Michael Charles Graf, Mario Muscat and John Muscat v Anthony Harold Milward-Bason

[1990] APO 8

In the Matter of the Patents Act 1952

‑ and ‑

In the Matter of Patent Application No. 557369 in the Names of MICHAEL CHARLES GRAF, MARIO MUSCAT and JOHN MUSCAT

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In the Matter of an Opposition thereto under Section 59 by ANTHONY HAROLD MILWARD‑BASON.

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS:
Background
        On 7 October 1983 Michael Charles Graf, Mario Muscat and John Muscat lodged patent application No. PG 1748 for an invention entitled "Improvements in Building Techniques" accompanied by a provisional specification.  A complete specification was filed in respect of the application on 3 October 1984 and the application was then assigned the number 34028/84.  The application was advertised accepted in the Official Journal as serial No 557369 on 18 December 1986 and opposition thereto under section 59 of the Act was filed on 18 March 1987 by Anthony Harold Milward‑Bason.
        Evidence stages in the opposition were completed in December 1988 and a hearing was held on 14 August 1989 in Melbourne.  At the hearing Mr J. Winch, patent attorney of Callinan Lawrie, represented the applicants and Mr K. Leslie, patent attorney of Davies & Collison represented the opponent.  Two of the joint applicants and the opponent were also present at the hearing.

At the hearing Mr Leslie indicated that grounds of opposition relied upon by the opponent were those of paragraphs (e), (g) and (h) of sub‑section 59(1), i.e. prior publication, obviousness and lack of novelty.  Locus standi of the opponent was not challenged.
The Specification
        The specification states that the invention relates to "an improved method for the provision of a stable foundation structure (preferably elevated) for supporting a building or the like" and has particular relevance for use on uneven or sloping sites.  The description refers to the common utilization of concrete slabs as the foundation upon which a building or the like structure is to be subsequently erected, but notes that the slab‑on‑ground technique requires a substantially level site.  If a sloping or undulating site is involved, then earthworks are first needed to establish a level site.  The description indicates that it may not always be practicable or desirable to excavate or fill a site to establish a base for a concrete foundation slab‑on‑ground.  The specification continues:

"The present invention seeks to overcome the problems associated with the prior art building techniques by providing what might be termed a suspended floor system or structure which involves in its construction minimal interference with a building site, thereby leaving the site and its inherent natural drainage and vegetation substantially intact."

There is a consistory statement in terms identical to claim 1 followed by description of the method of the invention with reference to 6 figures of the drawings forming part of the complete specification.
        There are 10 claims to the specification.  Claims 1, 9 and 10 read as follows:

"1.A method of constructing a suspended floor structure for buildings and the like, said method including the steps of:

(a)forming a plurality of spaced‑apart holes or footings, in a predetermined pattern, over a proposed building site;

(b)positioning a temporary load‑supporting structure over said pattern of holes in a predetermined manner, and substantially levelling said structure;

(c)locating at least a longitudinally‑extending array of load‑supporting beams on said load‑supporting structure;

(d)affixing a plurality of downwardly‑extending column members to said longitudinally‑extending array of load supporting beams, said column members being adapted to be located in said previously‑formed holes;

(e)readjusting said temporary load‑supporting structure, load‑supporting beams, and column members to maintain a substantially level structure;

(f)thereafter fixing said column members in said footing holes;

(g)removing said temporary load‑supporting structure; and

(h)affixing a suitable decking material to said thus‑formed substantially level structure to thereby provide a substantially level, stable suspended floor structure for subsequent building thereon.

9.A suspended floor structure, when produced by the method as claimed in claim 1, substantially as described herein with reference to the accompanying drawings.

10. A method of constructing a suspended floor structure for buildings and the like, substantially as described herein with reference to the accompanying drawings."

Claims 2 to 8 are method claims appended directly or indirectly to claim 1.  However, unlike the other appended claims which in some way further characterize the method steps of the invention or the floor surface of the floor structure, claim 3 does not do so.  Claim 3 defines a "further step" which is unrelated to the method of construction of the suspended floor structure and as a result fails to define the invention, thus contravening section 40.
        As is apparent from the description and the definition of claim 1, the invention relates to a building method or technique for constructing a suspended floor structure on a building site, and wherein the site requires no levelling prior to commencement of the method.  The expression "suspended floor structure" is used in the art to describe structures having a floor or building level elevated from the level of the building site.
        It is not necessary to refer here to the drawings in any detail.  They depict particular constructional elements to enable the method as recited in claim 1 to be practised.  With respect to steps (c) and (d) of the method, I note the following reference on page 8 of the specification:

"A floor support structure of the desired size, shape etc. can either be constructed on site or prefabricated off‑site and then be laid out on the structure of temporary beams previously provided."

The Evidence
        The evidence‑in‑support consists of a statutory declaration by the opponent Mr A.H. Milward‑Bason including 8 Exhibits.  As evidence in answer two statutory declarations were filed, one by Mr Michael Graf, a co‑inventor and co‑applicant, and the other by Mr Ewald Jeske.  The evidence‑in‑reply consists of a second statutory declaration by Mr Milward‑Bason including 5 further exhibits, and statutory declarations by Mr Ronald Earp (with 1 exhibit) and Mr Paul Milward‑Bason.
        The opponent, Mr A. Milward‑Bason, is a builder who has been involved in the building industry in Australia for over twenty years.  He is a co‑patentee in respect of AU patent 534585 which relates to a method of building construction.  The opponent's evidence in respect of this opposition is primarily directed to establishing that prior to the date on which the patent application was lodged, the method of the invention was publicly used in Australia.  Accordingly the opponent contends that the invention as claimed lacks novelty.
        The opponent's allegation of prior use and lack of novelty centres on two building structures in the Gisborne/Riddells Creek district in Victoria on properties identified as "Lot G Hudson Lane" and "13‑14 Barringo Road".  The Lot G building was commissioned and built for a Mr Glenn Garth and the building at the latter address was built for the father of co‑applicant Graf.  There has been limited evidence provided regarding the structure at Barringo Road and precisely when it was built.  However regarding the Lot G site, the opponent's evidence indicates that an elevated or suspended floor structure was constructed at that site in September 1983, there being strong indications that the method as claimed in the opposed patent application was used in its construction.  Information from the Shire of Gisborne provided in evidence indicates that footings for the site were approved by the first building inspection on 7 September 1983 and that the "slab and base structure" was approved following a second inspection on 21 September 1983, i.e. before the filing date of the application under opposition.  Also exhibited in evidence is a series of photographs supplied by Mr Garth to the opponent which are said to depict various stages of actual construction of the floor structure at the Lot G site.  The opponent's evidence asserts that the construction whilst on private property was undertaken without any measures being taken to maintain secret the method used and in fact apart from the building inspectors and the contractors or employees on site, other persons were invited to the site to view construction of the floor structure.  In a letter to Mr Milward‑Bason, which is exhibited in the evidence‑in‑reply, Mr Garth the owner of Lot G states that he was aware that the manner of installation of the floor structure was a "first" in the sense of a prototype for domestic construction and refutes any suggestion that it was for experimental or testing purposes.  The suspended floor structure formed the foundation and floor for a new house at the Lot G site.
        A statutory declaration by Michael Graf, one of the joint applicants is provided in answer to the opposition; in paragraph 1 Mr Graf states that he is "authorised to make this Declaration on behalf of the joint applicants".  In answer to opponent's allegations that the building at Lot G constituted a prior publication of the method the subject of the opposed application, Mr Graf deposes at paragraph 3:

"In reply to such an allegation I would point out that, once the theory behind or involved in the method of construction the subject of the Opposed Application had been worked out, it then became necessary to determine whether or not such a method of construction was indeed capable of being put into effect practically.  Clearly the only means of making such a determination was to actually construct a building using the method of construction the subject of the Opposed Application.  It was with this end in mind that, prior to approaching my Patent Attorneys with a view to making formal Application for Patent protection in respect of the said method, the joint applicants in the Opposed Application made arrangements for an actual building to be constructed using that method, such building being that now at Lot G, Hudsons Lane, Riddells Creek, Victoria."

After referring in paragraphs 4 and 5 to requirements for obtaining the relevant building approval and permit from the local government authority, the declaration concludes with the following paragraphs:

"6.That even once the permit had been approved and construction had commenced it was still not possible unequivocally to determine whether the method of construction the subject of the Opposed Application was viable and practical.  A final decision as to viability and practicality could not be made until such time as what might be termed the load‑supporting structure had been completed. .....

7.That upon being convinced that the method of construction the subject of the Opposed Application was successful I then, on 20th September 1983, on behalf of the joint applicants approached Callinan and Associates, Patent Attorneys (now known as Callinans) and arranged for the preparation and filing of an Application for Patent directed to the relevant method of construction. .....

8.That the building at Lot G, Hudsons Lane, Riddells Creek, Victoria, as constructed using the method of the Opposed Application, was constructed on private property in accordance with an arrangement made with the owner thereof, such building being constructed primarily for the purpose of ascertaining whether the method the subject of the Opposed Application would be successful on a practical scale.  In the result, according to my understanding such use of the invention the subject of the Opposed Application must be considered as being experimental use only.  I would also suggest that such use was under no circumstances "public" use, taking into account the actual site of construction.

9.That the aforementioned building at Lot G, Hudsons Lane, Riddells Creek, Victoria was the only building actually under construction prior to the priority date of the Opposed Application."

Also lodged by the applicants as evidence‑in‑answer is a declaration by Ewald Jeske.  Mr Jeske declares that he has been engaged in the building and construction industry for many years.  His evidence addresses what he sees as the ingenuity and advantages displayed by the method of the opposed patent application.  It is also clear from his evidence that his construction company Jeske Construction has, with the permission of the applicants, used the method on a trial basis although it is not apparent when such trials took place.
        In his declaration constituting evidence‑in‑reply, Mr A. Milward‑Bason has drawn attention to the fact that since mid 1984 Mr Jeske has been a director of a number of construction companies which have also had as directors one or more of the three joint applicants.  Copies of company registration documents were exhibited to the declaration confirming this fact.
Submissions
        In submissions on behalf of the opponent Mr Leslie addressed the following issues:

(a)The claims were not entitled to the priority date of 7 October 1983 given the disclosure in the provisional specification which was lodged on that date with the application.  He submitted that at best the claims have a priority date of 3 October 1984.

(b)The method of the invention as claimed has been prior used before the priority date of the claims as a consequence of the constructions at both Lot G Hudsons Lane and Barringo Road.

(c)The use was public use because at least the Lot G site was not secret or secluded and persons other than the patent applicants and site owner had access to the site during construction.

(d)The use could not be classified as "experimental" since the construction was apparently effected for Garth on the basis that the construction method was an already commercially acceptable method, and was provided at an agreed cost to Garth.  Furthermore there is nothing in the evidence to establish that the use was for "reasonable trial" purposes.

Mr Winch's submissions on behalf of the applicants can be summarized as follows:

(a)Regarding the priority date issue, claim 10 (the omnibus method claim) was at least entitled to a priority date of 7 October 1983.

(b)Whilst applicants were prepared to concede that the method of construction the subject of the patent application was used prior to the earliest priority date, it was in fact both secret use and experimental use of the method as known in patent law.

(c)The use was secret use given that the Lot G site was private land, at the time of construction it was a secluded site in the sense that the area was relatively uninhabited, and access to the site was limited to construction workers or persons authorized by the applicants (builders) or the owner.

(d)The constructions at Lot G and Barringo Road were on an experimental basis since it was necessary to work the method on a scale whereby it could be determined for sure that the method would in fact work and be put into effect on a practical basis.

The Patents Act 1952
         The grounds of opposition relied upon by the opponent in this matter are set out in the following paragraphs of sub‑section 59(1) of the Act:

"(e)that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim;"

"(g)that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;

(h)that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia."

Sub‑sections 59(3) and (4) provide as follows:

"(3)For the purposes of this section, no account shall be taken of any secret use.

(4)This section is subject to sections 158 and 159."

The only provision of sections 158 and 159 of relevance to considerations in this matter is paragraph (1)(h) of section 158, namely:

"158.(1) Objection shall not be taken to an application for a patent, so far as the invention is claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, and a patent, so far as the invention is so claimed, is not invalid, by reason only of ‑

(h)the invention, so far as so claimed, having been publicly worked in Australia, within one year before the priority date of that claim ‑

(i)by the patentee or applicant or by a person from whom he derives his title; or

(ii)by some other person with the consent of a person referred to in sub‑paragraph (i),

if the working was for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should have been in public."

Accordingly these provisions are such that in considering whether grounds of opposition have been established firstly, no account is to be taken of any "secret use", and secondly, public working of the invention within one year before the priority date will not invalidate a claimed invention provided that the working was for "reasonable trial" purposes only and it was "reasonably necessary" to conduct such trials in public.
Priority Date
        The opponent argued that the claims are only entitled to a priority date of 3 October 1984 corresponding to the date of lodgement of the complete specification.  In his submission, Mr Leslie drew attention to alleged differences in disclosure between the complete specification and that of the provisional specification lodged on 7 October 1983.  He pointed out that the provisional specification, in referring to "one aspect of the invention", includes the following method step:

"disposing a prefabricated floor supporting structure on said temporary structure, said floor‑supporting structure including a plurality of downwardly extending columns adapted to be located in said formed holes" (p.5),

and that the remainder of the specification further describes the prefabricated structure and mentions advantages arising therefrom.  He submitted that the provisional specification does not suggest that columns can be affixed to the beams of the floor support structure after the beams have been placed on the temporary structure as claim 1 defines.  It was on this basis that the opponent argued that the claims were not entitled to priority from the provisional specification.
        Webster's Third New International Dictionary gives the following definition of prefabricate:

"1 : to fabricate all or most of the parts of (as a house) at a factory so that construction consists mainly of assembling and uniting standardized parts".

I would agree with Mr Leslie to the extent that portions of the provisional specification, for example on page 7, tend to disclose the step of placing of a completely preassembled floor structure framework, comprising beams and attached columns, on the temporary structure.  However it seems to me that the passage on page 5 is open to several interpretations as to its disclosure, one being that it discloses elements of the supporting structure, such as the beams, columns and interconnecting brackets, being prefabricated offsite and then assembled together on the temporary structure.  Whilst there is no expert evidence before me indicating what the provisional specification discloses to a skilled addressee (the priority date question was first raised at the hearing), I am of the view that the above interpretation is not unreasonable given the nature of the overall invention and its application to buildings of unspecified size.  Given the disclosure indicated, it follows that the claims are entitled to a priority date of 7 October 1983.

Prior Publication, Novelty
        The opponent alleges that the construction method as claimed was not novel at the priority date arising from prior use of the invention in public prior to the priority date by the applicants at two building sites near Gisborne in Victoria.  As there has been little evidence provided by the opponent to establish what was built, and when, at the Barringo Road site, I need not further consider the question of prior use arising from the construction at that site.  However in support of the allegation concerning the construction at the Lot G site, the opponent has provided in evidence various documents including:

(a)Copies of documents from the Shire of Gisborne concerning building approvals and inspections;

(b)Photographs supplied by Mr Garth showing the Lot G site during construction stages; and

(c)A letter by Mr Garth concerning the construction at his Lot G site.

The opponent's evidence, in my opinion, indicates that the construction at Lot G involved method steps in common with the claimed invention, however, in my view, that evidence does not conclusively prove that the construction involved all eight steps of the method.  Those steps about which I feel there is some doubt are steps (c)‑(e) as identified in claim 1.  I note however that the photographs do clearly show joined "load‑supporting beams" and "downwardly‑extending column members" positioned on a temporary load‑supporting structure (steps (c) and (d)) : furthermore, given the nature of this assembly, it seems unlikely that the temporary structure would not have been checked and readjusted to maintain a substantially level orientation (step (e)).
In opposition proceedings the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523). Thus, given the evidence of the opponent regarding the Lot G site construction, which has not been disputed by the applicants, I conclude that the construction at Lot G practised the method of the invention claimed. Were I in any doubt in so concluding I note that Mr Graf in his evidence for the joint applicants concedes that the method of construction the subject of the opposed application was used at the Lot G site (see paragraphs previously quoted). The evidence also establishes that the Lot G construction involving the method was completed more than 2 weeks prior to the filing date of the patent application, since the "slab and base structure" was approved on 21 September 1983.
        Consequently I am satisfied that the invention was the subject of prior use by the applicants before the priority date at the Lot G site.  However before such use will be sufficient to anticipate the present invention there are two matters to consider.  Firstly, was the use such as to be "secret use" as is known in patent law thus enabling the provisions of sub‑section 59(3) to apply, or was it prior public use?  Secondly, if prior public use is found, were the circumstances of that use such that it was for the purposes of "reasonable trial only" thus enabling the provisions of sub‑section 158(1) to apply.  The parties placed contrary submissions before me on these matters.
        Ricketson in his text "The Law of Intellectual Property" (1984) comments thus in paragraph 49.19 regarding "secret use":

"Prima facie, the word "secret" implies that the user is deliberately concealed.  Nevertheless, whilst such a user is clearly "secret", another meaning of "secret" is simply that the use has been non‑public, whether or not this has been intentional.  This second meaning is also consistent with a number of older English cases in which it was held that only prior public user of an invention led to invalidity.  Furthermore, "public" in these cases did not necessarily mean making the details of the invention available to members of the public without restriction, but rather that the use was "open" or "in public."

In the present case there is no evidence to suggest that the user was concealed by the applicants or that the applicants so controlled the user that others were prevented from discovering the invention.  Whilst the construction was undertaken on private property, the evidence indicates that various persons other than the building personnel had or were permitted access to the site during construction.  No evidence has been provided on behalf of the applicants to the effect that persons who viewed the construction at the Lot G site prior to 7 October 1983 were under an obligation of confidentiality.  In fact I note that from his letter to Mr A. Milward‑Bason, Mr Garth, the owner of the Lot G site, indicates that he was under no confidentiality constraints regarding the construction at his site.  Given these circumstances surrounding the construction at the Lot G site, I am of the view that the use was "open" or "in public" and did not constitute "secret use".
        I turn now to consider whether the applicants are entitled to the benefit provided in paragraph (1)(h) of section 158.  In this regard the questions to consider are whether the public working of the invention at the Lot G site was for the purpose of reasonable trial only and whether it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should have been in public.  It is, I believe, evident from the authorities that what constitutes "reasonable trial" and what is "reasonably necessary" in this regard is dependent on the nature of the invention and what disclosure may be inevitable in the course of developing the invention (see, e.g. Ricketson's text (supra) at paragraph 49.22 and the authorities listed).
        The present invention concerns a method of constructing a suspended floor structure for buildings and the like.  The specification indicates (at page 15) that this method is suited to a variety of applications where an elevated floor structure is needed, applications ranging from new homes to car‑ports and external decking for existing homes.  Thus it is conceivable that the method could be employed to construct floor structures ranging in area from less than 10 square meters (e.g. for decking) to well over 100 square meters (e.g. for houses).
        The use of the invention at the Lot G site involved the construction of a suspended floor structure for a house for Mr Garth, the structure having a floor area of about 150 square meters, according to the plans.  Mr Graf's evidence for the applicants is to the effect that the "viability and practicality" of the method needed to be determined and that the Lot G structure was "constructed primarily for the purpose of ascertaining whether the method the subject of the Opposed Application would be successful on a practical scale".
On reviewing the reported cases which deal with the question of "reasonable trial" of an invention by a potential applicant, it seems to me that such "trial" in the sense of working the invention is intended to determine whether the invention will work, or achieve the intended results, as envisaged. The specification of the patent application can then be drafted with full knowledge of the results of the trial. As Whitford J. observed in Perard Engineering Ltd. (Hubbard's) Application [1976] RPC 363 at 369, when considering an equivalent provision of the UK Patents Act 1949:

"A trial may well be necessary before a specification can be drafted.  I think the subsection is designed to protect a potential applicant who wants to carry out a trial in order to enable him to determine exactly what form his application should take if he is forced by particular circumstances to carry out a trial in public."

In the Perard Engineering case (supra), particular apparatus invented for use with mining equipment was the subject of trial at a Colliery before the patent application date. The Patents Appeal Tribunal and the Court of Appeal considered that the use constituted a "reasonable trial" in view of the particular circumstances involved. In the case of International Paint Co. Ltd.'s Application [1982] RPC 247, both the Comptroller‑General and (on appeal) the Patents Court took the view that the application to several ships in actual service prior to the priority date of an invention involving an anti‑fouling paint for ships was a "reasonable trial" of the invention. However in the case of Cave‑Brown‑Cave's Application [1958] RPC 429, while some trial of the invention relating to gymnastic equipment to be operated by children seemed appropriate, the Patents Appeal Tribunal considered that as the trial or use extended over six months this was beyond reasonable trial only of the apparatus in question. The Tribunal noted a distinction between matters associated with the workings useful to the commercial exploitation of an invention and workings solely for reasonable trial purposes.
        In considering the working of the present invention before the priority date, I do not consider such working can be viewed as a "reasonable trial only".  The working of the invention in question involved construction on a considerable scale and whilst the overall practicability of the method in producing a floor structure for a house was able to be evaluated by the working, this to me seems far beyond what was needed to reasonably trial the invention.  To reasonably trial an invention such as claimed in this case, the primary intention I believe must be to evaluate the actual method steps and their sequence, so that if a defect presents itself, it can be addressed and taken into consideration when drafting the patent specification.  There has been no evidence from the applicants to establish that a trial on the scale worked was justified given the nature of the invention.  In fact I see no reason why a test on a rather small scale (say involving a 10 square meter floor structure) would not have been adequate to reasonably trial the invention, if that was needed, and on such a scale, public working may not even have been necessary.
        In fact the nature and the circumstances surrounding the working of the present invention strongly suggests to me that the working served as an evaluation exercise by the applicants with respect to commercial exploitation of the invention on a particular scale.  The fact that the working was done on a house‑size scale, that the working was done at an agreed cost to the site owner Mr Garth and that, according to Mr Garth, potential customers of the applicants visited the Lot G site to view the construction during the working all suggest a commercial exploitation process rather than a working for reasonable trial purposes only.
Additionally and independent of the above considerations, it is apparent that Mr Garth did not view the construction as being experimental or a trial. In Andrew Master Hones Ltd v Cruikshank & Fairweather [1981] RPC 389, Buckley L.J. commented thus at p.403:

"When a new device is introduced to the market its commercial use may well have experimental value from the point of view of the inventor or patentee for some time thereafter; but if the use of the apparatus is by no means experimental from the point of view of the customer I doubt whether it can be properly described as for the purpose of trial or experiment only."

It seems clear to me that those comments are equally applicable to the use of a method.  Thus given Mr Garth's view of the working, it is indeed doubtful whether the working could properly be described as for the purposes of reasonable trial only.
It is my decision therefore that the working of the invention at the Lot G site was not for the purpose of reasonable trial only. That finding is sufficient to render inapplicable the provisions of paragraph 158(1)(h) of the Patents Act. Consequently the invention as claimed lacks novelty in view of the public use at the Lot G site near Gisborne before the priority date.
        My conclusion regarding lack of novelty applies to all claims.  It is clear from the copies of the Shire of Gisborne documents lodged in evidence that the second building inspection at the Lot G site approved the "slab and base structure" which can only mean the base structure with its concrete slab as per the plans.  Consequently the "further steps" as related in the appended claims clearly formed part of the public use before the priority date.  I note also that the applicants in their evidence and in submissions presented on their behalf at the hearing have conceded that the method of construction the subject of the patent application was used by them prior to the priority date.
Obviousness
        The question of obviousness of the claimed invention was not addressed to any significant degree by the opponent at the hearing.  As there is no evidence of relevance to this ground of opposition before me, I am unable to consider it further.
Decision
        I have found that the invention claimed lacks novelty in view of the public use of the invention before the priority date.  I therefore refuse to grant a patent on the application.  I award costs against the applicants.

(T.R. BRUHN)

Patent attorneys for the applicant: Callinan Lawrie, Melbourne