Metal Line Industries Pty Ltd v BHP Steel (JLA) Pty Ltd
[1997] APO 64
•9 December 1997
official notice
decision of a delegate of the commissioner of patents
Patent: No. 660272 in the name of METAL LINE INDUSTRIES PTY LTD
Title: A Roof Gutter
Action: Application for an extension of term to petty patent 660272 and section 28 notification by BHP STEEL (JLA) PTY LTD
Decision: Issued .
Abstract
The invention primarily relates to a roof gutter for the gable ends of tiled roofs.
Novelty and inventive step grounds successfully established by notifier.
Extension of term refused. Applicant afforded an opportunity to propose amendments.
patents act 1990
decision of a delegate of the commissioner of patents
Re:An application for an extension of term to petty patent 660272 in the name of METAL LINE INDUSTRIES PTY LTD, and a section 28(1) notice by BHP STEEL (JLA) PTY LTD.
background
Petty patent 660272 was filed on 13 February 1995 by Metal Line Industries Pty Ltd (hereinafter Metal Line) as application number 12225/95. The application relates to a gutter for a roof. It was filed as a further application to patent application 63273/94. Patent application 63273/94 was filed on 24 May 1994 and derives priority from Australian provisional application PM2893 of 10 December 1993.
Petty patent 660272 was sealed on 15 June 1995. On 2 April 1996, Metal Line filed an application to extend the term of the petty patent, which was published on 2 May 1996. On 15 May 1996, the notifier BHP Steel (JLA) Pty Ltd (hereinafter BHP) filed a notice (the ‘first’ notice) under section 28(1) of the Patents Act 1990 together with evidence in support of the notice. The Commissioner informed Metal Line of the first notice on 22 May 1996, and allowed Metal Line a period of 3 months in which to lodge any evidence in response to the first notice. Metal Line did not file any evidence in response to this first notice.
On 12 July 1996, BHP filed another notice (the ‘second’ notice) under section 28(1), as well as evidence in support of the second notice. Along with this notice, BHP filed a section 223(2) request seeking an extension of time of 2 months from 15 May 1996 to 15 July 1996 within which to file another notice under section 28(1). Metal Line did not object to the application for an extension of time, and was informed on 11 December 1996 that the extension of time had been allowed. Metal Line was given a period of 3 months in which to file evidence in response to the second notice, but did not do so.
The matter was set down for a hearing on 29 August 1997. On 5 August 1997, Mr Ian de Jonge, patent attorney with Cullen & Co., advised that representations would not be made on behalf of Metal Line either at the hearing or in writing. Consequently, on 19 August 1997, Mr Gennaro Simonetta, patent attorney with Griffith Hack, advised that in the circumstances BHP did not intend to appear at the hearing and would instead rely on their previously submitted material. However, on 25 August 1997, the office was notified that Metal Line would be relying on written submissions, which were filed on 29 August 1997, and served on the attorneys for BHP on the same day.
THE SECTION 28(1) NOTICE
In the first section 28(1) notice of 15 May 1996, BHP asserted that the invention defined by at least claims 1 and 2 either lacked novelty or an inventive step given disclosures in the documents mentioned directly below. BHP also submitted that the invention recited by at least claims 1 and 2 is not patentable under section 18(1)(a) in that it does not possess the threshold of novelty required under the Act [Philips v Mirabella 32 IPR 449]. The notice referred to, and included copies of, various documents. These documents were:
1)US Patent No. 4347691 (Lloyd-Jones);
2)US Patent No. 4109428 (Aarons);
3)US Patent No. 3242622 (Snead);
4)AU Patent Application 80801/75 (MONIER COLOURTILE PTY LTD);
5)AU Design Registration 81828;
6)Statutory Declaration of Campbell John Seccombe of BHP Steel (JLA) Pty Ltd, with various exhibits attached; and
7)Letter from the Patent Office dated 15 May 1996 providing OPI dates for specifications US 4347691, US 4109428, US 3242622 and AU 80801/75.
The second section 28(1) notice, filed on 12 July 1996, asserted that the claimed invention was not novel or inventive in light of:
8) GB Patent No. 1347974 (Preston et al.); and
9)NL Patent No. 6707729 (BP Chemicals); this was accompanied by a corresponding English language equivalent GB 1158911.
THE PETTY PATENT SPECIFICATION
The specification commences by stating that the invention relates to a roof gutter and particularly to a roof gutter for use on inclined edges of a roof.
There is a general discussion on how roofs, and especially tiled roofs, usually have a horizontal gutter at the lower edge of the roof to collect and carry away water. As well, such roofs also have inclined edges leading up to the apex of the roof. These inclined edges are finished by attaching a barge board so as to conceal the roof battens.
According to the specification, it is common to provide a barge gutter (that is, an inclined gutter extending along the inclined edge of the roof), which serves to collect and carry away any water which may pass over the inclined edge of the roof. However, a disadvantage with existing gutters is that they are generally positioned between the barge board and the tiles, so that water is carried away in an internal portion of the roof. Any improper assembly of the gutter, or any blockage, corrosion or the like, will result in water leaking inside the roof area.
The specification continues by stating that with tiled roofs, and other stepped roof configurations, gaps or openings are present between the roof and the barge board. These gaps or openings provide entry for debris, rodents and other vermin.
The specification then states:
“The present invention has been devised to provide a gutter which can be used as a 'barge' gutter and which may overcome the above mentioned disadvantages or provide the public with a useful or commercial choice.
The gutter of the invention can be located generally externally of the barge board and thus water carried away by the gutter can not leak inside the roof area. Also, a flexible seal can be provided to inhibit entry of debris and rodents.”
Then follows a statement of the invention which is the same as the wording of claim 1.
The specification indicates a preferred arrangement as follows:
“The gutter may be of various shapes and configurations depending on the size and type of roofing material. The gutter may comprise plastic or metal and may be in the form of an extrusion or section. Typically, the gutter comprises a metal extrusion or section which can be cut to length.
The mounting portion may comprise a lip or the like which can fit over an upper edge of the barge board to mount the gutter thereto. If desired the gutter can be fastened to the barge board by fasteners or the like.
The gutter may have an open side through which edges of tiles or other roofing elements may pass. These edges suitably extend over the barge board such that any water passing over the edges of the roofing elements passes into the channel of the gutter.
The gutter may further include sealing means to at least partially close any gaps between the gutter and the edges of the roofing elements. The sealing means may be a flexible member. The flexible member may be connected to the gutter and preferably is connected to the top wall of the gutter. The flexible member may be elongate and may comprise a flexible skirt. The skirt may be continuous or may be slotted.”
There follows a detailed description of the preferred form of the invention with references to the two pages of drawings.
The specification ends in three claims which are as follows:
“1.A gutter for an inclined roof edge, the gutter having a lower channel to carry away water,
a wall extendable around and above the inclined roof edge, and a mounting portion to mount the gutter adjacent the inclined roof edge such that the channel is located externally to the roof,
the channel, wall and mounting portion being integrally formed,
the mounting portion comprising an inverted U-shaped channel having an outer side wall, an inner side wall and a top wall, the outer side wall terminating in a free edge, the inner side wall forming an inner side wall of the channel,
the channel additionally having a bottom side wall and an outer side wall which continues to extend upwardly to also form the wall,
the wall continuing to extend generally upwardly and then being generally curved towards the roof, in use, so that it extends over an edge of roof tiles.
2.The gutter of claim 1, wherein the wall terminates in a turned in lip which can optionally accommodate a sealing means to at least partially close any gap occurring between the lip and the roof.
3.A gutter as claimed in claim 1 or claim 2 and substantially as hereinbefore described with reference to Figures 3, 4 and 5.”
DECISION
The Patent Regulations 1991 set out the requirements of the Commissioner in deciding on an application for an extension of term of a petty patent. Sub-regulation 6.6 states:
6.6(1) For the purposes of subsection 69(2) of the Act (" extension of term of petty patent"), in deciding an application for an extension of the term of a petty patent, the Commissioner must consider:
(a) any notice under subsection 28(1) of the Act ("notice of matters affecting validity of petty patents") in relation to the petty patent; and
(b)any matter of which the Commissioner has informed the patentee under subsection 28(3) of the Act.
(2) If the Commissioner is satisfied that a ground mentioned in subsection 28(1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent.
(3) If the Commissioner is satisfied that no ground mentioned in subsection 28(1) of the Act is made out, the Commissioner must grant the extension of the term of the petty patent.
Therefore, I need to satisfy myself whether or not any of the grounds in the section 28(1) notices have been made out.
NOVELTY
The law regarding novelty has been extensively reviewed in judgments by the Federal Court of Australia in recent years. These judgments indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
As to what constitutes infringement, I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd (1969) RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co Pty Ltd and Another 14 ALR 149 at 157 as follows:
“To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement.”
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel - Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.
In the notifier’s submissions there was little analysis of the precise scope of the invention claimed. There are however several matters which require consideration due to their potential impact on novelty and inventive step issues.
1. The inverted U-shaped channel.
The claim defines the mounting portion as comprising an inverted U-shaped channel having an outer side wall, an inner side wall and a top wall. The specification at page 3 states that the mounting portion may comprise a lip or the like which can fit over an upper edge of the barge board to mount the gutter thereto. It is also made clear that the gutter may be of various shapes and configurations depending on the size and type of roofing material. The patentee also states at lines 22-25 of page 5 that the gutter further includes a mounting portion which is in the shape of an inverted channel and which can pass over an upper end of the barge board. No other comments are made in the description of the invention regarding the shape of the mounting portion.
The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd, (supra) at page 228:
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger all assume that a claim may include an inessential feature"
On the basis of the statements made in the specification as a whole (“...by the terms of his specification and claims...”), I would think that a reasonable interpretation would be that the inverted U-shaped channel is not an essential feature of the invention. Neither in the specification nor anywhere else is it claimed by the patentee that the shape of the mounting portion is essential to the invention. No discussion is provided on how the inverted U-shaped portion materially affects the way in which the invention works, and indeed, I fail to see how the shape of the mounting portion contributes to overcoming the deficiencies of the prior art. Indeed, the lack of discussion on the issue negates to my mind the view that the shape of the mounting portion, and hence the inverted U-shaped channel, is of great significance.
Therefore, in my opinion, an addressee construing the specification would not see the mounting portion comprising an inverted U-shaped channel as an essential feature of the invention as claimed.
However, I have other material before me which is relevant to this matter. In C Van der Lely NV v Bamfords Ltd [1963] RPC 61, Lord Reid, although dissenting, suggested that, in trying to determine whether a feature of a claim was essential or otherwise, one should look at all the facts of the case, not just the specification. I think this is a sensible approach.
Metal Line have made several comments regarding the mounting portion comprising an inverted U-shaped channel. At page 5 of their written submissions they state that:
“On the other hand the provision of the U shaped mounting portion of the gutter as described in the Petty Patent enables the gutter to be installed after the roof tiles have been laid. This is an advantage as it enables the gutter to be installed onto existing roofs.”
On page 6:
“A U-shaped mounting portion is known for prior art internal gutters. However, there is no evidence that a U-shaped mounting portion is known in respect of external barge gutters.”
On page 8:
“By contrast, the gutter as described and claimed in the Petty Patent may be installed by simply locating the U-shaped mounting portion onto a barge board. No support clips are required. Further, the gutter may be installed after laying of the roof tiles. This enables damaged or rusted sections of the gutter to be removed and replaced without disrupting the roof tiles. This would not be possible for the Monier dry verge which has support clips fixed to the roof battens.
In view of the above, the Patentee submits that the U-shaped mounting portion is functionally different to the L-shaped portion and in addition has distinct advantages. Thus the Patentee submits that the U-shaped portion is not a trade variant or mechanical equivalent.”
In their conclusion following their comments on novelty, Metal Line assert that the U-shaped portion has a material effect on the way in which the invention works, and that the variation (between an L-shaped mounting portion and a U-shaped mounting portion) cannot be considered to be immaterial. Taking into account the comments made by Metal Line in their written submissions, it is possible to conclude that the feature of a mounting portion comprising an inverted U-shaped channel is an essential feature of claim 1.
Thus I am confronted with a situation where the specification is inconsistent with other facts before me. The addressee of a petty patent specification only has that specification to determine what the invention is, and he or she cannot (and should not) refer to written submissions by the patentee to discover the true nature of the invention. Based on what is stated solely in the specification, I must conclude that the shape of the mounting portion is not an essential feature of the invention.
However, if I am swayed by Metal Line’s assertion that this feature is essential, then I am left with no option but to conclude that the invention has not been fully described and the specification does not comply with section 40(2)(a) of the 1990 Act. See May v Higgins (1915) 21 CLR 119 and Sami S. Svendsen Inc v Independent Products Canada Ltd (1969) AOJP 647. Essentially, Metal Line are asserting that the present invention comprises a barge gutter where one improvement resides in the manner in which the gutter is attached to the roof. However, this improvement is not apparent from reading the specification, and is thus misleading the skilled addressee.
This is a ground upon which, in the public interest even if not for any other reason, the Commissioner could, and in my opinion should, refuse to grant an extension of term of the petty patent in its present form.
2. The wall being ‘generally curved’.
On a fair reading of the specification as a whole I am of the opinion that the shape of the wall which extends around and above the inclined roof edge is not an essential feature. Even though Metal Line state in their submissions that the shape of the wall “...provides the gutter with a larger internal space than known gutters...” and that “...this may minimise the likelihood of leaves or other debris from obstructing water from entering the water carrying channel...”, I note that the specification is silent on these issues, and makes no mention of the significance of the shape of the wall, merely its function, which is to cover the exposed roof edges. I find it difficult to determine from the petty patent specification why the shape of the wall would be an essential integer of claim 1 at all.
As the specification does not place any emphasis on the feature in question (see Sebel Properties v Fagaleo Pty Ltd 14 IPR 524), nor refer to any advantages associated with the feature (see Rodi & Wienenberger A.G. v. Henry Showell Ltd, supra), I must conclude that the feature does not materially affect the way the invention works ( see Catnic v Hill (supra), and Ryan v Lum (1989) 14 IPR 513) and is therefore inessential.
If the feature is essential, then I again must stress that the invention has not been fully described and the specification does not comply with section 40(2)(a) of the 1990 Act.
Accordingly, I find that the features of a U-shaped mounting portion, and of the wall being generally curved, are not essential features of the invention. Consequently, the claimed invention will lack novelty provided the citation discloses all the essential integers of the claim, even if the citation does not disclose these two features.
In deciding whether or not the claims are novel I find it useful to break down the broadest claim (claim 1) into its constituent features to allow me to compare these features against the documentary evidence.
Claim 1 defines:
“ A gutter for an inclined roof edge,
(a) the gutter having a lower channel to carry away water,
(b) a wall extendable around and above the inclined roof edge, and
(c) a mounting portion to mount the gutter adjacent the inclined roof edge
(d) such that the channel is located externally to the roof,
(e) the channel, wall and mounting portion being integrally formed,(f)the mounting portion comprising an inverted U-shaped channel having an outer side wall, an inner side wall and a top wall, the outer side wall terminating in a free edge,
(g) the inner side wall forming an inner side wall of the channel,
(h) the channel additionally having a bottom side wall and an outer side wall(i) which continues to extend upwardly to also form the wall,
(j)the wall continuing to extend generally upwardly and then being generally curved towards the roof, in use,
(k)so that it extends over an edge of roof tiles.
Based on the specification when read as a whole, features (a) to (e), (g) to (i) and (k) are essential to the invention and hence, if a citation does not disclose one or more of the essential features, claim 1 will be novel over the citation.
I will now discuss each of the citations relied upon by the notifier in the two section 28(1) notices in turn.
US 4347691
This patent specification was first available at the Patent Office Library, Canberra on 13 October 1982. It discloses a ‘soffit and fascia panel’ made from a single member of sheet material roll-formed or otherwise shaped so as to possess a substantially uniform cross-section. The specification states that
“....the main object of the present invention is to provide pre-fabricated panels, which are simple and economical to manufacture, and which may be quickly and easily installed on a house frame to form an integrated soffit and fascia.”
The panel includes a substantially flat soffit section with parallel front and rear edges, adapted to be installed below the extended end portions of rafters of a building frame. An attachment flange integral to the soffit section extends down from the rear edge of the soffit section and is adapted to be attached to the wall of the building frame. At the front edge of the soffit section, the sheet is bent down through a right angle, forwardly through a right angle, and then upwardly through a right angle so as to form a narrow rectangular channel. Additionally, an integral fascia section extends upwardly from the front edge of the soffit section and is adapted to lie in front of the extremities of the rafters. The top edge portion of the fascia section is bent back so as to overlie the extremities of the rafters.
In their written submission, the notifier states that though the terminology differs, the products are functionally equivalent in that they provide a cover for roof edges. They continue by stating:
“The abstract makes it clear that the product comprises a soffit section (gutter channel) to be fixed under the projecting rafters of a building, an attachment flange (mounting portion) depending on the rear of the soffit for attachment to the wall of a frame and a fascia section (upwardly extending portion) extending up from the front of the soffit section to cover the front ends of the rafters and a fascia top piece (inwardly extending portion) extending rearwardly from the top of the fascia to ie. over the front end portions of the rafters.” (notifier’s emphasis)
One issue which arises from this statement concerns whether the soffit section can be considered as equivalent to the gutter channel of claim 1. On a boxed cornice, the underside of the rafter tails are covered or closed in with panels called soffit. One particularly good definition of the term ‘soffit board’ may be found in the Penguin Dictionary of Building which defines it as “A horizontal board nailed to the underside of rafters, forming the soffit under an overhanging eave”. From this I conclude that the primary purpose of a soffit is not to carry away water as a gutter would, but to protect the rafter tails which extend beyond the edge of the wall plate.
Reference to the specification shows that the soffit section 10 does includes a channel 12 below the front of the fascia section 13. However, a fair reading of the specification leads me to conclude that channel 12 is not intended for the carriage of water. Rather, it would seem that the rectangular channel 12 is configured to accept the similarly sized downward rectangular projections of the brackets used to secure the fascia panel to the rafters. Figures 2 and 3 of the drawings clearly show how the projections 19 of the brackets 17 fit into channel 12.
Further support for this conclusion may be obtained from the specification which states at lines 60-63 of column 2 that fascia section 26 may be formed with “....a step at 27, some distance above the bottom of the fascia section, to facilitate the alignment and installation of a gutter (not shown) in front of the fascia section.” (emphasis added). Presumably, this gutter is designed for the carriage of water.
I am thus unable to accept the notifier’s assertion that the soffit section is functionally equivalent to the gutter channel of claim 1.
On further reading, other major differences between the citation and the claimed invention become apparent. At column 2, lines 36-41 of the citation, it is clearly stated that the top piece 14 of the fascia section 13 is designed to overlie the ends of the rafters 18. The top piece serves in place of the usual lower-most roof batten, to which tiles or other roofing surfaces are attached. This is clearly exemplified in Figure 2 of the citation. Further, the soffit and fascia panel is for an horizontal, not inclined, roof edge.
Given that the citation does not include essential features (a) and (k) at least, I conclude that the petty patent claims do not lack novelty in light of US 4347691.
US 4109428
This document was first available from the Patent Office Library on 3 November 1978. The citation describes a roof edging strip for finishing gable ends of tiled roofs. The edging strip includes a channel for carrying away water, and an upper flange for overlying the roof tiles. Figure 1 of the citation displays how the channel is mounted externally to the roof. As the citation explicitly discloses all of the essential features (a) to (e), (g) to (i) and (k), I conclude that claim 1 of the petty patent is not novel.
Though Metal Line asserted that the citation did not disclose the invention of claim 1, their argument was based on the citation not disclosing a U-shaped mounting portion. As I have decided this feature is not essential, the argument is moot, and accordingly, my conclusion that claim 1 is not novel is maintained.
With regard to claim 2 of the petty patent, I note that the citation clearly discloses a turned in lip (as shown at item 18 of Figure 1), and therefore, the citation does deprive claim 2 of its novelty.
Claim 3 is of the normal omnibus type and it is generally accepted that such claims are limited to the essential features of the invention as shown in the drawings (Witty v Turbon Engineering Co. Pty. Ltd. (1961) AOJP 2760). I see no significant difference or particular advantages between the essential features as illustrated and their definition in the claims as already discussed. Consequently, I believe that claim 3 is not novel in light of US 4109429.
US 3242622
The citation discloses a ‘flashing strip’ for use on building roofs, and was first available from the Patent Office on 19 July 1966. In general terms, it discloses a one-piece strip designed to cover a fascia attached to the ends of the roof rafters. The strip is attached to the roof by a lower flange and an upper anchorage portion which is designed to fit under the roofing material. I note that the strip must be located on a horizontal, not inclined, roof edge.
In their written submissions, the notifier states that although the terminology of the two documents differ, the flashing strip disclosed in the citation is functionally equivalent to the product defined by claim 1 of the petty patent in suit. Furthermore, the notifier contends that:
“The citation does not specifically disclose the U-shaped channel member 35/42/47 as a gutter to carry away rainwater, however, when fitted to an inclined roof edge, the product would function in the same manner.”
I do not accept this submission. Whilst Figure 4 of the citation does disclose a ‘channel’ defined by the flashing strip at 35/42/47, there is no evidence to support the contention that it is capable of carrying away water. On close examination of the specification I fail to see how the channel could carry away any water unless there was a catastrophic failure of the roof. The upper anchorage portion 37 is shown to fit under, not over, the roofing material 27. The citation provides further support for the view that the channel is not for the carriage of water. It specifically states that one object of the invention is to provide a means by which water draining off the edge of the roof is deflected downwardly towards the ground. It would seem that the primary purpose of the flashing strip is to protect the rafters, fascia and eaves, and not to carry away rainwater. I am satisfied that the evidence does not establish that the ‘channel’ 35/42/47 is functionally equivalent to the lower channel of claim 1. As the citation does not include at least essential feature (a) of claim 1, it does not deprive the claim of its novelty.
AU 80801/75
This document was first available from the Patent Office Library on 4 November 1976. I note that the applicant, Monier Colourtile, is the assignee of the invention disclosed in US 4109428, and that the inventions share the same inventor, Raymond Aarons. As with the disclosure in US 4109428, this citation describes a roof edging strip for finishing gable ends of tiled roofs. The edging strip includes a channel for carrying away water, and an upper flange for overlying the roof tiles. Figure 1 of the citation displays how the channel is mounted externally to the roof. The citation explicitly discloses all of the essential features (a) to (e), (g) to (i) and (k). Accordingly, I conclude that claim 1 of the petty patent is not novel in light of AU 80801/75.
The citation also discloses a turned in lip (as shown at item 18 of Figure 1), and as a result, claim 2 must be considered not novel in light of the citation. I also consider omnibus claim 3 to be anticipated by this citation as it discloses all of the essential features as shown.
AU Design 81828
This design was registered on 17 December 1981 and shows a ‘spouting system’ comprising a generally U-shaped main channel ending in two edges, the first edge extending upwards and around, and the second edge forming an inverted U-shaped channel with respect to the main channel. There is an obvious difficulty in assessing whether the claimed invention is disclosed when the prior disclosure is vague in the sense that the information or instructions provided may or may not result in the doing or making of something within the claim. Nevertheless, there is no reason why a drawing alone should not be capable of disclosing an invention.
In C Van der Lely NV v Bamfords Ltd [1963] RPC 61 the court said:
"There is no doubt that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language. It was argued that the same applied to a photograph. I do not think so ... The question is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me to be a matter for evidence. Where the evidence is contradictory the judge must decide. But the judge ought not, in my opinion, to attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by the witnesses appears to be most worthy of acceptance ... if the photograph is to be held to prove anticipation it must be possible for that man to work from the photograph, and, without himself [sic] adding a scintilla of invention ... to produce a workable machine which incorporates all the integers in the appellants' claim 1."
Strictly, this passage concerns only photographs but it seems to me that it applies by analogy to drawings particularly where, as in the present case, the drawings have no accompanying description. I will now consider the disclosure of the design in light of the C Van der Lely case (supra).
As part of their submissions, the notifier has provided a statutory declaration by Campbell John Seccombe, which briefly discusses the disclosure provided by AU design 81828. Mr Seccombe deposes that he has had over 8 years experience in relation to the design and manufacture of rainwater products, and I note that he has had some familiarity with products in this area since at least 1975. At the time of making his declaration Mr Seccombe was employed as Manager of Development and Research with BHP. I believe that Mr Seccombe can, given his experience, be considered a skilled addressee in the field of the invention.
The only statement made by Mr Seccombe regarding AU design 81828 relates to the feature of a mounting portion having a U-shaped configuration integral with the side of the gutter. In paragraph 9 of his statutory declaration Mr Seccombe states that he was aware of products of the kind illustrated by several expired Australian Registered designs, including AU 81828, ‘being on the market in the 1970’s’.
Whilst I am inclined to agree with the conclusion reached by Mr Seccombe that the feature of a U-shaped mounting portion was well known to those skilled in the art from at least the mid-1970’s, there is no further evidence as to what AU 81828 would have disclosed to a person skilled in the art at its publication date. The actual function and use of the spouting system is not easy to grasp from the two figures shown in the 81828 drawing, and Mr Seccombe (who it would appear has no direct knowledge of this drawing) has not provided any analysis or reasons to explain why 81828 is regarded as disclosing a gutter incorporating all the features recited in claim 1. Furthermore, in their submissions Metal Line state that:
“There is no evidence provided by the informant that in use the wall of the gutter is either extendable around or extendable above an inclined roof edge and that in use, it extends over an edge of roof tiles. The Patentee also submits that the profile of the spouting indicates that this would in fact not be the case.”
In similar situations, the courts have relied on expert evidence to assist them in the interpretation of a drawing. The court is entitled to use this assistance in order to instruct itself as to the technical matters involved, so as to place itself in the position of a person acquainted with those matters. In the present case, this option is not available to me, and I am unable to place myself in the position of a skilled addressee. I am left with no option but to conclude that there is insufficient evidence for me to assess the novelty of the claimed invention against AU design 81828.
Gable Rolls
Accompanying the statutory declaration of Campbell John Seccombe, and annotated as exhibit ‘C1’, is a photocopy of a Lysaght Building Industries brochure, published in Australia on 3 August 1992. At paragraphs 11 and 12 of his declaration, Mr Seccombe states:
“I am familiar with a product known as a ‘barge roll’ or ‘gable roll’ which is an elongate edge strip for sheet metal roofing elements. Gable rolls of this kind are illustrated in a brochure which was published in Australia in 1992 (Exhibit C1) and rolls of this kind have been commercially available in Australia for over fifty years.
In my opinion, the only difference between the well known gable roll and the invention recited by the claims of the petty patent is that the gable roll is provided with an inverted L-shaped mounting portion and the claims recite an inverted U-shaped mounting portion. Both products address the same problem in the art (roof edge covers & rainwater drainage thereby) and both propose the same solution, (other than the shape of the mounting portions).”
The very tiny illustration shows a roll generally circular in cross-section, which ends in an upper flange which I presume attaches to the upper edge of the roof under the roofing material, and a lower flange which is formed by folding the gable roll back on itself. In this configuration, the free edge of the lower flange lies internal to what conceivably could be a gutter channel. Naturally, my discussion of the illustration is predicated on the assumption that the gable roll is used in the orientation as shown in the brochure. I note that no evidence to assist on this matter has been provided by the notifier. In any case, I am of the view that the illustration does not disclose a mounting portion as the present claims require. There is insufficient detail apparent from the illustration for me to conclude otherwise, and thus, in the absence of evidence to assist in construing the publication, I am unable to conclude that the ‘gable roll’ advertised in the Lysaght brochure discloses the claimed invention.
Further support for the view that gable rolls do not anticipate the claimed invention comes from the written sumissions of the patentee. On page 11, Metal Line state that:
“Gable rolls are designed only as a cover and are not designed for, nor does do (sic) they carry water from the roof. In fact any water carrying function of the gable rolls would be quite uneccessary in view of the fact that water falling on the roof would be carried away by the roof corrugations into the rain gutters lining the horizontal roof edges.
In view of the above it is submitted that the invention as described and claimed in the Petty Patent is novel and not prior published over conventional gable rolls”
I see no reason to depart from this view.
Accordingly, without further evidence, I am unable to find in favour of the notifier’s assertion that at least claims 1 and 2 are not novel or inventive in light of conventional gable rolls or barge rolls commercially available in Australia since at least 1950.
Statutory Declaration of Campbell John Seccombe
This declaration is accompanied by several exhibits, of which only C1 and C3 to C5 are relevant to the discussion of novelty and inventive step. None of the exhibits, other than the Monier Colourtile patent already discussed (AU 80801/75), were advanced as individually providing a disclosure of the claimed invention. For the sake of thoroughness, however, I will comment on all of the material provided.
Exhibit C1 comprises the Lysaght Building Industries brochure, discussed directly above. I have concluded that there is insufficient evidence for me to decide on the issue of novelty. Exhibit C3 has been commented on previously, and I have determined that AU 80801/75 renders claims 1 to 3 not novel.
Exhibit C4 comprises a copy of a brochure from 1978 of the Monier Colourtile Pty Ltd ‘DV-01’ product. The product illustrated appears to be the commercial version of the invention described in AU 80801/75. Though some text is present, it does little to enlighten the reader on the nature of the product. Given the lack of evidence to assist in construing the document, I am of the opinion that the brochure would not render the claimed invention not novel.
Exhibited as C5 are four Australian Design Registrations, AU 75910, 81828, 102289 and 114654. My previous comments in regard to AU design 81828 are apposite; accordingly, I am unable to conclude if these design registrations render the claimed invention not novel.
GB 1347974
This document discloses a ‘trimming’ for the roofs of buildings, and was open to public inspection at the Patent Office on 16 September 1974. The specification states that:
“Where felt, asphalt, bitumen or other material is laid horizontally over the joists of a building it is usual to provide a strip of angle section metal to provide a finish at the edge. A facia (sic) extending below the strip is also often required and in addition it is necessary to construct a curb to prevent rain water from running over the edges of the roof and on which the trim strip is usually supported”
The trimming comprises an inner section, an outer cover strip and a fascia, the inner section having a flat portion which is able to be secured to the roof edge. The inner section and cover strip are secured together by a co-operating interlocking formation, while the fascia attaches to the cover strip by a similar arrangement.
In their written submission, the notifier states that though the terminology differs, the products are functionally equivalent in that they provide a cover for roof edges. They continue by saying:
“The product as illustrated by Figure 4 of GB 1347974, comprises a drip edge [6c] (gutter channel), an attachment section [handwritten X] (mounting portion) of inverted U shape, mounting a section [7] releasably secured to vertical battens [35]; a trim strip cover section [6b] (upwardly extending portion) extending up from the front of the drip edge [6c] to cover the end of the roofing material [40] and the roof edge [9] and a top section [6a] (inwardly extending portion) extending rearwardly from the trim strip cover section [6b] and terminating in a downwardly inclined portion (turned in lip).” (notifier’s emphasis)
One issue which arises from this statement concerns whether the drip edge 6c can be considered as equivalent to the gutter channel of claim 1. The specification of GB1347974 at lines 44-46, page 2 states that the purpose of drip edge 6c is to prevent drips from staining the fascia. Closer examination of Figure 4 confirms that in normal use, the channel formed at 6c could not possibly carry any water at all. As the citation does not disclose any feature equivalent to the gutter channel of claim 1, I must conclude that the petty patent claims do not lack novelty in light of GB 1347974.
NL 6707729
This was first available from the Patent Office on 6 February 1968, and has an English language equivalent in GB 1158911. Both specifications derive priority from GB 24988/66, and appear to be substantially identical. Consequently, for the purposes of this discussion, I will be referring to GB 1158911 only.
The citation discloses a ‘verge capping unit’ which can be used to seal the gabled ends of tiled roofs. The capping unit comprises a channel having one side extended to form a facing of the capping unit and the other side integrally connected to a first flange adapted to fit under the tile battens to retain the unit in position on the gable end. The verge capping unit includes a channel for carrying away water, and an integral re-entrant second flange for overlying the roof tiles. Figure 8 of the citation displays how the channel is mounted externally to the roof. The citation explicitly discloses all of the essential features (a) to (e), (g) to (i) and (k), and I therefore conclude that claim 1 of the petty patent is not novel. I also find claim 3 to be anticipated by this citation.
With regard to claim 2 of the petty patent, I note that whilst the citation does disclose a turned in lip on the clip which is used to join verge capping units (as shown at item 13 of Figure 2), there is no indication that the verge capping units themselves comprise a lip. Accordingly, I find claim 2 is novel.
Summary
I have found that claims 1 to 3 are not novel in light of US 4109429 and AU 80801/75, which disclose all of the essential features of these claims. I have also found that NL 6707729 (GB 1158911) discloses all the essential features of claim 1 and claim 3.
INVENTIVE STEP
The Patents Act 1990 refers to inventive step as follows:
“7 (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the 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 either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3)For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”
As to the question of how to determine what would have been obvious to a person skilled in the relevant art, I am guided by the question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39-331:
"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"
US 4109429, AU 80801/75 and NL 6707729 (GB 1158911)
In the case of documents US 4109429 and AU 80801/75, which individually disclose all of the essential features of the invention as defined by claims 1 to 3, I must conclude that the invention was obvious to a non-inventive person skilled in the art. Similarly, I regard the invention defined in claims 1 and 3 as obvious in light of NL 6707729 (GB 1158911).
Other documents
It is clear from section 7(2) of the Patents Act 1990 that the question of inventive step has to be considered against the background of the common general knowledge in the field of the invention. As to what constitutes common general knowledge, in his judgement in Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292, Aickin J stated:
"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."
Whilst I accept that Campbell John Seccombe is suitably qualified to comment on the state of common general knowledge in Australia before the priority date, I find that his statements provide little assistance in positively establishing what in fact was known in the art. Whilst there seems no doubt from the evidence and submissions that U-shaped mounting portions were commonly known to those working in the field of the invention before the priority date of the claims, no hard evidence has been presented to confirm the opinions expressed in the section 28 notices that the combination claimed by the present invention was obvious to a person skilled in the relevant art. Based on the Minnesota Mining and Manufacturing case (supra), what the notifier is required to do is show that it was obvious to select the individual features from the general body of knowledge in the art and combine them to produce a device equal to that which the petty patent now claims.
In the absence of clear evidence of the common general knowledge in the art, I am not in a position to decide against the invention on the ground of inventive step with regard to the other documents filed.
In summary, I find that claims 1 to 3 lack an inventive step in light of US 4109429 and AU 80801/75.
MANNER OF MANUFACTURE
It was submitted by BHP that the invention claimed is not a manner of manufacture, and that the present application does not satisfy the threshold requirement of an invention (see NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd (1995) 32 IPR 449). I am satisfied that this ground is not made out.
First, the invention clearly belongs to the useful arts as distinct to the fine arts (National Research Development Corp v Commissioner of Patents 102 CLR 252). Second, the invention clearly passes the test set out at pages 452-4 of Philips v Mirabella (supra), which involves asking whether it is apparent on the face of the specification that the necessary quality of inventiveness is absent. Whilst individual features may be well known, there is nothing on the face of the specification that suggests that the combination claimed is not new. The necessary quality of invention is not absent merely from the face of the specification.
CONCLUSION
The notifier has been successful in establishing the grounds of lack of novelty and lack of inventive step in relation to the claims. I therefore refuse to grant an extension of term of the petty patent in its present form.
However, I believe that there is patentable matter disclosed in the specification. In the circumstances, I think it is appropriate to give the petty patentee an opportunity to propose amendments to the petty patent specification to overcome the defects I have identified above. I will allow Metal Line a period of 60 days from the date of this decision within which to propose amendments accordingly.
COSTS
In their submissions, Metal Line agreed that it was normal for costs to follow the event, and in this instance I see no reason to depart from this practice.
The notifier has been successful in establishing the grounds of lack of novelty and lack of inventive step, and I therefore award costs against the petty patentee, Metal Line.
R. Hallett
Delegate of the Commissioner of PatentsPatent attorneys for the patentee: Cullen & Co., Brisbane
Patent attorneys for the notifier: Griffith Hack, Melbourne
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