Nicola Leonardis v. John Wolfe Stalban

[1992] APO 38

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 615580 in the name of NICOLA LEONARDIS

Title:    Improvements relating to foundation reinforcement support chairs.

Action:    Opposition by JOHN WOLFE StALBAN under section 59 (Patents Act 1952)

Decision:    Issued            .  Opponent failed to establish the grounds of opposition specified in their statement of grounds and particulars. Claims found not novel. Applicant given opportunity to amend.

Discussion of the application of regulation 5.11, and of the effect of statement of grounds and particulars on conduct of the opposition. Reference to a direction issued under regulation 5.10(1)

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 615580 by NICOLA LEONARDIS, and opposition thereto under section 59 (Patents Act 1952) by JOHN WOLFE StALBAN

background

Patent application 615580 was applied for on 7 October 1988 as provisional application no. PJ0824. The application was completed under section 41 (Patents Act 1952) by the lodgement of a complete specification on 6 October 1989, and was allocated the number 42724/89. The application is titled "Improvements Relating to Foundation Reinforcement Support Chairs"

The application was advertised as accepted on 3 October 1991. Consequently, this opposition falls to be determined under section 59 of the Patents Act 1952, and Chapter 5 of the Patents Regulations 1991; in fact it is the first opposition to be determined under the procedures of Chapter 5 of the Patents Regulations under the Patents Act 1990.

A notice of opposition was filed by Mr. StAlban on 11 November 1991, together with a statement of 'Grounds and Particulars'.
The statement of grounds and particulars is as follows:

"The Reinforcement Bar Spacer Company has been manufacturing for years prior to the application date a support chair for supporting reinforcements comprising a body comprised of plastics material, the body including a central turret, which includes upwardly open slots, being defined by the edges of the wall, having a part which is narrower located above a part which is wider and further characterised in that these upwardly open slots are adapted to interengage with gripping effect a reinforcement rod or rods. It follows we believe that this application for a patent has no novelty whatsoever having been already manufactured and offered for sale by ourselves prior to date of application."

On Dec. 11 1991 Mr. StAlban filed a copy of correspondence sent to the applicant's attorney on Dec. 9. The covering letter stated "We have today complied with the requirements of regulation 5.8(1)..". There was subsequent correspondence between the Patent Office and Mr StAlban concerning the material he had filed. On 4 May 1992 Mr. StAlban filed a statutory declaration reciting substantially the text of the statement of grounds and particulars, together with 3 exhibits (although the accompanying letter indicates the presence of only two. - I also note here that at the hearing the applicant asserted that he had not received the exhibits.) This correspondence culminated in my issuing, on 5 June 1992, the following directions under regulation 5.10(1) [after having taken the actions required under subregulations 5.10(5)(b) and (c)]:

"Pursuant to regulation 5.10(1), I make the following directions for the conduct of proceedings in this matter.

1.The evidence filed by Mr. St. Alban on 9 December 1991 and 4 May 1992 constitutes the evidence in support of the opposition.

2.The time for filing evidence in support of the opposition expired on 4 May 1992.

3.The time for filing evidence in answer is to commence from the date of these directions."

On 9 June 1992, the applicant applied (in accordance with regulation 5.12) for a time and place to be fixed for the hearing of the opposition, and requested that it be held in the Adelaide hearing sessions. In requesting a hearing, they relinquished their opportunity to file evidence in answer. By agreement of the parties, the matter was set for hearing in Adelaide on 29 June 1992.

On 15 June 1992 Mr. StAlban faxed a letter to the Commissioner in the following terms:

"I noticed on page 39 5.11 of Statutory rules 1991, No. 71, that the Commissioner may inform himself of a fact by reference to a document available in the patent office.

May I draw his attention to the following:-

Rapid Metal Developments designs 49295, 29720 (two of many)
A.R.C. Industries Ltd design 51917
Kiellerup design 79560
Arc Engineering designs 89042, & 89043
Humes Ltd, design 91798 & patent application 16288/83 (407773)
Abco Plastics design 80338
James Merrick Philips designs 97694 & 99814 (just to mention two of the nineteen designs this gentleman has registered in all)
Reinforcement Bar Spacer Company design 104200.

Just to name a few!!!.

In some at least of these is the concept that Mr. Leonardis is seeking to patent, yet has already been fully disclosed.

Might save time if these are brought to the appropriate authorities attention."

A copy of this fax was duly sent to the applicant.

The hearing was held on June 29. The applicant was represent by Mr H Schulze (patent attorney of Collison & Co, Adelaide) who was assisted by Mr M Horsburgh. The opponent represented himself.

Procedural issues

The circumstances of this case give rise to a number of procedural issues.

Statement of Grounds and Particulars

As stated in Hearings Practice Note No. 2 (issued by the Patent Office in August 1991), the function of the statement of grounds and particulars is to give the applicant fair notice of the case to be met, and to define the issues of the opposition. The opponent is bound by the statement of grounds and particulars, and their case is confined to the issues raised in that statement (unless it is amended under regulation 5.9). As a consequence, any evidence filed by the opponent which is not related to matters encompassed by the statement of grounds and particulars will not be considered as forming part of the evidence in the opposition proceedings.

At the hearing I reminded the parties of the above. I further proposed that during the course of the hearing I would not actively monitor submissions vis-a-vis whether they extended beyond the statement of grounds and particulars; rather I would consider the matter if a party objected to specific submissions during the course of the hearing. I sought submissions from the parties on this matter; both parties agreed to my proposed course of action.

Application of regulation 5.11

Mr. StAlban, in his fax of 15 June 1992, sought to have the Commissioner consider further material as part of the opposition.

Regulation 5.11 provides as follows:

5.11 (1)The Commissioner may inform himself or herself of a fact by reference to a document available in the Patent Office.

(2)If the Commissioner proposes to refer to a document under subregulation (1), he or she must:

(a)notify the parties accordingly; and

(b)give the parties a copy of, or access to, the document; and

(c)give the parties an opportunity to give evidence or make representations with respect to the fact or document.

(3)In subregulation (2), "document" does not include a document filed under regulation 5.4 ("filing of statement"), 5.8 ("time for giving of evidence") or further evidence referred to in subregulation 5.10 (4) (" conduct of proceedings to which this Chapter applies").

In essence, this regulation enables (but does not require) the Commissioner to consider documents other than those that are raised in the evidence of the parties, provided the requirements of subregulation (2) are met.

In the present case, the opponent is relying on this provision to draw the Commissioner's attention to certain material (mainly designs). If the material is relevant to the opposition, the opponent ought to have included it in the evidence in support of the opposition, or sought to file it as further evidence under regulation 5.10(4). Having regard to the constraints placed by regulations 5.8 and 5.10(4) on the filing of evidence by the parties to an opposition, it is entirely inappropriate for a party to an opposition to rely on the provisions of regulation 5.11 to have material considered by the Commissioner as part of the opposition. As a general proposition, the Commissioner ought not invoke regulation 5.11 in respect of material filed by a party to an opposition which ought to have been filed as part of their evidence in the opposition. In the present case, I do not believe that I should invoke regulation 5.11 in respect of the documents referred to in the opponent's fax of 15 June 1992.

On the other hand, I am mindful of the High Court of Australia's decision in Tate v Haskins, (1935) 53 CLR 594 at 611-612:

"A refusal to seal a patent which when sealed would be invalid has a justification which does not extend to objections affecting only matters preliminary to grant.  Notwithstanding that, under the procedure prescribed by the statute, an applicant has performed all the conditions upon which according to the terms of the statute the Comptroller's duty to seal arises, the very fact that the patent would be void when sealed means that the duty is only apparent and not real.  The instrument would be inefficacious because contrary to law.  It cannot be the imperative duty of any officer to issue such an instrument.  Mandamus would not go to compel him to do so."

(The Patent Office applies this decision in a procedure called 'bar-to-sealing', which is more fully elaborated in Re Applications by Gould Inc 13 IPR 644.)

It follows that I cannot ignore the documents that the opponent has identified.

At the hearing, I expressed the above views, and invited submissions from the parties. The parties did not disagree with my view of the application of regulation 5.11, and the application of the bar-to-sealing procedure. Consequently, the opposition proceeded on the basis that the documents referred to in Mr StAlban's fax of 15 June 1992 would not be considered as part of the inter parte opposition proceedings, but would be considered ex parte in the context of a bar-to-sealing action.

The opposition

The only ground of objection raised in the statement of grounds and particulars is that of lack of novelty. This ground of objection usually requires an opponent to establish that a relevant citation is publicly available before the priority date of the claim being considered.

The material filed by Mr StAlban in support of the opposition consists of:

-The cover page, plus page 5, of a sales catalogue. At the top of page 5 there is the following words "ective: - 1 January 1987".

-    a picture of a support chair

-copy of a letter sent to the attorney for the applicant, dated 1 November 1991, in which a number of assertions are made

-a declaration whose contents was essentially the same as the statement of grounds and particulars

-3 bar chairs (one of which is that manufactured by the applicant)

-a copy of a catalogue issued some time in 1992.

At the hearing, the issue of the date of publication of the various documents was raised. There is nothing before me that establishes that any of the documents (including the sales catalogue bearing the words 1 January 1987) was in fact publicly available before the priority date of the claims of the specification.

As a result, there is no evidence before me, in the inter parte opposition proceedings, against which I can consider the issue of the novelty of the claimed invention.

Consequently, I find that the opponent has failed to establish the ground of opposition relied upon. Pursuant to sub-section 60(1) of the 1952 Act (which applies by reason of section 234(3) of the Patents Act 1990), I decide the opposition in favour of the applicant.

bar-to-sealing

As noted above, Mr StAlban provided reference to a number of documents which did not constitute part of the evidence in the opposition. Immediately following the conclusion of the inter parte hearing in the opposition, an ex parte hearing proceeded in respect of these documents. In that hearing, I sought submissions on only those documents referred to by Mr. StAlban which I considered to be particularly relevant - viz designs 79560, 89042, and 100253 (which is one of the 19 designs of JM Philips). I note here that designs 89043 and 91798 are not materially different to 89042 so far as this matter is concerned. I also note that all these designs were published by the Designs Office prior to the date of making the present application.

The specification as accepted contains 2 independent claims. Claim 1 is:

A support chair for supporting reinforcement for foundations which includes at least one uppermost upwardly open slot and a lowermost horizontal support base, said base being substantially of plate shape, and said chair being further characterised in that at least one of the upwardly open slots is adapted to interengage with gripping effect a reinforcement rod or rods.

and claim 9 is:

A support chair for supporting reinforcement for foundations comprising a body comprised of plastics material, the body including a central turret and a lowermost horizontal support base, said base being substantially of plate shape, the central turret including at least one upwardly open slot being defined by the edges of a wall comprising the turret, the slot being open at an uppermost end, the shape of the slot as defined between the edges of the wall having a part which is lower located above a part which is wider, and further characterised in that at least one of the upwardly open slots is adapted to interengage with gripping effect a reinforcement rod.

As described in the specification, the gripping effect is provided by a projection on each side of the slot. In use, the reinforcing mesh is pushed past the projection; the chair being made of plastic, flexes to allow the mesh to pass the projection. The projections prevent the mesh from readily leaving the slots. the gripping effect is not provided by a friction fit of the mesh in the slot.

The features of claim 1 read directly onto each of design nos. 79560, 89042 and 100253. Consequently I conclude that the invention claimed by claim 1 is not novel.

The features of claim 9 read directly onto design no. 79560. Consequently I conclude that the invention claimed by claim 9 is not novel.

At the hearing, the attorneys for the applicant foreshadowed that they would be proposing amendments to introduce a further feature into the claims [and indeed filed a request to amend on 30 June 1992 (the day after the hearing)]. The relevant feature is that referred to on page 5 of the specification in the following terms:

"Accordingly there is provided, according to this invention, a base in which the underneath outer edge is shaped so as to provide a curvature of substantial radius so as to diminish the potential for stress concentration..."

The specification, in associated paragraphs, indicates that this feature prevents perforation of protective coating when the chair is used on cardboard formwork. I observe that this feature, as described in the specification, is not disclosed in any of the above-mentioned designs. In making this observation I note that I have not considered whether the above-mentioned request to amend overcomes my findings of lack of novelty.

conclusion

I have found that the opponent has not succeeded on the ground of opposition on which he relied.

I have also found that the invention claimed in claims 1 and 9 is not novel. However I am of the view that this defect may be overcome by suitable amendments to the specification.

Consequently, I allow the applicant 60 days from the date of this decision to ask for leave to amend the specification to overcome these defects.

This decision has determined that the opposition has not succeeded, and therefore the opposition proceedings are concluded. Consequently the provisions of regulation 10.2(6), wherein an opponent is invited to comment upon proposed amendments, is inapplicable to any amendments following from this decision.

/..8

costs

In opposition matters, costs usually follow the event and are awarded against the unsuccessful party. In the present opposition the opponent (Mr StAlban) was unsuccessful. However, I have found that the invention claimed is not novel on the basis of material supplied by the opponent. Consequently, I make no award of costs in these proceedings.

(D. HERALD)

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co, Adelaide