The Titan Manufacturing Co. Pty. Ltd. v. Arnall's Engineering Pty. Limited

[1986] APO 8

In the Matter of the Patents Act 1952

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In the Matter of Application No. 529082 for Letters Patent by THE TITAN MANUFACTURING CO. PTY. LTD.

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In the Matter of Opposition thereto under Section 59 of the Act by ARNALL'S ENGINEERING PTY. LIMITED

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent application 529082 entitled "MINE BEARING PLATE" was filed on 21 February, 1980 accompanied by a provisional specification, the complete specification being filed on 19 February, 1981.  Following examination the application was advertised as accepted on 26 May, 1983.
         A notice of opposition under section 59 was lodged on 26 August, 1983. On 6 September, 1983, the applicant lodged a first request to amend its specification under section 77, which request was subsequently allowed without opposition on 29 May, 1984.  A second request to amend under section 77 was lodged on 29 June, 1984 and in the absence of any opposition thereto was allowed on 3 January, 1985.  The opponent filed evidence in support of its opposition on 27 February, 1984 and the applicant filed evidence in answer on 15 August, 1984.  No evidence in reply was lodged.
         The opposition was heard in Canberra on 3 July, 1985.  Mr. J. Hinde, patent attorney of Spruson & Ferguson, Sydney appeared for the applicant and Mr. W.L. Thomson, patent attorney, Canberra appeared for the opponent.

The notice of opposition gives as grounds of opposition those listed in paragraphs (e), (g) to (i) of sub‑section 59(1), i.e. grounds alleging the invention to be prior published, obvious and not novel and that the specification does not comply with section 40.
The Specification
         The specification commences thus:

"This invention relates to an improved mine bearing plate and has been devised particularly though not solely for the support of loose laminated roof rock.

In the past the main form of roof control currently used in mines has been roof bolts which are anchored into the rock and fitted with one of a number of devices for retaining the roof rock.  Such devices are particularly necessary in areas where the rock is of a scaly or fragmented nature which is often caused by induced stress from load or pressure after mining.  To retain the roof rock it has been known to augment the normal steel plate washers used in conjunction with the rock bolt with areas of weldmesh or with other support piece materials such as larger steel plate washers, hardwood timber plates, or with short single hole cut‑offs of W‑strap."

Disadvantages associated with the use of these additional support devices with the rock bolts and normal steel plate washers are then mentioned. In relation to "large steel plate washers" it is said:

"The plate's surface area achieved by the use of larger steel plate washers is not increased by a large degree when compared with other alternatives, e.g. short W‑strap and timber support plates etc."

And with regard to W‑strap pieces the specification states:

"The use of short single hole W‑strap pieces has the main disadvantage of a tendency to twist or distort diagonally even when placed onto a flat rock face.  This in turn reduces the surface area in contact."

By "W‑strap" I understand a strip of steel which has a W‑like profile in transverse section.
         The specification then gives an object of the present invention, this being

"to provide a mine bearing plate which will obviate or minimise the foregoing disadvantages in a simple, yet effective manner or which will at least provide the public with a useful choice."

Following statements of the invention in similar terms to the broad claims, there is a description with reference to drawings of one form of mine bearing plate according to the invention.  Described and shown is a plate formed to an overall rectangular configuration.  Two longitudinal V‑shaped ribs are formed in the plate adjacent its longer edges, and two V‑shaped transverse ribs are formed in the plate at right angles to and extending between the two longitudinal ribs.  The transverse ribs are equispaced on either side of a central hole which is sized to receive a rock bolt, and the plane area limited by the ribs around the hole is sized to mate with the surface of a steel plate washer commonly used in conjunction with rock bolts.  Later in the description, these ribs are referred to as "reinforcing ribs".
         In use this bearing plate is interposed between the mine rock face and the normal steel plate washer used with a rock bolt.  The bearing plate described has a "kick‑up" at either end of the plate (that is the end portions of the plate are deformed out of the plane containing the major portion of the plate), and it is said that as a result of these "kick‑ups", when they are angled to the rock face, an additional direct reaction is applied to the rock external to the directly applied bolt tension.  Further the specification states that because of "the nature of the construction of the mine bearing plate it is possible to build the plate to a very light weight with advantages in manufacturing cost and handling".
         Typical dimensions of a bearing plate are then given in the specification, namely:
         "Size of Plate  400 x 280 mm
          Thickness of Metal  2.3 mm
          Angle of Kick‑up"  8o
          Diameter of Hole  44 mm
          Typical Washer to locate within
            plane area 7  150 x 150 x 8 mm
          Weight of Plate  2.2 kg"
It is worth noting that no mention is made of the rib structure or rib dimension or location.
         Immediately following the above list of typical dimensions, the specification at page 6 includes the following paragraph first introduced into the specification during the course of examination.  It reads thus:

"The ratio of the area of the plate of the above example to the thickness thereof is equal to the product of 400 x 280 divided by 2.3 mm2/mm.  This figure is slightly less than 48,700 mm2/mm.  However, the man skilled in the art would well appreciate that within the scope of this invention plates of the same or substantially the same thickness of metal as the above exemplified plate might well be formulated of sizes different from that of the plate quoted above.  For example a square plate of 280 mm sides would well exemplify the invention and be entirely useful in practice.  In such a plate the ratio of the surface area to the plate thickness would approximate 34,000 mm2/mm.  A small reduction in plate size to a square plate of 250 mm sides would result in a ratio of 27,000 mm2/mm."

Immediately following the above paragraph are the concluding paragraphs of the description which mention that different arrangements of the reinforcing ribs can be used besides the particular configuration shown in the drawings, and that the plates can be of different shape.  For instance it states that "... it will be apparent that a continuous circular or oval pressed reinforcing rib could be formed in the plate surrounding the hole.  The plate itself could also be circular or oval in configuration".  Also mentioned are advantages possessed by the mine bearing plate in "that it is cheap to manufacture and is light weight" and "provides a realistic increase in surface contact area", and "does not allow roof sag due to crushing or induce roof damaging pressure points".
The Claims

The specification in its present form contains 9 claims, the first eight of which are directed to a mine bearing plate with claim 9 directed to a method of supporting a rock face utilizing a bearing plate as claimed.  Claim 1 reads as follows, with the underlined portions having been inserted and the bracketed word deleted by section 77 amendment action since acceptance ‑ "A mine bearing plate adapted for use in conjunction with a plate washer to be placed between said plate and the nut of a roof bolt in a mine roof bolting operation, said plate comprising a substantially planar central portion to in use engage the mine roof on one face and the washer on the other face, a central aperture therethrough, and reinforcing rib means pressed into said plate spaced from said aperture and defining a substantially continuous perimeter (therearound) around said substantially planar central portion, the pressing of the rib means being effected by upsetting the material of the unpressed plate out of the plane thereof, the ratio of the surface area to the thickness of the plate being greater than 25,000mm2/mm."

Claim 1 is directed to a mine bearing plate having a construction enabling its use in conjunction with a plate washer in association with a roof bolt and nut.  It is worth noting here the normal understanding of the terms "washer" and "bearing plate" as applied to the Australian mining industry ‑ I take the undisputed meanings as given by Mr. Fuller, a declarant for the applicant in this matter, namely:

" (i)A washer is a rigid device for distributing load from a tensioned roof bolt to the roof strata; it imparts compressive stresses to the strata; and

(ii)A bearing plate is used with a washer providing compressive stresses at its centre but the outer surfaces of the plate provide a secondary light restraint for securing the immediate surface layer of friable roof material and do not impart high compressive stresses."

It is evident that the bearing plate provides compressive stresses at its centre by transmitting those stresses generated by the washer to the roof strata.  Consequently given the above meanings, in general terms a bearing plate can be a plate‑like element of any shape which can operate with a plate washer as indicated, there being no inherent size or thickness limitations on such a plate.
         Returning to claim 1, it is directed to a bearing plate having certain features of construction, namely:

(a)a substantially planar central portion,

(b)a central aperture therethrough,

(c)pressed‑in reinforcing rib means to define a substantially continuous perimeter around the central portion.

(d)and a ratio of the surface area to thickness being greater than 25,000mm2/mm.

The definition also refers to the in use function of feature (a) as well as the provision of the rib means (feature (c)) "by upsetting the material of the unpressed plate out of the plane thereof".  The reference to "the plane" of the plate, in my interpretation, does not limit the plate of claim 1 to be planar overall except for the rib means; it could have a planar central zone including the "central portion" from which the rib means is upset, with the remainder of the plate having an angled disposition to the central zone.  However in respect of claim 6, I interpret the plate as being planar overall except for the kick‑ups and the rib means.
Section 40
         In its evidence in support, the opponent contended that the specification, as accepted, failed to comply with section 40 of the Act.  A first point raised concerned the manner of expressing the ratio of surface area to thickness, but this deficiency has been rectified as a result of the section 77 amendments.  Also attacked by the opponent was the actual ratio character‑
ization itself which I will now consider.
         Claim 1 refers to "the ratio of the surface area to the thickness of the plate being greater than 25,000mm2/mm".  The initial questions to resolve in order to understand this definition is what is meant by "surface area" and "thickness".  Mr. Fuller, who is a geotechnical engineer and a declarant for the applicant deposes:

"The term "surface area" and the term "thickness" in the context of a mine bearing plate are both terms which are well known to the man skilled in the art. ..... When one talks about the "surface area" of a rectangular plate, one simply takes the length and the breadth and multiplies these dimensions together.  When one talks about the "thickness" of a mine bearing plate, one simply is referring to the mean thickness of the metal of the plate. ....."

I find some difficulty in accepting completely the meaning of "surface area" advanced by Mr. Fuller given the context of the present specification since to merely suggest that the surface area of a rectangular plate is determined by multiplying the length and breadth dimensions takes no account of irregularities, such as apertures or the formation of rib means, in such a plate.  It seems to me that in the context of the specification there is some support for the "surface area" meaning the area projected by the plate.  Nevertheless I am prepared to follow Mr. Fuller's meanings although I observe that since the ratio characterization is an important feature of the invention, it seems somewhat surprising that no definition of the terms in question have been included in the specification.
         In my opinion, there is a more significant problem associated with the ratio characterization.  Reviewing the specification I note that nowhere does it include an explanation or indication as to the significance of the ratio of the "surface area to the thickness" of the bearing plate.  This ratio is used to characterize the bearing plate of the claimed invention and as such, for the specification to fully describe the invention, adequate explanation and support for this feature ought to be found in the description.  In the absence of such explanation one is left to speculate as to the significance of the ratio in relation to the bearing plate of the invention.  In this regard the ratio characterization appears to merely reflect the selection of desirable design parameters for the plates and nothing else.
         There is a further related point concerning this ratio and this relates to the fair basis of the claims.  According to Mr. Fuller's evidence, the specification as lodged discloses to him a ratio range from about 22,000 to a maximum of about 60,000mm2/mm.  While the specification has been amended somewhat, there has been no significant change concerning the ratio disclosure except to include a consistory statement in the terms of claim 1 and the paragraph on page 6.  Claim 1 requires a ratio "greater than 25,000mm2/mm".  In my view the claims lack a fair basis in the description.  On the one hand the limit of 25,000mm2/mm appears arbitrary, while on the other hand, if the expert evidence of Mr. Fuller is accepted, an upper limit to the ratio should be specified in the claiming clauses.
         Consequently I conclude that the specification does not comply with section 40 in that:

(i)the complete specification fails to fully describe the invention particularly in respect of the "ratio of the surface area to the thickness of the plate being greater than 25,000mm2/mm", and

(ii)the claims lack a fair basis on the matter described.

Priority Date
         As a preliminary matter to the issues of anticipation, the opponent contended that the claims were not entitled to a priority date corresponding to the date of lodgement.
         It was submitted on behalf of the opponent that the ratio characterization was not in substance disclosed in the specification as originally lodged being only in substance disclosed as a result of section 49 amendment of the specification.  Hence in view of section 159A, the opponent contended that the claims of the specification have a priority date being the date on which this new matter was disclosed in a statement of proposed amend‑
ments lodged under section 49, this date being 1 March, 1983.
         In answering this attack on its specification, the applicant points out that the specific example of plate given in the specification as lodged provides a ratio calculated at around 48,000mm2/mm.  Also it contends that an addressee upon considering the disclosure of the specification as lodged would conclude that the ratio range claimed in claim 1 would suggest itself, and in support of this contention, directs reference to Mr. Fuller's declaration where he explains how he arrived at various ratio values above 21,000mm2/mm given only the disclosure of the specification as lodged.  I do not doubt that given the original disclosure and typical plate dimensions mentioned that an addressee could arrive at a variety of plate sizes and hence ratios ‑ in fact I believe any mechanical or structural engineer would probably appreciate that a plate of size 390 (or 410) x 280mm, for example, is structurally similar and could be utilized instead of the specific example given.  The question to consider however is : Does the specification as lodged in substance disclose the ratio claimed?
         I am not satisfied that the specification as lodged provides a disclosure in substance of the ratio "greater than 25,000mm2/mm", and in arriving at that conclusion I have duly noted the contents of Mr. Fuller's declaration.  On my review of the original specification, I can find no support for the disclosure in question, there being nothing to suggest either the significance of a ratio at all, or the critical relevance of the value 25,000mm2/mm.  With regard to Mr. Fuller's declaration, if anything, it serves to show that a ratio "greater than 25,000mm2/mm" was not in substance disclosed in the original specification since to him a minimum ratio of about 22,000 and a maximum ratio of about 60,000mm2/mm was disclosed; claim 1 it should be noted has no upper limit on the value of the ratio.  In my view, the amended claims of the specification do not claim matter in substance disclosed in the specification as lodged
         Therefore in accordance with section 159A(1) I find that the present claims are not entitled to a priority date associated with the original lodgement of the application and I treat the priority date of all claims as being 1 March, 1983.
Anticipation
         A first point raised by the opponent was that if the claims have a priority date of 1 March, 1983 then since the complete specification as lodged was published before 1 March, 1983 and contains an example falling within the claims of the opposed specification, then the claims of the opposed specific‑
ation are prior published and not novel.  As I have found that the matter claimed was not in substance disclosed in the specification as lodged, accordingly there can be no publication of the present claims based on that disclosure as alleged by the opponent.
         The opponent, in its evidence in support, also listed six Australian and six US patent specifications to support its opposition on the grounds of prior publication, lack of novelty or obviousness.  Most of these I find of no relevance to claim 1 as it now stands since they do not prior publish the invention nor could they render it not novel.  US Patent No. 4095430 and Australian specification No. 226315 however require further consideration.
         US 4095430 discloses a plate for use with a rock bolt having the features (b) and (c) of claim 1 identified previously.  With regard to feature (a) the disclosure differs somewhat since the planar central portion is offset from the general plane of the plate and in use may not engage the mine roof on the one face.  There is no specific mention of the "ratio characterisation" as claimed.  Mr. Fuller for the applicant states that the plate in this US Patent is actually a "plate washer" not a "bearing plate" as per the present invention.  Nevertheless the fact remains that it discloses an item of construction in the form of a plate with features of construction corresponding to those in claim 1 and which can, due to its construction, be adapted for use in a similar manner as the plate of the present invention.  While I find the plate defined in claim 1 is not prior published by the disclosures in US 4095430 in view of the differences mentioned, the question of novelty also needs to be considered.  In this regard it is my opinion that the difference with respect to feature (a) is sufficient to confer novelty.  The plate of US 4095430 is specifically characterized such that the planar central portion would not engage the mine roof on one face in normal use.  The plate of the present invention having the central portion engaging in use the mine roof achieves the provision of compressive stresses in the rock of the mine roof immediately about the rock bolt which the plate of US 4095430 could not achieve.

         Australian Patent No. 226315, which was published on 30 April, 1959, discloses a "plate‑like washer" having fully the features (a), (b) and (c) as listed previously.  The washer element disclosed therein is of square shape in plan and is planar except for a circular rib formed about a central planar region containing a central aperture.  The central region could accommodate a washer used with a rock bolt. There is no specific reference to a ratio of surface area to thickness as claimed in claim 1.  The question to consider is whether the plate as claimed can be considered novel given the disclosure of AU 226315.
         The only difference between the claimed plate and the disclosure of AU 226315 relates to the ratio characterization.  As stated earlier in this decision, the significance of this ratio characterization is not apparent from the specification, there being no advantages given for plates which satisfy this particular characterization over those that do not.  The ratio characterization appears to reflect mere optimum design parameters for a plate which parameters can be varied to suit plate thickness and/or plate application conditions as desired.  Hence I fail to see how such a characterization can confer novelty on the plate claimed.  Accordingly I find claim 1 to be not novel and the method of claim 9 also to be not novel.  In addition claims 2 to 5 and 7 which characterize the particular shapes and arrangements of reinforcing rib means are considered also to lack novelty since such forms of reinforcing ribs are commonly utilized in strengthening planar or plate‑like articles of small thickness dimensions.  Claim 6 which is appended to any one of the preceding claims introduces the additional characterization that the plate has end portions "deformed through a shallow angle out of the plane of the remainder of the plate".  I have insufficient material before me to conclude that claim 6 lacks novelty.
         The opponent has provided no evidence concerning common general knowledge in the art in Australia.  As Consequently, I am unable to find against the present application on the opposition ground of obviousness.
Conclusion
         In summary I find the opposition successful in respect of the grounds of non‑compliance with section 40 and lack of novelty.  As it may be possible to amend the specification to overcome the deficiencies found, I afford the applicant sixty days from the date of this decision to request amendment of its specification.
         I award costs against the applicant.

(T.R. BRUHN)

Patent Attorneys for the applicant  :  Spruson & Ferguson