Nomad Structures International Ltd v Heyring Proprietary Ltd
[1992] APO 15
•14 April 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 575494 in the name of NOMAD STRUCTURES INTERNATIONAL LTD.
Subject : MODULAR TENT STRUCTURES.
Action: S.59 Opposition by HEYRING PROPRIETARY LTD; hearing; further evidence.
Decision : Issued .
Grounds of opposition established; specification misleading; claims not clear and succinct and not fairly based. One claim not novel re prior use; combination of prior uses discussed. Opportunity given for applicant to propose amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 575494 by NOMAD STRUCTURES INTERNATIONAL LIMITED and opposition under S. 59 of the Patents Act 1952 by HEYRING PROPRIETARY LIMITED.
BACKGROUND
An international application was filed on 25 June 1986 by Nomad Structures International Ltd. for a patent for an invention entitled "Building Structures". The application has an earlier priority date of 8 July 1985. After entering the national phase in Australia the application was advertised as accepted on 28 July 1988 and given the serial No. 575494. A notice of opposition was lodged on 26 October 1988 by Heyring Proprietary Limited. and the matter was heard in Canberra on 3 September 1991; the applicant was represented by Dr J Emmerson, Q.C. and Mr G Noonan, patent attorney, and the opponent was represented by Mr B Hess of Counsel and Mr T Barnes, patent attorney.
THE SPECIFICATION
The specification indicates that the invention relates to the field of temporary building structures such as marquees, tents, and the like. The invention generally involves a framework structure where inverted V-shaped modules form the edges of imaginary adjacent pyramids. The drawings of the specification show that when a covering material is placed over the framework, the structure adopts a saddled or winged appearance. More specifically, the invention includes a portable structure comprising framework modules, the hollow tubular framework of the structure being joined by connecting strips having edges adapted to fit into grooves in the framework. The object of the invention is to provide a versatile and flexible building structure which is easily erected and extendable. There are 46 claims defining the invention, including independent claims 1, 17, 29, 32, 45 and 46. Some of the claims are as follows:
A portable building structure comprising an assembly of collapsible framework modules, each module comprising a plurality of elongate frame
members, and means for assembling the frame members to form two inverted V‑frames joined together only at their free ends with said inverted V‑frames lying in planes oppositely inclined to the vertical, the apices of the two frames being at different heights and the frames defining respective triangular faces of two contiguous imaginary pyramid spaces, at least one of the frame members of each module being disposed alongside a parallel frame member of an adjacent module such that the modules mutually support one another; and elongate strip means releasably engaged with the frame members for flexibly interconnecting each of the said pairs of parallel frame members, the interconnecting strip means sealing any gap between the two members and further serving to hold the structure together.
A portable building structure according to claim 1 or claim 2 in which the interconnecting strip means comprises a connecting strip having opposed longitudinal edge formations slidably engageable in respective complementary longitudinal grooves in the frame members.
17.A kit of components adapted on assembly to form a collapsible framework for a self‑supporting portable building structure, the components of the kit comprising a plurality of elongate frame members adapted to form a plurality of discrete modules for the building structure, first connecting means for connecting a first of the members at a first predetermined angle to a second of the members to form a first inverted V‑frame, second connecting means for connecting a third of the members at a second predetermined angle to a forth of the members to form a second inverted V‑frame, third connecting means for connecting the free end of the first member to the free end of the third member, and fourth connecting means for connecting the free end of the second member to the free end of the fourth member, the arrangement being such that, with the four members connected to one another, the two inverted V‑frames lie in respective mutually inclined planes to form one of the said discrete modules; a flexible covering having four side edges releasably engagable with the respective frame members of each module, the covering being dimensioned such that, with the frames erected, the covering is tensioned with a double curvature between the four corners of the module; and a plurality of elongate connecting strips each having opposed longitudinal edge formations, the formations being slidably engagable in respective longitudinal grooves of two adjoining parallel frame members in adjacent modules of the structure, the strips sealing any gap between the members and serving to hold the structure together with controlled flexibility.
29.A framework for a modular building structure, each module comprising an assembly of hollow tubular frame members, at least two of the tubular frame members from adjacent modules extending parallel and closely adjacent to one another, and said two tubular members being flexibly joined by a connecting strip having opposed edge formations slidably received in respective complementary grooves recessed into the periphery of the respective tubular members and extending from one end of the tubular member to the other, the connecting strip sealing any gap between the tubular members and serving to hold the adjacent modules together.
32.A module for a portable building structure, comprising a plurality of elongate frame members; means for assembling the frame members to form two inverted V‑frames joined together only at their free ends with said inverted V‑frames lying in planes oppositely inclined to the vertical, the apices of the two frames being at different heights and the frames defining respective triangular faces of two contiguous imaginary pyramid spaces; a pair of legs assembled with the adjoining free ends of the inverted V‑frames at respective Y‑junctions; and at least one longitudinal groove in each of said frame members and each of said legs for receiving elongate strip means adapted to assemble the respective frame member or leg to a similar frame member or leg of an adjacent module."
GROUNDS OF OPPOSITION AND THE EVIDENCE
The opponent's notice of opposition referred to paragraphs (a) and (e) to (i) of sub‑section 59(1) of the 1952 Act, and all these grounds except paragraph (f), were pursued in the evidence and at the hearing. The evidence-in-support is summarised as follows:
.A declaration by Christopher Brian Heyring dated 26 July 1989 and exhibits CBH1 to CBH17. Mr Heyring declares that he conceived the idea of a portable winged building structure; two provisional applications lodged in 1982 are referred to in this context. Mr Heyring's evidence gives details of the development and use in public of his winged structure. He also refers to his dealings with Mr Browne, the managing director of Nomad and inventor referred to in the present international application.
.Exhibit CBH5 is a copy of a purchase order in 1983 for extruded aluminium "tent poles" used by Mr Heyring. The sketch associated with the order shows that the extruded tubes were provided with four equally spaced longitudinal grooves of generally C‑shaped cross-section. A similar tube is used with the present invention.
.Exhibition CBH7 is a photograph of a hinge structure which Mr Heyring used to join the ends of his extruded tubes. The hinge structure permits two leaves of the hinge to pivot about the axis of a bolt connecting same, each hinge leaf pivots on a threaded rod passing through a central hole in each leaf and the rods are secured to lengths of plain tube which are received in the manner of a spigot in the ends of the said extruded tubes.
.Exhibit CBH9 is a photograph showing pairs of connecting brackets Mr Heyring used to hold adjacent tubes together. Each bracket has a cylindrical head section, which is received in one of the grooves in the extruded tube, and an outwardly extending plate section with a cylindrical hole. When the two of these brackets are assembled with adjacent parallel extruded tubes in the tent structure, a bolt is passed through the holes to align and fix the two brackets.
.CBH11 is a copy of a letter to "Chris Annie [Heyring] and family", sent from England. The letter is unsigned and the date is incomplete, but other evidence shows that the date should be 23 October 1983 and that it was written by Mr Browne. He refers to his holiday after leaving Australia and he goes on:
"I'm writing to tell you I have a customer for one of the four segment tents, that is if you are still making them..."
.Exhibit CBH13 is a copy of part of the 1984-85 Annual Report of the Western Australian Museum. This shows that a modular winged tent structure was used to display a model of the controversial keel of the yacht Australia II for the Professional Engineers Exhibition in September 1984. The photograph in the report shows what appears to be Mr Heyring's connectors holding two adjacent parallel sections of tube together.
.Exhibit CBH14 is a photograph taken inside the tent structure at the exhibition. This shows strip material extending loosely underneath and along the adjacent parallel extruded tubes. Mr Heyring described this as "gutter strip".
.Exhibit CBH12 is a set of photographs of the same tent as used in the Professional Engineers Exhibition used earlier, in October 1983, on the grounds of the Royal Perth Yacht Club for the opening of their yachting season. Large crowds are shown near the tent structures. Mr Heyring alleges that Mr Browne saw the same tent erected in Mr Heyring's front garden in June 1983 (Exhibit CBH6).
.Exhibit CBH15 is a set of photographs of a roof structure constructed by Mr Heyring at a shopping arcade in Margaret River, WA, in January 1984. Mr Heyring declares that because the structure was permanent, he used rigid interconnecting strip between the adjacent parallel extruded tubes, that the connecting strip was two lengths of the aluminium extrusion from which the connector brackets shown in CBH9 are cut, and that the strips were overlapped and secured together by a series of nuts and bolts. These details are clearly shown in the photographs, some of which are taken from the public area under the roof structure inside the shopping arcade.
.In paragraph 10 of his declaration, Mr Heyring states that he had tried using a flexible strip with beads along each longitudinal edge to connect adjacent extruded tubes, prior to the adoption of the connector brackets; he comments on the flexible strip as follows:
"I found that this form of connection operated effectively, but did present problems in erection of the tents. It is to be understood that this strip can only be inserted into the grooves in the tube members after the modules of the tent have been erected and the two tube members are in a generally parallel side-by-side relation. However, when so erected, the fabric carried by the respective modules is in full tension and thus the bowing of the tube members as previously referred to is present. Thus, if a one piece connector strip, such as shown in figure 10 of the opposed specification, is used, it must be threaded into the longitudinal groove of each tube member at one end and then pulled along the complete length of the tube members to the opposite end, whilst at the same time, deflecting the tubular members inwardly towards one another to remove the bowing therefrom. These conditions produce very high frictional drag on the connecting strip as it is being drawn along the longitudinal grooves, whilst at the same time must generate sufficient force to straighten the bowing in the tube members. Such a construction, using a continuous connecting strip, can be practical if the length of the tube members is comparitively small and the area of each module correspondingly small so the resulting tension forces creating the bowing of the tube members is also small and hence the extent of the bowing is small. However, I found that with the size of tents I was constructing in 1983 and 1984, such as shown in exhibits CBH6 and 8 have a tube member of a length of approximately 6.8m, and a tent area of 905m, the friction and bowing forces encountered were too great to permit easy and rapid erection of the tent. I accordingly adopted the procedure of using a number of individual connecting brackets of the type shown in exhibit CBH9 and to use in conjunction therewith the flexible gutter strips."
.A declaration by Christopher Edward Beresford Wilcox dated 21 September 1989. Mr Wilcox, an architect, refers to what he calls the "Rainbow" tent shown in exhibits CBH6 and CBH12-14. He declares inter alia, that the gutter strip was incorporated in the tent in the period 1983 to 1984 and that the strip "did not serve the function of holding the structure together". He also refers to the said shopping arcade roof structure, viz: that he was the principal architect in the project and that it was completed in early 1984.
The evidence-in-answer is summarised as follows:
.A declaration by Antony Nigel Moresby Browne dated 4 May 1990 and exhibits NB1 to NB6. Mr Browne declares that he collaborated with Mr Heyring early in 1983 to design a modular system, and a single module was erected in Mr Browne's garden. In August 1983 Mr Browne left Western Australia and returned to the U.K. He denies having seen Mr Heyring's completed modular structure and denies seeing the connector mechanism for joining the frames together. He particularly denies seeing the Rainbow tent structure in Mr Heyring's garden in June 1983. After returning to the U.K. Mr Browne developed his own "Pagoda" structure and filed his international application.
.Exhibit NB2 is a photograph of a single module erected in Mr Browne's garden in Leaderville, W.A.; it shows the saddle-shaped canopy stretched between two inverted V‑frames, but, being a single module, there is no mechanism for attaching adjacent modules. Mr Browne declares that "at this point we were not at an elementary stage in the design".
.Mr Browne alleges that Mr Heyring is now using many of the original features in Mr Browne's design, such as adjoining extruded tubes used as legs for the structure and a one-piece joining strip having beads along both longitudinal edges used to join the tubes. Exhibits NB5 and NB6 show these alleged infringements.
.A declaration by Peter Colin Christopher Sanders, dated 2 August 1990. Mr Sanders, Mr Browne's British patent agent, declares that Mr Browne invented the connecting strip having opposed beaded edges.
.A declaration by Stephen Grey, dated 27 August 1990. Mr Grey is a managing principal of a New South Wales company dealing with temporary building structures for exhibitions and outside events. He holds a degree of BSc - Building Technology (U.K.). He declares that there is some advantage in the invention over Mr Heyring's structure using connecting brackets and separate gutter strips, namely that the strips of the invention can be pushed up the adjacent poles from ground level whereas the Heyring mechanism would require the use of ladders. The shopping arcade roof structure of CBH15, Mr Grey suggests is "not the same kind of structure as that which is the subject of patent specification 575494" because the former is a permanent structure.
The evidence-in-reply comprises further declarations from Mr Heyring, dated 27 April 1991, Mr Wilcox, dated 26 April 1991, and from Annie Heyring, Mr Heyring's wife, dated 27 April 1991. Mr Heyring alleges that the modular concept of the winged structures was his own, not Mr Browne's, that Mr Browne's tents are smaller than the structures built by Mr Heyring in 1983, and that exhibit NB6 is a smaller sized structure. Mrs Heyring declares that, between 1982 and 1984, they tried various constructions to connect the adjacent extruded tubes and that one form was an elongated fabric strip having a bead extending along each edge. Mr Wilcox also declares that the Heyrings used a double-beaded strip; paragraph 3 of his declaration reads as follows:
"The concept of using this form of beaded edge to connect fabric components to an elongated rigid member is commonly used in yachting, to connect the sails to a boom or mast, and is also used to connect the edge of the roof of an annex to a caravan. Also the same principle was used to connect the main fabric sheets of Chris Heyring's rainbow tent to the extruded members. I therefore do not consider it unique or unusual to use two such beaded edges along a strip of fabric to connect together two rigid members each having a suitably shaped slot along the length thereof. The same leaded [sic] edge strip could be used to connect such rigid members whether the members were part of the roof of the tent or legs supporting the tent."
FURTHER EVIDENCE
At the hearing, Dr Emmerson made an oral application for special leave for Nomad to adduce further evidence. The application was supported by a declaration by Mr Browne, dated 30 August 1991. This declaration indicated that the further evidence would correct an error in Mr Browne's declaration of 4 May 1990, filed as evidence-in-answer in the opposition. The error was a statement in paragraph 3 of the earlier declaration that:
"I commenced marketing my 'Pagoda' structure in Australia in March/April 1986."
Mr Browne declares:
.that "this date is given incorrectly in my earlier declaration";
.that "this date is before the date of filing the International application for the present invention";
.that "the first Australian sales of my 'Pagoda' structure did not occur until towards the end of 1986 or early 1987", and
.that the matter is important, since if it should be held that the applicant is not entitled to its priority date of 8 July 1985, then the priority date, the date of filing the international application, is later than the marketing date referred to in the earlier declaration.
The evidence sought to be adduced was a further declaration by Mr Browne, also dated 30 August 1991, and a further declaration by Mr Stephen Grey dated 2 September 1991.
The opponent objected to the grant of leave to adduce the further evidence, but the parties apparently agreed that the matter could be dealt with at the hearing. Dr Emmerson and Mr Hess referred me to several cases relating to further evidence. One case was referred to by both parties, viz:
Micronair (Aerial) Limited v. Waikerie Co-operative Producers Ltd, (1986) AIPC 90-325 (Waikerie is mis-spelt as Warkerie in the AIPC).
In this decision the Commissioner's delegate referred to three criteria to be considered in deciding whether leave should or should not be granted, vis:
"1.It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.
The evidence must be such that, if given, it would probably have an important influence on the result of the case.
The evidence must be such as is presumably to be believed, i.e. it must be apparently credible, though not necessarily incontrovertible."
Dr Emmerson submitted that:
.admission of the further evidence would not cause any delay in the proceedings;
.the evidence was highly relevant, as stated by Mr Browne;
.the evidence was cogent because there is evidence to indicate that sale of the Pagoda in Australia began near the end of 1986;
.I should allow for the fact that it is the patent applicant, not the opponent, seeking to lodge further evidence;
.there is no inconvenience to the opponent since its opposition is based on its own activities not on the applicant's activities, and that the opposition evidence would be more correct and more just if the further evidence was admitted. Re Sue v. Carpenter (1991) AIPC 90-750.
Mr Hess submitted that Mr Browne's declarations specifically refer to sales of the Pagoda structure late in 1986, that it is not clear what Mr Browne was doing between March and July 1986, and that "marketing" could be construed to mean the Pagoda structure was promoted and publicised before sales began later in the year. Thus, Mr Hess concluded that the evidence is not probative because it is not clear whether Mr Browne's later declarations contradict his earlier declaration.
In letters dated 25 September 1991, I notified both parties that I had decided to grant special leave to adduce the further evidence. At that time I accepted the applicant's submissions that the evidence could have an important influence on the result of the opposition. Also, the evidence was credible: it seems unlikely that the applicant would have marketed its invention in Australia before the filing date of its patent application. The opponent's objections were not convincing, since they relied on a rather strained meaning of the word "marketing", and besides, Mr Browne clearly states in his declaration that "until July 1986 I did not disclose the invention to anyone in Australia"; this suggests that there was no promotion or publication as well as no sales. Finally, in deciding to grant special leave to adduce the further evidence I was guided by the decision of the Commissioner's delegate in Canadian Industries Ltd v. Australian Paper Manufacturers Ltd (1981) 50 AOJP 4565 where special leave was granted to correct an error in the evidence.
Finally, with regard to further evidence, the opponent adduced two exhibits at the hearing, namely CBH19 and CBH20. The applicant did not object to this evidence being adduced. CBH19 is a model of the 4-module rainbow tent and CBH20 is a set of items including Mr Heyring's extruded tube, connector brackets and gutter strip.
SECTION 40
Mr Hess pointed out that the Nomad specification recognised the prior art as follows:
"Such structures are generally portable and are erected for particular outdoor occasions or indoor exhibitions. Present structures generally rely upon at least one central pole and/or tensioned anchoring wires or guy ropes for their stability. Moreover, once erected, it is not generally possible to extend or alter the are covered by the structure."
The evidence shows that, before the date of filing of Nomad's application, Mr Heyring had made public use of his 4-module Rainbow tent. The evidence also indicates that the inventive concept developed by Mr Browne relates to the use of the beaded connector strip to join the modular tent elements. Thus, the Nomad invention is an improvement in the Heyring prior art.
Mr Hess suggested that the Nomad specification generally does not acknowledge the prior art, and that the claims in particular give the impression that the invention is a wholly new combination, and as such the specification is misleading. Dr Emmerson argued that the invention is a combination of the tent elements and connector strip. Generally though, on this matter I am sympathetic to the opponent's submissions: I think the invention as claimed is a combination of integers but the inventive concept relates to the improvement of the connector strip in the combination of integers, and this is not apparent from reading the specification. The law in this regard is derived from judgements of the High Court in May v. Higgins (1915) 21 CLR 119 and in Sami S. Svendsen Inc v. Independent Products Canada Ltd (1969) AOJP 647. In cases where invention lies in an improvement in known apparatus (as opposed to invention being in a new combination of integers), the addressee should be able to clearly distinguish the true nature of the invention from the prior art. Kitto J. in the latter case, supra, stated:
"Assuming that there was an inventive step in this improvement, I am of opinion, first, that the specification as a whole offends against s.40(1) by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s.40(1) by defining as the invention something that was much more extensive than the invention ...
This is a ground upon which, in the public interest even if not for any other reason, the Deputy Commissioner could, and in my opinion should, have upheld the objections and refused to grant a patent upon the specification in its present form ...
I do not mean that in every case of opposition it is a function of the Commissioner to investigate for himself the question how the actual invention compares with the invention as claimed. What I have said is based upon the circumstance that the evidence of Mr Flomen, one of the actual inventors, contains clear admissions, indeed positive assertions, of facts which leave no room for doubt that the specification both in its description and in its claims disobeys s.40(1). The nature of the disobedience is such that the specification is likely to mislead, and for that reason the application ought to be refused ..."
See also Colin Peter Nelson v. Hillmark Industries Pty Ltd (1991) AIPC 90-768. The Nomad specification before me is also likely to mislead the addressee, thus I conclude that the specification does not fully describe the invention and thus does not comply with s.40.
Turning specifically to the claims, I think an addressee would have some difficulty determining the nature of the invention in its broadest form. For example, claims 17, 29, and 32 suggest that grooves in the tubular frame members is an essential feature of the invention; but this feature is not included in claim 1. Claims 1, 17, and 32 suggest that a building structure comprising inverted V‑frames is an essential feature of the invention; but this feature is not included in claim 29. Also, claim 29 is not directed to a portable structure as are the other independent claims. Finally, claim 32 does not include the features of a flexible joining strip holding and sealing the frame members. Generally, I think the Nomad specification is suffering from an overdose of claims. The invention is technologically not complex, and as such should be capable of being defined by less than 46 claims. The nature of the invention is not clearly apparent due to the number of claims directed to different combinations of integers and due to the number of repetitious claims. Such statements of claims are "eminently perplexing to the public", see J.S. Bancroft's Application (1906) 23 RPC 89 at 94. The claims in the Nomad specification are not clear and succinct and thus do not comply with s.40.
Mr Hess made detailed submissions on a large number of the 46 claims, I will now deal with some of the submissions.
He suggested that claim 1 does not define the invention described because, in being directed to a "building", it does not define features of a building suitable for occupation since there is no fabric cover defined. Dr Emmerson argued that a fabric cover is not an essential feature of the invention and therefore it is not necessary to include it in the independent claims. I agree with Dr Emmerson on this point, and I think that the use of the phrase "portable building structure" in line 1 of the claim is sufficient because it suggests that the framework and other elements form a portable building structure and therefore could be used with a fabric cover or the like.
Mr Hess submitted that the feature of "two inverted V‑frames joined together only at their free ends", in lines 5 and 6 of claim 1, does not define the invention described because the frames are joined at the apexes and joined by the cover. Dr Emmerson argued that this feature is included in the claim to distinguish the invention from other joining arrangements such as Mr Heyring's cross-struts. I think this part of the claim does define the invention described since it is referring to the construction of one module. The apices of the inverted V‑frames clearly are not joined when referring to only one module.
Mr Hess submitted that the "elongate strip means" defined in lines 14-19 of claim 1 was defined too broadly and that therefore the claim was not fairly based. He thought that the strip means defined by claim 3 is a true definition of this feature of the invention. Dr Emmerson did not want the claim restricted to an embodiment of the invention. The evidence before me suggests that the inventive concept involves the interaction of the edges of the connector strip in the grooves in the frame members such that adjacent frame members are sealed and held together. It may not be essential that the strip has round beaded edges, but I think it is essential that the edges are formed to fit into grooves in the frame members to hold the frame members together. The "releasably engaged elongate strip" in claim 1 could be a piece of adhesive tape for example, the like of which I think is beyond the consideration of the inventor. Claim 1 is therefore not fairly based.
Mr Hess submitted that claim 32 was defective because the use of "for receiving" in lines 13 and 14 means that the elongate strip means is not part of the claimed combination. This claim however is to a module per se and the strip is not part of the module. The last 5 lines of the claim attempt to define the purpose of the longitudinal groove and the inventive concept of its use with the strip; but I do not consider this part of the claim to be adequate since there is is no reference to the elongate strip means holding and sealing the frame members. The evidence suggests that this is an essential feature of the invention. Thus claim 32 is also not fairly based.
PRIORITY DATES
Mr Hess submitted that there is no disclosure in the British provisional priority document of the connector strip:
specifically holding the structure together;
flexibly interconnecting parallel frame members; or
being releasably engaged with the frame members.
He submitted that these features were first disclosed in the PCT application, or in amendments filed in 1988. He also suggested that the PCT application as filed made no reference to the legs of the structure being joined by the connector strip, and that this feature should take the priority date of the later date when amendments were made to the specification.
On this matter I agree that there is no disclosure of "holding" in the British provisional, since the "bridging strip" referred to therein is "to prevent rain penetration". However, the strip is described as "having opposed beaded edges for insertion in respective grooves", the specification suggests that the strip is made in a similar fashion to the "covering material", and thus would be flexible and releasably engaged. The PCT application as filed referred to the frame members including legs and to the frame members being joined by the connecting strip, so I think this is sufficient disclosure to conclude that the legs may also be joined by the connector strip.
PRIOR USE
On the matter of whether the applicant published its invention in Australia before the filing date of its international application, I note that the opponent has produced no evidence which corroborates Mr Browne's earlier declaration that the applicant's Pagoda structure was published in Australia before July 1986. Thus, I accept Mr Browne's later declaration, lodged as further evidence, that his earlier declaration was in error; and I conclude that the applicant did not publish its invention in Australia before the filing date.
I will now consider Mr Hess's analysis of the claims of the Nomad specification in the light of the 4-module Rainbow tent publicly used by Mr Heyring.
Regarding claim 1 he submitted that the "elongate strip means" could include either (i) the gutter strip per se, or (ii) the same with the interconnecting brackets in Mr Heyring's tent. He argued that the last line of claim 1 could be interpreted to mean that the elongate strip merely "helps" to hold the structure together, i.e. there may be other means which also holds. He also suggested that the gutter strip in the Rainbow tent helps to hold the structure together. I don't agree with this assessment of the prior art; CBH14 clearly shows the gutter strip as a loose arrangement with no semblance of helping to hold the framework together. In his second line of attack, Mr Hess suggested that Mr Heyring's connector brackets could be described as part of "elongate strip means", along with the gutter strip, and that the brackets are "releasably engaged". I cannot accept this argument either; Mr Heyring's connector brackets are approximately square in shape and cannot be described as "elongate strip means". Furthermore, Dr Emmerson argued that Mr Hess's interpretation of "further serving to hold" in the last line of claim 1 was incorrect and that "further" meant "further to sealing" rather than "helping to hold". I agree with Dr Emmerson on this point. Thus claim 1 is novel in the light of the Heyring Rainbow tent. Similar arguments were applied to the other claims but these arguments fail for reasons similar to those given above.
Regarding claim 32, Mr Hess submitted that all features of the claim were disclosed by the Rainbow tent except for the pair of legs, but in applying the Griffin v. Isaacs test this feature did not confer novelty. He argued that any joint of three frame members always results in a "Y‑junction" and that the description of the invention did not state any particular advantages for the legs as defined. The prior art Rainbow tent sat on conical legs. I have some doubt on the merit of the features in claim 32 since they are close to a mere mechanical equivalent, but I am prepared to resolve this doubt in the applicant's favour since the evidence discusses some purported advantages in assembling the structure with the connecting strip joining the legs together.
The opponent's evidence-in-reply referred to "experimental" beaded strip used by the Heyrings. However, there is no evidence of this strip ever having been used in public. Dr Emmerson submitted that the opponent's evidence often refers to their strip merely "connecting" the frames, and this leaves some doubt as to whether they are discussing their experimental strip or the gutter strip actually used. Taking all relevant matters into account, I think this evidence is of low probative value in considering the novelty of the applicant's claims.
I will now consider the matter of combination of prior uses.
At one point in his discussion of the novelty of claim 1, Mr Hess referred me to exhibit CBH15, i.e. the shopping arcade roof structure. He conceded that that structure was not portable, as defined in claim 1, but he emphasised the nature of the aluminium connector strip used in that structure. The aluminium connector strip is "elongate" and does "hold the structure together". Mr Hess seemed to be suggesting that it was admissible to combine the prior use of the portable Rainbow tent with the prior use of the shopping arcade roof structure in the consideration of novelty of the applicant's claims.
It is often believed that a prior use disclosure is "stronger" than a disclosure in a document such as a patent specification. This is due to the likelihood of a prior use being more "public" than a document; see paragraph 1.5.012 of Patents, Designs and Trade Marks Law by Lahore, et al, for example. A document may need construction and interpretation, whereas prior use makes an invention more available to the public, this being closer to the concept of common general knowledge. The strength of a prior use disclosure was evident for example in Griffin v. Isaacs (1942) 12 AOJP 739 and in Windsurfing International v. Petit & Ors. (1983) 3 IPR 449, where in both cases one prior use disclosure was sufficient to prove lack of novelty based on lack of inventiveness.
The law relating to combination of documents is derived from cases such as Nicaro Holdings v. Martin Engineering (1990) AIPC 90-670, 16 IPR 545 and Minnesota Mining & Manufacturing Co v. Biersdorf (1980) 144 CLR 253. These cases set out fairly strict criteria which should be considered when combining documents to prove lack of novelty, or obviousness. The former case indicates that there is a greater force of inhibition against combining documents where a challenge is based on lack of novelty rather than upon obviousness. However, the combination of documents for lack of novelty is not totally forbidden; as indicated by Gummow J. at 16 IPR 570:
"In my view, it will not necessarily be making a forbidden mosaic merely to rely upon two or more documents, none of which by itself discloses material sufficient for an anticipation of the invention to suit. What degree of lack of connection between two or more documents will make them "independent" and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend on the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharp v. Dohme case. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here."
In HPM v. Gerard (1957) CLR 424 the High Court dealt with prior use of a number of articles. There were extensive sales of the articles, a set of switch cover plates, and the court found that all the features of the claims under consideration were disclosed by the prior use of the set of cover plates. The disclosures had become common general knowledge but the court indicated that the claims were obvious whether or not the disclosures were common general knowledge. This obiter in HPM v. Gerard was subsequently criticized by the same court in the Minnesota Mining v. Biersdorf case, supra; but, it is significant in my opinion that only paper document citations were considered in the latter case. I think the decision in the former case demonstrates again that prior use disclosures are stronger than document disclosures, especially where the prior use involves extensive public exposure.
Taking all this precedent into account, I deduce that there may be some instances where it is appropriate to combine disclosures of prior use, for the consideration of obviousness or for lack of novelty; and the criteria to be considered in properly combining those disclosures should be less rigid than those considered for combining document disclosures. (This of course is assuming that a prior use disclosure generally is stronger than a document disclosure; other circumstances could arise where a prior use was not disclosed to significant numbers of the public, and in such circumstances the stricter criteria of the Nicaro v. Martin and Minesota Mining v. Biersdorf cases would be appropriate).
Considering the case before me, I think that a plausible argument could be put that all the features of claim 1 are disclosed in the combination of the rainbow tent and the shopping arcade roof. However, I am reluctant to conclude that it is appropriate to make that combination in this case. It is clear from the cases cited that some link between the disclosures is needed, notwithstanding the fact that the disclosures are relatively strong instances of prior use. The evidence before me shows that both the Rainbow tent and the shopping arcade roof had a large degree of public exposure, but there is nothing before me to link those disclosures. No-one looking at either the Rainbow tent or the shopping arcade roof would be made aware of the existence of the other. Thus I conclude that it is not appropriate in this case to combine these two prior use disclosures.
I will now consider Mr Heyring's shopping arcade roof structure as a single prior use disclosure. Claim 29 I have previously indicated is not restricted to a "portable" building structure, as are the other independent claims. So the shopping arcade roof structure may not be excluded from the ambit of this claim. Prima facie most of the features of the claim are disclosed in CBH15, with the only contentious issue being the flexibility of the joints; see line 6 of the claim. Generally though, "flexibly jointed" could simply mean that there is some movement in the joint, not necessarily bending movement; and the evidence before me shows that there can be some movement between the beads on Mr Heyring's connectors and the grooves in the frame members. I have no reason to believe that there would not be some similar movement between the aluminium joining strip and the frame members in the shopping arcade roof structure; especially for example under a high wind load. Furthermore, insofar as claim 29 may include a permanent non-portable structure, it is not apparent what advantages over the prior art are provided by the flexible joints. The specification does not indicate that flexibility of the joints is an essential feature of the invention; claim 32 for example does not include this feature. I thus conclude that claim 29 is not novel in the light of the shopping arcade roof structure.
OBVIOUSNESS
Mr Hess submitted at the hearing that the evidence in CBH8, CBH12, CBH13 and CBH14 demonstrates that Mr Heyring's Rainbow tent has been given so much public display that it has become common general knowledge. Dr Emmerson submitted that the display of some tent structures in Mr Heyring's garden did not suggest common general knowledge, that the large tents used for public exhibitions were not "portable" structures, that there is no evidence that a skilled worker in the trade, a tent designer for example, saw the exhibitions, and that there is no evidence of disclosure in the trade literature.
The High Court in Minnesota Mining v. Biersdorf, supra, at page 292, said that common general knowledge "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 ..." In this case, despite my comments earlier about the strength of the prior use disclosures, I think that the evidence is not sufficient to show that Mr Heyring's tents were common general knowledge in the trade of tent building or design.
Mr Hess also submitted that there is no invention in the applicant's double-beaded strip in the light of the common general knowledge of joining beaded edged fabrics to grooved frame members in yacht masts and caravan annexes; as discussed by Mr Wilcox in his second declaration. Mr Hess argued that, in the light of this common general knowledge, the applicant's double-edged connector strip is a mere workshop variation of Mr Heyring's bracket connectors and gutter strip combination. I was referred to several judgements of the courts and the appropriate law in this matter. Dr Emmerson said that there was no evidence to suggest that one would start with Mr Heyring's connecting structure to go to the invention.
I agree with Mr Wilcox's assessment of the common general knowledge in this matter, but I think he has gone too far in his conclusions on the applicant's invention. In paragraph 9 of his first declaration he states:
"I consider that these differences are matters of detail and personal choice which may be exercised by a competent engineer wishing to construct a tent of the same concept and configuration as Chris Heyring's Rainbow tent".
And, paragraph 3 of Mr Wilcox's second declaration I have already quoted in my discussion of the evidence-in-reply. I note firstly that Mr Wilcox is not an engineer, and secondly that he is a friend of the Heyrings and has been involved in the development of their tent structures. Thus I find his evidence with regard to inventiveness to be of low probative value. There is no evidence before me from independent experts suggesting that the applicant's double-beaded connector strip is a workshop variation of the arrangement used by Mr Heyring. Mr Grey's evidence suggests in fact that there is some advantage in the beaded connector strip over Mr Heyring's arrangements. Thus I conclude that the applicant's inventive concept of the frame members being held and sealed by a double-beaded connector strip in the grooves of the frame members is not obvious in the light of common general knowledge.
OBTAINING
The opponent alleges that the invention was obtained from him. The main contentious issue seems to be whether Mr Browne had seen Mr Heyring's 4-section Rainbow tent before the former left Australia. Firstly, it was suggested that CBH11 proves that Mr Browne saw the completed tent, but I think there is still some doubt in the matter: Mr Browne states that he was involved with Mr Heyring in developing the idea of a 4-module tent, and the evidence shows that he saw a completed single module; so it is possible that in CBH11 Mr Browne was simply assuming that Mr Heyring had completed his structure.
There is some conflict in the evidence over whether Mr Browne saw the 4-module arrangement in Mr Heyring's garden; Mr Browne claims that it was too dark to see the structure. Prima facie, this is somewhat difficult to believe, since, as Mr Browne was interested in the project, one would expect that he would want to see the latest structure devised by Mr Heyring. However, it is not necessary for me to decide this issue, since, even if Mr Browne had seen the completed Rainbow tent he would have seen that adjoining frames were held together by connector brackets, not by a double-beaded connector strip. There is no evidence before me to suggest that the present inventor obtained the idea of the double-beaded connector strip from Mr Heyring. The claims were considered in some detail at the hearing, but I think it is not necessary for me to analyse all the claims for obtaining; I have indicated that some of the claims are not fairly based, and suffice to say that all claims which contain the essential features of the invention will define matter which has not been obtained from the opponent.
Mr Heyring has declared that his bracket connectors are necessary to hold the frame members together when large structures are involved and that a double-beaded connector strip is suitable only for smaller tents. If this is so, then hopefully there will be room in the market for both Mr Heyring's and Mr Browne's structures.
CONCLUSION
I find that the opposition succeeds in that:
the specification does not comply with section 40 since it is likely to mislead the addressee;
the claims are generally not clear and succinct;
claims 1 and 32 are not fairly based; and
claim 29 is not novel.
However, there is patentable subject matter disclosed in the specification and I think the inventor has demonstrated some inventive ingenuity in developing his invention. Consequently I allow Nomad 60 days from the date of this decision to propose amendments to overcome the s.40 and novelty deficiencies in the specification.
I award costs against the applicant.
J I Welsh
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies & Collison, Melbourne.
Patent attorneys for the opponent : Watermark, Perth.
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