Steel Foundations Limited v Soiltest Australia Pty Ltd
[2001] APO 37
•9 August 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 708999 in the name of Steel Foundations Limited
Title: Method of Building Construction
Action: Opposition under s.59 by Soiltest Australia Pty Ltd
Decision: Issued .
Abstract
The opponent submitted that the alleged inventor, Mr Paul Anthony Camilleri was not the true inventor of the invention, and that Steel Foundations was not entitled to the grant of the patent. It was found that the requirement that an applicant must be the actual inventor or their assignee must not be confused with the requirement of novelty. A person who independently invents a device or method can claim to be the actual inventor, even though another may have made the same invention at an earlier date, provided that the invention was not obtained from that other person or some other source. With no evidence to the contrary, it was concluded that Mr Camilleri was the actual inventor of the invention, and that Steel Foundations was entitled to the grant of a patent for the invention.
The opponent attacked the invention for being no more than “a mere mathematical scheme” that did not constitute a manner of manufacture. Though the steps of measuring and comparing are mathematical in nature, it is clear that when the specification was read as a whole, there was a necessary inference confining claim one to the insertion of screw piers into soil to obtain the safe working load (SWL). It was concluded that the claimed invention belonged to the useful arts as distinct from the fine arts.
The opposition succeeded on the grounds of novelty and inventive step. Several section 40 defects were also found in the specification.
The application was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 708999 by Steel Foundations Limited and opposition under Section 59 of the Patents Act 1990 by Soiltest Australia Pty Ltd.
BACKGROUND
Patent application 708999 in the name of Steel Foundations Limited (hereinafter referred to as Steel Foundations) was filed on 16 December 1996 and derives priority from provisional applications PN7149 (14 December 1995) and PN7150 (14 December 1995). The patent application was advertised accepted on 19 August 1999.
Soiltest Australia Pty Ltd (hereinafter referred to as Soiltest) filed notice of opposition on 18 November 1999 followed by a Statement of Grounds and Particulars on 17 February 2000. A request to amend the Statement of Grounds and Particulars under regulation 5.9 was filed on 5 May 2000 and was allowed on 1 June 2000.
Soiltest’s evidence in support was completed on 16 May 2000. Under Regulation 5.8(2), evidence in answer was due on 16 August 2000. On 15 August 2000, Steel Foundations filed an application for an extension of time of three months till 16 November 2000 in which to serve evidence in answer. The extension was granted without objection. On 8 November 2000, Steel Foundations filed a further application for an extension of time of three months to 16 February 2001. Soiltest objected to this extension, and in his decision of 6 March 2001, a delegate of the Commissioner of Patents allowed Steel Foundations seven days in which to lodge their evidence in answer. No evidence in answer was served.
The matter was set down for a hearing on 24 May 2001. On 23 May 2001, Mr J G Adams, patent attorney with Fisher Adams Kelly, advised that representations would not be made on behalf of Steel Foundations either at the hearing or in writing. Consequently, Mr Gint Silins, patent attorney with Cullen & Co., advised that in the circumstances Soiltest did not intend to appear at the hearing and would instead rely on their previously submitted material.
THE SPECIFICATION
The specification begins by stating that:
"This invention relates to a method of constructing foundation slabs, particularly suitable for, but not limited to, domestic dwellings."
There is a brief discussion on how foundations for dwellings are normally designed on a once-off basis, to take into account the characteristics of the soil on which the slab is to be laid. According to the specification, it is an object of the present invention to "provide a method of slab construction which takes into account the different strengths of soils".
The specification ends with six claims that are as follows:
A method of determining the strength of the soil to support a slab wherein:
the torque required to drive a screw pier, of a particular configuration, into the soil is measured;
and the measured torque is compared against predetermined data to calculate the safe working load (SWL) of the screw pier in compression or in compression and tension.A method as claimed in Claim 1 wherein:
the screw piers are of single-helix, double-helix, or triple-helix configuration.
A method as claimed in Claim 2 wherein:
the safe working load (SWL) in compression of a double-helix screw pier is approximately 50% greater than for an equivalent single-helix screw pier; and the SWL in compression of a triple-helix screw pier is approximately double the SWL of a single helix screw pier for the same applied torque.
A method as claimed in Claim 1 wherein:
the SWL in tension of the single helix screw pier is approximately 75% of its SWL in compression.
A method as claimed in any one of Claims 1 to 4 wherein:
the effective length of the screw pier is calculated as being a factor of 0.7 of the actual length of the distance from the soil surface to the helix of the screw pier.
A method as claimed in Claim 5 wherein:
by measuring the eccentricity (e) of the applied load, the ultimate axial load capacity (N*) and ultimate shear capacity (Vv) of the screw pier can be calculated from Table B in the description.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent's grounds for opposition were that:
The nominated person is not entitled to the grant of the patent;
The claimed invention is not a manner of manufacture within the meaning of section 6 of the Statute of monopolies;
The invention so far as claimed in any claim of the application is not novel or inventive; and
The complete specification offends the provisions of ss 40(2)(a), 40(2)(b) and 40(3) of the Act.
The particulars in support of the grounds of opposition relating to sections 18(1)(a) and 18(1)(b) refer to 59 documents, designated N1 to N46 and IS2 to IS14. However, I note that not all of these documents were filed in evidence. Consequently, I will not entertain any arguments which relate to:
Document N5 (Letter from Philip Bell & Partners Pty Ltd to Instant Foundations (Aust) Pty Ltd, 21 October 1988)
Document N24 (brochure entitled “Technical Standard SF-1 for SLABMASTER”, by Steel Foundations Limited, 8 October 1996)
Document N29 (“Vertical Load Capacity of Ground Anchors” by Geotechnical Engineering, 9 March 1993)
Document N30 (“Load Rest of Instant Foundations” by N.T. Department of Transport and Works, 15 April 1993)
Document N31 (“Testing of Anchors & Piles” by Queensland Electricity Commission, 7 May 1993)
Document N32 (“Testing of Foundations for Queensland Rail” by E.T.R.S., 2 May 1993)
EVIDENCE
The evidence from Soiltest consists of:
A statutory declaration by Philip Bell, Managing Director of Philip Bell and Partners Pty Ltd. Mr Bell states that his “area of expertise is in the structural design of buildings and particularly in the design of novel and complex foundation and retention systems for buildings”. He has been involved in the structural design of some 500 buildings in Australia. Mr Bell does not appear to have any connection to Soiltest, but I note has been engaged as a consultant engineer by Instant Foundations (Aust) Pty Ltd. Appended to the declaration is a selection of patent and non-patent literature on which the opponent’s case relies. These exhibits are referred to as PB-1 to PB-52.
A statutory declaration by Justin Williamson, Managing Director of Soiltest Australia. I note that exhibits JW-1 to JW-31 form part of the evidence of Mr Bell.
The applicant declined the opportunity to file any evidence in answer. I will set out the evidence in more detail, as required, later in my decision.
SUBMISSIONS
I shall refer to the submissions from the opponent wherever necessary in my decision.
DECISION
Entitlement
The opponent submitted that the alleged inventor, Mr Paul Anthony Camilleri is not the true inventor of the invention, and therefore Steel Foundations is not entitled to the grant of the patent for the invention.
No evidence has been provided to suggest that Steel Foundations is not an eligible person as set out in section 15 of the Patents Act 1990, or that the opponent is an eligible person in relation to the invention. Rather, Soiltest appear to be arguing that Steel Foundations is not entitled to the grant of the patent because the claimed invention is not novel.
I am not persuaded by this argument. I note that the Patents Act 1990 contains several mechanisms by which a person other than a nominated person in a complete application in respect of an invention may be found to be or declared to be an eligible person. I consider that section 59(a) is one such mechanism, and believe that it is not appropriate to consider issues of novelty under this provision when novelty is already a ground of opposition by virtue of section 59(b).
Furthermore, the requirement that an applicant for a patent must be the actual inventor or their assignee must not be confused with the requirement of novelty. A person who independently invents a device or method can claim to be the actual inventor, even though another may have made the same invention at an earlier date, provided that the invention was not obtained from that other person or some other source. To a large extent, the question of who is the "true inventor" is rendered otiose by the more important question of who is the "actual inventor". With no evidence to the contrary before me, I must conclude that Mr Camilleri is the actual inventor of the invention, and that Steel Foundations is entitled to the grant of a patent for the invention.
Manner of Manufacture
The second ground of opposition relied upon by the opponent concerns the patentability of the invention under s 18(1)(a) of the Patents Act 1990. In their submissions, Soiltest state that:
"The claims define a method of determining the strength of soil which comprises measuring the torque required to drive a screw pier into the soil and comparing the torque against predetermined data to calculate the safe working load of the pier in compression or in compression and tension. That is, the claims define no more than a measurement followed by a comparison of the measurement with known data. This is no more than a mere mathematical scheme and that does not constitute a manner of manufacture."
I am satisfied that this ground is not made out. Though the steps of measuring and comparing are mathematical in nature, it is clear that if the present specification is read as a whole, there is a necessary inference confining claim one to the insertion of screw piers into soil to obtain the safe working load (SWL). I believe that a step of this nature is sufficient to deliver the claimed invention into the realm of the useful arts as distinct from the fine arts (National Research Development Corp v Commissioner of Patents 102 CLR 252). Furthermore, the invention clearly passes the test set out at pages 452-4 of NV Philips Gloeilampenfabrieken v MirabellaInternational Pty Ltd 32 IPR 449, which involves asking whether it is apparent on the face of the specification that the necessary quality of inventiveness is absent. Whilst individual features may be well known, there is nothing on the face of the specification that suggests that the combination claimed is not new. The necessary quality of invention is not absent merely from the face of the specification.
I find that the opponent has failed to establish that the claimed invention does not constitute a manner of manufacture.
Section 40
The opponent contends that the application does not comply with s 40. I think that this is in no small part due to the way in which the present application is drafted. Soiltest begin by alleging that:
“The specification does not describe whether the measured torque of claim 1 is the total torque, the average torque or the maximum torque applied.”
Section 40(2) of the Patents Act 1990 states:
"A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and…."
The courts have indicated that the requirement that the patentee fully describe his invention in his complete specification has two aspects. First, he must describe the nature of the invention so that others will know the area over which he claims his monopoly. Secondly, he must describe the manner in which the invention is to be performed (Edison & Swan Electric Light Co. v Holland (1889) 6 RPC; No-fume Ltd. v Frank Pitchford & Co. Ltd. (1935) 52 RPC). He is not required to do this in minute detail: he is entitled to assume that the addressee is a person normally skilled in that art and possessed of the common general knowledge pertaining to that art (Osram Lamp Works Ltd. v Pope's Electric Lamp Co. Ltd. (1917) 34 RPC 369; Welch Perrin & Co. Pty. Ltd. v Worrel (1961) 106 CLR 588).
Regarding insufficiency, Romer L.J. in No-Fume v Pitchford (supra at 243) stated:
"…if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid. The test to be applied for the purpose of ascertaining whether a man skilled in the art can readily correct the mistakes or readily supply the omissions, has been stated to be this: Can he rectify the mistakes and supply the omission without the exercise of inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
On consideration of the submissions and evidence put forward by the opponent I find that none of the declarants have had difficulty in understanding the term ‘torque’ in the context of the specification. I note from the description that the terms ‘torque’ (found at several places throughout the specification), ‘applied torque’ (page 5, line 8) and ‘installation torque’ (page 8, line 7) appear to be used interchangeably in reference to the same feature. I also note that each declarant frequently refers to ‘installation torque’ throughout their discussion of the prior art and the application. I gather that the term ‘installation torque’ is well known in the art, and that practitioners in the field have a common understanding of its meaning. Further, none of the declarants have alleged that as a result of this lack of disclosure, they would be unable to perform the invention. I believe that the term ‘torque’ is sufficiently defined, and therefore that the specification complies with section 40(2)(a) in this respect.
Soiltest have also argued that:
“The specification does not fully describe how the data of Table A on page 6 (and as indirectly referred to in the claims) were arrived at. Table A is in fact an extract from Longmac Pty Ltd “Report on Field Tests”, dated May 1995. This is admitted on page 13 of the Steel Foundations Limited Technical Standards Manual for Slabmaster. This document was attached to the Amended Statement of Proposed Amendments as N24. If the data of Table A were known before the priority date of the application, then the specification should say so.”
The opponent further criticised the specification for not fully describing how the data of Table B were arrived at. It was also asserted that it was not clear how the parameters N*, e, SWL and Vv may be calculated. If I were to agree with the opponent that the data could not be obtained by “a little ordinary trial and error” (as per Poseidon Industri A.B. v Cerosa Limited (1982) FSR 209), then I must find that the specification does not fully describe the invention. However, I do not believe this to be the case in this instance. I note that the specification states at page 8, lines 8 to 12, that:
“It will be readily apparent to the skilled addressee that the actual figures in the Tables A and B will be dependent on the types of soil and the configuration of the particular screw piers being used. Therefore, different tables may be provided for different screw pier configurations.”
From the language of the above paragraph, and in the absence of these ‘different tables’, I believe that the applicant is providing a clear indication that a non-inventive skilled addressee could easily determine such data. The consequence of this interpretation suggests that the invention consists of measuring the torque required to drive a screw pier into the ground, and using known techniques, or known data, to calculate the SWL. Confirmation that these techniques or data appear to be common general knowledge in the art is provided by the declarants. For example, Mr Williamson states at paragraph 2.5 of his declaration that:
“Engineers have relied upon the relationship between installation torque and SWL for the statutory certification of screw pier installations under the Building Code of Australia since about 1994."
Statements made by Mr Bell in his declaration also suggest that a competent engineer in the field would need to expend little effort in determining the SWL from the installation torque required to drive a screw pier into soil. In summary, though I agree with the opponent that the data in Tables A and B is merely presented without any explanation of its genesis, I do not agree with the assertion that the invention is not fully described.
With regard to the contention that the data of Tables A and B were known before the priority date and that the specification should clearly state this, I am guided by the view expressed in the Manual of Patent Office Practice and Procedure at paragraph 10.6.5.3:
“Where the invention lies in a new combination, irrespective of whether the integers are all old or some are old and some are new, the requirements of sec 40(2)(a) are satisfied by a description of the combination as such and the applicant is not required to distinguish what is old from what is new if he or she does not choose to do so. See British United Shoe Machinery Co. Ltd. v A. Fussell and Sons Ltd., (1908) 25 RPC 631.”
Consequently, I consider that there is no requirement under section 40 of the Act that the applicant specify whether the data of Tables A and B were known, or that they differentiate what is new from what is old.
Soiltest then contended that the specification was deficient because:
“The predetermined data referred to in claim 1 cannot be used for triple-helix screw piers as Table B does not have data for Le =3m.”
Whilst I agree that Table B does not disclose the relevant parameters for the situation where the effective length is 3m, I am of the opinion that the hypothetical addressee of the specification could supply these omissions without the exercise of any inventive ingenuity from common general knowledge. My deliberations above are again apposite. Furthermore, I note that the triple-helix configuration is only preferable, and not essential. The specification only needs to state the best method of performance known to the applicant, and need not describe more than a single preferred embodiment. I am satisfied that the application does not fail for insufficiency on this ground.
In their final argument under section 40(2)(a), Soiltest asserted that the specification is deficient because:
“The specification does not clearly describe how the percentages in claims 3 and 4 were arrived at.”
In my opinion, claims 3 and 4 appear to be defining the invention by reference to the result which is to be achieved. A claim defining the invention by result can be a valid claim, but the specification must set out the means by which that result can be obtained, or it must be attainable by the exercise of common general knowledge, with no inventive faculty (as per No-Fume Ltd v Frank Pitchford & Co Ltd (supra) and Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461). Page 3 of the specification states that:
“Preferably, the safe working load (SWL) in compression of a double-helix screw pier is approximately 50% greater than for an equivalent single-helix screw pier; and the SWL in compression of a triple-helix screw pier is approximately double the SWL of a single helix screw pier for the same applied torque.
Preferably, the SWL in tension of the single helix screw pier is approximately 75% of its SWL in compression.”
No further discussion is provided in the specification about these features. It could be argued that the claims do no more than merely state the intrinsic differences between the differing configurations of screw pier, i.e. in general, a double-helix screw pier will always possess a SWL in compression that is approximately 50% greater than that for an equivalent single-helix screw pier. However, I do not believe that this is the case. Paragraph 3.14 of the Bell declaration points out that:
“With respect to claim 4, research conducted by my company has shown that the tension capacity of the screw pier is not always equal to 75% of the SWL in compression as the mode of failure in tension is very different to that in compression. Several failure modes are possible depending upon the soil properties (see, for instance, Exhibit PB-2), the depth of the pier and the angle of penetration. For example, pull out tests on screw piers installed on a 45 degree angle in clay can exhibit a SWL in tension less that (sic) 50% of the SWL in compression measured from the installation torque. Hence, the method of claim 4 will not hold true for all soil types.”
It is clear that the SWL of a screw pier is not merely a characteristic of its particular design, but is also heavily influenced by its method of use and of the soil into which it is placed. Indeed, the number of variables which critically impact on the value of the SWL place an onus on to the applicant to describe how these results can be obtained. Whilst the addressee must be taken as a person with a will to make the invention work, they should not be called upon to undertake a prolonged study of matters which present some difficulty. I believe that Steel Foundations has placed an unreasonable demand on the addressee, and conclude that for this reason the specification is insufficient.
Soiltest has also submitted that the claims do not define the invention, as required by section 40(2)(B) of the Act. They argue that:
“The opening paragraph of the application reads:
“This particular invention relates to a method of constructing foundation slabs, particularly suitable for, but not limited to, domestic dwellings.”
The broadest object of the invention is stated on page 2, beginning at line 10:
“It is an object of the present invention to provide a method of slab construction which takes into account the different strengths of soils.”
A slab is generally held as defining that part of a reinforced concrete floor, roof, or platform which spans beams, columns, walls or piers.
Claim 1 of the application defines the invention as:
“A method of determining the strength of the soil to support a slab wherein: the torque required to drive a screw pier, of a particular configuration, into the soil is measured; and the measured torque is compared against predetermined data to calculate the safe working load (SWL) of the screw pier in compression or in compression and tension.”
This claim has nothing to do with slab construction per se. The invention is supposedly a method of determining the strength of soil to support a slab. As claim 1 fails to define features whereby the broadest object of the invention may be achieved, this claim does not define the invention.”
I agree that claim 1 does not adequately define a method which is capable of achieving the abovementioned object of the invention. However, I am not convinced that I should find that the claims do not define the invention on this basis. In my opinion, where some of the claims are in conflict with the description, the specification can be considered to have sufficiently described the nature of the invention provided that it is possible to ascertain the nature of the invention by having regard to the specification as a whole (as per Welch Perrin and Co Pty Ltd v Worrel (supra), and Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385).
When the specification is read as a whole, I believe the invention clearly resides in a method of determining the strength of soil to support a slab, as stated in the preamble of claim 1. I note that a further object of the invention is to provide “a method of construction where the slab is supported on screw piers and the strength of the soil can be determined by the torque required to drive the screw piers into the ground.” Furthermore, the description following the stated objects of the invention is directed towards a method for determining the SWL by measuring the torque required to drive a screw pier into the ground. I am thus satisfied that the claims define the invention.
In their submissions under section 40(3) of the Act, Soiltest allege that the claims lack fair basis in that they fail to define an invention which achieves the objectives of the invention as stated. In particular it was asserted that:
“The claims are not fairly based as they do not meet the stated objects of the invention. The broadest object of the invention is to provide a method of slab construction which takes into account the different strengths of soils, whereas the claims supposedly define a method of determining the strength of the soil to support a slab. Strictly speaking, this is not an actual method of slab construction as a slab is defined as that part of a reinforced concrete floor, roof, or platform which spans beams, columns, walls or piers. Moreover, claim 1 in fact defines a method of calculating the safe working load (holding capacity) of a screw pier rather than detecting soil strength.”
I do not agree with the proposition that the claims are not fairly based. My comments regarding the section 40(2)(b) issues raised by the opponent are apposite, and I reiterate my belief that the invention clearly resides in a method of determining the strength of soil to support a slab, as stated in the preamble of claim 1. I consider the method defined by the claims is potentially capable of achieving the object of the invention, as set out in the specification as a whole. Whether it will actually do so or not is, in my view, a question of utility, which is beyond the scope of this opposition.
Novelty
The law regarding novelty has been extensively reviewed in judgments by the Federal Court of Australia in recent years. These judgments indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
As to what constitutes infringement, I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd (1969) RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co Pty Ltd and Another 14 ALR 149 at 157 as follows:
“To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement.”
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel - Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.
I will discuss the exhibits in order of relevance.
Conference Paper entitled “Helical Piers in Expansive Soils of Dallas, Texas”, from the 7th International Conference on Expansive Soils, by Chance Company and Hargrave, Inc, 1991 (referred to as either PB-21, JW-7 or document N36)
This paper describes how helical anchors, originally designed for uplift loading, are being utilised as compression members in the remedial repair of residential and light commercial structures. The summary of the paper states:
“An empirical relationship is currently used to correlate the uplift capacity of a helical anchor to the torque required for installation. This same relationship is presently employed as an estimate of an anchor’s compression capacity. Full scale compression load tests were performed at five sites in the Dallas area. The compression/torque relationships developed from this data were compared to the empirical values presently in use.”
The first paragraph of section 2 states that “The design configuration of the HS (helical steel) Pier consists of single or multi-element circular bearing plates formed in a helical shape”. Section 4 of the article discloses how “HS piers are installed utilising portable rotary equipment with integral torque monitoring gauges”. The results of the study demonstrate a linear relationship between the ultimate compression capacity and the average installation torque (Figure 5) or average torque (Figure 6). The data can be “employed in calculating presumptive compression capacities”. The paper does not make use of the phrase “safe working load”, but I am satisfied with the opponent’s assertion that the “ultimate compression capacity” is analogous, or can be directly related, to the SWL. The concluding paragraph states:
“HS Pier compression capacity can be related to its installation torque. Full scale load test results indicate a compression capacity to average torque ratio 23 to 33% higher than the presently suggested capacity/torque ratio of 10 as developed for uplift.”
In other terms, the uplift or tension capacity is 75% to 81.3% of the compression capacity.
On this basis I find that claims 1, 2 and 4 are not novel in light of this disclosure.
“Encyclopedia of Anchoring” by A.B. Chance Company, 1990 (referred to as either PB-22, JW-16 or document N10)
This document discloses various techniques and products developed by Chance. Section B discusses power-installed screw anchors, with page B-3 displaying a graph that relates the predicted holding capacity to installation torque. Page B-28 describes the Chance torque indicator “which accurately correlates anchor installation torque with anchor holding strength regardless of soil conditions”. Single and twin-helix screw anchors are explicitly mentioned at page B-2. I note that the only disclosure of a triple-helix configuration is in a drawing at the introduction of Section A, which is reproduced at page B3. Nevertheless, there is no reason why a drawing alone should not be capable of disclosing an invention (as per C Van der Lely NV v Bamfords Ltd [1963] RPC 61), and I am satisfied that such a configuration is disclosed. Page C-8 states that “A table of anchor performance values is furnished with each tool. These values are the result of many years of correlating installation torque with tension withstand”.
I am of the opinion that claims 1 and 2 are not novel in light of this citation.
For similar reasons, I believe that the following closely related A.B. Chance exhibits anticipate the invention of claims 1 and 2:
Brochure entitled “Instant Foundations” by A.B. Chance Company, 7 November 1988 (referred to as either PB-23, JW-17 or document N11);
Brochure entitled “Chance Earth Anchors” by A.B. Chance Company, 4 June 1984 (referred to as either PB-25 or document N23);
United States Patent Specification 4499698 (Hoyt et al) 19 February 1985, assigned to A.B. Chance Company (referred to as either PB-29 or document N35);
Brochure entitled “Instant Foundations” by A.B. Chance Company, 7 November 1991 (referred to as either PB-31 or document N22).
Thesis entitled "Compression, Tension and Lateral capacity of Screw-In Foundations", Ian Roderick Lacy, 1993 (referred to as either PB-33, JW-8 or document N2)
This document was submitted in partial fulfilment of the requirements of the Master of Engineering Studies Degree at the University of Queensland on 1 December 1993. Without evidence to the contrary, I am prepared to accept that the thesis was made available to the public after assessment as is the usual practice amongst Australian universities.
The aims of the project are stated on page ii of the thesis, and include drawing "a relationship between installing torque and the capacity of the anchor". The thesis contains a detailed description on the anchors used, their method of installation, the meter used to measure installation torque, the method of analysis and the results obtained. Several dozen tables and charts are available as appendices. At section 8.2, it is stated that:
"From the analysis of the load/deflection curves described in Chapter 7, safe working loads (SWL) and ultimate loads were determined.
The next stage in the data analysis was to plot the installation torque against the SWL for each anchor type….These plots are contained in Appendix E and seemed to be remarkably linear. Regression analysis was then undertaken to confirm this observation.
Regression analysis of the axial load test results lead to the compilation of these straightened lines into two design charts, one for tension (Figure 8.2.1) and one for compression (Figure 8.2.2). These design charts related the installation torque of each type of anchor to the SWL, producing a straight line relationship irrespective of soil type."
The conclusion on page 39 is also apposite:
"In conclusion, by using the design charts presented in this thesis and by monitoring the installation torque of a screw-in foundation satisfactory estimates of the SWL of the foundation can be made."
I believe that this citation discloses the invention of claims 1 to 4.
Seminar Paper entitled “Raft Slabs Incorporating the Screw-in-Foundation System”, by Dr. Peter W Mitchell and Mr Matthew L Duthy, 22 September 1994 (referred to as either PB-38, JW-12 or document N9)
This paper presents detailed information on the engineering performance of the screw-in foundation system as developed by Instant Foundations (Aust) Pty Ltd. Page 2 of the paper states:
“In common with observations made on screw piles overseas, it was found that there was a relatively consistent relationship between the ultimate load carrying capacity and the installation torque for the SIFs, that was independent of soil type or consistency.”
Figures 2 and 3 summarise these results, and mention is made of using these figures to determine expected SIF capacity in real-world applications. The paper discloses SIFs with one or more helical steel plates, and the measurement of torque during installation.
Accordingly, I consider that the invention of claims 1, 2 and 4 is not novel in light of this citation.
Australian Patent Application 44268/93 (JOSLYN MANUFACTURING COMPANY) 3 February 1994 (referred to as either PB-40, JW-25 or document N1)
The invention concerns a method and apparatus for determining the holding capacity of an earth anchor as it is being driven into the soil. Page 4 of the citation states:
“Accordingly, in one aspect of the invention, an apparatus is provided for determining the holding capacity of an earth anchor as the earth anchor is being driven into the soil by a motor wherein the apparatus includes (a) a torque determining means for determining the torque ap-plied [sic] to the earth anchor by the motor as the motor drives the earth anchor into the soil, and (b) a holding capacity determining means for automatically determining the holding capacity of the earth anchor from the torque applied to the earth anchor by the motor as the earth anchor is being driven into the soil.”
The term “holding capacity” is described on page 2, lines 6 and 7 as “the amount of load which can be supported by the earth anchor once it is in the ground”. From the general discussion and examples provided throughout the description, I am satisfied that the term can relate to capacity in compression or tension. Page 10 explains that in order to provide an indication of the holding capacity, a “microprocessor 56 implements a program shown in flow chart form in Figure 5”. It is clear that the operation of the program relies on predetermined data.
I believe that this citation discloses all of the features of claims 1 and 2.
I consider that the following exhibits do not deprive the claimed invention of novelty.
Report entitled “Bearing Capacity Calculation for Screw-In-Foundations (SIF) in Cohesive Soil” by P.J. Yttrup & Associates Pty Ltd (referred to as either exhibit PB-3, JW-23 or document N6)
This report discusses the relevant bearing capacity calculation methods for single and multi-helix screw-in foundations. Pages 15 states:
"The resulting installation torque is then related to the soil shear strength in the foundation and also the capacity of the SIF installation. For a uniform soil deposit with a constant shear strength a direct relationship between installation torque and capacity could be derived."
The report then provides several equations for calculating the estimated "ultimate strength" of the foundation. The final section of the report states that "SIF torque monitoring can be used to give a capacity estimate for comparison with the design prediction". It is clear that whilst the report discloses the relationship between installation torque and the holding capacity of the foundation, it does not disclose a method in which the SWL is calculated from the installation torque. Rather, the installation torque is used to confirm design predictions. Therefore, I consider that the invention of claim 1 has not been anticipated.
Australian Standard 4100-1990 (referred to as either exhibit PB-4, JW-13 or document N39)
The document consists of sections 3.1 to 3.5 of AS 4100-1990, and discloses the general design requirements for stable structures. Section 3.4 relates to strength limit states, and includes a table showing which clauses of the standard are relevant to individual design capacities. Soiltest state that “information from this Australian Standards document is likely to have been used particularly in developing Table B of the opposed application.” This may be so, but as there is no disclosure of the essential features of claim 1, I do not consider that this citation deprives the claimed invention of novelty.
Workshop Notes “Drilled Shaft Foundations”, by Professor Fred H Kulhawy, in association with the University of Queensland, 15 & 16 July 1993 (referred to as either PB-5 or document N41)
This document discloses the use of Brom’s theory to calculate the shear capacity of a screw pier. Whilst relevant to the calculation of the ultimate shear capacity (Vv) as discussed on pages 5 and 7 of the specification, it does not disclose the essential features of claim 1.
“Geomechanics Design” by McNally and Boyce, 1980 (referred to as either PB-6 or document N42)
The document consists of page 173 from the monograph, and shows bearing capacity factors for deep foundations in sand. Soiltest state that this document forms part of the common general knowledge of foundation engineers, and that the excerpt particularly relates to the calculation of the shear capacity of a screw pier using Brom’s theory. Even so, it fails to disclose any of the features of claim 1 and need not be considered further.
United States Patent Specification 2907204 (Gibbs) 6 October 1969 (referred to as either PB-7 or document IS9)
The invention concerns a device for determining the inplace shearing resistance of soils, and consists of a gear assembly which applies a balanced torque, through a torque applicator, to a vane stem having a four-bladed vane at its lower end. The citation states that “Knowledge of the shearing resistance of soils is necessary in foundation investigations….”, and demonstrates how in this instance the shearing resistance of the soil can be determined from T, the torque at failure and r, the radius of the cylindrical plug sheared by the vanes. Whilst the citation clearly discloses a method of determining soil strength by torque measurement, it is wholly silent on the features of a screw pier or the use of predetermined data to calculate the SWL, and does not anticipate the invention of claim 1.
Australian Patent Application 14385/83 (Mohajerani) 10 November 1983 (referred to as either PB-8 or document N3)
The invention concerns an auger penetrometer for determining soil strength, bearing capacity, density and consistency limits. The penetrometer comprises a “continuous flight auger of conventional configuration” which is secured to the lower end of a vertical rotatable shaft. A stand is provided to act as a guide means for the auger and shaft. Of particular interest is the discussion from page 5 onwards on how soil shear strength can be determined from torque, feed and auger diameter. Claim 7 is directed to “A method of evaluating soil strength….wherein the auger penetrometer is fitted with a torquemeter.”. There is no disclosure of a screw pier or the use of predetermined data to calculate the SWL, and on this basis I do not believe the citation anticipates the invention of claim 1.
Japanese Patent Abstract JP3028411 (Shohei Senda) 6 February 1991 (referred to as either PB-9 or document IS2)
The abstract merely discloses a means for measuring the strength of a foundation by using an excavating torque sensor. This citation does not anticipate the invention of claim 1.
For similar reasons, I believe that the following abstracts do not disclose the claimed invention:
Japanese Patent Abstract JP2308006 (KENSETSUSHO KANTO CHIHO KENSETSU KYOKUCHO et al.) 21 December 1990 (referred to as either PB-10 or document IS3)
Japanese Patent Abstract JP63142114 (DOBOKU KENKYU CENTER) 14 June 1998 (referred to as either PB-11 or document IS4)
Derwent Abstract of Korean Patent KR9404167 (KOREA STANDARD DEV CO LTD) 16 May 1994 (referred to as either PB-12 or document IS5)
Derwent Abstract of Soviet Patent SU988975 (ENERGOSETPROEKT) 15 January 1983 (referred to as either PB-13 or document IS6)
Japanese Patent Abstract JP7311133 (HITACHI CONSTRUCTION MACHINERY CO LTD) 28 November 1995 (referred to as either PB-14 or document IS7)
Japanese Patent Abstract JP8113937 (NITTO SEIKO CO LTD et al.) 7 May 1996 (referred to as either PB-15 or document IS8)
Derwent Abstract of Soviet Patent SU1094904 (ENERGOSETPROEKT) 30 May 1984 (referred to as either PB-20 or document IS14)
United States Patent Specification 3709031 (Wilson) 9 January 1973 (referred to as either PB-16 or document IS10)
The specification describes an apparatus and technique for the measurement of the torsional shear strength of soil. Torque is applied to a vaned probe, and resistance to the rotation of the probe in the soil is obtained by a sensor located near the vaned probe. There is no disclosure of a screw pier, and hence the claimed invention is novel in light of this citation.
British Patent Specification 2286247 (MINI SOIL SURVEYS LTD) 9 August 1995 (referred to as either PB-17 or document IS11)
The specification discloses an apparatus for determining the load bearing capacity of soils. A driving means which comprises a weight which can be raised and dropped forces a probe end member into the ground. The friction resistance of the probe end member is calculated from a torque measurement. There is no disclosure of a screw pier or the use of predetermined data to calculate the SWL, and on this basis I do not believe the citation anticipates the claimed invention.
United States Patent Specification 4649741 (Strom) 17 March 1987 (referred to as either PB-18 or document IS12)
The specification relates to a soil shear measurement apparatus which includes a torque motor connected to a torque shaft, torque cell and vane which extend beneath the soil surface. The torque cell is located between the shaft and the vane, and measures the soil shear strength. It includes a torque transmission member on which an electrical transducer is mounted. There is no disclosure of a screw pier or the use of predetermined data to calculate the SWL. The invention of claim 1 is not anticipated.
Similar reasoning applies to United States Patent Specification 4411160 (Lutenegger et al.) 25 October 1993 (referred to as either PB-19 or document IS13).
United States Patent Specification 5139368 (Hamilton et al) 18 August 1992 (referred to as either PB-26, JW-19 or document N12)
This patent, assigned to A.B. Chance Company, describes a method for installing an underpinning apparatus wherein rotational torque is imparted to a screw anchor of the apparatus until a predetermined torque value is achieved. The torque is indicative of the holding power of the screw anchor.
In my opinion, this citation provides a method of determining the appropriate torque for a given SWL (or 'weight' in this instance), not a method in which the SWL is calculated from the installation torque. Therefore, I consider that the invention of claim 1 has not been disclosed.
United States Patent Specification 3525225 (Yager et al) 25 August 1970 (referred to as either PB-27, JW-20 or document N13)
The patent describes a torque limiting device which uncouples an anchor rod from a drive shaft when a selected torque load is reached. Whilst the citation recognises the relationship between installation torque and the holding capacity of the anchor, it does not disclose a method in which the SWL is calculated from the installation torque. Therefore, I consider that the invention of claim 1 has not been disclosed.
Lecture Aid entitled “The Art of Anchoring” by A.B. Chance Company, 1987 (referred to as either PB-28 or document N14)
In these lecture notes it is stated that torque relates to anchor holding capacity and that Chance can prepare graphs of torque vs. anchor performance rating. This may be so, but as there is no disclosure of the essential features of claim 1, I do not consider that this citation deprives the claimed invention of novelty.
Similar reasoning applies to exhibit PB-24 (Brochure entitled “Chance Anchoring Systems” by A.B. Chance Company, 1986, also referred to as JW-18 or document N16) and PB-30 (Brochure entitled “Chance Instant Foundations” by A.B. Chance Company, December 1990, also referred to as document N15).
Australian Standard 2159-1995 (referred to as either exhibit PB-32, JW-6 or document N40)
The document consists of sections 6.3 to 6.4 of AS 2159-1995, and discloses the general design requirements for steel piles. Soiltest state that “information from this Australian Standards document is likely to have been used particularly in developing Table B of the opposed application.”. There is no disclosure of the essential features of claim 1. I do not consider that this citation deprives the claimed invention of novelty.
Letter from Dr David Williamson, Associate Professor of Geomechanics, University of Queensland, to Mr Paul Camilleri of Instant Foundations, 10 December 1993 (referred to as either PB-34 or document N46)
This letter discusses the results obtained and conclusions reached by Mr Lacy in his thesis. Mr Williamson states that "for a given screw-in foundation shaft diameter, the safe working axial load, is reasonably directly related to the installation torque, irrespective of the foundation soil conditions…". However, whilst the letter discloses the relationship between installation torque and the holding capacity of the anchor, it does not disclose a method in which the SWL is calculated from the installation torque. Therefore, I consider that the invention of claim 1 has not been anticipated.
“Design Guide for Screw-In-Foundations” (referred to as either exhibit PB-35, JW-11 or document N8)
Section 3.8.4 of the document states that the installation torque can be used to predict screw-in foundation strength and that continuous monitoring of the installation torque provides a very good measure of the foundation strength. Table B1 discloses that the effective length of a screw pier is equal to 0.7 of the total length of the pier.
The guide appears to suggest an installation method that relies on a predetermined installation torque being reached, and does not disclose the comparison of the measured torque against predetermined data to calculate the SWL. The citation does not anticipate the claimed invention.
“Instant Foundations Design Data”, October 1994 (referred to as either exhibit PB-36, JW-9 or document N7)
The document consists of a series of tables which relate the maximum installing torque to the horizontal and vertical safe working loads for a variety of circular hollow section piers. They do not disclose the claimed invention.
For similar reasons, I do not believe exhibit PB-37 (“Instant Foundations Design Data”, November 1994, also referred to as either exhibit JW-10 or document N44) anticipates the claimed invention.
Letter from RUST PPK Pty Ltd to Mr Paul Camilleri of Instant Foundations, 23 February 1994 (referred to as either PB-39, JW-22 or document N17)
This letter discusses the impact of climate, soil conditions and house types on expected footing layouts using screw-in foundations. I do not consider that this citation deprives the claimed invention of novelty.
Facsimile entitled “Sub-surface Soil Cohesion Profile for Kensington Banks Estate Estimated from Torsional Resistance of SIF” by Turson Products and Construction to Instant Foundations (Aust) Pty Ltd, 28 November 1995 (referred to as either exhibit PB-41, JW-27 or document N18)
Soiltest state that the “document was available to Soiltest Australia Pty Ltd prior to the priority date of the opposed application”. Despite the lack of corroborating evidence, I am prepared to accept that the facsimile was published. The citation merely discloses a table and charts which detail measured parameters for a single helix shaft in one particular site. I therefore conclude that it does not disclose the claimed invention.
“Combined Bending & Compression Axial Load Capacity Tables”, prepared by Philip Bell of Philip Bell and Partners Pty Ltd, 1995 (referred to as either PB-42, JW-15 or document N38)
This document merely discloses the SWL for various values of eccentricity and effective length. It does not render the claimed invention not novel.
“AISC: Design Capacity Tables for Structural Steel Hollow Sections”, 1992 (referred to as either exhibit PB-43, JW-13 or document N37)
The document consists of a series of tables which relate the design capacities for piers subject to axial compression to the effective length of the pier. They do not disclose the claimed invention.
“Soiltest Report for Dynasty Homes Queensland Pty Ltd, Project 7550” by Soiltest Australia Pty Ltd, 10 November 1994 (referred to as either exhibit PB-44, JW-3 or document N27)
The report presents a series of recommendations for the installation of screw piers at a particular site for a single storey home. Though the use of screw-in piers is disclosed, there is no mention of predetermined data from which to determine the SWL. The report does not disclose the claimed invention.
For similar reasons, I do not believe exhibit PB-45 (“Soiltest Report for Dynasty Homes Queensland Pty Ltd, Project 7426” by Soiltest Australia Pty Ltd, 4 May 1994, also referred to as either exhibit JW-4 or document N28) anticipates the claimed invention.
Engineer’s Certificate for Foundations at 25 Cornula Court, Doncaster, by Philip Bell and Partners Pty Ltd, 3 June 1994 (referred to as either exhibit PB-46, JW-5 or document N43)
Mr Bell certifies that the screw-in foundations shown on the appended structural drawings were installed to a torque of 3000 Nm and that the SWL is 30 kN. The document appears to suggest an installation method that relies on a predetermined installation torque being reached, and does not disclose the comparison of the measured torque against predetermined data to calculate the SWL. I therefore conclude that the invention of claim 1 has not been disclosed.
“Standard Screw-in Foundation and Raft Slab Design Manual” by Instant Foundations (Aust) Pty Ltd, April 1994 (referred to as either PB-47, JW-24 or document N26)
The citation consists of footing details and layouts for single and double storey houses in a variety of climate and soil conditions. Page 3 states:
“Application of accurate torque readings are essential during installation of Screw in Foundations. A purpose-built device commissioned by Instant Foundations (Aust) Pty Ltd has broken new ground in the delivery of quality assurance and makes installation simple and predictable with a permanent record of installation torque.”
Further detail indicates that “On reaching the target torque, a pair of LED indicator lights on the surface of the logging system illuminates to advise the operator that the target torque has been achieved.”. The document appears to suggest an installation method that relies on a predetermined installation torque being reached, and does not disclose the comparison of the measured torque against predetermined data to calculate the SWL. Consequently, the citation does not render the claimed invention not novel.
“Screw-in Foundations for the Housing Industry: Design and Construction Manual” by Instant Foundations (Aust) Pty Ltd, December 1993 (referred to as either PB-48, JW-31 or document N25)
The citation discloses that the installation torque of screw-in foundations can be measured to determine the ultimate compression and tension capacity of each foundation. Various tables provide footing details for single and double storey houses in a variety of soil conditions. There is no clear disclosure of using predetermined data to calculate the SWL, and I do not believe this citation anticipates the claimed invention.
“Piling Workshop Notes: Recent Developments in Design and Practice” by John Wagstaff Constructions Pty Ltd, 6 – 7 July 1989 (referred to as either PB-49, JW-26 or document N21)
These notes disclose that during installation of a screw pile a diagram of drill torque versus depth is recorded, and that experience shows that there is a good correlation between torque, the soil resistance and total resistance. There is no disclosure of using predetermined data to calculate the SWL, and I do not believe this citation discloses the claimed invention.
PCT Application PCT/AU92/00662 (Instant Foundations (Aust) Pty Ltd) 24 June 1993 (referred to as either PB-50, JW-28 or document N4)
This application relates to ground anchors, with page 12 of the application stating:
“During driving, the torque applied by the driving tool is monitored with increasing torque being indicative of increased holding capacity. When a predetermined torque is reached, the anchor 89 has been driven into the ground to a desired extent. If the torque level is not reached additional joining sections 96 (see Fig. 30) may be joined to the anchor 89, the joining sections 96 having helices 97 and 98 at opposite ends for complementary mating with the helices 90 and 94 of the anchor 89 and tool 92, the helices 97 and 98 being apertured for interconnection.”
Whilst the citation discloses the relationship between installation torque and holding capacity, there is no disclosure of using predetermined data to calculate the SWL. I am satisfied that this citation does not anticipate the claimed invention.
Article entitled “Screw-in foundation takes top BHP prize”, Industry Magazine (Qld), October 1993 (referred to as either PB-51, JW-29 or document N19)
The article discloses that matching “the installation torque to both the application and the retention capacity of the soil” is an important factor in the use of screw-in foundations. It is further highlighted that:
“No real expertise is required as the appropriate torque for the job can be read off the Instant Foundations specification catalogue or we will provide the advice by telephone”
The article appears to suggest an installation method that relies on a predetermined installation torque being reached, and does not disclose the comparison of the measured torque against predetermined data to calculate the SWL. Consequently, the citation does not anticipate the claimed invention.
Article entitled “Screw-in foundations keep building ahead”, Gold Coast Bulletin (Qld), 22 September 1993 (referred to as either PB-52, JW-30 or document N20)
This article states that a measure of the screw-in foundation’s installation torque relates directly to its load capacity. There are no other noteworthy disclosures, and I consider that this citation does not deprive the claimed invention of novelty.
In conclusion, I have found that claims 1, 2, 3 and 4 are not novel.
Inventive Step
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge, or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Considering the latter of these criteria first, I do not think there is any doubt that the various documents which Soiltest have established as being in the public domain before the priority date of the claims would be ‘understood’ and ‘regarded as relevant’ by the person skilled in the art. However, I believe considerable uncertainty surrounds whether several of these documents would have been ‘ascertained’.
In Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limitedv Rohm and Haas Company [1997] APO 40, the hearing officer took the approach that a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. I consider this a sensible approach. Applying it to the documents at hand, I note that many take the form of personal correspondence or brochures. No evidence has been provided to explain the distribution of these documents, and I believe insufficient evidence has been presented to allow me to conclude that a person skilled in the art could reasonably be expected to have found any of them. In particular, I am not convinced that exhibits PB-3, PB-5, PB-21 to PB-25, PB-28, PB-30, PB-31, PB-34 to PB-39, and PB-41 to PB-49 would have been ascertained.
Of the remaining exhibits, I consider PB-26, PB-27, PB-29, PB-33, PB-40 and PB-50 to be the most relevant citations worthy of further consideration, as they are directed to various methods of screw pier installation. I am satisfied that the invention of claim 1 lacks an inventive step in light of these documents, which each disclose a method in which the SWL is calculated from the installation torque or vice versa. Similarly, the invention of claim 2 is not inventive when compared to exhibits PB-29, PB-33, PB-40 and PB-50, and claims 3 and 4 are not inventive in light of PB-33.
With regard to claims 5 and 6, I must conclude whether the claimed inventions lack an inventive step when each of PB-26, PB-27, PB-29, PB-33, PB-40 and PB-50 are considered together with the common general knowledge in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited, 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Both declarants for the opponent gave evidence on the common general knowledge in Australia. With regard to the data of Tables A and B, Mr Bell states at paragraph 4.26 that they:
“….had been, and could have been, generated on the basis of common general knowledge by any competent engineer skilled in the art….”,
Mr Williamson declares at paragraph 5.15 that:
“The design data tables attached as Exhibit JW-10 also disclose effective lengths of screw pier, eccentricities, load capacities and shear capacities. Such tables were prepared using well known engineering principles, and such a table was prepared by Philip Bell attached hereto as Exhibit JW-15.”
In light of the evidence of Bell and Williamson and in the absence of evidence to the contrary, I agree that claims 5 and 6 cannot be considered inventive as they merely add features which derive from well known engineering principles. Claim 5 is dependent on claim 1, and further adds that the effective length is 0.7 of the total length. I note that the application makes no special claims for this effective length, and I do not think its inclusion can be considered inventive, as 0.7 appears to be the figure commonly used by engineers in the art in their calculations. Similarly, I believe that any engineer could, and would generate the relevant parameters disclosed by claim 6 in the normal course of determining the SWL of screw pier installations. Furthermore, and following on from my consideration of issues under section 40, the applicant’s own submissions at page 8 of the specification supports the reasoning that the features added by these claims would be well known to those skilled in the art.
I find that, on the evidence and common general knowledge, the claimed invention does not involve an inventive step.
CONCLUSION
The opponent submitted that the alleged inventor, Mr Paul Anthony Camilleri was not the true inventor of the invention, and that Steel Foundations was not entitled to the grant of the patent for the invention. I have found that with no evidence to the contrary, I must conclude that Mr Camilleri is the actual inventor of the invention, and that Steel Foundations is entitled to the grant of a patent.
I have also determined that the application is for a manner of manufacture, and that even though it includes steps of a mathematical nature, it is directed to an invention which belongs to the useful arts as distinct from the fine arts.
I also consider that the invention defined by claims 3 and 4 is not supported by the description. I believe that Steel Foundations has placed an unreasonable demand on the skilled addressee, and conclude that for this reason the specification is insufficient.
I have found that the invention defined by claims 1 to 6 is clearly not novel in the light of the documents considered or lacks an inventive step. Furthermore, I am unable to identify any patentable subject matter disclosed in the specification that could form the basis of a valid claim. I therefore consider it appropriate to refuse the application.
COSTS
Costs normally follow the event and I see no reason to depart from this in this case. The opponent has been successful in their opposition and consequently I award costs against the applicant.
R. Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Fisher Adams Kelly, Brisbane
Patent attorneys for the opponent: Cullen & Co., Brisbane
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