Liquid Retaining Structures (Aust) v Delta Corporation Ltd
[1991] APO 64
•30 December 1991
official notice
decision of a delegate of the commissioner of patents
Application : No. in the name of
Title :
Action :
Decision : Issued .
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 565757 by LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD. and Opposition thereto under section 59 of the Patents Act 1952 by DELTA CORPORATION LTD.
background
Patent application No. 565757 currently in the name of LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD. was filed under the provisions of the Patent Cooperation Treaty on 5 October 1983, claiming priority from a patent application filed in Australia on 5 October 1982. The application was advertised as accepted on 24 September 1987. A notice of opposition was filed on 23 December 1987 by Delta Corporation Ltd.
The matter came to hearing in Canberra on 14 June 1991. Mr P.J. Fisher, patent attorney of G.R.Cullen & Co. represented the applicant and Mr E.J. Harwood, patent attorney of Wray & Associates represented the opponent.
Although the notice specified grounds of opposition as those listed in paragraphs (a) and (c) to (i) of sub-section 59(1) of the Patents Act 1952, the submissions made at the hearing were limited to the grounds specified in paragraphs (e), (g), (h) and (i); ie. prior publication, obviousness, lack of novelty and non‑compliance with section 40.
Evidence
Prior to the hearing, the opponent had filed Evidence-in-Support and Evidence-in-Reply in the form of statutory declarations and accompanying documentary evidence provided by Mr Reginald Charles Wray and Mr Errol John Harwood, patent attorneys, and Mr Graeme John Tilly, Mr Julius William Elisher, Mr Peter Carl Bruechle and Mr Matteo Perrella, technical experts, while the applicant had filed Evidence-in-Answer provided by Mr Copley Howard Friemann, patent attorney, and Mr Graeme Lesley Ainley, technical expert.
The Specification
The specification commences by stating that the invention "is concerned with improvements in structural members and in particular to load bearing structural members such as wall, floor and roof panels".
Then follows a discussion of the prior art and its associated problems.
The aims of the invention are subsequently set out as follows:
"It is an aim of the present invention to provide a load bearing structural member of the type having a low density core material sandwiched between cementitious outer skins, which structural member embodies a principle of construction enabling its use in walls and suspended walls and ceilings.
It is a further aim of the invention to overcome or alleviate the problems of prior art low density cored panels and to provide a more economical panel having substantially improved load bearing characteristics when compared with prior art panels of similar mass and/or dimensions."
Following the aims of the invention are consistory statements which correspond to the only two independent claims viz: claims 1 and 10 respectively.
Embodiments of the invention are followed by the claims which read as follows:
A load bearing structural member comprising:
a core of particulate material in a cementitious matrix said particulate material having a density less than said cementitious matrix, said core being integrally formed between thin outer skins of steel fibre reinforced cementitious material on at least two opposing faces of said core, said structural member characterised in the provision of one or more post-tensioned tendons extending between opposed ends of said structural member, said post-tensioned tendons being positioned within the structural member between opposing faces thereof to distribute post-tensioning stresses substantially evenly throughout said opposed outer skins.
A structural member as claimed in claim 1 wherein said particulate material comprises foam polystyrene.
A structural member as claimed in claim 1 or claim 2 wherein said cementitious matrix comprises a foamed cementitious mortar.
A structural member as claimed in claim 1 wherein the density of said core is in the range of from about 250 Kg/m3 to about 800Kg/m3.
A structural member as claimed in claim 4 wherein the density of the core is in the range of from about 350Kg/m3 to about 450Kg/m3.
A structural member as claimed in claim 1 wherein the thickness of the outer skin is in the range of from about 6 mm to about 20 mm.
A structural member as claimed in claim 6 wherein the thickness of the outer skin is in the range of from about 10 mm to about 20 mm.
A structural member as claimed in claim 1 wherein said post‑tensioned tendons are anchored in regions of increased skin thickness.
A structural member as claimed in claim 1 wherein one or more support members is located within said core between opposed skin faces.
10.A method of constructing a load bearing structural member which method comprises:
placing on a shaping surface a first layer of a cementitious mortar containing steel reinforcing fibres;
placing on said first layer before said first layer has cured a second layer of a cementitious mortar slurry containing a particulate material having a density less than said mortar slurry; and,
placing on said second layer before said first layer has cured a further layer of a cementitious mortar containing steel reinforcing fibres, said further layer extending over the exposed surface of said second layer and allowing said first layer, said second layer and said further layer to cure to form an integral structure comprising opposed outer skins bonded to a core, said method including the further step of incorporating between said opposed outer skins post‑tensioned tendons extending between opposed ends of said structural member to distribute post-tensioning stresses substantially evenly throughout said opposed outer skins.
11.A method as claimed in claim 10 wherein said post-tensioning tendon is located in a conduit and before post-tensioning said tendon a cementitious grout is introduced into said conduit.
12.A method as claimed in claim 10 wherein said particulate material comprises foam polystyrene.
13.A method as claimed in claim 10 or claim 12 wherein said cementitious matrix comprises a foamed cementitious mortar.
14.A method as claimed in claim 10 wherein said post-tensioning tendons are tensioned to between about 60Kn and about 120Kn.
Section 40
In his submission, Mr Harwood stated that the opponent was attacking the application on, amongst other things, the ground that the specification did not meet the provisions of section 40 of the Patents Act 1952. The relevant provisions are these:
"A complete specification -
shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and
shall end with a claim or claims defining the invention. The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification."
As a preliminary point Mr Harwood stated that he had great difficulty in determining just what exactly is the present invention. He pointed out that in addition to the aims as set out in the description there is in effect an object statement following on from a discussion of the prior art which reads:
"In contrast the present invention contemplates a steel fibre reinforced cementitious skin having not only high compressive and tensile strengths but also flexural strength properties of the order of 8MPa in a non pre-stressed condition."
I understand Mr Harwood's point but, in considering the specification overall, I do not believe it raises a problem.
With regard to the sufficiency of the description of the invention Mr Harwood stated that, in the light of the disclosures contained in the specification, it is contended the specification fails in that it does not describe the invention. He said that while it does describe the difficulties which the invention is intended to overcome, the consistory clauses, which are intended to describe the invention and which are the only general description of the invention, do not describe an invention which is able to meet the objects which have been stipulated for the invention. He went on to say that although the specification discusses the requirement to control the viscosity or the thixotropic properties of the core cementitious mix, such that when the particulate material comprises foamed polystyrene beads the beads do not migrate to the surface of the core, there is no disclosure of how the control is achieved.
In the latter regard I note that the specification as accepted at page 13 lines 11 to 25 states:
"A core mix is then prepared as follows according to the ratio:
water : - 200 litres
cement : - 400kg
foamed polystyrene beads : - 1m3Again the cement is preferably grey Portland cement and the foamed polystyrene beads have a diameter range of from 3-6mm with a density of approximately 15kg/m3.
The water and cement are added to a mixer such as a concrete mixer to form a homogenous slurry. Once the slurry is formed, the beads are then added and mixed thoroughly to form a homogenous slurry/bead mix. The viscosity of the slurry is such that the tendency of the beads to migrate to the surface during mixing is effectively negated."
The specification thus gives directions on the constituent materials used in the preparation of the core mix, the ratio of the mix and the order in which the constituent materials are mixed to achieve the required viscosity. I also note that the expert declarant for the applicant states in his declaration "It is within my knowledge that panels described in Application No. 565,757 have been produced and do achieve the performance capabilities indicated in the specification of Application No. 565,757. Moreover, I do not believe any possible difficulties in producing such panels as expressed by Mr Bruechle are insurmountable and that these panels can and are being produced". In the absence of any verified evidence to the contrary I am not satisfied that there is insufficiency as contended by Mr Harwood.
With regard to the best method of performance, Mr. Harwood stated that the particular embodiment of the invention described seems to satisfy the requirement that the specification must include a description of the best method of performing the invention known to the applicant at the time of filing the application. He repeated however that there is no description of how the viscosity of the cement and polystyrene bead core mix slurry is controlled to overcome the problems of the prior art or no discussion of how the skin mix is treated especially in the light of the skin mix having a water to cement ratio of 0.2 and that it must have high flexural strength of the order of 8 MPa. Furthermore, he said, there is no description in the specification of how equalisation of the stress evenly over opposed skins is achieved.
I have already decided that the disclosure of how the required viscosity of the core mix is achieved is sufficient. As with the core mix, there is a clear indication of the constituent materials used in the skin mix wherein at page 12 line 22 to page 13 line 7 the specification as accepted states:
"A cementitious skin mix is then prepared in a suitable mixer according to the ratio:
cement : - 800kg
water : - 160 litres
sand : - 1500kg
steel fibres : - 160kgThe cement is preferably grey Portland cement and the steel fibres are preferably enlarged end rectangular end fibres made by A.W.I. Fibersteel having dimensions 14mm long x 0.4mm thick x 0.6mm wide. If required, a quantity of conventional plasticising agent may be employed to improve workability of the mix ".
I am satisfied that again in the absence of any verified evidence to the contrary this disclosure meets the requirements of the Patents Act with regard to the skin mix.
Reference to the drawings of the specification as accepted
and in particular to figures 4, 5 and 13 discloses evenly distributed tendons located midway between the upper and lower skins. I am prepared to accept that when the shown tendons are tensioned, because of their location, the resultant stresses will be distributed substantially evenly throughout opposed outer skins where the outer skins are the upper and lower skins respectively as shown in the drawings. There is therefore no
reason for me not to conclude that the best method of performing the invention known to the applicant has been disclosed.
Mr Harwood further submitted it was the view of the opponent that the claims do not meet the requirement of section 40(1)(b) Patents Act 1952 ie. the requirement that the complete specification shall end with claims defining the invention, because they do not achieve the objects set down for the invention. I do not believe this to be the case. Comparing the claims with the stated aims I am satisfied that they are sufficiently consistent to meet the requirement of section 40(1)(b) Patents Act 1952.
Regarding the clarity of the claims, Mr Harwood has drawn my attention to the case of Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 where at page 298 Gummow J. stated:
"The settled rule is in ascertaining the width of a particular claim, it is not permissible to vary or qualify the plain and unambiguous meaning of the claim by reference to the body of the specification; provided that if an expression in the claim is not clear, then it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim. ... Further, whilst resort may be had in the circumstances I have indicated to the body of the specification, it must also be remembered that it is usually not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment. The preferred embodiment cannot properly be used to introduce into the definite words of a claim an additional definition or qualification of the patentee's invention.".
Mr Harwood stated that, based on this case law, in determining the clarity of the claims, it is accepted that reference should not be made to the body of the specification as filed or to the provisional specification unless there is some ambiguity which can only be resolved by reference to the earlier documents.
Mr Harwood submitted that claim 1 is far from clear due to a lack of definition of the configuration of the structural element whereby one is unable to determine:
the locality of the opposed ends from which the post‑tensioned tendons extend,
the presence and locality of the opposing faces between which the post-tensioned tendons are located, and
the locality of the opposed outer skins.
I agree that the points raised by Mr Harwood do present some difficulties when the claim is construed in isolation and according to its plain meaning. In particular with regard to point 2., it is not clear whether the opposing faces are the previously defined opposing faces of the core or outside opposing faces of the structural member. This problem is accentuated when construing claim 8 which defines "a structural member as claimed in claim 1 wherein said post-tensioned tendons are anchored in regions of increased skin thickness". This could be interpreted to mean that where there are only two skins i.e. those skins "on at least two opposing faces of said core" in accordance with claim 1, the post-tensioned members are anchored in these skins. However, as known in the art, the purpose of anchoring is to anchor the ends of the tendons to hold the tension in the tendons after post-tensioning and therefore for one construction of claim 8, the opposed ends and opposed outer skins coincide. With this construction of the claim there is only a core of particulate material in a cemetitious matrix between the skins and therefore it is not clear how the distribution of post-tensioning stresses substantially evenly throughout opposed outer skins is achieved. On the other hand, if claim 8 is construed to mean that the tendons are located within the skins and anchored along their length in regions of increased skin thickness, here again, it is not clear how the distribution of post-tensioning stresses substantially evenly throughout opposed outer skins is achieved.
I note that in the other independent claim, claim 10, the tendons are defined as being incorporated between "opposed outer skins" rather than "opposing faces" as defined in claim 1. If these are meant to be the same integers, the use of differing terminology in itself renders the claims unclear.
Consequently, I conclude that the claims are unclear for the reasons given. In particular, the claims should make exactly clear the positioning of the anchoring points.
I now turn to the consideration of whether or not the claims are fairly based. In his submission Mr Harwood stated that neither claim 1 nor claim 10 are fairly based because they do not define the invention described in the specification. He submitted that:
the specification is totally silent on how the difficulties of the prior art are met by the invention which is the subject of the present application,
the specification suffers through lack of sufficiency and
the claims lack definition.
I have already dealt with points 1. and 2. With regard to point 3., I agree that because of the various constructions that can be put on claim 1 its ambit is indeterminate and thus this claim is sufficiently imprecise to include at least one construction not within the disclosure and is, as a consequence, not fairly based. Similarly with claim 8, since this claim is open to more than one construction, one of which has not been described, it is also not fairly based.
With regard to claim 10, when considered in the light of claim 11, and setting aside the fact that claim 10 defines "post‑tensioned tendons" as opposed to a "post-tensioning tendon" in claim 11, claim 10 can be construed, so as not to be redundant on claim 11, to include a construction where the post-tensioned tendons are not located in a conduit. Mr Harwood in his submission drew attention to the fact that in the art "post‑tensioning" involves casting concrete with conduits or ducts running through the concrete from one side to the other. When the concrete has set, steel tendons are run through the conduits or ducts and they are anchored at one end. The other end of the tendon is then pulled by a jack or like means and anchored. The conduit is then normally filled with either grout or other material to exclude oxygen which would cause corrosion of the tendon. He went on to say that as a consequence it was an inherent property of "post-tensioned tendons" that they be located in conduits or ducts which are in turn located in the concrete. Therefore where reference is made in the claims to "post-tensioned tendons", it means tendons located in a conduit or duct. If tendons are located in set concrete and then tensioned, the structure is damaged, hence no other meaning can be given to "post-tensioned tendons" other than tendons in conduits or ducts.
In answer Mr Fisher submitted that there is no difficulty in casting a tendon within the core of the material because it is of such inferior compressive strength compared with the outer skins that subsequent tension, when converted to compressive stress, is taken up in the outer skins. He added that where the tendon is cast within a region of increased wall thickness the problem of binding can be avoided by pre-coating the tendon in grease or the like as would be clear to the skilled addressee.
I agree that under the circumstances outlined by Mr Fisher it would be possible to post-tension tendons directly cast into material. Therefore I do not consider that claim 10 lacks fair basis simply because the tendons are not stated to be located in conduits or ducts.
There is one further minor problem. Claim 14 calls for the post‑tensioning tendons to be tensioned "to between about 60Kn and about 120Kn". The only reference in the specification as accepted to a post-tensioning figure is at pages 22 and 23 where a figure of "stressed to 100Kn" is mentioned. Since the range of 60Kn to 120Kn has not been disclosed and as I am unable to accept that "stressed to 100Kn" would necessarily mean to a man skilled in the art "to between about 60Kn and about 120Kn" I am inclined to the view that claim 14 as accepted is technically not fairly based or at least does not define the invention described.
Anticipation
Included in the documentary evidence were the following patent specification citations viz:
GB 1385512, AU 407108, AU 448474, AU 473993 and AU 480757 (all to Elisher), AU 508545 (to Munsell) and AU 507249 plus AU 520177 (to Tilly).
None of these citations when compared with the claims meet the test for prior publication as quoted in Flour Oxidising Co. Ltd. v. Carr & Co. Ltd. (1908) 25 RPC 428 viz:
"The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shown to have been made known. Whatever, therefore is essential to the invention must be read out of the prior publication."
Consequently, the opposition ground of prior publication has not been proven.
I next turn to the question of novelty, but, before I do this, I want to satisfy myself just what is meant by the phrase "said core being integrally formed between the thin outer skins". I believe that the draftsman of Application No. 565757 considered that by using these words he was covering the situation where the load bearing structural member was made in accordance with the method described ie. the method defined by claim 10. Can these words however be understood in the art to have a wider meaning such that the load bearing member of claim 1 is not restricted to being made by the method defined by claim 10 ?
From a reading of the specification I deduce that "said core being integrally formed between the thin outer skins" means that the core is bonded to the skins in such a manner that there is integrated bonding between the outer skins and the core. In considering the citations I note that the opening paragraph of page 5 of the Elisher citation AU 407108 (published 14 December 1967) when dealing with a similar subject states "A layer of plaster material is applied, in wet condition to one surface or both surfaces of each slab .... so that the plaster layers become integrally bonded (my emphasis) to the slab." I conclude from this that others active in the art of producing laminated building panels consider their product to be manufactured utilising integrated bonding between the core and outer skins and hence the use of the phrase "said core being integrally formed between the thin outer skins" does not restrict the load bearing member of claim 1 to only being made by the method defined by claim 10.
Although the Elisher and Munsell patent specifications relate to preformed building panels or structural members comprising outer skins with filler sandwiched between, none of them include the characterisation features of "(a) the provision of one or more post-tensioned tendons extending between opposed ends of said structural member, (b) said post-tensioned tendons being positioned within the structural member between opposing faces thereof (c) to distribute post-tensioning stresses substantially evenly throughout said opposed outer skins."
The Tilly citations AU 507249 (published 12 February 1976) and AU 520177 (published 12 February 1980) are however different. They relate to load bearing structural members within the scope of lines 1 to 7 of claim 1 (A load bearing structural member .... core,). I note that in following the law as recited in Nicaro Holdings Pty Ltd and Others v Martin Engineering Co and Another (1990) 16 IPR 545 I am precluded from reading AU 507249 and AU 520177 as one document even though the latter lists the former as prior art and I must therefore consider the citations separately. In considering these citations, the claim 1 characterising features (a), (b) and (c) referred to earlier in this paragraph require some discussion. With respect to (a) and (b), the 507249 citation at page 3, lines 20 to 23 states: "The panel can be used free standing or stiffened by either external webs or rigid members replacing strips of the lightweight core. The stiffeners can be but need not incorporate post tensioning cables set in tubes.", while the citation at page 5, paragraph (d) states: "Post tensioning can be catered for by inserting steel tubes (H) in gaps between the sheets of P.V.C. foam and reinforced anchor points at each end of the tube." Given that polystyrene bubbles set in a cement mortar matrix is stated at page 3 of the citation to be an alternative to P.V.C., when the exemplified parts of the description are read on to figure 2 of the drawings, features (a) and (b) are clearly disclosed in the 507249 citation.
Considering now the 520177 citation. The first four lines of page 8 state: "If it is desired to post-tension the panel by ties between the roof plate and the foundations, conduits for such tensioning cables may be located in the spaces between the blocks." Since the roof plate and foundations delineate the opposed ends of the panel (structural member) and since the spaces between the blocks must be within the structural member between its opposed faces, characterising features (a) and (b) are also disclosed in this citation.
Thus citations 507249 and 520177 disclose all of the features of claim 1 except feature (c) viz: the post-tensioned members being positioned "to distribute post-tensioning stresses substantially evenly throughout said opposed outer skins".
With regard to this latter characterising feature, the Tilly declaration in paragraph 12 states: "the discussion of post‑tensioning in the specification of Patent Application No. 565757 presents no new ideas on the subject" and has drawn attention to the fact that prestressed concrete technology is well established. Mr Tilley backs up this statement by pointing out that a detailed explanation of how post-tensioning in a load bearing member works is contained in many texts including "Prestressed Concrete Structures" by A.E. Komendant published by McGraw Hill and available for inspection in the Patent Office Library from 27 November 1952 and "An Introduction to Prestressed Concrete" Vol. 1 by P.W. Abeles published by Concrete Publications Limited and available for inspection in the Australian Department of Construction Library before June 1981. Both these texts disclose how the distribution of post-tensioning stresses can be achieved substantially evenly throughout a loadbearing cross-section.
I have no reason to doubt what Mr Tilly says is correct and I therefore consider that, based on the evidence presented, the latter part of the characterising feature (c), which is the only difference between the disclosures of the citations and claim 1, is common general knowledge. In deciding whether this difference or variation in claim 1 from the citations confers novelty I have used the Griffin v Isaacs [1942] AOJP 739 test as set out by Dixon J. viz:
"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the difference as giving novelty."
As I have said, the difference here between the disclosures of citations 507249 and 520177 and claim 1 amounts to common general knowledge. Furthermore, the claims requires no more than the post-tensioning members being so positioned - it does not indicate that any special positioning is required. In my view any worker in the art wanting to position the post-tensioning memebers would want to position them so that the stresses are evenly distributed. As such, this difference clearly involves no ingenuity or inventive step and as the merit of the devices of the citations and the present invention are the same, claim 1 lacks novelty.
The features introduced by claims 2 and 9 are disclosed in the 507249 citation, while the features introduced by claims 2, 3, 6, 7 & 9 are disclosed in the 520177 citation. It follows that these claims also lack novelty.
The features introduced by claims 4, 5, & 8 are not disclosed in the Tilly citations. In my view these claims are not lacking in novelty.
In summary, I find claims 1, 2, 3, 6, 7 & 9 fail due to lack of novelty.
There remains for my consideration the other independent claim, claim 10. This is a method claim and includes the steps of:
" placing on a shaping surface a first layer of a cementitious mortar containing steel reinforcing fibres;
placing on said first layer before said first layer has cured a second layer of a cementitious mortar slurry containing a particulate material having a density less than said mortar slurry; and,
placing on said second layer before said first layer has cured a further layer of a cementitious mortar containing steel reinforcing fibres, said further layer extending over the exposed surface of said second layer and allowing said first layer, said second layer and said further layer to cure to form an integral structure comprising opposed outer skins bonded to a core, ..."
These method steps are not disclosed by any of the citations included in the evidence and I have already decided that none of the claims are prior published. I next have to consider whether claim 10 and its dependent claims are novel.
Peter Carl Bruechle in his Statutory Declaration dated 17 October 1988 stated in his summary paragraph 21: " the fabrication technique proposed of pouring layers at different times could give delamination problems which would prevent the panel working as desired". However, in paragraph 13 of that declaration he stated: "... and if there is any tendency to delamination ... the panel may prove unstable. Only testing of panels over a protracted period will show how much of a problem this is." and at paragraph 17 of the same declaration he stated: "I have not prepared any samples of the concrete mixes proposed in the complete specification for the skins....". In his later Statutory Declaration dated 31 December 1990 Mr Bruechle stated at paragraph 3: "It is my opinion that the pouring sequence of the panels described in the specification would be likely to result in the delamination of the panels described in the embodiment".
Julius William Elischer in his Statutory Declaration dated 28 July 1991 in referring to the core and skin concrete layers of the present invention stated at paragraph 7: "It is my experience that the shrinkage difference between these two types of concrete is such that the skin and core would not work under loading as integral with each other."
Clearly as can be gathered from the Bruechle and Elischer declarations the method steps as defined by claim 10 were not an expedient used in the art prior to Application No. 565,757. It is particularly noted that Mr Bruechle has been careful to qualify his opinion by stating he has no direct knowledge of the delamination problem and that only testing over a protracted period will show just how much there is of a problem.
However, I also note that the evidence of Bruechle and Elischer essestially go to whether or not the method would work (that is, to utility) rather than whether or not the method claimed is novel. There is no evidence before me which demonstrates that the method claimed in claim 10 lacks novelty, and I therefore find claim 10 and its dependent claims are novel.
Obviousness
In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claims. (See the judgement of Aicken J in Minnesota Mining and Manufacturing Co v Beirsdorf (Australia) Ltd (1980) 144 CLR 253). As already mentioned, based on the Tilly declaration and the supporting evidence in the form of the Komendant and Abeles text books I consider that the latter part of the characterising feature of claim 1 ie. the post-tensioned members being positioned "to distribute post-tensioning stresses substantially evenly throughout said opposed outer skins" is common general knowledge. The balance of the written evidence comprising, as it does, patent specifications and sales literature is at best, in the absence of evidence to the contrary, public knowledge and thus cannot be considered in determining the question of obviousness. Based then on the evidence, I believe that only the latter part of the characterising feature of claim 1 is common general knowledge and I am accordingly, given such common general knowledge, not in a position to conclude that the invention claimed is obvious. Consequently the opposition ground of obviousness has not been proven.
Utility
Some of the material filed in evidence on behalf of the opponent suggests that the claimed structural members lack utility since they may be subject to delamination. Utility or lack thereof is not a ground of opposition under section 59 of the Patents Act 1952 and is therefore something I need not consider. However, in any case, no conclusive evidence has been filed to show that the method of claim 10 as defined and practised by the applicant does indeed lead to delamination problems.
Priority Dates And Public Interest
Although submissions have been made by the opponent that it is in the public interest that I determine the relevant priority dates of the claims as accepted, since no evidence has been placed before me to the effect that the claims are anticipated by or are obvious in the light of material which became available to the public after the earliest possible priority date of the claims (5 October 1982) I need not determine this matter.
Summary
I find that the specification of Application No. 565757 as accepted does not meet the requirements of section 40 of the Patents Act 1952 and that claims 1 to 3 and 6, 7 & 9 are not novel.
I allow LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD. 60 days from the date of this decision to ask for leave to amend the specification to overcome these defects.
COSTS
Having decided that the opponent succeeds on the lack of novelty and non-compliance with section 40 grounds specified in the notice of opposition I award costs against the applicant, LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD.
J.M. SELLARS
Delegate of the Commissioner of Patents
Patent Attorney for the applicant: G.R. Cullen & Co., Brisbane
Patent Attorney for the opponent : Wray & Associates, Perth
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