Peter Gray v Finglen Pty Limited

[2008] APO 6

-ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No.2001239007 in the name of PETER GRAY

Title:          Process for forming a threaded member

Action: Opposition under s.59 by FINGLEN PTY LIMITED

Decision:          Issued 22 February 2008

Abstract

The invention relates to threaded members, having particular application as rock bolts used to reinforce the roof of a mine or tunnel, where the thread form has a coarse rib spacing but a fine thread pitch.

The application was opposed on the grounds of lack of utility, novelty and inventive step and non compliance with subsections 40(2) and 40(3) of the Patents Act 1990.

The invention has not been fully described due to fundamental inconsistencies in the description of the invention. Accepted claims 1 and 14 are not fairly based because they do not specify that the spaced ribs form discontinuous segments of the thread form helix, which is a necessary part of the invention disclosed by the specification read as a whole. Claims 3, 4, 13, 16, 17 and 26 plainly lack clarity. In the absence of the spaced ribs forming discontinuous segments of the thread form helix, claims 1 to 5, 13 to 18 and 26 are not novel or lack an inventive step.

The accepted claims are directed to a “process for the formation of a thread form” in an elongate member, as well as to the elongate member per se. Claim 1 is a ‘process by product’ claim (as distinct from ‘product by process’ claims), where the only proffered characterisation is the product produced, there being no apparent characterisation in the form of process steps. The form of claim 1 is not, of itself, in contravention to the requirements of the Patents Act 1990.

The applicant is allowed 60 days from the date of this decision to propose suitable amendments to overcome the findings.  If suitable amendments are not proposed within that time, the application would be refused.

The opposition did not succeed on the particulars and submissions put forward by the Opponent, which were effectively countered by the Applicant. Nevertheless, the opposition has allowed serious deficiencies in the patent application to be determined. Consequently, there has been no award of costs.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2001239007 by PETER GRAY and opposition thereto under s.59 of the Patents Act 1990 by FINGLEN PTY LIMITED.

BACKGROUND

1. Patent application 2001239007 which is the national phase of WO 01/68287 was filed on 15 March 2001 by Peter Gray (hereinafter called Gray).  It was advertised as accepted on 30 September 2004 and an opposition by Finglen Pty Limited (hereinafter called Finglen) was filed on 24 December 2004 with the statement of grounds and particulars being filed on 22 March 2005.

2. A request to amend the specification under s.104 was filed 24 August 2005 by Gray with the stated intent of obviating the instant opposition. Leave to amend was granted but the amendment was opposed by Finglen on 24 March 2006. The request to amend was withdrawn by Gray on 16 June 2006.

3. Following extension of time and delay due to the s.104 action, evidence in support was completed on 19 July 2006. Following extension of time, evidence in answer was completed on 19 February 2007. Evidence in reply was completed on 23 May 2007.

4. The matter was set down for a hearing in Canberra on 9 November 2007. Dr. Trevor Davies and Dr. Rob Silberstein, patent attorneys of Allens Arthur Robinson, attended on behalf of Gray.  Mr. Fraser Old, patent attorney of Fraser Old & Sohn, attended on behalf of Finglen.

NOTICE OF OPPOSITION

5. The application was opposed on the grounds of lack of utility, novelty and inventive step and non compliance with subsections 40(2) and 40(3) of the Patents Act 1990.

DECISION

The Specification

6. The present invention is entitled ‘Process for forming a threaded member’ with the threaded member not being limited to, but having particular application as, rock bolts used to reinforce the roof of a mine or tunnel.

7. The description of the invention requires very careful reading if it is to be clearly understood in all of its subtlety and import. There are multiple statements which, at a normal reading, appear to be describing features essential to the described invention and yet are elsewhere described as being merely preferable; that is, features of preferred embodiments not being features essential to the invention described.

8. Even the title of the invention is of this chameleon like character. The described ‘Process for forming a threaded member’ relates to forming a threaded member having the manufacturing and mechanical advantages attained through hot rolling of the threaded member while having the mechanical advantages of a relatively fine thread which could only be previously attained in an economically sustainable manufacturing operation through cold rolling. As described, the invention provides the relatively fine thread through hot rolling but only made practicable by the particular form of the thread form on the threaded member. And yet hot rolling is elsewhere described as merely being a preferred feature of the invention.

9. An example is the paragraph on page 5 of the specification

“It is an object of the present invention to provide a process for the formation of a thread form that has all the advantages of a hot rolled thread, but has a similar pitch to a cold rolled thread, such that it exhibits the mechanical advantages associated with both a hot rolled thread and a cold rolled thread. The process of the present invention seeks to provide a hot rolled threaded member having a relatively fine-pitched thread.”

which, at normal reading, appears inconsistent with the sentence on page 8

“The invention is particularly, but not exclusively, applicable to hot rolled threaded bars but is not so limited.”

10. The invention is also described as being the threaded member per se, having a particular thread form. Again though, features which are described as appearing to be essential to the described invention are elsewhere described as being merely preferable. To a similar effect, multiple objects of the invention are described, each of which is attained by a subtly different set of features which would otherwise be considered to be essential to the invention described.

11. So, another example is the consistent reference throughout the specification of the rib projections on the elongate member as being a “thread form” while the invention is also described as follows:

“The new thread form of the present invention further allows a new coupled rock bolt or coupled bar to be used in a manner as described hereinafter in more detail.” at page 8

“Preferably, the at least one rib forms discontinuous segments of a continuous thread profile.” at page 8,

“Preferably, the rib profiles are designed to provide a thread form which is suited to have a nut or the like member having at least one groove adapted to be easily screwed onto it.” at page 9, and

“The ribs (3) are preferably angled across the core section (2) at the thread pitch” at page 13.

12. This chameleon like character of the description is reflected in the accepted patent claims below. As an example, claim 1 is directed to a ‘process for the formation of a thread form’ and yet includes no apparent characterisation in the form of process steps; its only proffered characterisation is the specified thread form of the elongate member.

Claims

13. The accepted claims defining the invention are as follows:

1.   A process for the formation of a thread form in a substantially elongate member, wherein said thread form includes at least one rib spaced apart from at least one other rib along said elongate member, wherein said thread form has a relatively coarse rib spacing but a fine thread pitch.

2.   The process as claimed in Claim 1, wherein said elongate member and said thread form are formed by a hot rolling process.

3.   The process as claimed in Claim 2, wherein said ribs are spaced apart along said elongate member at a distance of greater than one thread pitch.

4.   The process as claimed in Claim 3, wherein the spacing between said ribs in the axial direction of said elongate member is a multiple of the thread pitch which is greater than one.

5.   The process as claimed in Claim 4, wherein said spacing between said ribs in said axial direction is between two and five times the thread pitch.

6.   The process as claimed in Claim 5, wherein said ribs on said elongate member form discontinuous segments of a thread spiral or thread helix.

7.   The process as claimed in Claim 6, wherein said ribs on each side of said elongate member are offset from each other by at least one thread pitch.

8.   The process as claimed in Claim 7, wherein the pitch of the thread form is substantially the same as the width of the base of said ribs.

9.   The process as claimed in Claim 8, wherein said base of said rib has a small radius at the location where it joins the core of said elongate member.

10.  The process as claimed in Claim 8, wherein the pitch of the thread of said thread form is only slightly greater than the width of the base of said ribs.

11.  The process as claimed in Claim 9, wherein the sides of said rib extending away from said core of said elongate member are inclined at an angle of approximately 60 degrees to the longitudinal axis of said core of said elongate member.

12.  The process as claimed in Claim 10 or Claim 11, wherein said elongate member is formed from steel.

13.  The process according to Claim 1, wherein the elongate member is solid or hollow.

14.  An elongate member including a thread form therein and extending along at least part of the length dimension thereof, wherein said thread form includes at least one rib spaced apart from at least one other rib along said elongate member, wherein said thread form has a relatively coarse rib spacing but a fine thread pitch.

15.  The elongate member as claimed in Claim 14, wherein said elongate member and said thread form are formed by a hot rolling process.

16.  The elongate member as claimed in Claim 15 or Claim 2, wherein said ribs are spaced apart along said elongate member at a distance of greater than one thread pitch.

17.  The elongate member as claimed in Claim 16, wherein the spacing between said ribs in the axial direction of said elongate member is a multiple of the thread pitch which is greater than one.

18.  The elongate member as claimed in Claim 17, wherein said spacing between said ribs in said axial direction is between two and five times the thread pitch.

19.  The elongate member as claimed in Claim 18, wherein said ribs on said elongate member form discontinuous segments of a thread spiral or thread helix.

20.  The elongate member as claimed in Claim 19, wherein said ribs on each side of said elongate member are offset from each other by at least one thread pitch.

21.  The elongate member as claimed in Claim 20, wherein the pitch of the thread of said thread form is substantially the same as the width of the base of said ribs.

22.  The elongate member as claimed in Claim 20, wherein said base of the or each said rib has a small radius at the location where it joins the core of said elongate member.

23.  The elongate member as claimed in Claim 21, wherein the pitch of the thread of said thread form is only slightly greater than the width of the base of said ribs.

24.  The elongate member as claimed in Claim 22, wherein the sides of the said rib extending away from said core of said elongate member are inclined at an angle of approximately 60 degrees to the longitudinal axis of said core of said elongate member.

25.  The elongate member as claimed in Claim 23 or Claim 24, formed from steel.

26.  The elongate member according to Claim 14, wherein the member is solid or hollow.

27.  An assemblage of elongated threaded members according to claim 14 which, when assembled together, form a larger diameter elongate member with a thread spiral or helix around a cylinder enclosing said assembled members.

28.  An assemblage according to claim 27, wherein the diameter of the larger assembled elongate member is a multiple of the diameter of individual elongate members in the same ratio that the rib spacing is a multiple of the pitch on the individual elongate members.

The Evidence

14. The evidence in support consists of the following declarations and annexures:

a)   A statutory declaration dated 30 June 2006 by Donald Atherton (hereinafter called the first Atherton declaration), a Technical Manager of Smorgon Steel.

b)   A statutory declaration dated 6 July 2006 by Fraser Patison Old (hereinafter called the Old declaration), a patent attorney and engineer and a Director of Finglen Pty Limited.

c)   A statutory declaration dated 6 July 2006 by Shaun Leslie Griffin, patent attorney, accompanied by annexures SLG1 to SLG9, being copies of patent specifications:
Australian Patent Application No. 2001239007 as accepted
Australian Patent No. 744148 (Renwick/BHP)
United States Patent No. 2377980 (Surerus)
United States Patent No. 4056911 (Tani)
United States Patent No. 3782839 (Majewski)
United States Patent No. 3561185 (Finsterwalder)
United States Patent No. 4811541 (Finsterwalder)
United States Patent No. 4953379 (Richartz)
United States Patent No. 4092814 (Kern)

15. The evidence in answer consists of the following declarations and exhibits:

a)   A statutory declaration dated 19 February 2007 by Dr Peter Andrew Gray (hereinafter called the Gray declaration), Managing Director of Ground Support Services Pty Ltd, accompanied by exhibits

b)   Exhibit PAG-1, photographs of a fine pitched bar rolled by Smorgon Steel Pty Ltd in accordance with the invention described and claimed in the opposed application.

c)   Exhibit PAG-2, a photograph of a fine pitched bar rolled by Caparo Group Ltd in accordance with the invention described and claimed in the opposed application.

16. The evidence in reply consists of a second statutory declaration dated 17 June 2007 by Donald Atherton (hereinafter called the second Atherton declaration), a Technical Manager of Smorgon Steel, accompanied by annexure AD1 (also referred to as DA1), providing a report related to Exhibit PAG-1.

Submissions

17. In summary, Finglen’s substantive submissions, with supporting declarations and annexures, are

·Because threaded members fabricated in accordance with the description do not meet the promise of the invention, the invention claimed lacks utility.

·Because the claims do not include any characterising process steps and because the specification does not disclose any new process for the formation of a thread form, all claims directed to “process” are not clear and are not fairly based.

·Because the “thread form” is defined in relative terms without further quantification in the specification, the claims are not clear.

·Because there are numerous prior disclosures in patent specifications of threaded members which are within, or make obvious, the scope of the claims, the invention claimed is not novel and lacks inventive step.

18. Gray has provided detailed submissions, with supporting declarations and exhibits, that each of Finglen’s submissions is incorrect.

Consideration of Utility submissions

19. I believe that it is sufficient to determine the issue of utility that both parties appear to be in agreement that the bar whose photographs are in evidence as Exhibit PAG-1 was fabricated in accordance with the description of the invention and that the bar is as the invention is described except for a reduced rib height.

20. The rib height is not specified in any of the claims and, as submitted by Gray, it is not described as being an essential feature of the invention. It follows from the relevant law, such as expressed in W M Wrigley v Cadbury Schweppes [2005] FCA 1035 and Tetra Molectric Ltd.’s Application, (1977) RPC 290, that the agreed evidence clearly demonstrates the utility of the invention defined by the claims. The contention that the claimed invention lacks utility is clearly without basis.

21. Consequently, I find no lack of utility consequent to Finglen’s submissions.

Consideration of s.40 submissions

22. Finglen has submitted that the claims are not fairly based in that they do not attain stated objects of the described invention. However, the relevant law on this point is that submitted by Gray. The invention claimed is not inconsistent with the invention described in the manner put forward by Finglen. Finglen’s submissions are based on interpretation of the specification from a normal reading of the description, as I have referred to above, rather than the very careful reading which I have found is necessary if the description of the invention is to be fully understood.

23. From the authorities of Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 at 21 and Lockwood v Doric [2004] HCA 58, the test for fair basis is simply whether the claims are consistent with what the specification as a whole describes as the invention. As noted by the High Court in Kimberly-Clark v Arico (at paragraph 12), the general principle underlying fair basis is:

“... where the issue is one under a 40(3) of "fair basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.”

24. Nevertheless, as identified by Finglen and in my experience, claim 1 is an unusual patent claim being directed to a process but not specifying any further method steps per se. Neither party has cited any case law on this form of claim, whether concerning its clarity, fair basis, novelty or inventiveness, nor have I located any. Finglen has simply asserted that claim 1 is not clear because it does not include any characterising process steps and is not fairly based because no characterising process steps have been described to provide a basis for the claim, the description being limited to conventional hot and cold rolling techniques.

25. However, application of these requirements of the Patents Act to claim 1 would seem to be analogous to application of the same requirements to so-called ‘product by process’ claims; that is, claims to a product which are only characterised from the same previously known product by its process of making.

26. It is the Commissioner’s long standing practice that ‘product by process’ claims do not lack clarity, fair basis, novelty or inventive step simply because of their form. If the characterising process specified by the claim in defining the product meets the requirements of clarity, fair basis, novelty and inventive step, the Commissioner considers that the defined product also meets those requirements in the absence of other relevant considerations; for example, such as by way of application of the long established rules of claim construction and the so-called reverse infringement test for novelty.

27. In effect, Claim 1 is a ‘process by product’ claim, where the only proffered characterisation is the product produced, there being no apparent characterisation in the form of process steps. In the absence of other relevant considerations put forward by Finglen, it would be expected that ‘process by product’ claim 1 would be clear and fairly based if the defined product is clear and fairly based, in the same manner as the Commissioner considers ‘product by process’ claims to be such. The absence of any characterising process step per se is not, of itself, a relevant consideration.

28. Consequently, I find no lack of fair basis consequent to Finglen’s submissions.

29. Finglen has also submitted that the term “relatively coarse rib spacing but a fine thread pitch” in independent claims 1 and 14 is unclear.

30. It is plainly common general knowledge that the rib spacing in a conventional single start continuous thread is inherently coterminous with the thread pitch and that the rib spacing in a conventional multiple start continuous thread is an integral factor of the thread pitch. In this context, I consider that the defined relativity of a coarse rib spacing and a fine thread pitch is sufficiently clear for the person of ordinary skill in the art of threaded members. Plain meaning interpretation of “relatively coarse rib spacing but a fine thread pitch” requires that the rib spacing be ‘significantly’ greater than the thread pitch, with ‘significantly’ drawing its plain meaning from conventional rib spacings being equal to the thread pitch.

31. There may appear to be uncertainty around at what point of increasing spacing does the rib spacing become “coarse” compared to the “fine” thread pitch. However, this point is a matter of well established law on purposive construction of claims in that, if the described benefit of the invention is realised, then the arrangement is within the scope of the claim while, if the described benefit of the invention is not realised, then the arrangement is outside the scope of the claim.

32. Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400. This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224. The rule particularly relevant to proper construction of the expression “relatively coarse rib spacing but a fine thread pitch” is that “a patent specification should be given a purposive construction rather than a purely literal one”.

33. I similarly consider that the relative term ‘small radius’ in claims 9 and 22 has clear meaning to the person of ordinary skill in the art of threaded members.

34. Consequently, I find no lack of clarity consequent to Finglen’s submissions.

Consideration of Novelty and Inventive Step submissions

35. Finglen has submitted that the claims are anticipated by many prior disclosures, both individually and in combination. These anticipations are largely dependent on the claims having a particular meaning consequent to the expression “at least one rib spaced apart from at least one other rib along said elongate member”. As submitted, this expression does not require the ribs to be consecutive ribs, it merely requires that any rib be spaced apart from any other rib.

36. I agree that this is the plain meaning of that expression. However, it is not this expression that finally determines the scope of the claims with regard to the rib spacing. The claims continue with the expression “wherein said thread form has a relatively coarse rib spacing but a fine thread pitch”. In this expression, the defined “rib spacing” is not specified in terms of the “ribs” but in terms of the “thread form”. It is the “thread form” which is defined as having a coarse rib spacing and a fine thread pitch. In the context of the invention, which relates to threads and ribs on an elongate member, the plain meaning of this expression to the person of ordinary skill in the art of threaded members is that the ribs that constitute the thread form have a coarse rib spacing.

37. In other words, the expression “wherein said thread form has a relatively coarse rib spacing but a fine thread pitch” is clearly defining that consecutive ribs of the thread form have a spacing that is significantly greater than the pitch of the thread. This interpretation is entirely consistent with the description of the invention as a whole.

38. To my mind, Finglen’s submission that disproportionate emphasis is to be placed on the expression “at least one rib spaced apart from at least one other rib along said elongate member” to thereby alter the meaning of the subsequent expression would be a gross distortion of the plain meaning of the claim. Such a distorted interpretation has no basis in any part of the description of the invention.

39. Almost all of the prior disclosures raised by Finglen, both individually and in combination, simply disclose conventional continuous and discontinuous thread helices where the rib spacing is equal to the thread pitch, for single start threads, or is an integral factor of thread pitch for multistart threads.

40. Consequently, I find no lack of novelty or inventive step consequent to the above submissions by Finglen.

41. Paragraph 46 of the Gray declaration is also relevant to interpretation of this aspect of the claims

"I find the actual text has a more encompassing meaning and the following text:
 “…at least one rib spaced apart from at least one other rib along said elongate member” includes the case where the ribs are spaced apart along the elongate member but may not be longitudinally aligned with each other.”

42. My interpretation of Gray’s declaration is that the rib spacing as defined could be measured from one rib to the next rib on the diametrically opposed side of the elongate member. To my mind, it thus becomes apparent that paragraph 46 of Gray’s declaration is also not giving due weight to the qualifying expression “wherein said thread form has a relatively coarse rib spacing but a fine thread pitch”.

43. Applying Gray’s interpretation to the claims, we must then conclude that all of the embodiments depicted in the drawings are not embodiments of the claimed invention. As depicted, the rib spacing from one rib to the diametrically opposed next rib is half a thread pitch in every depiction. Consequently, the embodiments would not meet the required feature of the claims of “a relatively coarse rib spacing but a fine thread pitch”.

44. As stated previously, the plain context for interpreting the “rib spacing” is that the ribs that constitute the thread form have a coarse rib spacing compared to the thread pitch of the thread form. Thread pitch is, by definition, measured at corresponding consecutive points along the thread helix; that is, at longitudinally aligned consecutive points along the thread helix. Interpreting the plain meaning of the “rib spacing” requires use of the same context, or same frame of reference, as that of the thread pitch.

45. It follows that Gray’s interpretation of these expressions in the description and claims would also be a gross distortion of their plain meaning to the person of ordinary skill in the art of threaded members. Consequently, I cannot accept paragraph 46 of the Gray declaration.

46. While Finglen’s submissions are largely dependent on a particular interpretation of the expression “at least one rib spaced apart from at least one other rib along said elongate member” to the exclusion of the remainder of the claim, there is another aspect to Finglen’s submissions with regard to US 4056911 (Tani) in association with US 3782839 (Majewski) and US 3561185 (Finsterwalder).

47. At paragraphs 27 to 30 of the Old declaration, Finglen refers to the pitch of the transverse ribs in Tani, draws relevance from the described relationship of rib pitch to rib height and, through mention of Majewski and Finsterwalder in Tani, draws the claimed invention from the combined disclosures. Gray provides a detailed rebuttal of Finglen’s submissions at paragraphs 68 to 99 of the Gray declaration.

48. It is clear from Tani that the ribs are necessarily transverse. I understand that, in referring to the “pitch” of the transverse ribs, Tani is not referring to a ‘thread’ pitch. Tani’s use of the term “pitch” is in its more general meaning of the transverse ribs being regularly repeated, but with the related context of the true female thread with which the transverse ribs are designed to engage. In other words, Tani simply discloses transverse ribs.

49. Tani’s description of the relationship of transverse rib pitch to rib height relates to bond stress as submitted by Gray. It also inherently relates to the female thread with which the transverse ribs are to engage but not in the manner defined in the instant claims of an elongate member with a thread form having a “relatively coarse rib spacing but a fine thread pitch”.

50. The reference to Majewski and Finsterwalder in Tani is plainly in describing the known prior art. In fact, Tani explicitly describes that the Tani transverse rib arrangement outperforms arrangements such as Majewski and Finsterwalder in bond stress “pull-out tests”. I simply cannot find any disclosure in Tani that would serve to lead the person of ordinary skill in the art to substantially vary the distinctly different rib arrangements of Majewski and Finsterwalder to arrive at the thread form of the instant claims having a “relatively coarse rib spacing but a fine thread pitch”.

51. Consequently, I find no lack of novelty or inventive step consequent to any of the submissions by Finglen.

Other considerations

52. While not raised in the particulars to the grounds of opposition or in submissions, I believe that there are a number of other substantive compliance issues to be considered.

Other considerations – s.40(2)(a) Description of the invention

53. As mentioned previously, the description of the invention requires very careful reading if it is to be fully understood. In particular, it is very difficult to distil the essential features of the described invention; features which appear to be essential from a normal reading of the description are elsewhere described as merely being preferred.

54. In working their way through the description of the invention, the person of ordinary skill in the art could believe that hot rolling manufacture is an essential feature of the described invention to then learn from the description that it is merely preferred. The person of ordinary skill in the art could then believe that the ribs forming discontinuous segments of a thread helix is an essential feature of the described invention to then learn from the description that it is also merely preferred.

55. Continuing this approach, the person of ordinary skill in the art is finally left with only one possible interpretation of the invention. The essential features of the described invention are those which allow the flow of grout to the top of the elongate member in order to anchor the elongate member as described on page 7. The described and defined feature of the invention of “a relatively coarse rib spacing but a fine thread pitch” contributes to this purpose by discontinuities in the ribbing providing space for easier flow of the grout or insertion of the grout tube.

56. However, the person of ordinary skill in the art would then have reached an irreconcilable conundrum. Pages 3 and 4 of the description describe the known prior art of discontinuous coarse threads. So, if the only required function of the discontinuous ribs of the described invention is to allow grout flow, such is no different to the known prior art. Consequently, the person of ordinary skill in the art inevitably reaches the conclusion that they cannot determine what the invention is from the description, which thus fails to meet the most basic requirement of s.40(2)(a) of the Patents Act 1990.

57. Even in the absence of the admitted art at pages 3 and 4, the person of ordinary skill in the art would be left with the unavoidable realisation that, if the function of the spaced ribbing is only to necessarily allow grout flow while the ribbing forming discontinuous segments of a thread helix is simply preferred functionality, then the ribbing is not functioning as a “thread form” at all. So, while the description and claims portray the ribbing as a “thread form”, as described it is not. The invention as described does not necessarily have the spaced ribs functioning as a thread. In this circumstance, either use of the term “thread form” is misleading in the description of the invention or description of the ribs functioning as a thread as being merely a preferred feature is misleading.

58. Thus, according to either analysis, the invention has not been fully described as required by s.40(2)(a) of the Patents Act 1990.

Other considerations – Fair basis

59. Having regard to the disclosures of the specification as a whole, including admitted prior art and the various objects of the invention, I believe that the confused description of the invention most likely arises because the specification describes the “thread form” as being only preferably of thread form. That is, it is more likely that the spaced ribs of the invention are intended to function as a thread; thus being a true “thread form”.

60. However, for the ribs to function as a thread, it is a mechanical requirement that the ribs form discontinuous segments of a thread helix rather than merely being segments of unrelated thread helices. This feature is introduced in claims 6 and 19 and hence, by the normal rules of claim construction, is not a feature of independent claims 1 and 14.

61. I thereby conclude that claims 1 and 14 are not fairly based by not specifying that the “thread form” is created by the spaced ribs forming discontinuous segments of a thread helix.

62. I have previously considered Finglen’s submissions on claim 1, determining it to be a ‘process by product’ claim. There is a further inherent characteristic to this form of claim which requires due consideration.

63. In ‘process by product’ claim 1, the only proffered characterisation is the product produced, there being no apparent characterisation in the form of process steps. It follows inherently that claim 1 includes any and all conventional manufacturing techniques but limited by claim definition to the conventional techniques that will produce the defined product. On this interpretation, ‘process by product’ claim 1 is analogous to ‘product by process’ claims, with the Commissioner regarding claim 1, in the absence of other relevant considerations, to be clear and fairly based as long as the defined product is clear and fairly based, and novel and inventive as long as the defined product is novel and inventive through application of the so called reverse infringement test.

64. However, the preceding paragraph has not considered the full scope of ‘process by product’ claim 1. Whereas the scope of ‘product by process’ claims is fully determined throughout time by the defined process, ‘process by product’ claims are not so limited. In addition to ‘process by product’ claim 1 including any and all conventional manufacturing techniques limited to those that will produce the defined product, it also includes any future processes, that are currently unknown, but again limited to those that will produce the defined product. While this part of the scope of the claim has clarity as long as the defined product is clear, fair basis of the claim appears less certain.

65. The decision of the High Court in Lockwood v Doric [2004] HCA 58 seems salient to determining the fair basis of claim 1. In Lockwood v Doric, the description described a particular solution to a problem associated with deadlocks, however the claim was not limited to that particular solution and was still determined as being fairly based. Had other solutions to the deadlock problem been known, the claim would have been found to be anticipated but the claim would still have remained fairly based on the description of the invention.

66. The related circumstances of the present invention are that the description discloses advantage to the particular thread form defined in the claims, were it to be otherwise fairly based as required by my immediately preceding determination. The description also discloses multiple manufacturing processes for forming the claimed thread form. There is explicit disclosure of using any conventional hot rolling technique. There is also directly implied disclosure of using any conventional cold rolling technique, because hot rolling is described as merely preferable while cold rolling is described as the other conventional way of forming threaded members.

67. Consequently, as for the broad claiming of the deadlock arrangement of Lockwood v Doric, a broad claim to any process for forming the claimed thread form is quite plainly fairly based on the description, bearing in mind that the claimed process is limited, by claim definition, to processes that will produce the claimed thread form.

68. This conclusion is also consistent with s.13 of the Patents Act 1990, statutory determination of exclusive rights conferred by a patent in association with statutory definition of “exploit” which includes patent rights in products extending to making the product. If subsequent patents are granted for manufacturing processes of threaded members which could be used to produce the claimed thread form, each patent would stand of its own right. If either party wished to use their patent to the effect of the other patent, any conflict would be resolved as a commonplace licensing matter. There would be no inconsistencies in the granted patent monopolies.

69. The conclusion is also consistent with the manner of manufacture law on patent process claims. As stated by the Full Court in Grant v Commissioner of Patents [2006] FCAFC 120

“It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent.”

70. So, in applying the Commissioner’s approach for ‘product by process’ claims in a duly considered manner to ‘process by product’ claim 1, I consider that claim 1 is not necessarily not fairly based simply because of its form.

Other considerations – Clarity

71. Claims 3 and 16 specify that the rib spacing is “at a distance of greater than one thread pitch”. However, this is a plainly broader definition than the definition of “a relatively coarse rib spacing but a fine thread pitch” in claims 1 and 14, to which claims 3 and 16 are respectively appendent.

72. Consequently, I find that claims 3 and 16 are unclear. For the same reason, claims 4 and 17 are also unclear.

73. Claims 13 and 26 specify that the elongate member is solid or hollow, which is plainly redundant on claims 1 and 14, to which claims 13 and 26 are respectively appendent.

74. Consequently, I find that claims 13 and 26 are unclear.

Other considerations – Novelty and inventive step

75. As explained above, claims 1 and 14 include within their scope arrangements where the feature of a ribbed “thread form” is not a thread form in any manner, its only described purpose being to facilitate grout flow or grout tube insertion. Such ribs, with fine angle or so called “fine thread pitch” are, in practical effect, functionally no different to the known discontinuous transverse ribs used in reinforcing bars, such as disclosed in US 3782839 and as disclosed as prior art in US 4056911.

76. The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235, where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

77. Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken: see e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.

78. The fine angle of the ribs serves no defined or described purpose in the arrangement claimed. Consequently, it is not an “essential integer” of the claimed invention for the purposes of the “reverse infringement test”. Claims 1 and 14 are therefore not novel over US 3782839 and US 4056911.

79. The features introduced by claims 2 to 5, 13, 15 to 18 and 26 are redundant, admitted as being well known or are rib spacings within the disclosures of US 3782839 and US 4056911.

80. I therefore conclude that claims 1 to 5, 13 to 18 and 26 are not novel or lack an inventive step in view of US 3782839 and US 4056911 in association with admitted common general knowledge.

81. The final compliance issue to be considered is whether any of the accepted ‘process’ claims are not novel or lacking in inventive step simply because of their form as ‘process by product’ claims.

82. Claim 1 is a ‘process by product’ claim, where the only proffered characterisation is the product produced, there being no apparent characterisation in the form of process steps. The subject matter of Claim 1 is a “process for the formation of a thread form in a substantially elongate member” with the remainder of the claim characterising the “thread form”. Claim 1 includes any and all conventional manufacturing techniques qualified by “for the formation of” the defined thread form. The determinative issue is what effect this qualification has on the scope of the process claimed.

83. Both parties appear to be in agreement that the bar whose photographs are in evidence as Exhibit PAG-1 was fabricated in accordance with the description of the invention using conventional hot rolling techniques. While the techniques are conventional, it is both inherent and apparent that the techniques must have been applied or adapted in a particular way so as to produce the specified thread form. If the specified thread form is determined as being novel, it must follow that the adaptation of the conventional process that resulted in the production of the specified thread form is itself novel.

84. The plain meaning of the qualification in the claim “for the formation of” the defined thread form requires that the process is at least suitable for producing the defined thread form. It is the plain and simple interpretation of the claim, but also required by purposive construction of the claim, that the defined process is not suitable for producing the defined thread form unless the process includes the corresponding adaptation that results in production of the defined thread form. Consequently, if the defined thread form is novel, claim 1 does not include any prior known process; it only includes processes with the novel adaptation that produces the novel thread form. Consequently, ‘process by product’ claim 1 is not to be determined as being not novel simply because of its form.

85. As described in the specification, the adaptation of the conventional techniques to produce the defined thread form does not require any inventiveness by the person of ordinary skill in the art; otherwise the invention would not have been fully described. However, it would be an invalid deduction to thereby conclude that the process lacks inventive step if the defined thread form is determined as being either novel or inventive. The adaptation of the conventional techniques to produce the defined thread form only becomes obvious to the person of ordinary skill in the art because of the disclosure in the specification of the defined thread form, whether novel or inventive. In the absence of the instant patent application and its specification, the adaptation of the conventional techniques to produce the defined thread form would have remained wholly unknown. Consequently, ‘process by product’ claim 1 is not to be determined as lacking an inventive step simply because of its form.

Patentable subject matter and withdrawn amendments

86. From my determinations above, it can be deduced that, had the claims been fairly based on the description of the invention, the claims would also have been novel and inventive. It is clear that there is patentable subject matter within the patent specification.

87. I have reviewed Gray’s request to amend the specification under s.104 filed 24 August 2005 and subsequently withdrawn. Having regard to all aspects of my determinations above, I would consider the request to amend, and the patent specification that would have resulted from the amendment, to be in full compliance with the relevant provisions of the Patents Act 1990. Had the amendment proceeded to allowance, the instant opposition would have been fully obviated.

CONCLUSION

88. I have found that the invention has not been fully described and that accepted claims 1 and 14 are not fairly based, that claims 3, 4, 13, 16, 17 and 26 are not clear and that claims 1 to 5, 13 to 18 and 26 are not novel or lack an inventive step for the reasons detailed above.

89. As the specification clearly contains patentable subject matter, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.  If suitable amendments are not proposed within that time, I will refuse the application.

COSTS

90. It is usual in such proceedings for costs to follow the event.  However, in this case, the opposition has not succeeded on the particulars and submissions put forward by the Opponent, which were effectively countered by the Applicant. Nevertheless, the opposition has allowed serious deficiencies in the patent application to be determined. Consequently, I make no award of costs.

Bill Major

Delegate of the Commissioner of Patents

22 February 2008

Patent attorneys for the Applicant  :  Allens Arthur Robinson, Sydney

Patent attorneys for the Opponent   :  Fraser Old & Sohn, Sydney