Magisurf Pty Ltd v Termortar Pty Ltd

Case •

[2014] APO 34

•

4 June 2014

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Magisurf Pty Ltd v Termortar Pty Ltd [2014] APO 34

Patent Application:                2010262758

Title:A method of termite proofing a building structure

Patent Applicant:                   Termortar Pty Ltd

Opponent:  Magisurf Pty Ltd

Delegate:  Matthew Lee

Decision Date:  4 June 2014

Hearing Date:  28 February 2014, in Canberra

Catchwords:  PATENTS – section 59 – opposition to grant of a patent on the grounds of novelty, inventive step, full description, clarity and fair basis – some claims lack novelty – patent literature not shown to be ascertainable by skilled persons – claims involve an inventive step against common general knowledge – claims are clear – invention fully described - opposition successful – applicant afforded opportunity to amend – costs awarded against applicant

Representation:  Patent applicant:  Greg Gurr of Spruson & Ferguson, Sydney.

Opponent:Jonathan Lewis of Cullens, Brisbane.  John Hitchen and Tony Kennedy from the applicant company also in attendance.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2010262758

Title:A method of termite proofing a building structure

Patent Applicant:                   Termortar Pty Ltd

Date of Decision:                   4 June 2014

DECISION

  1. The opposition succeeds on the ground that claims 1-3, 9-12 and 14 lack novelty and do not comply with section 18(1)(b)(i).  The applicant is allowed 2 months from the date of this decision to file suitable amendments.  Costs are awarded against the applicant.

    REASONS FOR DECISION

    Background

  2. Termortar Pty Ltd is the applicant for patent application 2010262758 which was filed under the provisions of the Patent Cooperation Treaty on 17 June 2010 as application PCT/AU2010/000750, claiming a priority date of 19 June 2009 and entering national phase on 15 December 2011. The application was advertised as accepted on 23 February 2012. A notice of opposition to the grant of the patent was filed by Magisurf Pty Ltd on 23 May 2012, and a statement of grounds and particulars was served on 22 August 2011. A request to amend the statement of grounds and particulars under regulation 5.9 of the Patents Regulations 1991 (as before the Raising the Bar amendments) was filed on 6 March 2013, and the amendments were allowed on 2 April 2013.

  1. The opposition was heard on 28 February 2014.  The opponent was represented by Jonathon Lewis of Cullens, Brisbane.  Also in attendance for the opponent were John Hitchen & Tony Kennedy.  The applicant was represented by Greg Gurr of Spruson & Ferguson, Sydney. 

    Grounds of Opposition

  2. The grounds of opposition relied upon by the opponent are those available under subsections 59(b) and 59(c) of the Patents Act 1990 as in force immediately before 15 April 2013 (i.e. prior to the Raising the Bar amendments), that is, firstly, that the invention as claimed is not a patentable invention as it does not comply with subsections 18(1)(b)(i) and 18(1)(b)(ii) (the claimed invention is not novel and does not involve an inventive step), and, secondly, that the specification filed in respect of the complete application does not comply with subsections 40(2)(a) and 40(3) (full description, clarity and succinctness, and fair basis).

  3. Any further references to the Patents Act in the following paragraphs will similarly refer to the legislation as in force immediately before 15 April 2013.

    Onus of Proof

  4. The onus of proof in opposition proceedings lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; (2009) 79 IPR 426 at 430 [18], 432 [22]).

  1. The primary facts are to be established on the balance of probabilities, but the ultimate facts - the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness - must be proved to the level of practical certainty (Justice Besanko in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061 at [35]; (2010) 88 IPR 52 at 63 [35]).

    The Specification

  2. The specification relates to a method of preventing termite attacks through the use of a curable composition.  Termites are mainly subterranean creatures, and must conceal themselves from direct sunlight.  If termites travel across exposed faces of walls to get to their food source, termites will build tunnel-like passages along the surface of the wall.  This allows the termites to remain concealed during migration towards the food source.

  3. Termites are known to attack building structures, with one point of entry into the building structure being the mortar joints typically found between masonry elements such as bricks or blocks.  The mortar joints themselves normally comprise cementitious material made up of sand, cement and lime.  When under attack by termites, the sand component of the mortar is removed grain by grain, and this allows the termites access to the interior of the building.  The specification also suggests that formic acid produced by the termites can react with the free lime in the cement setting during termite attack.

  1. The specification states that previous methods of preventing termite attack have involved the use of chemicals such as termite poisons or termite repellents, and physical termite barriers such as stainless steel mesh. 

  2. The problem with the prior art methods is stated as:

    “Metallic barriers are relatively expensive in terms of material and installation costs.  Chemical barriers are generally applied at ground level and may be harmful to humans, animals and vegetation.  Further, the effectiveness of chemical barriers deteriorates over time.”

  3. The specification then states that the present invention solves this problem by the use of a curable composition which is applied from a foundation up the face of a wall to a predetermined height above finished ground level.  The curable composition penetrates into and is retained within the cementitious material.  Once cured within the cementitious material, the mortar becomes harder and chemically resistant to the formic acid produced by termites, thereby transforming the mortar into a physical barrier for the termites.  By extending the treated area to the height above the finished ground level it forces termites to build recognisable tunnels up the face of the wall before encountering any areas that would allow the termites to attack the structure, and therefore the termite activity would be more easily detectable by visual inspection.

  1. The claims are as follows, with claim 1 being the only independent claim, followed by appended claims 2-17: 

    1. A method of termite proofing a building structure, the building structure having a foundation located below an adjacent finished ground level and an external wall formed on the foundation and defining an exterior surface of the building structure, the exterior surface being defined at least in part by a cementitious material, said method comprising:

    applying a curable composition to the cementitious material throughout a lower region of the exterior surface extending from the foundation to a predetermined height above the finished ground level, such that said composition penetrates into and is retained within the cementitious material; and

    allowing said composition to cure within the cementitious material throughout said lower region, wherein said composition cures within the cementitious material, thereby protecting the cementitious material against intrusion by termites.

    1. The method of claim 1 wherein the cementitious material comprises a cementitious render.
    1. The method of claim 1 wherein the wall comprises a plurality of courses of masonry elements with mortar joints defined between adjacent masonry elements and between a lowermost course of the masonry elements and the foundation, the mortar joints comprising the cementitious material.
    1. The method of claim 1 wherein a majority of said composition penetrates into the cementitious material.
    1. The method of claim 1 wherein said composition penetrates at least 3 mm into the cementitious material.
    1. The method of claim 1 wherein said composition penetrates at least 5 mm into the cementitious material.
    1. The method of claim 4 wherein a residual film of said composition initially remains on the exterior surface following application, said residual film breaking down under the action of ultraviolet radiation within a period of six months.
    1. The method of claim 7 wherein said residual film is at least substantially clear.
    1. The method of claim 1 wherein said predetermined height is at least 50 mm.
    1. The method of claim 1 wherein said predetermined height is at least 75 mm.
    1. The method of claim 1 wherein said composition is applied by spraying.
    1. The method of claim 1 wherein said composition is applied by brush or roller.
    1. The method of claim 1 wherein said composition, when cured, hardens the cementitious material.
    1. The method of claim 1 wherein said composition comprises one or more treating substances selected from the group consisting of acrylics, modified acrylics, silicones, silanes, urethanes or monomers thereof, silane modified acrylics or urethanes, fluorosilicates, alkyl silicates, metal silicates, epoxy polymers, styrene, styrene-acrylate or styrene-butadiene polymers, vinyl monomers or polymers, and natural or synthetic latexes.
    1. The method of claim 1 wherein said composition comprises acrylic and silicone polymers.
    1. The method of claim 1 wherein said composition comprises a hydrocarbon based solvent.
    1. The method, of claim 1 wherein said composition comprises a fluorosilicate, metal silicate or alkyl silicate in an aqueous-based solvent.

    Evidence

  2. Evidence in the form of declarations was filed as follows:

    Evidence in Support
    -          Anthony William Kennedy dated 5 March 2013 (“First Kennedy Declaration”)

    Evidence in Answer
    -          Clyde Freeman dated 28 May 2013 (“Freeman Declaration”)
    -          Gregory John Gurr dated 31 May 2013 (“Gurr Declaration”)

    Evidence in Reply
    -          Anthony William Kennedy dated 6 August 2013 (“Second Kennedy Declaration”)

    In exhibits to the declarations made on behalf of both the opponent and the applicant were declarations made during the proceedings of an opposition matter under section 59 for application 2006292026 between Magisurf (the applicant in those proceedings) and Alterm National Pty Ltd (the opponent in those proceedings, and a related entity of Termortar Pty Ltd as per paragraph 6 of the Freeman Declaration).  Apart from the exhibits presented to me in the course of these proceedings, I have also made myself aware of the decision by the delegate of the Commissioner of Patents with regard to the 2006292026 application.  Although that decision is not binding on me, I have noted relevant parts of that decision which I have found to be instructive as will be seen below, especially with regard to inventive step.

    The Skilled Addressee

  1. The opponent has submitted that the person skilled in the art for the purposes of the present invention includes “pest controllers engaged in carrying out termite barrier installations and inspections, persons designing termite barriers and persons specifying termite barriers and associated installation methods”.  The applicant has submitted that the skilled addressee should be “a pest controller engaged in carrying out termite barrier/termite proofing installations, a person designing such termite proofing methods and barriers and a person specifying termite proofing methods and associated termite barriers”.  Both submissions are almost identical, and I am inclined to agree to the submissions.

  2. Having also reviewed their qualifications I accept that both Mr Kennedy and Mr Freeman are skilled persons in the art.  Although allegations of the credibility of both experts were raised during the hearing, I believe that the alleged issues with credibility do not have any material effect on my reasoning below.

    Construction

  3. There are a number of terms found within the language of the claims which have a significant bearing on the outcome of these opposition proceedings.  The well known principles to be applied when approaching questions of construction are set out in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at [249], citing Sheppard J in Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385.

Termite Proofing

  1. Claim 1 refers to a “method of termite proofing a building structure”.  At the hearing both parties were in agreement that the building structure was in reference to the entire structure (such as a house), not just limited to the external wall where the curable composition is being applied to.  Later in claim 1, the composition is said to cure within the cementitious material, “thereby protecting the cementitious material against intrusion by termites”.

  1. The opponent has contended that the word “proofing” should be construed as something impervious or completely immune to termites, as opposed to the use of the word “protecting” which is a of a lower standard and only provides some degree of resistance but is not similarly immune from termite attack.  The applicant has agreed at the hearing that the word “proofing” conveys a higher standard, as the alleged purpose of the invention is to render the treated cementitious material impervious to termite attack, however contended that the word “protecting” was also of a similar standard to “proofing” as the protection afforded to the cementitious material effectively rendered the cementitious material termite proof, and hence the building structure termite proof.

  2. I agree that the plain English meaning of ‘proof’ supports a higher standard of immunity or imperviousness than something that would be merely an impediment to termite attack but would not be effective in preventing the termite attack to occur.  

  3. Which then leads me to the question, how should the entire phrase “termite proofing the building structure” be construed?  Specifications must be read as a whole, which gives context to the terms found in a claim.  In this instance a skilled person would recognise that it would be near impossible to render an entire building completely impervious to termite attack from all attack vectors, as any such solution would involve applying treatment or some other type of solution to areas where termites could possibly, however unlikely, enter the structure such as cracks found around doors or (in an extreme example) through gaps found in the roof.  A more reasonable construction would be to say that the building structure is rendered termite proof according to industry practice and standards.  The specification at page 4 lines 4-6 states that the treatment is only necessary up to a predetermined height on external walls such that an inspector can see evidence of termite activity.  Therefore I would construe “termite proofing a building structure” as a way of preventing termite attack on those areas around the building structure up to a height to which a termite inspector could readily detect termite activity and take further appropriate actions to counter any termite problem.

Cementitious Material

  1. At the hearing it was suggested that masonry elements such as the slab or foundations contain cement and could also fall within the scope of “cementitious material”.  Whilst this might normally be true, the use of the phrase “cementitious material” within claim 1 states that the region to which the curable composition is applied is on the exterior surface of the external wall extending from a foundation.  As the foundation is defined as a separate integer to the external surface, which in turn is defined at least in part by a cementitious material, I would not construe slabs or foundations as falling within the scope of this phrase.  It does however, encompass any other masonry elements that contain cement, such as mortar or render, and also cement bricks or blocks.

Curable Composition

  1. The opponent has submitted that the phrase “curable composition” includes many types of substances (such as paint or waterproofing compositions) that are not inherently termite resistant.  I note that claim 1 is directed towards a method of termite proofing, and the application of the curable composition is also claimed to cure within the cementitious material, “thereby protecting the cementitious material against intrusion by termites”.  Therefore although there is suggestion upon a plain reading of the claims that the phrase “curable composition” is to be restricted to termite resistant substances, the composition should be construed to be any such substance that can fulfil the purposes to which the claim is directed, namely proofing and protecting against termites, in the manner as claimed.

Penetrates

  1. A major point of contention between the parties was the construction of the word “penetrates”.  The opponent has submitted that if the curable composition flows into irregularities and voids (including cracks and open pores) formed in the surface of the cementitious material, then the curable composition is penetrating the cementitious material.  The opponent also submits that this construction would be consistent with the plain English meaning of the word “penetrate”.

  2. The applicant has an alternative construction for “penetrate”.  I refer to the following figures submitted as exhibit CF-7 of the Freeman Declaration:

  3. Figure 1 above shows the surface of a section of cementitious material, defined by the irregular line and the large void or crack in the cementitious material.  The highlighted area above the cementitious material denotes the curable composition.  As can be seen, the curable composition flows into the irregularities and voids found on the surface of the cementitious material, but is always distinct from the cementitious material.  According to the construction of the opponent, the curable composition would be deemed to be penetrating the cementitious material by entering the irregularities and the void of this cementitious material.

  4. In contrast, Figure 2 above shows the curable composition seeping into the cementitious material itself such that the curable composition has gone beyond the surface structure of the cementitious material and is now intermingling with the particles of the cementitious material.  The applicant submits that the word “penetrates” as found in claim 1 should be construed as to only include this situation, rather than including the scenario in Figure 1 where the curable composition only gets into surface irregularities and voids. 

  5. I do not believe that there is any contention that the scenario envisaged by Figure 2 involves penetration.  The issue at hand is whether the mechanism of Figure 1 as proposed by Mr Freeman, i.e. with the application of a curable composition purely residing on the surface of the cementitious material despite filling cracks and voids, falls within the scope of “penetrates”. 

  6. I am in agreement with the position put forward by the applicant that the scenario in Figure 1 falls outside the scope of “penetrates”.  It is not entirely clear where the scope of the word “penetrates” lies when relying purely on the plain meaning of the word when compared to the context of the claim.  In light of this I then find assistance in reading the specification as a whole, which suggests that the protection afforded by the treatment of the curable composition derives from the interaction of the curable composition within the cementitious material as opposed to the curable composition remaining on the surface.  For example, on page 5 lines 9-15 it is suggested that an embodiment involves the composition reacting (for example crosslinking) with the cementitious material.  Another passage on page 6 lines 1-5 describes the composition reacting with the cementitious material such that it strengthens the cementitious material and reduces pore sizes.  Finally page 7 lines 22-27 states that the cementitious material is made harder and chemically resistant to termite attack after treatment.  Each of these passages are consistent with the thrust of the specification as a whole that the purpose of the invention is to alter the properties of the cementitious material such that it forms a barrier to termite attack, and this purpose is not achieved by merely filling surface cavities.  Hence I would find that the word “penetrates” should be construed as the curable composition permeating or infiltrating the cementitious material beyond any cracks and voids found on the surface of the cementitious material, and compositions that merely reside on the surface of the cementitious material fall outside the scope of the claim.

  1. I should also note that the opponent has submitted that the word “penetration” is a term widely used in the art to refer to pipes or other similar devices that piercing and passing through concrete slabs and the like. An example of this can be found in the Australian Standard AS3660.1-2000 on page 47.  However the use of the term “penetration” in these instances appears to be a term of the art, referring specifically to these types of installations.  In contrast claim 1 refers to the word “penetrates”, which is used to describe the action of the curable composition on the cementitious material.  I do not think that there is any link between “penetration” as known in the art and the use of the word “penetrates” as found in the specification.

Retained within / Cure within

  1. According to claim 1, the curable composition is applied “such that said composition penetrates into and is retained within the cementitious material”.  Later in claim 1 it is said that the “composition cures within the cementitious material”.  The opponent has submitted that the word “within” indicates that the entirety of the composition penetrates into the cementitious material. 

  2. I can see no basis for this assertion.  The language of the claim doesn’t suggest any restriction on the amount of the composition that was applied to the wall penetrating the cementitious material and being retained within it, except that it must be at least some of the composition penetrating the cementitious material.  Similarly, when “said composition cures within the cementitious material”, the claim only provides a limitation that the parts of the composition which did penetrate the cementitious material actually cures within the cementitious material to provide termite protection.  The correct construction allowing partial penetration also provides effect to claim 7, which refers to a residual film of the composition remaining on the exterior surface of the wall.  If the claims are read together, I cannot accept the opponent’s submissions.

    Novelty

Relevant Law

  1. The test for determining novelty is the well-known “reverse infringement test” as set out by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; (1977) 137 CLR 228 at 235:

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

  1. When considering prior art for novelty purposes, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” as per The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486; (1971) 1A IPR 121 at 138. The level of disclosure required from prior publications was also discussed in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR at 517:

“It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakeable terms.  The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.  Whatever is essential to the invention must be read out of or gleaned from the prior publication.”

  1. At certain times during the hearing the opponent alluded to certain features being inherently disclosed in the prior art documents.  Inherency was discussed in Novozymes A/S v Danisco A/S [2013] FCAFC6, firstly at 107:

    “The appellants relied on the judgment of Black CJ and Lehane J in Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 97 FCR 524, in which their Honours considered the leading authorities on the question of what was required in a prior publication to constitute anticipation, and continued (97 FCR at 548 [67]):

    What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”

  2. Justice Jessup also discussed ‘inevitability’ at 144:

    “That brings me to what was probably the appellants’ main challenge to the primary Judge’s conclusion that the Novo patent did not anticipate Claim 1 of the patent in suit. It was that a skilled addressee, instructed by Example 20 of the Novo patent at the priority date, would inevitably have followed a process which would, had it been done after that date, have amounted to an infringement of Claim 1. If so, Example 20 was anticipatory: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235. If such an outcome would have been inevitable, it would make no difference that the skilled addressee had not been expressly or implicitly instructed to seek it, or even that he or she did not understand what was being done: The General Tire and Rubber Co v The Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486; Lundbeck 177 FCR at 192 [182].”

  3. Also of significance is General Tire (supra) at 485:

    “If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.”

  4. I would therefore come to the position that the authorities conclude that implicit disclosures can result in a claim being anticipated by the prior art, if the prior art provides directions of such a nature such that the outcome is inevitable and results in the infringement of the claim if the claim were taken to be valid.

Particulars

  1. The opponent has cited three documents with regard to novelty, being Australian Patent No. 719812 published on 18 May 2000 (“Kennedy Patent”); International (PCT) Publication No. WO 03/079780 A1, published on 2 October 2003 (“Hannay”); and International (PCT) Publication No. WO 2007/030875 A1, published on 22 March 2007 (“Kennedy Application”).  The opponent has also alleged that the present application lacks novelty because of prior public use of a product “Alterm CemParge” and a similar product “Termortar” before the priority date of 19 June 2009.

Kennedy Patent

  1. The opponent has asserted that claims 1-7 and 9-14 are anticipated by the Kennedy Patent by relying on statements by Mr Kennedy from paragraphs 58 to 79 of the First Kennedy Declaration. 

  1. Claim 1 states that the curable composition “penetrates into and is retained within the cementitious material”.  Page 4 lines 1-3 of the Kennedy Patent discloses that “fissures, cracks or joints are filled or sealed by the settable or curable barrier material referred to above when the curable barrier material is applied to create the continuous flexible penetration resistant barrier, so as to prevent termite or insect passage therethrough.”  Further down on page 4 lines 13-18 the Kennedy Patent discloses that “the inner and top of the brickwork and/or outer faces of the brick foundation may be sealed with a layer of the compound liquid or substance.  This will prevent termites or insects from entering through imperfect mortar between the brick courses, joints or the brick perpends.”

  2. The method of the Kennedy Patent bears some similarities to the present specification in that the invention strives to prevent termite intrusion through the application of a curable material to masonry elements including mortar.  However, besides the reference to the material filling fissures, cracks or joints, there is no further explicit disclosure of the material infiltrating within the substance of the mortar.  As discussed earlier, the filling of fissures, cracks and joints found on the surface of cementitious material does not fall within the scope of “penetrates” in claim 1 as construed.  Furthermore, there is no explicit disclosure of the curable material in the Kennedy patent being retained within the mortar.

  3. A question that must be asked is also whether, in the absence of any explicit disclosures, the properties of cementitious material would be understood to allow penetration of compositions.  In the declaration of Mr Te-Huia Hakopa (“Hakopa Declaration”) which was made in the earlier proceedings for application 2006292026 and introduced as Exhibit AWK-7 to the First Kennedy Declaration here, Mr Hakopa describes at paragraph 27 his use of a product Alterm CemParge:

    “It was apparent to me that, even without wetting the wall, the Alterm CemParge sinks into concrete slabs, bricks and blocks and mortar.  The Alterm CemParge bonds very strongly to these surfaces, which requires the bonding material to partially penetrate the surface and interlock with any roughness (including microscopic roughness) in the surface of the concrete, mortar or bricks/blocks”.

  4. Later at paragraph 45 of his declaration Mr Hakopa states:

    “Mortar and masonry bricks or blocks used to form walls, which might be in the form of clay bricks or aerated concrete blocks, are generally much more porous than the concrete slab or footing.”

  5. These pieces of evidence lead to the inevitable question of whether the application of a curable composition would inevitably penetrate mortar, to which the evidence provided by Mr Hakopa suggests is generally porous.  To answer this question for the purposes of novelty in relation to the Kennedy Patent, I must look at the particular compositions described and their behaviour when applied to a cementitious material such as mortar.  However, no evidence has been presented over the behaviour of the compositions described by the Kennedy Patent and whether such compositions would penetrate mortar.  Without such evidence, I am not satisfied that the application of any of the substances disclosed by the Kennedy Patent would “inevitably” penetrate cementitious material.  Similar considerations apply to whether the compositions of the Kennedy Patent would also be retained within the mortar.

  6. Therefore as there is no disclosure, explicit or implicit, of a curable composition penetrating into or being retained within the cementitious material, claim 1 is novel against Kennedy.  As claim 1 is the only independent claim, each of the appended claims 2-17 are also considered to be novel against the Kennedy Patent.

Hannay

  1. The opponent has asserted that claims 1-7 and 9-15 are anticipated by Hannay. 

  1. Hannay at page 4 line 5 describes the use of a composition including a settable or curable sealant.  The specification then goes on to describe the use of the composition to fill a crack in a concrete slab as shown in Figure 1 and further described on page 5 lines 28-30 to form a flexible, durable barrier to moisture and insects.  Page 5 lines 15-20 also describe the use of the composition in conjunction with a geotextile fabric to form a termite-proof membrane, which will “adhere to the building materials by application of the composition in a liquid form followed by either the prepared membrane or the freshly coated fabric”.

  2. However, Hannay appears to suffer the same deficiencies as the Kennedy Patent in that there is no disclosure of penetration occurring by the composition into cementitious material as defined by claim 1 of the present application.  Once again the only disclosure is of the application of a curable composition to the surfaces of masonry elements and that the composition can fill superficial cracks.  With no clear and unmistakable directions that penetration has occurred or anything to otherwise suggest that the use of the compositions in Hannay would inevitably result in penetration occurring, I find that claim 1 and appended claims 2-17 are novel against Hannay.

Kennedy Application

  1. The opponent has asserted that claims 1-14 are anticipated by the Kennedy Application. 

  1. The Kennedy Application describes a method for inhibiting termite migration by applying a settable composition across the face of a masonry wall to form a visual inspection band.  Figure 10 shows the application of the composition to a retaining wall extending from a slab to a height above finished ground level.  With part of the wall being exposed above finished ground level, I am satisfied that this constitutes an external wall. 

  2. Page 4 lines 17-19 describes the composition as settable in that it can be applied in liquid form and which, upon setting, forms a solid or semi-solid member.  Page 4 lines 19-21 also describes that the composition may be applied ‘hot’ and allowed to ‘set’ upon cooling of the composition in situ, and the compositions also include those which are chemically cured in situ.  Page 4 lines 26-27 states that the “termite resistant sealant which we described below can be used as the curable settable composition”.

  3. There are two key sections in the description which relate to penetration.  The first is found at page 7 line 31 – page 8 line 2, which states that “The sealant may also be absorbed into porous particles, in the same manner as it can be absorbed into mortar”, where the porous particles refer to those found in friable particular material.  The second is found at page 11 lines 15-20, which states in relation to the embodiment in Figure 8:

    “The termite resistant sealant 81 is absorbed into the porous masonry 83 and also the porous mortar course and perpends 84.  The absorption of the termite resistant sealant into the bricks and blocks 83 as well as the mortar 84 provides an improved termite resistant barrier which, in order to be bridged requires the termite to build substantial plasters over the external surface of the wall whereby the plasters are readily visible and can be readily identified.”

  4. Page 4 lines 26-27 states that the “termite resistant sealant which we described below can be used as the curable settable composition”.  Therefore there is a clear disclosure that the settable composition is absorbed into the masonry when applied, and although part of the sealant remains on the outside to form the visual inspection band, there is an enabling disclosure that penetration also occurs.  I would also come to the conclusion that by absorbing the composition, the composition is retained within the mortar as well.

  5. This then leaves the question as to whether the composition cures within the mortar.  As noted earlier one embodiment of the settable composition is applied hot and will set upon cooling.  I am of the opinion if such a composition was applied to mortar hot, then absorbed within the mortar, the composition would slowly lose any residual heat to the surrounding materials.  In this case the composition would then cure within the mortar. 

  6. The applicant has submitted that it is unclear what the properties of the sealant disclosed by the Kennedy Application are, especially in light of the multitude of options listed on page 4 lines 3-12.  However, the other parts of the specification make it clear that the preferred embodiment allows absorption of the composition into mortar.  Figure 8 particularly is stated at page 11 lines 13-14 to be an enlarged view of a visible inspection band provided by the present invention.  Therefore rather than looking at each of the disclosures listed above in isolation, it appears to me that they form a cohesive whole that I regard as clear and unmistakable directions.

  7. Mr Freeman has also stated at paragraph 42 of the Freeman Declaration with reference to section at Page 7 line 31 – page 8 line 2 that, “It is not clear to me whether this indicates that the sealant is merely absorbed into the pores of porous mortar, to effectively fill voids or discontinuities in the surface of the mortar, or whether in fact the sealant penetrates into the cementitious material forming the mortar itself”.  I believe that there is no such ambiguity, through the use of the word “absorb” which conveys more than just filling of cracks and voids on the surface of the cementitious material.

  8. Therefore claim 1 lacks novelty against the Kennedy Application. 

  9. Turning now to the appended claims, I find that the following claims have their features disclosed by the Kennedy Application:

    ·Claim 2: Page 6 line 14.  Render is described as a cement render (and thus a cementitious material) at page 5 line 30, and I am satisfied that the render described at page 6 would also be understood to be a cementitious material.

    ·Claim 3: Figure 10.

    ·Claims 9 and 10: Page 4 lines 22-25.  If the purpose of the sealant is to create a visual inspection band, then it can be inferred that the 75mm as stated is a measurement for the band existing above finished ground level.

    ·Claims 11 and 12: Page 4 lines 13-15.

    ·Claim 14: Page 4 lines 6-10.

  10. Conversely, I do not find that claims 4 (with appended claims 7-8), claims 5-6 and claim 13 are disclosed.  There is no indication within the Kennedy Application on how much of the composition is absorbed into mortar when applied, and the specification also appears to suggest that there must be enough of the composition remaining on the surface of the masonry to allow a visual inspection band to be formed.  Similarly there is no indication at all on the degree of penetration or absorption of the composition.  Therefore claims 4-8 are novel.

  11. Finally with regard to claim 13, the opponent has submitted that it would be inherent that the composition when cured would cause the cementitious material to become harder as it would be illogical to make the mortar more brittle.  Although I am prepared to accept that the composition cures within the cementitious material, I have no evidence to suggest that the compositions used in the Kennedy Application act upon the cementitious material in any way to alter the hardness of the cementitious material.  While it is possible that the cementitious material could become harder upon the application of the sealant, it is also possible that the hardness of cementitious material remains the same with the absorbed particles of composition curing independently of the particles of the cementitious material.  Without any evidence to the contrary, I cannot find that the composition, when cured, hardens the cementitious material.  Therefore claim 13 is also novel.

  12. Therefore to summarise, claims 1-3, 9-12 and 14 lack novelty against the Kennedy Application.

Prior Use

  1. The definition of “prior art base” provided in Schedule 1 of the Patents Act includes “information made publicly available through doing an act, whether in or out of the patent area”. The concept of information being made “publicly available” was explored by the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 and summarised at [124]:

    ·     The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)

    ·     It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).

    ·     The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 (Merck) at [98]–[103]).

    ·     In order to be "available", information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).

    ·     In order to be "available", information said to destroy novelty must "enable" the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway OysterCylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581–582).

  1. The level of proof required was discussed by Besanko J in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]-[200]:

    “The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.

    The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”

  1. Besanko J continued at [202]:

    “In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.”

  1. To establish prior use the opponent has relied upon declarations made by Mr Hakopa and Mr Freeman from the earlier proceedings.  Exhibit AWK-8 to the First Kennedy Declaration in the current proceedings is the first declaration made by Mr Freeman in those earlier proceedings (hereinafter the “First Freeman Declaration”) and all of the exhibits to this First Freeman Declaration.  Exhibit AWK-9 to the First Kennedy Declaration in the current proceedings it the second declaration made by Mr Freeman in those earlier proceedings (hereinafter the “Second Freeman Declaration”) and all of the exhibits to this Second Freeman Declaration. 

  2. A significant part of the exhibits attached to the Hakopa Declaration, and First and Second Freeman Declarations have been separately exhibited by Mr Kennedy in the First Kennedy Declaration.  The evidence includes:

·Photographs taken at various work sites of alleged use of the products Termortar and Alterm CemParge (Exhibit TTH-6 to the Hakopa Declaration, Exhibits CF-7 and CF-12 to the First Freeman Declaration and Exhibit CF-17 to the Second Freeman Declaration; AWK-12 and AWK-15 of the First Kennedy Declaration)

·Certificates of Installation (Exhibit TTH-7 to the Hakopa Declaration and Exhibits CF-10 and CF-13 to the First Freeman Declaration; AWK-11 of the First Kennedy Declaration)

·Alterm Brochure (Exhibits CF-8 to the First Freeman Declaration and CF-19 to the Second Freeman Declaration)

·Alterm Register of installations (Exhibit CF-9 to the First Freeman Declaration; AWK-13 of the First Kennedy Declaration)

·Tax Invoices (Exhibits CF-11 to the First Freeman Declaration and CF-18 to the Second Freeman Declaration; AWK-14 of the First Kennedy Declaration)

·CSIRO Report on the resistance of a cementitious parging material to attack by subterranean termites (Exhibit CF-14 to the Second Freeman Declaration; AWK-16 of the First Kennedy Declaration)

  1. To establish prior use the information must disclose all of the essential features of the invention.  A key consideration is whether the evidence provided establishes that the use of Alterm CemParge or Termortar before the priority date involved penetration of the product into cementitious material, if the product was retained in that cementitious material and if the product also cured within that cementitious material.  The only evidence relating to penetration is that provided in paragraphs 27 and 45 of the Hakopa Declaration (as discussed above with relation to the Kennedy Patent), as well paragraph 22 of the First Freeman Declaration:

    “The two components of CemParge are basically a high strength, shrinkage compensated fine grade cementitious powder component and a co-polymer methocel liquid component.  The combination of the fine grind powder and the co-polymer liquid allow the Alterm CemParge to penetrate deep into the surface of the concrete, masonry, mortar and the like.”

  2. However, no other evidence has been provided which can corroborate the alleged behaviour of the Alterm CemParge in penetrating mortar, let alone whether the Alterm CemParge cures and is retained within the mortar.  The photographs show the final result of the application of these products but do not suggest anything about the underlying interaction between the compositions and the cementitious materials to indicate that penetration, retention or curing within the cementitious material has occurred.  The Certificates of Installation only provide a top down diagram of the installation site and provide no disclosure of these features as claimed.  The Register and Tax Invoices only provide evidence that some work was done, but not of the nature of the work in a way that these features are disclosed.  Similar reasoning applies to the Alterm Brochure and CSIRO Report, which are more directed towards the termite resistant properties of Alterm CemParge. 

  3. The lack of supporting evidence is not to doubt the veracity of the evidence provided by Mr Hakopa or Mr Freeman in the paragraph above, but prior use must be strictly proved.  Without further corroborating evidence that these compositions penetrate, are retained within and also cure within cementitious material, I cannot come to the conclusion that high evidentiary burden placed on the opponent has been discharged, and I cannot find that the current claims are invalidated through prior use.

    Inventive Step

Relevant Law

  1. Section 7 of the Patents Act states that:

    “(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

    (3) The information for the purposes of subsection (2) is:

    (a) any single piece of prior art information; or
    (b) a combination of any 2 or more pieces of prior art information;

    being information that the skilled person... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”

  1. Common general knowledge was discussed in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 292 per Aickin J:

    “The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.

  2. Approaches to inventive step have been discussed numerously in case law.  In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 286, Aickin J stated:

    "The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."

  3. In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 56 IPR 129 at 142-143 the High Court further explored the above approach:

    "That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:

    `Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'

    That approach should be accepted."

  4. The word “ascertained” in section 7(3) means “discovered or found out” as per Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 at 132. The ascertainable prior art will also depend upon the skilled addressee. In Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 at 32-33 the Full Court said that in high technology areas it would usually be assumed that the relevant skilled person would be familiar with major professional or academic journals and could reasonably be expected to consult them, and in these instances no evidence would be required, however where the identification of the relevant prior art is in dispute “it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office”.

Prior art base

  1. In the decision issued for the 2006292026 application, the delegate in that instance made the following determination in paragraph 131 of the skilled addressee for the purposes of those proceedings:

    “I therefore consider that in addition to termite inspectors, the skilled person would also include pest controllers in carrying out termite barrier installations.”

  2. The evidence relied upon by the delegate to determine whether this skilled person would ascertain patent documents is the same evidence that has been provided to me.  The first is that in his declaration in the earlier proceedings (now exhibited as GJG-1 to the Gurr Declaration), Mr Kennedy stated at paragraph 93 that “In my opinion, no pest controllers in Australia search patent documents”.  Conversely, Mr Freeman has previously stated in the Second Freeman Declaration at paragraph 20:

    “I have personally conducted many patent searches when considering the development of new termite barrier solutions, including prior to 5 September 2005.  I have particularly searched for Australian patents, and various international patents, including US patents and international (PCT) publications using electronically available databases, such as the AusPat database of the Australian Patent Office, the USPTO patents database and general internet tools, including Google.  One example of when I conducted patent searches was during development of a termite proof silicone, known as Alterm Termite Proof Silicone, (No More Solder) for bonding the Alterm Barrier and forming termite proof control and construction joints.  I carried out this development in conjunction with Dow Corning in 2003 and 2004.  During the early stages of this development I personally conducted various searches of the type discussed above.  Dow Corning carrier out their own further searches in 2004.”

  3. The delegate then consulted Emperor Sports (supra) and was of the opinion that a skilled person who installs or inspects termite barriers could be reasonably expected to ascertain patent literature such as the Kennedy Patent or Hannay without evidence showing otherwise. Then with reference to the statements of Mr Freeman above, and noting that his was the only evidence supportive of the notion that a skilled person would ascertain the patent documents, the delegate said at paragraph 145:

    “His evidence unfortunately refers to only one specific instance where a search was undertaken by him and this appears to have occurred as early as 2003 “in conjunction with” an independent party. Even here he does not confirm whether the search was conducted of his own volition or only under the direction of the independent party (in this case, Dow Corning). No other examples are mentioned by him to suggest a regular practice on his part of acquiring knowledge of the existence of patent material relevant to the art of termite barrier systems. It is notable in this respect that Mr Freeman does not claim that the Kennedy patent or the Hannay application was, as a result of any searching practices he had routinely adopted, known to him at the relevant time.”

  4. On this basis the delegate at paragraph 146 then established that the evidence was:

    “…insufficient to confirm that the skilled person could be reasonably expected to have consulted the patent literature and thereby ascertained the existence of the Kennedy patent and the Hannay application. Consequently, their content cannot be considered as prior art information for the purposes of section 7(3).”

  5. I must once again reiterate at this point that I am not bound by the decision of the delegate in the previous proceedings.  Nevertheless, considering that the delegate came to his conclusion on the basis of the same evidence I find his views persuasive.  However, there is a point of difference between these proceedings and the previous one, namely that both parties have included those people who design termite barriers in their submissions for the composition of the skilled addressee.  This type of person was not considered by the previous delegate who only considered the skilled persons to include those who would install or inspect termite barriers.

  6. It then seems prudent for me to consider whether determining whether a skilled person would ascertain patent literature would require evidentiary support.  Without clear evidence that designing of termite solutions falls into the “high technology” bracket, and with the parties in dispute over whether the skilled person would be able to ascertain patent literature, it seems clear to me that in following Emperor Sports I must either rely on evidence or use my own knowledge and expertise.  I do not consider myself to be in a position to come to a definitive conclusion relying solely on my own knowledge and experience, and thus I believe the correct approach would be to fall back on the evidence provided.

  7. However, no further evidence has been provided to me over and above what was presented in the previous proceedings.  Although declarations were filed by Mr Kennedy and Mr Freeman in the present proceedings, neither has provided any additional comment on this matter.  I am therefore left to consider the statements of Mr Freeman regarding his activities in searching for patent literature, and I am in agreement with the delegate that this evidence is insufficient to establish that the skilled addressee, even when including those persons who would design termite solutions, would be reasonably expected to have consulted the patent literature and ascertained the Kennedy Patent, Hannay or the Kennedy Application.

Common General Knowledge

  1. Despite the absence of citations, the claims must still be tested for obviousness against the common general knowledge in the art as it existed at the time of priority.

  2. The opponent has presented Termite Management Standard AS3660.1-2000 (the “Standard”) provided as Exhibit AWK-5 to the First Kennedy Declaration as evidence.  I agree with the notion that a skilled addressee would have knowledge of the Standard and be aware of such practices and useful information disclosed by the Standard as it applies to the industry as a whole and represents minimum expected levels for termite management work in Australia, and thus the Standard formed part of the common general knowledge in the art at the priority date.

  3. I am also in agreement with the opponent that aspects of termite behaviour such as termites being generally subterranean creatures, building tunnels or plasters to avoid sunlight and gaining access to building structures through masonry or mortar joints are part of the common general knowledge in the art.  I also accept that physical and chemical barriers as described in the specification of the opposed application as well as the Standard were also known.

  4. However, there is no evidence before me that suggests that the use of curable compositions which would penetrate into, are retained within and cure within mortar or other cementitious material was known in the common general knowledge of the art at the time of priority.  The opponent has submitted that curable compositions such as waterproofing and paint compositions provide were known to provide some degree of protection, but as discussed earlier when construing the claims I do not accept that a skilled person would not regard these techniques as being viable termite protection solutions.  Furthermore the only evidence put forward to me regarding penetration resides in the statements made by Mr Hakopa and Mr Freeman as discussed above with regard to prior use.  There is nothing to suggest to me to me that these alleged uses were widely used within the industry or otherwise form part of the common general knowledge in the art.

  5. Therefore with no suggestion or direction that a skilled person would be led as a matter of course to try to develop or use a curable composition that would penetrate into, be retained within and cure within cementitious material to then protect the cementitious material, I find that all of claims 1-17 involve an inventive step.

    Section 40: Full Description

  6. Section 40(2)(a) of the Patents Act requires that the invention be described fully, with the appropriate test set out in the High Court decision of Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 at [25]:

    “The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?”

  7. The opponent has argued that there is no description or identification of any specific curable termite resistant composition, as the specification describes some curable compositions, but the breadth of claim 1 includes within its scope a range of other compositions including paint and waterproofing compositions which have not been disclosed.  The applicant has argued that the test does not require the claim to be enabled over its full scope, as long as the description enables the addressee to produce “something” within each claim.

  1. I am in agreement with the applicant.  There is no requirement for enablement over the full scope of the claim (see also Photocure v Queen's University 64 IPR 314 at 107 and 149; Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 at 77). Therefore sufficiency of description is satisfied as the specification discloses appropriate curable compositions which can be used (for example at page 7 of the description).

  2. The opponent has provided submissions at the hearing that there is no description of termite proofing the structure, as the method only forces termites to find a higher entry point and does not render the building structure “termite proof” according to the construction put forward by the opponent.  I have already discussed my construction of “termite proof” above, and I believe that the construction I have followed of preventing termite attack up to the expected height for termite inspection means that termite proofing has been described fully in the present specification.

    Section 40: Clarity and Succinctness

  3. A claim will lack clarity if a third party cannot ascertain whether an act would fall within the scope of the claim (Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 per Stephen J. at 60). However, a claim does not lack clarity simply because it uses inexact language or is difficult to construe, as long as it provides a “workable standard” suitable to the intended use (Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 at [46]; (1980) 144 CLR 253 at 274).

  1. The opponent has alleged that claims 1, 4-8 and 13 lack clarity and succinctness, however after reviewing the submissions made by the opponent I believe that each of the allegations made by the opponent relate only to clarity rather than succinctness.  I also note that a significant portion of the submissions made by the opponent relate to matters of utility rather than clarity.  Although not relevant to the present ground of opposition, I have discussed these matters with respect to claim 1, and the reasoning there similarly applies to the other claims. 

Claim 1

  1. Claim 1 recites that the curable composition is applied “to the cementitious material throughout a lower region of the exterior surface extending from the foundation to a predetermined height above the finished ground level…”.  The opponent has submitted that the word “throughout” is not clear.

  2. A skilled person would understand that for a termite barrier to be effective it would need to provide sufficient coverage to all areas underground and then extending at least partway up the wall.  If any areas or gaps are not treated (or insufficiently treated) then they would undermine the protection system and leave the structure vulnerable to termite attack.  So therefore the skilled person would recognise that the application of the composition “throughout” the area as claimed in claim 1 would be according to a thickness and amount that would allow the structure to be protected.  On that basis, I believe that the feature is clear.

  1. The opponent makes a further submission stating that it is not clear how allowing the curable composition to cure within the cementitious material protects the cementitious material against intrusion by termites.  To me this submission does not appear to be one of clarity but perhaps utility, and this submission fails as the specification clearly discloses the way that the invention works by allowing the composition to penetrate the cementitious material and cure within it, rendering the cementitious material physically or chemically resistant to attack by termites.  In any case, the scope of these features is clear.

  2. The opponent made one more submission with regard to claim 1 which was that “given the difference in meaning between proofing and protecting, it is not at all clear what features of claim 1 result in the termite proofing of the building structure”.  This bears many similarities to the submission above that this does not appear to be a question of clarity but more of utility.  Once again, using my construction of “termite proofing” I believe that the specification as well as the features of claim 1 readily disclose a method allowing for termite proofing of a building structure to the satisfaction of a termite inspector. 

  3. For the reasons above, claim 1 is clear.

Claim 4

  1. The opponent has alleged that the feature of “a majority” of the composition penetrating into the cementitious material in claim 4 is not clear because there claim 1 requires all of the composition to penetrate into the cementitious material in claim 1.  However, I have dismissed the opponent’s construction above when discussing the terms “retained within” and “cure within”.  I believe there is no ambiguity in using the word “majority” as this refers to a simple comparison of composition penetrating the cementitious material to that which is residing on or above the surface of the material.  Therefore claim 4 is clear.

Claim 5-6

100. Claims 5 and 6 refer to the penetration of the composition at least 3mm or 5mm respectively into the cementitious material.  The opponent submits that it is not clear how this could be achieved or what properties of the cementitious material allow this to happen.  Like with claim 1, this issue does not appear to be related to clarity, and no clarity issue exists as the scope of these claims are clear. 

Claim 7

101. Claim 7 recites that “a residual film of said composition initially remains on the exterior surface following application, said residual film breaking down under the action of ultraviolet radiation with a period of six months”.  The opponent submits that there is nothing in the specification to indicate how this breaking down is achieved, particularly in the time frame of 6 months.  The opponent also submits that it is not clear how the residual film located below the finished ground surface is capable of breaking down under the action of ultraviolet radiation.

102. Claim 1 states that the “exterior surface” is that which extends from the foundation to a predetermined height above finished ground level.  Claim 7 then goes to say that “a residual film” remains on the exterior surface following application.  Claim 7 continues to say, “said residual film breaking down under the action of ultraviolet radiation within a period of six months”.

103. A skilled person would immediately recognise that any composition remaining on the surface of the exterior surface under finished ground level would not be likely to be exposed to UV radiation.  Therefore the residual film referred to in claim 7 should be construed as only referring to the residual film left on the surface above finished ground level, which would then be subject to breaking down under UV radiation.  Therefore the scope of the claim is clear, and thus claim 7 is clear.

Claim 8

104. Claim 8 defines that the “residual film is at least substantially clear”.  A person skilled in the art would recognise that the word “substantially” then means that complete transparency is not required, as long as the composition leaves a residual film that is mainly transparent such that the underlying cementitious material (and presumably masonry elements) can be seen.  Therefore claim 8 is clear.

Claim 13

105. The opponent has submitted that “It is not at all clear how the cementitious material is hardened by the composition when cured”.  Like with claim 1, this issue does not appear to be related to clarity, and no clarity issue exists as the scope claim 14 is clear.

Summary

106. All of the claims are clear.

Section 40: Fair Basis

107. The test for fair basis is taken from Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69]:

“… 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.”

108. The application of this test calls for a comparison of the claims with the matter described in the specification (Lockwood v Doric supra at [77]).

109. The opponent has provided submissions that claims 1, 4 and 7 are not fairly based.  These allegations are as follows:

·Claim 1: there is no real and reasonably clear disclosure in the opposed application of a curable composition penetrating into the cementitious material.

·Claim 4: there is no real and reasonably clear disclosure in the opposed application of only a majority of a composition penetrating into the cementitious material.

·Claim 7: there is no real and reasonably clear disclosure in the opposed application of the composition remaining on the exterior surface following application, nor a real and reasonably clear disclosure of a residual film breaking down under the action of ultraviolet radiation within a period of six months.

110. The applicant has submitted that the features of each of these claims are disclosed within the specification at page 1 lines 30-31, page 4 lines 11-12 (in relation to claim 1); page 2 lines 6-7 and page 6 lines 17-18 (in relation to claim 4); and page 2 lines 10-13 and page 6 lines 18-22 (in relation to claim 7).  Each of the above passages disclose the features in question for their respective claims, and I am of the opinion that each of the claims above are fairly based.

111. The opponent has also provided an additional submission regarding the differences between “termite proofing” and “protecting” the cementitious material against intrusion by termites.  I have dealt with this difference when construing the features of claim 1, and do not wish to revisit my construction here except to say that I can see no fair basis issue arising from my construction.

Conclusion

112. The opposition is successful.  Claims 1-3, 9-12 and 14 are considered to lack novelty. 

113. As the specification clearly contains patentable subject matter, I allow the applicant 2 months from the date of this decision in which to propose suitable amendments to overcome the above findings.

Costs

114. It is usually the case that costs follow the event.  I see no reason to vary that usual approach on this occasion.  As the opposition has been successful I therefore award costs against the applicant.

Matthew Lee
Delegate of the Commissioner of Patents

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