Kingsford Ross Heylen v DAVIES Collison Cave
[1994] APO 50
•31 August 1994
official notice
decision of a delegate of the commissioner of patents
Petty Patent : No. 614483 in the name of
Kingsford Ross Heylen
Title : SYNTHETIC BOWLING GREEN
Action: Hearing on Section 28 Notice by the firm of Davies Collison Cave
Decision: Issued .
Abstract: Grounds that the invention claimed is not novel and/or does not involve an inventive step and is not fairly based on the specification as originally filed and is directed to matter not in substance disclosed in the specification as filed not proven.
Extension of term granted.
Notifier was a firm of patent attorneys. Costs awarded against the partners of the firm, jointly and severally.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Application for the grant of an extension of term under
section 69 of the Patents Act 1990 of Petty Patent No 614483
in the name of KINGSFORD ROSS HEYLEN and the notice filed under section 28 of the Patents Act 1990 by the firm of DAVIES COLLISON CAVE.
BACKGROUND
Petty patent application No 78409/91 was filed by KINGSFORD ROSS HEYLEN (hereinafter referred to as HEYLEN ) on 14 June 1991 being a divisional application made by virtue of section 39 of the Patents Act 1990 of application No 54901/90 which was lodged on 10 May 1990 and which in turn was a complete specification received after application No PJ4118, accompanied by a provisional specification, and lodged on 10 May 1989.
Following acceptance, the petty patent application was sealed on 9 July 1991 as petty patent No 614483. On 9 June 1992 the patentee, HEYLEN, applied under section 69 for an extension of term of petty patent No 614483 which was preceded by a notice under section 28 by the firm of Davies Collison Cave (hereinafter referred to as DAVIES) filed on 7 May 1992.
On 7 August 1992 the patentee proposed amendments under section 104. Second and third statements of proposed amendments, also under section 104, were filed on 18 September 1992 and 21 January 1993 respectively and the final set of amendments were advertised as being allowed on 17 February 1994.
The matter came to hearing in Canberra on 20 July 1994. The patentee was represented by Dr Ian Ernst, patent attorney, of Shelston Waters, Sydney. DAVIES decided to rely on written submissions provided by Ms Karen Yeilds, patent attorney, of DAVIES, Melbourne.
THE PETTY PATENT SPECIFICATION (AS AMENDED)
The specification commences by stating that:
" This invention relates to a synthetic playing surface for use
in playing fields of the kind used for lawn bowls, croquet,
and the like, and the preparation thereof. "
Previous prior art artificial turfs and the disadvantages thereof, in particular the exhibition of leading bias resistance due, in part, to the directional pile of the fibres comprising the turf, are then discussed, followed by an object statement which reads:
" It is an object of this invention to provide a bowling green
comprising an artificial turf and a method of preparing the
bowling green which ameliorates at least some of these
deficiencies of the prior art. "
After this statement is the consistory statement which corresponds to claim 1, this statement being followed by preferred and desired features of the invention.
A preferred embodiment of the invention is then described with reference to the accompanying drawings.
The claims then follow which read:
" 1. A bowling green for lawn bowls said green comprising an
artificial turf having a plurality of fibres extending
generally upwardly from a backing material and having
particulate matter between the fibres, the fibres of the
plurality each having a stem portion buried in the
particulate matter and a free end portion protruding above
the particulate matter wherein the free end portion is at
least 2 mm long and is crimped above the particulate
matter at an angle to the stem portion, and wherein the
crimped free end portions are orientated with a
substantially random multidirectional orientation.
2. A bowling green according to claim 1 when prepared by a
process comprising the steps of:
a) laying the artificial turf over a site,
b) forming a layer of particulate matter between the
fibres such that the fibres have a buried stem portion
and a free end portion protruding at least 2 mm above
the particulate layer, and
c) rolling the turf to crimp the free end portion of the
fibres above the particulate layer at an angle to the
stem portions so that the free end portions are
orientated with a substantially random multidirectional
orientation.
3. A bowling green according to claim 1 or 2 when used for
playing bowls. "
THE NOTICE UNDER SECTION 28
The notice reads:
" Re: Australian Petty Patent No 614483 in the name of
Kingsford Ross Heylen "Synthetic bowling green"
We wish to notify the Commissioner, in accordance with
Section 28 of the Patents Act 1990, that the invention
described in the above referenced patent is not a patentable
invention because it does not comply with Section 18(1b) of
the Patents Act 1990.
We assert that the invention, so far as claimed in any claim
of the above referenced patent is not novel and/or does not
involve an inventive step when compared with the prior art
base as it existed before the priority date of the claims.
To support this assertion we enclose an attested copy of a
Statutory Declaration dated 4 May 1992 by John Norman Skase.
We furthermore submit that the specification of the
referenced patent does not comply with sub-section 40(2) or
40(3). "
FORMALITIES
The Section 28 Notice
The Section 28 notice is signed by Karen Yeilds of DAVIES. There is no indication on the notice that there is any notifier other than the patent attorneys, DAVIES.
Further communications with respect to the Section 28 notice and proposed amendments were received from DAVIES dated 15 October 1992, 28 May 1993 and 11 June 1993 respectively, again with no indication that the notifier was other than DAVIES.
On 1 July 1994 a letter forwarded by facsimile and signed by Karen Yeilds of DAVIES stated in part " .... in response to our Section 28 notice" (underlined word my emphasis).
Section 28 requires that the notifier be a person. DAVIES, being a partnership of patent attorneys, is a firm of persons and is thus not per se a "person". As a result, I take the reference to DAVIES in the Section 28 notice as being a reference to the partners of that firm, jointly and severally.
Due to the unusual circumstance of a firm of patent attorneys being a notifier, clarification was sought in writing on 1 July 1994 from DAVIES as to whether Superior Grasse Sports Turf (Aust) Pty Ltd was in fact the notifier and on 19 July 1994 a letter forwarded by facsimile was received stating in part "We .... advise that the opponent, Superior Grasse Sports Turf (International) Pty Ltd, does not wish to be represented at the Hearing. The opponent does however wish to present .... written submissions".
However, in the light of the information contained in DAVIES' letter of 19 July 1994, since the Section 28 notice clearly states that DAVIES are the notifier, I take it that the partners of DAVIES are the notifier based on information provided to DAVIES by Superior Grasse Sports Turf (International) Pty Ltd.
The Submissions
At the hearing, Dr Ernst submitted that all submissions provided on behalf of the notifier outside the prescribed period, i.e. 11 months from the grant of the petty patent, without being granted an extension of time under section 223, should not be considered as part of the notice. I will return to this question if and when I find that any material provided on behalf of the notifier outside the prescribed period is of such a nature as to preclude the Commissioner from extending the term of the petty patent under section 69.
DECISION
Fair Basis
In the DAVIES submission dated 19 July 1994, the following points were raised in relation to fair basis:
" The specification states that an object of the invention is
to provide a bowling green which overcomes the deficiencies
of the prior art. The deficiency described in the
specification is the existence of leading bias resistance
which results in an unsatisfactory lawn bowls playing
surface. The specification as accepted states at page 8 that
the `applicant has discovered that bowling greens prepared
according to this invention substantially avoid or
ameliorate leading bias resistance exhibited by prior art
artificial turf'.
In view of the disclosure of the specification of this
application as originally filed and as filed in connection
with the parent application (AU 54901/90), we believe that it
is essential to a proper definition of the invention that the
orientation of the crimped fibre ends with respect to a
reference direction be substantially random so as to produce
a multi-directional pile having negligible pile resistance.
It is only when such a multi-directional pile with negligible
leading pile resistance is provided that the fundamental
object of the present invention is achieved. That is to
substantially avoid or ameliorate leading bias resistance.
....
Claim 1 as proposed to be amended states that `the crimped
free end portions are orientated with a substantially random
multi-directional orientation'. Claim 1 does not include a
limitation to the effect that a multi-directional pile having
negligible bias resistance is produced and we strongly submit
that the latter is not inherent in the former. A plurality
of fibres having their crimped free end portions orientated
with a substantially random multi-directional orientation may
still exhibit a substantial net bias resistance. Accordingly
we submit that claim 1 as accepted and as proposed to be
amended is not fairly based on the specification as
originally filed and that the claims are directed to matter
not in substance disclosed in the specification as filed."
I will deal first with the notifier's submission that the claims are directed to matter not in substance disclosed in the specification as filed. At the hearing, Dr Ernst submitted that this statement by the notifier was not correct and went on to submit that not only were the essential features of the claims as amended disclosed in the original provisional specification PJ4118 but they were carried through to the 54901/90 parent of the instant petty patent divisional and to the 614483 instant petty patent itself.
Reference to provisional patent specification PJ4118 discloses the following statements:
" In one aspect, the invention consists in a method of
preparing a playing surface comprising the steps of:
a) laying an artificial turf over a site,
b) providing particulate matter as a layer over the
backing of the artificial turf and extending to below
the free end of the fibres; and
c) then rolling the turf at elevated temperatures until
the uppermost portion of at least a proportion of the
artificial fibres is crimped at an angle to the
horizontal.
In preferred embodiments, the particulate matter is sand
which is in a layer extending from the backing to within 5 to
7 mm of the fibre free ends. The fibres are then rolled in
different directions to bend the fibres substantially
horizontally.
It is preferred that rolling at elevated temperatures is
continued until the uppermost portions of more than 10% and
preferably more than 90% of the total number of fibres in the
turf have been forced into a generally horizontal
configuration. "
" Synthetic turfs prepared according to the present invention
have been found to exhibit negligible leading bias
resistance. "
" The invention will now be more particularly described with
reference to examples. ....
The particulate-filled turf is then rolled. Rolling is
preferably effected with a tandem of about 3 tonnes and the
drum or drums heated to approximately 100oC. Rolling is
carried out in plurality of directions to produce a multi-
directional pile having negligible pile resistance. ....
It will be understood that the term `horizontal' is herein
used to mean more nearly horizontal than vertical ....
Desirably also the orientation of the fibres with respect to
a reference direction is substantially random. ....
The applicant has discovered that bowling greens prepared
according to the invention substantially avoid or ameliorate
leading bias resistance exhibited by prior art artificial
turf. "
Similar statements are, as Dr Ernst contends, carried over to the 54901/90 parent and the 78409/91 petty patent divisional as filed.
This being the case, I find that the claims are directed to matter in substance disclosed in the specification as filed.
I now turn to the matter of fair basis with respect to the non-inclusion of the limitation to the effect that a multi-directional pile having a negligible pile resistance is produced.
At the hearing, Dr Ernst submitted that the instant specification made it clear that one of the particular inherent problems of the prior art playing surfaces for lawn bowls was the exhibition of leading bias resistance due, in part, to the directional pile of the fibres comprising the turf and that it was the object of the invention to provide a bowling green comprising an artificial turf and a method of preparing the bowling green which ameliorates at least some of the difficulties of the prior art. The specification also made it clear that synthetic turfs prepared according to the present invention have been found to exhibit negligible leading bias resistance.
Dr Ernst also submitted that in discussing a preferred embodiment the specification states:
" .... it will be appreciated that rolling is carried out in a
plurality of directions such that the orientation of the
crimped fibre ends with respect to the reference direction
is substantially random so as to produce a multidirectional
pile having a negligible leading bias resistance."
Dr. Ernst went on to submit that the production of a pile having negligible pile resistance was an object of the invention which was satisfied by providing that the crimped free end portions of the turf fibres be orientated with a substantially random multidirectional orientation. Dr Ernst then queried on what basis it was necessary to include an object of the invention in the claim if the claim included the essential integers to achieve the object.
I agree with Dr. Ernst. I construe the specification as making it clear that the production of a pile exhibiting a negligible bias resistance is an object of the invention which is to be achieved by the free end portions of the fibres being orientated with a substantially random multidirectional orientation as defined by claim 1. Accordingly, I find the claims fairly based with respect to this matter.
Novelty and Inventive Step
The notifier asserts that the claimed invention was disclosed prior to the earliest priority date by synthetic lawn bowls playing surfaces referred to in declarations by John Norman Skase and Ian Paul Stagles.
I think that it will help me reach a conclusion on this aspect if I consider each of statutory declarations submitted on behalf of the notifier and patentee.
In his statutory declaration dated 4 May 1992, Mr Skase declares that he is the Managing Director of Superior Grasse Synthetic Sports Turf (Aust.) Pty Ltd and that his company is a manufacturer, supplier and installer of synthetic grass turf.
He further declares that the records of his firm indicate that:
a) In 1983 a company called West Turf in Western Australia
installed a synthetic lawn bowls playing surface at
Parklands Villas Woodlands, Western Australia, going on to
declare that the records also show his own company installed
synthetic lawns playing surfaces, all in Western Australia,
as follows:
b) 1985 - Swan Cottage Homes, Bentley.
c) 1985 - Busselton Beach Resort
d) 1985 - Murray Lakes Resort, South Yunderup.
e) 1987 - North Whitfords Estates, Kallaroo.
f) 1987 - Riverglades Caravan Park, Mandurah.
Mr Skase then states:
" The synthetic playing surfaces described ... each comprised
an artificial turf having a plurality of fibres extending
generally upward from a backing material. The fibres were
made of polypropylene and the backing material to which the
fibres were attached was polypropylene. During installation
of the artificial turf sand was laid between the fibres of
the turf such that each of the fibres of the turf had buried
a stem(sic) and a free end protruding from the sand. A
roller was employed to press the turf to cause crimping of
the protruding free end of each of the fibres to an angle to
the stem. Substantially more than half of the fibres were
crimped in this way, so that the crimped ends extended at an
angle less than 45o to the surface of the turf.
The free ends of the fibres protruding from the sand after
rolling were approximately between 2 and 5 millimetres long.
The method of installation described ... is widely used in
the synthetic turf industry and has been used by my company
for many years."
At the hearing, Dr Ernst explained that when the Skase declaration was received his client arranged to travel to Western Australia to inspect the bowling greens listed in the declaration. None of the greens inspected was in accordance with the instant claimed invention except that at Swan Cottage Homes. Dr. Ernst then referred to his own and his client's statutory declarations in respect of this particular green.
The statutory declaration of KINGSFORD ROSS HEYLEN dated 26 July 1992 reads in part:
" On Friday , 5th June 1992, I visited the bowling green at
Swan Cottage Homes, Plantation Drive, Bentley, West
Australia.
The bowling green did not look to me as though it had been
installed in 1985. While I was on my knees inspecting it, I
was approached by a person who introduced himself as Mr Keith
Withers, President of the bowling club. Mr Withers informed
me that the green had been replaced in February 1991 in its
entirety, including the construction of a new base. He said
that the previous green had been completely unsatisfactory.
I commented on the fact that the fibres appeared to lie in
random directions and he said to me that the new green was
different from the replaced green in that respect. "
The statutory declaration of IAN THOMAS ERNST dated 28 July 1992 reads in part:
" On 1st July 1992, Mr Heylen told me that he had been
approached by Mr Keith Alfred Withers ... while Mr Heylen was
inspecting the bowling green at Swan Cottage Homes Bowling
Club. Mr Withers had introduced himself to Mr Heylen as
President of the Bowling Club. Mr Withers had told Mr Heylen
that the synthetic turf bowling green installed in
approximately 1985 had been unsatisfactory and had been
replaced with a new synthetic playing surface. The new green
had been completed approximately 12 months previously.
Mr Heylen instructed me to write to Mr Withers and to ask
him to confirm the above information in the form of a
statutory declaration. I wrote to Mr Withers on 2nd July
1992.
On 17 July 1992, I received a letter from Mr Richard Cleaver
CBE JP dated 15th July 1992 on behalf of Swan Cottage Homes
Incorporated. I identify Mr Cleaver's letter of 15 July
1992 as exhibit "A" hereto. I note that Mr Cleaver confirms
that the bowling green at Swan Cottage Homes was in fact
completed in January 1991. "
Exhibit "A", the letter from Richard Cleaver dated 15 July 1992 on behalf of Swan Cottage Homes states in part:
" We note that ... the Petty Patent was sealed on 9th July
1991. Our work was completed in January of 1991. "
Following his reference to his client's and his own statutory declarations Dr Ernst explained that his client engaged the services of an outside expert, DOUGLAS McINNES, to examine the bowling greens listed in the Skase declaration to provide an independent view of their composition. The Swan Cottage Homes green was not included as this was completed after the priority date of the claims of petty patent No 614483.
The statutory declaration of Mr McInnes, dated 17 July 1992, states in part:
" I am employed by Golder Associates Pty Ltd, Consulting
Engineers .... . My background and qualifications are
annexed hereto. [The annexure shows that Mr McInnes holds
the degrees of B.E. University of Adelaide, M.E. McGill
University, Canada and Ph.D. University of Western Australia.
He is a Chartered Engineer being a Member of the Institution
of Civil Engineers, a Member of the Institution of Engineers,
Australia and a Member of the Australian Geomechanics
Society. His experience includes major buildings and
developments, pavement studies and road materials searches,
dams and storage facility studies, mine infrastructure
studies, coastal engineering studies and advising as an
Expert witness.]
I am familiar with the construction of synthetic lawn bowls
playing surfaces. Generally, these comprise an artificial
turf filled with sand and layed (sic) on a specially prepared
base. Generally, any protruding fibres lie substantially in
one direction.
I have read Patent Specification No. 614483 and consider that
it discloses a novel construction in which fibres extend to
above the sand level and in which the fibres are then crimped
so that the free fibre ends lie substantially flat on the
sand surface. I notice in particular that the specification
describes that rolling is carried out in a plurality of
directions such that the crimped fibre ends are multi-
directionally orientated. I have observed that on a playing
field made in this way, a bowling ball can be bowled
substantially with equal bias in any direction.
In May 1992 , I have inspected bowling greens at each of the
following addresses: [The addresses correspond to locations
(a), (c), (d), (e) and (f) listed in the 4 May 1992 Skase
declaration].
In each case I noted that the bowling green consists of an
artificial turf having a plurality of fibres extending
generally upwardly from a backing material and having
particulate matter (sand) between the fibres such that the
fibres have a buried stem portion. In most cases, it appears
to me that when constructed, the bowling greens had
particulate matter to the tips although in some cases, it
appears that the level of the particulate matter has fallen
and that a portion of the free fibre ends has been crimped
over the top by extensive rolling.
At each of the bowling greens I inspected, substantially all
the fibre tips were laying in one direction. In no case
would I describe the fibres as being orientated multi-
directionally in the manner described in Petty Patent
No. 614483. "
On 15 October 1992 DAVIES filed a letter with the Patent Office entitled ` Re: Australian petty patent no. 614483 (78409/91)
in the name of Kingsford Ross Heylen and Notice
under Section 28 "Synthetic Bowling Green" '.
The letter stated in part:
" We have reviewed the request to amend under Section 104 of
the referenced patent application and wish to draw the
Commissioner's attention to the following points:
.
.
.
.
We enclose an attested copy of a statutory declaration by
Ian Paul Stagles. We submit that claim 1 as accepted and
claim 1 as proposed to be amended is not novel in view of the
playing surfaces referred to in ... the statutory declaration
by Ian Paul Stagles and ... the statutory declaration by John
Norman Skase. "
The statutory declaration by Ian Paul Stagles, dated 5 October 1992 declares in part:
" I am the proprietor of Sports Surfaces and I have held this
position since 1980.
2. Sports Surfaces is an agent of Superior Grasse Synthetic
Sports Turf (Aust.) Pty Ltd .... Sports Surfaces installs
synthetic grass turfs in Western Australia for Superior
Grasse Synthetic Sports Turf (Aust.) Pty Ltd.
3. The records of Sports Surfaces indicate that:
The declaration then goes on to state that on behalf of
Superior Grasse Synthetic Sports Turf (Aust.) Pty Ltd
Sports Surfaces installed the synthetic lawn bowls playing
surfaces corresponding to (b), (c), (d), (e) and (f)
locations listed in the 4 May 1992 Skase declaration.
4. The method of installing synthetic playing surfaces which
was used by Sports Surfaces and contractors contracted by
Sports Surfaces to install the surfaces referred to at
paragraph 3 is as follows:
a) The surface on which the artificial turf is to be laid
is prepared ready for receipt of the artificial turf.
b) The artificial turf comprising multiple fibres
extending upwardly from a backing material is then
applied to the prepared surface.
c) Once the artificial turf is positioned on the prepared
surface sand is placed over the artificial turf. The
surface is broomed such that the sand is worked into
the fibres of the artificial turf, so that a portion of
each fibre extends above the sand.
d) The artificial turf is repeatedly broomed and then
rolled with a heavy roller in a large number of
directions so that the portion of each of the fibres
extending above the sand is crimped at an angle to the
stem of the fibre.
e) To ensure that the playing surface provides a
reasonably true roll when a ball is rolled across it
the artificial turf is broomed and rolled in a number
of different directions on several occasions.
Normally, it is necessary to broom and roll the surface
on two or three different occasions to ensure that the
playing surface provides a reasonably true roll. It is
the practice of Sports Surfaces to continue brooming
and rolling of the playing surface until the playing
surface provides such a reasonably true roll.
f) At the completion of the brooming and rolling of the
playing surface the free ends of the fibres of the
artificial turf protrude above the sand by
approximately between 2 and 5mm.
5. The synthetic lawn bowls playing surfaces referred to at
paragraph 3 of this declaration were installed in
accordance with the installation method described at
paragraph 4 of this declaration. I know this because I
personally supervised the installations referred to in
paragraph 3 of this declaration.
6. On completion of the installation of the surfaces referred
to at paragraph 3 of this declaration the free ends of the
fibres of the artificial turf were orientated multi-
directionally such that the roll of a lawn bowl across the
surface was reasonably true and was not influenced by the
positioning of the free end portions of the fibres of the
artificial turf. I know this because as part of our
quotation for installing a surface Sports Surfaces
continues to monitor the installed surface and advises
clients on their performance. "
In response, HEYLEN filed a further statutory declaration dated 13 January 1993 which declares in part:
" 1. Annexed hereto and marked `1726-B5' is a photograph taken
at the bowling green situated at Woodland's Retirement
Village .... That bowling green is referred to .... in the
declaration of John Norman Skase .... dated 4th May 1992
lodged in respect of Section 28. Photograph 1726-B shows
the surface of the bowling green close-up.
2. Annexed hereto and marked `1726-B12' is a photograph
taken at .... North Whitfords Estates .... The bowling green
situated at that address is referred to at .... of the
declaration of Mr John Norman Skase referred to above.
Photograph `1726-B12' shows the surface of the bowling
green in close-up.
3. I have inspected the bowling greens referred to in the
above declaration by Mr Skase and say that these photographs
are typical of the surfaces of each of the bowling greens
referred to in .... the declaration by Mr Skase and are also
typical of the surfaces of the bowling greens referred to in
Para 3 in the declaration by Ian Paul Stagles made on 5th
October 1992.
4. Annexed hereto and marked `1726-A9' is a photograph of a
bowling green situated at Kardinya, W.A. which was prepared
in accordance with Petty Patent No. 614483.
5. Annexed hereto is a letter from John Austin,
photographer, dated 9th December 1992, and confirming that
the above photographs were all taken on 8th December 1992 at
the respective locations.
6. Photograph `1726-A9' shows that in a bowling green
according to the invention, the free ends of the fibres are
crimped, with the result that most of the fibres are more
nearly horizontal than vertical and are multi-directional,
that is, are disposed in a plurality of compass directions.
As is shown in this photograph, the orientation of the fibre
ends with respect to a reference direction, is substantially
random.
7. In contrast, photographs `1726-B5' and `1726-B12' show
that in the bowling greens to which Mr Skase and Mr Stagles
refer, the fibres extend generally upwardly and are more
nearly vertical than horizontal. The fibres cannot be said
to have crimped free ends. The free ends tend to have a
uni-directional lie, that is to say the fibres all tend to
point in the same general direction.
8. When a bowling ball is bowled in a bowling green, the
path of the ball tends to curve because the weight of a
bowling ball is biased.
On a natural well-made and maintained grass lawn, the
lawn offers resistance to a straight, rolling bowl.
However, there is negligible additional resistance to the
biased-induced tendency for the bowl to change direction.
On a prior art synthetic turf, the pile tends to fall
predominantly in one direction. As a consequence the
resistance offered by the surface to a bowl is affected by
the direction in which the bowl is moving relative to the
pile direction.
In particular, the resistance offered by the prior art
surface to the bias-induced tendency of the ball to change
direction (`leading bias resistance') is affected.
9. Increase in leading bias resistance causes a bowl to
turn more sharply. The extra turn occurs because the bowl
is subject to more resistance when pushing against the fibre
ends than when moving in the direction of lie. ....
Another undesirable feature of the prior art is that the
bowl requires more energy to propel the bowl toward its
destination against the pile ends in comparison with the
energy required to propel it in the direction in which the
pile lies. In some prior art (see for example photograph
1726 B12) an attempt to overcome these problems has been made
by brushing the pile ends (after sand is laid) with a wire
brush so as to split the ends of the fibre. This process has
been called fibrilation (sic) and is intended to break up the
fibre ends to reduce friction. That method is however
different from the method I have described in my patent
specification and produces a different product end-result.
10. In the case of my invention, the pile is orientated
multi-directionally and offers negligible leading bias
resistance. The resistance to bias-induced change in
direction of the bowl is substantially no different from
the resistance offered to the straight line movement of the
bowl in any direction. "
Accompanying the submissions filed by the notifier the day before the hearing was a further statutory declaration dated 18 July 1994 by John Norman Skase. This declaration declares in part:
" 2. I have examined the statutory declaration by Kingsford
Ross Heylen dated 13 January 1993, and in particular the
photographic exhibits attached thereto.
3. According to the declaration by Mr Heylen, the photograph
marked `1726-B5 'is of the bowling green situated at
Woodlands Retirement Village .... According to Mr Heylen the
photograph marked `1726-B12' is a photograph of the bowling
green located at North Whitfords Estates .... Both of these
bowling greens were referred to in my earlier statutory
declaration dated 4 May, 1992.
4. After examining the photographs marked `1726-B5' and
`1726-B12' and on the basis of my experience and knowledge
concerning synthetic grass turf playing surfaces obtained
while working for my company, it is apparent that the
bowling green playing surfaces illustrated in the
photographs have been subject to heavy wear since the date of
their original installation.
5. Installation of the bowling green shown in the photograph
marked `1726-B5' occurred in 1983 and installation of the
bowling green shown in photograph `1726-B12' occurred in
1987.
6. It is also apparent from photographs `1726-B5' and
`1726-B12' that the surfaces are now nearing the end of their
normal life expectancy and will need to be replaced in due
course. Lawn bowls playing surfaces of the type shown in
photographs `1726-B5' and `1726-B12' have a normal life
expectancy of about 12 years. However, the actual life of
such playing surfaces will vary greatly depending on the
amount of usage of the surface and the manner in which they
are maintained after installation.
7. To properly maintain such playing surfaces they should be
swept and rolled regularly. Furthermore, as the level of
sand or particulate matter supporting the stem of the fibres
decreases over time, additional sand should be swept into the
fibres so as to properly support the stems of the fibres and
to prevent the fibres from flattening. If playing surfaces
are incorrectly rolled or broomed after installation or if
sufficient particulate matter is not broomed into the surface
the random or multi-directional orientation of the free end
portions of the fibres of the artificial turf can be lost.
The fibres may become flattened and orientated in generally
the same direction. "
Considering now the notifier's written submissions and the verbal submissions provided in response by Dr Ernst at the hearing.
In the notifier's submission dated 19 July 1994 provided by Karen Yeilds the point is made that Mr McInnes does not appear to have any experience of synthetic playing surfaces and accordingly he does not have sufficient expertise in this field of technology to speculate as to the nature of the playing surfaces in question.
In his statutory declaration Mr McInnes states " I am familiar with the construction of synthetic lawn bowls playing surfaces ". I am thus faced with a conflict of evidence - the notifier says that Mr McInnes does not have any experience in the field while Mr McInnes himself declares he is familiar with the field. In the Kidax's Ltd's Application (1959 RPC 167) case, Lord Evershed made it clear that, where there was a conflict of this nature, the onus was on the party, alleging that a fact provided by the other party is not correct, to provide proof. The notifier has not provided any supporting evidence as to why Mr McInnes' statement that he is familiar with the construction of synthetic lawn bowls playing surfaces is not correct. Accordingly, I cannot see any reason why I should question Mr McInnes' statement regarding his familiarity with synthetic lawn bowl playing surfaces.
The major point of the notifier's submission dated 19 July 1994 is that the synthetic lawn bowls playing surfaces referred to in the statutory declarations of Ian Paul Stagles and John Norman Skase represent a clear prior disclosure of the claimed invention well before the earliest priority date of 10 May 1989 and, given the existence of these playing surfaces in Australia prior to the earliest priority date of the petty patent, DAVIES believes that the invention defined by the claims of the petty patent is not novel and/or does not involve an inventive step. As a consequence, DAVIES believes that the application for an extension of term of the petty patent should be refused.
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 where Aicken J. stated:
" 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. "
Infringement of a claim occurs where " each and every one of the essential integers " of that claim have been taken, see Rodi &
Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at 391.
At the hearing Mr Ernst submitted that none of the synthetic bowling surfaces listed in the Stagles and Skase statutory declarations, other than that at Swan Cottage Homes, exhibited all the essential integers of the claimed invention. The Swan Cottage Homes surface should be disregarded since it is admitted that this surface was installed after the priority date of the claims. In particular, the other surfaces did not exhibit the integer of the crimped free end portions of the fibres being orientated with a substantially random multidirectional orientation.
He further submitted that the notifier had not refuted any of Mr Heylen's or Mr McInnes' reports of the make-up of the inspected synthetic bowling surfaces but rather had put forward the explanation that due to the fact that the surfaces were nearing the end of their normal life expectancy and had not been properly maintained the feature that the crimped free end portions of the fibres being orientated with a substantially random multidirectional orientation had been lost.
Mr Ernst then drew my attention to what he considered were inconsistencies in the evidence provided by Mr Stagles and Mr Skase. Both claimed that their own company installed the playing surfaces listed as surfaces (b), (c), (d), (e) and (f) in the original Skase statutory declaration. From my own study of the relevant declarations it is clear that Mr Stagles declares that he personally supervised the installation of the playing surfaces but Mr Skase is silent on whether he was present during the installations. Leaving aside the question of which company actually installed the playing surfaces, I am not satisfied that Mr Skase has provided evidence to show that he was in fact present during the installations. This being the case, this has a bearing on what reliance I can place on his evidence with respect to the playing surfaces listed in his original statutory declaration.
Mr Ernst also drew my attention to the fact that Mr Skase had declared that the synthetic playing surfaces manufactured by his company had a normal life expectancy of about 12 years yet when the surfaces were inspected by Mr Heylen and Mr McInnes and the photographs taken in 1992, two of the greens were only 5 years old and another two only 7 years old. According to Mr Skase the reason that the surfaces had lost their multidirectional feature was that they had been badly maintained and were reaching the end of their useful life. Mr Stagles, on the other hand, in his statutory declaration, had stated that part of the quotation for the synthetic surfaces installed by his company included continuing monitoring of the installed surfaces and advising clients on their performance.
I agree that the points raised by Mr Ernst do point to inconsistencies in the notifier's evidence. If Mr Skase is correct regarding the life expectancy of his playing surfaces, why is it that all those inspected including the majority, which had been installed between 5 and 7 years, had deteriorated to the extent that they were now nearing the extent of their normal life expectancy? Further, if what Mr Stagles declares is correct with regard to the continuing monitoring of the playing surfaces, why is it that all those installed before the priority date of the instant invention have lost their fibre random multidirectional orientation feature? I would have expected that if this was a feature of the synthetic playing surfaces as originally installed then at least one playing surface, given that they are continually monitored, would have been maintained to retain this feature. This raises a doubt in my mind as to what extent, if at all, the fibre random multidirectional orientation feature was present in the playing surfaces installed by Mr Skase's and/or Mr Stagles' companies in the first place.
In her submission dated 19 July 1994, Ms Yeilds drew my attention to the case of Glenwood SystemsPty Ltd v Gooden (1993) AIPC 90-985 as authority for the proposition that where evidence has not been challenged by contradictory evidence, the evidence must be accepted at face value. I do not understand why this precedent should be of any assistance to the notifier. My understanding of this case is that it considers uncorroborated evidence provided by an independent (my emphasis) witness. Since both Mr Skase and Mr Stagles claim that they installed the synthetic playing surfaces listed in the original Skase declaration neither can be said to be independent witnesses.
Further Glenwood Systems Pty Ltd v Gooden is authority for the proposition that where some contradiction is provided to evidence produced by an opponent then the onus is shifted back to the opponent to provide corroboration of the evidence. In the matter under consideration, both Mr Heylen and Mr McInnes have reported that the synthetic playing surfaces on which the notifier relies to disclose the claimed invention do not in fact exhibit all the claimed essential features or integers. This being the case, following Glenwood Systems Pty Ltd v Gooden, the onus is on the notifier to provide further evidence to corroborate the original Skase and Stagles declarations. No such further evidence has been provided despite the fact that I would have thought it would have been comparatively easy to provide say a sales brochure or an installation specification showing details of the playing surfaces installed before the priority date or failing that, a statutory declaration provided by a client detailing the construction of the synthetic playing surface provided and installed. In the absence of any corroborative evidence I am not prepared to accept that the notifier has been able to show that synthetic playing surfaces incorporating the fibre random multidirectional orientation integer were installed before the priority date of the claimed invention. This being the case, since an essential integer is missing, the "reverse infringement test" is not met and I therefore find that claim 1 and its dependent claims are novel over the synthetic playing surfaces listed in the original Skase declaration and installed prior to the priority date of the claims.
I am now left to deal with the question of whether the claimed invention lacks an inventive step in the light of the synthetic playing surfaces listed in the original Skase declaration.
I equate inventive step with obviousness. For an invention to be obvious, it needs to be obvious to a non-inventive skilled worker in the field equipped with common general knowledge as at the relevant priority date (Welcome Foundation Limited v VR Laboratories(Aust) Pty Ltd [1982] RPC 343). In other words I need to consider whether a person skilled in the art of synthetic playing surfaces, having become aware of the disadvantages of known synthetic playing surfaces as described in the instant specification, would at once have it occur to them to provide a synthetic playing surface in accordance with the combination of essential integers defined by claim 1 of the instant petty patent (Allsop Inc & Another v Bintang Ltd & Ors, [1989] AIPC 90-615 at page 39,332). I have already concluded that the notifier has not established that the essential integer of the fibre random multidirectional orientation was present in the playing surfaces listed in the original Skase declaration before the priority date of the instant claims. In the absence of any evidence that the provision of this feature would follow as a natural consequence of the realisation of the disadvantages of the prior art as discussed in the instant specification I find that claim 1 and its dependent claims involve an inventive step over the prior art.
SUMMARY
I find that the firm of Davies Collison Cave has not succeeded in proving any of the grounds raised in the section 28 notice and consequently I find there is no impediment to the term of petty patent No. 614483 being extended. Accordingly, I grant an extension of term of petty patent No. 614483.
COSTS
Having found that the firm of Davies Collison Cave has not succeeded in proving any of the grounds in respect of the section 28 notice, I cannot see any reason why costs should not follow the event and I therefore award costs against the partners, jointly and severally, of Davies Collison Cave.
J.M.Sellars
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Shelston Waters, Sydney.
Patent attorneys (as notifier) : Davies Collison Cave, Melbourne.
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