Leonardis v Sartas No 1 Pty Ltd

[1996] FCA 449

CATCHWORDS

PATENTS - FAIR BASIS on two provisional specifications - reference to drawings in a provisional specification - relationship of parts shown by drawings - need for assistance as to drawings from expert evidence - principle that drawing alone may sufficiently disclose an invention - effect of imprecise word such as "substantially" in a specification - meaning of "matter" in reg. 3.12 in the phrase "fairly based on matter disclosed in" a provisional specification - meaning of "fair basis" - whether an integer of a claim must be "plainly foreshadowed" in the provisional specification - test of "real and reasonably clear disclosure" - whether fair basis requires the taking of every aspect of the invention disclosed in the provisional specification - whether more than one invention may be disclosed in a provisional specification - implications of Mond Nickel tests.

OBVIOUSNESS - commercial success - hindsight - scintilla of inventiveness - requirement that the subject matter be beyond the skill of the calling - the importance of identifying the nature of the particular calling and the extent of the skill involved in that particular field rather than some unreal field peopled by a technological elite - perception of the nature of the problem and of the nature of the benefit to be attained as inventiveness.

INFRINGEMENT - whether the substantial idea of the invention was taken - alleged infringement working on different principle.

CONSTRUCTION OF PATENT - meaning of "medially positioned" - "substantially" - effect of drawings.

Patents Act 1990, ss. 38, 40 and 43
Patents Regulations 1991, reg. 3.12

Populin v H B Nominees Pty Ltd (1982) 41 ALR 471
Imperial Chemical Industries Limited (Clark's) Application
[1969] RPC 574
Vax Appliances Limited v Hoover plc [1991] FSR 307
Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59
Martin v Scribal Proprietary Limited (1954) 92 CLR 17
The King v Arkwright [1785] 1 WPC 64
Bloxam v Elsee [1825] Hayward's PC 558; 171 ER 1,316
Société des Usines Chimiques Rhône-Poulenc v Commissioner of
  Patents (1958) 100 CLR 5
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
Elconnex Pty Limited v Gerard Industries Pty Limited (1991)
32 FCR 491
C. Van Der Lely N.V. v Bamfords Limited [1963] RPC 61
The General Tire & Rubber Company v The Firestone Tyre and
  Rubber Company Limited [1972] RPC 457
Stauffer Chemical Company's Application [1977] RPC 33
F. Hoffman-La Roche & Co. Aktiengesellschaft v Commissioner of
  Patents (1971) 123 CLR 529
Coopers Animal Health Australia Ltd v Western Stock
  Distributors Pty Ltd (1987) 15 FCR 382
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1
Rehm Pty Ltd v Webster's Security Systems (International) Pty
  Ltd (1988) 81 ALR 79
Olin Corporation v Super Cartridge Co Pty Ltd (1977)
180 CLR 236
Re Mond Nickel Co Ltd's Application [1956] RPC 189
Allsop Inc v Bintang Ltd (1989) 15 IPR 686
Graham v John Deere Co of Kansas City (1966) 383 US 1
The Wellcome Foundation Limited v V.R. Laboratories (Aust.)
  Proprietary Limited (1981) 148 CLR 262
Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd
(1961) 180 CLR 98
Radiation Limited v Galliers & Klaerr Proprietary Limited (1938) 60 CLR 36
Minnesota Mining and Manufacturing Company v Beiersdorf
  (Australia) Limited (1980) 144 CLR 253
Shave v H.V. McKay Massey Harris Proprietary Limited (1935)
52 CLR 701
Martin Engineering Co v Trison Holdings Pty Ltd (1989)
14 IPR 330
Electrical and Musical Industries Ltd v Lissen Ltd (1938)
56 RPC 23
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990)
91 ALR 513
Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty
  Ltd (1991) 22 IPR 79

NICOLA LEONARDIS v SARTAS NO. 1 PTY LIMITED; OLYMPIC GENERAL PRODUCTS PTY LIMITED (TRADING AS RMAX) Amicus Curiae
NG 4 of 1995

Burchett, Hill and Tamberlin JJ.
Sydney
13 June 1996

IN THE FEDERAL COURT OF AUSTRALIA ) 
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 4 of 1995
  )
GENERAL DIVISION                 )

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:NICOLA LEONARDIS

Appellant

AND:SARTAS NO 1 PTY LIMITED

Respondent

OLYMPIC GENERAL PRODUCTS PTY LIMITED (TRADING AS RMAX)

Amicus Curiae

CORAM:    Burchett, Hill and Tamberlin JJ.
PLACE:    Sydney
DATE:     13 June 1996

ORDERS OF THE COURT

THE COURT ORDERS THAT the Appellant bring in, on a date to be fixed, short minutes of orders appropriate to reflect the decisions arrived at by the Court.

NOTE:     Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA ) 
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 4 of 1995
  )
GENERAL DIVISION                 )

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:NICOLA LEONARDIS

Appellant

AND:SARTAS NO 1 PTY LIMITED

Respondent

OLYMPIC GENERAL PRODUCTS PTY LIMITED (TRADING AS RMAX)

Amicus Curiae

CORAM:    Burchett, Hill and Tamberlin JJ.
PLACE:    Sydney
DATE:     13 June 1996

REASONS FOR JUDGMENT

THE COURT:

This is an appeal in a patent case raising, amongst other things, questions of fair basing on two provisional specifications, obviousness, and infringement.  At the commencement of the hearing of the appeal, the solicitor for the respondent announced that his client opposed "the substance of the appeal", but did not wish to be heard upon the argument of it.  Senior counsel for the appellant, that being so, stated that his client, if successful on the appeal, would not seek an order against the respondent for costs to be incurred after the first day of the hearing.  However, the appellant was not left without a contradictor, for an application to intervene, or to be heard as amicus curiae, was

made by a company Olympic General Products Pty Limited, which was given leave to present submissions as amicus curiae on issues going to the question of invalidity of the patent, the company having undertaken to accept any order that the Court might think fit to make concerning the costs of the motion for leave that it had brought or of the hearing of the appeal.

There were two provisional specifications, upon which the appellant rests a claim to priority in respect of the patent issued on the complete specification thereafter lodged.  The first provisional specification, headed "PATENT SPECIFICATION FOR THE INVENTION ENTITLED: `IMPROVEMENTS RELATING TO FOUNDATION FORM WORK'", was lodged on 23 October 1986.  The document stated that the "invention relates to foundation form work", and continued:

"It is known to provide a foundation wherein the foundation is first boxed by providing perimeter boards and then within the defined area, a plurality of spaced apart box elements around and over which concrete is then poured to provide the foundation.

Such box elements are comprised in preference of cardboard and they are intended to be spaced so as to leave, between respective edges, a channel space providing for a beam part providing for strengthening and stiffening of a total slab shape thus formed.

In accord with standard techniques, such box elements are constructed of cardboard.

In preference, the perimeter boards and the box elements are positioned on a flat area of ground and are used to support uppermost mesh across a total area.

An object of this invention is to provide an improvement both to a method of setting up the form
work for this type of foundation and an improvement in a foundation thus laid.

Perhaps according to one form of this invention, although this need not necessarily be the only or indeed broadest form of this, there is proposed a method of preparing form work for the pouring of a foundation which comprises the steps of locating within a boxed area and over a substantially level area of ground, a plurality of spaced apart box elements, there being located relative to at least a majority of the corners of such box elements, a spacing member adapted to hold respective corners of adjacent box elements at at least a selected distance apart.

In preference, each of the box elements is of rectilinear shape and each of the channels separating respective sides of the box elements are intended to be of common depth and common width.

Because of the essential lightness of box elements made from cardboard, it is discovered that these can be most easily displaced and subsequent to pouring it is either very difficult or almost impossible to establish that a selected thickness at a particular location of a beam part will have been formed.

In preference, the spacer is constituted by being of cruciform shape each of the concave corners being adapted to locate around a respective corner edge of a box element so that four meeting together at a corner location will be spaced apart appropriately by such a spacer element.

. . .

In order to achieve minimum cost in terms of both manufacturing costs and minimal interference with the total strength of any cement or concrete cast, a spacer of preferred shape and type includes two galvanised iron sheet parts, one of these having upturned sides to provide a channel shape, and the other being of similar length to the first, has upturned edges at both a front end and at a rear end with a part between respective upturned ends being cut to allow for the first said member to be fitted therein."

It will be observed that the first provisional specification begins by acknowledging the prior existence of a method of construction of a foundation, involving the use of cardboard boxes laid so as to create channels for the pouring of concrete.  In fact, the evidence shows, this method is now widely used in Adelaide, where clay soils, and large seasonal variations in the moisture content of the soils, cause special problems for the construction of homes, particularly in respect of their foundations.  The successive effects of the expansion of saturated and the contraction of dried out clay, with normal foundations, produce severe cracking.  An idea has been developed of providing a slab on the surface of the ground, in preference to digging foundation trenches, so that the building may rest securely on the slab.  Obviously, in this system, the slab must be strong enough to resist the forces imparted to it by the movements of the clay beneath.  A strong slab is produced by forming its underside in a "waffle" grid pattern, the grid consisting of reinforced concrete beams.  As the slab is poured integrally with the beams, it is plain that the form work separating the beams will be buried beneath the slab, and so irrecoverable.  It must therefore be made of a cheap material.  Cardboard box elements, strengthened by a honeycomb type of fabrication, are suitably cheap, and are strong enough to bear the weight of workmen and materials.  But they are light, needing to be kept in position in some manner so that the beams, which will be hidden from view after the pouring of the concrete, will not be distorted during that operation.  The invention in suit is concerned with this problem of preventing any movement of the box elements.  It achieves that by fixing them at the intersections of the channels into which the concrete is to be poured to form the grid pattern of beams under the slab.

After a general description of the invention, which we have largely extracted, the first provisional specification continues:

"For a better understanding of this invention it will now be described with the assistance of drawings ... ."

There follows a description of several types of "spacer" the shape of which, it is said, "can be more easily discerned by reference to the first embodiment of the spacer as shown in FIGS. 3 and 4".  Two further embodiments are also illustrated by figures.  Each of these embodiments is intended to be constructed of sheet metal, but the document makes it clear that other materials could also be used.  What the figures illustrate is an arrangement, with some variation of the details, where a piece of U-shaped channel, resembling a short piece of guttering, the width of the beam to be cast, is laid on the ground so that its upturned edges will be in contact flatly against parts of the box elements, being the form work for one of the beams at an intersection of the grid pattern to be cast, so as to define the space in which the concrete is to flow, while a second piece of U-shaped channel, fixed to the first in such a manner as to exhibit a cruciform shape, performs the same function in the space for the intersecting beam.  In the result, the four boxes taking up the corners of the intersection are firmly held in position by the fit of the cruciform device against them, while the concrete to be poured can flow freely along at least one of the channels.  Provided the sides of the U-shapes were cut out in the centre of the cruciform device, there would be, with this arrangement, no obstruction whatever to the flow of concrete during the pouring of the beams and of the slab above them.  Two of the embodiments are designed in that way.  The pouring of the concrete into channels so intersecting might be thought, in the words of the document, to "achieve ... minimal interference with the total strength of any cement or concrete cast".  A glance at the smooth and unobstructed intersecting channels preserved by the third embodiment shown in the first provisional specification makes this point clear.  What the invention, so conceived, appears to achieve is a simple form of spacer that would grip rigidly the boxes at the four corners of an intersection of the beams to be poured, while allowing the concrete to flow without obstruction, because the flat sheet metal would be underneath the concrete while its upturned edges would be against the lower portions of the sides of the beams.  In other words, the first provisional specification offers a solution to the problem of fixing the box elements in position, at the same time avoiding obstruction of the pouring of the concrete.

A skilled tradesman in this area would appreciate these points at a glance, if shown the first provisional specification.  For the evidence reveals that the beams would contain reinforcing, and a concreter called on behalf of the respondent, Mr Agelis, having pointed out that "you have got to have concrete right around all your reinforcement", said the concrete normally used

"has to be mechanically vibrated thoroughly.  When I say thoroughly, you've got 20 ml [sic - presumably, 20 mms was meant] aggregate, all right, which can block different little channels and create air pockets, as far as I'm concerned, and once you've got air pockets there you're actually creating a fear of rust in the actual reinforcements, so yes, I think flow of concrete around the reinforcement is most essential, and good vibrating."

The second provisional specification was lodged on 16 January 1987 under the same title.  The arguments that have been raised on the question of fair basing make it essential to set out much of its language in detail.  However, one point may be made at the outset.  The figures representing a spacer, in the case of this provisional specification, are quite apparently designed upon an opposite principle.  Instead of having a crossing of two U-shapes, sitting on the ground so as to form, as it were, two channel linings at an intersection of two channels, this spacer involves the disclosure of a somewhat more elaborate crossing of two U-shapes, sitting the other way up, so that concrete in the intersecting channels, if it is not to be obstructed, must flow at least partly beneath the device.  The questions upon which the issue of fair basing has to be determined in this case depend on the extent of that disclosure, and on the sufficiency of it for the purposes of the provisions of the Patents Act 1990.

The second provisional specification commences by referring to the previous one, where, it says,

"there was described a method of preparing form work for the pouring of a foundation which comprised the steps of locating within a boxed area and over substantially level area of ground, a plurality of spaced apart box elements, there being located relative to at least a majority of the corners of such box elements a spacing member adapted to hold respective corners of adjacent box elements at least a selected distance apart."

After stating that "the arrangement described at that time" had an advantage of economy, the second provisional specification continued:

"Some improvements have been discovered and this invention is in respect of such further improvements.

A box element manufactured from carboard [sic] is of value in so far that it is an economic unit and this is usually economic because it is manufactured to a standard size.

In some instances, however, the depth of the form work has to be increased for engineering reasons and in the present situation, this is not generally allowed for in that box elements manufactured or carboard [sic] would then normally have to be individually manufactured and this would lose a lot of the economic advantage presently achieved.

According to this further invention then I propose that there can be in respect of each of a box element two separable parts each of substantially the same peripheral shape and size and located one upon the other so as to provide in a sense two box elements one upon the other providing thereby form work of twice the height.

The difficulty arises with such an arrangement, however, in the normal sense in that when concrete is being poured, it becomes very difficult where there is simply one carboard [sic] box upon the other, that these are useful to retain the concrete in position.

Accordingly I propose an arrangement in which there are securing means locating respective corners of box elements where these are located in the manner described."

The document proceeds to outline a fairly elaborate means of holding boxes together, on top of each other, at the corners, utilizing a kind of moulding, plate and pin.  The moulding is to "have a shape such as to coerce [the] corners [of the boxes] of relatively fragile materials, such as [cardboard], so that they will even in adverse conditions stay in place and retain an accurate alignment".  This arrangement can be seen in three of the four figures which accompany the second provisional specification; and particularly in figure three, it can be seen as it would appear in use together with the altered form of spacer.  Copies of all four of the figures are appended to these reasons.

The second provisional specification, after the portion we have summarized, continues:

"In preference, additional holding of the box elements by way of their corners will assist and to this extent, there is provided a concave corner portion adapted to provide a coving fitting around the conventionally shaped corner of the box element in any particular case.

Where there are four such box elements meeting at a common location, there can accordingly be four such coving like parts held together by a common moulding.  [This seems clearly to be a reference to the redesigned spacing unit.]

In a further preferred arrangement, such a moulding can provide for appropriate support for reinforcement rods and therefore not only provide support but positive location both of the reinforcement rods and in relation to these, the corners of box elements.

For a better understanding of this invention it will now be referred to with reference to a preferred embodiment in which:

FIG. 1 is a perspective view of an arrangement using location means according to the embodiment with one of the box elements partly cut away and showing an uppermost mesh also partly cut away to assist in a full exposure of the arrangement,

FIG. 2 is a part adapted to assist in location of the one box element with respect to another,

FIG. 3 is an enlargement of the view of Fig. 1 with greater detail, and

FIG. 4 is a full perspective view of a location member according to the embodiment.

Referring in detail to the drawings, there are a plurality of box elements 1 where one of the box elements in each case 2 is located above a base element 3 so that these are at twice the height.

Each of the so called box elements comprise a peripheral skin of carboard [sic] and such internal reinforcement as is necessary to provide for lost form work for the pouring of concrete foundations for buildings.

The arrangement further provides for uppermost support of floor mesh 4 by a number of support pads 5.

In order to hold each of the respective box elements 1 in their relative positions, there are firstly located spikes 6 which pass from an intermediate plate 8 into both an uppermost and a lowermost face of the respective box elements 1 and into the underneath ground at 9.

The spike 6 passes fully through the respective faces of the box elements within the corner so that the box elements are retained positively with respect to the spike.

In respect of location of the box elements 1, there is a plastic moulding 9 which includes appropriate central reinforcing parts such as at 11 and 12 this supporting, however, corner coving at 13,14,15 and 16.

Each of these includes a right angle inner holding shape such that these will bear against and accurately hold the corner of the respective box elements 1.

Within a centre of the unit 9 is a castellated structure 17 in which the slots at 18 provide for location of respective reinforcing elements such as at 19 and 20 and at a displaced position such as at 21, there are additional upwardly open slots 22 and 23 by which the reinforcing elements are further located and supported especially if these are terminated at the corner.

While not shown in the drawings, such a location unit can also include only three branches so that it will essentially provide for location of two box elements providing thereby a so called tee junction.

In this case, external form work can provide the top of the tee shape and can be separately located and help providing the outer periphery of a total form work support.

In use, box elements as described are located within a surrounding form work, the central cruciform device is located as shown and all the box elements are then positively located and locked into position by the driving of stakes through respective corners through the apertures of corner cowlings.

Reinforcement is then laid as appropriate and of course two or more spacing cruciform devices can be positioned one upon the other for supporting further reinforcing elements.

The concrete is then poured as appropriate and all of the spacing units are left in position to be integrated in the final cast foundation.

In a further embodiment, the location element is simply a flat plate in which there are four apertures one at each corner of a square shape and these are located so that they will provide a location of a stake which will pass through the appropriate box element.

The invention can reside therefore in the method of locating box elements comprising the steps of locating through a respective corner of a box element into a guide plate through a guide aperture into the ground beneath the assembly.

In a further embodiment, the location is by reason of members which protrude behind the front of the respective corners of the box elements so that they are essentially hidden from view but provide nonetheless adequate location and positively hold the corner against pressure of concrete as it is being poured into the trench thus formed.

These and other variations are all understood to be included within the broader concept of this invention."

There was a third provisional specification lodged, but counsel for the appellant conceded that they could place no reliance on this provisional specification because, by its date, the invention was no longer novel, having been published by the inventor himself.  What the appellant contends is that certain claims in the complete specification are fairly based on the first and second provisional specifications, read together.  The claims on which this contention must turn are claims seven and twelve, which read as follows:

1. A building foundation form work arrangement as in any one of the preceding claims further characterised in that the spacer includes outermost planar surfaces engaging against the sides of respective adjacent boxes, and frame members holding such outermost engaging surfaces which frame members have a lowermost edge which is substantially above the supporting level surface.

. . .

12.A spacer for a building foundation form work arrangement wherein a plurality of boxes are located in spaced apart relationship to define therebetween channels, the spacer including outermost engaging surfaces adapted to engage against both sides adjoining a corner of a first box, and at the same time against both corners [note: this should read "sides"] adjoining a corner of at least a second box adjacent the first box, the spacer being characterised in that each of the outer most [sic] engaging surfaces is held by a frame member extending between at least one other of the outermost engaging surfaces each of the frame members having a lowermost surface which is substantially above a lowermost edge of each of the engaging surfaces such that concrete can extend continuously beneath each of said frame members."

Some preliminary points should be made about these claims.  The word "corners" in claim twelve is an obvious falsa demonstratio, which should read "sides".  An appropriate order was made by the trial Judge on 19 December 1994 amending the patent accordingly.  Hence the note inserted in the claim as set out above.

Another matter to which reference should be made at the outset  is the use of the word "substantially" in claims seven and twelve.  In claim twelve, the added words "such that concrete can extend continuously beneath each of said frame members" make it clear, in functional terms, how large the gap must be to meet the requirement conveyed by this word.  It is not inadmissible to use in a claim an imprecise word, in an appropriate context, where it conveys the necessary meaning: cf. Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 at 473 ("relatively small"); Imperial Chemical Industries Limited (Clark's) Application [1969] RPC 574 at 583, 584 ("a minor amount of water ... small in comparison with the total amount of other liquid constituents"); Vax Appliances Limited v Hoover plc [1991] FSR 307 at 309, 318 ("substantially dropwise" flow); Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 ("substantial effect"). The purpose of the integer conveyed by the words "substantially above" being plain, the dictum of Taylor J. in Martin v Scribal Proprietary Limited (1954) 92 CLR 17 at 97 applies: "[I]t is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat".

The difficulty which proved fatal for the appellant, in the view of the learned trial judge, was the absence of language in the two provisional specifications corresponding with such expressions in the complete specification as that appearing at the end of claim twelve, revealing a raising of the frame members of the spacer so that concrete can flow beneath them.  The first question involved in the appeal is whether this facet of the invention as claimed finds a fair basis in the first and second provisional specifications.  One aspect of that problem is whether fair basis may be found in the drawings forming part of a provisional specification although the words, if taken alone, would not provide it.  For here there are general references to the "pouring" of concrete and to an aim (conveyed by the expression "[i]n order to achieve") of "minimal interference with the total strength of any cement or concrete cast", but there is no specific statement of the purpose dictating the raising of frame members, or of the fact that this permits concrete, when poured, to flow beneath them.  There is a statement, in the second provisional specification, from which these things might be inferred by the attentive reader: "The concrete is then poured as appropriate and all of the spacing units are left in position to be integrated in the final cast foundation."  Integration in the foundation could only actually be achieved if concrete did flow beneath the raised members.  Of course, the flat surfaces bearing against the cardboard form work would, like the form work itself, remain outside the body of concrete, but this is so obvious that no reader could be mistaken about it; the reference to the integration of the spacing unit in the final cast foundation must be taken as a reference to the frame of the unit to which those surfaces are attached, one embodiment of which includes also means for holding reinforcing rods.

But the second provisional specification does expressly take its reader to the drawings in the passage commencing:

"For a better understanding of this invention it [i.e. the invention itself, not just the preferred embodiment to which reference is then made] will now be referred to with reference to a preferred embodiment in which ... ".

By this language, which is similar to language used in the first provisional specification, the drawings are introduced, and they are made central to an understanding of the invention.  The words themselves of the document do also make it plain that the drawings introduce new and significant ideas, not presented in the first provisional specification.  There is a statement at the beginning of the second provisional specification that it is concerned with "further improvements".  One improvement, admittedly given prominence in the verbal description, is the capacity to double the boxes where deeper form work might be required.  Another, which is equally new to the second provisional specification, is the "castellated structure" for location of reinforcing elements.  That, in general, reliance is placed on the drawings to reveal the details of the invention is implicitly emphasized, too, by the words "[w]hile not shown in the drawings", by which one verbal qualification is introduced. 

When one turns to the drawings, a clear contrast is apparent between the earlier drawings that accompanied the first provisional specification and the drawings accompanying the second.  As has been said, the basic shape of the spacers which they illustrate is completely reversed.  But, as well, the new set of drawings reveals a much more sophisticated development of the idea, including the provision for reinforcing rods.  While the drawings are not to scale, all the proportions indicated by them suggest the feature of a substantial raising of the frame of the spacer, sufficient to allow material, such as concrete, to pass beneath it.  In figure 3, for example, the lowest portion of the framing members appears to be some two thirds of the way up the height of the spacer.  The height of the gap beneath the framing members is represented as much greater than the diameter of the reinforcing rod or of a metal pin shown as part of the device to secure the location of a superimposed box.  As Aldous J. said in Vax Appliances Limited v Hoover plc (supra) at 313, "patent drawings are not designed to be used to denote precise measurements unless so stated.  They are there to illustrate the concept and the overall relationship of the parts."  But what is telling here is the overall relationship of the parts of the spacer.

Counsel for the amicus curiae said he "would concede that if there had been a line in this text saying by reference to the drawing that that frame member has to be put at a height which will achieve a result, a continuous flow underneath, then one has the additional material which discloses that there is a result to be achieved by construction ... ".  There is, of course, the reference to integration of the spacing unit, but the Court is not left to ponder the meaning of the drawings unaided.  Expert evidence was available in this case, and a professional engineer, a Mr John, called on behalf of the respondent, was cross-examined concerning these particular drawings.  His attention was directed to the framing element, shown as elevated in the way already described, in figure 3.  He acknowledged that he could see "that that is up above the ground and indeed the bottom of the engaging surface", and that he could "see the same thing again perhaps better still in figure 4".  The transcript next records the following questions and answers:

"When you see those drawings you can see, can you not, that concrete is intended to flow underneath those for the purpose we have just discussed?---Yes.

Namely, so that there will be as much as possible continuity of the concrete?---Well, I mean, it is not as much as possible.  You could physically create something which gave it more but it is sufficient for practical purposes.

But you can see that at least part of the purpose of elevating the little horizontal bridge across - I am trying to use the term neutrally - is to allow concrete to flow underneath?---Yes."

The reference in the first of these three questions to "the purpose we have just discussed" is a reference to evidence in which the witness had responded, to the suggestion that a particular hypothetical spacer "permits concrete to flow underneath it so that concrete beds are continuous" and that "any engineer or indeed footings contractor would know the importance of achieving as much continuous flow as possible, would have known that in October 1986", by replying: "Yes, that's the desirable situation".

Not only did this evidence come from the respondent's own engineer; in its nature, it is plainly acceptable.  The space under the spacing unit, as shown in the drawing, is so significant, by comparison with the height of the box, that if it were not intended to have the concrete flow through that space, the beam would appear to be grossly over specified generally, and the reinforcing would appear to have a comparatively thin skin of concrete protecting it at that point.

Counsel for the appellant pointed out that there is no reason why a drawing alone should not be capable of providing a fair basis for a patentee's claim.  Webster states in a
footnote to The King v Arkwright [1785] 1 WPC 64 at 75 (which concerned an invention of national importance by the great pioneer of mechanized cotton spinning):

"It is now perfectly settled that a drawing alone may be a sufficient specification."

And in Bloxam v Elsee [1825] Hayward's PC 558; 171 ER 1,316 at 563; 1,318, it was stated that "from the drawings ... skilful mechanics could make the machine", although the relevant specification contained French expressions which "would not be understood by English mechanics" (this was only ten years after the Battle of Waterloo). Abbott C.J. said (at 564-565; 1,319):

"An inventor of a machine is not tied down to make such a specification, as, by words only, would enable a skilful mechanic to make the machine, but he is allowed to call in aid the drawings which he annexes to the specification; and if, by a comparison of the words and the drawings, the one will explain the other sufficiently to enable a skilful mechanic to perform the work, such a specification is sufficient."

More recently, in Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 at 11, Fullagar J., who held that "disclosure without claim is enough" for the purpose of a finding that an earlier specification provided fair basis for a later claim, also held:

"An invention may be disclosed by a drawing."

He added, in a sentence which has since been frequently applied as stating the law:

"There must, of course, be a real and reasonably clear disclosure."

This case was cited in the joint judgment of the Full Court (Spender, Gummow and Heerey JJ.) in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 280, where their Honours said:

"[I]t is well established that a claim may be fairly based on matter in the specification which is not verbal description but accompanying drawings; these of course, are to be read by the skilled addressee ... ."

See also Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 at 505-506 (a passage referred to with apparent approval in CCOM at 281), where the reasoning accepted that a matter not stated "in words in the provisional specification" may nevertheless be derived "from the drawings", and see Terrell On the Law of Patents 14th ed. (1994) para. 5.64.

Having regard to these authorities, it would not be right to hold that a drawing alone could not provide fair basis for a particular integer of a claim.  It is a matter of interpretation of the drawing.  In principle, the problem for the Court is not different from the problem arising when words are examined in order to determine whether they provide fair basis for a particular integer of a claim.  But, just as
technical words or scientific concepts may require the assistance of experts to enlighten the understanding of the Court so as to put it in a position to determine such a question, so, in the case of the interpretation of a drawing, the Court may need assistance.  There is no rigid rule, since whether guidance is required must always depend upon the particular issue and the particular drawing.  But where a close analysis of drawings, or indeed of descriptions, in patent documents is called for, the Court may need the assistance of those with the appropriate technical expertise: C. Van Der Lely N.V. v Bamfords Limited [1963] RPC 61 at 71 (photographs); Vax Appliances Limited v Hoover plc (supra) at 310 (video films); Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 542 (drawings and descriptions); Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Ltd (1991) 22 IPR 79 at 89 (drawings); CCOM (supra) at 284; The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 485. In the present case, the Court does have the evidence of the engineer indicating what the relevant drawings made apparent to him. There is no suggestion that his evidence was rejected; indeed, on some other issues it was expressly adopted. The Court can read this material having regard to what is said in Blanco White, Patents for Inventions (5th ed., 1983) sec. 2-101 at p.9:

"As with any other document, questions of construction of a patent specification, arising in legal proceedings, are for the court to decide as a matter of law; for this purpose the court must first instruct itself as to the technical matters involved, so as to place itself in the position of one acquainted with the art concerned - in the position, that is, of a person to whom the specification is addressed.  The document must in particular be read with the skilled addressee's understanding of what the inventor is trying to achieve and his appreciation of what is important, what not."

The learned trial Judge accepted that the two provisional applications "may be taken together" for the purpose of examining the fair basis of the claims.  Having regard to the language of the second provisional specification linking it to the earlier one, this view seems, with respect, to be unquestionably correct.  Cf. Yamazaki Mazak Corporation (supra), where three Japanese specifications were considered together on a problem of fair basis; Imperial Chemical Industries Ltd (supra) at 584; and see the terms of reg. 3.12(1)(b) of the Patents Regulations 1991 (infra).  But his Honour pointed out the fact that there is, in the complete specification,

"emphasis upon the need to ensure that the concrete for the foundation extends to form an integral portion of concrete below the main body of any spacer; it is said that this may be achieved by providing that each spacer has frame members which have a lowermost edge substantially above a lowermost edge of each outermost engaging surface of the boxes and, as such, above any supporting ground level surface".

He said: "There is no disclosure of this nature in the body of the first or second provisional specifications".  He also said: "There is nothing to suggest any significance, of a purposive nature, in the relative locations of the integers in figure 4 upon which Mr Leonardis relies."  Then, in the key passage founding the decision, his Honour concluded:

"In the second specification, what is said is that the concrete is poured `as appropriate and all of the spacing units are left in position to be integrated in the final cast foundation' ... .  It may be that there is some disclosure in figure 4, and perhaps figures 1 and 3 to the second provisional specification.  But what is required is `a real and reasonably clear disclosure' so that it can be said that claims 7 and 12 were `plainly foreshadowed'.  In my view, that cannot be said of the disclosure in the second specification, in particular in the figures as introduced by the text."

With respect, to take this view of the matter is to leave out of account altogether the evidence that the eye of the skilled man would see in the drawings a disclosure of the relevant integer.  The question is not whether the drawings have the appearance of a revelation to a layman or to the Court, but what is their effect when viewed by the skilled person to whom they are addressed.  It is also to leave out of account the impact of the complete reversal of the basic U-shape of each arm of the cruciform device, which must direct attention, as soon as the drawings are looked at, to the fact that a new principle is replacing the earlier principle of a spacer that did not obstruct the flow of concrete, but remained outside and largely underneath the beam as a lining to its form work.  Attention is indeed also expressly directed to this change of principle by the text where it refers to the
integration of the spacer in the beam, an integration that must involve the flowing of concrete under it.

While the issue of fair basing in this appeal really turns on the considerations that have just been mentioned, it is desirable to make some brief review of the relevant law. By s. 43(2)(b) of the Patents Act 1990, regulations are authorized which determine the priority date of a claim of a specification. In the present case, reliance is placed by the appellant on reg. 3.12(1)(b) of the Patents Regulations 1991 as determining that "if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed" is the priority date of a claim, the relevant provisional applications being associated with the complete application related to the claim, as required by reg. 3.12(2)(a) and s. 38 of the Act so as to make the provisional applications priority documents. So far there is no dispute. It follows that what the appellant had to show was that the claims in question are "fairly based on matter disclosed in" one or both of the relevant provisional specifications. Provisional specifications, by s. 40 of the Act, are required to "describe the invention", whereas a complete specification must, by the same section, "describe the invention fully, including the best method known to the applicant of performing the invention", and must end, in the case of a standard patent, "with a claim or claims defining the invention". By s. 40(3):

"The claim or claims must be clear and succinct and fairly based on the matter described in the specification."

The expression "the claim is fairly based on matter disclosed in 1 or more priority documents", in reg. 3.12(1)(b), corresponds with the expression used in reg. 3.12(1)(c), concerned with divisional applications, "the claim is fairly based on matter disclosed in the specification".  Both provisions are to be contrasted with s. 40(3) of the Act, referring to "the matter described in the specification".  Whatever the precise effect of the definite article in s. 40(3), in the regulation, its absence plainly suggests that the fair basis in question need not relate to all the matters disclosed in the respective documents referred to in paras. (b) and (c).  Paragraph (b), as is made clear by sub-reg. (2)(a), relates to s. 38 of the Act, subs. (1) of which provides:

"If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period."

This indicates that the provisional application may provide fair basis for several complete applications, and the absence of a definite article which might require one claim to be fairly based on all the matter disclosed in a provisional application seems deliberate and appropriate.  That the draftsman's choice of words was deliberate is also suggested by the final words of reg. 3.12(1)(b), in which the expression
"the matter" is used to refer to the particular matter that provides the fair basis.  Just as the nature of a provisional application, having regard to s. 38, may explain the reference to "matter" in para. (b), so the nature of a divisional application may explain the use of the same word, again without any article, in para. (c).

In interpreting the expression "fair basis", one should not understand the word "fair" as connoting any idea of equity.  "What is required to be fair is not the applicant's claim to priority but the basis which one document affords for a claim in the other": Stauffer Chemical Company's Application [1977] RPC 33 at 52, per Buckley L.J. Later in his judgment, Buckley L.J. said (at 54):

"If a new feature were a development along the same line of thought which constitutes or underlies the invention described in the earlier document, it might be that that development could properly be regarded as fairly based on the matter disclosed in the earlier document, and that the new process described in the later document which incorporates that development could as a whole be regarded as fairly based upon the matter disclosed in the earlier document.  If, on the other hand, the additional feature involves a new inventive step or brings something new into the combination which represents a departure from the idea of the invention described in the earlier document, it could not, I think, be properly described as fairly based upon the earlier document."

Roskill L.J. (as Lord Roskill then was), who said (at 63) that he agreed "entirely" with the reasons of Buckley L.J., also said (at 61):

"Of course, in construing the two documents, the court is entitled to take into account those matters which are always admissible for the purpose of construing documents, including the surrounding circumstances which in the present context would undoubtedly include consideration of the prior art and what was common knowledge amongst those engaged in that art.  The court is also entitled, if it requires it, to expert assistance in interpreting technical matters and the like which may be referred to in those two documents."

Lord Roskill continued:

"We were referred by both learned counsel to a number of authorities on `fairly based', all decisions at first instance but, having regard to the experience of the judges respectively concerned, of high persuasive authority.  None the less, what matters is whether the particular claim before the court is fairly based on the particular priority document.  I respectfully question the use of paraphrases, synonyms and the like where Parliament has used a single and simple phrase in a statute with which alone the court is concerned.  One does not answer the question whether a claim is fairly based by substituting another phrase such as `plainly foreshadowed'.  I respectfully agree with the comment made by Gibbs, J. in the High Court of Australia in Hoffmann-La Roche [sic] v. The Commissioner of Patents [1973] R.P.C. 34 at 42, that other phrases are no substitute for the statutory test though they may well and often do point to factors to be considered in the application of that test."

See also Vax Appliances Limited v Hoover plc (supra) at 311.

The remark made in the judgment of Gibbs J. in F. Hoffman-La Roche & Co. Aktiengesellschaft v Commissioner of Patents is reported in (1971) 123 CLR 529 at 539. The passage actually commences at 538, as follows:

"The question whether a claim in a complete specification is fairly based on matter disclosed in the provisional specification was considered by the Patents Appeal Tribunal, constituted by Lloyd-Jacob J., in Re Mond Nickel Company Ltd.'s Application [1956] R.P.C. 189, at p. 194 and Imperial Chemical Industries Ltd.'s Application [1960] R.P.C. 223, at p. 228. The test to be applied is expressed in the Act in identical language in relation to provisional specifications and basic applications and what was said in those cases is applicable to the question that arises under ss. 141 and 142 of the Act. Lloyd-Jacob J. did not attempt to define all that is meant by the phrase `fairly based' but he gave a guide to the approach that should be made in deciding a question of this kind. In his opinion it is necessary to investigate three questions which, if one substitutes a reference to the basic application for a reference to the provisional specification, he finally formulated as follows:

(1)Is the alleged invention as claimed broadly (i.e. in a general sense) described in the basic application?

(2)Is there anything in the basic application which is inconsistent with the alleged invention as claimed?

(3)Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?

It is needless to say that these questions are intended to assist the Court in applying the test laid down by the Act itself, viz. whether the claim in the complete specification is fairly based on matter disclosed in the basic application, but are not a substitute for that test.  In Société des Usines Chimiques Rhône-Poulenc v. Commissioner of Patents ... at 11, Fullagar J. held that s. 45(5) of the Act cannot be limited to cases where the subject matter of the later application has been made the subject of a specific claim in the earlier application, and further expressed the view that there must be `a real and reasonably clear disclosure'."

Having regard to the comment made by Roskill L.J. questioning the substitution for the statutory test of the phrase "plainly foreshadowed", it is interesting to note that in Hoffman-La Roche (at 540) the expression used by Gibbs J., who was summarizing the submission of the then Mr K.R. Handley, is "fairly within, or fairly foreshadowed by" the first basic application.

In CCOM v Jiejing (supra, at 275 et seq.), the Full Court provided what, with respect, must be seen as a valuable survey of the law in this area.  The judgment (at 281) refers to the statement of Fox J. in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 at 389:

"Where the holder of the provisional specification proceeds with a complete specification with a view to the grant of a patent, it is recognised that greater definition, as a result of further experimentation or otherwise, may be achieved before the later step is taken and the result expressed therein.  Some generality of expression in the provisional specification is accepted."

In his judgment, Fox J. (with whom Spender J. agreed) went on to refer to the statement of Lloyd-Jacob J. in Imperial Chemical Industries Ltd (supra, at 583) that the function of a provisional specification is "a description of the general nature of the invention, its field of application and the anticipated result", and to the statement in Blanco White, Patents for Inventions (4th ed, 1974) at 44:

"Thus the provisional specification should contain as clear a statement as possible of the principles upon which the success of the invention depends (foreshadowing as far as possible the broader claims) together with discussion of its field of application and some indication of what results the inventor hopes it will achieve."

In the same case (at 399), Beaumont J. adopted expressions (to some of which reference has already been made) appearing in  Hoffman-La Roche when, having noted that judicial tests "are not a substitute for the test laid down by the Act itself", he said:

"It is convenient to proceed, as Gibbs J. did in Hoffman-La Roche (at 539) by stages: (1) Was the claim based on matter disclosed in the provisional?  (2) If so, was it `fairly' so based, in the sense of something `fairly within' or `fairly foreshadowed' by the provisional (see F. Hoffman-La Roche & Co A.G. v. Commissioner of Patents at 540), that is, something appearing on a `fair reading' of that specification (at 541)?"

To return to CCOM v Jiejing, the Court concluded its survey of the law in this area by saying (at 281-282):

"In Rhone-Poulenc (supra) at 11 Fullagar J emphasised that disclosure without claim is enough.  Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, `essential integers' or `essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question: cf Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1986) 6 IPR 545 at 560-561, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification: cf Yamazaki (supra) at 93, 97 [Interact Machine Tools (NSW) Pty Ltd v Yamazaki Mazak Corporation (1993) 27 IPR 83]. Fullagar J also pointed out that the requirement of `fair basing' on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be `a real and reasonably clear disclosure'. This passage was adopted and applied by Gibbs J in Hoffman-La Roche at 537-539, where the claims were for chemical compounds forming part of a very large class disclosed in the basic application."

But, although this passage, rightly it is respectfully suggested, took the statutory expression "fair basing" to refer to what Fullagar J. had called "a real and reasonably clear disclosure", as Gibbs J. did in Hoffman-La Roche, the Court made a comment (at 281) which is perhaps capable of being misunderstood.  It said:

"In Imperial Chemical Industries Ltd (Clark's) Application ... at 584, Lloyd-Jacob J asked whether the claim was `plainly foreshadowed' in the disclosure in the provisional application."

This seems to suggest that Lloyd-Jacob J. had used the quoted expression as a synonym for fair basis, or as a statement of the legal test for fair basis.  What Lloyd-Jacob J. actually  laid down as a matter of principle is stated at p. 583 of his judgment as follows:

"All it [i.e. the provisional specification] needs to contain is a description of the general nature of the invention, its field of application and the anticipated result."

The passage at 584 contains a statement of what in fact was shown by the provisional specification under consideration in that case, and the logic is that it went well beyond what was required.  Referring to certain chemicals the subject of an aspect of the argument, Lloyd-Jacob J. said:

"The production of both types is plainly foreshadowed and the applicants are entitled to monopolise in the complete specification so much of the disclosure in the provisional specification as they are minded to retain."

With great respect, this offers no support to the proposition that the language used by Fullagar J. should be qualified by a requirement of plain foreshadowing.  That would be to erect an ambiguous test (depending whether the emphasis is placed on a mere foreshadowing, or upon its being done plainly) as some kind of gateway to be passed through.  It is better to adhere to the statutory language, as expounded in simple terms by Fullagar J. and accepted in a number of the passages we have already cited. 

Perhaps it should be added that the Court in CCOM v Jiejing probably intended to place the emphasis on the word "foreshadowed", and did not really intend to depart from the earlier statements of the law.  The effect of those statements was put in general terms by Lockhart J. (with whom Wilcox J. agreed) in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 20:

"All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out.  It is a mode of protecting an inventor until the time of filing the final specification.  It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state.  The interval of time between the provisional and the final is intended to provide an opportunity
for the development and precise expression of the invention foreshadowed in the provisional."

This proposition is consistent with the language used by Gummow J. in Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95, where he said that

"the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."

See also the same judgment at 93-94. 

If the matter is tested according to these principles, the only conclusion that can be reached is, to borrow a metaphor employed by Barwick C.J. in Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240, that the claims as expressed do not travel beyond the matter disclosed in the provisional specifications.

Recognizing the cogency of the arguments he had to meet, counsel for the amicus curiae put the main emphasis of his submission in support of the learned trial Judge's conclusion with respect to the issue of fair basing upon a contention which did not form part of his Honour's reasoning.  Counsel urged that

"the second provisional specification discloses a combination of double boxes and pinning, together with a spacer, which is inventive because it solves the problem of deep foundations.  ...  [C]laim 12 is not fairly based on that provisional because it has omitted the double boxes and the pinning [and so] becomes a broader claim."

But this argument seems to involve that there could only ever be one claim embracing every aspect of what is set forth in a provisional specification.  That would be inconsistent with the meaning given, earlier in these reasons, to the word "matter", with the language of s. 38(1) of the Act, and also with many authorities.  It would be inconsistent, too, with the approach of the learned trial Judge, who expressly upheld the fair basing of claims 3 and 5 with reference to the second provisional specification, although neither of them relates to the piling of boxes on each other.  His Honour specifically rejected an argument that a claim, which was "silent as to ... an essential feature" identified in the specification, for that reason lacked fair basis. 

In Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (supra) at 28-29, Fullagar J. said that "a particular specification may quite reasonably be regarded either as disclosing one invention only or as disclosing two or more inventions". It is plain that Fullagar J. thought a claim might be "fairly based on matter disclosed" in a provisional specification within the meaning of s. 45(5) of the Patents Act 1952, although other inventions were also disclosed in the same provisional specification. Beaumont J., in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra) at 400, made the same point when he said:

"[I]t is open to a party to describe more than one invention in a provisional.  Further, the respective functions of the provisional and the complete must be kept steadily in mind: for the purposes of the provisional, it is sufficient to `describe' the invention; by contrast, the complete shall `fully describe' the invention, including its best method of performance and shall end with a single claim `defining' the invention."

He rejected the fair basing of the ingredient DGBE involved in that case, not on the ground that it could not be separately claimed in the complete specification, but on the ground that in the provisional specification its role was "so subsidiary and so incidental to the main thrust and orientation of that specification that one would hesitate to describe it as forming a basis for the later claim", and, at any rate, one could not regard that claim as "fairly" so based.  The very terms of the well known tests stated in Re Mond Nickel Co Ltd's Application [1956] RPC 189 at 194, and particularly the first and second of those tests, imply that a claim need not take all of what is disclosed in the provisional specification. The first test asks "whether the alleged invention as claimed can be said to have been broadly described in the provisional specification", and the second then asks: "Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?" This plainly leaves open that there may be other material disclosed in the provisional specification, but not included in the claim, which, however, will destroy the fair basing of the claim only if it is "inconsistent with the alleged invention as claimed".  Accordingly, the argument raised by counsel for the amicus curiae should be rejected.

It follows from the conclusions reached so far that the Court should hold the first and second provisional specifications to have provided fair basis for the claims in question.

It was then put, pursuant to a notice of contention, that these claims were invalid on the ground of obviousness.  Counsel argued that the use of reinforced waffle slabs, involving the need to ensure continuity of the concrete under the reinforcement rods and the use of devices known as "bar chairs" to hold the reinforcement rods, were part of the common general knowledge of the building trade in Adelaide.  In the construction of waffle slabs, it was known to use Celltex bricks to perform the function of holding in position the cardboard boxes used as forms, and to support the reinforcement bars.  Counsel contended that it was also known that there was a problem with the Celltex bricks, which were cumbersome to use and at the same time were apt to slip and fail to hold the boxes firmly.

The last matter was disputed.  The engineer previously mentioned, Mr John, who was called on behalf of the respondent, gave evidence of his own experience of waffle slabs, denying any problem with the Celltex bricks.  The trial Judge regarded Mr John as an acceptable witness.  However, his Honour also accepted the appellant's evidence that his device prevented any movement during the pouring of the concrete, while not reducing the integrity of the foundation.  There had been, since its introduction, "a general acceptance in the building industry of the advantages of the [device according to the patent]." 

The learned trial Judge, on the basis, in particular, of the evidence of Mr John and of another engineer Mr Appleyard, held certain claims, which are no longer in dispute, to be invalid on the ground of obviousness.  He was careful to add:

"It is important to bear in mind that what is accepted as having been obvious is the claim, broadly drawn, of the Petty Patent, in particular the use of a spacing member adapted to abut adjacent sides of each corner of each box element so as to hold them within a selected location and at a selected minimum distance. 

Likewise, claims 1-6 are concerned with broadly claimed building form work arrangements.  The same is true of the method claims 16 and 17.  It is in relation to these that I hold that there was no inventive step."

The elements of the claims so held bad may be gauged from claims 16 and 17, as follows:

"16.A method of preparing a form work arrangement for the pouring of a foundation for a building which comprises the steps of locating within a boxed area and over a substantially level area of supporting surface, a plurality of boxes each of which are kept apart one from the other to leave channels between the respective sides of the boxes, locating within the respective channel shapes a spacer such that the spacer engages against both sides adjoining a corner of a first box, and at the same time against both sides adjoining a corner of a second box adjacent the first box, and effecting support within the channels, on the spacer, of a reinforcement rod.

17.A method of preparing a form work arrangement as in the last preceding claim further characterised in that each of the boxes are comprised of cardboard, and the spacer is such that it engages against both sides adjoining a corner of each of four boxes with the corners at a common location."

The claims the fair basis of which has been extensively considered in these reasons, and the further claims dependent upon them, cannot be so easily dismissed as obvious.  As has been said, his Honour accepted that devices constructed in accordance with them (not, of course, such simple devices as would have fallen merely within the claims found lacking in inventiveness) have achieved commercial success.  Indeed it is not in dispute that their success has been very considerable.  That success, in itself, suggests that Mr John's view of the effectiveness of Celltex bricks must have been mistaken.  When the patented device came onto the market, other tradesmen recognized the comparative inferiority of the previous method.  Furthermore, counsel for the appellant was able to point to impressive evidence that, even with all the advantages of hindsight, Mr Appleyard had failed to perceive an essential feature of the invention.  This certainly argues powerfully that it was far from obvious.  The feature in question was the very feature the subject of the fair basis argument, the substantial raising of the frame members of the spacer in
order to permit continuity of flow of concrete beneath it.  When his error was pointed out to him, he acknowledged its importance.

In Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 701, the Full Court (Bowen C.J., Beaumont and Burchett JJ.) said in a joint judgment:

"[I]t is clear law that the inventive element needed to sustain a patent may be quite small.  As Aickin J said in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 249; 13 ALR 605 at 622: `It is trite law that a "scintilla of inventiveness" is sufficient and that "no smallness or simplicity will prevent a patent being good" ... .' And the cases abound in warnings against the seductive clarity of hindsight: Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd (1978) 141 CLR 305 at 332; Wellcome Foundation case, [infra], at ... 286.  The two concepts, that the simplicity of an idea does not deny its inventiveness, and that the light of hindsight may be misleading, may have an interaction.  For `there is all too easy and tempting a slope from the recognition of the simplicity of an idea to a conclusion, when someone else has already expressed it clearly, that there was nothing inventive about it': Martin Engineering Co v Trison Holdings Pty Ltd [14 IPR 330 at 351]; and see the Meyers Taylor case, supra, at (CLR) 243."

This passage applies to the present case.  The claims at issue embody a simple but effective solution to a problem that others had not attempted to solve, apparently, having regard to the evidence of Mr Johns, because they had not appreciated the need and what could be gained by a solution of the kind proposed by the patentee.  His perception of the problem, and of the nature of the benefit to be attained, is itself a matter to be taken into account in determining whether the inventive faculty was required. 

In Allsop Inc v Bintang Ltd at 701, the Court drew attention to a footnote in Graham v John Deere Co of Kansas City (1966) 383 US 1 at 15 stating, of inventiveness, that there is a "requirement that the subject matter sought to be patented must be beyond the skill of the calling". This relates the matter to the particular area of industry that is involved, for that is the particular calling the skill of which is in question. The point appears clearly in a passage in the judgment of the Court of Appeal delivered by Sachs L.J. in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited (supra) at 485, although his Lordship was there speaking of anticipation.  He said:

"The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date.  If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed."  (Emphasis added.)

In the same way, whether a development is obvious is not a question to be answered in the abstract, but in relation to the uninventive skilled worker in the particular field.  If the field is occupied by practical tradesmen, rather than scientists, claims to an invention should be considered against the background of that field, not of some unreal field peopled by a technological elite.  What must be taken into account is the common general knowledge and the skill of the relevant calling.  As Aickin J. put it, speaking on behalf of the High Court, in The Wellcome Foundation Limited v V.R. Laboratories (Aust.) Proprietary Limited (1981) 148 CLR 262 at 270,

"the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date ... .  The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field ... ."  (Emphasis added.)

Another statement made by Aickin J. in Wellcome Foundation (at 281) is apposite here:

"It may be that the perception of the true nature of the problem was the inventive step which, once taken revealed that straightforward experiments will provide the solution."

This point is well illustrated in Cornish on Intellectual Property 2nd ed. (1989) sec. 5-027 at p. 129, where it is pointed out that the very statement of a problem may make the solution obvious, but the perception of the nature of the problem, in such a case, may have been inventive.  Prof. Cornish gives the example of reflective road markings, the provision of which, he says, "appears simple and obvious", if the problem is stated as being one of "indicating to the driver of a motor vehicle at night the line of the road ahead by using the light from the vehicle itself". 

Having regard to these considerations, it should not be said that the scintilla of inventiveness which will suffice to sustain a patent was absent from the relevant claims.  The learned trial Judge did not find it absent from them, and in the circumstances of this case the patentee is entitled to call in aid the commercial success of his device.

Because claims 7 and 12, and the claims dependent upon them, are valid, it is necessary to consider the grounds of appeal that were argued in respect of the issues of infringement.  A drawing of the spacer which was alleged to infringe these claims of the patent was annexed as Schedule 2 to the reasons of the learned trial Judge, and a copy of this schedule is also appended to these reasons.  It can be seen at a glance that the respondent's spacer returns to the principle adopted in the first provisional specification, according to which the frame of the spacer was kept beneath the concrete beam to be cast, thus solving the problem of obstruction of concrete flow in a manner quite different from that adopted by the claims of the patent.  Those claims, as has been said, describe a device which avoids obstruction of the concrete flow by being substantially above it.  It is true that the respondent's spacer involves four upper frame members (the

ones bearing the U-shaped receptacles to take reinforcing rods) which will necessarily be embedded in the concrete together with those rods.  But the "lower most edge" (in the language of claim 7) or "lower most surface" (in the language of claim 12) of the lower frame members will inevitably be beneath the concrete and not in the position required by each of claims 7 and 12.  This fact is fatal to the case for infringement.

The only basis on which infringement could be maintained would be if the Court were to accept the view that claim 8 ("A building foundation form work arrangement as in any one of the preceding claims in which the spacer includes means to support and locate a reinforcement rod within a channel") is valid, not as dependent on claim 7, but as dependent on one of the earlier claims.  Since those earlier claims were held by the learned trial Judge to be bad for obviousness, a finding against which there has been no appeal, and the only additional integer to the combination claimed to have been added in claim 8 is the provision of means to support and locate a reinforcement rod within a channel, that version of claim 8 cannot be upheld.  The same evidence on which the earlier claims were found to relate to obvious devices indicated that the commonly known methods involved the support of reinforcement rods within channels. 

The appellant endeavoured to avoid this conclusion by reliance on the proposition that infringement does not depend on the verbal accuracy or felicity with which the words of a claim can be applied to an allegedly infringing device.  The question is "whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing": Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98 at 109, quoting the judgment of Dixon J. in Radiation Limited v Galliers & Klaerr Proprietary Limited (1938) 60 CLR 36 at 51-52. But as Gibbs J. pointed out in Olin Corporation v Super Cartridge Co Pty Ltd (supra) at 246,

"the principle that there may be infringement by taking the `pith and marrow' or the substance of an invention does not mean that there will be an infringement where the patentee has by the form of his claim left open that which the alleged infringer has done.  And it does not affect the fundamental rule that there will be no infringement unless the alleged infringer has taken all of the essential features or integers of the patentee's claim."

See also Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 286; Shave v H.V. McKay Massey Harris Proprietary Limited (1935) 52 CLR 701 at 709-710, 712; Populin v H B Nominees Pty Ltd (supra) at 475-476.  In Fox on Canadian Patent Law and Practice, 4th ed. (1969) at 359, the law is stated as follows:

"It is clear, therefore, that the substance and principle of the invention is the important question.  The matter for determination is not whether what the defendant has done has been taken from the patentee's specification but whether the defendant's action amounts to a taking of the substance of the plaintiff's invention as claimed, (Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd. et al., [1932] Ex. C.R. 89 at 93; [1933] S.C.R. 363; (1934), 51 R.P.C. 349) for if what the defendant has done is not the same in principle as that which is claimed by the plaintiff's patent, there is no infringement (Morgan v. Seaward (1836), 1 W.P.C. 171; Ferranti v. British Thomson-Houston Co. Ltd. (1902), 19 R.P.C. 147, (1903), 20 R.P.C. 145). As was expressed by Wills J. in Incandescent Gas Light Co. v. De Mare Incandescent Gas Light System ((1896), 13 R.P.C. 330): `A process might be wholly gathered from a specification and nowhere else, and yet be no infringement if it did not take substantially the thing invented.' (See also Pneumatic Tyre Co. v. Tubeless Pneumatic Tyre and Capon Heaton Ltd. (1898), 15 R.P.C. 74, 237, (1899), 16 R.P.C. 77; Allen v. Abraham Pyatt & Co. (1898), 15 R.P.C. 723, (1899), 16 R.P.C. 135."

As was said in Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 348: "[A] variant from a requirement stated in the claim of a specification, which would have a material effect upon the way the invention worked, could not be regarded as insubstantial." On this rock the appellant's case must founder. The low frame member in the respondent's spacer is not something added to a spacer in accordance with the invention, simply to attempt to avoid infringement, but rather is a consequence of the adoption of a fundamentally different principle from that on which the invention is based. Accordingly there is no infringement, and the appeal against the decision in this respect must fail.

However, there is one further matter which should be mentioned.  Claim 14 reads as follows:

"A spacer [as in claims 12 and 13] further characterised in that there is included an upwardly extending medially positioned part having an
upwardly open U-shape slot therein adapted to support and hold a reinforcing rod thereby."

This claim appears to reflect a figure referred to in the complete specification which corresponds with figure 4 of the figures referred to in the second provisional specification.  That figure, it will be seen, contains, in addition to what the provisional specification calls a "castellated structure" in the centre of the device, U-shaped slots in the middle of each of the four frame members towards the perimeter of the device beneath which, as has been said, concrete is intended to flow.  In the complete specification, these frame members are referred to as "raised significantly above the ground level and indeed have an upper surface which lies flush with the upper surface [of the vertical plane which engages the side of one of the boxes being held in position]".  The complete specification goes on:

"Midway and extending above such surface level ... is an open U-shape at [a point in the middle of the frame member] which is adapted to capture and support reinforcing rods.

There can be crossing rods and the height of the upwardly open U-shape slots both at [that point] and in the centre raised portion [the "castellated structure"] are of sufficient height so as to indeed support in either way rods in one direction and then second rods in a crossing direction lying above a first rod."

The question is whether the expression "medially positioned" in claim 14 is limited to the U-shape at the centre of the device, the "castellated structure", or whether it includes the U-shapes in the centre of each of the frame members that have been described, spanning the four channels radiating out from the form work intersection in which the cruciform device in accordance with the patent is intended to be placed.  It is true that the word "medial", as is made clear by The New Shorter Oxford English Dictionary (1993), can refer to something "[s]ituated in the middle, intermediate", but it can also refer, as the same entry indicates, to something "[s]ituated in or relating to the median plane of the body or the midline of an organ".  Bearing in mind the dictum of Taylor J. in Martin v Scribal Proprietary Limited (supra) at 97 that "it is right to construe a claim with an eye benevolent to the inventor ... ; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it", it is appropriate to understand the expression "medially positioned" as satisfied by any point in either of the two intersecting middle lines through the patented device along which central reinforcing rods would be expected to be placed.  Any other construction would conflict both with the terms of the complete specification itself and with the practical purpose plainly disclosed.  It would also invite the kind of infringement which relies on the "verbal accuracy" repudiated by Dixon J., while appropriating "the substantial idea" (see Radiation Limited (supra) at 51); but the reason why it should not be adopted is made plain by the words of Lord Atkin, which state the law though uttered in a dissenting speech, in Electrical and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23 at 38: "[W]hen the claims are read, as they ought to be read, in the light of the body of the Specification ...".

The appeal succeeds on the issues of validity argued, but fails on the question of infringement.  As discussed at the hearing, it is desirable in this case to make an order only, at this stage, that the appellant bring in, on a date to be fixed, short minutes of orders appropriate to reflect the decisions arrived at by the Court.  At that time, any arguments as to the orders which should be made in respect of costs can also be considered.

I certify that this and the preceding forty-seven (47) pages are a true copy of the Reasons for Judgment herein of the Court.

Associate:

Date: 13 June 1996.

Counsel for the Appellant:       Mr D.K. Catterns, QC
  with Mr S.J. Goddard

Solicitors for the Appellant:        Stratford & Co.

Solicitor for the Respondent:        Mr Y. Hazan

Counsel for the Amicus Curiae:    Mr J.T. Gleeson

Solicitors for the Amicus Curiae: Freehill, Hollingdale &
  Page

Dates of hearing:                23, 24 and 25 May 1995.