or Mr Davies who accompanied Mr Heylen when he first inspected the green.  Furthermore, the evidence of Mr Groch suggests that both inspections may have been made during the running in period of the green.  Nevertheless, it seems reasonable to assume on the basis of Mr Groch's evidence that by October 1987 the green should at least have begun to show signs of randomly orientated crimping (if this was indeed the purpose of the rolling process), and hence predictable playing characteristics, yet according to Mr Heylen the bowl was still exhibiting noticeable bias.

In support of this assertion Mr Heylen draws attention to Exhibit A/6 which is a promotional brochure entitled "Supergrasse Bowling System '89".  This brochure contains a series of questions and comments drawn (it is said) from the experiences of the Sydney City Bowling Club with the Supergrasse playing surface.  Mr Heylen refers to page 13 of the brochure which reads:

"COMMENT 9:	"Tracking, glare, speed and runs against the bias."
REPLY 9:	"Another fact - it does not track.
……
Bias.  In an area reserved for experimental 'sand fill'  levels, approximately 6% of the total green area on  rinks 1, 2 & 3 on a full length end, the bowl on the  backhand running south is inclined to fight the bias.   Continual wet weather over the last few months has not  allowed our experimental programme to continue as  desired, as the sand fill has to be perfectly dry when  added to or taken away.  This minor problem … does  not occur anywhere else on the green.""

The reply set out above is from the Sydney City green committee and is not helpful to Mr Heylen since it clearly states that the problem of leading bias resistance was confined to a small area of the green where different sand levels were under trial.  However, this reply also does not assist the case for Balsam since it was written without any of the sanctions associated with a declaration and, consequently, does not establish any material facts in this matter to a level that I can rely upon them.  Furthermore, the reply fails to establish whether it is referring to the condition of the green before the claimed priority date.  Mr Halford pointed out that the Supergrasse brochure contains a letter from the President of the Sydney City Bowling Club dated 6 June 1988 which refers to the club's green as performing at a championship level, but this falls short of conclusively establishing that the green had been randomly crimped so as to avoid noticeable bias.

Ms Perrin submitted that Mr Heylen's version of events was consistent with the view that the Sydney City green was installed and maintained in accordance with the care instructions later used with the Evergreen bowling greens. She said this could be explained by Mr Laybutt's association with that company after leaving Supergrasse.  Although there is no direct evidence on the point, the outline of submissions presented to me by Mr Halford lends support to the proposition that the care instructions are common to the Supergrasse and Evergreen products.   

Mr Laybutt states that the care instructions were formulated with his assistance before A.E. Williams placed the first order for the Evergreen turf late in 1988.  According to Mr Wright, who was Construction Manager with A.E. Williams at the time:

"The turf was installed and groomed relying on previous experience gained from synthetic tennis court turf installations with technical assistance from the staff at Evergreen who had previous experience with synthetic bowling green installations."

However, it is clear from the evidence of both declarants that Mr Laybutt was the only member of staff at Evergreen having previous experience with synthetic bowling green installations which, as mentioned earlier, prima facie was limited to his on-site inspections of the Sydney City green during installation. 

The care instructions contain the following guidelines:

"THE PLAYING CHARACTERISTICS

The installation of the green, particularly the sand infill, plays an important part in the overall playing characteristics of the green …

The actual pace of the green can be changed by the amount of sand infill.  If there is too much sand the bowl will run slowly as the sand will hinder its progress.  If there is insufficient sand, fibres of the grass will also slow the ball down.

……

During the settling down period of your synthetic grass green (up to 3 or 4 months) your members may experience some of the following:

* Uneven draw of the bowl

* Different speeds depending on climatic conditions, for delivery of the bowl.

* Some traces of sand sticking to the bowl …

……

ROLLING OF YOUR SYNTHETIC GREEN

We recommend that during the settling down period of your green, as mentioned above, that it be rolled … in all directions (including diagonal) for a period of up to 200 hours.

……

RUNNING YOUR GREEN IN

During your running in period, we would like to suggest the following:

* Rolling as mentioned above.

* Rotation of markers which will assist with even running in of green.

* Bowling in both directions which is not necessary, but once again will assist the
   intial running of the green.

* Heavy use of your green which will accelerate the running in period."

I note at the outset that a running in period of 3 to 4 months is also mentioned in Exhibit A/6 discussed above.  More relevantly, this period is in direct conflict with Mr Groch's account of a period extending from February 1987 to at least late in the same year.  Alternatively, if the care instructions are taken at face value, then Mr Heylen's second visit to the Sydney City Bowling Club  was clearly after the nominated running in period and yet the green was, it is alleged, still producing an uneven draw.  Further to this, although the care instructions refer to rolling the green in multiple directions, nowhere do they allude to the need to randomly crimp the free ends of the turf before the bowl will play evenly.  This lack of disclosure appears consistent with the reservations I have earlier expressed regarding Mr Laybutt's knowledge of the effect of crimping on the playing characteristics of the turf. 

Mr Heylen has additionally placed reliance on the evidence put forward by Messrs Frith, Crowe and Crisp regarding the Masters City turf greens installed at the Wynyard and Royal Hobart Bowling Clubs of which Mr Laybutt states he was aware when he ceased employment with Supergrasse. 

Mr Halford submitted that it was not open to Mr Heylen to rely on evidence relating to these greens since neither had been listed in the statement of grounds and particulars.  However, as a matter of natural justice I see no reason why Mr Heylen should not be permitted to take advantage of evidence introduced by one of Balsam's own declarants even though Balsam has waived that right.  Furthermore, it is important to remember that in opposition proceedings the Commissioner is entitled to act on any material which is "logically probative" of the issues being decided (per The Minister for Immigration and Ethnic Affairs v Pochi 31 ALR 666). In the present case it is clear that evidence regarding the Royal Hobart and Wynyard bowling greens may be of probative value given that these greens are, on the basis of Mr Laybutt's evidence, further examples of the Supergrasse playing surface installed at the Sydney City Bowling Club.

Mr Frith declares that during 1987 he was chairman of a committee of the Wynyard Bowling Club whose purpose was to prepare a feasibility study on the installation of a synthetic bowling green for the club.  As part of the study, Mr Frith inspected the Sydney City Bowling Club where he noted that the surface of the green was sandy in appearance and produced an uneven draw.

It was nevertheless decided, given assurances by Supergrasse, to proceed with the installation of a synthetic green.  The green was installed in September 1988 and officially opened in February 1989.  Mr Frith states that the surface of the green was very sandy and required regular watering and rolling as set out in the maintenance instructions supplied by Supergrasse.  This is corroborated by Mr Crowe, the club greenkeeper at the time, who also confirms that despite being regularly maintained the green continued to damage bowls and exhibit an uneven draw.  Mr Crowe states that in attempting to address these problems the Wynyard Bowling Club decided to remove a quantity of sand from the green.  He proceeds as follows:

"After the removal of the sand the uneven draw of the bowl became much more pronounced.

On one hand the draw was narrow and on the other hand the draw was wide.

……

The uneven draw problem worsened quickly with the bowl leaning outwards on the narrow hand for almost the entire length of the run. [as previously noted, this characteristic is known as "fighting the bias" or leading bias resistance]

……

I was still receiving complaints with the sand scratching the bowls, but more complaints with the uneven draw problems.

I decided to inspect the surface closely and I found that the tips of the material had started to lean in one direction and I decided this was the cause of the uneven draw.

I had noticed that, whilst removing the sand the tips of the material were standing
vertical.

I decided that the tips of the material were unable to lean while the level of the sand was so close to the top of the tips.

I later concluded that foot traffic appeared to be the main contributor to the tips starting to lean, as the lean was more obvious where the heavy foot traffic occurred."

I note that Mr Groch has made a similar observation regarding the condition of the playing surface at Sydney City in those regions of the green where heavy foot traffic occurred, although it is not clear from his evidence whether the free ends of the turf were leaning in one direction (as observed by Mr Crowe), or were randomly orientated.  Whatever the case may be, the problem of uneven draw according to Mr Frith and Mr Crowe continued until at least 1990.  Mr Heylen provides similar comments regarding bowl performance based on his inspection of the Wynyard green "in about September 1991".  Mr Crowe says that Supergrasse made several suggestions on how to overcome this problem, with no success.  Both declarants confirm that there was no mention of crimping the free ends of the turf, with Mr Frith stating that "[t]he Supergrasse officials kept talking of brushing the Synthetic lawn up to a vertical position".

These problems were according to Mr Crisp also experienced by the Royal Hobart Bowling Club.  In 1990 Mr Crisp became club greenkeeper and in this capacity was responsible for maintaining the Supergrasse synthetic bowling turf which had been installed in 1987.  Mr Crisp states that although the turf was maintained as instructed, the club still received complaints from players because of the damage to their bowls and the uneven draw.

Mr Heylen declares that he observed the installation of the green at Royal Hobart but merely comments on the level of sand infill used.  Nevertheless, I accept his submission that as it may  reasonably be assumed that all greens in question were run in and maintained according to the care instructions, the condition and playing characteristics of the Wynyard and Royal Hobart greens would have duplicated those experienced at Sydney City.

I now turn to the question of prior use.  The level of proof required in an opposition to establish prior use is conveniently stated in Seiller's Application [1970] RPC 103 at 106 where Graham J said:

"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."

To this I add that the weight of the evidence must be sufficient to establish on the balance of probabilities the alleged prior use, and that this evidential burden lies with the opponent (see eg. Dunlop Holdings Ltd's Application [1979] RPC 523).

In the present case the evidence is not of any great assistance and must in any event be viewed with caution since it is largely based on a recollection of events that occurred several years previously.

Mr Heylen is clearly emotionally involved in this matter but I do not perceive the objectivity of his evidence as having widely suffered from this.  Nevertheless, although attesting to the presence of leading bias resistance on two separate occasions when he visited the Sydney City green, the second of which was after the running in period referred to in the care instructions, Mr Heylen has tended to focus on the level of sand infill employed (approximately 2 mm below the tips of the turf fibres) which he contends would not have allowed the free ends to be crimped irrespective of the amount of rolling performed.  However, this contention fails to take account of the fact that the same infill level is contemplated by the present invention.  Furthermore, the only direct support for Mr Heylen's evidence regarding the problem of leading bias resistance at the Sydney City green comes from Mr Frith who says of his inspection of the green in 1987 "[t]here was no mention or indication of crimping the tips of the Synthetic lawn".

Mr Heylen instead relies fairly heavily on the independent evidence of Messrs Frith, Crowe and Crisp regarding other synthetic bowling greens which had been installed and maintained under instruction from Supergrasse.  All attest to the problem of the bowl fighting the bias which allegedly persisted for a number of years following installation, with the former two declarants stating that staff from Supergrasse did not mention crimping when attempting to rectify this ongoing problem.  Although inferential I am satisfied of the probative value of this evidence since it relates to greens installed in a period closely following the installation of the Sydney City green, and which the weight of material before me suggests were run in and maintained in the same manner, ie. in accordance with the care instructions.  Even if I am wrong in this, there is nothing to suggest that the procedure adopted when running in and maintaining the Wynyard and Royal Hobart greens differed in any material respect from that utilised at Sydney City.

On the other hand the evidence of Mr Laybutt (who is clearly not an independent witness) offers no plausible explanation of how he became aware of the purpose of rolling the turf in multiple directions particularly as his on-site inspections occurred during installation of the Sydney City green which, in accordance with either the care instructions or Mr Groch, was several months prior to the completion of rolling the turf in this manner.  The independent evidence of Mr Groch is to the effect that random crimping did occur as a result of the rolling process carried out by him.  However, this evidence is inconsistent with the care instructions regarding the duration of the running in period and is not corroborated by evidence which confirms the condition and playing characteristics of the green after it had been run in. 

Clearly, there can be no absolute determination of the present action in the circumstances discussed above.  Moreover, the general lack of supportive evidence does not allow me to resolve the question of whether or not on the balance of probabilities the free ends of the Sydney City bowling green were crimped so as to lie in different compass directions and thereby avoid noticeable bias in any one direction.  Given that the onus is on Balsam I find that this instance of alleged prior use has not been established.

Port Germein Bowling Club

As stated by Mr Wright, the Port Germein green was installed in 1988 by A.E. Williams using an Evergreen synthetic bowling turf.  The running in requirements of the green were as already mentioned set out in the care instructions which Mr Wright says:

"… would also specify that rolling of the turf with a smooth edged turf roller in multiple directions would help settle the sand infill and would settle the free ends by freshly recrimping them.  The care instructions specified that up to 200 hours of multi directional rolling may be required during the settling period."  (my emphasis)

However, I again note that the care instructions do not contain any express reference to crimping the free ends of the turf.  Mr Wright, who personally supervised the Port Germein installation, has also said that during installation the turf was repeatedly rolled in multiple directions to compact the sand infill and flatten and crimp the free ends of the turf fibres.  However, if the object of rolling the turf was initially to effect crimping as stated, it is surprising that the care instructions prescribe a similar but subsequent rolling process for allegedly what is in effect the same purpose.  It is further not clear why Mr Laybutt advised A.E. Williams to initially fill the turf with sand to approximately 4 mm below the tips of the fibres when the care instructions specify a sand level of 1.5 to 2 mm below the fibre tips.

Mr Wright additionally states that the care instructions "were formulated in conjunction with Evergreen's experiences and A.E. William's own experiences" but his evidence reveals that at the time of installing the Port Germein green the activities of A.E. Williams had previously been confined to the installation of synthetic tennis courts.  It is also apparent from Mr Laybutt's evidence that A.E. Williams placed the first order for an Evergreen turf .  Mr Laybutt was a founding director of Evergreen and thus it seems that he was the only member of staff having prior experience with synthetic bowling green installations which, it will be recalled, was limited to observations made by him at Sydney City before the running in of that green had commenced.  I am therefore somewhat persuaded by Mr Heylen's submission that the omission of any specific reference to crimping in the care instructions is reflective of the overall lack of recognition by Mr Laybutt and Mr Wright of the need to randomly crimp the free ends of the turf fibres in order to avoid noticeable bias.

Exhibit B is said by Mr Heylen to be a turf sample to which sand has been added in accordance with the care instructions.  He says this sample demonstrates that the level of sand employed at Port Germein prevented the tips of the free ends from being crimped by rolling.  However, Mr Heylen's assertion that he followed the care instructions is uncorroborated and due to its disturbed condition (no doubt incurred during transit) the sample is in any event of no assistance to Mr Heylen other than to confirm his observation regarding the presence of excess sand.  Further to this, Mr Heylen states that he twice inspected the Port Germein green, "late in 1988 and early in 1989", but apart from referring to its sandy surface says nothing of the playing characteristics of the green.  He has though otherwise referred to the close similarity of the Supergrasse and A.E. Williams greens both in terms of appearance and bowl performance.

Mr Leue has held the position of Secretary-Treasurer of the Port Germein Bowling Club since 1986.  In evidence in reply Mr Leue states that in his experience the Port Germein green has always performed without any noticeable bias which is to some extent reiterated in his letter of 31 March 1989 written on behalf of the bowling club members to A.E. Williams (see Annexure A to Mr Wright's declaration) where it is said:

"Club members, visitors from other clubs in the state and from interstate speak very highly of its performance and appearance.  The green is performing within our expectations and as specified in your literature and discussions."

However, this evidence is in direct conflict with the many complaints Mr Leue says in evidence in answer were received "from members and visitors alike" about the uneven draw exhibited by the Port Germein green.  Clearly, this conflict cannot simply be explained by the allegedly "anti-synthetic mentality" of the people who made the complaints.  In addition, Mr Leue has intimated in evidence in answer that the green did not perform satisfactorily until after the excess sand had been removed from the surface in "about 1994".

Mr Laybutt states that subsequent orders for Evergreen turfs placed by A.E. Williams included an order for the Roxby Down Bowling Club in South Australia.  Mr Lehmann, the green keeper at the time of installation in 1988, says that the even draw of the bowl was the source of many complaints received by the club which continued until at least 1990.  He also states that he "did not hear of the process of folding the tips of the turf over until about 1992".  Although this green is not listed in the statement of grounds and particulars I am prepared to take Mr Lehmann's evidence into account for the same reasons the evidence concerning the Wynyard and Royal Hobart greens was considered for the purposes of this decision.    

There are obviously a number of close parallels between the evidence considered above and the evidence presented in relation to the Sydney City green.  The evidence of Messrs Laybutt and Wright is not convincing due to their overall lack of relevant expertise, and does not find clear support in the care instructions as regards the critical issue of crimping.  Mr Heylen has  concentrated on the level of sand infill provided at Port Germein with only a passing reference to  uneven draw.  He again relies on indirect (yet independent) evidence as substantiation of this  aspect of bowl performance.  The evidence of Mr Leue contains a number of discrepancies and so does not help either party.

Given these circumstances I am unable on balance to find that this instance of alleged prior use has been established.              

Meadowvale Retirement Village

This green was installed in 1986 by RTS using the OMNIBOWLS product.  Mr Isaacs, the managing director of RTS, states that he has inspected the Meadowvale green on a number of occasions since the first year of installation, and on 18 April 1996 conducted a joint inspection with Mr Halford.  Mr Isaacs claims on the basis of these inspections that "the present installation is the same turf originally installed".  This is more fully described by him as follows:

"The OMNIBOWLS turf is a cut pile carpet comprising of fibres generally extending upwardly from the backing material and each fibre exhibiting the crimped characteristic of the POLYLOOM fibre.  The tips of the fibres in the carpet are crimped at an angle to the fibre stems and the tips are randomly random [sic] orientated.  Noticeable bias of the fibre tips in any one direction is not present in the OMNIBOWLS turf.  These features are still evident in the OMNIBOWLS turf installed at Meadowvale."  

Mr Heylen states that he inspected the Meadowvale green on three occasions accompanied by Mr Hannaford.  The second and third inspections (in July and August of 1997) were conducted with the aid of a magnifying glass which Mr Heylen deposes revealed that the tips of the free ends of the turf fibres were standing almost vertical while portraying a slight lean in one direction.  Mr Heylen also says that he and Mr Hannaford tested the performance of the green and found that the surface produced an uneven draw.  Mr Hannaford is fully supportive of this version of events and adds that the directional nature of the turf is evident from exhibit A/20 which comprises a series of photos taken by him at different locations across the green.  However, in the absence of sufficient evidence from persons skilled in the art (cf. Nicola Leonardis v Sartas No 1 Ltd and Olympic General Products Pty Ltd (Trading as RMAX) [1996] 449 FCA 1), I am unable to conclusively establish what these photographs relevantly disclose, and in particular whether or not they show an obvious crimp on the tips of the free ends.  This is also the case with the photographs comprising Annexures A to G of Mr Halford's declaration.  

Mr Heylen has argued that Exhibit C "is not actually a piece of the turf used at Meadowvale" but I am prepared to accept at face value Mr Isaacs' claim that that the OMNIBOWLS turf installed at Meadowvale "is of the same type and has the same characteristics" as the sample shown to him by Mr Halford (ie. Exhibit C).  Moreover, this exhibit has been identified by Mr Cole as an OMNIBOWLS turf sample.  I do, however, appreciate that Exhibit C does not include a sand infill.

In any case it is not clear even on close inspection whether Exhibit C portrays the crimped characteristic for which Mr Isaacs contends.  Rather than being crimped at different angles to the stems of the turf fibre, the tips to me give the impression of leaning substantially in one direction, which Mr Heylen and Mr Laybutt assert demonstrates that Exhibit C merely portrays the inherent lean which occurs in the production of the turf.  This brings me to Exhibit #19 which Mr Heylen states is a coloured photograph taken in the presence of Ms Perrin which shows a magnified profile of the stems and tips of Exhibit C.  Although not fully corroborated by Ms Perrin I have no reason to question the veracity of Mr Heylen's statement which has not been challenged by Balsam even though it was afforded ample opportunity to do so.  Furthermore, this photograph only depicts one section of turf but again there is nothing before me to suggest that it is not illustrative of the turf sample comprising Exhibit C.  Importantly, the photograph confirms that Exhibit C has a definite inherent lean in the pile of the turf since as noted by Mr Heylen all but one or two of the stems is leaning to the left.  This appears entirely consistent with the evidence of Mr Hannaford referred to earlier in this decision regarding the inherent lean in the Meadowvale green itself. 

On this basis I find that the stems of Exhibit C are not randomly crimped in accordance with the claimed invention and, as this exhibit is said by Balsam to constitute a true representation of the OMNIBOWLS turf installed at Meadowvale, I also find that this instance of alleged prior use has not been established.   

Summary

I have found that there is insufficient evidence to establish to the necessary degree of certainty that there has been any prior use of the claimed invention.

In reaching this conclusion I have not overlooked the fact that Mr Heylen has attempted to counter the case advanced by Balsam partly on the basis that the level of sand infill employed at the Sydney City and Port Germein greens would not permit crimping to occur, which could be taken as a tacit acknowledgement that these greens were rolled in multiple directions with that purpose in mind.  However, this is not decisive of the question of novelty where the real issue is did any of the bowling greens relied on by Balsam actually disclose all the essential features of the claimed invention, and I have decided that the balance is in favour of Mr Heylen on this point. 

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it 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.

In this instance Mr Halford has relied on common general knowledge alone to sustain the allegation of lack of an inventive step.

The essential nature of common general knowledge has been defined by Aickin J in MinnesotaMining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292 as follows:

"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 suitably qualified experts of what was known by the person skilled in the relevant art.  The evidence in the present case does not specifically address this issue but what does emerge is that at the priority date synthetic bowling greens were installed using practices which had been developed for the installation of synthetic tennis courts.  As noted by Mr Heylen, "tennis courts provided the major market for Synthetic Turf through the late 1970's and the early and middle 80's".

The Omnisports turf product was derived from the Tomarin patent which discloses a tennis court surface formed of a network of carpet fibres having a sand covering or layer as deep as the height of the carpet or slightly less to expose the fibre tips.  According to Mr Cole, "[b]y 1985 … the experiences in putting the Tomarin patent into practice had become widely known to synthetic turf manufacturers, installers and maintainers in Australia".  This is confirmed to some extent by the Horton, Cush and Dean declarations which provide evidence from persons experienced in the installation of Omnisport tennis courts.  All testify to the commonly employed practice of brushing the fibres up to a near vertical position before adding sand to a level such that only the fibre tips remained visible.  Mr Cole then states that:

"… some of the well used tennis courts using Tomarin type turfs exhibited folding over or crimping of the polypropylene tips in the areas of high traffic and this feature with the other experiences of the Tomarin type turf, and feedback from the prospective clients initiated the development … of the bowls specific synthetic turf product known as OMNIBOWLS.

The crimped polypropylene tips led to the realisation that a polypropylene turf can be adapted for use in bowls applications."

As I have already mentioned, the OMNIBOWLS product was produced by what was known in the carpet manufacturing industry as the Knit De Knit process which Mr Cole alleges resulted in a "pre-crimped" synthetic turf. 

The general test to be applied under this ground of opposition 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 148 CLR 262 at 270). It was also stated in Wellcome 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 mighty have led from the prior art to the invention, whether they be the steps of the inventor or not."

In my opinion the evidence of Mr Cole does not suggest a plausible chain of events leading from the general body of knowledge in the field, which had evolved solely from the installation of synthetic tennis courts, to the claimed invention that addresses the problem of noticeable bias.  More particularly, the nature of the "other experiences of the Tomarin type turf" have not been identified and, given the obvious differences between tennis and bowls, it is not clear how these could have led to an understanding of what was required in order to produce a bowling green having predictable playing characteristics.  Mr Cole has in this regard attempted to attach some significance to the crimping observed in the areas of high traffic but fails to demonstrate that this phenomenon was recognised as being in any way relevant to avoiding noticeable bias.  In fact the independent and uncontested evidence of Mr Davies that the fibre tips tended to crimp in only one direction lends support to the conclusion that Omnisport did not realise that the solution to this problem lay in a randomly crimped playing surface.

Even if I were to accept that the development of the OMNIBOWLS product was based on relevant background knowledge, the fact remains that the only hard evidence I have before me regarding its  structural character is Exhibit C.  However, this evidence does not for the reasons already given establish that the fibres of the OMNIBOWLS product were crimped in different compass directions.  Furthermore, Mr Cole has stated that the first OMNIBOWLS greens were installed without a sand infill which again compels me to believe that the presently defined combination of features would not have naturally suggested itself to an appropriately skilled addressee.      

The evidence which has been presented in relation to the turf products manufactured by Supergrasse and Evergreen is even less convincing.  Messrs Laybutt, Groch and Wright have each referred to the step of rolling these products in multiple directions but perhaps in reflecting their own limited expertise make no reference to the extent to which this practice was known to those engaged in the industry.  Mr Groch for instance has merely stated that he was acting under instruction from Mr Waterford who has not offered any evidence in these proceedings.  Mr Wright states that:

"Since at least the early 1980's A.E. Williams sold and installed Supergrasse synthetic tennis court turfs and from 1988 commenced selling Evergreen synthetic tennis court turfs and synthetic bowling green turfs.

……

The initial A.E. Williams tennis court turf installations in the early 1980's were done under instruction from and supervision by staff from Supergrasse.  The installation procedure of the turf included the brushing of the sand infill into the turf and orientating the portion of the fibres buried by the sand ('the stem') in a vertical position and rolling the turf to compact and settle the sand infill."

He then explains that the first Evergreen bowling green turf was installed and groomed using  knowledge gained through tennis court installations in conjunction with technical assistance from staff at Evergreen having experience with synthetic bowling green installations.  However, and as already stated, this technical assistance was on the evidence provided by Mr Laybutt based solely on observations made by him during the installation of a Supergrasse synthetic bowling green.  Mr Laybutt in turn has not demonstrated any additional prior knowledge in the field and, importantly, fails to offer any credible account of how he became aware of the beneficial effects of rolling a synthetic bowling green in multiple directions.  Indeed, the evidence of Mr Wright and Mr Cole, who says he was familiar with "competitors products, practices, and installation procedures", points to the fact that rolling was commonly viewed in the industry as a means of compacting the sand infill consistent with the installation procedures adopted with Tomarin type (ie. sand-filled) synthetic turfs.

In these circumstances I find that there is insufficient evidence to show that the claimed invention lacks an inventive step.

Section 40

Mr Halford referred me to a number of issues under this ground of opposition.  The first issue related to the fair basis of the claims where it was said that given the state of the art the true nature of the invention resided in a method of producing a synthetic playing surface including the steps of adding particulate matter to the turf and subsequently pressing the turf with a heated roller to crimp the free ends in multiple directions.  Mr Halford submitted that as neither of the independent claims were limited to the use of a heated roller they went beyond the matter disclosed in the specification (per Olin Corporation v Super Cartridge Co Pty Ltd (1977) 51 ALJR 525). He further submitted that claim 11 additionally lacked fair basis as it allowed the turf to be pressed before the addition of particulate matter which again had not been contemplated by the specification.

Mr Halford's submission regarding the alleged state of the art is not supported by the evidence and in any event I agree with Ms Perrin that as the specification has clearly referred to the preferred use of a heated roller there is no basis for restricting the independent claims to include this feature.  I do, however, share Mr Halford's concerns with claim 11 which I would normally view as defining a series of steps to be performed in sequence were it not for claim 12 which requires the particulate matter to be added prior to pressing the turf.  On the presumption that claim 12 is not redundant over claim 11 the latter must I believe be interpreted as Mr Halford has contended.  As there is no "real and reasonably clear disclosure" of a method of preparing a playing surface wherein the turf is pressed prior to the addition of particulate matter (Nicola Leonardis v Sartas No 1 Pty Limited (1996) AIPC 91-239), I find that claim 11 lacks fair basis. Indeed, Mr Heylen has himself indicated that it is essential to roll the turf after the addition of particulate material because it is the action of pressing the turf against the sand that allows crimping to occur.

The next issue relates to the best method of performance which Mr Halford submitted had not been described due to the omission by the specification of any specific details of the materials needed to practice the invention.  However, I consider there are sufficiently clear directions within the specification to enable a skilled worker to perform the invention particularly as it states that any conventional artificial turf may be used.

Although not raised by Mr Halford, there is a further issue to consider.  Throughout his evidence Mr Heylen has consistently referred to the importance of the level of sand infill employed and in fact at the hearing Ms Perrin submitted that this feature together with random crimping was essential to the invention.  The consequence of this submission, if correct, is that in failing to specify the level of particulate matter the independent claims lack fair basis.

In Van Der Lely NV v Ruston's Engineering Co Ltd [1985] RPC 461Neil LJ summarised the rules of construction of patent specifications which for present purposes are as follows:

"1. The court should regard the specification as a statement addressed to persons with practical knowledge and experience in the field in which the invention is intended to be used.

2. In construing the specification the court should seek to determine what are the features disclosed in the specification which such addressees would understand as being intended to be essential and novel features of the invention.

3. In determining what features would be so understood to be essential and novel the court is entitled to receive evidence.  Without attempting to list the topics which such evidence could cover, it seems clear that admissible evidence can be tendered as to:
(a) the prior state of the art;
(b) the meaning of technical terms;
(c) the features of the invention which a practical man reading the specification
 would understand were intended to be essential and novel; and
(d) whether any particular variant from the design described in the specification
 would or would not be understood to fall within the monopoly."

Here there is no evidence of the type referred to in 3(c) above but even so it seems abundantly clear from the specification itself that as a matter of construction the feature in question is not  essential to the invention.  Thus while the evidence points to advantages which may well accrue through the use of a certain level of particulate matter when practising the invention, the fact remains that there is nothing in the description or claims to suggest that this feature should be regarded as anything more than optional.  Importantly, the specification contains sufficient information to enable a skilled worker to determine the most effective level by routine experiment.  I find similarly with regard to the feature of crimping the fibre tips so as to lie in a substantially horizontal plane.     

In summary, I find that this ground of opposition succeeds only for the reason that claim 11 is not fairly based.

CONCLUSION

I have found that the opposition grounds of lack of novelty and inventive step have not been established.  However, I have found that claim 11 is not fairly based and thus the opposition succeeds under the ground of non-compliance with section 40.  As this deficiency can in my view be easily overcome I allow Mr Heylen 60 days to propose amendments accordingly.

COSTS

The power of the Commissioner to award costs is discretionary, so I must take account of all relevant considerations (American National Can Company v W.R. Grace & Co-Conn 29 IPR 292).

In actions before the Commissioner, costs usually follow the event.  I have found that the present opposition has succeeded but only on a relatively minor section 40 matter and thus do not believe Balsam is entitled to an award of costs.

Accordingly, I make no award of costs.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Collison & Co, Adelaide 

Patent attorneys for the opponent: Halford & Co, Sydney