Marissa Pty Ltd v EPM Concrete Pty Ltd

[1991] APO 62

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. 579968 in the name of MARISSA PTY LTD and Opposition thereto under Section 59 of the 1952 Act by EPM CONCRETE PTY LTD

Background

Application number 579968, entitled "Beam/flooring system", claims priority from application number PI 3126 which was lodged on 15 July 1987 and followed by a complete-after-provisional number 18908/88 on 8 July 1988.  The Office advertised acceptance of the application on 15 December 1988.  Subsequently, the original applicant/inventor, MOHAMMAD HOSSEIN SHAMSAI, assigned the application to MARISSA.

EPM opposed the grant of a patent on the application under section 59 of the 1952 Act.  After the applicant and opponent completed their evidence the Office set the matter down for hearing in Canberra.

At the hearing Mr Grant Adams, patent attorney of Grant Adams & Company, represented the applicant and Mr Paul Taylor, patent attorney of Arthur S. Cave & Co, represented the opponent.  Also present were the inventor, Mr Mohammad Shamsai, and Mr Ian Miller, an expert witness and declarant on behalf of the applicant.

The notice of opposition listed the grounds of prior publication, manner of manufacture, novelty, obviousness, prior use and non-compliance with section 40.  Those grounds correspond to the grounds specified in paragraphs (e) to (i) of sub-section 59(1) of the 1952 Act.

Specification

The specification commences thus (page 2):

"THIS INVENTION relates to improvements in beam/flooring systems.

Until now, the use of hollow-core prestressed concrete slabs was limited to one-way systems in building construction.  Concrete or steel beams, or concrete block or brick walls were used in conjunction with hollow-core slabs as flooring.

It is an object of the present invention to show how hollow-core slabs can be used as structural beams to provide a two-way system.

It is a preferred object of the present invention to show how a single such slab can be modified to suit the specific requirements of the builder.

It is a further preferred object of the present invention to minimise the need for on-site formwork and props.

Other preferred objects of the present invention will become apparent from the following description."

The specification then refers to specific features of two aspects of the invention that correspond to claims 1 and 7, followed by preferred features and several embodiments described with reference to 14 accompanying figures.

The claims of the accepted specification read as follows:

"1.  A prestressed concrete hollow-core building beam unit, usuable in a two-way building system, arranged to be supported by two or more building supports, wherein the beam unit includes;

floor panel support beams along at least one side of the beam unit arranged to support at least one floor panel extendable transversely from the beam unit;

a plurality of hollow-cores extending longitudinally within the beam unit;

at least one portion of at least one of the cores is open to the top surface of the beam unit; and

building reinforcement material is secured within the open portion or portions of the beam unit and extends above the top surface of the beam unit to be received in and bonded to a layer of cement or like building material laid over the beam unit and any floor panels supported thereby.

1. A beam unit according to Claim 1 wherein:

the open portions of the cores are provided at or adjacent both ends of the beam unit.

1. A beam unit according to Claim 1 or Claim 2 wherein:

the open portions of the cores are provided along the full length of the outer cores of the beam unit.

1. A beam unit according to any one of Claims 1 to 3 wherein:

the reinforcing material includes one or more ligatures secured in the open portions by back-filling the cores with concrete.

1. A two-way building construction system including:

a plurality of supporting columns arranged in a predetermined pattern;

a plurality of beam units as claimed in any one of Claims 1 to 4 supported on respective pairs of the columns; and

a plurality of floor panels extending transversely to, and supported by respective pairs of parallel beam units.

1. A system according to Claim 5 wherein:

a layer of concrete is laid over the beam units and floor panels, which provide in-situ formwork, to complete the floor slab.

1. A method of two-way building construction including the steps of:

casting a plurality of prestressed concrete building beam units, each beam unit having floor panel support means along at least one side of the beam unit and having at least one hollow-core extending longitudinally within the beam unit;

opening at least one portion of at least one of the hollow-cores to the top surface of each beam unit;

securing building reinforcement material within the open portion or portions of each beam unit, the material extending above the top surface of the beam unit;

supporting each beam unit on one or more supports;

supporting a plurality of floor panels by the beam units, the floor panels extending transversely to the beam units; and

laying a layer of concrete or like building material over the beam units and the floor panels, the building reinforcement material being received in and bonded to the layer of concrete."

There is one difference between the second aspect of the invention as described on page 3 and the corresponding claim 7, viz. page 3 line 4 reads "... a method of building construction ..." whereas claim 7 specifies "a method of two-way building construction".

The preferred features that followed the description of the two aspects are described thus (pages 3 and 3a):

"Preferably the open portions of the cores are provided at or adjacent both ends of the beam unit.  Preferably the cores are opened shortly after the casting of the beam unit, while the concrete is still green.

Preferably the reinforcing material includes one or more ligatures which are secured in the open portions of the hollow-cores by back-filling the open portions with concrete, the concrete preferably being compacted.

Preferably flooring slabs are arranged to span between, and be supported by, a pair of the beam units arranged in parallel.  The ends of the flooring slabs may be provided with integral flange members to overlie, or be engaged in sockets along, the sides of the beam units or the ends of the flooring slabs may be provided with steel support flanges to overlie or engage the sides of the beam units."

Finally, the penultimate paragraph of the description reads as follows (page 7 lines 29-33):

"It will be readily apparent to the skilled addressee that the present invention provides a building construction system where the beam unit provides a two-way system and acts as a structural entity both before and after the floor slab is completed."

Section 40

At the hearing Mr Taylor raised a number of points concerning non-compliance with section 40.  First he submitted that the claims did not define the "alleged product" in that the beam unit is not claimed in such a way as to restrict its use to a two-way building construction system.  (Mr Adams had asserted that the invention is a two-way system).  Mr Taylor said that claim 1 merely defines a beam unit (characterised by certain features) for use in a two-way system.  I agree with Mr Taylor on this point.  Claim 1 defines "a prestressed concrete hollow-core building beam unit".  The unit is "usuable", i.e. capable of being used, in a two-way building system.  The unit is "arranged to be supported" by building supports.  I cannot find here any limitation that can be imputed by the phrase "arranged to be supported" except that the unit must be capable of being so supported.

The claim further defines the unit as including floor panel support means (I think that the term "support beams" in the claim is an error - I will discuss this aspect later) "arranged to support" floor panel(s) ...  Again I interpret this to mean that the support means whatever they are must be arranged so that they are capable of supporting a floor panel.

The rest of claim 1, and claims 2-4, define specific features of the beam unit itself but there is nothing that restricts its use to a two-way system.  It is not until claim 5 that such system is defined and claimed.

I therefore find that contrary to Mr Adams assertion claims 1-4 do not claim a two-way system; they merely claim a beam unit suitable for such a system.

The second main point of Mr Taylor's submission concerns the definition of a two-way system.  He agreed with the definition provided by Professor O'Connor in his declaration that forms part of the evidence in answer.  At the hearing Mr Miller, on behalf of the applicant, also agreed with the definition.  The paragraph of Professor O'Connor's declaration that contains the definition reads thus:

"The phrase "two-way system", which is essential to the invention, means that floor loads can be taken to a rectangularly spaced grid of columns by a floor slab spanning in one direction, and supported by beams in the direction at right angles, these spanning between the columns.  There are, therefore, two structural components in the system - the floor in one direction and the beams at right angles; it is then a two-way system."

Mr Taylor submitted that there is a conflict between the claims and that definition of two-way system.  He said that claim 1 although referring to a two-way system merely mentions "arranged to support at least one floor panel extendable transversely from the beam unit".  Such an arrangement falls short of a two-way system and is similar to cantilevers.  I do not think this to be a serious problem with the claim which after all defines a beam unit suitable for use in a two-way system.  He then referred to claim 7 in comparison with claim 1 where each beam unit is supported on one or more supports (claim 7) or by two or more building supports (claim 1).  I agree with Mr Taylor on this point regarding claim 7 which in my opinion is confusing when it refers to supporting each beam unit on one or more supports.  I will direct the applicant to amend claim 7 in order to remove this confusion.

The third main point of Mr Taylor's submission concerns the meaning of the feature "floor panel support beams along at least one side of the beam unit" as defined in claim 1.  I think that the applicant intended to say "means', not "beams".  In either case I am curious about what exactly the specification describes that can correspond to this feature.  Looking at the description and the drawings as a whole I find that the floor panels are supported on the top edges of the beam either directly or via steel support flanges which are connected to the ends of the floor panels.  Also page 3a mentions, although this is not illustrated, the possibility of "sockets" being provides along the  sides of the beam.  I also note that claim 7 uses, and incidentally all of the claims of the corresponding US patent specification use, the term "support means".  (I will say more about the US specification later).  I will assume therefore that the term "beams" in claim 1 is an error and the correct term is "means" which I interpret to mean, in its broadest scope, the top edges or side(s) of the beam unit.  However, I will direct the applicant to amend claim 1 (and the corresponding statement on page 2 line 25) as the term "support beams" causes some ambiguity.

Next, Mr Taylor submitted that it is not clear how many cores there are and whether in claim 1 all the cores are wholly opened.  In particular in light of claim 3 if there were two cores and both of them are open along the full length then what we have is what is referred to as a "W" beam, i.e. a beam with two channels.  He said claim 7 specifies "at least one hollow-core" and if that core was open then what we have is a "U" beam.  I do not agree with this interpretation of claims 1 and 3.  Claim 1 specifies "hollow-core building beam unit" with "a plurality of hollow cores".  Therefore the unit must have some hollow cores in order to qualify as "a hollow-core" unit.  I interpret "at least one portion of at least one of the cores is open to the top" to mean one or more portions of one or more of the cores but there must be left some portion(s) as hollow core(s).  Thus in claim 2 "the open portions of the cores are provided at" both ends, i.e. the portions between the ends are still in the form of hollow-cores.  Also in claim 3 the implication is that there are portions of hollow-core(s) remaining (e.g. inner core(s) and/or portions of the outer cores) provided that there are open portions along the full length of the outer cores.  It may be within the scope of claim 3 to have the outer cores opened along the full length but, because the claim refers to the same hollow-core unit of claim 1 there must be in this case one or more inner hollow-cores.  Indeed the embodiment described on the bottom of page 5 of the specification with reference to figure 6 of the drawings shows 5 cores of which "the outer cores 16a may be opened for their full length, the intermediate cores 16b for e.g. one quarter of their full length and the central core 16c" for less than the open portions of the intermediate cores.  (Actually the last sentence of page 5 stops at "16c" and is therefore incomplete but figure 3 shows the central core as I described it above.)

With regard to claim 7, I agree with Mr Taylor that the language of the claim permits a much broader construction, and therefore the claim is not fairly based on what has been disclosed in the specification.  The claim refers to "building beam units ... having at least one hollow-core ...; opening at least one portion of at least one of the hollow-cores".  If each of the units had one or two hollow-core(s) and we opened the cores along their full length we would end up with a "U" or "W" shell beam with open channel(s) and without any hollow-cores.  Thus on this point the difference between claim 7 and claims 1-3 resides in the fact that claim 7 allows for one core (to start with) instead of being restricted to a plurality of cores and the units do not have to end up as hollow-core units.  There is no basis in the specification for units as defined in claim 7 and hence the claim does not define the invention and is not fairly based.  (Incidentally, the corresponding method claim (claim 10) of the corresponding US patent specifies "a plurality of hollow cores").  I will direct the applicant to amend claim 7 in order to overcome these deficiencies.

Mr Taylor then submitted that it is not clear how the reinforcement material is secured within the open portions.  He said that since claim 4 defines "secured ... by back filling the cores with concrete", the expression "secured" in claim 1 must have a broader meaning which meaning is indefinite.  I think it would be clear to a person skilled in the art that the reinforcement could be secured by any appropriate known means (I can mention ties and welds as examples of such means).  The invention is not directed to the means of securing the reinforcement within the open portions of the cores.

Next, Mr Taylor submitted that it is not clear when the portions of the holow-cores are opened and when the reinforcement material is secured therein.  I agree that the specification permits opening of portions of the cores shortly after the casting of the beam unit while the concrete is still green (this is the preferred embodiment) or in any other way that the skilled reader comprehends e.g. breaking the top flange on site.  In the former case, securing the reinforcement material could be done at the manufacturer's premises or at the building site.  I do not find it objectionable that the claims do not specify either option, providing that other patentability criteria are complied with.  While on this point I must say that I am assuming, in light of the specification as a whole and in view of the fact that prestressed concrete hollow-core slabs are normally pre-cast, that the unit claimed is a pre-cast unit.  Opening of portions of the cores could thus take place either as a step in the manufacture of the pre-cast unit while the concrete is still green or as a separate step by breaking the top flange.

Finally, Mr Taylor submitted that the claims do not achieve any of the specified objectives.  I do not agree on this point.  Other than the section 40 points discussed above in relation to claims 1 and 7, the claims show how hollow-core slabs can be used as structural beams to provide a two-way system and how a slab can be modified to suit different requirements e.g. selecting the number, location and extent of the open portions and reinforcement.  I think these and other objects would be self evident to a person skilled in the art.

Whilst on the subject of the specification itself, I note that:

-figure 12 does not have the reference numerals ascribed to it at page 7 of the description,

-on page 6 the reference numeral 19 is used twice to denote concrete fill (line 3) and reinforcing steel (line 17).  (The latter reference appears to be the correct one.)

Summary of the Features of Claim 1

In the last few pages I have interpreted some parts of some of the claims.  It is convenient now to list the features of the invention as claimed in claim 1 as I understand them.

A.Prestressed concrete hollow-core building beam unit (suitable for use in a two-way system, can be supported by two or more building supports and can support at least one floor panel in the way I described above).

B.The beam unit includes:

(i)a plurality of longitudinal cores,

(ii)one or more portion(s) of one or more of the cores is open to the top surface of the unit,

(iii)building reinforcement material secured within the open portion(s), and

(iv)the material extends above the top surface of the unit (the rest of the claim is non-limiting).

Priority Date

Mr Taylor drew attention to the Mond Nickel rules (Mond Nickel's Application (1956) RPC 189) and submitted that the disclosure of the provisional specification does not support the claims of the complete specification. He pointed out that while the provisional does show hollow core slabs as structural beam units and mentions a two way system, it is wholly silent as to the essential features that at least a portion of the core(s) is open to the top surface with reinforcement material being secured therein and extending above the top surface of the beam unit. I agree with this submission. In my opinion the complete specification describes and claims specific means whereby the desired result is to be achieved, whereas the provisional discloses no more than the desired result or idea. I find therefore that the priority date of all the claims is the date of lodgement of the complete specification, i.e. 8 July 1988.

Evidence-in-Support

This evidence comprises declarations and exhibits by Brian Stevens, Wolfgang Ernst Merretz and Geoffrey Charles Verge.  They have extensive relevant experience in concrete building construction.

Brian Stevens declares that he is a civil engineer, formerly with EPM, now contracts Manager with Rescrete Industries.  He believes "that the invention as claimed in all claims ... is not novel and is obvious in light of knowledge in the concrete building industry in Australia at the priority date of the claims".  Paragraph 3 of his declaration provides the following general discussion on ways of connecting precast concrete units:

"Concrete is cast on and into recesses and voids in the assembled units to unify them into a structure.  It is common to have reinforcing projecting from the precast units to bond into the in-situ concrete.

Additional reinforcing is always placed on site in the in-situ concrete to transfer forces between individual members.  This reinforcing is commonly used by the designer to increase the load capacity (such as in bending or shear) of the composite member.

If the designer wishes to increase the bending capacity of the member then open channels must be provided in the precast unit to allow additional reinforcing bars to be placed near the bottom of the unit.  If shear capacity is to be increased then vertical reinforcing (ligatures) is placed in such openings.

By its nature, and as required by the Australian Concrete Structures Code, this reinforcing extends from near the bottom of the unit to near to the top of the added in-situ concrete in order to intersect diagonal, load induced, cracks in the concrete.

The subsequently placed in-situ concrete bonds the additional reinforcement and the reinforced or prestressed precast unit into an integral structural member."

I note that paragraph 3 does not specifically clearly mention two-way systems or feature B (iv).  Mr Adams submitted that paragraph 3 describes a one way system (where the precast slabs span in one direction only and substantially all the load is carried also in one direction) which is admitted to be prior art.

Paragraph 4.1 lists features of claim 1 and states that they "are well known and have been used in precast concrete construction in Australia before the priority date of the claim".  It is then stated that "It has been known for many years to support floor planks (both solid and hollow core planks) by means of solid beam units.  It has also been known to support floor planks by means of precast open channel beams".  Mr Stevens cited as an example of such construction a brochure of Firth Stresscrete entitled "Shell Beams" which he said was "available in Australia shortly after publication in October 1985".  Exhibit BS1 (a copy of four pages of the brochure) shows precast open channel prestressed reinforced "U" beams supporting precast slabs on the edges of the "U".  The composite cross-section shows the completion of the structure by placing reinforcing cage in the open channel (extending vertically above the top surface of the beam) and bonding the precast slabs with in-situ concrete that fills the channel and extends to provide a unitary layer covering the joint and the slabs.  There is no disclosure of any hollow-core units.

Mr Stevens then stated the following:

"Whilst it has been known to utilise such open channel beam units as well as solid units it is my opinion that the use of hollow core beam units is an obvious design step.  In order for hollow core beam units to be utilised it would be necessary for at least one portion of one of the cores to be open to the top.

Whilst the unreinforced hollow core plank can sustain the induced shear loads when used as a floor member, the additional loads when using a portion of a beam to support such floor planks can easily exceed the capacity of the plain concrete of the hollow core section.

The rules for determining additional reinforcing to provide additional load capacity as set out in the structures concrete codes such as AS1481 1974.  This reinforcing must extend from the bottom of the beam so formed to the top.

It is therefore my belief, if a hollow core unit is used as a beam unit and additional reinforcement is required, then it is an essential design step to place reinforcing in open channels in order to meet the requirements of the Concrete Structures Code.

It is no more than the result of good engineering design practice to utilize open cores for the placement of reinforcement which is obvious in the light of common knowledge in the field of concrete construction."

He then analysed the rest of the claims and said that the additional features are known and the claimed units are obvious.  The final paragraph of his declaration reads as follows:

"In my opinion it is known to place reinforcement for the purpose of providing structural strength in open channels in precast beam units and it is common to form open channels in hollow core units.  This is illustrated in "Design principles for hollow core slabs regarding shear and transverse load bearing capacity, splitting and quality control" published by the Federation Internationale De La Precontrainte October 1982, see Exhibit "BS2".  This is further illustrated in the Rescrete Industries Brochure published 1986, see Exhibit "BS3".

Exhibit BS2 is a copy of 3 pages from a "Technical Report" dated October 1982 and stamped "Received 27 October 1982 E.P.M. Concrete".  Exhibit BS3 is a colour brochure entitled "Rescrete-Hollow Core Floor Planks" published by Rescrete Industries, Riverstone NSW but with no dates whatsoever.  The exhibits show precast hollow-core floor planks with one of the cores opened at each end of the planks.  The planks are supported on solid cross beams or walls.  There is no disclosure however of reinforcement material projecting as claimed or the use of the units as supporting beams in a two-way system.

Wolfgang Ernst Merretz declares that he is a civil engineer, formerly Chief Engineer, and now Manager, Architectural and Structural Operations with EPM.  He also believes that the invention as claimed is not novel and is obvious.  In fact some parts of his declaration, e.g. paragraph 2, are identical to corresponding paragraphs in Mr Stevens' declaration.  Paragraph 3 of Mr Merretz's declaration provides the following general discussion on concrete beam and slab floor systems:

Beam and slab construction is a widely used building technique in the construction of concrete floors.  The slabs span between and transfer load to the beams or supporting walls which in turn span between and transmit load to supporting columns.

It has been well known worldwide, for over 50 years that composite construction utilizing solid partial precast concrete beam sections with steel reinforcement projecting from its top surface, is capable of transferring longitudinal shear forces into subsequently site cast in situ concrete under the effects of superimposed external load.

Structural design guidelines for the transfer of shear force in the resulting composite beam section have been incorporated into building codes of practice for many years e.g. AS CA35 - 1963 Clause 4.18 - SAA code for prestressed concrete issued in 1963, see Exhibit marked WEM 1.

It is common for such floor to be constructed of precast concrete elements, in situ concrete construction or a combination of the two above.  Hollow core prestressed concrete planks are precast slab and/or beam elements which when placed adjacent to each other and joints between units are grouted, form a complete floor.  It is common practice to provide a 60mm thick in situ concrete topping over the floor to achieve additional load resisting capacity and other benefits.  In the normal application of simple span between beams the cores remain intact because there is no good reason to expose the void.  When used to transfer bending momement into beams it becomes essential to open a portion of the plurality of voids and then include longitudinal and/or transverse shear reinforcement to resist load.

In the case where the hollow core element is also intended to act as part of the beam element, it is essential that voids be opened at each end, or perhaps even continuously depending on the severity and type of load to be resisted.  Longitudinal and/or vertical shear reinforcement is placed into the open voids and in situ concrete cast into the voids and over the entire hollow core surface to form a composite beam floor.  The completed beam depth is generally greater than the hollow core plank alone."

Exhibit WEM1 is a copy of pages 50-53 of AS CA35 - 1963 that specifies standards for beam and slab construction, composite construction etc including various reinforcements e.g. "vertical ties designed to prevent separation of the component elements in the direction perpendicular to the contact surface".  However, hollow-core units are not mentioned.  Also in the last paragraph mentioned above, Mr Merretz is saying that if the ends of the hollow-core floor units that are supported on conventional beam form are intended to be part of the final beam region (when in situ concrete is cast in that region to unite the beam form and the ends of the floor units) then it is essential that voids or cores be opened at each end etc.  Mr Merretz is not saying that hollow-core units are used as the beam unit to support the floor units or that the vertical reinforcement material is as required by feature B(iv).

Paragraph 4.1 of the declaration starts with a list of features of claim 1 and is identical to the corresponding portion of Mr Stevens' declaration.  The paragraph continues thus:

"The use of hollow core beam units have been used in a number of pre-cast concrete construction projects.  One of these projects being that of the Hornsby Psychiatric Hospital in 1974.  Dr Max Newman was the structural engineer for the building and EPM Concrete Pty Ltd the designer for the hollow core floor.  I prepared detailed structural computations for the construction which involved the use of hollow core planks as beam units (EPM Concrete Pty Ltd - Hornsby Psychiatric Hospital Design Calculations and photographs - Exhibit marked WEM 2).  The construction involved partial removal of void concrete at each plank end and incorporation of beam reinforcement in the open voids subsequently concreted on the job site for the purpose of resisting loads (see exhibit WEM 2).

The beam units on this job had the features of:

-a plurality of hollow cores extending longitudinally within the beam unit.

-at least one portion of at least one of the cores open to the top.

The reinforcing steel was incorporated within the hollow core slab depth purely because of architectural headroom constraints which required a flat plate floor rather than beam-slab construction.  It would have been an easy matter to alter the structural design for this or other buildings where floor/floor height is not a constraint to include beam/slab construction.  It would then be a natural engineering design consideration to extend reinforcement above the top surface of the hollow-core plank for correct beam action to take place."

Exhibit WEM2 is a copy of:

-7 sheets of handwritten calculations and sketches.  Some of the sheets have the heading "Hornsby" or "Hornsby Hospital" and some have the date "7/8/74".  The last sheet is headed "Stressdeck-Develop continuity" and is dated 12/7/74

-2 sheets of photographs.

The hollow-core units are apparently floor planks.  Although Mr Merretz used the term "beam" it is clear from the context that he meant floor units, not supporting beams.  The units are supported on what appears to be a solid spine beam with reinforcement steel cages inserted into the end portions of the cores of the floor units to connect them longitudinally end to end.  As mentioned in the declaration the reinforcement does not extend above the top surface of the hollow-core plank.  Therefore this exhibit does not disclose feature B(iv) or the use of the planks as supporting beams in a two-way system.

Paragraph 4.1 continues thus:

"The use of precast solid beam units with reinforcing projecting upwardly has been known and used for many years, examples of these are as follows:

-Omnia brochures 1959 and 1973 Exhibit marked WEM 3

-American Prestressed Concrete

Institute - Handbook

Precast and prestressed Concrete, 3rd Edition 1985 (this publication was sent to EPM Concrete Pty. Ltd. upon publication) Exhibit marked WEM 4.

It is my opinion that to secure reinforcement material within the open portion of a core of a beam unit as appearing in claim 1, rather than projecting upwardly from a solid beam unit is no more than the result of good engineering design practice, which is obvious in light of common general knowledge in the field of concrete construction."

There is no clear evidence of the "publication" in Australia of the documents constituting exhibits WEM 3 but in any case the two exhibits do not disclose a hollow-core beam unit with feature B(iv) or the use thereof as supporting beam in a two-way system.  I am satisfied however that (as Mr Merretz mentioned) "precast solid beam units with reinforcing projecting upwardly has been known and used for many years".  Furthermore, I am satisfied that they were known in Australia before the priority date of the instant claims.

In paragraph 4.3 Mr Merretz said (in relation to claim 3):

"It is known in the field of precast concrete construction to utilise open channel beam units to support floor panels.  Reinforcement material being secured within the open channel(s) of the beam and extending above the top surface such that it may be bonded to a layer of cement laid over the beam unit and any supported floor panels Rescrete Industries Pty Limited Drawings - Exhibit marked WEM 5".

Exhibit WEM 5 is a copy of 3 sheets of drawings.  One sheet is undated and the others dated 14.10.86 and 16.6.87.  Again there is no evidence of "publication" and in any case there is no disclosure of a hollow-core unit or the method of manufacturing the beams.  The drawings relate to a "W" shell beam and form plank.

Geoffrey Charles Verge declares that he is a civil engineer and Managing Director of Brown Verge Harris & Sutherland Pty Ltd.  Again paragraph 2 of Mr Verge's declaration is identical to paragraph 2 of Stevens and Merretz.  Paragraph 3.1 provides a general description of beam and slab construction, and continues as follows:

"Hollow core planks are one type of precast floor unit which can be placed side by side to form a floor.  These planks are joined together by grouted shear keys and usually also by a concrete topping so that local loads are distributed evenly over the floor.

The ends of the planks are supported on beams.  These beams may be formed also from hollow core planks; usually it is beneficial to combine these beam planks with cast in place concrete so that the combined section is strengthened by acting as a composite beam and slab.  To bond these sections together the top flange of the hollow core beam can be removed so that the cores are opened.  These may now be provided with linking reinforcement and filled with concrete so that the precast beam stem and the cast in place concrete act together.

The reinforcement usually comprises three types

(a)vertical shear reinforcement extending from the bottom of the cast-in-place concrete in the core to the top of the beam,

(b)longitudinal reinforcement in the bottom of the core to anchor the vertical reinforcement and to tie across the beam ends, and

(c)horizontal reinforcement in the top of the cast-in-place concrete and extending over the supporting columns to resist the bending induced in the beams.

An example of such a structural system using hollow core floor planks and reinforced concrete beams is a carpark at Armidale designed by my firm in December 1984.  Details of this structure are shown on drawings No. 367.l84.01 sheets 5 and 6 marked Exhibit GCV 1."

The drawings do not show hollow-core supporting beams.  They show Spancrete or Rescrete floor planks supported on solid reinforced beams.  Therefore there is no support for the allegation that "These beams may be formed also from hollow-core planks".  Also there is no disclosure of feature B(iv).

Paragraph 3.2 describes arrangements with cantilevers.  Mr Verge deposed:

"In this case it is necessary to provide reinforcement in the top of the plank either by:

(a)opening up some of the cores, placing reinforcement in the top of the section and concreting the cores to bond the sections together, and/or

(b)casting a reinforced concrete toping on top of and bonded to the planks.

Some examples of this form of construction are shown in the Spancrete Design Details marked Exhibit GCV 2.  This data sheet was issued by Spancrete of Australia in 1977 and closely follows similar details used in the USA for some years.

Exhibit GCV2 is a copy of 4 pages the first of which carries the title "'Spancrete' Design Details".  There is no date or place of publication anywhere on these sheets nor is there any other evidence regarding "publication" in Australia.  In any case the sheets show hollow-core planks supported on solid reinforced concrete beam, steel frame or brick or concrete wall.  There is no disclosure of reinforcement material projecting as claimed or the use of the hollow-core units as supporting beams in a two-way system.

Paragraph 4.1 lists features of the hollow-core beam of claim 1 in an identical manner to paragraph 4.1 of Stevens and Merretz, and continues thus:

"In my opinion the idea of breaking open the top portion of a hollow core unit and adding reinforcement is not novel and does not involve an inventive step.

The use of such hollow core units have been proposed and considered for band beam floor systems in Australia before the priority date of the claim.

In October 1987, Brown Verge Harris & Sutherland Pty Ltd considered using a hollow core beam similar to that as in claim 1 (Brown Verge Harris & Sutherland Pty Ltd - calculation sheets 26 October 1987 - Exhibit GCV 3).  The proposed hollow core beam unit was a 300.13.12.(40) hollow core plank i.e. 300mm deep utilizing 12 off by 13mm diameter high tensile steel strands with 40mm clear concrete from plank soffit to underside of tendons.

In these calculations allowance was made for projecting reinforcement from ends of the beam plank and for vertical shear reinforcement in the beam plank.

The design requirements were as follows:

-shear reinforcement prepared before production,

-remove top flange at ends of beam unit over length to be reinforced,

-add reinforcement and concrete up.

In my opinion these calculations clearly include the three main features stated in claim 1, namely:

(a)beam unit with plurality of hollow cores

(b)open cores in each beam unit

(c)reinforcement extending beyond the top surface of the hollow core beam unit.

I believe the abovementioned features as claimed in claim 1 are no more than features of good design and sound engineering practice, and I do not consider these features to be of an inventive nature when used in combination.  It is an obvious step to utilise a hollow core beam unit instead of solid beams.  Secondly it is an obvious step to provie means by which reinforcement may extend beyond the top surface of the beam unit.  In this respect I refer to solid beam units with reinforcing projecting upwardly as depicted in Exhibit GCV 1."

Exhibit GCV3 is a copy of 8 handwritten pages marked S1, P1, P1 and 1, 2, 3, 5 and 6 and 2 printed pages marked in handwriting "Page 4" and "7".  All the pages carry the name Brian Verge Harris and Sutherland (BVH&S) and project or job no 203 and the dates "26 Oct 87", "Oct 87" or - in the case of the last page "7" - 23 10 87.

Again there is no evidence that these documents were "published" in the sense that they were "public knowledge".  They relate to a concrete floor plank design and seem to be a proposal that involves BVH&S and Spancrete Australia.  Neither the declaration nor the exhibit suggests that the documents were freely available, were circulated without "fetter" or have resulted in any use.  The only indication of possible circulation is that one of the pages marked P1 (in the form of a hand written memorandum from one Syd Gamble to Spancrete Australia) carried the name of two persons under a "circulation" heading.  Even then, there is no evidence that the memorandum was actually received by anybody let alone without fetter.

I find therefore that (as Mr Adam submitted) the opponent has not established that the proposal was published.  (I will say more about this proposal later).

Mr Verge continued his attack on the rest of the claims and in relation to claim 4 he stated:

"This is not a new or novel feature in concrete construction and as such is no different to the securing of reinforcement to the cantilever slabs as shown from an extract of Flexicore Publication section 4, chapter 3, received by Brown Verge Harris Sutherland Pty Limited in the early 1980's (see exhibit marked GCV-4)."

Exhibit GCV-4 is a copy of four pages numbered 43-1 to 43-4 and relates to cantilevered slabs called "Flexicore".  The first page, headed "Section 4 - Chapter 3" refers to the Flexicore slabs running parallel or perpendicular to the wall or beam.  This page directs the reader to "Section 5, Architectural Details" for cantilevers of slabs laid out perpendicular to the supporting members.  The third page directs the reader to "Section 2 for design of concrete beam to support cantilevered slab".  The rest of the exhibit concerns "Flexicore laid out parallel to wall below".

Again this document does not carry any dates and the only evidence of publication is Mr Verge's assertion in paragraph 4.4 of his declaration that the publication was received by BVH&S in the early 1980's.  However, the applicant has not challenged the assertion and in light of my finding on the evidence as a whole and previous authorities/precedent I will assume that this document was "published" in Australia before the priority date, in the sense that it was communicated to a member of the public without fetter.  (I will say more about this later).

The document shows concrete precast reinforced hollow-core slabs having two longitudinal cores and "top steel" bars running parallel to the cores and imbedded in the top portion of the concrete slab.  The slabs are laid side-by-side over supporting walls or beams (the nature of which is not disclosed).  Steel ties or rods are placed across the slabs either in depressions in the concrete top over the top steel, or in open channel-cut out to two inches above the bottom of the slabs exposing the hollow-cores and leaving the top steel un-cut - under the top steel.  The ties or rods are welded or tied to the top steel and the channel filled with concrete thus forming what appears to be a beam running across (perpendicular to the direction of the slabs) and within the slabs.  Anchors are welded to the rods and placed in cores which are then filled with grout and the cores dammed on each side of the rods.  The last page shows a levelling bar placed on the surface of the slabs with hook hangers placed in the cores and grouted therein.  The drawings on that last page also show grout covering the surface of the slabs.  In my opinion a person skilled in the art reading this document particularly the last two pages, more particularly Section A on the last page would find all the features of claims 1, 2 and 4.  Although the slabs are not described as beams in the language of claim 1, they are capable of acting as structural beams, capable of being supported by building supports and capable of supporting floor panels in a manner similar to what is being broadly defined in claim 1.  However, the document does not describe a two-way system as defined in claims 5 or 6 or a method as defined in claim 7.

Evidence-in-Answer

This evidence comprises declarations by James Grant Adams, Mohammad Hassein Shamsai, Ian D. Miller, Harold Magnus Moar, Donald Cameron Lewis and Colin O'Connor.

James Grant Adams is the patent attorney acting on behalf of the applicant.  Mr Adams submitted that the consideration of exhibit GCV3 "was in-house and not publicly disclosed (and) would not establish that the invention was obvious" even if the application was only entitled to the priority date of July 1988.

He referred to exhibit JGA-1 which is a copy of a report from the President of Leap Associates International Inc, consulting structural engineers of Florida, USA.  The report apparently was provided on the request of Mr Shamsai and comments on a "final rejection paper" from the US Patent office in relation to a "patent application for machine cast hollow core beam".  The report distinguishes Mr Shamsai's "invention" from two citations that were cited in the rejection paper.  Mr Grant declares that the report sets out "the reasons why the system of the present invention disclosed in the US patent application (and Australian patent application No 579968) was non-obvious over the cited prior art" and that the US application was allowed.  At the hearing, Mr Adams produced a copy of US patent No 4,912,896 (herein called "the corresponding US patent") which describes the invention of the present Australian application.  He submitted that the grant of this US patent, which was subjected to a more rigorous examination procedure than the Australian application, is a further indication that the invention is novel and non-obvious.  Also, he said, the corresponding New Zealand application has been accepted and the corresponding Canadian application was about to be accepted.

While I accept Mr Adams submission, I do not think that the acceptance or grant of the corresponding applications affect the present proceedings which involve evidence that was not available to any of the patent offices prior to acceptance.

Mohammad Hossein Shamsai is a construction engineer and the inventor of the present invention.  He declares that he designed and commissioned a plant for the manufacture of prestressed precast hollow-core slabs in Brisbane in 1987 and:

"Since filing the patent application, experience has enabled me to modify the plant and equipment to manufacture the beam automatically.

"2.From my extensive experience in the Construction industry, I have been aware that there has been a world-wide need for a two-way beam system which avoided the necessity for formwork and insitu casting of the beam.  My research, prior to the development of my method, the subject of the patent application, showed that no such beam system was available which could be cast by means of a mass-production extruded method using hollow core slab and indeed any work to date had directed workers away from such a system.

3.The development of the two-way beam system, using precast hollow core beams, enabled the design of an integrated building system which is promoted by my company under the name "Quickfloor" and copies of portions of my company's brochure for the hollow core slab floor system and beam system are annexed hereto as "Exhibit MHS-1".

4.The two-way system has been shown to a number of Consulting Engineers and Construction companies and they have adopted the system as they appreciate the advantages of the system over existing systems of the type promoted and used by the Opponent.

5.Concrete construction is an international business, not merely confined within national borders.  The system has been demonstrated to overseas experts in concrete construction who have visited my company's plant and viewed the invention.  One such visitor who has viewed the system and stated it is the best he has seen is Dr Byula Fogarasi from Budapest, Hungary.  Dr Fogarasi is a world wide authority on concrete construction and in 1986, published a world standard book entitled "Prestressed Concrete Technology".  A copy of the cover and frontspiece of the book is annexed hereto as "Exhibit MHS-2"."

Exhibit MHS-1 is a copy of a brochure and plans showing the Quickfloor system.  Exhibit MHS-2 is as mentioned in the declaration and has little relevance to the present proceedings.

I note that Mr Shamsai talks about the system (which is not claimed in claims 1-4) or extruded, automatic manufacture ... etc. beams (which are not described or claimed in the specification).

Ian D. Miller declares that he is a civil engineer and Managing Director of I.D. Miller & Associates Pty Ltd, a consulting engineering practice.  He holds the opposite view to the opponent's declarants.  However, in comparing the invention with other systems and in commenting on the application he refers to "machine cast precast prestressed hollow core" beam units and the system.  His conclusion reads as follows:

"In summary, I have examined the patent application and the statutory declarations of Messrs Verge, Stevens and Merretz and have come to the following conclusions:

(a)The use of composite beam and slab construction is a well known design and construction technique as noted in the statutory declarations and by reference to codes.

(b)This patent application using machine cast precast prestressed hollow core beam and slab units for beam and slab construction with insitu topping to produce composite action with a plurality of units in a two way building system is both novel and non obvious.

(c)There are inherent difficulties in such a system as evidenced by the absence of the use of such a system in the past in Australia.  Extensive development, testing of the system and special detailing have been necessary as a result.

To my knowledge, there is not a similar system to the patent application in use either outside Australia or inside Australia.

(d)I believe that the systems quoted by Messrs Verge, Stevens and Merretz are substantially different to the system of the application.

I believe that these former are not relevant to the appliction as Evidence-in-Support of the opposition to the application.  It could be considered that the evidence presented in the statutory declarations and exhibits in fact supports the patent application because of their differences from the system under application ..."

Harold Magnus Moar is a civil engineer and Associate Director of WBCM Consultants Ltd.  He declares:

"I joined STRESSCRETE LTD, in New Zealand as Development Engineer in 1969 responsibile for the design and development of new products.  This Company pioneered prestressed and precast concrete in New Zealand and still holds its position as the largest in the country.  During this period, the company went into the production of extruded hollow core planks, similar to those which are the subject of the above patent application.  I was involved in the development of a wide variety of precast floor and building systems, several of which were patented by the company."

"3.  It is acknowledged that the use of composite beam and slab construction is a well established construction technique.  Also, the use of composite beams, using longitudinal slots to accept shear and other reinforcement is again standard practice.  Commonly, these are single slotted ('U') beams or double slotted ('W') beams.  However, the adaption of machine cast (extruded) hollow core planks for the purpose of forming a slotted beam is not obvious, because of the inherent difficulties of producing this type of end product by this method.  For example, one of the key problems is the need for transverse reinforcement in the top of the precast unit to provide support to the floor slabs seated on the edge of the 'beam' slab.  Insertion of this steel as part of the manufacturing process was previously not considered practical.  For this and other reasons the use of extruded planks as beams was not therefore thought to be a feasible proposition.  This is also demonstrated by the fact that, to my knowledge, it has not been used in this way.  In my opinion, therefore, the specific use of extruded planks as the basis for a composite beam system is not obvious to those skilled in the art.

4.   I have examined the declarations made by Messrs Geoffrey Charles Verge, Brian Stevens and Wolfgang Ernst Merretz which constitute the Opponent's Evidence-in-Support of the opposition in this matter.  My comments on the respective declarations are set out in the following paragraphs.

5.   VERGE argues that hollow core planks used as beams is a logical extension of the concept of precast beams.  He overlooks the real problems associated with this in practice.  The calculations in Exhibit GCV3 conclude that to be successful the beam must be "wet cast" (ie. not extruded) because of the "basic problem" of "shear reinforcement in the beam unit" (pl).  The fact that no such construction proceeded proves the reality of the problem.  I also note that the proposal by Brown Verge Harris & Sutherland Pty Ltd was considered in October 1987, approximately (3) months after the earliest priority date of the patent application.  (The calculation sheets included in Exhibit GCV3 were dated 26 October 1987).

The uniqueness of the invention lies in the use of the machine cast hollow core planks as beams, and this particular application is as considered and not recommended as feasible by the calculations in Exhibit GCV3.

In my opinion, the balance of Verge's declaration is irrelevant as they relate to the common use of opened cores, toppings, etc. which do not affect the uniqueness of the invention defined in the claims of the patent application.

6.   MERRETZ again does not point to any prior use of the hollow core slabs as beams and since he, in particular, was in a position to utilize them in this way, his declaration in fact supports the novelty of the invention in the patent application.  The Exhibit WEM2 does not appear to use hollow core planks as beam units.  Rather, it provides for continuous action of the floor slabs across an insitu 'beam' of insitu poured concrete.

Again, the remaining statements regarding topping, ligatures, etc. are not relevant to the novelty of the invention.

7.   STEVENS does not add anything to the other two declarations.  He refers to wet cast 'U' beams, but again confirms that the specific use of machine cast hollow core planks as the precast element of a composite beam system has not been employed to his knowledge.

8.   In my opinion, the primary and preferred objects of the present invention, described at page 2, lines 8 to 13 of the patent application are met by the disclosure of the invention and that these objectives were not met by the prior art referred to in the Verge, Stevens and Merretz declarations.  In my opinion, these declarations in fact demonstrate the uniqueness and novelty of the invention at the priority date and serve to actually support the applicant's claim for the grant of a Patent on the patent application."

Donald Cameron Lewis is a civil engineer and Managing Director of Lewis-WBCM Pty Ltd, a subsidiary of WBCM Consultants Ltd.  He declares that the "novel and non-obvious invention which forms the basis of this patent application involves the use of machine cast hollow-core prestressed concrete slabs as beams".  His declaration is similar to Mr Moar's declaration and he concurs with Mr Moar's comments in relation to the evidence-in-support.

Colin O'Connor is Emeritus Professor of Civil Engineering and Honorary Research Consultant to the University of Queensland.  He declares:

"The application indicates a way in which "hollow core slabs", used commonly to form a floor slab, may be used also to form the beams of a two-way system.  In reading the application therefore, it is essential to distinguish between hollow core slabs used in a floor - the normal usage - and hollow core slabs used as beams to support the floor, which is the present invention.

4.   The application describes how the hollow core slab may be modified to form the beam of the two-way system - these occupy lines 20-35 of page 2 of the application, lines 1-2 of page 3, and Claims 1-4.  The application also describes four methods of using the system - as shown in (1) Figs 1-8, (2) Figs 9-11, (3) Fig 12, and (4) Figs 13-14.  At a detailed level, the modifications use techniques that are in common use - such as having precast, prestressed concrete units with a plurality of hollow cores, the breaking open of the top of the cores, and the addition of further reinforcement and composite, cast insitu concrete.  The fact that these techniques are in common use does not bear on the originality of your proposal.

5.   In my view, the objections do not sustain a suggestion that the proposal has been used before.

6.   The most relevant observations are those given by Verge - p.8-9, Exhibit GCV3, sheets 1, 3, 6, S1, P1 (2 papers).  These describe an attempt made in October 1987 to use a hollow core slab as a beam in a two-way floor system.  The computation sheets recognise that shear reinforcement would be necessary, in particular, page P1 states "the basic problem still remains, ie.    shear reinforcement in the beam unit".  It goes on to discuss further (second sheet marked P1) how this problem could be met and the units made.  These proposals will be discussed further below.  There is, however, no suggestion that the units were actually made or the system implemented.

7.   The objections by Stevens and Merretz refer largely to the modification of floor units so that they can be joined end to end to form a stronger floor.  These modifications use some of the techniques used in your proposal but this is, in my view, irrelevant to the point at issue, that is, they do not refer to the use of hollow core slabs as beams in a two-way system.  There are, however, some relevant comments.

8.   The invention breaks open the tops of some of the hollow cores and inserts reinforcement to provide shear strength and for other purposes.  The arrangement of this shear reinforcement forms, in my opinion, part of the originality of your system.  Both Stevens and Merretz refer to shear reinforcement - Stevens on pp4-6, and Merretz on p4.  This is, however, in documents written after they had seen your patent.  It is not clear that they had previously observed that shear reinforcement could be provided in the way proposed.  At least some of their comments refer to shear transfer between a precast unit and a cast insitu slab, which is a somewhat different matter.

9.   However, although the objections provide no evidence that a system as claimed has ever been used, Verge suggests that his investigations of October 1987 show that the essential features of the invention are "no more than features of good design and sound engineering practice".  It is necessary to return, therefore, to the second page P1 of his computation sheets (Exhibit GCV3).  These sheets are dated October 1987.

10.  Stevens suggests two solutions to the problem of shear.  The second refers to a "wet cast unit", that is, to one made as a special unit, using a process different to that for a standard unit.  His "wet cast beam" does not, I believe, compete with the invention.  His other suggestion (second page P1, GCV3) is to modify a normal unit in a way which could be considered as similar to the invention.  Although this may be so, it would appear to me that before he could claim this, he would have had to describe it at a level of detail that is lacking from his papers.

11.  I conclude, therefore, that in these objections there is no evidence that a system similar to the invention had been developed previously.

12.  The last issue is the argument that, even though not used or proposed before, the system is not novel because it is obvious in the light of knowledge in the present concrete building industry.  This is somewhat more difficult to judge, but it is my opinion that if the invention were "obvious" in such a highly competitive industry, then in the light of its apparent benefits, it would have been used before the filing of the patent application.

13.  My final opinion is, then, that on the basis of the documents referred to in paragraph 2. above, the invention is novel, has not been used or proposed previously, and is not obvious in the light of present knowledge."

Annexed to Professor O'Connor's declaration is exhibit CO'C-1 which comprises copies of correspondence between Mr Adams and the Australian Patent Office in response to the examiner's objection on the unaccepted application No 18908/88, amendments made to that application and the accepted specification 579968.

None of the declarants on the applicant's side has really defended the beam unit as claimed in claims 1-4.

Evidence-in-Reply

Geoffrey Andrew Markham is a civil engineer and Chairman of Taylor Thomson Whitting Pty Ltd, consulting engineers.  The following are excerpts from his declaration:

"3.1 The application under consideration in this matter, in engineering terms, is not simply described in the patent application.  Essentially the structural arrangement proposed would more accurately be described as a one way transverse precast slab system supported on longitudinal precast beams in which the beams are formed with a precast unit, which with minimal temporary propping, is able to support the transverse precast slab units.  In the final (insitu) concreting of the floor system, the initial precast beam unit acts compositely with the insitu concrete to form a deeper beam able to support the floor units, their insitu concrete and design live load without the temporary propping."

3.6  The September 1962 U.S. Prestressed Concrete Institute publication has illustrated on its front cover various one way precast concrete floor units spanning on to precast concrete beams some of which are composite with later insitu or cast in place concrete.  Hollow core floor units are illustrated.  Also on page 21, are shown composite beams with projecting shear reinforcing seating on concrete corbels.  These pages are annexed and marked Exhibit "GAM 1".  Any designer or precaster is therefore entitled to freely use a precast element with projecting reinforcement as a main longitudinal beam which later becomes composite with insitu concrete and which also supports transverse precast units of various forms including hollow core units.  Such a longitudinal beam could be supported on various load bearing elements including both precast or cast-in-place columns with corbels.

3.7  About the middle of the 1970's, production of precast hollow floor and wall units commenced in Australia and in design it became normal practice to open up one or more of the cores to provide additional shear capacity, structural continuity or to provide mechanical integrity through the precast floor structure.  This included the placing of longitudinal reinforcing bars and sometimes reinforcing ties into the opened up cores."

(Exhibit GAM1 is a copy of three pages:

-the first page shows precast ribbed or hollow-core slabs supported on solid beams or walls.  The page is stamped "Tentative - For Review and Comment Only",

-the second and third pages contain  description and drawings of composite beams.

There is no evidence of the "publication" in Australia of this document and in any case it does not disclose hollow-core supporting beams in a two-way system or feature B(iv).)

"3.8     In the 1950's, the "Stahlton" slab system was developed in the United Kingdom.  The system developed around a high strength extruded ceramic tile with formed grooves open to the top surface into which longitudinal reinforcement (stressed high tensile wires) and steel ties or stirrups were placed and then the grooves were grouted using a portland cement grout.  Prior to grouting, the unit could be described as a beam type unit which initially had a plurality of grooves similar to hollow cores opened to the top surface.  In the case of the "Stahlton" system, the planks are placed at relatively close centres and the transverse slab units are filler blocks.  Pages from a Stahlton Brochure (circa 1966) are annexed and marked Exhibit "GAM 2".

3.9      A variation on the principle, a longitudinal prestressed plank beam with projecting stirrups is shown on the Hawaiian Australian Concrete Pty Ltd Sheet T1 (circa 1962) which is annexed and marked Exhibit "GAM 3".  With the addition of the insitu beam, the prestressed plank and the insitu beam concrete act together compositely supporting in the case illustrated, pretensioned transverse I-section joists.  Whether the plank beam has hollow cores, broken out hollow cores, or is solid does not fundamentally alter the principle of precasting the plank, creating a mechanism for transfer of horizontal shear by the use of projecting stirrups and or grooves to permit final composite action with the insitu concrete."

Exhibit GAM2 is a copy of 7 pages illustrating the Stahlton floor and deck slab construction with clay-type planks/tiles acting as beams supporting hollow blocks.  Again there is no clear evidence of "publication" in Australia and in any case the document does not show a prestressed concrete hollow-core beam unit as claimed.

Exhibit GAM3 is a copy of one page showing a solid prestressed beam supporting transverse I joists and insitu concrete is cast over the prestressed beam to form an added insitu beam.  Again there is no clear evidence of "publication" in Australia and in any case there is no disclosure of hollow-core beam units.

Regarding exhibits GAM1-GAM3 the only indication of their publication is the assertions in the declaration "The September 1962 US Prestressed Concrete ...", "circa 1966" and "circa 1962".  Mr Adams contested the publication of these documents.  Had I found them to be more relevant I would have had to consider this issue further.

Mr Markham then referred to the evidence-in-support, the Wheen declaration (see below) and evidence-in-answer.  In essence he concurred with the conclusions of Messrs Stevens, Merretz, Verge and Wheen and criticised the others.

Robert John Wheen is Associate Professor of Civil Engineering at the University of Sydney.  The following are extracts from his declaration:

"In the case of the present application it is very difficult to find novelty in the invention as claimed.

In the first instance hollow-core building beam units are described which have been used around the world for at least twenty years (as supported by Exhibits "BS1", "BS2" and "BS3" of the Statutory Declaration of Brian Stevens).  Secondly, part or all of the length of some of the cores is open to the top surface in a way which has been widely used and is well documented (see Exhibit "BS3").

Thirdly reinforcement is placed in the open cores and extends above the top surface to be bonded to a layer of concrete in a form of composite construction which is known to every practitioner in the field of reinforced or prestressed concrete design.  The joining of cast-in-situ concrete to the precast concrete elements is commonly achieved by arranging reinforcement which projects from the units themselves, or by placing reinforcing into a space between adjoining elements or within an open unit such as the trough shown in Exhibit "BS1".

From what has been stated in support of the patent application, it might be assumed that the use of elements in this way is a unique way of creating two-way floor systems.  In the field of bridge building and in building construction there are many examples of two-way systems created using the principles claimed here as an invention.  Examples to illustrate this point are taken from Wallace (1986) marked Exhibit "RJW1" and Phillips and Shepherd (1980) marked Exhibit "RJW2"."

Exhibit RJW1 consists of a copy of one page showing hollow-core planks supported on solid precast prestressed beam form.  The joint is completed with in-situ reinforced concrete.  There is no disclosure of feature B(iv) in the hollow-core planks or of hollow-core supporting beam unit providing the two-way system.

Exhibit RJW2 warrants more consideration.  The one sheet copy shows a multi-hollow-core floor plank having a preformed opening to facilitate connection to a supporting solid prestressed concrete girder.  Thus the document does not disclose the two-way system where the supporting beams are hollow-core planks.  However, the floor plank itself is very similar to the beam unit as claimed in claim 1 with reinforcement extending from the girder below the plank to above the top surface of the plank through the hole or opening and received in reinforced cast-in-place concrete topping.  The hole is "grouted by the general contractor after planks are erected".  Thus all the features of claim 1 are disclosed in this document.

Professor Wheen provided details of the reference at the end of his declaration: "Phillips, W.R., and Sheppard, D.A., "Plant-cast precast and prestressed concrete, Precast Concrete Manufacturers' Association of California, 1980".  Although Professor Wheen is implying that the publication was available in Australia he did not clearly say or establish that it was published in Australia before the priority date of the present application.  However, I accept that he knew of the arrangement disclosed in the document before that priority date.

Professor Wheen then commented on some parts of the declarations-in-support and declarations-in-answer.  He agreed with conclusions of the former and criticised the latter.  Finally, he provided the following conclusions:

"It is considered that the Patent Application by MARISSA PTY. LTD. is based on already known technology and that there is no inventive step beyond the selection of a specific combination of design parameters which any skilled practitioner might arrive at.

In the Declarations of Lewis and Moar, a distinction is drawn between machine and wet cast units yet no such distinction is described in the patent application.  Further there is no inventive advantage in utilizing machine cast as opposed to wet cast.  Miller refers to inherent difficulties, presumably those that Lewis and Moar describe in more detail as the difficulty of providing transverse reinforcement in the top surface of machine cast units.

Whether the units are machine or wet cast is of no consequence when considering their structural properties.  The stiffness, flexural strength and shear strength will be virtually indistinguishable between units produced by either casting method."

Further evidence

At the hearing, Mr Adams produced the corresponding US patent specification and a copy of an article entitled "Precast Concrete Flooring" (pages 44-51 of "Constructional Review", May 1987).  The article describes and illustrates the manufacture, specification, use and supply of hollow-core floor units or slabs.  It shows the open tops of parts of the cores at the ends of the slabs, the use of reinforcement cages within the open cores (but not extending above the top of the slabs) at the said ends to provide additional reinforcement for continuous spans; a summary of the specifications for prestressed or normally reinforced precast floor units of EPM, rescrete, Spancrete and Transfloor, the support beams, joists or frame (none of which is a hollow-core unit); and recent uses including the Moore Street car park at Armidale (which is referred to in GCV1).  I also note that in the first column on page 49 it is specified that "Incorporation of a two-way slab system has yet to be achieved in Australia".

Anticipation, Obviousness and Manner of Manufacture

I have found that the beam units of claims 1, 2 and 4 have been disclosed in the document of exhibit GCV4.  That disclosure corroborates the evidence declared to by the opponent's declarants.  On the face of the evidence the document appears to be a public document and to have been received by BVH&S before the priority date of the claims without restrictions on its publication.  The applicant had the opportunity to challenge the availability of this document to the public in Australia before the priority date, both at the evidence in answer stage and at the hearing but has not done so.  Further, the declarants on the applicant side did not challenge the knowledge of the disclosure either.  They distinguished the known art from the invention by saying that the invention is either a special machine cast or extruded beam unit of certain characteristics (this is not described or claimed in the present specification) or as the use of the beam unit as a structural supporting beam in a two-way beam/slab building construction system (this is not the subject of claims 1-4).  Indeed Mr Adams repeated that the invention is a two-way system.

Mr Taylor submitted that in light of the evidence as a whole and previous authorities I should accept that the exhibits were known and public knowledge in Australia before the priority date.  He referred to numerous cases which indicate that the standard of proof in opposition proceedings is the civil standard of proof on the balance of probabilities.  The cases he referred to included:

-The General Tyre & Rubber v Firestone [1972] RPC 457.

-Dunlop Holdings Appliction [1979] RPC 523.

-Monsanto Company (Brignac's) Application [1971] RPC 153.

-A&K Aluminium v Lidco Systems (an Office decision on application No 546540, dated 22.6.90).

-James Earl Winner v Australian Chicago Products (an Office decision on application No. 561885, dated 17.3.89).

He also referred me to the discussion of Bristol-Myers (Johnson's) Application [1975] RPC 127 in the section on prior use in Ricketson's "The Law of Intellectual Property", 1984 edition.

Considering the above, I am of the view that the disclosure of GCV4 was public knowledge in Australia before the priority date of the claims.  I therefore find that claims 1, 2 and 4 were prior published and not novel.  None of the exhibits anticipate the other claims.

I do not hold the same view as to publication with regard to RJW2 or GCV3.  (I have already mentioned the reasons when I discussed these exhibits above).  Furthermore I have no evidence of prior use of anything that falls within the scope of the claims.  Therefore I do not need to consider this ground further.  The same is true with regard to the ground of manner of manufacture.  The invention claimed is clearly a manner of manufacture.

With regard to obviousness, it depends on the common general knowledge in the field of the invention (Minnesota Mining and Manufacturing v Beiersdord 144 CLR 253).

The most relevant common general knowledge established by the evidence appears to be:

-prestressed concrete hollow-core slabs with plurality of hollow cores are known as is their use as floor units,

-breaking open of the cores is known together with the addition of further reinforcement within the opened core and adding insitu concrete to plug the core and as a topping,

-the number, extent and location of the open portions of the core would depend on the application,

-the extent of vertical reinforcement would also depend on the application,

-solid supporting beams with vertical reinforcement extending above the top surface as well as U and W slotted beams and composite beams are also known.

Mr Taylor submitted that the invention was a mere workshop improvement or appropriate design choice in the light of the common general knowledge and general progression of techniques in the art.  Although he fleetingly referred to Griffin v Isaacs (1942) 12 AOJP 739, I take his submission as going to the issue of obviousness (see Blanco White "Patents for Inventions", 5th edition, para 4.212 and Terrel "The Law of Patents", 13th edition, para 5.108; cf. Terrel para 6.52, The General Tyre & Rubber v Firestone (supra) and Nicaro Holdings v Martin Engineering (1990) AIPC 90-670).

I accept his submission with regard to claims 1 to 4 only.  On the basis of the evidence before me I am of the opinion that it would be open to a person skilled in the art to extend the reinforcement that is placed/secured within the open portion of the known hollow-core slabs above the top of the slab.  This would depend on the load characteristics and the depth of the final floor slab after topping with concrete.  I hold the same view with regard to the extent and location of the open portions as defined in claims 2 and 3.

I find therefore that claims 1 to 4 are obvious.

Regarding the system and method of two-way construction claimed in claims 5-7 the evidence on both sides is conflicting.  On the one hand, the declarants on the opponent's side believe that all the claims are obvious.  However, I am inclined to take note of Professor O'Connor's assessment and judgement.  In my opinion, it would seem that in reaching their conclusion, it was possible they were mosaicing pieces of information with the benefit of hindsight, now that they have the invention claimed in front of them.  I do not consider that it is sufficient to say that since hollow-core slabs are known and vertical reinforcement in solid supporting beams and composite beams is known, then a person of ordinary skill in the art would automatically and without using ingenuity think of using the hollow-core slab so modified as a supporting beam in a two-way system.  I think the relevant question is why would a person skilled in the art want to do that at the priority date of the claims when the precast supporting beams available for a beam/slab system were of the solid or the slotted beam type and were doing the job adequately.

Professor O'Connor in paragraph 13 of his declaration declared that in his opinion the invention is novel and not obvious.  I think that by the "invention" he meant the system that he referred to in paragraph 11.  He also does not think that GCV3 contained enough information to prove that the system was proposed or would have been obvious.  On this point I agree with Professor O'Connor (and Mr Adams who had made a similar submission) and would add that even if the system was disclosed in GCV3 proof of obviousness must come from consideration of common general knowledge by a person of ordinary skill in the art.  The evidence does not show clearly that the proposal was arrived at on that basis.  It may well have been possible that in October 1987 BVH&S could have applied for and obtained a patent had they developed the proposal to a sufficient degree.

The courts have frequently warned against ex post facto analysis and stated that the Commissioner should not refuse an application except when it is clearly evident that if a patent was granted it would have been invalid.  If I have some doubt as to the validity of the conclusions reached by the opponent regarding the obviousness of the system or method claims I must resolve that doubt in favour of the applicant as there is always the possibility of applying to the courts for revocation.  From what I have said above it is clear that I have such doubt as to the finding of obviousness regarding the system and method claims.  Therefore I find that claims 5-7 do not fail on the ground of obviousness.

When I said the method of claim 7 was not obvious I meant both forms of claim 7; that form when it is rendered fairly based, and its present form, because the evidence does not show the method of forming the beam units and using them in the manner claimed by claim 7.

Conclusion

I have found that claims 1, 2 and 4 were prior published, not novel and obvious, claim 3 was obvious and claims 1 and 7 do not comply with section 40.  Also there are other minor clarity problems in the specification which the applicant may wish to correct.

I direct the applicant to amend the specification to my satisfaction within 60 days from the date of this decision.

I award costs against the applicant.

(RAFIK EL-KILANY)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Grant Adams & Company,
  Brisbane
Patent attorneys for the opponent : Arthur S. Cave & Co, Sydney