Steinhaus Gmbh v. Screenex Wire Weaving Manufacturers (Proprietary) Limited

[1985] APO 5

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 517319 for a Patent by STEINHAUS GmbH - and - In the Matter of Opposition thereto under Section 59 by SCREENEX WIRE WEAVING MANUFACTURERS (PROPRIETARY) LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS-.

Background

Patent application 517319 for an invention entitled SCREENING DECK was lodged on 29 March, 1977 by STEINHAUS GmbH. This application claims Convention priority based on earlier applications filed in Germany on 21 May, 1976 and 20 July, 1976. Acceptance of the application was notified in the Official Journal on 23 July, 1981 and notice of opposition was lodged by the opponent on 7 October, 1981.

A hearing in respect of the opposition was held in Sydney in October 1984. The applicant was represented by Mr. C. Anese and Mr. F. Old both patent attorneys of Spruson & Ferguson, Sydney and Mr. D. Mischlewski, patent attorney of Edwd. Waters & Sons, Melbourne represented the opponent.

The notice of opposition listed as the grounds of opposition those grounds specified in paragraphs (a), (c) to (i) of sub-section 59(1) of the act. However at the hearing, the grounds specifically relied upon were those of paragraphs (9) to (i), i.e. obviousness, lack of novelty and non-compliance with section 40.

The Specification

The invention the subject of the opposed specification "relates to screen decks such as are used for the separation and grading of material according to particle size". The specification explains that screen decks as used in the mining industry are subjected to abrasion but often the wear to the deck die to abrasion is non-uniform so that certain zones may require replacement before others. To avoid replacing the entire screen when only certain zones become worn the specification mentions that "it is known to provide a screen comprising a plurality of screen elements".

The specification continues as follows:

"The invention relates more especially to a screen deck comprising a grid-like support frame whereof the d openings are covered by screen elements located adjacent to one another and forming a composite screen. Protrusions extend downwards from the edges of a screen portion of each screen element and extend into apertures in the bars of the supporting frame in order to secure the screen elements to the supporting frame."

It is apparent however that this statement of "the invention" refers only to the general nature of the invention since the specification acknowledges that "a screen deck arrangement of this type is described in (German specification) 2437809, the protrusions of which on the underside take the form of latch buttons". (Australian patent specification AU 482212 by the present opponent corresponds to German specification 2437809, and the System described therein is commonly referred to as the "Screenex system" and the screen elements "Screenex panels").

In relation to that prior arrangement, the specification continues:

"The screen elements are secured to the support grid by means of clip or snap connections for which purpose adjacent elements are held together before being fitted to the support grid in order that thaw respective protrusions may together form a complete latch button which can then be pushed through the aperture in the bar of the support frame. This poses the difficulty that the elements can only be fitted to the grid with some difficulty because the adhesion and cohesion of the abutting surfaces of the parts forming together a latch button prevent relative movement of adjacent parts. Finally, because of the snap or clip effect, particularly high surface pressure occurs between the abutting faces of adjacent protrusions.

For this reason, with the known screens, a subsequent replacement of individual elements is difficult. Slots can be provided in the wide heads of these element protrusions so that they may be pressed together and withdrawn through the apertures in the support bars, but the retaining effect is thereby greatly reduced. In practice therefore screen elements can often only be removed from the support grid when the enlarged heads of the protrusions are cut off below the support bars.

Damage to the element thus removed can hardly be avoided, so that re-use of a removed element is often no longer possible. The screen elements described in (German specification) 2437809, therefore. are not suitable for repeated exchange of the screen elements-, whereby the elements may be re-fitted in the same or another position on the grid."

Several other prior arrangements are briefly mentioned in the specification. One of these involved the fastening of individual resilient synthetic screen elements to the carrier grid - the support bars of the grid were provided with apertures through which screws embedded in the screen element were passed and secured from below by means of screw nuts. Another arrangement provided mushroom shaped protrusions at the edge of synthetic screen elements, arranged parallel to the plane of the elements, which snapped or clipped into connecting bars arranged between screen elements.

Accordingly the specification states that:

"It is an object of the present invention to provide an improved screen deck which overcomes or substantially ameliorates the abovedescribed disadvantages."

Then follow consistory statements describing the invention in terms similar to the independent claims.

Of the 35 claims in the specification claims 1 and 26 are independent and they read as follows:

"1. A screen deck comprising a grid-like supporting frame having apertured bars defining the grid openings; a plurality of screen elements mounted on the supporting frame to cover the grid openings, each screen element including (a) a screen portion engaging the bars and abutting the screen portions of adjacent elements to form with said portions a composite screen portion and (b) a plurality of protrusions at the periphery of the screen portion and integral therewith and forming with the protrusions of adjacent screen elements composite protrusions extending into the apertures in the bars, the peripheral faces of the screen portions having therein grooves forming openings in the composite screen portion and the protrusions having therein grooves forming in the composite protrusions bores extending from the openings; and fastening devices operatively extending through the openings and into the bores -for maintaining the composite protrusions in an expanded position and securing this screen portions to the bars.

26. A screen element for mounting on a grid-like supporting frame to cover a grid opening defined by apertured bars of the supporting frame in forming a screen deck, said screen element comprising: a screen portion engageable with the bars and adapted to abut the screen portions of adjacent elements to form with said portions a composite screen portion; and a plurality of protrusions at the periphery of the screen portion and integral therewith for-insertion into the apertures in the bars to form with the protrusions of adjacent elements composite protrusions, the peripheral faces of the screen portion having therein grooves for forming openings in the composite screen portion and the protrusions having therein grooves for forming In the composite protrusions bores extending from the openings so that fastening devices are insertible through the openings and into the bores to expand the composite protrusions into securing engagement with the bars."

Consequently, according to the invention, screen elements are provided which have protrusions at the periphery of respective screen portions to form composition protrusions with protrusions of an adjacent screen element. However in contrast to the screen elements of the prior arrangement disclosed in the German specification which have protrusions with a headed extremity, the screen elements of the present invention have protrusions provided with grooves. These grooves together with grooves in the adjacent region of the screen periphery form-in the composite protrusions bores in which fastening devices are inserted in order to effect the locking of the screen elements to the supporting frame. The specification asserts advantages of the present invention in the following paragraphs:

"The particular advantage of the screen deck of the invention is that the screen elements can be loosely located (plugged) onto the grid, whereupon adjustment of individual elements is still possible.

Unlike the known arrangement with clip or snap elements rigid securing (tensioning) of the elements during assembly on the grid is not intended. The screen elements are finally locked in position by insertion of securing pins. In order to remove the elements from the grid, the pins need only be extracted and the elements are once again loosely located on the grid, and any given element can be easily replaced. Fitting the securing pins is also simple, as they can easily be pushed in manually, and for removal are either knocked downwards out through the aperture of the support bar, or are withdrawn from the top of the elements by means of a tool . "

Various embodiments of the invention are described in the specification with reference to drawings. The embodiments illustrate several different forms of grooved protrusion and various types of securing pins to use in association with the grooved protrusions to effect the locking action.

Section 40

At the hearing it was submitted on behalf of the opponent that the specification offended against sec.40 of the Act in that claim 26 was not fairly based on the described matter. Claim 26 is directed to a screen element per se whereas claim 1 is directed to a screen deck comprising the combination of supporting-frame, screen elements and fastening devices.

A review of the description of the present invention, particularly those passages referred to earlier in this decision, suggests to me that the inventive concept resides in the provision of a screening deck embodying an alternative screen element fastening arrangement to that disclosed in the acknowledged prior art systems. The alternative fastening arrangement disclosed consists of (a) screening elements having protrusions and being specially configured in association with (b) fastening devices to cooperate with the configured portions of the elements to thus enable securement of the elements to a supporting frame. Consequently the screen element is constructed and configured differently from that disclosed in the German specification solely to permit the alternative fastening method with the cooperating fastening devices.

Accordingly I am satisfied that the invention disclosed is the entire deck comprising in combination the supporting frame, specially configured screening elements and associated fastening devices. Since claims 26 to 35 are not limited to that invention I find them not fairly based.

The Evidence

Before considering the opposition grounds of lack of novelty and obviousness, some mention of the evidence submitted in the opposition is appropriate.

The opponent's evidence in support comprises declarations by Robert Henderson and Gilbert Lyle Williams. Henderson of N.S.W. prior to his retirement in 1982 was the Methods Engineer and Maintenance Supervisor for Blue Metal & Gravel Pty. Limited (BMG) having held those positions for twelve years, and having been involved in the installation and maintenance of screening plants for twenty years. According to Henderson, BMG "has had eight screenex decks installed and operating since 1978". In subsequent paragraphs of his declaration, Henderson discusses his experience with those decks including removal and re-use of screen elements and disputes what the opposed specification lists as difficulties with that system. There is no indication in Henderson's declaration as to when he first became aware of the "Screenex system", although from his employment with BMG he has apparently had working contact with the System since 1978. There is no evidence to establish that Henderson was familiar with the "Screenex system" prior to the earliest priority date of the opposed specification, namely May 1976.

The opponent's other declarant, Williams of Victoria is the Product Manager (Screenex) of D. Richardson & Sons Limited having "held that position for five years" since his company was appointed as Australian licensee for the present opponent company. Prior to that he declares that he "worked for five years with my Company marketing and servicing perforated screening cloths fitted to vibrating screens used in all areas of the mining industry". Williams' declaration is dated 17 April, 1983. Williams' employer company is the licensee in Australia for the right to manufacture and market in Australia the "Screenex system" and "Screenex panels" of Australian patent 482212, and although it is not explicitly stated, it is however implied from Williams' declaration that this licensing appointment was effective since early 1978. Like Henderson, Williams does not indicate when he first became aware of the "Screenex system" or whether he was familiar with that system prior to May 1976.

In his declaration, Williams discusses his experience with the "Screenex system" and contrasts his personal knowledge of that system with the alleged difficulties mentioned in the opposed specification. With regard to the constructional arrangement of the protrusions of the screen elements of the present invention, Williams concludes as follows in paragraph 21:

"I conclude that the modification of the screen deck of patent 482212 by providing bores through the composite protrusions and pins insertable therein to expand the ends of the protrusions, results in a less efficient screening deck which requires more labour time to assemble it and requires more labour time to remove or replace panels."

With regard to the use of pins in the present invention to expand the protrusions and thereby fasten the screen elements to the deck frame, Williams in paragraphs 22 and 24 deposes as follows:

"22. I am aware that the concept of pin expanded fasteners is well-known to all engineers and technicians in any field where securing of two components is required. A wide range of such fasteners is available for army purposes. Pin expanded fasteners usually comprise boo parts: 1) a resilient component having a bore and 2) a pin or screw insertable into the bore which expands the ends of the resilient component.

In reading patent 482212 it is clear to me and would have been prior to May 1976 that an alternative to headed composite spigots would have been protrusions with pin expandable heads which could have functioned to secure the panels in the same way as the headed spigots on the panels disclosed in patent 482212. It would also have been clear to me prior to May 1976 that such pin expanded protrusions would not have offered any advantages over the headed spigots as proposed in patent 482212.

24. Prior to May 1976 it was known to skilled technicians or workmen concerned with construction that an alternative to a headed spigot was a pin expandable fastener. It was well known and understood that both could be used where the insertion was resilient and the retaining means was rigid. In the solid spigot, force is required to insert the enlarged head into the aperture of the retaining means whereas with a Pin expanded fastener most of the force required is used to insert the pin into the bore of the sleeve portion. The end result in each case is the same."

Finally, Williams in his declaration discusses each claim of the opposed specification.

The applicant's evidence in answer comprises declarations by John William Glasscock, Quentin Neville Cooper and Kurt Wolff. Glasscock of N.S.W. is the Maintenance Supervisor for B.M.G. Quarries at the Emu Plains Quarry having held that position since July 1981 but having worked at that quarry since 1956. During his employ he has installed and removed screening panels and supervised such action to most of the vibrating screens at the quarry. According to Glasscock, both the "Screenex" and "Steinhaus" screening panels have been used at the Emu Plains Quarry since January 1980, and that he is familiar with both types of panel, the "Steinhaus" panel being in accordance with the opposed specification. He then mentions disadvantages with the "Screenex panel" and states that, from his experience, the Steinhaus panel overcomes those disadvantages and provides certain advantages.

Cooper of Qld. has been Regional Sales Manager for Polyscreen Pty. Ltd. since April 1981. 'Prior to that, he worked for Multotec Manufacturing Pty. Ltd. in South Africa from 1974 to 1981 as Sales Engineer or Area Sales Manager. He deposes that he has been involved in marketing and servicing screening media of the "Steinhaus" type of the present invention in mining and quarrying industries in both Australia and South Africa. He also expresses familiarity with the "Screenex system". Cooper in his declaration lists disadvantages observed with the "Screenex system" and states that panels and screening decks of the type claimed in the opposed specification overcome those disadvantages and exhibit certain advantages.

Wolff of West Germany, the remaining declarant for the applicant is the Managing Director (Technical) of the applicant company and is listed as the inventor of the present invention. His duties at Steinhaus include the super- vision of the design and manufacture of screening panels and screening decks for use in vibrating screens, and in his employ at Steinhaus since 1955 has been involved in that activity. Wolff has numerous publications relating to the design of screening panels and screening decks to his name, these being listed in his declaration. In his declaration Wolff reiterates what is stated in the opposed specification concerning disadvantages with the "Screenex system" as compared to the Steinhaus system of the present invention.

Novelty

To support this ground of opposition (and also that of obviousness) the opponent relies heavily on the prior art "Screenex system" arrangement and "Screenex panels" as disclosed in Australian specification AU 482212 by the present opponent, which specification corresponds to German specification 2437809 mentioned in the present specification. AU 482212 was published in Australia on 26 February, 1976, i.e. before the earliest priority date of the present application.

As previously mentioned in this decision, the "Screenex panels" have protusions on their peripheries which together with protrusions on an adjacent panel form composite latch buttons in order to secure such panels to a frame structure. Each composite latch button has a head portion at its end remote from the panel, and being of greater diameter than the remainder of the button the head portion being designed to lock against a bottom surface of the frame structure. The "Screenex panel" and System disclosed in AU 482212 therefore has different features characterising its construction and clearly does not constitute a prior publication of the present invention. However its relevance .in respect of novelty considerations requires closer examination.

In considering the question of novelty there are several authorities which are apposite. Firstly, the Full High Court of Australia in Griffin v. Isaacs (1942) AOJP 739 per Dixon J. at page 740 stated the test for novelty as follows:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thin or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty."

The deck of the present invention exhibits several variations from the "Screenex system" in that grooves are formed in the periphery of the screen element and the protrusions of the element also has grooves formed therein. These grooves together with similar grooves in an adjacent element(s) form bores at the respective composite protrusions which enables fastening devices to be inserted in such bores to thereby secure the elements to the supporting frame. In brief, the opposed specification uses pin expanded protrusions rather than the headed protrusions of the "Screenex system" to effect securement of the screening elements to the support frame.

While there is some variance in the evidence adduced in this opposition on this point, I am of the view that such variations do contribute substantially to the working of the System because of the advantages arising from the deck of the invention as given in the specification itself as quoted earlier in this decision. Also it seems fairly clear to me, as indicated in the applicant's evidence, that a further significant advantage is exhibited in that the invention also enables the use, removal and effective re-use of screen elements on a screen deck without affecting the positive securement of the elements to the deck frame.

Furthermore I am unable to conclude that such variations involve "no ingenuity or inventive-step". Firstly, on comparing the fastening method of the present invention with that of the "Screenex system", it is My view that the variations that exist do not constitute insubstantial changes which would fall into the category of mere "workshop improvements" and thus be devoid of an inventive step. Secondly, while for novelty considerations it is permissible to add to the disclosure in AU 482212 the common knowledge in the art (in this case the screening art) up to the priority date of the claim under consideration, the evidence adduced gives me no assistance in this regard. Both declarants for the opponent, Henderson and Williams, although employed in the industry for some time, provide no evidence as to their awareness of the "Screenex system" prior to May 1976 but more importantly by their evidence make no pronouncements as to the common knowledge in the art in Australia as at May 1976. While Williams in paragraphs 22 and 24 comments on pin expanded fasteners being well known, Y am not satisfied that Williams' statements can be taken as representing what was common knowledge in the screening art. On the evidence before me I am not in a position to conclude that at the priority date of the present invention, to replace the headed protrusions of the "Screenex system" with pin expanded protrusions involved no ingenuity or inventive step and hence lacked novelty. Consequently on the novelty test from Griffin v. Isaacs (supra) lack of novelty has not been established.

A further test for novelty was stated by Aicken J. sitting as a single Judge of the High Court in Meyers Taylor v. Vicarr Industries 13 ALR 605 at page 611:

"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.

The relevant words of Lord Upjohn are:

"To constitute infringement the article must take each and every one of %he essential integers of the claim. Non- essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

In applying that test to the present claims in the light of the cited patent specification, I conclude that the citation would not constitute an infringement since it fails to take the features of grooved protrusions and grooved screen element periphery, features clearly essential to the present invention to effect the required securement of screen elements by the fastening devices. Thus the test for want of novelty is not satisfied.

Obviousness

On the question of obviousness my attention was drawn to the remarks of Aickin J. in the case before the Full High Court of Australia, Wellcome Foundation Limited v. VR Laboratories (Aust.) Pty. Ltd. (1982) RPC 343 at 346: "It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field: Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd. (1980) 54 ALJR 254 at 268: 29 ALR 29 at 58."

Consequently a consideration of the question of obviousness must be made against the background of the proven common general knowledge in the art.

However the evidence before me does not establish what was the common general knowledge in the art in Australia at the priority date; in fact the evidence provided does not even establish whether the "Screenex system" was a part of the common general knowledge in the art in Australia at the relevant date. In such circumstances I am unable to find against the present application on the opposition ground of obviousness.

It was argued for the opponent that absence of evidence of commercial success of the claimed-invention implied the invention any be obvious or lacked invention. However I think it is clear from the authorities that commercial success is not of itself conclusive on an issue of obviousness or lack of invention (see for instance General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 503).

Conclusion

In summary I find that the opposition fails on all grounds except that of non-compliance with section 40. As that deficiency could easily be overcome by amendment, I afford the applicant sixty days from the date of this decision to request appropriate amendment of its specification. On the question of costs, the basic principle is that costs should follow the event and I see no reason to depart from that practice in this case. Consequently I award costs against the applicant.

(T.R. BRUHN)

Supervising Examiner of Patents

11 APR 1985