Termite Tite Pty Ltd v Termi-Mesh Australia Pty Ltd

[2000] APO 42

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 693740 in the name of TERMITE TITE PTY LTD

Title:          Termite Barrier for Pipework

Action:          Opposition under section 59 (Patents Act 1990) by TERMI-MESH AUSTRALIA PTY LTD

Decision:          Issued            .

Abstract

The application was opposed on grounds that the claims are not novel, obvious, not fairly based, and not for a manner of manufacture.  The matter did not proceed to a hearing.  Decided on the basis of the material on file that the only ground established relates to the fair basis of a single claim.  Opportunity to amend.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 693740 by TERMITE TITE PTY LTD and opposition thereto by TERMI-MESH AUSTRALIA PTY LTD

BACKGROUND

Patent application 693740 (the application) was filed as 23741/97 on 2 June 1997 in the name of TERRY JOHN TRAPNELL, and was subsequently directed under section 113 to proceed in the name of TERMITE TITE PTY LTD (the applicant).  The application is associated with a provisional application, from which it claims an earliest priority date of 31 May 1996.  The application was advertised accepted on 2 July 1998.

On 2 October 1998 a notice of opposition was lodged by TERMI-MESH AUSTRALIA PTY LTD (the opponent), followed by a statement of grounds and particulars on 4 January 1999.  The grounds relied on are those of sections 59(b) (ie sections 18(1)(a) or (b)), and 59(c) (ie sections 40(2) or (3).

A second notice of opposition was also lodged, but it was subsequently withdrawn.

After two unopposed extensions of time the evidence in support was completed by 4 September 1999, and the evidence in answer by 18 November 1999.  There is no evidence in reply.

The applicant's and the opponent's agents in this matter are, respectively, Cullen & Co and Wray & Associates, patent attorneys.  A hearing was set to be held in Canberra on 13 April 2000, however in the event neither party chose to appear, both relying on brief written submissions only.

THE SPECIFICATION

The invention is not complex.  The first paragraph of the description reads as follows:

"This invention relates to the protection of buildings from subterranean termites and is particularly concerned with physical termite barriers for pipework penetrations of concrete slabs which are incorporated in the buildings during their construction."

Slab penetrations are required for plumbing and electrical conduits.  The specification goes on to describe known termite barriers, which are principally chemical, graded stone, and stainless steel mesh barriers, and their respective disadvantages.  These disadvantages include environmental considerations, effective life, cost, difficulty of use on sloping ground surfaces, and susceptibility to termite breach.

Particular reference is made to what appears to be the most relevant prior art.  This barrier consists of stainless steel mesh in which conduit penetrations are made by cutting overlapping flaps or an undersized hole in the mesh.  The collar which is formed when the conduit is inserted is then clamped to the conduit by means of a stainless steel hose clamp.  The problem with this, the specification states, is that small folds may be formed in the mesh where it is clamped to the conduit, permitting termite entry.

The invention then described can be readily understood from the claims, which are as follows:

"1. An arrangement for preventing the passage of termites through a concrete slab at the point of conduit penetration, said arrangement comprising the combination of a metal disc, a conduit and a flange, the metal disk incorporating a circular hole which is of such a dimension that when the disk is placed over the conduit, a snug fit is produced so that the passage of termites along the conduit from one side of the disc to the other is prevented, the said disk being retained by the flange which is adhered to the conduit.

2. An arrangement as claimed in claim 1, wherein the disc has a flat circular shape.

3. An arrangement as claimed in claim 1, wherein the disc comprises a flat circular region and a circumferential lip.

4. An arrangement as claimed in claim 3, wherein the circumferential lip has corrugations formed therein.

5. An arrangement as claimed in any one of the preceding claims, wherein the disc is fabricated from 5mm sheet aluminium or 304 grade stainless steel.

6. An arrangement as claimed in any one of the preceding claims, wherein the flange comprises a tubular section with a rim extending therefrom.

7. A disc for preventing the passage of termites along a conduit when the disc is placed over the conduit, said disc having the construction as defined in any one of claims 2-5.

8. An arrangement for preventing the passage of termites through a concrete slab at the point of conduit penetration, substantially as herein described with reference to Figures 1-4 of the accompanying drawings.

9. An arrangement for preventing the passage of termites from one side of a concrete slab to the other at the point of conduit penetration, substantially as herein described with reference to Figure 5 of the accompanying drawings."

In use the termite barrier is located either within the concrete slab, ie the slab is poured about the barrier, or else it is adhered to the top surface of the slab after pouring.

EVIDENCE

From the Opponent

· Statutory declaration by Vasilious Toutountzis with exhibits VT-1 to VT-12.  Mr Toutountzis is Managing Director of the opponent company, and has been involved in the pest control industry in Australia for many years.  The exhibits are primarily AU patent specifications, for several of which Mr Toutountzis is identified as the inventor or co-inventor.  A number of termite-control industry documents are also provided.

From the Applicant

· Statutory declaration by Terry John Trapnell with exhibits TJT-1 to TJT-2.  Mr Trapnell is Director of the applicant company, and is the inventor of the instant invention.  The exhibits consist only of a dictionary extract and a copy of the provisional specification on which the present application is based.

SUBMISSIONS

From the opponent

The written submissions from the opponent, apart from indicating continued reliance on what is set out in the statement of grounds and particulars and the evidence in support, add no more than a very slight elaboration to already identified section 40 matters.  Consequently I will deal with them in my decision.

From the applicant

The written submissions from the applicant are only said to address the section 18(1)(a) and section 40 issues, raised in the statement of grounds and particulars, but not pursued in the evidence in support (nor responded to in the evidence in answer).  I will deal with these also in my decision.

DECISION

Priority date

Two documents are cited in the evidence in support (VT-9 and VT-12) which were not published before the earliest priority date, the opponent stating that this date is not conceded, but without further explanation.  I have viewed the provisional specification, which is filed as exhibit TJT-2 in the evidence in answer, and I can see no reason to doubt that at least claim 1 is entitled to the date of filing the provisional as its priority date.  The provisional describes the invention in much the same way as it is most broadly described and claimed in the complete; it could not possibly be said that there is not a "real and reasonably clear disclosure" in the provisional of the features claimed in claim 1 (CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481).

Consequently I will pay no further regard to VT-9.  However VT-12 is an AU patent specification with earlier priority than the present, and is prima facie a "whole of contents" case.  I will consider it under the novelty heading.

Section 40

As the opponent has raised some issues regarding the construction of claim1, which may reflect on novelty, it is convenient to deal with all the section 40 matters here.

In his declaration Mr Toutountzis argues that the claim does not necessarily require that the metal disc and the flange be separate components.  However I think that a plain reading of the claim, which says:

"…said arrangement comprising the combination of a metal disc, a conduit and a flange,…"

clearly suggests that they are separate components.  It is easy to see different words that could be used to claim them integrally.  This is further supported when the claim is read in the context of the invention described.  In every embodiment these parts are separate, and at page 5 line 30 it is stated that:

"The flange used to retain the metal disc in situ will usually be an off the shelf plastic flange…".

It is also submitted that claiming the flange is "adhered" to the conduit, does not necessarily mean by the use of an adhesive substance.  This is supported in the evidence (VT-4) by an extract from The Macquarie Dictionary, Third Edition, which most relevantly defines the word to mean "to stick fast", or "to hold closely or firmly to".  Similarly I note that The Collins Concise Dictionary, Second Edition, defines it to mean "to stick or hold fast".

Consequently, at least in isolation, this submission appears to have some merit.  Nonetheless I consider that in normal useage the word "adhere" does imply, if not necessarily so, the use of an adhesive.  Other words (eg clamp) are available in circumstances where an adhesive substance is not used.  But more importantly, there is no suggestion in the description of any way of attaching the flange to the conduit other than by the use of an adhesive substance.  In my opinion claim 1 should be construed as so limited.

It is further submitted that the claims do not define the invention and lack fair basis as two essential features are omitted.  Firstly, in view of the stated object of 100% effectiveness for the barrier, the application of filler material to the juncture of the metal disc and the conduit in the case of irregularities in the circular hole in the disc, is in fact an essential feature.  Secondly, the described function of the flange is to support the disc in a substantially horizontal plane while the concrete is poured, and this also is an essential feature and should be claimed.

In my opinion the use of a filler is clearly an optional feature.  If the disc is a close fit to the conduit it should not be needed, though I imagine that in practice it could be used as a routine precaution anyway.  Indeed the use of fillers and sealers to compensate for manufacturing inaccuracies is so common in a host of applications as to be trivial.

As for the second, the specification states at page 7 line 2:

"…the flange 15 which supports the termite barrier in a substantially horizontal plane and prevents deflection of the termite barrier from this plane when the concrete is being poured about the termite barrier."

The "termite barrier" here is of course the metal disc, and maintaining it in a horizontal plane during pouring is apparently desired, though the specification does not explain further.

It seems to me that if an integer or integers in a combination have a particular function as described, and this function is important in realising the, or a major, object of the invention, then it is very likely that this integer (or integers) are essential features and must be in the broadest claim, and claimed in such a way that permits this function to be performed. And that, I think, is all that is required.

In the present case claim 1 defines the combination of the metal disc and the flange (and the conduit) in such a way, that in use, ie when the concrete is being poured, the disc is able to be maintained in a substantially horizontal plane.  I do not consider that any express reference or limitation to this in the claim is needed.

Objection was also taken to claim 7, and in this case I agree.  Claim 7 is solely for the disc per se, as constructed according to any one of claims 2-5.  Thus by claim 2 it is a claim for no more than a piece of flat circular metal with a circular hole in it.  Claims 3 and 4 add a circumferential lip, and claim 5 some common metals from which it is manufactured. 

In answer to this Mr Trapnell says in his declaration (para 26):

"The inventive concept resides in the use of a unique disc having peculiar characteristics to prevent the passage of termites along a conduit when the disc is placed over a conduit and retained by a flange.  This inventive concept is embodied in both claims 1 and 7."

This is repeated in the written submission, but it seems to me to be plainly wrong.  The disc claimed, particularly when claim 7 is appended to claims 2 and 5, is not unique and neither does it have any peculiar characteristics, except when it is combined with the flange and the conduit.  That combination embodies the inventive concept.  Claim 7 clearly does not define the combination which is described as the invention, and in its dependence on claims 2 and 5 it is also almost certainly not novel.  For example exhibit VT-6 refers to the use of a sheet metal disc as a termite barrier.

Novelty

It is settled that the test for novelty is the reverse infringement test, in which, to establish want of novelty in a claim, each and every one of the essential features of the claim must be found in the allegedly infringing article.  See Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 and Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367.

I can see no reason to regard any of the features of the broadest claim as inessential, and there has been no submission to the contrary.  In the following I consider each of the relevant items of the evidence in support, simply in the order filed.

AU 639256 (VT-1)

Mr Tountountzis is the applicant and inventor for this patent.  It discloses the use of a mesh sheet (eg stainless steel) located under a concrete slab as a termite barrier.  The sheet extends to and beyond the perimeter of the slab.  The most relevant disclosure is with regard to Figs 3-4, which shows a conduit passing through an undersized aperture in the sheet such that an upwardly or downwardly projected flange of mesh is formed about the conduit.  The flange is pressed into firm engagement with the conduit by a stainless steel hose clamp.  There is no disclosure of any other means of engagement.

I am not sure that "flange" is the most appropriate word to describe this structure.  It is defined in The Collins Concise Dictionary, Second Edition, as follows:

" a radially projecting collar or rim on an object for strengthening it or for attaching it to another object."

In the next, and most relevant exhibit, the same feature is referred to as a "sleeve".  In any case it is not a separate component, is not "adhered" to the conduit (as previously construed), and there are major differences between a relatively small metal disc and a large area mesh, and their intended locations.

AU 695436 (VT-2)

This patent is in the name of the opponent, and Mr Toutountzis is the inventor in this case as well.  The object is to provide a termite barrier with a more economical use of the mesh sheet than in the earlier patent.  Most of the specification relates to the provision of strips of mesh around the periphery of the slab and also protecting adjacent non-integral structures such as walls.  However Fig 6 shows a barrier for a conduit penetration of the slab.  This is very similar to that disclosed in VT-1, the difference being that, for each penetration, an individual relatively small piece of mesh is used, and in use the slab is poured over this barrier.  The manner of attaching the mesh to the conduit is exactly the same as that in VT-1.

While this is clearly relevant prior art, and is referred to as such in the specification in suit, it does not disclose all of the features of claim 1, in fact, almost none of them.  I do not think that a piece of stainless steel mesh is a "metal disc" as claimed, and if the longitudinal extension of the mesh caused by fitting the conduit into an undersized hole in the mesh is indeed a 'flange' (which I doubt), it is not a separate integer, and the 'flange' is attached to the conduit by a clamp not an adhesive substance.

Also, even if this prior construction does produce a flange in the proper sense, it is not one which is able to provide support for the barrier part by virtue of a tubular sleeve and an outwardly extending rim, as is the present case.  Certainly this is not expressly claimed, but if the term has a broad meaning, I consider it is appropriate to construe the integer as claimed having regard to how it is described, including the purpose given it.

VT-3

This exhibit consists of two unidentified AU specifications, but which Mr Toutountzis refers to in his declaration as belonging to 37472/97 and PCT/AU99/00163, apparently only as evidence of his continued work in this field.  The former was published after the filing date of the present application, and the latter is not yet published.

VT-5

This is an extract from Australian Standard 3660 titled (in part) "Protection of Buildings from Subterranean Termites", dated 1993.  So far as novelty is concerned it adds nothing to disclosures to which I have already referred.

VT-6

This is a discussion paper concerning interpretations of AS 3660, prepared by an industry representative for an industry organisation.  The paper discusses (inter alia) the usefulness of sheet metal (such as a disc) as a termite barrier in a concrete slab.  The author expresses the opinion that because of such a barrier's inflexibility it would almost certainly separate from the concrete and the barrier would fail.  This appears to be an issue of inutility, and in any case there is no disclosure of the combination of a metal disc with a flange as claimed.  It has also not been established that this document was "publicly available" (section 7(1)(a) of the Act) at the relevant date.

AU 24980/95 (VT-7)

The termite barrier disclosed in this document consists of a ring with a central sleeve, which in use slips over a conduit and supports the ring about the conduit.  It is fixed to the conduit either by glue or clamp.  The device may be made of plastic or stainless steel, and is manufactured in one piece.  Consequently there is no disclosure of a separate metal disc in combination with a flange, and my previous comments regarding the meaning of 'flange' also apply.

AU 665924 (VT-8)

This is primarily concerned with a barrier for the cavity between a concrete slab and an outer wall of the building, but Figs 4-5 illustrate a barrier fitted to a conduit penetrating the slab.  The corresponding description is extremely brief, but it appears to consist of a metal disc with a central aperture and a collar which fits over the conduit and is clamped to it.  Once again it is a unitary structure, and a clamp is used.  I also note incidentally that in this device the radially extending portion, ie the metal disc, is referred to as a "flange".

US 5309688 (VT-10)

This does not relate to termite barriers at all.  It relates to a penetration unit for a concrete slab or wall for carrying service lines or pipes, particularly for use in high rise buildings, where the passage of smoke , flame, and gases through the pipes between the different floors of the building is a danger.  The structure includes, among other things, what is referred to as a "puddle flange" for the collection of water which may pass through the slab, eg in a bathroom area.  This appears to be a circular dish-shaped device with a central sleeve which slips over the pipe and may be glued or welded to it.  As above, it does not disclose all of the features of claim 1, and there is no evidence that it could act as a termite barrier, noting that the claim is an arrangement "for preventing the passage of termites through a concrete slab…"

AU 74453/94 (VT-11)

This a family member of VT-10, and the same comments apply.

AU 58337/96 (VT-12)

As I said previously, this document can only be considered as a whole of contents case.  However there is no need to go into the issues associated with this, as I am satisfied that the document filed as evidence does not disclose the invention.  The device is a termite barrier to be fitted to a conduit in a concrete slab.  Again it consists of a collar, which fits over the conduit, and which has a radially extending circular flange.  It is a unitary device, and is made of plastic or ceramic.  In this device the collar is made slightly tapered so as to make firm contact with the conduit.  For the same reasons as given above, it does not disclose the claim.

Again I note the differing use of words to describe what appears to be essentially the same element, particularly in regard to 'flange'.

VT-13

This is a product brochure from Hardie Iplex Pipeline Systems, dated May 1988, titled "mPVC Soil, Waste & Vent Fittings".  In his declaration Mr Toutountzis refers to the V 78 Floor Flange, and states that he "understands" various things about this device and its use.  However this is not apparent on the face of the document, and is not otherwise supported by evidence.  Even if Mr Toutountzis' understandings are correct, there still would not be a disclosure of all the features claimed.

Also, as pointed out by Mr Trapnell for the applicant, there is no evidence that this document was published before the instant priority date.

I conclude therefore that the ground of lack of novelty has not been made out.

Inventive Step

The question of inventive step or obviousness has to be decided against the background of the common general knowledge (cgk) in the art, in the patent area, at the priority date. Also, cgk can be taken with a prior disclosure, so long as a person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant (section 7(2) and (3), Patents Act 1990).

Thus an essential step in establishing obviousness is to establish the cgk upon which that determination is to be grounded.  In Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 292 Aickin J said:

"The notion of common general knowledge involves the use of that which is known or used by those in the relevant 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."

In this case it seems clear that the relevant trade is the protection of buildings from subterranean termite infestation, and it is also clear from the evidence that both declarants have extensive experience in this industry in Australia.  Of course both declarants are also interested parties.  However in his declaration Mr Toutountzis makes no submission on this ground of opposition, and neither does Mr Trapnell in his declaration in answer.

The only support for this ground is to be found in the statement of grounds and particulars, and this consists of claims as to who is the person skilled in the art, and what would be their cgk.  While not actually established by evidence, prima facie these claims seem reasonable enough, and presumably they would have been disputed br Mr Trapnell if he was in serious disagreement with any of them, though he does dispute the standing of VT-13, the Hardie Iplex floor flange.

Primarily what is asserted to be cgk is a variety of one-piece and two-piece physical termite barriers comprised generally of an annular flange structure secured to a conduit, such as (but not necessarily) those considered in the evidence in support.  This appears reasonable, particularly in relation to AU 695436 (VT-3), on which the opponent appears to have placed most reliance under the previous heading, as this construction is admitted prior art in the present specification (though not by document number), and is also referred to (again not by number) in AS 3660, which is also mentioned in the specification.

Otherwise, as I have said, I do not consider that the evidence actually shows that the material cited is cgk, but in the following I will nevertheless assume that it all is.

The question then is, would the presently claimed invention be obvious to a non-inventive person equipped with this knowledge?  There are such apparent similarities between the various barriers that it is perhaps tempting to conclude that this one is just a minor variation of the known ones.  They all consist of some sort of disc-shaped material, with some sort of central aperture fitting, which in use is attached to the conduit in some way, and all are directed at solving exactly the same problem.

But to the contrary, these circumstances suggest to me that there may well be invention in an apparently similar arrangement.  At the least I do not think I can say that it is more probable than not that there is no invention.  In 3M v Beiersdorf (supra) at 293 Aickin J said:

"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers.  The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is the selection of the integers out of, perhaps many possibilities, which much be shown to be obvious…"

The onus is on the opponent to make its case, and in my opinion it has not done so for this ground.

Manner of Manufacture

This ground is not followed up in the opponent's declaration or written submission, and it is only briefly particularised.  The particulars refer primarily to prior art documents and cgk, which I have already considered.  Given the nature of the invention, the only apparent other issue of patentability which might arise is that considered in NV Philips Gloeilampenfabrieken and Anor v Mirabella Internatonal Pty Ltd 32 IPR 449 at 454, where Brennan, Dean and Toohey JJ said:

"….if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further."

I do not consider that is the case here.  The specification refers to some prior art, observes its disadvantages, and sets out objects for the invention directed at overcoming them.

CONCLUSION

I have found that the grounds relating to novelty, obviousness and manner of manufacture have not been made out, but that claim 7 does not comply with the requirements of section 40.  This should be easy to remedy, and accordingly I allow 60 days from the date of this decision in which to propose amendments directed at doing so, else I will refuse the application.

COSTS

In proceedings before the Commissioner costs normally follow the event.  Although I have found that dependent claim 7 is flawed, the major grounds of opposition of lack of novelty, obviousness and manner of manufacture directed at the broadest claim have failed.  Consequently I award costs against the opponent, Termi-Mesh Australia Pty Ltd.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Cullen & Co

Patent attorneys for the opponent   :  Wray & Associates