The Mainmark Corporation Pty Ltd & Uretek Worldwide Oy v Mark Anthony Kuchel
[2013] APO 61
•27 November 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
The Mainmark Corporation Pty Ltd & Uretek Worldwide Oy v. Mark Anthony Kuchel
[2013] APO 61
Patent Application: 2011203301
Title:Method for treating soil
Patent Applicant: Mark Anthony Kuchel
Opponent: The Mainmark Corporation Pty Ltd & Uretek Worldwide Oy
Delegate: Karen Ayers
Decision Date: 27 November 2013
Hearing Date: 22 October 2013, in Canberra
Catchwords: PATENTS - opposition to the grant of the patent under s 59 –opposed on the ground of inutility and insufficiency – neither ground established - novelty and inventive step arguments considered and rejected – case in order for sealing
Representation: Patent applicant: Self-represented
Opponent:Curwoods Lawyers (Sydney)
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011203301
Title:Method for treating soil
Patent Applicant: Mark Anthony Kuchel
Date of Decision: 27 November 2013
DECISION
The opposition fails on all grounds. Subject to appeal, I direct this application proceed to sealing. Costs awarded according to Schedule 8 against the opponents, the Mainmark Corporation Pty Ltd & Uretek Worldwide Oy.
REASONS FOR DECISION
Background
1. Standard Patent application 2011203301was filed on 12 April 2011 in the name of Mark Anthony Kuchel under the provisions of the PCT. The application claimed priority from an Australian Provisional application (2010901539) which had been filed on 12 April 2010. The Australian standard application was advertised accepted on 22 September 2011 and a notice of opposition was filed on 21 December 2011 by the Mainmark Corporation Pty Ltd and Uretek Worldwide Oy (“Mainmark’’). Evidence was finalised on 23 July 2013 and the matter set for hearing in Canberra on 22 October 2013. The applicant was self-represented and the opponent was represented by Julia Baird SC and Andrew Connelly of counsel instructed by John Snelgrove of Curwoods Lawyers, Sydney.
Specification
2. The specification (as accepted) relates to a method of treating soils. Soil movement is known to destabilise the foundations in buildings causing these to subside. This is particularly true in “highly reactive” soils (such as certain clays/composite soils)[1] which expand and contract depending on the moisture levels of the soil. Previous methods for stabilising foundations used a rapidly expanding chemical pumped into the ground to increase the soil’s bearing capacity and lift the foundation above. According to the specification, this process has the disadvantage that the chemically induced expansion can’t be controlled once the chemical is inserted into the soil.
[1] This is described in the Australian Standards® for Residential slabs and footings (AS 2870-2011) provided by the opponent as document 2 in EIR.
3. In contrast, the current invention uses a slow setting plastic catalysed monomer delivered at a high pressure. The inventive method is described as a 2-step process. In the first (“sealing”) step, water resistant plastic is injected in the vicinity of the footing to “plug” (or seal) crevices and cracks in the soil. In the second (“stabilising”) step, a slow setting polymer is introduced under high pressure to beneath the footing.
4. In the preferred embodiment, a slow foaming (low viscosity) urethane plastic is delivered at a slow rate under high pressure in both steps. The injected urethane penetrates and bonds with the surrounding soil.[2] In sealing the crevices, the soil mass therefore becomes more consolidated around the footing. This means that the sealed (consolidated) soil is less prone to leakage of the polymeric material at the next (“stabilising”) step and is better able to withstand the applied lifting pressure to restore the footing above to its correct position.[3]
[2] See specification at page 12, lines 25-26
[3] See specification at page 11, lines 20-21, page 14, lines 7-8, page 8, lines 5-7, page 14, lines 4-8
5. An example of the general concept is illustrated in figures 10 and 11 (attached to this decision as Annex 1 and 2 respectively). Figure 10 illustrates “reactor rods” (10) which deliver the urethane in the vicinity of the footing (first step). Figure 11 shows the material being injected under the footing (second step). The embodiment illustrated in figure 11 shows the material present as a series of concentric circles[4]. This is produced by a series of multiple injections of the urethane monomer into the one area. The first injection initially creates an outer skin (referred to as a urethane “balloon”). When this has all but set, more polymeric material is injected within the first balloon[5]. The outer boundary minimises leakage of the slow setting material allowing more contained delivery of the polymeric material. At the same time, the new material creates internal pressure against the outer skin causing this to press against the soil forming a bladder or tyre arrangement[6]. Successive cycles of these injections generates a series of concentric “balloon shapes” within the original “balloon” as illustrated in figure 11.
[4] See figure 11, marked references 13-16 (Annex 2)
[5] See specification at page 13, line 25 – page 14, line 4, page 8, lines 10-13
[6] See specification at page 14, lines 6-7 and page 14, line 10
6. The specification ends with 10 claims only one of which (claim 1) is independent. This claim reads as follows:
A method of effecting a stabilisation of a portion of a footing of a building which includes the steps of effecting an introduction of water resistant plastics into soil and openings in the soil in the vicinity of the footing to seal these areas, then introducing a slow setting plastics catalysed monomer to beneath the footing with a very high pressure pump.
7. The “urethane balloon” embodiment is specifically claimed in claim 5 which reads as follows:
A method as in any one of the preceding claims where the plastics material is injected into the soil beneath the footing and consecutively into the same location in the soil to initially form a urethane balloon and thereafter after the first injected plastics material has almost set, of pumping again into the same location with again a very high external pressure pump to form a balloon like shape of plastics material within the first injected plastics material.
Construction of the term “stabilisation” in claim 1
8. Claim 1 defines “a method of effecting a stabilisation of a portion of a footing”. The opponent construed the term “stabilisation” to mean the “stabilisation” of the moisture content and volume of the soil as this is how the term is used throughout the specification.
9. However where the term “stabilisation” is used in the specification to mean soil stabilisation, this intention is clear from its context. Such a limitation cannot be read into the claims which clearly refer to the stabilisation of a building’s footing.
10. The plain meaning of the term “stabilisation” is to “make stable”. There is no explicit “dictionary” in the specification which might override this plain meaning nor does the term have a specific technical meaning in the art[7]. There is also no ambiguity in the term which needs to be resolved by reference to the specification. The skilled worker would therefore understand the term “stabilisation” in the claims to mean a process where a building’s footing was made more stable (whether or not this process also “stabilised” the soil surrounding the footing).
[7] In fact, Professor Fityus’s definition of the term “stability” in paragraph 2.4 of his second declaration is consistent with the plain meaning of the term
Utility [section 18(1)(c)]
11. Jagot J in the recent Federal Court decision of Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 1632; 100 IPR 285 (at [352]) provided the following summary of this ground of invalidity:
Section 18(1)(c) requires that an invention be “useful”. This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful [Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449; [2008] FCFCA 82 (at [141])]. For this purpose, the claims must be construed from the perspective of a skilled person in a common sense way, and not in a way that any such addressee would appreciate would lead to an unworkable result (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2011) 92 IPR 46; [2011] FCA 452 at [293]).
It is not necessary for the description in the specification to spell out matters which the skilled person could supply without the exercise of any inventive faculty in order to achieve the promise of the invention. The patentee is entitled to assume that the reader has a reasonably competent knowledge of what was known before and reasonably competent skill in the practical mode of doing what was then known. A purposeful adoption of an embodiment that would obviously lead to an unworkable or inferior result is not an appropriate way of testing utility. It is also relevant to pay attention to the nature of the alleged “promise” in the specification. See, by way of analogy, Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805; (2005) 66 IPR 420 at [254]-[255]. Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification”.
12. Of course the onus of proof in opposition proceedings lies with the opponent who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; (2009) 79 IPR 426 at 430 [18], 432 [22]). The primary facts are to be established on the balance of probabilities, but the ultimate facts - the facts leading directly to a conclusion of a lack of invalidity (such as inutility) must be proved to the level of “practical certainty” (Besanko J in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061 at [35]; [2010] FCA 1061; (2010) 88 IPR 52 at 63 [35])
13. The opponent argued that the method defined in the current claims does not work. According to the opponent’s expert (Professor Fityus), the injection of slow curing, low viscosity urethane under very high pressure in shallow soils is problematic because[8]:
(a) The resin tends to flow preferentially along the path of least resistance and potentially vent at the surface without fully permeating the soil; and
(b) The very high pressure cannot be contained by a small layer of overlying soil, leading to a blow out of soil at the surface.
[8] See [2.21] of Professor Fityus’s expert opinion report dated 21 September 2012 attached to Statutory declaration of John Snelgrove dated 21 September 2012 (EIS)
14. Based on this, Professor Fityus concluded that delivering polyurethane under very high pressures at a slow rate at a shallow depth in the vicinity of the footing is likely [9]to lead to lifting of the soil mass, incompletely filling voids and allowing polyurethane to escape to the surface[10]. He argued that this would not seal any gaps in the soil nor would it achieve any lifting of the footing as promised by the invention.[11]
[9] Not that the use of the word “likely” indicates a high probability rather than the “practical certainty” required in an opposition and the opponent’s argument may fail on this basis alone.
[10] See [2.25] of Professor Fityus’s expert opinion report dated 21 September 2012 attached to Statutory declaration of John Snelgrove dated 21 September 2012 (EIS)
[11] See opponent’s submissions at [34] and [36]
15. I am not convinced that the invention would lead to type of pressure “blow out” at the surface that Professor Fityus has speculated. The specification clearly teaches placing the plastic into the cracks in the sealing step without pushing the soil around[12]. As the applicant explained at the hearing, the slow setting plastic is delivered at high pressure but at a low flow rate (similar to putting high pressure in a tyre). In contrast to the prior art chemical expansion method, the sealing step is merely intended to fill the cracks in the soil not to lift the foundation or compact the soil.[13]
[12] See specification at page 11, lines 17-18, page 12, line 28 –page 13, line 1
[13] See specification at page 3, lines 9-12
16. I accept that there could be some “venting” at the surface in the sealing step as envisaged by Professor Fityus but this would not prevent the invention from working. The slow setting nature and controlled delivery of the polymer allows plenty of time for the cracks to fill from the “bottom up” in the sealing step. While excess “sealing” material will eventually reach (or “ooze” out at) the surface, this would simply be a visual indication that that the cracks below the surface have been filled (at which stage filling can be stopped).
17. Of course once the polymeric material in the cracks has set, the soil would be much more consolidated and be better able to withstand the lifting pressure applied in the stabilising step. The “blow out” problem mentioned by Professor Fityus therefore seems unlikely to occur in the second (stabilising) step.
18. Professor Fityus also argued that the method could not completely protect the ground from moisture ingress and therefore would not control moisture in the vicinity of the footings. However, the specification acknowledges that some moisture can be present in the soil and the method is not intended to completely avoid moisture[14]. By sealing the major surface cracks at the founding level (where most moisture changes occur), the inventive method significantly reduces the potential for water intake. Further, by adding polymer material into the cracks and underneath the footing, the soil volume around the footing is increased and the soil is more consolidated. This would prima facie decrease the soil’s capacity for contraction and expansion (ie: movement) and would provide long term stability of the soil (and therefore the footing) as promised by the specification.
[14] See specification at page 11, lines 15-16
19. The opponent argued that the method would only work in clay/clay composite soils but the claims as currently drafted are not limited to such soils. However, as the applicant explained at the hearing, all soils (apart from class A soils) have some clay present. With class A soils (sand and rock sites), there is no need to re-stabilise the building’s footing because there is no ground movement caused by moisture changes.
20. Bennett J in Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 generally accepted the proposition outlined in Norton and Gregory Ld v Jacobs (1937) 54 RPC 271 (the “Norton principle”) at 275-6 that a claim will fail for inutility if within its scope there is subject matter claimed which will not achieve the desired or promised result. However, she did not believe this extended to alternatives within the claim that any sensible person would appreciate would lead to unworkability (at [231]). In her view:
“The claims are not directed to readers in a vacuum, they are directed to and are to be understood by the skilled workers in the field. That is the person who construes them, in a common sense way (Populin at 476-477). It would be artificial to assess utility in a way that ignores the fact that a design that is theoretically or mathematically within the parameters of the claims would never be contemplated for use by the skilled naval architect wishing to design a hull for a multi hulled vessel capable of speeds greater than 30 knots. A design that no naval architect would adopt would not be the appropriate test on the question of utility”. [at 240]
21. In the current case, the skilled worker would recognise that the method would not be contemplated for use in class A soils because these soils are not unstable. Hence, it would be inappropriate to apply the test for utility based on this type of soil.
22. The opponent argued that the claimed invention included within its scope forms of the invention which did not fulfil any stated promise of the invention.[15] As I understand this argument, their view was that while the invention promised better (ie: more controlled) lifting of the building, step 1 of the claimed method (“sealing” step) did not achieve that outcome and step 2 (“stabilising” step) had no useful purpose.
[15] See opponent’s submissions at [19]
23. However, as discussed above, the term “stabilisation” in claim 1 properly construed means the stabilisation of the footings of a building. The promise of the invention would be achieved by the stabilisation of the footings themselves or their surrounding soil. Both method steps clearly contribute to this outcome. Both the first (sealing) and the second (stabilising) steps add volume to the soil reducing its potential for expansion and contraction. The first step (sealing step) also seals openings in the soil around the footing ensuring that less water can enter the soil (making the soil less susceptible to moisture variations). The first step also prepares the soil for the second (stabilising) step by consolidating the soil mass in the vicinity of the footing. This means that the polymeric material is less likely to leak in the second step and further that the soil has a better capacity to withstand the lifting pressure applied to raise the footing to its correct position (if required).
24. The opponent suggested that the slow setting monomer would not achieve lift because it could leak away from the place where it is needed before setting and even if the set monomer achieved lift, it would be difficult to retain that result.[16] However as explained above, any lifting occurs at the second (stabilising) step once the soil has already been sealed (and therefore consolidated). It seems unlikely that the polymeric material would leak at the second step.
[16] See opponent’s submissions at [36]
25. Finally, the opponent argued (in relation to claim 5) that it was “impossible” for the injection process to generate a “balloon like shape” or a “balloon within a balloon”. As I understand Professor Fityus’s argument, he believes that the polymeric material would leak away before a balloon shape could be generated. However the urethane balloon is generated in the stabilising step where the soil has already been sealed (and therefore consolidated). As explained above, the problem of polymeric material leakage is likely to be minimal at this stage.
26. Professor Fityus also suggested that delivery of the polymer material could not be controlled sufficiently so as to make a “balloon shape.” I accept that the first injection will not create a “balloon shape” and the specification does not suggest otherwise[17]. In the first injection, the reference to “balloon” simply means the outer skin (or uninflated bladder) (ie: not limited to any particular shape). When the first material has partially set, a second injection delivers more material inside the original “balloon”. The high pressure of the pump in the second injection “overcomes the structure of the solidified foam”. This injection collapses the internal structure of the original “balloon” while at the same time providing an expansion pressure against the outer shell – the concept which is described in the specification as an inflating tyre or self-forming bladder[18]. Controlled pressure and delivery would prevent complete leakage from the original “skin”. Successive injections of the same material should then produce the concentric circle pattern that is illustrated in figure 11 (Annex 2). This approach appears to be technically sound and the successful commercialisation of the method is a good indication that it does work.
[17] Thus, the term “balloon like shape” in claim 5 only appears with reference to the subsequent injection step.
[18] See specification page 13, lines 28 – page 14, lines 16
27. As a consequence, I find that all the claims are useful.
Insufficiency [section 40(2)(a)]
28. The legal test for sufficiency is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 at [25]:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
29. This test clearly recognises that there can be an element of trial and error involved which would not necessarily lead to a problem with insufficiency. As McTiernan J. pointed out in AMP v Utilux, (1971) 45 ALJR 123 at page 128:
"Specifications veryfrequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and 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 omissions without the exercise of any inventive faculty? If he can, then the description of the specification is sufficient. If he cannot, the patent will be void for insufficiency."
30. The opponent argued that the specification did not contain enough detail for the skilled worker to perform the invention. In particular, the opponent argued that the meaning of “stabilisation” is unclear and as the purpose of the method is uncertain, the criteria for determining when the purpose has been achieved in also in doubt.[19]
[19] See opponent’s submissions at [47]
31. However as discussed above, the term “stabilisation” means stabilising the footing of the building. As the term is clear, the skilled worker would understand what is meant to be achieved by the method. Hence, this term (of itself) does not lead to a problem of insufficiency.
32. I accept that there isn’t a detailed working of the invention but this is a well worked art and the technology is relatively simple. The specification notes that the urethane is added at a rate and pressure which fills cracks, voids and fractures in the soil and does not push the soil around. It also states that the purpose of adding this material is to prevent water from easily entering the soil [20]. The method described involves pumping low viscosity foaming urethane at a high pressure and slow rate into the soil[21]. Basic pressure conditions are explained on page 10, lines 14-17. While there were no specific instructions about the flow rate, speed of setting (quick or slow) or the catalytic conditions for the urethane, a skilled person would appreciate that the setting speed is dependent on the catalytic conditions and be able to adjust those accordingly depending on their specific needs. This would appear to be well within the common general knowledge of the skilled worker and the opponent has not provided any direct evidence to the contrary.
[20] See specification at p11, lines 18-20
[21] See specification at pat 13, lines 13-15
33. The opponent argued that there was no teaching in the specification on how to create a balloon like shape.[22] This argument is related to their utility case in which they asserted that it was “impossible” for a balloon to be generated by the process described in the specification. However as discussed above, the steps which create a balloon shape in the stabilising step are technically sound. From the specification, the skilled worker would understand the intended outcome and has clear instructions of how this would be achieved (pumping of polymeric material into the same location by successive injections into a partially formed outer shell). There is clearly enough information to perform the invention.
[22] See opponents’s submissions at [51] and [52]
34. In my view, the skilled worker is able to work the inventive method from their common general knowledge without further invention. I therefore find that the specification is fully described.
Clarity [section 40(3)]
35. Under section 40(3) of the Patents Act 1990 (Cth), claims must be clear and succinct. The Full Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag (2008) 77 IPR 229 recently explained the test for clarity by the Court by referring to Blanco White, Patents for Inventions (5th ed) at 4-701 [23]
“…what matters is not the grammar of the claim, but whether a reader would be left in doubt whether any given apparatus or method fell within the claim or not; the purpose of the rule is to enable the public to rely upon the words of the claim as defining the rights of the patentee. Accordingly, a mere grammatical ambiguity, not affecting the scope of the monopoly, will not invalidate”.
[23] See Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [supra] at paragraph [14].:
36. The opponent identified a number of relative terms in the claims - “slow setting”, “very high”, slowly foaming” and “a low rate of flow”. They argued that without a reference point, the exact scope of the claim was indeterminate and that as a consequence the claims were unclear.
37. I note that a claim does not lack clarity because it uses inexact expressions or is difficult to construe, as long as it provides a “workable standard” suitable to the intended use (as per Henriksonv Tallon Ltd [1965] RPC 434; Minnesota Mining& Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 274. While the terms referred to by the opponent are relative, this does not necessarily mean that they are unclear. In Austal ships [supra], the Full Federal Court considered the relative term “substantial” portion and found:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”
38. The purpose of a claim is to "define clearly and with precision the monopoly claimed so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit and not extend the monopoly" [Electric and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23 (at p 39)]. Thus, it is possible to have imprecise words in a claim so long as the public knows where the boundary limits of the claim are. The Full Court in Leonardis v Sartas [1996] 449 FCA 1 noted that it is not inadmissible to use in a claim an imprecise word, in an appropriate context where it conveys the necessary meaning.
39. In the current case, the opponent merely noted that the terms were relative without explaining why this caused a clarity problem. It is a well-worked art and these terms appear to be common ones which a skilled worker would readily understand. There is no evidence that the skilled worker had any real difficulty understanding the scope of the claim nor is it clear why these terms would fail the “workable standard” test. As a consequence, the opponent has not established that the relative terms used in any of the claims lack clarity.
40. The opponent also objected to claims 5 and 6 in relation to the term “a balloon like shape” arguing that the term was unclear and that the person carrying out the method could not determine whether the injection beneath the footing has in fact created a balloon or balloon-like shape. As I understand this argument, it is a re-statement of the utility argument which was discussed in detail above. There are no residual clarity issues in relation to the term “balloon shape”.
41. In my view, all the claims are clear and the opponent has failed to establish their case under section 40(3).
Novelty
Relevant Law
42.The question of novelty is determined under the provisions of subsection 7(1) of the Patents Act (Cth). The basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
43.Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
Relevant art
44. The opponent’s main grounds of objection were inutility and insufficiency and they did not press their novelty and inventive step case orally at the hearing. However they provided written submissions prior to the hearing on both novelty and inventive step in regard to a number of documents raised in the Statement of Grounds and Particulars. For completeness, I have considered each of these documents below.
45. In relation to novelty, the opponent only raised one document:
D1: EP 0131678 (Asendorf) published on 23 January 1985
46. The original document is in German and the opponent relied on a machine based English translation. The document discloses a method for stabilising (strengthening) soil particularly near tunnel and track construction. The process injects a rapidly expanding chemical (polyurethane foam) into pre-determined locations in the earth. The resulting soil is said to be denser, have reduced void content and be particularly pressure resistant [0011].
47. The document does not teach using a slow setting polymer under high pressure nor does it suggest that a pre-sealing step is performed prior to adding a slow setting polymer under the footing of a building. As a consequence, the document does not disclose all the essential features of the invention and does not deprive any of the claims of their novelty.
48. There is also no evidence to suggest that the skilled worker would replace a rapidly expanding chemical with a slow setting plastic delivered by high pressure. In fact, the document teaches away from using a high pressure to deliver injection material:
“At too high a pressure – how they are applied, for example in prior art injection methods – the result either spontaneous cracks and crevices in which then accumulates the injection material and hardens or the injection material is distributed over nearby cracks, where it solidifies, so that further pressure transmission does not take place on the wider environment”
49. As a consequence, the use of high pressure to deliver a slow setting plastic is not obvious from the document alone or in combination with the CGK and hence the citation also does not deprive any of the claims of their inventive step.
Inventive Step
Relevant Law
The question of inventive step is determined under the provisions of subsections 7(2) and 7(3) of the Patents Act (Cth). For standard applications with an examination request filed before 15 April 2013, a claimed invention will lack an inventive step if it is obvious 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.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, the test was expressed as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Relevant art
52. In addition to D1 which has already been discussed above, the opponent raised the following documents in relation to inventive step:
D2: US 2 627 169 (Poulter) published on 3 February 1953;
D3: US 4 567 708 (Haekkinen) published on 4 February 1986
D4: JP 8260500 (Shigeharu) published on 8 October 1996
D5: JP 2000/303488 (Tamio) published on 31 October 2000
D6: WO 2002/064893 (Klanecek) published on 22 August 2002
D7: JP 2000/6070513 (Yoshio) published on 16 March 2006
53. I have some reservations about whether all these documents would have been ascertained, understood and regarded as relevant as required under section 7(3) for inventive step and note that the opponent has not provided any evidence to address this issue. Nonetheless I accept that these documents illustrate the range of conventional approaches for building stabilisation used before the current invention and for that reason I will consider them in more detail.
54. D2 (Poulter) discloses a method of stabilising the soil on which earth supporting structures (such as buildings, roads or railways) are built[24]. The method introduces a cementitious fluid into soil which hardens and becomes sufficiently solid to support the structure when built. The citation does not disclose a slow setting plastics catalysed monomer inserted at a high pressure nor does it contemplate re-stabilising (lifting) the footing of a building which is already in place. Further, even if the technique were to be used to re-stabilise the building, there is no suggestion of a pre-sealing stage to stabilise the soil surrounding the building prior to lifting. As discussed above, the high pressure delivery of a slow setting plastic allows the controlled delivery of the polymeric material and the pre-sealing step stabilises the soil around the footing prior to lifting. This is a clear advantage which was not recognised in either the citation or the common general knowledge. It would not have been routine to modify the prior art method to include these features and therefore the citation does not deprive any of the claims of their inventive step.
[24] see D2, column 1, lines 27-28
55. D3 (Haekkinen) and D4 (Shigeharu) both use rapidly expanding polymers (injected at a low pressure) to generate the pressure to lift a slab or foundation[25]. The lifting is controlled by limiting the quantity of components injected at a given time or by applying smaller doses of rapidly expanding chemicals across multiple locations. There is no teaching in either of these citations of using a slow setting polymer under high pressure nor is there any suggestion that gaps in the soil should be “pre-sealed” prior to raising the structure. As discussed above, these features have the advantage of controlling the delivery of polymeric material and stabilising the soil prior to lifting. These advantages were not recognised in either the citation or the CGK. Hence the skilled worker would not have been directly led to the claimed invention and hence neither citation deprives any of the claims of their inventive step.
[25] Fityus1 at [3.18]
56. D5 (Tamio) and D7 (Yoshio) both use a cementitious grout injected at a high pressure to re-stabilise a building (a process that Professor Fityus refers to as “grout jacking”[26]). Neither citation refers to a slow setting plastic nor is there any evidence that this product would be considered an obvious workshop variation to the grouting solution. As a result, neither citation deprives any of the claims of their inventive step.
[26] Fityus 1 at [3.33]
57. D6 (Klanecek) discloses the stabilisation and water tight sealing of an underground wall section. The process involves encasing the underground wall section in concrete and injecting a hydrophobic silicon penetrant to fill all the cracks and pores in the walls. The citation does not disclose the stabilisation of soil using a slow setting polymer injected at a high pressure nor does it disclose a preliminary step of using water resistant plastics to seal the soil in the vicinity of the footings. There is no evidence that either of these features would be obvious based on the CGK and hence the opponent has failed to establish a lack of inventive step in light of this document.
58. The opponent also argued that the following steps were part of the CGK in Australia before the priority date:
(a)Introducing water resistant plastics including polyurethane foams into soil openings in the vicinity of or beneath the footing;[27]
(b)Using such plastics to stabilise the footing;[28]
(c)Using a pressure pump to deliver the plastics;[29]
(d)Repeating the step of introducing the plastics into the soil until the desired stabilisation or lift is achieved.[30]
[27] Fityus 1 at [3.17]-[3.18] with [3.8]-[3.10]
[28] Fityus 1 at [3.17] with [3.19]-[3.21], [3.33]
[29] Fityus 1 at [3.18]
[30] Fityus 1 at [3.20], [3.32]-[3.33]
59. However there is no suggestion that it was CGK to introduce a slow setting plastics catalysed monomer under high pressure nor that there was a preliminary “pre-sealing” step around the vicinity of the footing prior to introducing the slow setting polymer to underneath the footing. As discussed in detail above, neither step was obvious from the CGK.
60. In their written submissions, the opponent has relied on the “Canteri” patent (Australian application 731631) to support their allegations of the CGK. The document was cited as admitted prior art in the current specification and is one of the co-opponent’s (Uretek Worldwide Oy) patents. However it was not raised as either a novelty or inventive step citation in the current opposition. The Canteri patent relates to a method of increasing the bearing capacity of foundation soils using a rapidly expanding chemical. Again it does not disclose the introduction of a slow setting plastics catalysed monomer under high pressure beneath the footing nor would this have been obvious from the teaching in the citation. As a result, all of the current claims are novel and inventive compared to the “Canteri” patent.
Conclusion
61. Based on the evidence provided by the opponent, the claims are clear, novel and inventive. The invention is also useful and fully described. The opposition is therefore unsuccessful on all grounds of opposition. As a consequence, the patent application is in order for sealing.
Costs
62. As the Opposition has been unsuccessful on all grounds, I award costs in accordance with Schedule 8 of the Patents Regulations against the opponents the Mainmark Corporation Pty Ltd & Uretek Worldwide Oy.
Karen Ayers
Delegate of the Commissioner of Patents
Annex 1
Fig. 10
Annex 2
Figure 11
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